THIRD DIVISION

[G.R. No. 148222. August 15, 2003]

PEARL & DEAN (PHIL.), INCRPRA!ED, petitioner, vs. "HE#AR!,
INCRPRA!ED, $%& NR!H ED"A #AR'E!ING,
INCRPRA!ED, respondents.
D E C I " I N
CRNA, J.(
In the instant petition for review on certiorari under Rule 45 of the Rules of
Court, petitioner Pearl Dean !Phil"# In$" !P D# assails the %a& '', '(()
de$ision*)+ of the Court of ,ppeals reversin- the O$to.er /), )001 de$ision*'+ of
the Re-ional Trial Court of %a2ati, 3ran$h )//, in Civil Case No" 0'45)1 whi$h
de$lared private respondents Shoe5art In$" !S%I# and North 6dsa %ar2etin-
In$" !N6%I# lia.le for infrin-e5ent of trade5ar2 and $op&ri-ht, and unfair
$o5petition"
)AC!*AL AN!ECEDEN!"
The %a& '', '(() de$ision of the Court of ,ppeals*/+ $ontained a su55ar&
of this dispute7
8Plaintiff4appellant Pearl and Dean !Phil"#, In$" is a $orporation en-a-ed in the
5anufa$ture of advertisin- displa& units si5pl& referred to as li-ht .o9es" These
units utili:e spe$iall& printed posters sandwi$hed .etween plasti$ sheets and
illu5inated with .a$2 li-hts" Pearl and Dean was a.le to se$ure a Certifi$ate of
Cop&ri-ht Re-istration dated ;anuar& '(, )0<) over these illu5inated displa&
units" The advertisin- li-ht .o9es were 5ar2eted under the trade5ar2 8Poster
,ds=" The appli$ation for re-istration of the trade5ar2 was filed with the 3ureau
of Patents, Trade5ar2s and Te$hnolo-& Transfer on ;une '(, )0</, .ut was
approved onl& on Septe5.er )', )0<<, per Re-istration No" 4))15" >ro5 )0<)
to a.out )0<<, Pearl and Dean e5plo&ed the servi$es of %etro Industrial
Servi$es to 5anufa$ture its advertisin- displa&s"
So5eti5e in )0<5, Pearl and Dean ne-otiated with defendant4appellant
Shoe5art, In$" !S%I# for the lease and installation of the li-ht .o9es in S% Cit&
North 6dsa" Sin$e S% Cit& North 6dsa was under $onstru$tion at that ti5e, S%I
offered as an alternative, S% %a2ati and S% Cu.ao, to whi$h Pearl and Dean
a-reed" On Septe5.er )), )0<5, Pearl and Dean?s @eneral %ana-er, Rodolfo
Ver-ara, su.5itted for si-nature the $ontra$ts $overin- S% Cu.ao and S%
%a2ati to S%I?s ,dvertisin- Pro5otions and Pu.li$it& Division %ana-er,
Ra5onlito ,.ano" Onl& the $ontra$t for S% %a2ati, however, was returned
si-ned" On O$to.er 4, )0<5, Ver-ara wrote ,.ano inAuirin- a.out the other
$ontra$t and re5indin- hi5 that their a-ree5ent for installation of li-ht .o9es
was not onl& for its S% %a2ati .ran$h, .ut also for S% Cu.ao" S%I did not
.other to repl&"
Instead, in a letter dated ;anuar& )4, )0<1, S%I?s house $ounsel infor5ed Pearl
and Dean that it was res$indin- the $ontra$t for S% %a2ati due to non4
perfor5an$e of the ter5s thereof" In his repl& dated >e.ruar& )B, )0<1, Ver-ara
protested the unilateral a$tion of S%I, sa&in- it was without .asis" In the sa5e
letter, he pushed for the si-nin- of the $ontra$t for S% Cu.ao"
Two &ears later, %etro Industrial Servi$es, the $o5pan& for5erl& $ontra$ted .&
Pearl and Dean to fa.ri$ate its displa& units, offered to $onstru$t li-ht .o9es for
Shoe5art?s $hain of stores" S%I approved the proposal and ten !)(# li-ht .o9es
were su.seAuentl& fa.ri$ated .& %etro Industrial for S%I" ,fter its $ontra$t with
%etro Industrial was ter5inated, S%I en-a-ed the servi$es of 6CD Rain.ow
,dvertisin- Corporation to 5a2e the li-ht .o9es" So5e /(( units were
fa.ri$ated in )00)" These were delivered on a sta--ered .asis and installed at
S% %e-a5all and S% Cit&"
So5eti5e in )0<0, Pearl and Dean, re$eived reports that e9a$t $opies of its li-ht
.o9es were installed at S% Cit& and in the fastfood se$tion of S% Cu.ao" Dpon
investi-ation, Pearl and Dean found out that aside fro5 the two !'# reported S%
.ran$hes, li-ht .o9es si5ilar to those it 5anufa$tures were also installed in two
!'# other S% stores" It further dis$overed that defendant4appellant North 6dsa
%ar2etin- In$" !N6%I#, throu-h its 5ar2etin- ar5, Pri5e Spots %ar2etin-
Servi$es, was set up pri5aril& to sell advertisin- spa$e in li-hted displa& units
lo$ated in S%I?s different .ran$hes" Pearl and Dean noted that N6%I is a sister
$o5pan& of S%I"
In the li-ht of its dis$overies, Pearl and Dean sent a letter dated De$e5.er )),
)00) to .oth S%I and N6%I enEoinin- the5 to $ease usin- the su.Ee$t li-ht
.o9es and to re5ove the sa5e fro5 S%I?s esta.lish5ents" It also de5anded
the dis$ontinued use of the trade5ar2 8Poster ,ds,= and the pa&5ent to Pearl
and Dean of $o5pensator& da5a-es in the a5ount of Twent& %illion Pesos
!P'(,(((,((("((#"
Dpon re$eipt of the de5and letter, S%I suspended the leasin- of two hundred
twent&4four !''4# li-ht .o9es and N6%I too2 down its advertise5ents for 8Poster
,ds= fro5 the li-hted displa& units in S%I?s stores" Clai5in- that .oth S%I and
N6%I failed to 5eet all its de5ands, Pearl and Dean filed this instant $ase for
infrin-e5ent of trade5ar2 and $op&ri-ht, unfair $o5petition and da5a-es"
In den&in- the $har-es hurled a-ainst it, S%I 5aintained that it independentl&
developed its poster panels usin- $o55onl& 2nown te$hniAues and availa.le
te$hnolo-&, without noti$e of or referen$e to Pearl and Dean?s $op&ri-ht" S%I
noted that the re-istration of the 5ar2 8Poster ,ds= was onl& for stationeries
su$h as letterheads, envelopes, and the li2e" 3esides, a$$ordin- to S%I, the
word 8Poster ,ds= is a -eneri$ ter5 whi$h $annot .e appropriated as a
trade5ar2, and, as su$h, re-istration of su$h 5ar2 is invalid" It also stressed
that Pearl and Dean is not entitled to the reliefs pra&ed for in its $o5plaint sin$e
its advertisin- displa& units $ontained no $op&ri-ht noti$e, in violation of Se$tion
'B of P"D" 40" S%I alle-ed that Pearl and Dean had no $ause of a$tion a-ainst it
and that the suit was purel& intended to 5ali-n S%I?s -ood na5e" On this .asis,
S%I, aside fro5 pra&in- for the dis5issal of the $ase, also $ounter$lai5ed for
5oral, a$tual and e9e5plar& da5a-es and for the $an$ellation of Pearl and
Dean?s Certifi$ation of Cop&ri-ht Re-istration No" PD4R4'55< dated ;anuar& '(,
)0<) and Certifi$ate of Trade5ar2 Re-istration No" 4)15 dated Septe5.er )',
)0<<"
N6%I, for its part, denied havin- 5anufa$tured, installed or used an& advertisin-
displa& units, nor havin- en-a-ed in the .usiness of advertisin-" It repleaded
S%I?s aver5ents, ad5issions and denials and pra&ed for si5ilar reliefs and
$ounter$lai5s as S%I"=
The RTC of %a2ati Cit& de$ided in favor of P D7
Fherefore, defendants S%I and N6%I are found Eointl& and severall& lia.le for
infrin-e5ent of $op&ri-ht under Se$tion ' of PD 40, as a5ended, and
infrin-e5ent of trade5ar2 under Se$tion '' of R, No" )11, as a5ended, and
are here.& penali:ed under Se$tion '< of PD 40, as a5ended, and Se$tions '/
and '4 of R, )11, as a5ended" ,$$ordin-l&, defendants are here.& dire$ted7
!)# to pa& plaintiff the followin- da5a-es7
!a# a$tual da5a-es 4 P)1,1((,((("((,
representin- profits
derived .& defendants
as a result of infrin-e4
5ent of plaintiff?s $op&ri-ht
fro5 )00) to )00'
!.# 5oral da5a-es 4 P),((("((("((
!$# e9e5plar& da5a-es 4 P),(((,((("((
!d# attorne&?s fees 4 P),(((,((("((
plus
!e# $osts of suitG
!'# to deliver, under oath, for i5poundin- in the National Hi.rar&, all
li-ht .o9es of S%I whi$h were fa.ri$ated .& %etro Industrial
Servi$es and 6CD Rain.ow ,dvertisin- CorporationG
!/# to deliver, under oath, to the National Hi.rar&, all filler4posters
usin- the trade5ar2 8Poster ,ds=, for destru$tionG and
!4# to per5anentl& refrain fro5 infrin-in- the $op&ri-ht on plaintiff?s
li-ht .o9es and its trade5ar2 8Poster ,ds="
Defendants? $ounter$lai5s are here.& ordered dis5issed for la$2 of
5erit"
SO ORD6R6D"*4+
On appeal, however, the Court of ,ppeals reversed the trial $ourt7
Sin$e the li-ht .o9es $annot, .& an& stret$h of the i5a-ination, .e $onsidered
as either prints, pi$torial illustrations, advertisin- $opies, la.els, ta-s or .o9
wraps, to .e properl& $lassified as a $op&ri-hta.le $lass 8O= wor2, we have to
a-ree with S%I when it posited that what was $op&ri-hted were the te$hni$al
drawin-s onl&, and not the li-ht .o9es the5selves, thus7
4'" Fhen a drawin- is te$hni$al and depi$ts a utilitarian o.Ee$t, a $op&ri-ht over
the drawin-s li2e plaintiff4appellant?s will not e9tend to the a$tual o.Ee$t" It has
so .een held under Eurispruden$e, of whi$h the leadin- $ase is 3a2er vs" Selden
!)() D"S" <4) !)<B0#" In that $ase, Selden had o.tained a $op&ri-ht prote$tion
for a .oo2 entitled 8Selden?s Condensed Hed-er or 3oo22eepin- Si5plified=
whi$h purported to e9plain a new s&ste5 of .oo22eepin-" In$luded as part of the
.oo2 were .lan2 for5s and illustrations $onsistin- of ruled lines and headin-s,
spe$iall& desi-ned for use in $onne$tion with the s&ste5 e9plained in the wor2"
These for5s showed the entire operation of a da& or a wee2 or a 5onth on a
sin-le pa-e, or on two pa-es followin- ea$h other" The defendant 3a2er then
produ$ed for5s whi$h were si5ilar to the for5s illustrated in Selden?s
$op&ri-hted .oo2s" The Court held that e9$lusivit& to the a$tual for5s is not
e9tended .& a $op&ri-ht" The reason was that 8to -rant a 5onopol& in the
underl&in- art when no e9a5ination of its novelt& has ever .een 5ade would .e
a surprise and a fraud upon the pu.li$G that is the provin$e of letters patent, not
of $op&ri-ht"= ,nd that is pre$isel& the point" No dou.t aware that its alle-ed
ori-inal desi-n would never pass the ri-orous e9a5ination of a patent
appli$ation, plaintiff4appellant fou-ht to foist a fraudulent 5onopol& on the pu.li$
.& $onvenientl& resortin- to a $op&ri-ht re-istration whi$h 5erel& e5plo&s a
re$ordal s&ste5 without the .enefit of an in4depth e9a5ination of novelt&"
The prin$iple in Baker vs. Selden was li2ewise applied in Muller vs. Triborough
Bridge Authority *4/ >" Supp" '0< !S"D"N"C" )04'#+" In this $ase, %uller had
o.tained a $op&ri-ht over an unpu.lished drawin- entitled 83rid-e ,pproa$h I
the drawin- showed a novel .rid-e approa$h to unsnarl traffi$ $on-estion=" The
defendant $onstru$ted a .rid-e approa$h whi$h was alle-ed to .e an
infrin-e5ent of the new desi-n illustrated in plaintiff?s drawin-s" In this $ase it
was held that prote$tion of the drawin- does not e9tend to the unauthori:ed
dupli$ation of the o.Ee$t drawn .e$ause $op&ri-ht e9tends onl& to the
des$ription or e9pression of the o.Ee$t and not to the o.Ee$t itself" It does not
prevent one fro5 usin- the drawin-s to $onstru$t the o.Ee$t portra&ed in the
drawin-"
In two other $ases, Imperial Homes Corp. v. Lamont, 45< >" 'd <05 and Scholt
Homes! Inc. v. Maddo", /B0 >" 'd <4, it was held that there is no $op&ri-ht
infrin-e5ent when one who, without .ein- authori:ed, uses a $op&ri-hted
ar$hite$tural plan to $onstru$t a stru$ture" This is .e$ause the $op&ri-ht does
not e9tend to the stru$tures the5selves"
In fine, we $annot find S%I lia.le for infrin-in- Pearl and Dean?s $op&ri-ht over
the te$hni$al drawin-s of the latter?s advertisin- displa& units"
999 999 999
The Supre5e Court tren$hantl& held in #aberge! Incorporated vs. Intermediate
Appellate Court that the prote$tive 5antle of the Trade5ar2 Haw e9tends onl& to
the -oods used .& the first user as spe$ified in the $ertifi$ate of re-istration,
followin- the $lear 5andate $onve&ed .& Se$tion '( of Repu.li$ ,$t )11, as
a5ended, otherwise 2nown as the Trade5ar2 Haw, whi$h reads7
S6C" '(" Certi$ication o$ registration prima $acie evidence o$ validity"4 ,
$ertifi$ate of re-istration of a 5ar2 or trade4na5e shall .e prima $acie eviden$e
of the validit& of the re-istration, the re-istrant?s ownership of the 5ar2 or trade4
na5e, and of the re-istrant?s e9$lusive ri-ht to use the sa5e in $onne$tion with
the -oods, .usiness or servi$es spe$ified in the $ertifi$ate, su.Ee$t to an&
$onditions and li5itations stated therein"= !underscoring supplied#
The re$ords show that on ;une '(, )0</, Pearl and Dean applied for the
re-istration of the trade5ar2 8Poster ,ds= with the 3ureau of Patents,
Trade5ar2s, and Te$hnolo-& Transfer" Said trade5ar2 was re$orded in the
Prin$ipal Re-ister on Septe5.er )', )0<< under Re-istration No" 4))15
$overin- the followin- produ$ts7 stationeries su$h as letterheads, envelopes
and $allin- $ards and newsletters"
Fith this as fa$tual .a$2drop, we see no le-al .asis to the findin- of lia.ilit& on
the part of the defendants4appellants for their use of the words 8Poster ,ds=, in
the advertisin- displa& units in suit" ;urispruden$e has interpreted Se$tion '( of
the Trade5ar2 Haw as 8an i5pli$it per5ission to a 5anufa$turer to venture into
the produ$tion of -oods and allow that produ$er to appropriate the .rand na5e
of the senior re-istrant on -oods other than those stated in the $ertifi$ate of
re-istration"= The Supre5e Court further e5phasi:ed the restri$tive 5eanin- of
Se$tion '( when it stated, throu-h ;usti$e Conrado V" San$he:, that7
Reall&, if the $ertifi$ate of re-istration were to .e dee5ed as in$ludin- -oods not
spe$ified therein, then a situation 5a& arise where.& an appli$ant 5a& .e
te5pted to re-ister a trade5ar2 on an& and all -oods whi$h his 5ind 5a&
$on$eive even if he had never intended to use the trade5ar2 for the said
-oods" Fe .elieve that su$h o5ni.us re-istration is not $onte5plated .& our
Trade5ar2 Haw"
Fhile we do not dis$ount the stri2in- si5ilarit& .etween Pearl and Dean?s
re-istered trade5ar2 and defendants4appellants? 8Poster ,ds= desi-n, as well as
the parallel use .& whi$h said words were used in the parties? respe$tive
advertisin- $opies, we $annot find defendants4appellants lia.le for infrin-e5ent
of trade5ar2" 8Poster ,ds= was re-istered .& Pearl and Dean for spe$ifi$ use in
its stationeries, in $ontrast to defendants4appellants who used the sa5e words
in their advertisin- displa& units" Fh& Pearl and Dean li5ited the use of its
trade5ar2 to stationeries is si5pl& .e&ond us" 3ut, havin- alread& done so, it
5ust stand .& the $onseAuen$e of the re-istration whi$h it had $aused"
999 999 999
Fe are $onstrained to adopt the view of defendants4appellants that the words
8Poster ,ds= are a si5ple $ontra$tion of the -eneri$ ter5 poster advertisin-" In
the a.sen$e of an& $onvin$in- proof that 8Poster ,ds= has a$Auired a se$ondar&
5eanin- in this Eurisdi$tion, we find that Pearl and Dean?s e9$lusive ri-ht to the
use of 8Poster ,ds= is li5ited to what is written in its $ertifi$ate of re-istration,
na5el&, stationeries"
Defendants4appellants $annot thus .e held lia.le for infrin-e5ent of the
trade5ar2 8Poster ,ds="
There .ein- no findin- of either $op&ri-ht or trade5ar2 infrin-e5ent on the part
of S%I and N6%I, the 5onetar& award -ranted .& the lower $ourt to Pearl and
Dean has no le- to stand on"
999 999 999
FH6R6>OR6, pre5ises $onsidered, the assailed de$ision is R6V6RS6D and
S6T ,SID6, and another is rendered DIS%ISSIN@ the $o5plaint and
$ounter$lai5s in the a.ove4entitled $ase for la$2 of 5erit"*5+
Dissatisfied with the a.ove de$ision, petitioner P D filed the instant
petition assi-nin- the followin- errors for the Court?s $onsideration7
," TH6 HONOR,3H6 CODRT O> ,PP6,HS 6RR6D IN RDHIN@
TH,T NO COPCRI@HT IN>RIN@6%6NT F,S CO%%ITT6D
3C R6SPOND6NTS S% ,ND N6%IG
3" TH6 HONOR,3H6 CODRT O> ,PP6,HS 6RR6D IN RDHIN@
TH,T NO IN>RIN@6%6NT O> P6,RH D6,N?S
TR,D6%,RJ 8POST6R ,DS= F,S CO%%ITT6D 3C
R6SPOND6NTS S% ,ND N6%IG
C" TH6 HONOR,3H6 CODRT O> ,PP6,HS 6RR6D IN
DIS%ISSIN@ TH6 ,F,RD O> TH6 TRI,H CODRT, D6SPIT6
TH6 H,TT6R?S >INDIN@, NOT DISPDT6D 3C TH6
HONOR,3H6 CODRT O> ,PP6,HS, TH,T S% F,S @DIHTC
O> 3,D >,ITH IN ITS N6@OTI,TION O> ,DV6RTISIN@
CONTR,CTS FITH P6,RH D6,N"
D" TH6 HONOR,3H6 CODRT O> ,PP6,HS 6RR6D IN NOT
HOHDIN@ R6SPOND6NTS S% ,ND N6%I HI,3H6 TO P6,RH
D6,N >OR ,CTD,H, %OR,H 6K6%PH,RC D,%,@6S,
,TTORN6C?S >66S ,ND COSTS O> SDIT"*1+
I""*E"
In resolvin- this ver& interestin- $ase, we are $hallen-ed on$e a-ain to put
into proper perspe$tive four 5ain $on$erns of intelle$tual propert& law L
patents, $op&ri-hts, trade5ar2s and unfair $o5petition arisin- fro5 infrin-e5ent
of an& of the first three" Fe shall fo$us then on the followin- issues7
!)# if the en-ineerin- or te$hni$al drawin-s of an advertisin- displa&
unit !li-ht .o9# are -ranted $op&ri-ht prote$tion !$op&ri-ht $ertifi$ate of
re-istration# .& the National Hi.rar&, is the li-ht .o9 depi$ted in su$h
en-ineerin- drawin-s ipso fa$to also prote$ted .& su$h $op&ri-htM
!'# or should the li-ht .o9 .e re-istered separatel& and prote$ted .& a
patent issued .& the 3ureau of Patents Trade5ar2s and Te$hnolo-&
Transfer !now Intelle$tual Propert& Offi$e# L in addition to the
$op&ri-ht of the en-ineerin- drawin-sM
!/# $an the owner of a re-istered trade5ar2 le-all& prevent others fro5
usin- su$h trade5ar2 if it is a 5ere a..reviation of a ter5 des$riptive
of his -oods, servi$es or .usinessM
N !HE I""*E ) CP+RIGH! IN)RINGE#EN!
Petitioner P D?s $o5plaint was that S%I infrin-ed on its $op&ri-ht over the
li-ht .o9es when S%I had the units 5anufa$tured .& %etro and 6CD Rain.ow
,dvertisin- for its own a$$ount" O.viousl&, petitioner?s position was pre5ised
on its .elief that its $op&ri-ht over the en-ineerin- drawin-s e9tended ipso $acto
to the li-ht .o9es depi$ted or illustrated in said drawin-s" In rulin- that there
was no $op&ri-ht infrin-e5ent, the Court of ,ppeals held that the $op&ri-ht was
li5ited to the drawin-s alone and not to the li-ht .o9 itself" Fe a-ree with the
appellate $ourt"
>irst, petitioner?s appli$ation for a $op&ri-ht $ertifi$ate L as well as
Cop&ri-ht Certifi$ate No" PD4R'5<< issued .& the National Hi.rar& on ;anuar&
'(, )0<) L $learl& stated that it was for a $lass 8O= wor2 under Se$tion ' !O# of
PD 40 !The Intelle$tual Propert& De$ree# whi$h was the statute then prevailin-"
Said Se$tion ' e9pressl& enu5erated the wor2s su.Ee$t to $op&ri-ht7
S6C" '" The ri-hts -ranted .& this De$ree shall, fro5 the 5o5ent of $reation,
su.sist with respe$t to an& of the followin- wor2s7
9 9 9 9 9 9 9 9 9
!O# Prints, pi$torial illustrations, advertisin- $opies, la.els, ta-s, and .o9 wrapsG
9 9 9 9 9 9 9 9 9
,lthou-h petitioner?s $op&ri-ht $ertifi$ate was entitled 8,dvertisin- Displa&
Dnits= !whi$h depi$ted the .o94t&pe ele$tri$al devi$es#, its $lai5 of $op&ri-ht
infrin-e5ent $annot .e sustained"
Cop&ri-ht, in the stri$t sense of the ter5, is purel& a statutor& ri-ht" 3ein- a
5ere statutor& -rant, the ri-hts are li5ited to what the statute $onfers" It 5a& .e
o.tained and enEo&ed onl& with respe$t to the su.Ee$ts and .& the persons, and
on ter5s and $onditions spe$ified in the statute"*B+ Accordingly! it can cover
only the %orks $alling %ithin the statutory enumeration or description.*<+
P D se$ured its $op&ri-ht under the $lassifi$ation class &'( %ork. This
.ein- so, petitioner?s $op&ri-ht prote$tion e9tended onl& to the te$hni$al
drawin-s and not to the li-ht .o9 itself .e$ause the latter was not at all in the
$ate-or& of 8prints, pi$torial illustrations, advertisin- $opies, la.els, ta-s and .o9
wraps"= Stated otherwise, even as we find that P D indeed owned a valid
$op&ri-ht, the sa5e $ould have referred onl& to the te$hni$al drawin-s within the
$ate-or& of 8pi$torial illustrations"= It $ould not have possi.l& stret$hed out to
in$lude the underl&in- li-ht .o9" The stri$t appli$ation*0+ of the law?s
enu5eration in Se$tion ' prevents us fro5 -ivin- petitioner even a little leewa&,
that is, even if its $op&ri-ht $ertifi$ate was entitled 8,dvertisin- Displa& Dnits"=
Fhat the law does not in$lude, it e9$ludes, and for the -ood reason7 the li-ht
.o9 was not a literar& or artisti$ pie$e whi$h $ould .e $op&ri-hted under the
$op&ri-ht law" ,nd no less $learl&, neither $ould the la$2 of statutor& authorit& to
5a2e the li-ht .o9 $op&ri-hta.le .e re5edied .& the si5plisti$ a$t of entitlin-
the $op&ri-ht $ertifi$ate issued .& the National Hi.rar& as 8,dvertisin- Displa&
Dnits"=
In fine, if S%I and N6%I reprinted P D?s te$hni$al drawin-s for sale to the
pu.li$ without li$ense fro5 P D, then no dou.t the& would have .een -uilt& of
$op&ri-ht infrin-e5ent" 3ut this was not the $ase" S%I?s and N6%I?s a$ts
$o5plained of .& P D were to have units si5ilar or identi$al to the li-ht .o9
illustrated in the te$hni$al drawin-s 5anufa$tured .& %etro and 6CD Rain.ow
,dvertisin-, for leasin- out to different advertisers" Fas this an infrin-e5ent of
petitioner?s $op&ri-ht over the te$hni$al drawin-sM Fe do not thin2 so"
Durin- the trial, the president of P D hi5self ad5itted that the li-ht .o9
was neither a literar& not an artisti$ wor2 .ut an 8en-ineerin- or 5ar2etin-
invention"=*)(+ O.viousl&, there appeared to .e so5e $onfusion re-ardin- what
ou-ht or ou-ht not to .e the proper su.Ee$ts of $op&ri-hts, patents and
trade5ar2s" In the leadin- $ase of )ho vs. Court o$ Appeals!*))+ we ruled that
these three le-al ri-hts are $o5pletel& distin$t and separate fro5 one another,
and the prote$tion afforded .& one $annot .e used inter$han-ea.l& to $over
ite5s or wor2s that e9$lusivel& pertain to the others7
Trade5ar2, $op&ri-ht and patents are different intelle$tual propert& ri-hts that
$annot .e inter$han-ed with one another" A trademark is any visible sign
capable o$ distinguishing the goods *trademark+ or services *service mark+ o$ an
enterprise and shall include a stamped or marked container o$ goods" In relation
thereto, a trade na5e 5eans the na5e or desi-nation identif&in- or
distin-uishin- an enterprise" %eanwhile, the scope o$ a copyright is con$ined to
literary and artistic %orks whi$h are ori-inal intelle$tual $reations in the literar&
and artisti$ do5ain prote$ted fro5 the 5o5ent of their $reation" ,atentable
inventions! on the other hand! re$er to any technical solution o$ a problem in any
$ield o$ human activity whi$h is new, involves an inventive step and is industriall&
appli$a.le"
N !HE I""*E ) PA!EN! IN)RINGE#EN!
This .rin-s us to the ne9t point7 if, despite its 5anufa$ture and $o55er$ial
use of the light bo"es without li$ense fro5 petitioner, private respondents $annot
.e held le-all& lia.le for infrin-e5ent of P D?s $op&ri-ht over its technical
dra%ings o$ the said light bo"es, should the& .e lia.le instead for infrin-e5ent of
patentM Fe do not thin2 so either"
>or so5e reason or another, petitioner never se$ured a patent for the li-ht
.o9es" It therefore a$Auired no patent ri-hts whi$h $ould have prote$ted its
invention, if in fa$t it reall& was" ,nd .e$ause it had no patent, petitioner $ould
not le-all& prevent an&one fro5 5anufa$turin- or $o55er$iall& usin- the
$ontraption" In Creser ,recision Systems! Inc. vs. Court o$ Appeals!*)'+ we held
that 8there $an .e no infrin-e5ent of a patent until a patent has .een issued,
sin$e whatever ri-ht one has to the invention $overed .& the patent arises alone
$rom the grant o$ patent" 9 9 9 !,#n inventor has no $o55on law ri-ht to a
5onopol& of his invention" He has the ri-ht to 5a2e use of and vend his
invention, .ut if he voluntaril& dis$loses it, su$h as .& offerin- it for sale, the
world is free to $op& and use it with i5punit&" , patent, however, -ives the
inventor the ri-ht to e9$lude all others" ,s a patentee, he has the e9$lusive ri-ht
of 5a2in-, sellin- or usin- the invention"*)/+ On the assu5ption that petitioner?s
advertisin- units were patenta.le inventions, petitioner revealed the5 full& to the
pu.li$ .& su.5ittin- the en-ineerin- drawin-s thereof to the National Hi.rar&"
To .e a.le to effe$tivel& and le-all& pre$lude others fro5 $op&in- and
profitin- fro5 the invention, a patent is a pri5ordial reAuire5ent" No patent, no
prote$tion" The ulti5ate -oal of a patent s&ste5 is to .rin- new desi-ns and
te$hnolo-ies into the pu.li$ do5ain throu-h dis$losure"*)4+ Ideas, on$e
dis$losed to the pu.li$ without the prote$tion of a valid patent, are su.Ee$t to
appropriation without si-nifi$ant restraint"*)5+
On one side of the $oin is the pu.li$ whi$h will .enefit fro5 new ideasG on
the other are the inventors who 5ust .e prote$ted" ,s held in Bauer - Cie vs.
'./onnel,*)1+ 8The a$t se$ured to the inventor the e9$lusive ri-ht to 5a2e use,
and vend the thin- patented, and $onseAuentl& to prevent others fro5
e9er$isin- li2e privile-es without the $onsent of the patentee" It was passed for
the purpose of en$oura-in- useful invention and pro5otin- new and useful
inventions .& the prote$tion and sti5ulation -iven to inventive -enius, and was
intended to se$ure to the pu.li$, after the lapse of the e9$lusive privile-es
-ranted the .enefit of su$h inventions and i5prove5ents"=
The law atte5pts to stri2e an ideal .alan$e .etween the two interests7
8!The p#atent s&ste5 thus e5.odies a $arefull& $rafted .ar-ain for en$oura-in-
the $reation and dis$losure of new useful and non4o.vious advan$es in
te$hnolo-& and desi-n, in return for the e9$lusive ri-ht to pra$ti$e the invention
for a nu5.er of &ears" The inventor 5a& 2eep his invention se$ret and reap its
fruits indefinitel&" In $onsideration of its dis$losure and the $onseAuent .enefit to
the $o55unit&, the patent is -ranted" ,n e9$lusive enEo&5ent is -uaranteed hi5
for )B &ears, .ut upon the e9piration of that period, the 2nowled-e of the
invention inures to the people, who are thus ena.led to pra$ti$e it and profit .&
its use"=*)B+
The patent law has a three4fold purpose7 8first, patent law see2s to foster
and reward inventionG se$ond, it pro5otes dis$losures of inventions to sti5ulate
further innovation and to per5it the pu.li$ to pra$ti$e the invention on$e the
patent e9piresG third, the strin-ent reAuire5ents for patent prote$tion see2 to
ensure that ideas in the pu.li$ do5ain re5ain there for the free use of the
pu.li$"=*)<+
It is onl& after an e9haustive e9a5ination .& the patent offi$e that a patent is
issued" Su$h an in4depth investi-ation is reAuired .e$ause 8in rewardin- a
useful invention, the ri-hts and welfare of the $o55unit& 5ust .e fairl& dealt
with and effe$tivel& -uarded" To that end, the prereAuisites to o.tainin- a patent
are stri$tl& o.served and when a patent is issued, the li5itations on its e9er$ise
are eAuall& stri$tl& enfor$ed" To .e-in with, a -enuine invention or dis$over&
5ust .e de5onstrated lest in the $onstant de5and for new applian$es, the
heav& hand of tri.ute .e laid on ea$h sli-ht te$hnolo-i$al advan$e in art"=*)0+
There is no su$h s$rutin& in the $ase of $op&ri-hts nor an& noti$e pu.lished
.efore its -rant to the effe$t that a person is $lai5in- the $reation of a wor2" The
law $onfers the $op&ri-ht fro5 the 5o5ent of $reation*'(+ and the $op&ri-ht
$ertifi$ate is issued upon re-istration with the National Hi.rar& of a sworn e"0
parte $lai5 of $reation"
Therefore, not havin- -one throu-h the arduous e9a5ination for patents,
the petitioner $annot e9$lude others fro5 the 5anufa$ture, sale or $o55er$ial
use of the li-ht .o9es on the sole .asis of its $op&ri-ht $ertifi$ate over the
te$hni$al drawin-s"
Stated otherwise, what petitioner see2s is e9$lusivit& without an&
opportunit& for the patent offi$e !IPO# to s$rutini:e the li-ht .o9?s eli-i.ilit& as a
patenta.le invention" The iron& here is that, had petitioner se$ured a patent
instead, its e9$lusivit& would have .een for )B &ears onl&" 3ut throu-h the
si5plified pro$edure of $op&ri-ht4re-istration with the National Hi.rar& L without
under-oin- the ri-or of defendin- the patenta.ilit& of its invention .efore the IPO
and the pu.li$ L the petitioner would .e prote$ted for 5( &ears" This situation
$ould not have .een the intention of the law"
In the oft4$ited $ase of Baker vs. Selden*')+, the Dnited States Supre5e
Court held that only the e"pression o$ an idea is protected by copyright! not the
idea itsel$" In that $ase, the plaintiff held the $op&ri-ht of a .oo2 whi$h
e9pounded on a new a$$ountin- s&ste5 he had developed" The pu.li$ation
illustrated .lan2 for5s of led-ers utili:ed in su$h a s&ste5" The defendant
reprodu$ed for5s si5ilar to those illustrated in the plaintiff?s $op&ri-hted .oo2"
The DS Supre5e Court ruled that7
8There is no dou.t that a wor2 on the su.Ee$t of .oo242eepin-, thou-h onl&
e9planator& of well 2nown s&ste5s, 5a& .e the su.Ee$t of a $op&ri-htG .ut, then,
it is $lai5ed onl& as a .oo2" 9 9 9" 3ut there is a $lear distin$tion .etween the
.oo2s, as su$h, and the art, whi$h it is, intended to illustrate" The 5ere
state5ent of the proposition is so evident that it reAuires hardl& an& ar-u5ent to
support it" The sa5e distin$tion 5a& .e predi$ated of ever& other art as well as
that of .oo22eepin-" , treatise on the $o5position and use of 5edi$ines, .e
the& old or newG on the $onstru$tion and use of plou-hs or wat$hes or $hurnsG or
on the 5i9ture and appli$ation of $olors for paintin- or d&ein-G or on the 5ode of
drawin- lines to produ$e the effe$t of perspe$tive, would .e the su.Ee$t of
$op&ri-htG .ut no one would $ontend that the $op&ri-ht of the treatise would -ive
the e9$lusive ri-ht to the art or 5anufa$ture des$ri.ed therein" The $op&ri-ht of
the .oo2, if not pirated fro5 other wor2s, would .e valid without re-ard to the
novelt& or want of novelt& of its su.Ee$t 5atter" The novelt& of the art or thin-
des$ri.ed or e9plained has nothin- to do with the validit& of the $op&ri-ht" !o
g,-. to t/. $ut/o0 o1 t/. 2oo3 $% .456us,-. 70o7.0t8 ,% t/. $0t &.s50,2.&
t/.0.,%, 9/.% %o .4$:,%$t,o% o1 ,ts %o-.6t8 /$s .-.0 2..% o11,5,$668 :$&.,
9ou6& 2. $ su070,s. $%& $ 10$u& u7o% t/. 7u26,5. !/$t ,s t/. 70o-,%5. o1
6.tt.0s 7$t.%t, %ot o1 5o780,g/t. !/. 56$,: to $% ,%-.%t,o% o1 &,s5o-.08 o1
$% $0t o0 :$%u1$5tu0. :ust 2. su2;.5t.& to t/. .4$:,%$t,o% o1 t/. P$t.%t
11,5. 2.1o0. $% .456us,-. 0,g/t t/.0.,% 5$% 2. o2t$,%.&< $%& $ 7$t.%t 10o:
t/. go-.0%:.%t 5$% o%68 s.5u0. ,t.
The differen$e .etween the two thin-s, letters patent and $op&ri-ht, 5a& .e
illustrated .& referen$e to the su.Ee$ts Eust enu5erated" Ta2e the $ase of
5edi$ines" Certain 5i9tures are found to .e of -reat value in the healin- art" I1
t/. &,s5o-.0.0 90,t.s $%& 7u26,s/.s $ 2oo3 o% t/. su2;.5t ($s 0.gu6$0
7/8s,5,$%s g.%.0$668 &o), /. g$,%s %o .456us,-. 0,g/t to t/. :$%u1$5tu0.
$%& s$6. o1 t/. :.&,5,%.< /. g,-.s t/$t to t/. 7u26,5. I1 /. &.s,0.s to
$5=u,0. su5/ .456us,-. 0,g/t, /. :ust o2t$,% $ 7$t.%t 1o0 t/. :,4tu0. $s $
%.9 $0t, :$%u1$5tu0. o0 5o:7os,t,o% o1 :$tt.0. H. :$8 5o780,g/t /,s
2oo3, ,1 /. 76.$s.s< 2ut t/$t o%68 s.5u0.s to /,: t/. .456us,-. 0,g/t o1
70,%t,%g $%& 7u26,s/,%g /,s 2oo3. "o o1 $66 ot/.0 ,%-.%t,o%s o0 &,s5o-.0,.s.
The $op&ri-ht of a .oo2 on perspe$tive, no 5atter how 5an& drawin-s and
illustrations it 5a& $ontain, -ives no e9$lusive ri-ht to the 5odes of drawin-
des$ri.ed, thou-h the& 5a& never have .een 2nown or used .efore" 3&
pu.lishin- the .oo2 without -ettin- a patent for the art, the latter is -iven to the
pu.li$"
9 9 9
Now, whilst no one has a ri-ht to print or pu.lish his .oo2, or an& 5aterial part
thereof, as a .oo2 intended to $onve& instru$tion in the art, an& person 5a&
pra$ti$e and use the art itself whi$h he has des$ri.ed and illustrated therein"
!/. us. o1 t/. $0t ,s $ tot$668 &,11.0.%t t/,%g 10o: $ 7u26,5$t,o% o1 t/. 2oo3
.476$,%,%g ,t. The $op&ri-ht of a .oo2 on .oo22eepin- $annot se$ure the
e9$lusive ri-ht to 5a2e, sell and use a$$ount .oo2s prepared upon the plan set
forth in su$h .oo2" Fhether the art 5i-ht or 5i-ht not have .een patented, is a
Auestion, whi$h is not .efore us" It was not patented, and is open and free to
the use of the pu.li$" ,nd, of $ourse, in usin- the art, the ruled lines and
headin-s of a$$ounts 5ust ne$essaril& .e used as in$ident to it"
The plausi.ilit& of the $lai5 put forward .& the $o5plainant in this $ase arises
fro5 a $onfusion of ideas produ$ed .& the pe$uliar nature of the art des$ri.ed in
the .oo2s, whi$h have .een 5ade the su.Ee$t of $op&ri-ht" In des$ri.in- the
art, the illustrations and dia-ra5s e5plo&ed happened to $orrespond 5ore
$losel& than usual with the a$tual wor2 perfor5ed .& the operator who uses the
art" 9 9 9 !/. &.s50,7t,o% o1 t/. $0t ,% $ 2oo3, t/oug/ .%t,t6.& to t/.
2.%.1,t o1 5o780,g/t, 6$8s %o 1ou%&$t,o% 1o0 $% .456us,-. 56$,: to t/. $0t
,ts.61. !/. o2;.5t o1 t/. o%. ,s .476$%$t,o%< t/. o2;.5t o1 t/. ot/.0 ,s us..
!/. 1o0:.0 :$8 2. s.5u0.& 28 5o780,g/t. !/. 6$tt.0 5$% o%68 2. s.5u0.&,
,1 ,t 5$% 2. s.5u0.& $t $66, 28 6.tt.0s 7$t.%t.> !unders$orin- supplied#
N !HE I""*E ) !RADE#AR' IN)RINGE#EN!
This issue $on$erns the use .& respondents of the 5ar2 8Poster ,ds= whi$h
petitioner?s president said was a $ontra$tion of 8poster advertisin-"= P D was
a.le to se$ure a trade5ar2 $ertifi$ate for it, .ut one where the -oods spe$ified
were 8stationeries su$h as letterheads, envelopes, $allin- $ards and
newsletters"=*''+ Petitioner ad5itted it did not $o55er$iall& en-a-e in or 5ar2et
these -oods" On the $ontrar&, it dealt in ele$tri$all& operated .a$2lit advertisin-
units and the sale of advertisin- spa$es thereon, whi$h, however, were not at all
spe$ified in the trade5ar2 $ertifi$ate"
Dnder the $ir$u5stan$es, the Court of ,ppeals $orre$tl& $ited #aberge Inc.
vs. Intermediate Appellate Court,*'/+ where we, invo2in- Se$tion '( of the old
Trade5ar2 Haw, ruled that 8the $ertifi$ate of re-istration issued .& the Dire$tor of
Patents $an $onfer !upon petitioner# the e9$lusive ri-ht to use its own s&5.ol
only to those goods speci$ied in the certi$icate, su.Ee$t to an& $onditions and
li5itations spe$ified in the $ertifi$ate 9 9 9" One who has adopted and used a
trade5ar2 on his -oods does not prevent the adoption and use o$ the same
trademark by others $or products %hich are o$ a di$$erent description"=*'4+
#aberge! Inc. was $orre$t and was in fa$t re$entl& reiterated in Canon )abushiki
)aisha vs. Court o$ Appeals"*'5+
,ssu5in- arguendo that 8Poster ,ds= $ould validl& Aualif& as a trade5ar2,
the failure of P D to se$ure a trade5ar2 re-istration for spe$ifi$ use on the
li-ht .o9es 5eant that there $ould not have .een an& trade5ar2 infrin-e5ent
sin$e re-istration was an essential ele5ent thereof"
N !HE I""*E ) *N)AIR C#PE!I!IN
If at all, the $ause of a$tion should have .een for unfair $o5petition, a
situation whi$h was possi.le even if P D had no re-istration" *'1+ However,
while the petitioner?s $o5plaint in the RTC also $ited unfair $o5petition, the trial
$ourt did not find private respondents lia.le therefor" Petitioner did not appeal
this parti$ular pointG hen$e, it $annot now revive its $lai5 of unfair $o5petition"
3ut even disre-ardin- pro$edural issues, we nevertheless $annot hold
respondents -uilt& of unfair $o5petition"
3& the nature of thin-s, there $an .e no unfair $o5petition under the law on
$op&ri-hts althou-h it is appli$a.le to disputes over the use of trade5ar2s" 6ven
a na5e or phrase in$apa.le of appropriation as a trade5ar2 or tradena5e 5a&,
.& lon- and e9$lusive use .& a .usiness !su$h that the na5e or phrase
.e$o5es asso$iated with the .usiness or produ$t in the 5ind of the pur$hasin-
pu.li$#, .e entitled to prote$tion a-ainst unfair $o5petition"*'B+ In this $ase,
there was no eviden$e that P D?s use of 8Poster ,ds= was distin$tive or well4
2nown" ,s noted .& the Court of ,ppeals, petitioner?s e9pert witnesses hi5self
had testified that 8 NPoster ,ds? was too -eneri$ a na5e" So it was diffi$ult to
identif& it with an& $o5pan&, honestl& spea2in-"=*'<+ This $ru$ial ad5ission .&
its own e9pert witness that 8Poster ,ds= $ould not .e asso$iated with P D
showed that, in the 5ind of the pu.li$, the -oods and servi$es $arr&in- the
trade5ar2 8Poster ,ds= $ould not .e distin-uished fro5 the -oods and servi$es
of other entities"
This fa$t also prevented the appli$ation of the do$trine of se$ondar&
5eanin-" 8Poster ,ds= was -eneri$ and in$apa.le of .ein- used as a trade5ar2
.e$ause it was used in the field of poster advertisin-, the ver& .usiness
en-a-ed in .& petitioner" 8Se$ondar& 5eanin-= 5eans that a word or phrase
ori-inall& in$apa.le of e9$lusive appropriation with referen$e to an arti$le in the
5ar2et !.e$ause it is -eo-raphi$all& or otherwise des$riptive# 5i-ht
nevertheless have .een used for so lon- and so e9$lusivel& .& one produ$er
with referen$e to his arti$le that, in the trade and to that .ran$h of the
pur$hasin- pu.li$, the word or phrase has $o5e to 5ean that the arti$le was his
propert&"*'0+ The ad5ission .& petitioner?s own e9pert witness that he hi5self
$ould not asso$iate 8Poster ,ds= with petitioner P D .e$ause it was 8too
-eneri$= definitel& pre$luded the appli$ation of this e9$eption"
Havin- dis$ussed the 5ost i5portant and $riti$al issues, we see no need to
.ela.or the rest"
,ll told, the Court finds no reversi.le error $o55itted .& the Court of
,ppeals when it reversed the Re-ional Trial Court of %a2ati Cit&"
?HERE)RE, the petition is here.& D6NI6D and the de$ision of the Court
of ,ppeals dated %a& '', '(() is ,>>IR%6D in toto"
" RDERED.
,uno! *Chairman+! ,anganiban! Sandoval01utierre! and Carpio0Morales!
22.! $on$ur
>IRST DIVISION
[G.R. No. 131522. @u68 1A, 1AAA]
PACI!A I. HABANA, ALICIA L. CINC $%& @CI!A N. )ERNAND,
petitioners, vs. )ELICIDAD C. RBLE" $%& GD?ILL !RADING
C., INC., respondents.
D E C I " I N
PARD, J.(
The $ase .efore us is a petition for review on certiorari*)+ to set aside the
!a# de$ision of the Court of ,ppeals*'+, and !.# the resolution den&in- petitioners?
5otion for re$onsideration,*/+ in whi$h the appellate $ourt affir5ed the trial
$ourt?s dis5issal of the $o5plaint for infrin-e5ent andOor unfair $o5petition and
da5a-es .ut deleted the award for attorne&?s fees"
The fa$ts are as follows7
Petitioners are authors and $op&ri-ht owners of dul& issued $ertifi$ates of
$op&ri-ht re-istration $overin- their pu.lished wor2s, produ$ed throu-h their
$o5.ined resour$es and efforts, entitled COHH6@6 6N@HISH >OR TOD,C
!C6T for .revit&#, 3oo2s ) and ', and FORJ3OOJ >OR COHH6@6
>R6SH%,N 6N@HISH, Series )"
Respondent >eli$idad Ro.les and @oodwill Tradin- Co", In$" are the
authorOpu.lisher and distri.utorOseller of another pu.lished wor2 entitled
8D6V6HOPIN@ 6N@HISH PRO>ICI6NCC= !D6P for .revit&#, 3oo2s ) and '
!)0<5 edition# whi$h .oo2 was $overed .& $op&ri-hts issued to the5"
In the $ourse of revisin- their pu.lished wor2s, petitioners s$outed and
loo2ed around various .oo2stores to $he$2 on other te9t.oo2s dealin- with the
sa5e su.Ee$t 5atter" 3& $han$e the& $a5e upon the .oo2 of respondent Ro.les
and upon perusal of said .oo2 the& were surprised to see that the .oo2 was
stri2in-l& si5ilar to the $ontents, s$he5e of presentation, illustrations and
illustrative e9a5ples in their own .oo2, C6T"
,fter an ite5i:ed e9a5ination and $o5parison of the two .oo2s !C6T and
D6P#, petitioners found that several pa-es of the respondent?s .oo2 are si5ilar,
if not all to-ether a $op& of petitioners? .oo2, whi$h is a $ase of pla-iaris5 and
$op&ri-ht infrin-e5ent"
Petitioners then 5ade de5ands for da5a-es a-ainst respondents and also
de5anded that the& $ease and desist fro5 further sellin- and distri.utin- to the
-eneral pu.li$ the infrin-ed $opies of respondent Ro.les? wor2s"
However, respondents i-nored the de5ands, hen$e, on ;ul& B, )0<<,
petitioners filed with the Re-ional Trial Court, %a2ati, a $o5plaint for
8Infrin-e5ent andOor unfair $o5petition with da5a-es=*4+ a-ainst private
respondents"*5+
In the $o5plaint, petitioners alle-ed that in )0<5, respondent >eli$idad C"
Ro.les .ein- su.stantiall& fa5iliar with the $ontents of petitioners? wor2s, and
without se$urin- their per5ission, lifted, $opied, pla-iari:ed andOor transposed
$ertain portions of their .oo2 C6T" The te9tual $ontents and illustrations of C6T
were literall& reprodu$ed in the .oo2 D6P" The pla-iaris5, in$orporation and
reprodu$tion of parti$ular portions of the .oo2 C6T in the .oo2 D6P, without the
authorit& or $onsent of petitioners, and the 5isrepresentations of respondent
Ro.les that the sa5e was her ori-inal wor2 and $on$ept adversel& affe$ted and
su.stantiall& di5inished the sale of the petitioners? .oo2 and $aused the5 a$tual
da5a-es .& wa& of unreali:ed in$o5e"
Despite the de5ands of the petitioners for respondents to desist fro5
$o55ittin- further a$ts of infrin-e5ent and for respondent to re$all D6P fro5
the 5ar2et, respondents refused" Petitioners as2ed the $ourt to order the
su.5ission of all $opies of the .oo2 D6P, to-ether with the 5olds, plates and
fil5s and other 5aterials used in its printin- destro&ed, and for respondents to
render an a$$ountin- of the pro$eeds of all sales and profits sin$e the ti5e of its
pu.li$ation and sale"
Respondent Ro.les was i5pleaded in the suit .e$ause she authored and
dire$tl& $o55itted the a$ts of infrin-e5ent $o5plained of, while respondent
@oodwill Tradin- Co", In$" was i5pleaded as the pu.lisher and Eoint $o4owner of
the $op&ri-ht $ertifi$ates of re-istration $overin- the two .oo2s authored and
$aused to .e pu.lished .& respondent Ro.les with o.vious $onnivan$e with one
another"
On ;ul& 'B, )0<<, respondent Ro.les filed a 5otion for a .ill of
parti$ulars*1+ whi$h the trial $ourt approved on ,u-ust )B, )0<<" Petitioners
$o5plied with the desired parti$ulari:ation, and furnished respondent Ro.les the
spe$ifi$ portions, in$lusive of pa-es and lines, of the pu.lished and $op&ri-hted
.oo2s of the petitioners whi$h were transposed, lifted, $opied and pla-iari:ed
andOor otherwise found their wa& into respondent?s .oo2"
On ,u-ust ), )0<<, respondent @oodwill Tradin- Co", In$" filed its answer
to the $o5plaint*B+ and alle-ed that petitioners had no $ause of a$tion a-ainst
@oodwill Tradin- Co", In$" sin$e it was not priv& to the 5isrepresentation,
pla-iaris5, in$orporation and reprodu$tion of the portions of the .oo2 of
petitionersG that there was an a-ree5ent .etween @oodwill and the respondent
Ro.les that Ro.les -uaranteed @oodwill that the 5aterials utili:ed in the
5anus$ript were her own or that she had se$ured the ne$essar& per5ission
fro5 $ontri.utors and sour$esG that the author assu5ed sole responsi.ilit& and
held the pu.lisher without an& lia.ilit&"
On Nove5.er '<, )0<<, respondent Ro.les filed her answer*<+, and denied
the alle-ations of pla-iaris5 and $op&in- that petitioners $lai5ed" Respondent
stressed that !)# the .oo2 D6P is the produ$t of her independent resear$hes,
studies and e9perien$es, and was not a $op& of an& e9istin- valid $op&ri-hted
.oo2G !'# D6P followed the s$ope and seAuen$e or s&lla.us whi$h are $o55on
to all 6n-lish -ra55ar writers as re$o55ended .& the ,sso$iation of Philippine
Colle-es of ,rts and S$ien$es !,PC,S#, so an& si5ilarit& .etween the
respondents .oo2 and that of the petitioners was due to the orientation of the
authors to .oth wor2s and standards and s&lla.usG and !/# the si5ilarities 5a&
.e due to the authors? e9er$ise of the 8ri-ht to fair use of $op&ri-thed 5aterials,
as -uides"=
Respondent interposed a $ounter$lai5 for da5a-es on the -round that .ad
faith and 5ali$e attended the filin- of the $o5plaint, .e$ause petitioner Ha.ana
was professionall& Eealous and the .oo2 D6P repla$ed C6T as the offi$ial
te9t.oo2 of the -raduate studies depart5ent of the >ar 6astern Dniversit&"*0+
Durin- the pre4trial $onferen$e, the parties a-reed to a stipulation of
fa$ts*)(+ and for the trial $ourt to first resolve the issue of infrin-e5ent .efore
disposin- of the $lai5 for da5a-es"
,fter the trial on the 5erits, on ,pril '/, )00/, the trial $ourt rendered its
Eud-5ent findin- thus7
D?HERE)RE, pre5ises $onsidered, the $ourt here.& orders that the
$o5plaint filed a-ainst defendants >eli$idad Ro.les and @oodwill Tradin- Co",
In$" shall .e DIS%ISS6DG that said plaintiffs solidaril& rei5.urse defendant
Ro.les for P'(,((("(( attorne&?s fees and defendant @oodwill for P5,((("((
attorne&?s fees" Plaintiffs are lia.le for $ost of suit"
I! I" " RDERED"
8Done in the Cit& of %anila this '/rd da& of ,pril, )00/"
8!sOt# %,RVI6 R" ,3R,H,% SIN@SON
8,ssistin- ;ud-e
8S" C" ,d5" Order No" )'440'=*))+
On %a& )4, )00/, petitioners filed their noti$e of appeal with the trial
$ourt*)'+, and on ;ul& )0, )00/, the $ourt dire$ted its .ran$h $ler2 of $ourt to
forward all the re$ords of the $ase to the Court of ,ppeals"*)/+
In the appeal, petitioners ar-ued that the trial $ourt $o5pletel& disre-arded
their eviden$e and full& su.s$ri.ed to the ar-u5ents of respondent Ro.les that
the .oo2s in issue were purel& the produ$t of her resear$hes and studies and
that the $opied portions were inspired .& forei-n authors and as su$h not
su.Ee$t to $op&ri-ht" Petitioners also assailed the findin-s of the trial $ourt that
the& were ani5ated .& .ad faith in institutin- the $o5plaint"*)4+
On ;une 'B, )00B, the Court of ,ppeals rendered Eud-5ent in favor of
respondents Ro.les and @oodwill Tradin- Co", In$" The relevant portions of the
de$ision state7
8It 5ust .e noted, however, that si5ilarit& of the alle-edl& infrin-ed wor2 to the
author?s or proprietor?s $op&ri-hted wor2 does not of itself esta.lish $op&ri-ht
infrin-e5ent, espe$iall& if the si5ilarit& results fro5 the fa$t that .oth wor2s deal
with the sa5e su.Ee$t or have the sa5e $o55on sour$e, as in this $ase"
,ppellee Ro.les has full& e9plained that the portion or 5aterial of the .oo2
$lai5ed .& appellants to have .een $opied or lifted fro5 forei-n .oo2s" She has
dul& proven that 5ost of the topi$s or 5aterials $ontained in her .oo2, with
parti$ular referen$e to those 5atters $lai5ed .& appellants to have .een
pla-iari:ed were topi$s or 5atters appearin- not onl& in appellants and her
.oo2s .ut also in earlier .oo2s on Colle-e 6n-lish, in$ludin- forei-n .oo2s, e"i"
6d5und 3ur2e?s 8Spee$h on Con$iliation=, 3oeri-s? 8Co5peten$e in 6n-lish=
and 3rou-hton?s, 86d5und 3ur2e?s Colle$tion"=
9 9 9
8,ppellant?s relian$e on the last para-raph on Se$tion )) is 5ispla$ed" It 5ust
.e e5phasi:ed that the& failed to prove that their .oo2s were 5ade sour$es .&
appellee"=*)5+
The Court of ,ppeals was of the view that the award of attorne&s? fees was
not proper, sin$e there was no .ad faith on the part of petitioners Ha.ana et al"
in institutin- the a$tion a-ainst respondents"
On ;ul& )', )00B, petitioners filed a 5otion for re$onsideration,*)1+
however, the Court of ,ppeals denied the sa5e in a Resolution*)B+ dated
Nove5.er '5, )00B"
Hen$e, this petition"
In this appeal, petitioners su.5it that the appellate $ourt erred in affir5in-
the trial $ourt?s de$ision"
Petitioners raised the followin- issues7 !)# whether or not, despite the
apparent te9tual, the5ati$ and seAuential si5ilarit& .etween D6P and C6T,
respondents $o55itted no $op&ri-ht infrin-e5entG !'# whether or not there was
animus $urandi on the part of respondent when the& refused to withdraw the
$opies of C6T fro5 the 5ar2et despite noti$e to withdraw the sa5eG and !/#
whether or not respondent Ro.les a.used a writer?s ri-ht to fair use, in violation
of Se$tion )) of Presidential De$ree No" 40"*)<+
Fe find the petition i5pressed with 5erit"
The $o5plaint for $op&ri-ht infrin-e5ent was filed at the ti5e that
Presidential De$ree No" 40 was in for$e" ,t present, all laws dealin- with the
prote$tion of intelle$tual propert& ri-hts have .een $onsolidated and as the law
now stands, the prote$tion of $op&ri-hts is -overned .& Repu.li$ ,$t No" <'0/"
Notwithstandin- the $han-e in the law, the sa5e prin$iples are reiterated in the
new law under Se$tion )BB" It provides for the $op& or e$ono5i$ ri-hts of an
owner of a $op&ri-ht as follows7
8Se$")BB" Cop& or 6$ono5i$ ri-hts"LSu.Ee$t to the provisions of $hapter VIII,
$op&ri-ht or e$ono5i$ ri-hts shall $onsist of the e9$lusive ri-ht to $arr& out,
authori:e or prevent the followin- a$ts7
177.1 Reproduction of the work or substantial portion of the work;
)BB"' Dra5ati:ation, translation, adaptation, a.rid-e5ent, arran-e5ent or other
transfor5ation of the wor2G
)BB"/ The first pu.li$ distri.ution of the ori-inal and ea$h $op& of the wor2 .&
sale or other for5s of transfer of ownershipG
)BB"4 Rental of the ori-inal or a $op& of an audiovisual or $ine5ato-raphi$ wor2,
a wor2 e5.odied in a sound re$ordin-, a $o5puter pro-ra5, a $o5pilation of
data and other 5aterials or a 5usi$al wor2 in -raphi$ for5, irrespe$tive of the
ownership of the ori-inal or the $op& whi$h is the su.Ee$t of the rentalG !n#
)BB"5 Pu.li$ displa& of the ori-inal or $op& of the wor2G
)BB"1 Pu.li$ perfor5an$e of the wor2G and
)BB"B Other $o55uni$ation to the pu.li$ of the wor2=*)0+
The law also provided for the li5itations on $op&ri-ht, thus7
8Se$" )<4") Hi5itations on $op&ri-ht"44 Notwithstandin- the provisions of
Chapter V, the followin- a$ts shall not $onstitute infrin-e5ent of $op&ri-ht7
!a# the re$itation or perfor5an$e of a wor2, on$e it has .een lawfull&
5ade a$$essi.le to the pu.li$, if done privatel& and free of $har-e
or if 5ade stri$tl& for a $harita.le or reli-ious institution or so$iet&G
*Se$" )(!)#, P"D" No" 40+
!.# The 5a2in- of Auotations fro5 a pu.lished wor2 if the& are
$o5pati.le with fair use and onl& to the e9tent Eustified for the
purpose, in$ludin- Auotations fro5 newspaper arti$les and
periodi$als in the for5 of press su55ariesG Provided, that the
sour$e and the na5e of the author, if appearin- on the wor2 are
5entionedG !Se$" )) third par" P"D"40#
9 9 9 9 9 9 9 9 9 9 9 9
!e# The inclusion of a work in a publication, .road$ast, or other
$o55uni$ation to the pu.li$, sound re$ordin- of fil5, if su$h
in$lusion is 5ade .& wa& of illustration for tea$hin- purposes and is
$o5pati.le with fair use7 Provided, That the source and the
name of the author, if appearing in the work is mentioned;*'(+
In the a.ove Auoted provisions, 8wor2= has referen$e to literar& and artisti$
$reations and this in$ludes .oo2s and other literar&, s$holarl& and s$ientifi$
wor2s"*')+
, perusal of the re$ords &ields several pa-es of the .oo2 D6P that are
si5ilar if not identi$al with the te9t of C6T"
On pa-e 4(4 of petitioners? 3oo2 ) of Colle-e 6n-lish for Toda&, the authors
wrote7
Ite5s in dates and addresses7
He died on %onda&, ,pril )5, )0B5"
%iss Re&es lives in ')4 Taft ,venue,
%anila*''+
On pa-e B/ of respondents 3oo2 ) Developin- 6n-lish Toda&, the& wrote7
He died on %onda&, ,pril '5, )0B5"
%iss Re&es address is ')4 Taft ,venue %anila*'/+
On Pa-e '5( of C6T, there is this e9a5ple on parallelis5 or repetition of
senten$e stru$tures, thus7
8The proposition is pea$e" Not pea$e throu-h the 5ediu5 of warG not
pea$e to .e hunted throu-h the la.&rinth of intri$ate and endless
ne-otiationsG not pea$e to arise out of universal dis$ord, fo5ented fro5
prin$iple, in all parts of the e5pireG not pea$e to depend on the Euridi$al
deter5ination of perple9in- Auestions, or the pre$ise 5ar2in- of the
.oundar& of a $o5ple9 -overn5ent" It is si5ple pea$eG sou-ht in its natural
$ourse, and in its ordinar& haunts" It is pea$e sou-ht in the spirit of pea$e,
and laid in prin$iples purel& pa$ifi$"
444 6d5und 3ur2e, 8 Spee$h on Criti$is5"=*'4+
On pa-e )(( of the .oo2 D6P*'5+, also in the topi$ of parallel stru$ture and
repetition, the sa5e e9a5ple is found in toto. The onl& differen$e is that
petitioners a$2nowled-ed the author 6d5und 3ur2e, and respondents did not"
In several other pa-es*'1+ the treat5ent and 5anner of presentation of the
topi$s of D6P are si5ilar if not a rehash of that $ontained in C6T"
Fe .elieve that respondent Ro.les? a$t of liftin- fro5 the .oo2 of petitioners
su.stantial portions of dis$ussions and e9a5ples, and her failure to
a$2nowled-e the sa5e in her .oo2 is an infrin-e5ent of petitioners? $op&ri-hts"
Fhen is there a su.stantial reprodu$tion of a .oo2M It does not ne$essaril&
reAuire that the entire $op&ri-hted wor2, or even a lar-e portion of it, .e $opied"
If so 5u$h is ta2en that the value of the ori-inal wor2 is su.stantiall& di5inished,
there is an infrin-e5ent of $op&ri-ht and to an inEurious e9tent, the wor2 is
appropriated"*'B+
In deter5inin- the Auestion of infrin-e5ent, the a5ount of 5atter $opied
fro5 the $op&ri-hted wor2 is an i5portant $onsideration" To $onstitute
infrin-e5ent, it is not ne$essar& that the whole or even a lar-e portion of the
wor2 shall have .een $opied" If so 5u$h is ta2en that the value of the ori-inal is
sensi.l& di5inished, or the la.ors of the ori-inal author are su.stantiall& and to
an inEurious e9tent appropriated .& another, that is suffi$ient in point of law to
$onstitute pira$&"*'<+
The essen$e of intelle$tual pira$& should .e essa&ed in $on$eptual ter5s in
order to unders$ore its -ravit& .& an appropriate understandin- thereof"
Infrin-e5ent of a $op&ri-ht is a trespass on a private do5ain owned and
o$$upied .& the owner of the $op&ri-ht, and, therefore, prote$ted .& law, and
infrin-e5ent of $op&ri-ht, or pira$&, whi$h is a s&non&5ous ter5 in this
$onne$tion, $onsists in the doin- .& an& person, without the $onsent of the
owner of the $op&ri-ht, of an&thin- the sole ri-ht to do whi$h is $onferred .&
statute on the owner of the $op&ri-ht"*'0+
The respondents? $lai5 that the $opied portions of the .oo2 C6T are also
found in forei-n .oo2s and other -ra55ar .oo2s, and that the si5ilarit&
.etween her st&le and that of petitioners $an not .e avoided sin$e the& $o5e
fro5 the sa5e .a$2-round and orientation 5a& .e true" However, in this
Eurisdi$tion under Se$ )<4 of Repu.li$ ,$t <'0/ it is provided that7
Hi5itations on Cop&ri-ht" Notwithstandin- the provisions of Chapter V, the
followin- shall not $onstitute infrin-e5ent of $op&ri-ht7
9 9 9 9 9 9 9 9 9 9 9 9
c! The 5a2in- of Auotations fro5 a pu.lished wor2 if the& are
$o5pati.le with fair use and onl& to the e9tent Eustified for the
purpose, in$ludin- Auotations fro5 newspaper arti$les and
periodi$als in the for5 of press su55aries" Provided, That the
source and the name of the author, if appearing on the work,
are mentioned.
, $op& of a pira$& is an infrin-e5ent of the ori-inal, and it is no defense that
the pirate, in su$h $ases, did not 2now whether or not he was infrin-in- an&
$op&ri-htG he at least 2new that what he was $op&in- was not his, and he $opied
at his peril"*/(+
The ne9t Auestion to resolve is to what e9tent $an $op&in- .e inEurious to
the author of the .oo2 .ein- $opied" Is it enou-h that there are si5ilarities in
so5e se$tions of the .oo2s or lar-e se-5ents of the .oo2s are the sa5eM
In the $ase at .ar, there is no Auestion that petitioners presented several
pa-es of the .oo2s C6T and D6P that 5ore or less had the sa5e $ontents" It
5a& .e $orre$t that the .oo2s .ein- -ra55ar .oo2s 5a& $ontain 5aterials
si5ilar as to so5e te$hni$al $ontents with other -ra55ar .oo2s, su$h as the
se-5ent a.out the 8,uthor Card=" However, the nu5erous pa-es that the
petitioners presented showin- si5ilarit& in the st&le and the 5anner the .oo2s
were presented and the identi$al e9a5ples $an not pass as si5ilarities 5erel&
.e$ause of te$hni$al $onsideration"
The respondents $lai5 that their si5ilarit& in st&le $an .e attri.uted to the
fa$t that .oth of the5 were e9posed to the ,PC,S s&lla.us and their respe$tive
a$ade5i$ e9perien$e, tea$hin- approa$h and 5ethodolo-& are al5ost identi$al
.e$ause the& were of the sa5e .a$2-round"
However, we .elieve that even if petitioners and respondent Ro.les were of
the sa5e .a$2-round in ter5s of tea$hin- e9perien$e and orientation, it is not
an e9$use for the5 to .e identi$al even in e9a5ples $ontained in their .oo2s"
The si5ilarities in e9a5ples and 5aterial $ontents are so o.viousl& present in
this $ase" How $an si5ilarOidenti$al e9a5ples not .e $onsidered as a 5ar2 of
$op&in-M
Fe $onsider as an indicia of -uilt or wron-doin- the a$t of respondent
Ro.les of pullin- out fro5 @oodwill .oo2stores the .oo2 D6P upon learnin- of
petitioners? $o5plaint while pharisai$all& den&in- petitioners? de5and" It was
further noted that when the .oo2 D6P was re4issued as a revised version, all the
pa-es $ited .& petitioners to $ontain portion of their .oo2 Colle-e 6n-lish for
Toda& were eli5inated"
In $ases of infrin-e5ent, $op&in- alone is not what is prohi.ited" The
$op&in- 5ust produ$e an 8inEurious effe$t=" Here, the inEur& $onsists in that
respondent Ro.les lifted fro5 petitioners? .oo2 5aterials that were the result of
the latter?s resear$h wor2 and $o5pilation and 5isrepresented the5 as her
own" She $ir$ulated the .oo2 D6P for $o55er$ial use and did not a$2nowled-e
petitioners as her sour$e"
Hen$e, there is a $lear $ase of appropriation of $op&ri-hted wor2 for her
.enefit that respondent Ro.les $o55itted" Petitioners? wor2 as authors is the
produ$t of their lon- and assiduous resear$h and for another to represent it as
her own is inEur& enou-h" In $op&ri-htin- .oo2s the purpose is to -ive prote$tion
to the intelle$tual produ$t of an author" This is pre$isel& what the law on
$op&ri-ht prote$ted, under Se$tion )<4") !.#" Puotations fro5 a pu.lished wor2
if the& are $o5pati.le with fair use and onl& to the e9tent Eustified .& the
purpose, in$ludin- Auotations fro5 newspaper arti$les and periodi$als in the
for5 of press su55aries are allowed provided that the sour$e and the na5e of
the author, if appearin- on the wor2, are 5entioned"
In the $ase at .ar, the least that respondent Ro.les $ould have done was to
a$2nowled-e petitioners Ha.ana et" al" as the sour$e of the portions of D6P"
The final produ$t of an author?s toil is her .oo2" To allow another to $op& the
.oo2 without appropriate a$2nowled-5ent is inEur& enou-h"
?HERE)RE, the petition is here.& @R,NT6D" The de$ision and
resolution of the Court of ,ppeals in C,4@" R" CV No" 44(5/ are S6T ,SID6.
The $ase is ordered re5anded to the trial $ourt for further pro$eedin-s to
re$eive eviden$e of the parties to as$ertain the da5a-es $aused and sustained
.& petitioners and to render de$ision in a$$ordan$e with the eviden$e su.5itted
to it"
" RDERED.
)apunan! and 3nares0Santiago! 22.! $on$ur"
/avide! 2r.! C.2.! *Chairman+! pls" see dissentin- opinion"
Melo! 2.! no part" Personal reasons"
Repu.li$ of the Philippines"*PRE#E C*R!%anila
THIRD DIVISION
G.R. Nos. EFF4AG51 August 1A, 1A88
20!H CEN!*R+ )H )IL# CRPRA!IN, petitioner, vs"C*R! )
APPEAL", ED*ARD #. BARRE!, RA*L "AG*LL $%& )R!*NE
LEDE"#A, respondents"
Siguion 4eyna! Montecillo - 'ngsiako La% '$$ice $or petitioner.
B.C. Salaar - Associates $or respondents.

G*!IERREI, @R., J."
The petitioner Auestions the appli$ation of the $onstitutional provision a-ainst
ille-al sear$hes and sei:ures to raids $ondu$ted in $onne$tion with the
-overn5entQs anti4fil5 pira$& $a5pai-n" The 5ain issue hin-es on whether or
not the Eud-e properl& lifted the sear$h warrants he issued earlier upon the
appli$ation of the National 3ureau of Investi-ation on the .asis of the $o5plaint
filed .& the petitioner"
In a letter4$o5plaint dated ,u-ust '1, )0<5, petitioner '(th Centur& >o9 >il5
Corporation throu-h $ounsel sou-ht the National 3ureau of Investi-ationQs !N3I#
assistan$e in the $ondu$t of sear$hes and sei:ures in $onne$tion with the
latterQs anti4fil5 pira$& $a5pai-n" Spe$ifi$all&, the letter4$o5plaint alle-ed that
$ertain videotape outlets all over %etro %anila are en-a-ed in the unauthori:ed
sale and rentin- out of $op&ri-hted fil5s in videotape for5 whi$h $onstitute a
fla-rant violation of Presidential De$ree No" 40 !otherwise 2nown as the De$ree
on the Prote$tion of Intelle$tual Propert&#"
,$tin- on the letter4$o5plaint, the N3I $ondu$ted surveillan$e and investi-ation
of the outlets pinpointed .& the petitioner and su.seAuentl& filed three !/#
appli$ations for sear$h warrants a-ainst the video outlets owned .& the private
respondents" The appli$ations were $onsolidated and heard .& the Re-ional
Trial Court of %a2ati, 3ran$h )/'"
On Septe5.er 4, )0<5, the lower $ourt issued the desired sear$h warrants"
,r5ed with the sear$h warrants, the N3I a$$o5panied .& the petitionerQs
a-ents, raided the video outlets and sei:ed the ite5s des$ri.ed therein" ,n
inventor& of the ite5s sei:ed was 5ade and left with the private respondents"
,$tin- on a 5otion to lift sear$h warrants and release sei:ed properties filed .&
the private respondents, the lower $ourt issued an order dated O$to.er <, )0<5,
liftin- the three !/# sear$h warrants issued earlier a-ainst the private
respondents .& the $ourt" The dispositive portion of the order reads7
FH6R6>OR6, the Court here.& orders that Sear$h Farrants Nos" SF4 <54('4G
issued a-ainst 6duardo %" 3arreto of the ;un$tion Video, et$", ParanaAue,
%etro %anilaG SF No" <54('5, issued a-ainst Raul %" Sa-ullo of South Video
3u- Center, In$", et$", also of No" 5/55 Pres" ,venue 3> Ho5es, ParaRaAue,
%etro %anilaG and SF No" <54('1, issued a-ainst >ortune ," Hedes5a of Soni9
Video Servi$es of San ,ntonio Pla:a, >or.es Par2, %a2ati, %etro %anila, .e
lifted"
ConseAuentl&, the arti$les listed in the returns of the three sear$h warrants
whi$h $ould not .e a .asis of an& $ri5inal prose$ution, now in the possession of
the National 3ureau of Investi-ation whi$h under the law 5ust .e delivered to
this Court, .ut whi$h the N3I failed to do, are here.& ordered to .e returned to
their owners throu-h their law&er, ,tt&" 3enito Sala:ar or his a-ents or
representatives, a-ainst proper re$eipt, to .e forwarded to this Court for re$ord
purposes, as proof that said properties have .een returned to the possession of
the ri-htful owners"S !p" /4, Rollo#
The lower $ourt denied a 5otion for re$onsideration filed .& the petitioner in its
order dated ;anuar& ', )0<1"
The petitioner filed a petition for $ertiorari with the Court of ,ppeals to annul the
O$to.er <, )0<5 and ;anuar& ', )0<1 orders of the lower $ourt" The petition was
dis5issed"
Hen$e, this petition"
The 5ain issue hin-es on the 5eanin- of Spro.a.le $auseS within the $onte9t of
the $onstitutional provision a-ainst ille-al sear$hes and sei:ures !Se$tion /,
,rti$le IV, )0B/ Constitution, now, Se$tion ', ,rti$le Ill, )0<B Constitution"
The petitioner 5aintains that the lower $ourt issued the Auestioned sear$h
warrants after findin- the e9isten$e of a pro.a.le $ause Eustif&in- their issuan$e"
,$$ordin- to the petitioner, the lower $ourt arrived at this $on$lusion on the
.asis of the depositions of appli$ant N3IQs two witnesses whi$h were ta2en
throu-h sear$hin- Auestions and answers .& the lower $ourt"
Se$tion ', ,rti$le III of the present Constitution whi$h su.stantiall& reprodu$es
Se$tion /, ,rti$le IV of the )0B/ Constitution on ille-al sear$hes and sei:ures
provides7
The ri-ht of the people to .e se$ure in their persons, houses, papers, and
effe$ts a-ainst unreasona.le sear$hes and sei:ures of whatever nature and for
an& purpose shall .e inviola.le, and no sear$h warrant or warrant of arrest shall
issue e9$ept upon pro.a.le $ause to .e deter5ined personall& .& the Eud-e
after e9a5ination under oath or affir5ation of the $o5plainant and the witnesses
he 5a& produ$e, and parti$ularl& des$ri.in- the pla$e to .e sear$hed and the
persons or thin-s to .e sei:ed"
This $onstitutional ri-ht prote$ts a $iti:en a-ainst wanton and unreasona.le
invasion of his priva$& and li.ert& as to his person, papers and effe$ts" Fe have
e9plained in the $ase of ,eople v. Burgos !)44 SCR, )# $itin- 5illanueva v.
6uerubin !4< SCR, /45# wh& the ri-ht is so i5portant7
It is deferen$e to oneQs personalit& that lies at the $ore of this ri-ht, .ut it $ould
.e also loo2ed upon as a re$o-nition of a $onstitutionall& prote$ted area,
pri5aril& oneQs ho5e, .ut not ne$essaril& thereto $onfined" !Cf" Hoffa v" Dnited
States, /<5 DS '0/ ))011)# Fhat is sou-ht to .e -uarded is a 5anQs
prero-ative to $hoose who is allowed entr& to his residen$e" In that haven of
refu-e, his individualit& $an assert itself not onl& in the $hoi$e of who shall .e
wel$o5e .ut li2ewise in the 2ind of o.Ee$ts he wants around hi5" There the
state, however powerful, does not as su$h have a$$ess e9$ept under the
$ir$u5stan$es a.ove noted, for in the traditional for5ulation, his house,
however hu5.le, is his $astle" Thus is outlawed an& unwarranted intrusion .&
-overn5ent, whi$h is $alled upon to refrain fro5 an& invasion of his dwellin-
and to respe$t the priva$ies of his life" !Cf S$h5er.er v" California, /<4 DS B5B
*)011+, 3rennan, ;" and 3o&d v" Dnited States, ))1 1/( *)<<1+#" In the sa5e
vein, Hand&ns2i in his authoritative wor2 !Sear$h and Sei:ure and the Supre5e
Court *)011+#, $ould fitl& $hara$teri:e $onstitutional ri-ht as the e5.odi5ent of a
Sspiritual $on$ept7 the .elief that to value the priva$& of ho5e and person and to
afford its $onstitutional prote$tion a-ainst the lon- rea$h of -overn5ent is no
less than to value hu5an di-nit&, and that his priva$& 5ust not .e distur.ed
e9$ept in $ase of overridin- so$ial need, and then onl& under strin-ent
pro$edural safe-uards"S!ibid, p" B4#"
The -overn5entQs ri-ht to issue sear$h warrants a-ainst a $iti:enQs papers and
effe$ts is $ir$u5s$ri.ed .& the reAuire5ents 5andated in the sear$hes and
sei:ures provision of the Constitution"
In the $ase of Burgos! Sr. v. Chie$ o$ Sta$$! A#, !)// SCR, <((#, we defined
pro.a.le $ause for a valid sear$h Sas su$h fa$ts and $ir$u5stan$es whi$h would
lead a reasona.l& dis$reet and prudent 5an to .elieve that an offense has .een
$o55itted and that the o.Ee$ts sou-ht in $onne$tion with the offense are in the
pla$e sou-ht to .e sear$hed"S This $onstitutional provision also de5ands Sno
less than personal 2nowled-e .& the $o5plainant or his witnesses of the fa$ts
upon whi$h the issuan$e of a sear$h warrant 5a& .e EustifiedS in order to
$onvin$e the Eud-e, not the individual 5a2in- the affidavit and see2in- the
issuan$e of the warrant, of the e9isten$e of a pro.a.le $ause" !,lvare: v" Court
of >irst Instan$e, 14 Phil" //G 3ur-os, Sr" v" Chief of Staff, ,>P, supra#"
In the instant $ase, the lower $ourt lifted the three Auestioned sear$h warrants
a-ainst the private respondents on the -round that it a$ted on the appli$ation for
the issuan$e of the said sear$h warrants and -ranted it on the
5isrepresentations of appli$ant N3I and its witnesses that infrin-e5ent of
$op&ri-ht or a pira$& of a parti$ular fil5 have .een $o55itted" Thus the lower
$ourt stated in its Auestioned order dated ;anuar& ',)0<17
,$$ordin- to the 5ovant, all three witnesses durin- the pro$eedin-s in the
appli$ation for the three sear$h warrants testified of their own personal
2nowled-e" Cet, ,tt&" ,l.ino Re&es of the N3I stated that the $ounsel or
representative of the Twentieth Centur& >o9 Corporation will testif& on the video
$assettes that were pirated, so that he did not have personal 2nowled-e of the
alle-ed pira$&" The witness 3a$ani also said that the video $assettes were
pirated without statin- the 5anner it was pirated and that it was ,tt&" Do5in-o
that has 2nowled-e of that fa$t"
On the part of ,tt&" Do5in-o, he said that the re4tapin- of the alle-edl& pirated
tapes was fro5 5aster tapes alle-edl& .elon-in- to the Twentieth Centur& >o9,
.e$ause, a$$ordin- to hi5, it is of his personal 2nowled-e"
,t the hearin- of the %otion for Re$onsideration, Senior N3I ,-ent ,tt&" ,l.ino
Re&es testified that when the $o5plaint for infrin-e5ent was .rou-ht to the N3I,
the 5aster tapes of the alle-edl& pirated tapes were shown to hi5 and he 5ade
$o5parisons of the tapes with those pur$hased .& their 5an 3a$ani" Fh& the
5aster tapes or at least the fil5 reels of the alle-edl& pirated tapes were not
shown to the Court durin- the appli$ation -ives so5e 5is-ivin-s as to the truth
of that .are state5ent of the N3I a-ent on the witness stand" S
,-ain as the appli$ation and sear$h pro$eedin-s is a prelude to the filin- of
$ri5inal $ases under PD 40, the $op&ri-ht infrin-e5ent law, and althou-h what
is reAuired for the issuan$e thereof is 5erel& the presen$e of pro.a.le $ause,
that pro.a.le $ause 5ust .e satisfa$tor& to the Court, for it is a ti5e4 honored
pre$ept that pro$eedin-s to put a 5an to tas2 as an offender under our laws
should .e interpreted in strictissimi 7uris a-ainst the -overn5ent and li.erall& in
favor of the alle-ed offender"
999 999 999
This do$trine has never .een overturned, and as a 5atter of fa$t it had .een
enshrined in the 3ill of Ri-hts in our )0B/ Constitution"
So that la$2in- in persuasive effe$t, the alle-ation that 5aster tapes were
viewed .& the N3I and were $o5pared to the pur$hased and sei:ed video tapes
fro5 the respondentsQ esta.lish5ents, it should .e dis5issed as not supported
.& $o5petent eviden$e and for that 5atter the pro.a.le $ause hovers in that
-re& de.ata.le twili-ht :one .etween .la$2 and white resolva.le in favor of
respondents herein"
3ut the -larin- fa$t is that QCo$oon,Q the first video tape 5entioned in the sear$h
warrant, was not even dul& re-istered or $op&ri-hted in the Philippines" !,nne9
C of Opposition p" )5' re$ord#" So, that la$2in- in the reAuisite presentation to
the Court of an alle-ed 5aster tape for purposes of $o5parison with the
pur$hased eviden$e of the video tapes alle-edl& pirated and those sei:ed fro5
respondents, there was no wa& to deter5ine whether there reall& was pira$&, or
$op&in- of the fil5 of the $o5plainant Twentieth Centur& >o9"S !pp" /B4/0, Rollo#
999 999 999
The lower $ourt, therefore, lifted the three !/# Auestioned sear$h warrants in the
a.sen$e of pro.a.le $ause that the private respondents violated P"D" 40" ,s
found out .& the $ourt, the N3I a-ents who a$ted as witnesses did not have
personal 2nowled-e of the su.Ee$t 5atter of their testi5on& whi$h was the
alle-ed $o55ission of the offense .& the private respondents" Onl& the
petitionerQs $ounsel who was also a witness durin- the appli$ation for the
issuan$e of the sear$h warrants stated that he had personal 2nowled-e that the
$onfis$ated tapes owned .& the private respondents were pirated tapes ta2en
fro5 5aster tapes .elon-in- to the petitioner" However, the lower $ourt did not
-ive 5u$h $reden$e to his testi5on& in view of the fa$t that the 5aster tapes of
the alle-edl& pirated tapes were not shown to the $ourt durin- the appli$ation"
,ll these fa$tors were ta2en into $onsideration .& the lower $ourt when it lifted
the three Auestioned sear$h warrants" There is no truth, therefore, to the
petitionerQs alle-ation that the lower $ourt .ased its ;anuar& ', )0<1 order onl&
Son the fa$t that the ori-inal or 5aster $opies of the $op&ri-hted fil5s were not
presented durin- the appli$ation for sear$h warrants, thus leadin- it to $on$lude
that it had .een S5isled .& the appli$ant and his witnesses"S !p" )B, Rollo#
The presentation of the 5aster tapes of the $op&ri-hted fil5s fro5 whi$h the
pirated fil5s were alle-edl& $opied, was ne$essar& for the validit& of sear$h
warrants a-ainst those who have in their possession the pirated fil5s" The
petitionerQs ar-u5ent to the effe$t that the presentation of the 5aster tapes at
the ti5e of appli$ation 5a& not .e ne$essar& as these would .e 5erel&
evidentiar& in nature and not deter5inative of whether or not a pro.a.le $ause
e9ists to Eustif& the issuan$e of the sear$h warrants is not 5eritorious" The $ourt
$annot presu5e that dupli$ate or $opied tapes were ne$essaril& reprodu$ed
fro5 5aster tapes that it owns"
The appli$ation for sear$h warrants was dire$ted a-ainst video tape outlets
whi$h alle-edl& were en-a-ed in the unauthori:ed sale and rentin- out of
$op&ri-hted fil5s .elon-in- to the petitioner pursuant to P"D" 40"
The essen$e of a $op&ri-ht infrin-e5ent is the si5ilarit& or at least su.stantial
si5ilarit& of the purported pirated wor2s to the $op&ri-hted wor2" Hen$e, the
appli$ant 5ust present to the $ourt the $op&ri-hted fil5s to $o5pare the5 with
the pur$hased eviden$e of the video tapes alle-edl& pirated to deter5ine
whether the latter is an unauthori:ed reprodu$tion of the for5er" This lin2a-e of
the $op&ri-hted fil5s to the pirated fil5s 5ust .e esta.lished to satisf& the
reAuire5ents of pro.a.le $ause" %ere alle-ations as to the e9isten$e of the
$op&ri-hted fil5s $annot serve as .asis for the issuan$e of a sear$h warrant"
>urther5ore, we note that the sear$h warrants des$ri.ed the arti$les sou-ht to
.e sei:ed as follows7
999 999 999
999 999 999
$# Television sets, Video Cassettes Re$orders, rewinders, tape head $leaners,
a$$essories, eAuip5ents and other 5a$hines used or intended to .e used in the
unlawful reprodu$tion, sale, rentalOlease distri.ution of the a.ove45entioned
video tapes whi$h she is 2eepin- and $on$ealin- in the pre5ises a.ove4
des$ri.ed"S !p" '1, Rollo#
In the $ase of Burgos v. Chie$ o$ Sta$$! A#, supra, we stated7
999 999 999
,nother fa$tor whi$h 5a2es the sear$h warrants under $onsideration
$onstitutionall& o.Ee$tiona.le is that the& are in the nature of -eneral warrants"
The sear$h warrants des$ri.e the arti$les sou-ht to .e sei:ed in this wise7
l+ ,ll printin- eAuip5ent, paraphernalia, paper, in2, photo eAuip5ent, t&pewriters,
$a.inets, ta.les $o55uni$ationsOre$ordin- eAuip5ent, tape re$orders,
di$taphone and the li2e used andOor $onne$ted in the printin- of the QF6
>ORD%Q newspaper and an& and all do$u5entO$o55uni$ations, letters and
fa$si5ile of prints related to SF6 >ORD%S newspaper"
'+ Su.versive do$u5ents, pa5phlets, leaflets, .oo2s, and other pu.li$ations to
pro5ote the o.Ee$tives and purposes of the su.versive or-ani:ations 2nown as
%ove5ent for >ree Philippines, Hi-ht4a4>ire %ove5ent and ,pril 1 %ove5entG
and
/+ %otor vehi$les used in the distri.utionO$ir$ulation of the QF6 >ORD% and
other su.versive 5aterials and propa-anda, 5ore parti$ularl&,
)+ To&ota4Corolla, $olored &ellow with Plate No" NJ, <0'G
'+ D,TSDN pi$24up $olored white with Plate No" NJV 010G
/+ , deliver& tru$2 with Plate No" N3S 54'G
4+ TOCOT,4T,%,R,F, $olored white with Plate No" P3P 115Gand,
5+ TOCOT, Hi4Hu9, pi$24up tru$2 with Plate No" N@V 4B' with 5ar2in- S3a-on-
Silan-"S
In Stanford v" State of Te9as !/B0 D"S" 4B1,)/ H ed 'nd 4/)#, the sear$h warrant
whi$h authori:ed the sear$h for Q.oo2s, re$ords, pa5phlets, $ards, re$eipts,
lists, 5e5oranda, pi$tures, re$ordin-s and other written instru5ents $on$ernin-
the Co55unist Parties of Te9as, and the operations of the Co55unit& Part& in
Te9as,S was de$lared void .& the D"S" Supre5e Court for .ein- too -eneral" In
li2e 5anner, dire$tions to Ssei:e an& eviden$e in $onne$tion with the violation of
SDC )/4/B(/ or otherwiseQ have .een held too -eneral, and that portion of a
sear$h warrant whi$h authori:ed the sei:ure of an& Sparaphernalia whi$h $ould
.e used to violate Se$" 544)0B of the Conne$ti$ut @eneral Statutes *the statute
dealin- with the $ri5e of $onspira$&+SQ was held to .e a -eneral warrant, and
therefore invalid !1< ,5" ;ur" 'd", pp" B/14B/B#" The des$ription of the arti$les
sou-ht to .e sei:ed under the sear$h warrants in Auestion $annot .e
$hara$teri:ed differentl&" !at pp" <)44<)5#
Dndou.tedl&, a si5ilar $on$lusion $an .e dedu$ed fro5 the des$ription of the
arti$les sou-ht to .e $onfis$ated under the Auestioned sear$h warrants"
Television sets, video $assette re$orders, re5inders and tape $leaners are
arti$les whi$h $an .e found in a video tape store en-a-ed in the le-iti5ate
.usiness of lendin- or rentin- out .eta5a9 tapes" In short, these arti$les and
applian$es are -enerall& $onne$ted with, or related to a le-iti5ate .usiness not
ne$essaril& involvin- pira$& of intelle$tual propert& or infrin-e5ent of $op&ri-ht
laws" Hen$e, in$ludin- these arti$les without spe$ifi$ation andOor parti$ularit&
that the& were reall& instru5ents in violatin- an ,nti4Pira$& law 5a2es The
sear$h warrant too -eneral whi$h $ould result in the $onfis$ation of all ite5s
found in an& video store" In fa$t, this a$tuall& happened in the instant $ase"
Thus, the lower $ourt, in its Auestioned order dated O$to.er <, )0<5 said7
,lthou-h the appli$ations and warrants the5selves $overed $ertain arti$les of
propert& usuall& found in a video store, the Court .elieves that the sear$h part&
should have $onfined the5selves to arti$les that are a$$ordin- to the5,
eviden$e $onstitutive of infrin-e5ent of $op&ri-ht laws or the pira$& of
intelle$tual propert&, .ut not to other arti$les that are usuall& $onne$ted with, or
related to, a le-iti5ate .usiness, not involvin- pira$& of intelle$tual propert&, or
infrin-e5ent of $op&ri-ht laws" So that a television set, a rewinder, and a
white.oard listin- 3eta5a9 tapes, video $assette $leaners video $assette
re$orders as refle$ted in the Returns of Sear$h Farrants, are ite5s of le-iti5ate
.usiness en-a-ed in the video tape industr&, and whi$h $ould not .e the su.Ee$t
of sei:ure, The appli$ant and his a-ents therefore e9$eeded their authorit& in
sei:in- perfe$tl& le-iti5ate personal propert& usuall& found in a video $assette
store or .usiness esta.lish5ent"S !p" //, Rollo#
,ll in all, we find no -rave a.use of dis$retion on the part of the lower $ourt
when it lifted the sear$h warrants it earlier issued a-ainst the private
respondents" Fe a-ree with the appellate $ourtQs findin-s to the effe$t that7
,n assiduous e9a5ination of the assailed orders reveal that the 5ain -round
upon whi$h the respondent Court an$hored said orders was its su.seAuent
findin-s that it was 5isled .& the appli$ant !N3I# and its witnesses Qthat
infrin-e5ent of $op&ri-ht or a pira$& of a parti$ular fil5 have .een $o55itted
when it issued the Auestioned warrants"Q Stated differentl&, the respondent Court
5erel& $orre$ted its erroneous findin-s as to the e9isten$e of pro.a.le $ause
and de$lared the sear$h and sei:ure to .e unreasona.le" Certainl&, su$h a$tion
is within the power and authorit& of the respondent Court to perfor5, provided
that it is not e9er$ised in an oppressive or ar.itrar& 5anner" Indeed, the order of
the respondent Court de$larin- the e9isten$e of pro.a.le $ause is not final and
does not $onstitute res 7udicata.
, $areful review of the re$ord of the $ase shows that the respondent Court did
not $o55it a -rave a.use of dis$retion when it issued the Auestioned orders"
@rave a.use of dis$retionQ i5plies su$h $apri$ious and whi5si$al e9er$ise of
Eud-5ent as is eAuivalent to la$2 of Eurisdi$tion, or, in other words, where the
power is e9er$ised in an ar.itrar& or despoti$ 5anner .& reason of passion or
personal hostilit&, and it 5ust .e so patent and -ross as to a5ount to an evasion
of positive dut& or to a virtual refusal to perfor5 the dut& enEoined or to a$t at all
in $onte5plation of law"Q 3ut far fro5 .ein- despoti$ or ar.itrar&, the assailed
orders were 5otivated .& a no.le desire of re$tif&in- an error, 5u$h so when the
erroneous findin-s $ollided with the $onstitutional ri-hts of the private
respondents" In fa$t, the petitioner did not even $ontest the ri-hteousness and
le-alit& of the Auestioned orders .ut instead $on$entrated on the alle-ed denial
of due pro$ess of law"S !pp" 44445, Rollo#
The proliferation of pirated tapes of fil5s not onl& deprives the -overn5ent of
5u$h needed revenues .ut is also an indi$ation of the widespread .rea2down of
national order and dis$ipline" Courts should not i5pose an& unne$essar&
road.lo$2s in the wa& of the anti4fil5 pira$& $a5pai-n" However, the $a5pai-n
$annot i-nore or violate $onstitutional safe-uards" To sa& that the pro.le5 of
pirated fil5s $an .e solved onl& .& the use of un$onstitutional short$uts is to
deni-rate the lon- histor& and e9perien$e .ehind the sear$hes and sei:ures
$lause of the 3ill of Ri-hts" The trial $ourt did not $o55it reversi.le error"
FH6R6>OR6, the instant petition is DIS%ISS6D" The Auestioned de$ision and
resolution of the Court of ,ppeals are ,>>IR%6D"
SO ORD6R6D"
#ernan! C.2.! #eliciano! Bidin and Cortes! 22.! concur
6N 3,NC
[G.R. No. 110318. August 28, 1AAF]
CL*#BIA PIC!*RE", INC., RIN PIC!*RE" CRPRA!IN,
PARA#*N! PIC!*RE" CRPRA!IN, !?EN!IE!H CEN!*R+
)H )IL# CRPRA!IN, *NI!ED AR!I"!" CRPRA!IN,
*NICER"AL CI!+ "!*DI", INC., !HE ?AL! DI"NE+ C#PAN+,
$%& ?ARNER BR!HER", INC., petitioners, vs. C*R! )
APPEAL", "*N"HINE H#E CIDE, INC. $%& DANIL A.
PELINDARI, respondents.
D E C I " I N
REGALAD, J.(
3efore us is a petition for review on certiorari of the de$ision of the Court of
,ppeals*)+ pro5ul-ated on ;ul& '', )00' and its resolution*'+ of %a& )(, )00/
den&in- petitioners? 5otion for re$onsideration, .oth of whi$h sustained the
order*/+ of the Re-ional Trial Court, 3ran$h )//, %a2ati, %etro %anila, dated
Nove5.er '', )0<< for the Auashal of Sear$h Farrant No" <B4(5/ earlier issued
per its own order*4+ on Septe5.er 5, )0<< for violation of Se$tion 51 of
Presidential De$ree No" 40, as a5ended, otherwise 2nown as the 8De$ree on
the Prote$tion of Intelle$tual Propert&"=
The 5aterial fa$ts found .& respondent appellate $ourt are as follows7
Co5plainants thru $ounsel lod-ed a for5al $o5plaint with the National
3ureau of Investi-ation for violation of PD No" 40, as a5ended, and sou-ht its
assistan$e in their anti4fil5 pira$& drive" ,-ents of the N3I and private
resear$hers 5ade dis$reet surveillan$e on various video esta.lish5ents in
%etro %anila in$ludin- Sunshine Ho5e Video In$" !Sunshine for .revit&#, owned
and operated .& Danilo ," Pelindario with address at No" 1 %a&fair Center,
%a-allanes, %a2ati, %etro %anila"
On Nove5.er )4, )0<B, N3I Senior ,-ent Hauro C" Re&es applied for a
sear$h warrant with the $ourt a 8uo a-ainst Sunshine see2in- the sei:ure,
a5on- others, of pirated video tapes of $op&ri-hted fil5s all of whi$h were
enu5erated in a list atta$hed to the appli$ationG and, television sets, video
$assettes andOor laser dis$ re$ordin-s eAuip5ent and other 5a$hines and
paraphernalia used or intended to .e used in the unlawful e9hi.ition, showin-,
reprodu$tion, sale, lease or disposition of video-ra5s tapes in the pre5ises
a.ove des$ri.ed" In the hearin- of the appli$ation, N3I Senior ,-ent Hauro C"
Re&es, upon Auestions .& the $ourt a 8uo, reiterated in su.stan$e his
aver5ents in his affidavit" His testi5on& was $orro.orated .& another witness,
%r" Rene C" 3alta:ar" ,tt&" Ri$o V" Do5in-o?s deposition was also ta2en" On
the .asis of the affidavits and depositions of N3I Senior ,-ent Hauro C" Re&es,
Rene C" 3alta:ar and ,tt&" Ri$o V" Do5in-o, Sear$h Farrant No <B4(5/ for
violation of Se$tion 51 of PD No" 40, as a5ended, was issued .& the $ourt a
8uo"
The sear$h warrant was served at a.out )745 p"5" on De$e5.er )4, )0<B
to Sunshine andOor their representatives" In the $ourse of the sear$h of the
pre5ises indi$ated in the sear$h warrant, the N3I ,-ents found and sei:ed
various video tapes of dul& $op&ri-hted 5otion pi$turesOfil5s owned or
e9$lusivel& distri.uted .& private $o5plainants, and 5a$hines, eAuip5ent,
television sets, paraphernalia, 5aterials, a$$essories all of whi$h were in$luded
in the re$eipt for properties a$$o5plished .& the raidin- tea5" Cop& of the
re$eipt was furnished andOor tendered to %r" Danilo ," Pelindario, re-istered
owner4proprietor of Sunshine Ho5e Video"
On De$e5.er )1, )0<B, a 8Return of Sear$h Farrant= was filed with the
Court"
, 8%otion To Hift the Order of Sear$h Farrant= was filed .ut was later
denied for la$2 of 5erit !p" '<(, Re$ords#"
, %otion for re$onsideration of the Order of denial was filed" The $ourt a
8uo -ranted the said 5otion for re$onsideration and Eustified it in this 5anner7
8It is undisputed that the 5aster tapes of the $op&ri-hted fil5s fro5 whi$h the
pirated fil5s were alle-edl& $opies !si$#, were never presented in the
pro$eedin-s for the issuan$e of the sear$h warrants in Auestion" The orders of
the Court -rantin- the sear$h warrants and den&in- the ur-ent 5otion to lift
order of sear$h warrants were, therefore, issued in error" ConseAuentl&, the&
5ust .e set aside"= !p" )/, ,ppellant?s 3rief#*5+
Petitioners thereafter appealed the order of the trial $ourt -rantin- private
respondents? 5otion for re$onsideration, thus liftin- the sear$h warrant whi$h it
had therefore issued, to the Court of ,ppeals" ,s stated at the outset, said
appeal was dis5issed and the 5otion for re$onsideration thereof was denied"
Hen$e, this petition was .rou-ht to this Court parti$ularl& $hallen-in- the validit&
of respondent $ourt?s retroa$tive appli$ation of the rulin- in 9:th Century #o"
#ilm Corporation vs. Court o$ Appeals! et al",*1+ in dis5issin- petitioners? appeal
and upholdin- the Auashal of the sear$h warrant .& the trial $ourt"
I
In$eptivel&, we shall settle the pro$edural $onsiderations on the 5atter of
and the $hallen-e to petitioners? le-al standin- in our $ourts, the& .ein- forei-n
$orporations not li$ensed to do .usiness in the Philippines"
Private respondents aver that .ein- forei-n $orporations, petitioners should
have su$h li$ense to .e a.le to 5aintain an a$tion in Philippine $ourts" In so
$hallen-in- petitioners? personalit& to sue, private respondents point to the fa$t
that petitioners are the $op&ri-ht owners or owners of e9$lusive ri-hts of
distri.ution in the Philippines of $op&ri-hted 5otion pi$tures or fil5s, and also to
the appoint5ent of ,tt&" Ri$o V" Do5in-o as their attorne&4in4fa$t, as .ein-
$onstitutive of 8doin- .usiness in the Philippines= under Se$tion )!f# !)# and !'#,
Rule ) of the Rules of the 3oard of Invest5ents" ,s forei-n $orporations doin-
.usiness in the Philippines, Se$tion )// of 3atas Pa5.ansa 3l-" 1<, or the
Corporation Code of the Philippines, denies the5 the ri-ht to 5aintain a suit in
Philippine $ourts in the a.sen$e of a li$ense to do .usiness" ConseAuentl&, the&
have no ri-ht to as2 for the issuan$e of a sear$h warrant"*B+
In refutation, petitioners flatl& den& that the& are doin- .usiness in the
Philippines,*<+ and $ontend that private respondents have not addu$ed eviden$e
to prove that petitioners are doin- su$h .usiness here, as would reAuire the5 to
.e li$ensed .& the Se$urities and 69$han-e Co55ission, other than aver5ents
in the Auoted portions of petitioners? 8Opposition to Dr-ent %otion to Hift Order of
Sear$h Farrant= dated ,pril '<, )0<< and ,tt&" Ri$o V" Do5in-o?s affidavit of
De$e5.er )4, )0<B" %oreover, an e9$lusive ri-ht to distri.ute a produ$t or the
ownership of su$h e9$lusive ri-ht does not $on$lusivel& prove the a$t of doin-
.usiness nor esta.lish the presu5ption of doin- .usiness"*0+
The Corporation Code provides7
Se$" )//" /oing business %ithout a license" L No forei-n $orporation
transa$tin- .usiness in the Philippines without a li$ense, or its su$$essors or
assi-ns, shall .e per5itted to 5aintain or intervene in an& a$tion, suit or
pro$eedin- in an& $ourt or ad5inistrative a-en$& of the PhilippinesG .ut su$h
$orporation 5a& .e sued or pro$eeded a-ainst .efore Philippine $ourts or
ad5inistrative tri.unals on an& valid $ause of a$tion re$o-ni:ed under Philippine
laws"
The o.tain5ent of a li$ense pres$ri.ed .& Se$tion )'5 of the Corporation
Code is not a $ondition pre$edent to the 5aintenan$e of an& 2ind of a$tion in
Philippine $ourts .& a forei-n $orporation" However, under the aforeAuoted
provision, no forei-n $orporation shall .e per5itted to transa$t .usiness in the
Philippines, as this phrase is understood under the Corporation Code, unless it
shall have the li$ense reAuired .& law, and until it $o5plies with the law in
transa$tin- .usiness here, it shall not .e per5itted to 5aintain an& suit in lo$al
$ourts"*)(+ ,s thus interpreted, an& forei-n $orporation not doin- .usiness in the
Philippines 5a& 5aintain an a$tion in our $ourts upon an& $ause of a$tion,
provided that the su.Ee$t 5atter and the defendant are within the Eurisdi$tion of
the $ourt" It is not the a.sen$e of the pres$ri.ed li$ense .ut 8doin- .usiness= in
the Philippines without su$h li$ense whi$h de.ars the forei-n $orporation fro5
a$$ess to our $ourts" In other words, althou-h a forei-n $orporation is without
li$ense to transa$t .usiness in the Philippines, it does not follow that it has no
$apa$it& to .rin- an a$tion" Su$h li$ense is not ne$essar& if it is not en-a-ed in
.usiness in the Philippines"*))+
Statutor& provisions in 5an& Eurisdi$tions are deter5inative of what
$onstitutes 8doin- .usiness= or 8transa$tin- .usiness= within that foru5, in whi$h
$ase said provisions are $ontrollin- there" In others where no su$h definition or
Aualifi$ation is laid down re-ardin- a$ts or transa$tions fallin- within its purview,
the Auestion rests pri5aril& on fa$ts and intent" It is thus held that all the
$o5.ined a$ts of a forei-n $orporation in the State 5ust .e $onsidered, and
ever& $ir$u5stan$e is 5aterial whi$h indi$ates a purpose on the part of the
$orporation to en-a-e in so5e part of its re-ular .usiness in the State"*)'+
No -eneral rule or -overnin- prin$iples $an .e laid down as to what
$onstitutes 8doin-= or 8en-a-in- in= or 8transa$tin-= .usiness" 6a$h $ase 5ust
.e Eud-ed in the li-ht of its own pe$uliar environ5ental $ir$u5stan$es"*)/+ The
true tests, however, see5 to .e whether the forei-n $orporation is $ontinuin- the
.od& or su.stan$e of the .usiness or enterprise for whi$h it was or-ani:ed or
whether it has su.stantiall& retired fro5 it and turned it over to another"*)4+
,s a -eneral proposition upon whi$h 5an& authorities a-ree in prin$iple,
su.Ee$t to su$h 5odifi$ations as 5a& .e ne$essar& in view of the parti$ular
issue or of the ter5s of the statute involved, it is re$o-ni:ed that a forei-n
$orporation is 8doin-,= 8transa$tin-,= 8en-a-in- in,= or 8$arr&in- on= .usiness in
the State when, and ordinaril& onl& when, it has entered the State .& its a-ents
and is there en-a-ed in $arr&in- on and transa$tin- throu-h the5 so5e
su.stantial part of its ordinar& or $usto5ar& .usiness, usuall& $ontinuous in the
sense that it 5a& .e distin-uished fro5 5erel& $asual, sporadi$, or o$$asional
transa$tions and isolated a$ts"*)5+
The Corporation Code does not itself define or $ate-ori:e what a$ts
$onstitute doin- or transa$tin- .usiness in the Philippines" ;urispruden$e has,
however, held that the ter5 i5plies a $ontinuit& of $o55er$ial dealin-s and
arran-e5ents, and $onte5plates, to that e9tent, the perfor5an$e of a$ts or
wor2s or the e9er$ise of so5e of the fun$tions nor5all& in$ident to or in
pro-ressive prose$ution of the purpose and su.Ee$t of its or-ani:ation"*)1+
This traditional $ase law definition has evolved into a statutor& definition,
havin- .een adopted with so5e Aualifi$ations in various pie$es of le-islation in
our Eurisdi$tion"
>or instan$e, Repu.li$ ,$t No" 5455*)B+ provides7
S6CTION )" /e$initions and scope o$ this Act. L !)# 9 9 9G and the phrase
8doin- .usiness= shall in$lude soli$itin- orders, pur$hases, servi$e $ontra$ts,
openin- offi$es, whether $alled 8liaison= offi$es or .ran$hesG appointin-
representatives or distri.utors who are do5i$iled in the Philippines or who in an&
$alendar &ear sta& in the Philippines for a period or periods totallin- one
hundred ei-ht& da&s or 5oreG parti$ipatin- in the 5ana-e5ent, supervision or
$ontrol of an& do5esti$ .usiness fir5, entit& or $orporation in the PhilippinesG
and an& other a$t or a$ts that i5pl& a $ontinuit& of $o55er$ial dealin-s or
arran-e5ents, and $onte5plate to that e9tent the perfor5an$e of a$ts or wor2s,
or the e9er$ise of so5e of the fun$tions nor5all& in$ident to, and in4pro-ressive
prose$ution of, $o55er$ial -ain or of the purpose and o.Ee$t of the .usiness
or-ani:ation"
Presidential De$ree No" )B<0,*)<+ in ,rti$le 15 thereof, defines 8doin-
.usiness= to in$lude soli$itin- orders, pur$hases, servi$e $ontra$ts, openin-
offi$es, whether $alled 8liaison= offi$es or .ran$hesG appointin- representatives
or distri.utors who are do5i$iled in the Philippines or who in an& $alendar &ear
sta& in the Philippines for a period or periods totallin- one hundred ei-ht& da&s
or 5oreG parti$ipatin- in the 5ana-e5ent, supervision or $ontrol of an& do5esti$
.usiness fir5, entit& or $orporation in the Philippines, and an& other a$t or a$ts
that i5pl& a $ontinuit& of $o55er$ial dealin-s or arran-e5ents and $onte5plate
to that e9tent the perfor5an$e of a$ts or wor2s, or the e9er$ise of so5e of the
fun$tions nor5all& in$ident to, and in pro-ressive prose$ution of, $o55er$ial
-ain or of the purpose and o.Ee$t of the .usiness or-ani:ation"
The i5ple5entin- rules and re-ulations of said presidential de$ree
$on$lude the enu5eration of a$ts $onstitutin- 8doin- .usiness= with a $at$h4all
definition, thus7
Se$" )!-#" NDoin- 3usiness? shall .e an& a$t or $o5.ination of a$ts enu5erated
in ,rti$le 15 of the Code" In parti$ular Ndoin- .usiness? in$ludes7
999 999 999
!)(# ,n& other a$t or a$ts whi$h i5pl& a $ontinuit& of $o55er$ial dealin-s or
arran-e5ents, and $onte5plate to that e9tent the perfor5an$e of a$ts or wor2s,
or the e9er$ise of so5e of the fun$tions nor5all& in$ident to, or in the
pro-ressive prose$ution of, $o55er$ial -ain or of the purpose and o.Ee$t of the
.usiness or-ani:ation"
>inall&, Repu.li$ ,$t No" B(4'*)0+ e5.odies su$h $on$ept in this wise7
S6C" /" /e$initions" L ,s used in this ,$t7
999 999 999
!d# the phrase 8doin- .usiness shall in$lude soli$itin- orders, servi$e
$ontra$ts, openin- offi$es, whether $alled Nliaison? offi$es or .ran$hesG
appointin- representatives or distri.utors do5i$iled in the Philippines or who in
an& $alendar &ear sta& in the $ountr& for a period or periods totallin- one
hundred ei-ht!&# !)<(# da&s or 5oreG parti$ipatin- in the 5ana-e5ent,
supervision or $ontrol of an& do5esti$ .usiness, fir5, entit& or $orporation in the
PhilippinesG and an& other a$t or a$ts that i5pl& a $ontinuit& of $o55er$ial
dealin-s or arran-e5ents, and $onte5plate to that e9tent the perfor5an$e of
a$ts or wor2s, or the e9er$ise of so5e of the fun$tions nor5all& in$ident to, and
in pro-ressive prose$ution of, $o55er$ial -ain or of the purpose and o.Ee$t of
the .usiness or-ani:ation7 ,rovided, ho%ever, That the phrase 8doin- .usiness=
shall not .e dee5ed to in$lude 5ere invest5ent as a shareholder .& a forei-n
entit& in do5esti$ $orporations dul& re-istered to do .usiness, andOor the
e9er$ise of ri-hts as su$h investorsG nor havin- a no5inee dire$tor or offi$er to
represent its interests in su$h $orporationG nor appointin- a representative or
distri.utor do5i$iled in the Philippines whi$h transa$ts .usiness in its own na5e
and for its own a$$ount"
3ased on ,rti$le )// of the Corporation Code and -au-ed .& su$h statutor&
standards, petitioners are not .arred fro5 5aintainin- the present a$tion" There
is no showin- that, under our statutor& or $ase law, petitioners are doin-,
transa$tin-, en-a-in- in or $arr&in- on .usiness in the Philippines as would
reAuire o.tention of a li$ense .efore the& $an see2 redress fro5 our $ourts" No
eviden$e has .een offered to show that petitioners have perfor5ed an& of the
enu5erated a$ts or an& other spe$ifi$ a$t indi$ative of an intention to $ondu$t or
transa$t .usiness in the Philippines"
,$$ordin-l&, the $ertifi$ation issued .& the Se$urities and 69$han-e
Co55ission*'(+ statin- that its re$ords do not show the re-istration of petitioner
fil5 $o5panies either as $orporations or partnerships or that the& have .een
li$ensed to transa$t .usiness in the Philippines, while undenia.l& true, is of no
$onseAuen$e to petitioners? ri-ht to .rin- a$tion in the Philippines" Veril&, no
re$ord of su$h re-istration .& petitioners $an .e e9pe$ted to .e found for, as
aforestated, said forei-n fil5 $orporations do not transa$t or do .usiness in the
Philippines and, therefore, do not need to .e li$ensed in order to ta2e re$ourse
to our $ourts"
,lthou-h Se$tion )!-# of the I5ple5entin- Rules and Re-ulations of the
O5ni.us Invest5ents Code lists, a5on- others L
!)# Soli$itin- orders, pur$hases !sales# or servi$e $ontra$ts"
Con$rete and spe$ifi$ soli$itations .& a forei-n fir5, or .& an a-ent of su$h
forei-n fir5, not a$tin- independentl& of the forei-n fir5 a5ountin- to
ne-otiations or fi9in- of the ter5s and $onditions of sales or servi$e $ontra$ts,
re-ardless of where the $ontra$ts are a$tuall& redu$ed to writin-, shall $onstitute
doin- .usiness even if the enterprise has no offi$e or fi9ed pla$e of .usiness in
the Philippines" The arran-e5ents a-reed upon as to 5anner, ti5e and ter5s of
deliver& of the -oods or the transfer of title thereto is i55aterial" , forei-n fir5
whi$h does .usiness throu-h the 5iddle5en a$tin- in their own na5es, su$h as
indentors, $o55er$ial .ro2ers or $o55ission 5er$hants, shall not .e dee5ed
doin- .usiness in the Philippines" 3ut su$h indentors, $o55er$ial .ro2ers or
$o55ission 5er$hants shall .e the ones dee5ed to .e doin- .usiness in the
Philippines"
!'# ,ppointin- a representative or distri.utor who is do5i$iled in the
Philippines, unless said representative or distri.utor has an independent status,
i"e", it transa$ts .usiness in its na5e and for its own a$$ount, and not in the
na5e or for the a$$ount of a prin$ipal" Thus, where a forei-n fir5 is represented
in the Philippines .& a person or lo$al $o5pan& whi$h does not a$t in its na5e
.ut in the na5e of the forei-n fir5, the latter is doin- .usiness in the Philippines"
as a$ts $onstitutive of 8doin- .usiness,= the fa$t that petitioners are ad5ittedl&
$op&ri-ht owners or owners of e9$lusive distri.ution ri-hts in the Philippines of
5otion pi$tures or fil5s does not $onvert su$h ownership into an indi$iu5 of
doin- .usiness whi$h would reAuire the5 to o.tain a li$ense .efore the& $an
sue upon a $ause of a$tion in lo$al $ourts"
Neither is the appoint5ent of ,tt&" Ri$o V" Do5in-o as attorne&4in4fa$t of
petitioners, with e9press authorit& pursuant to a spe$ial power of attorne&, inter
alia L
To la& $ri5inal $o5plaints with the appropriate authorities and to provide
eviden$e in support of .oth $ivil and $ri5inal pro$eedin-s a-ainst an& person or
persons involved in the $ri5inal infrin-e5ent of $op&ri-ht, or $on$ernin- the
unauthori:ed i5portation, dupli$ation, e9hi.ition or distri.ution of an&
$ine5ato-raphi$ wor2!s# L fil5s or video $assettes L of whi$h 9 9 9 is the
owner of $op&ri-ht or the owner of e9$lusive ri-hts of distri.ution in the
Philippines pursuant to an& a-ree5ent!s# .etween 9 9 9 and the respe$tive
owners of $op&ri-ht in su$h $ine5ato-raphi$ wor2!s#, to initiate and prose$ute
on .ehalf of 9 9 9 $ri5inal or $ivil a$tions in the Philippines a-ainst an& person or
persons unlawfull& distri.utin-, e9hi.itin-, sellin- or offerin- for sale an& fil5s or
video $assettes of whi$h 9 9 9 is the owner of $op&ri-ht or the owner of
e9$lusive ri-hts of distri.ution in the Philippines pursuant to an& a-ree5ent!s#
.etween 9 9 9 and the respe$tive owners of $op&ri-ht in su$h wor2s"*')+
tanta5ount to doin- .usiness in the Philippines" Fe fail to see how e9er$isin-
one?s le-al and propert& ri-hts and ta2in- steps for the vi-ilant prote$tion of said
ri-hts, parti$ularl& the appoint5ent of an attorne&4in4fa$t, $an .e dee5ed .& and
of the5selves to .e doin- .usiness here"
,s a -eneral rule, a forei-n $orporation will not .e re-arded as doin-
.usiness in the State si5pl& .e$ause it enters into $ontra$ts with residents of
the State, where su$h $ontra$ts are $onsu55ated outside the State"*''+ In fa$t,
a view is ta2en that a forei-n $orporation is not doin- .usiness in the state
5erel& .e$ause sales of its produ$t are 5ade there or other .usiness furtherin-
its interests is transa$ted there .& an alle-ed a-ent, whether a $orporation or a
natural person, where su$h a$tivities are not under the dire$tion and $ontrol of
the forei-n $orporation .ut are en-a-ed in .& the alle-ed a-ent as an
independent .usiness"*'/+
It is -enerall& held that sales 5ade to $usto5ers in the State .& an
independent dealer who has pur$hased and o.tained title fro5 the $orporation
to the produ$ts sold are not a doin- of .usiness .& the $orporation"*'4+
Hi2ewise, a forei-n $orporation whi$h sells its produ$ts to persons st&led
8distri.utin- a-ents= in the State, for distri.ution .& the5, is not doin- .usiness
in the State so as to render it su.Ee$t to servi$e of pro$ess therein, where the
$ontra$t with these pur$hasers is that the& shall .u& e9$lusivel& fro5 the forei-n
$orporation su$h -oods as it 5anufa$tures and shall sell the5 at trade pri$es
esta.lished .& it"*'5+
It has 5oreover .een held that the a$t of a forei-n $orporation in en-a-in-
an attorne& to represent it in a >ederal $ourt sittin- in a parti$ular State is not
doin- .usiness within the s$ope of the 5ini5u5 $onta$t test"*'1+ Fith 5u$h
5ore reason should this do$trine appl& to the 5ere retainer of ,tt&" Do5in-o for
le-al prote$tion a-ainst $ontin-ent a$ts of intelle$tual pira$&"
In a$$ordan$e with the rule that 8doin- .usiness= i5ports onl& a$ts in
furtheran$e of the purposes for whi$h a forei-n $orporation was or-ani:ed, it is
held that the 5ere institution and prose$ution or defense of a suit, parti$ularl& if
the transa$tion whi$h is the .asis of the suit too2 pla$e out of the State, do not
a5ount to the doin- of .usiness in the State" The institution of a suit or the
re5oval thereof is neither the 5a2in- of a $ontra$t nor the doin- of .usiness
within a $onstitutional provision pla$in- forei-n $orporations li$ensed to do
.usiness in the State under the sa5e re-ulations, li5itations and lia.ilities with
respe$t to su$h a$ts as do5esti$ $orporations" %erel& en-a-in- in liti-ation has
.een $onsidered as not a suffi$ient 5ini5u5 $onta$t to warrant the e9er$ise of
Eurisdi$tion over a forei-n $orporation"*'B+
,s a $onsideration aside, we have perfor$e to $o55ent on private
respondents? .asis for ar-uin- that petitioners are .arred fro5 5aintainin- suit
in the Philippines" >or alle-edl& .ein- forei-n $orporations doin- .usiness in
the Philippines without a li$ense, private respondents repeatedl& 5aintain in all
their pleadin-s that petitioners have there.& no legal personality to .rin- an
a$tion .efore Philippine $ourts"*'<+
,5on- the -rounds for a 5otion to dis5iss under the Rules of Court are
la$2 of le-al $apa$it& to sue*'0+ and that the $o5plaint states no $ause of
a$tion"*/(+ Ha$2 of le-al $apa$it& to sue 5eans that the plaintiff is not in the
e9er$ise of his $ivil ri-hts, or does not have the ne$essar& Aualifi$ation to
appear in the $ase, or does not have the $hara$ter or representation he $lai5s"
*/)+ On the other hand, a $ase is dis5issi.le for la$2 of personalit& to sue upon
proof that the plaintiff is not the real part&4in4interest, hen$e -rounded on failure
to state a $ause of a$tion"*/'+ The ter5 8la$2 of $apa$it& to sue= should not .e
$onfused with the ter5 8la$2 of personalit& to sue"= Fhile the for5er refers to a
plaintiff?s -eneral disa.ilit& to sue, su$h as on a$$ount of 5inorit&, insanit&,
in$o5peten$e, la$2 of Euridi$al personalit& or an& other -eneral disAualifi$ations
of a part&, the latter refers to the fa$t that the plaintiff is not the real part&4 in4
interest" Correspondin-l&, the first $an .e a -round for a 5otion to dis5iss
.ased on the -round of la$2 of le-al $apa$it& to sueG*//+ whereas the se$ond
$an .e used as a -round for a 5otion to dis5iss .ased on the fa$t that the
$o5plaint, on the fa$e thereof, evidentl& states no $ause of a$tion"*/4+
,ppl&in- the a.ove dis$ussion to the instant petition, the -round availa.le
for .arrin- re$ourse to our $ourts .& an unli$ensed forei-n $orporation doin- or
transa$tin- .usiness in the Philippines should properl& .e 8la$2 of $apa$it& to
sue,= not 8la$2 of personalit& to sue"= Certainl&, a $orporation whose le-al ri-hts
have .een violated is undenia.l& su$h, if not the onl&, real part&4in4interest to
.rin- suit thereon althou-h, for failure to $o5pl& with the li$ensin- reAuire5ent,
it is not $apa$itated to 5aintain an& suit .efore our $ourts"
Hastl&, on this point, we reiterate this Court?s reEe$tion of the $o55on
pro$edural ta$ti$s of errin- lo$al $o5panies whi$h, when sued .& unli$ensed
forei-n $orporations not en-a-ed in .usiness in the Philippines, invo2e the
latter?s supposed la$2 of $apa$it& to sue" The do$trine of la$2 of $apa$it& to sue
.ased on failure to first a$Auire a lo$al li$ense is .ased on $onsiderations of
pu.li$ poli$&" It was never intended to favor nor insulate fro5 suit uns$rupulous
esta.lish5ents or nationals in $ase of .rea$h of valid o.li-ations or violations of
le-al ri-hts of unsuspe$tin- forei-n fir5s or entities si5pl& .e$ause the& are not
li$ensed to do .usiness in the $ountr&"*/5+
II
Fe now pro$eed to the 5ain issue of the retroa$tive appli$ation to the
present $ontrovers& of the rulin- in 9:th Century #o" #ilm Corporation vs. Court
o$ Appeals! et al., pro5ul-ated on ,u-ust )0, )0<<,*/1+ that for the
deter5ination of pro.a.le $ause to support the issuan$e of a sear$h warrant in
$op&ri-ht infrin-e5ent $ases involvin- video-ra5s, the produ$tion of the 5aster
tape for $o5parison with the alle-edl& pirated $opies is ne$essar&"
Petitioners assert that the issuan$e of a sear$h warrant is addressed to the
dis$retion of the $ourt su.Ee$t to the deter5ination of pro.a.le $ause in
a$$ordan$e with the pro$edure pres$ri.ed therefor under Se$tions / and 4 of
Rule )'1" ,s of the ti5e of the appli$ation for the sear$h warrant in Auestion,
the $ontrollin- $riterion for the findin- of pro.a.le $ause was that enun$iated in
Burgos vs. Chie$ o$ Sta$$*/B+ statin- that7
Pro.a.le $ause for a sear$h warrant is defined as su$h fa$ts and
$ir$u5stan$es whi$h would lead a reasona.l& dis$rete and prudent 5an to
.elieve that an offense has .een $o55itted and that the o.Ee$ts sou-ht in
$onne$tion with the offense are in the pla$e sou-ht to .e sear$hed"
,$$ordin- to petitioners, after $o5pl&in- with what the law then reAuired,
the lower $ourt deter5ined that there was pro.a.le $ause for the issuan$e of a
sear$h warrant, and whi$h deter5ination in fa$t led to the issuan$e and servi$e
on De$e5.er )4, )0<B of Sear$h Farrant No" <B4(5/" It is further ar-ued that
an& sear$h warrant so issued in a$$ordan$e with all appli$a.le le-al
reAuire5ents is valid, for the lower $ourt $ould not possi.l& have .een e9pe$ted
to appl&, as the .asis for a findin- of pro.a.le $ause for the issuan$e of a sear$h
warrant in $op&ri-ht infrin-e5ent $ases involvin- video-ra5s, a pronoun$e5ent
whi$h was not e9istent at the ti5e of su$h deter5ination, on De$e5.er )4,
)0<B, that is, the do$trine in the 9:th Century #o" $ase that was pro5ul-ated
onl& on ,u-ust )0, )0<<, or over ei-ht 5onths later"
Private respondents predi$ta.l& ar-ue in support of the rulin- of the Court
of ,ppeals sustainin- the Auashal of the sear$h warrant .& the lower $ourt on
the stren-th of that 9:th Century #o" rulin- whi$h, the& $lai5, -oes into the ver&
essen$e of pro.a.le $ause" ,t the ti5e of the issuan$e of the sear$h warrant
involved here, althou-h the 9:th Century #o" $ase had not &et .een de$ided,
Se$tion ', ,rti$le III of the Constitution and Se$tion /, Rule )'1 of the )0<5
Rules on Cri5inal Pro$edure e5.odied the prevailin- and -overnin- law on the
5atter" The rulin- in 9:th Century #o" was 5erel& an appli$ation of the law on
pro.a.le $ause" Hen$e, the& posit that there was no law that was
retrospe$tivel& applied, sin$e the law had .een there all alon-" To refrain fro5
appl&in- the 9:th Century #o" rulin-, whi$h had supervened as a do$trine
pro5ul-ated at the ti5e of the resolution of private respondents? 5otion for
re$onsideration see2in- the Auashal of the sear$h warrant for failure of the trial
$ourt to reAuire presentation of the 5aster tapes prior to the issuan$e of the
sear$h warrant, would have $onstituted -rave a.use of dis$retion"*/<+
Respondent $ourt upheld the retroa$tive appli$ation of the 9:th Century
#o" rulin- .& the trial $ourt in resolvin- petitioners? 5otion for re$onsideration in
favor of the Auashal of the sear$h warrant, on this renovated thesis7
,nd whether this do$trine should appl& retroa$tivel&, it 5ust .e noted that in the
'(th Centur& >o9 $ase, the lower $ourt Auashed the earlier sear$h warrant it
issued" On certiorari, the Supre5e Court affir5ed the Auashal on the -round
a5on- others that the 5aster tapes or $op&ri-hted fil5s were not presented for
$o5parison with the pur$hased eviden$e of the video tapes to deter5ine
whether the latter is an unauthori:ed reprodu$tion of the for5er"
If the lower $ourt in the Centur& >o9 $ase did not Auash the warrant, it is Our
view that the Supre5e Court would have invalidated the warrant Eust the sa5e
$onsiderin- the ver& stri$t reAuire5ent set .& the Supre5e Court for the
deter5ination of Npro.a.le $ause? in $op&ri-ht infrin-e5ent $ases as enun$iated
in this '(th Centur& >o9 $ase" This is so .e$ause, as was stated .& the
Supre5e Court in the said $ase, the 5aster tapes and the pirated tapes 5ust .e
presented for comparison to satis$y the re8uirement o$ ;probable cause.. So it
-oes .a$2 to the ver& e9isten$e of pro.a.le $ause" 9 9 9*/0+
%indful as we are of the ra5ifi$ations of the do$trine of stare decisis and
the rudi5ents of fair pla&, it is our $onsidered view that the 9:th Century #o"
rulin- $annot .e retroa$tivel& applied to the instant $ase to Eustif& the Auashal of
Sear$h Farrant No" <B4(5/" Herein petitioners? $onsistent position that the
order of the lower $ourt of Septe5.er 5, )0<< den&in- therein defendants?
5otion to lift the order of sear$h warrant was properl& issued, there havin- .een
satisfa$tor& $o5plian$e with the then prevailin- standards under the law for
deter5ination of pro.a.le $ause, is indeed well ta2en" The lower $ourt $ould not
possi.l& have e9pe$ted 5ore eviden$e fro5 petitioners in their appli$ation for a
sear$h warrant other than what the law and Eurispruden$e, then e"isting and
7udicially accepted, reAuired with respe$t to the findin- of pro.a.le $ause"
,rti$le 4 of the Civil Code provides that 8!l#aws shall have no retroa$tive
effe$t, unless the $ontrar& is provided" Correlativel&, ,rti$le < of the sa5e Code
de$lares that 8!E#udi$ial de$isions appl&in- the laws or the Constitution shall for5
part of the le-al s&ste5 of the Philippines"=
;urispruden$e, in our s&ste5 of -overn5ent, $annot .e $onsidered as an
independent sour$e of lawG it $annot $reate law"*4(+ Fhile it is true that Eudi$ial
de$isions whi$h appl& or interpret the Constitution or the laws are part of the
le-al s&ste5 of the Philippines, still the& are not laws" ;udi$ial de$isions, thou-h
not laws, are nonetheless eviden$e of what the laws 5ean, and it is for this
reason that the& are part of the le-al s&ste5 of the Philippines"*4)+ ;udi$ial
de$isions of the Supre5e Court assu5e the sa5e authorit& as the statute itself"
*4'+
Interpretin- the aforeAuoted $orrelated provisions of the Civil Code and in
li-ht of the a.ove disAuisition, this Court e5phati$all& de$lared in Co vs. Court
o$ Appeals! et al"*4/+ that the prin$iple of prospe$tivit& applies not onl& to ori-inal
a5endator& statutes and ad5inistrative rulin-s and $ir$ulars, .ut also, and
properl& so, to Eudi$ial de$isions" Our holdin- in the earlier $ase of ,eople vs.
2ubinal*44+ e$hoes the rationale for this Eudi$ial de$laration, vi"7
De$isions of this Court, althou-h in the5selves not laws, are nevertheless
eviden$e of what the laws 5ean, and this is the reason wh& under ,rti$le < of
the New Civil Code, 8;udi$ial de$isions appl&in- or interpretin- the laws or the
Constitution shall for5 part of the le-al s&ste5"= The interpretation upon a law
.& this Court $onstitutes, in a wa&, a part of the law as of the date that the law
was ori-inall& passed, sin$e this Court?s $onstru$tion 5erel& esta.lishes the
$onte5poraneous le-islative intent that the law thus $onstrued intends to
effe$tuate" The settled rule supported .& nu5erous authorities is a restate5ent
of the le-al 5a9i5 8legis interpretation legis vim obtinet= L the interpretation
pla$ed upon the written law .& a $o5petent $ourt has the for$e of law" 9 9 9, .ut
when a do$trine of this Court is overruled and a different view is adopted, the
ne% doctrine should be applied prospectively! and should not apply to parties
%ho had relied on the old doctrine and acted on the $aith thereo$" 9 9 9" !Stress
supplied#"
This was for$efull& reiterated in Spouses Benonan vs. Court o$ Appeals! et
al.,*45+ where the Court e9pounded7
9 9 9" 3ut while our de$isions for5 part of the law of the land, the& are also
su.Ee$t to ,rti$le 4 of the Civil Code whi$h provides that 8laws shall have no
retroa$tive effe$t unless the $ontrar& is provided"= This is e9pressed in the
fa5iliar le-al 5a9i5u5 le" prospicit! non respicit, the law loo2s forward not
.a$2ward" The rationale a-ainst retroa$tivit& is eas& to per$eive" The
retroa$tive appli$ation of a law usuall& divests ri-hts that have alread& .e$o5e
vested or i5pairs the o.li-ations of $ontra$t and hen$e, is un$onstitutional
!>ran$is$o v" Certe:a, / SCR, 515 *)01)+#" The sa5e $onsideration underlies
our rulin-s -ivin- onl& prospe$tive effe$t to de$isions enun$iatin- new
do$trines" 9 9 9"
The reasonin- .ehind Senarillos vs. Hermosisima*41+ that Eudi$ial
interpretation of a statute $onstitutes part of the law as of the date it was
ori-inall& passed, sin$e the Court?s $onstru$tion 5erel& esta.lishes the
$onte5poraneous le-islative intent that the interpreted law $arried into effe$t, is
all too fa5iliar" Su$h Eudi$ial do$trine does not a5ount to the passa-e of a new
law .ut $onsists 5erel& of a $onstru$tion or interpretation of a pre4e9istin- one,
and that is pre$isel& the situation o.tainin- in this $ase"
It is $onseAuentl& $lear that a Eudi$ial interpretation .e$o5es a part of the
law as of the date that law was ori-inall& passed, su.Ee$t onl& to the Aualifi$ation
that when a do$trine of this Court is overruled and a different view is adopted,
and 5ore so when there is a reversal thereof, the new do$trine should .e
applied prospe$tivel& and should not appl& to parties who relied on the old
do$trine and a$ted in -ood faith"*4B+ To hold otherwise would .e to deprive the
law of its Aualit& of fairness and Eusti$e then, if there is no re$o-nition of what
had transpired prior to su$h adEudi$ation"*4<+
There is 5erit in petitioners? i5passioned and well4founded ar-u5entation7
The $ase of '(th Centur& >o9 >il5 Corporation vs. Court of ,ppeals, et al", )14
SCR, 155 !,u-ust )0, )0<<# !hereinafter '(th Centur& >o9# was ine9istent in
De$e5.er of )0<B when Sear$h Farrant <B4(5/ was issued .& the lower $ourt"
Hen$e, it .o--les the i5a-ination how the lower $ourt $ould .e e9pe$ted to
appl& the for5ulation of '(th Centur& >o9 in findin- pro.a.le $ause when the
for5ulation was &et non4e9istent"
999 999 999
In short, the lower $ourt was $onvin$ed at that time after $ondu$tin- sear$hin-
e9a5ination Auestions of the appli$ant and his witnesses that 8an offense had
.een $o55itted and that the o.Ee$ts sou-ht in $onne$tion with the offense
!were# in the pla$e sou-ht to .e sear$hed= !3ur-os v" Chief of Staff, et al", )//
SCR, <((#" It is indisputa.le, therefore, that at the ti5e of the appli$ation, or on
De$e5.er )4, )0<B, the lower $ourt did not $o55it an& error nor did it fail to
$o5pl& with an& le-al reAuire5ent for the valid issuan$e of sear$h warrant"
9 9 9" !F#e .elieve that the lower $ourt should .e $onsidered as havin- followed
the reAuire5ents of the law in issuin- Sear$h Farrant No" <B4(5/" The sear$h
warrant is therefore valid and .indin-" It 5ust .e noted that nowhere is it found
in the alle-ations of the Respondents that the lower $ourt failed to appl& the law
as then interpreted in <=>?. Hen$e, we find it a.surd that it is !si$# should .e
seen otherwise, .e$ause it is si5pl& i5possi.le to have reAuired the lower $ourt
to appl& a for5ulation whi$h will onl& .e defined si9 5onths later"
>urther5ore, it is unEust and unfair to reAuire $o5plian$e with le-al andOor
do$trinal reAuire5ents whi$h are ine9istent at the ti5e the& were supposed to
have .een $o5plied with"
999 999 999
9 9 9" If the lower $ourt?s reversal will .e sustained, what en$oura-e5ent $an .e
-iven to $ourts and liti-ants to respe$t the law and rules if the& $an e9pe$t with
reasona.le $ertaint& that upon the passa-e of a new rule, their $ondu$t $an still
.e open to AuestionM This $ertainl& .reeds insta.ilit& in our s&ste5 of dispensin-
Eusti$e" >or Petitioners who too2 spe$ial effort to redress their -rievan$es and to
prote$t their propert& ri-hts .& resortin- to the re5edies provided .& the law, it is
5ost unfair that fealt& to the rules and pro$edures then o.tainin- would .ear .ut
fruits of inEusti$e"*40+
Fithal, even the proposition that the prospe$tivit& of Eudi$ial de$isions
i5ports appli$ation thereof not onl& to future $ases .ut also to $ases still
on-oin- or not &et final when the de$ision was pro5ul-ated, should not .e
$ountenan$ed in the Eural sphere on a$$ount of its inevita.l& unsettlin-
reper$ussions" %ore to the point, it is felt that the reasona.leness of the added
reAuire5ent in 9:th Century #o" $allin- for the produ$tion of the 5aster tapes of
the $op&ri-hted fil5s for deter5ination of pro.a.le $ause in $op&ri-ht
infrin-e5ent $ases needs revisitin- and $larifi$ation"
It will .e re$alled that the 9:th Century #o" $ase arose fro5 sear$h warrant
pro$eedin-s in anti$ipation of the filin- of a $ase for the unauthori:ed sale or
rentin- out of $op&ri-hted fil5s in videotape for5at in violation of Presidential
De$ree No" 40" It revolved around the 5eanin- of pro.a.le $ause within the
$onte9t of the $onstitutional provision a-ainst ille-al sear$hes and sei:ures, as
applied to $op&ri-ht infrin-e5ent $ases involvin- videotapes"
Therein it was ruled that L
The presentation of 5aster tapes of the $op&ri-hted fil5s fro5 whi$h the pirated
fil5s were alle-edl& $opied, was ne$essar& for the validit& of sear$h warrants
a-ainst those who have in their possession the pirated fil5s" The petitioner?s
ar-u5ent to the effe$t that the presentation of the 5aster tapes at the ti5e of
appli$ation 5a& not .e ne$essar& as these would .e 5erel& evidentiar& in
nature and not deter5inative of whether or not a pro.a.le $ause e9ists to Eustif&
the issuan$e of the sear$h warrants is not 5eritorious" The $ourt $annot
presu5e that dupli$ate or $opied tapes were ne$essaril& reprodu$ed fro5
5aster tapes that it owns"
The appli$ation for sear$h warrants was dire$ted a-ainst video tape outlets
whi$h alle-edl& were en-a-ed in the unauthori:ed sale and rentin- out of
$op&ri-hted fil5s .elon-in- to the petitioner pursuant to P"D" 40"
The essen$e of a $op&ri-ht infrin-e5ent is the si5ilarit& or at least su.stantial
si5ilarit& of the purported pirated wor2s to the $op&ri-hted wor2" Hen$e, the
appli$ant 5ust present to the $ourt the $op&ri-hted fil5s to $o5pare the5 with
the pur$hased eviden$e of the video tapes alle-edl& pirated to deter5ine
whether the latter is an unauthori:ed reprodu$tion of the for5er" This lin2a-e of
the $op&ri-hted fil5s to the pirated fil5s 5ust .e esta.lished to satisf& the
reAuire5ents of pro.a.le $ause" %ere alle-ations as to the e9isten$e of the
$op&ri-hted fil5s $annot serve as .asis for the issuan$e of a sear$h warrant"
>or a $loser and 5ore perspi$uous appre$iation of the fa$tual ante$edents
of 9:th Century #o", the pertinent portions of the de$ision therein are Auoted
hereunder, to wit7
In the instant $ase, the lower $ourt lifted the three Auestioned sear$h warrants
a-ainst the private respondents on the -round that it a$ted on the appli$ation for
the issuan$e of the said sear$h warrants and -ranted it on the
5isrepresentations of appli$ant N3I and its witnesses that infrin-e5ent of
$op&ri-ht or a pira$& of a parti$ular fil5 have .een $o55itted" Thus the lower
$ourt stated in its Auestioned order dated ;anuar& ', )0<17
8,$$ordin- to the 5ovant, all three witnesses durin- the pro$eedin-s in the
appli$ation for the three sear$h warrants testified of their own personal
2nowled-e" 3et! Atty. Albino 4eyes o$ the @BI stated that the counsel or
representative o$ the T%entieth Century #o" Corporation %ill testi$y on the video
cassettes that %ere pirated! so that he did not have personal kno%ledge o$ the
alleged piracy. The %itness Bacani also said that the video cassettes %ere
pirated %ithout stating the manner it %as pirated and that it %as Atty. /omingo
that has kno%ledge o$ that $act"
8On the part of ,tt&" Do5in-o, he said that the re4tapin- of the alle-edl& pirated
tapes was fro5 5aster tapes alle-edl& .elon-in- to the Twentieth Centur& >o9,
.e$ause, a$$ordin- to hi5 it is of his personal 2nowled-e"
8,t the hearin- of the %otion for Re$onsideration, Senior N3I ,-ent ,tt&" ,l.ino
Re&es testified that %hen the complaint $or in$ringement %as brought to the @BI!
the master tapes o$ the allegedly pirated tapes %ere sho%n to him and he made
comparisons o$ the tapes %ith those purchased by their man Bacani. Ahy the
master tapes or at least the $ilm reels o$ the allegedly pirated tapes %ere not
sho%n to the Court during the application gives some misgivings as to the truth
o$ that bare statement o$ the @BI agent on the %itness stand"
8,-ain as the appli$ation and sear$h pro$eedin-s is a prelude to the filin- of
$ri5inal $ases under P"D" 40, the $op&ri-ht infrin-e5ent law, and althou-h what
is reAuired for the issuan$e thereof is 5erel& the presen$e of pro.a.le $ause,
that pro.a.le $ause 5ust .e satisfa$tor& to the Court, for it is a ti5e4honored
pre$ept that pro$eedin-s to put a 5an to tas2 as an offender under our laws
should .e interpreted in strictissimi 7uris a-ainst the -overn5ent and li.erall& in
favor of the alle-ed offender"
999 999 999
8This do$trine has never .een overturned, and as a 5atter of fa$t it had .een
enshrined in the 3ill of Ri-hts in our )0B/ Constitution"
8So that lacking in persuasive e$$ect! the allegation that master tapes %ere
vie%ed by the @BI and %ere compared to the purchased and seied video
tapes $rom the respondents. establishments! it should be dismissed as not
supported by competent evidence and $or that matter the probable cause hovers
in that grey debatable t%ilight one bet%een black and %hite resolvable in $avor
o$ respondents herein"
83ut the -larin- fa$t is that NCo$oon,? the first video tape 5entioned in the sear$h
warrant, was not even dul& re-istered or $op&ri-hted in the Philippines" !,nne9
C of Opposition, p" )5', re$ord"# So that la$2in- in the reAuisite presentation to
the Court of an alle-ed 5aster tape for purposes of $o5parison with the
pur$hased eviden$e of the video tapes alle-edl& pirated and those sei:ed fro5
respondents, there was no wa& to deter5ine whether there reall& was pira$&, or
$op&in- of the fil5 of the $o5plainant Twentieth Centur& >o9"=
999 999 999
The lo%er court! there$ore! li$ted the three *B+ 8uestioned search %arrants in the
absence o$ probable cause that the private respondents violated ,./. C=. As
$ound by the court! the @BI agents %ho acted as %itnesses did not have
personal kno%ledge o$ the sub7ect matter o$ their testimony %hich %as the
alleged commission o$ the o$$ense by the private respondents" Onl& the
petitioner?s $ounsel who was also a witness durin- the appli$ation for the
issuan$e of the sear$h warrants stated that he had personal 2nowled-e that the
$onfis$ated tapes owned .& the private respondents were pirated tapes ta2en
fro5 5aster tapes .elon-in- to the petitioner" However, the lower $ourt did not
-ive 5u$h $reden$e to his testi5on& in view of the fa$t that the 5aster tapes of
the alle-edl& pirated tapes were not shown to the $ourt durin- the appli$ation=
!Itali$s ours#"
The itali$i:ed passa-es readil& e9pose the reason wh& the trial $ourt therein
reAuired the presentation of the 5aster tapes of the alle-edl& pirated fil5s in
order to $onvin$e itself of the e9isten$e of pro.a.le $ause under the fa$tual
5ilieu pe$uliar to that $ase" In the $ase at .ar, respondent appellate $ourt itself
o.served7
Fe feel that the rationale .ehind the aforeAuoted do$trine is that the pirated
$opies as well as the 5aster tapes, unli2e the other t&pes of personal properties
whi$h 5a& .e sei:ed, %ere available $or presentation to the court at the time o$
the application $or a search %arrant to deter5ine the e9isten$e of the lin2a-e of
the $op&ri-hted fil5s with the pirated ones" Thus, there is no reason not to
present the5 !Itali$s supplied for e5phasis#"*5(+
In fine, the supposed pronunciamento in said $ase re-ardin- the ne$essit&
for the presentation of the 5aster tapes of the $op&ri-hted fil5s for the validit& of
sear$h warrants should at 5ost .e understood to 5erel& serve as a -uidepost in
deter5inin- the e9isten$e of pro.a.le $ause in $op&ri-ht infrin-e5ent $ases
%here there is doubt as to the true ne"us bet%een the master tape and the
pirated copies" ,n o.Ee$tive and $areful readin- of the de$ision in said $ase
$ould lead to no other $on$lusion than that said dire$tive was hardl& intended to
.e a sweepin- and infle9i.le reAuire5ent in all or si5ilar $op&ri-ht infrin-e5ent
$ases" 2udicial dicta should alwa&s .e $onstrued within the fa$tual 5atri9 of
their parturition, otherwise a $areless interpretation thereof $ould unfairl& fault
the writer with the vi$e of overstate5ent and the reader with the falla$& of undue
-enerali:ation"
In the $ase at .ar, N3I Senior ,-ent Hauro C" Re&es who filed the
appli$ation for sear$h warrant with the lower $ourt followin- a for5al $o5plaint
lod-ed .& petitioners, Eud-in- fro5 his affidavit*5)+ and his deposition,*5'+ did
testif& on 5atters within his personal 2nowled-e .ased on said $o5plaint of
petitioners as well as his own investi-ation and surveillan$e of the private
respondents? video rental shop" Hi2ewise, ,tt&" Ri$o V" Do5in-o, in his $apa$it&
as attorne&4in4fa$t, stated in his affidavit*5/+ and further e9pounded in his
deposition*54+ that he personall& 2new of the fa$t that private respondents had
never .een authori:ed .& his $lients to reprodu$e, lease and possess for the
purpose of sellin- an& of the $op&ri-hted fil5s"
3oth testi5onies of ,-ent Re&es and ,tt&" Do5in-o were $orro.orated .&
Rene C" 3alta:ar, a private resear$her retained .& %otion Pi$tures ,sso$iation
of ,5eri$a, In$" !%P,,, In$"#, who was li2ewise presented as a witness durin-
the sear$h warrant pro$eedin-s"*55+ The re$ords $learl& refle$t that the
testi5onies of the a.ovena5ed witnesses were strai-htforward and ste55ed
fro5 5atters within their personal 2nowled-e" The& displa&ed none of the
a5.ivalen$e and un$ertaint& that the witnesses in the 9:th Century #o" $ase
e9hi.ited" This $ate-ori$al forthri-htness in their state5ents, a5on- others, was
what initiall& and $orre$tl& $onvin$ed the trial $ourt to 5a2e a findin- of the
e9isten$e of pro.a.le $ause"
There is no ori-inalit& in the ar-u5ent of private respondents a-ainst the
validit& of the sear$h warrant, o.viousl& .orrowed fro5 9:th Century #o", that
petitioners? witnesses L N3I ,-ent Hauro C" Re&es, ,tt&" Ri$o V" Do5in-o and
Rene C" 3alta:ar L did not have personal 2nowled-e of the su.Ee$t 5atter of
their respe$tive testi5onies and that said witnesses? $lai5 that the video tapes
were pirated, without statin- the 5anner .& whi$h these were pirated, is a
$on$lusion of fa$t without .asis"*51+ The differen$e, it 5ust .e pointed out, is
that the re$ords in the present $ase reveal that !)# there is no alle-ation of
5isrepresentation, 5u$h less a findin- thereof .& the lower $ourt, on the part of
petitioners? witnessesG !'# there is no denial on the part of private respondents
that the tapes sei:ed were ille-iti5ate $opies of the $op&ri-hted ones nor have
the& shown that the& were -iven an& authorit& .& petitioners to $op&, sell, lease,
distri.ute or $ir$ulate, or at least, to offer for sale, lease, distri.ution or
$ir$ulation the said video tapesG and !/# a dis$reet .ut e9tensive surveillan$e of
the suspe$ted area was underta2en .& petitioner?s witnesses suffi$ient to ena.le
the5 to e9e$ute trustworth& affidavits and depositions re-ardin- 5atters
dis$overed in the $ourse thereof and of whi$h the& have personal 2nowled-e"
It is evidentl& in$orre$t to su--est, as the rulin- in '(th Centur& >o9 5a&
appear to do, that in $op&ri-ht infrin-e5ent $ases, the presentation of 5aster
tapes of the $op&ri-hted fil5s is alwa&s ne$essar& to 5eet the reAuire5ent of
pro.a.le $ause and that, in the a.sen$e thereof, there $an .e no findin- of
pro.a.le $ause for the issuan$e of a sear$h warrant" It is true that su$h 5aster
tapes are o.Ee$t eviden$e, with the 5erit that in this $lass of eviden$e the
as$ertain5ent of the $ontroverted fa$t is 5ade throu-h de5onstrations involvin-
the dire$t use of the senses of the presidin- 5a-istrate"*5B+ Su$h au9iliar&
pro$edure, however, does not rule out the use of testi5onial or do$u5entar&
eviden$e, depositions, ad5issions or other $lasses of eviden$e tendin- to prove
the $actum probandum,*5<+ espe$iall& where the produ$tion in $ourt of o.Ee$t
eviden$e would result in dela&, in$onvenien$e or e9penses out of proportion to
its evidentiar& value"*50+
Of $ourse, as a -eneral rule, $onstitutional and statutor& provisions relatin-
to sear$h warrants prohi.it their issuan$e e9$ept on a showin- of pro.a.le
$ause, supported .& oath or affir5ation" These provisions prevent the issuan$e
of warrants on loose, va-ue, or dou.tful .ases of fa$t, and e5phasi:e the
purpose to prote$t a-ainst all -eneral sear$hes"*1(+ Indeed, ,rti$le III of our
Constitution 5andates in Se$" ' thereof that no sear$h warrant shall issue
e9$ept upon pro.a.le $ause to .e deter5ined personall& .& the Eud-e after
e9a5ination under oath or affir5ation of the $o5plainant and the witnesses he
5a& produ$e, and parti$ularl& des$ri.in- the pla$e to .e sear$hed and the
thin-s to .e sei:edG and Se$" / thereof provides that an& eviden$e o.tained in
violation of the pre$edin- se$tion shall .e inad5issi.le for an& purpose in an&
pro$eedin-"
These $onstitutional stri$tures are i5ple5ented .& the followin- provisions
of Rule )'1 of the Rules of Court7
Se$" /" 4e8uisites $or issuing search %arrant" L , sear$h warrant shall not
issue .ut upon pro.a.le $ause in $onne$tion with one spe$ifi$ offense to .e
deter5ined personall& .& the Eud-e after e9a5ination under oath or affir5ation
of the $o5plainant and the witnesses he 5a& produ$e, and parti$ularl&
des$ri.in- the pla$e to .e sear$hed and the thin-s to .e sei:ed"
Se$" 4" D"amination o$ complainantE record" L The Eud-e 5ust, .efore issuin-
the warrant, personall& e9a5ine in the for5 of sear$hin- Auestions and
answers, in writin- and under oath the $o5plainant and an& witnesses he 5a&
produ$e on fa$ts personall& 2nown to the5 and atta$h to the re$ord their sworn
state5ents to-ether with an& affidavits su.5itted"
Se$" 5" Issuance and $orm o$ search %arrant" L If the Eud-e is thereupon
satisfied of the e9isten$e of fa$ts upon whi$h the appli$ation is .ased, or that
there is pro.a.le $ause to .elieve that the& e9ist, he 5ust issue the warrant,
whi$h 5ust .e su.stantiall& in the for5 pres$ri.ed .& these Rules"
The $onstitutional and statutor& provisions of various Eurisdi$tions reAuirin-
a showin- of pro.a.le $ause .efore a sear$h warrant $an .e issued are
5andator& and 5ust .e $o5plied with, and su$h a showin- has .een held to .e
an unAualified $ondition pre$edent to the issuan$e of a warrant" , sear$h
warrant not .ased on pro.a.le $ause is a nullit&, or is void, and the issuan$e
thereof is, in le-al $onte5plation, ar.itrar&"*1)+ It .ehooves us, then, to review
the $on$ept of pro.a.le $ause, firstl&, fro5 representative holdin-s in the
,5eri$an Eurisdi$tion fro5 whi$h we patterned our do$trines on the 5atter"
,lthou-h the ter5 8pro.a.le $ause= has .een said to have a well4defined
5eanin- in the law, the ter5 is e9$eedin-l& diffi$ult to define, in this $ase, with
an& de-ree of pre$isionG indeed, no definition of it whi$h would Eustif& the
issuan$e of a sear$h warrant $an .e for5ulated whi$h would $over ever& state
of fa$ts whi$h 5i-ht arise, and no for5ula or standard, or hard and fast rule,
5a& .e laid down whi$h 5a& .e applied to the fa$ts of ever& situation"*1'+ ,s to
what a$ts $onstitute pro.a.le $ause see5 in$apa.le of definition"*1/+ There is,
of ne$essit&, no e9a$t test"*14+
,t .est, the ter5 8pro.a.le $ause= has .een understood to 5ean a
reasona.le -round of suspi$ion, supported .& $ir$u5stan$es suffi$ientl& stron-
in the5selves to warrant a $autious 5an in the .elief that the person a$$used is
-uilt& of the offense with whi$h he is $har-edG*15+ or the e9isten$e of su$h fa$ts
and $ir$u5stan$es as would e9$ite an honest .elief in a reasona.le 5ind a$tin-
on all the fa$ts and $ir$u5stan$es within the 2nowled-e of the 5a-istrate that
the $har-e 5ade .& the appli$ant for the warrant is true"*11+
Pro.a.le $ause does not 5ean a$tual and positive $ause, nor does it
i5port a.solute $ertaint&" The deter5ination of the e9isten$e of pro.a.le $ause
is not $on$erned with the Auestion of whether the offense $har-ed has .een or
is .ein- $o55itted in fa$t, or whether the a$$used is -uilt& or inno$ent, .ut onl&
whether the affiant has reasona.le -rounds for his .elief"*1B+ The reAuire5ent is
less than certainty or proo$! but more than suspicion or possibility"*1<+
In Philippine Eurispruden$e, pro.a.le $ause has .een unifor5l& defined as
su$h fa$ts and $ir$u5stan$es whi$h would lead a reasona.le, dis$reet and
prudent 5an to .elieve that an offense has .een $o55itted, and that the
o.Ee$ts sou-ht in $onne$tion with the offense are in the pla$e sou-ht to .e
sear$hed"*10+ It .ein- the dut& of the issuin- offi$er to issue, or refuse to issue,
the warrant as soon as pra$ti$a.le after the appli$ation therefor is filed, *B(+ the
fa$ts warrantin- the $on$lusion of pro.a.le $ause 5ust .e assessed at the ti5e
of su$h Eudi$ial deter5ination .& ne$essaril& usin- le-al standards then set $orth
in la% and 7urisprudence! and not those that have yet to be cra$ted therea$ter"
,s alread& stated, the definition of pro.a.le $ause enun$iated in Burgos!
Sr. vs. Chie$ o$ Sta$$! et al.! supra! vis0a0vis the provisions of Se$tions / and 4 of
Rule )'1, were the prevailin- and $ontrollin- le-al standards, as the& $ontinue
to .e, .& whi$h a findin- of pro.a.le $ause is tested" Sin$e the proprietar& of
the issuan$e of a sear$h warrant is to .e deter5ined at the ti5e of the
appli$ation therefor, whi$h in turn 5ust not .e too re5ote in ti5e fro5 the
o$$urren$e of the offense alle-ed to have .een $o55itted, the issuin- Eud-e, in
deter5inin- the e9isten$e of pro.a.le $ause, $an and should lo-i$all& loo2 to
the tou$hstones in the laws therefore ena$ted and the de$isions alread&
pro5ul-ated at the ti5e, and not to those whi$h had not &et even .een
$on$eived or for5ulated"
It is worth notin- that neither the Constitution nor the Rules of Court atte5pt
to define pro.a.le $ause, o.viousl& for the purpose of leavin- su$h 5atter to the
$ourt?s dis$retion within the parti$ular fa$ts of ea$h $ase" ,lthou-h the
Constitution prohi.its the issuan$e of a sear$h warrant in the a.sen$e of
pro.a.le $ause, su$h $onstitutional inhi.ition does not $o55and the le-islature
to esta.lish a definition or for5ula for deter5inin- what shall $onstitute pro.a.le
$ause"*B)+ Thus, Con-ress, despite its .road authorit& to fashion standards of
reasona.leness for sear$hes and sei:ures,*B'+ does not venture to 5a2e su$h a
definition or standard for5ulation of pro.a.le $ause, nor $ate-ori:e what fa$ts
and $ir$u5stan$es 5a2e up the sa5e, 5u$h less li5it the deter5ination thereof
to and within the $ir$u5s$ription of a parti$ular $lass of eviden$e, all in
deferen$e to Eudi$ial dis$retion and pro.it&"*B/+
,$$ordin-l&, to restri$t the e9er$ise of dis$retion .& a Eud-e .& addin- a
parti$ular reAuire5ent !the presentation of 5aster tapes, as inti5ated .& 9:th
Century #o"# not provided nor i5plied in the law for a findin- of pro.a.le $ause
is .e&ond the real5 of Eudi$ial $o5peten$e or state5anship" It serves no
purpose .ut to stultif& and $onstri$t the Eudi$ious e9er$ise of a $ourtQs
prero-atives and to deni-rate the Eudi$ial dut& of deter5inin- the e9isten$e of
pro.a.le $ause to a 5ere 5inisterial or 5e$hani$al fun$tion" There is, to repeat,
no law or rule whi$h reAuires that the e9isten$e of pro.a.le $ause is or should
.e deter5ined solel& .& a spe$ifi$ 2ind of eviden$e" Surel&, this $ould not have
.een $onte5plated .& the fra5ers of the Constitution, and we do not .elieve
that the Court intended the state5ent in 9:th Century #o" re-ardin- 5aster
tapes as the di$tu5 for all seasons and reasons in infrin-e5ent $ases"
Turnin- now to the $ase at .ar, it $an .e -leaned fro5 the re$ords that the
lower $ourt followed the pres$ri.ed pro$edure for the issuan$es of a sear$h
warrant7 !)# the e9a5ination under oath or affir5ation of the $o5plainant and his
witnesses, with the5 parti$ularl& des$ri.in- the pla$e to .e sear$hed and the
thin-s to .e sei:edG !'# an e9a5ination personall& $ondu$ted .& the Eud-e in the
for5 of sear$hin- Auestions and answers, in writin- and under oath of the
$o5plainant and witnesses on fa$ts personall& 2nown to the5G and, !/# the
ta2in- of sworn state5ents, to-ether with the affidavits su.5itted, whi$h were
dul& atta$hed to the re$ords"
Thereafter, the $ourt a 8uo 5ade the followin- fa$tual findin-s leadin- to
the issuan$e of the sear$h warrant now su.Ee$t to this $ontrovers&7
In the instant $ase, the followin- fa$ts have .een esta.lished7 !)# $op&ri-hted
video tapes .earin- titles enu5erated in Sear$h Farrant No" <B4(5/ were .ein-
sold, leased, distri.uted or $ir$ulated, or offered for sale, lease, distri.ution, or
transferred or $aused to .e transferred .& defendants at their video outlets,
without the written $onsent of the private $o5plainants or their assi-neeG !'#
re$overed or $onfis$ated fro5 defendantsQ possession were video tapes
$ontainin- $op&ri-hted 5otion pi$ture fil5s without the authorit& of the
$o5plainantG !/# the video tapes ori-inated fro5 spurious or unauthori:ed
personsG and !4# said video tapes were e9a$t reprodu$tions of the fil5s listed in
the sear$h warrant whose $op&ri-hts or distri.ution ri-hts were owned .&
$o5plainants"
The .asis of these fa$ts are the affidavits and depositions of N3I Senior ,-ent
Hauro C" Re&es, ,tt&" Ri$o V" Do5in-o, and Rene C" 3alta:ar" %otion Pi$tures
,sso$iation of ,5eri$a, In$" !%P,,# thru their $ounsel, ,tt&" Ri$o V" Do5in-o,
filed a $o5plaint with the National 3ureau of Investi-ation a-ainst $ertain video
esta.lish5ents one of whi$h is defendant, for violation of PD No" 40 as
a5ended .& PD No, )0<<" ,tt&" Hauro C" Re&es led a tea5 to $ondu$t dis$reet
surveillan$e operations on said video esta.lish5ents" Per infor5ation earlier
-athered .& ,tt&" Do5in-o, defendants were en-a-ed in the ille-al sale, rental,
distri.ution, $ir$ulation or pu.li$ e9hi.ition of $op&ri-hted fil5s of %P,, without
its written authorit& or its 5e5.ers" Jnowin- that defendant Sunshine Ho5e
Video and its proprietor, %r" Danilo Pelindario, were not authori:ed .& %P,, to
reprodu$e, lease, and possess for the purpose of sellin- an& of its $op&ri-hted
5otion pi$tures, he instru$ted his resear$her, %r" Rene 3alta:ar to rent two
video $assettes fro5 said defendants on O$to.er '), )0<B" Rene C" 3alta:ar
pro$eeded to Sunshine Ho5e Video and rented tapes $ontainin- Hittle Shop of
Horror" He was issued rental slip No" '1/1' dated O$to.er '), )0<B for P)("((
with a deposit of P)(("((" ,-ain, on De$e5.er )), )0<B, he returned to
Sunshine Ho5e Video and rented Ro.o$op with a rental slip No" '5'B) also for
P)("((" On the .asis of the $o5plaint of %P,, thru $ounsel, ,tt&" Hauro C"
Re&es personall& went to Sunshine Ho5e Video at No" 1 %a&fair Center,
%a-allanes Co55er$ial Center, %a2ati" His last visit was on De$e5.er B,
)0<B" There, he found the video outlet rentin-, leasin-, distri.utin- video
$assette tapes whose titles were $op&ri-hted and without the authorit& of %P,,"
@iven these fa$ts, a pro.a.le $ause e9ists" 9 9 9"*B4+
The lower $ourt su.seAuentl& e9e$uted a volte0$ace, despite its prior
detailed and su.stantiated findin-s, .& statin- in its order of Nove5.er '', )0<<
den&in- petitioners? 5otion for re$onsideration and Auashin- the sear$h warrant
that L
9 9 9" The two !'# $ases have a $o55on fa$tual 5ilieuG .oth involve alle-ed
pirated $op&ri-hted fil5s of private $o5plainants whi$h were found in the
possession or $ontrol of the defendants" Hen$e, the ne$essit& of the
presentation of the 5aster tapes fro5 whi$h the pirated fil5s were alle-edl&
$opied is ne$essar& in the instant $ase, to esta.lish the e9isten$e of pro.a.le
$ause"*B5+
3ein- .ased solel& on an unEustifia.le and i5proper retroa$tive appli$ation
of the 5aster tape reAuire5ent -enerated .& 9:th Century #o" upon a fa$tual
situation $o5pletel& different fro5 that in the $ase at .ar, and without an&thin-
5ore, this later order $learl& defies ele5ental fair pla& and is a -ross reversi.le
error" In fa$t, this o.servation of the Court in La Chemise Lacoste! S.A. vs.
#ernande! et al", supra, 5a& Eust as easil& appl& to the present $ase7
, review of the -rounds invo2ed 9 9 9 in his 5otion to Auash the sear$h
warrants reveals the fa$t that the& are not appropriate for Auashin- a warrant"
The& are 5atters of defense whi$h should .e ventilated durin- the trial on the
5erits of the $ase" 9 9 9
,s $orre$tl& pointed out .& petitioners, a .lind espousal of the reAuisite of
presentation of the 5aster tapes in $op&ri-ht infrin-e5ent $ases, as the pri5e
deter5inant of pro.a.le $ause, is too e9a$tin- and i5pra$ti$a.le a reAuire5ent
to .e $o5plied with in a sear$h warrant appli$ation whi$h, it 5ust not .e
overloo2ed, is onl& an an$illar& pro$eedin-" >urther, on realisti$ $onsiderations,
a stri$t appli$ation of said reAuire5ent 5ilitates a-ainst the ele5ents of se$re$&
and speed whi$h underlie $overt investi-ative and surveillan$e operations in
poli$e enfor$e5ent $a5pai-ns a-ainst all for5s of $ri5inalit&, $onsiderin- that
the 5aster tapes of a 5otion pi$ture reAuired to .e presented .efore the $ourt
$onsists of several reels $ontained in $ir$ular steel $asin-s whi$h, .e$ause of
their .ul2, will definitel& draw attention, unli2e di5inutive o.Ee$ts li2e video tapes
whi$h $an .e easil& $on$ealed"*B1+ Fith hundreds of titles .ein- pirated, this
onerous and tedious i5position would .e 5ultiplied a hundredfold .& Eudi$ial fiat,
dis$oura-in- and preventin- le-al re$ourses in forei-n Eurisdi$tions"
@iven the present international awareness and furor over violations in lar-e
s$ale of intelle$tual propert& ri-hts, $allin- for transnational san$tions, it .ears
$allin- to 5ind the Court?s ad5onition also in La Chemise Lacoste! supra, that
L
9 9 9" ;ud-es all over the $ountr& are well advised to re5e5.er that $ourt
pro$esses should not .e used as instru5ents to, unwittin-l& or otherwise, aid
$ounterfeiters and intelle$tual pirates, tie the hands of the law as it see2s to
prote$t the >ilipino $onsu5in- pu.li$ and frustrate e9e$utive and ad5inistrative
i5ple5entation of sole5n $o55it5ents pursuant to international $onventions
and treaties"
III
The a5end5ent of Se$tion 51 of Presidential De$ree No" 40 .& Presidential
De$ree No" )0<B,*BB+ whi$h should here .e pu.li$i:ed Eudi$iall&, .rou-ht a.out
the revision of its penalt& stru$ture and enu5erated additional a$ts $onsidered
violative of said de$ree on intelle$tual propert&, na5el&, !)# dire$tl& or indire$tl&
transferrin- or $ausin- to .e transferred an& sound re$ordin- or 5otion pi$ture
or other audio4visual wor2s so re$orded with intent to sell, lease, pu.li$l& e9hi.it
or $ause to .e sold, leased or pu.li$l& e9hi.ited, or to use or $ause to .e used
for profit su$h arti$les on whi$h sounds, 5otion pi$tures, or other audio4visual
wor2s are so transferred without the written $onsent of the owner or his
assi-neeG !'# sellin-, leasin-, distri.utin-, $ir$ulatin-, pu.li$l& e9hi.itin-, or
offerin- for sale, lease, distri.ution, or possessin- for the purpose of sale, lease,
distri.ution, $ir$ulation or pu.li$ e9hi.ition an& of the a.ove5entioned arti$les,
without the written $onsent of the owner or his assi-neeG and, !/# dire$tl& or
indire$tl& offerin- or 5a2in- availa.le for a fee, rental, or an& other for5 of
$o5pensation an& eAuip5ent, 5a$hiner&, paraphernalia or an& 5aterial with the
2nowled-e that su$h eAuip5ent, 5a$hiner&, paraphernalia or 5aterial will .e
used .& another to reprodu$e, without the $onsent of the owner, an&
phono-raph re$ord, dis$, wire, tape, fil5 or other arti$le on whi$h sounds,
5otion pi$tures or other audio4visual re$ordin-s 5a& .e transferred, and whi$h
provide distin$t .ases for $ri5inal prose$ution, .ein- $ri5es independentl&
punisha.le under Presidential De$ree No" 40, as a5ended, aside fro5 the a$t of
infrin-in- or aidin- or a.ettin- su$h infrin-e5ent under Se$tion '0"
The trial $ourt?s findin- that private respondents $o55itted a$ts in .latant
trans-ression of Presidential De$ree No" 40 all the 5ore .olsters its findin-s of
pro.a.le $ause, whi$h deter5ination $an .e rea$hed even in the a.sen$e of
5aster tapes .& the Eud-e in the e9er$ise of sound dis$retion" The e9e$utive
$on$ern and resolve e9pressed in the fore-oin- a5end5ents to the de$ree for
the prote$tion of intelle$tual propert& ri-hts should .e 5at$hed .& $orrespondin-
Eudi$ial vi-ilan$e and a$tivis5, instead of the apath& of su.5ittin- to
te$hni$alities in the fa$e of a5ple eviden$e of -uilt"
The essen$e of intelle$tual pira$& should .e essa&ed in $on$eptual ter5s in
order to unders$ore its -ravit& .& an appropriate understandin- thereof"
Infrin-e5ent of a $op&ri-ht is a trespass on a private do5ain owned and
o$$upied .& the owner of the $op&ri-ht, and, therefore, prote$ted .& law, and
infrin-e5ent of $op&ri-ht, or pira$&, whi$h is a s&non&5ous ter5 in this
$onne$tion, $onsists in the doin- .& an& person, without the $onsent of the
owner of the $op&ri-ht, of an&thin- the sole ri-ht to do whi$h is $onferred .&
statute on the owner of the $op&ri-ht"*B<+
, $op& of a pira$& is an infrin-e5ent of the ori-inal, and it is no defense that
the pirate, in su$h $ases, did not 2now what wor2s he was indire$tl& $op&in-, or
did not 2now whether or not he was infrin-in- an& $op&ri-htG he at least 2new
that what he was $op&in- was not his, and he $opied at his peril" In deter5inin-
the Auestion of infrin-e5ent, the a5ount of 5atter $opied fro5 the $op&ri-hted
wor2 is an i5portant $onsideration" To $onstitute infrin-e5ent, it is not
ne$essar& that the whole or even a lar-e portion of the wor2 shall have .een
$opied" If so 5u$h is ta2en that the value of the ori-inal is sensi.l& di5inished,
or the la.ors of the ori-inal author are su.stantiall& and to an inEurious e9tent
appropriated .& another, that is suffi$ient in point of law to $onstitute a pira$&"
*B0+ The Auestion of whether there has .een an a$tiona.le infrin-e5ent of a
literar&, 5usi$al, or artisti$ wor2 in 5otion pi$tures, radio or television .ein- one
of fa$t,*<(+ it should properl& .e deter5ined durin- the trial" That is the sta-e
$allin- for $on$lusive or preponderatin- eviden$e, and not the su55ar&
pro$eedin- for the issuan$e of a sear$h warrant wherein .oth lower $ourts
erroneousl& reAuire the 5aster tapes"
In disre-ardin- private respondent?s ar-u5ent that Sear$h Farrant No" <B4
(5/ is a -eneral warrant, the lower $ourt o.served that 8it was worded in a
5anner that the enu5erated sei:a.le ite5s .ear dire$t relation to the offense of
violation of Se$" 51 of PD 40 as a5ended" It authori:ed onl& the sei:ur!e# of
arti$les used or intended to .e used in the unlawful sale, lease and other
un$on$erted a$ts in violation of PD 40 as a5ended" 9 9 9"=*<)+
On this point, Bache and Co.! *,hil.+! Inc.! et al. vs. 4ui! et al",*<'+ instru$ts
and enli-htens7
, sear$h warrant 5a& .e said to parti$ularl& des$ri.e the thin-s to .e sei:ed
when the des$ription therein is as spe$ifi$ as the $ir$u5stan$es will ordinaril&
allow !People vs. Ru.io, 5B Phil" /<4#G or when the des$ription e9presses a
$on$lusion of fa$t L not of law L .& whi$h the warrant offi$er 5a& .e -uided in
5a2in- the sear$h and sei:ure !idem", dissent of ,.ad Santos, 2",#G or when the
thin-s des$ri.ed are li5ited to those whi$h .ear dire$t relation to the offense for
whi$h the warrant is .ein- issued !Se$" ', Rule )'1, Revised Rules of Court#" 9
9 9" If the arti$les desired to .e sei:ed have an& dire$t relation to an offense
$o55itted, the appli$ant 5ust ne$essaril& have so5e eviden$e, other than
those arti$les, to prove the said offenseG and the arti$les su.Ee$t of sear$h and
sei:ure should $o5e in hand& 5erel& to stren-then su$h eviden$e" 9 9 9"
On private respondents? aver5ent that the sear$h warrant was 5ade
appli$a.le to 5ore than one spe$ifi$ offense on the -round that there are as
5an& offenses of infrin-e5ent as there are ri-hts prote$ted and, therefore, to
issue one sear$h warrant for all the 5ovie titles alle-edl& pirated violates the
rule that a sear$h warrant 5ust .e issued onl& in $onne$tion with one spe$ifi$
offense, the lower $ourt said7
9 9 9" ,s the fa$e of the sear$h warrant itself indi$ates, it was issued for
violation of Se$tion 51, PD 40 as a5ended onl&" The spe$ifi$ations therein !in
,nne9 ,# 5erel& refer to the titles of the $op&ri-hted 5otion pi$turesOfil5s
.elon-in- to private $o5plainants whi$h defendants were in $ontrolOpossession
for sale, lease, distri.ution or pu.li$ e9hi.ition in $ontravention of Se$" 51, PD
40 as a5ended"*</+
That there were several $ounts of the offense of $op&ri-ht infrin-e5ent and the
sear$h warrant un$overed several $ontra.and ite5s in the for5 of pirated video
tapes is not to .e $onfused with the nu5.er of offenses $har-ed" The sear$h
warrant herein issued does not violate the one4spe$ifi$4offense rule"
It is pointless for private respondents to insist on $o5plian$e with the
re-istration and deposit reAuire5ents under Presidential De$ree No" 40 as
prereAuisites for invo2in- the $ourt?s prote$tive 5antle in $op&ri-ht infrin-e5ent
$ases" ,s e9plained .& the $ourt .elow7
Defendants45ovants $ontend that PD 40 as a5ended $overs onl& produ$ers
who have $o5plied with the reAuire5ents of deposit and noti$e !in other words
re-istration# under Se$tions 40 and 5( thereof" ,.sent su$h re-istration, as in
this $ase, there was no ri-ht $reated, hen$e, no infrin-e5ent under PD 40 as
a5ended" This is not well4ta2en"
,s $orre$tl& pointed out .& private $o5plainants4oppositors, the Depart5ent of
;usti$e has resolved this le-al Auestion as far .a$2 as De$e5.er )', )0B< in its
Opinion No" )0) of the then Se$retar& of ;usti$e Vi$ente ,.ad Santos whi$h
stated that Se$tions '1 and 5( do not appl& to $ine5ato-raphi$ wor2s and PD
No" 40 8had done awa& with the re-istration and deposit of $ine5ato-raphi$
wor2s= and that 8even without prior re-istration and deposit of a wor2 whi$h 5a&
.e entitled to prote$tion under the De$ree, the $reator $an file a$tion for
infrin-e5ent of its ri-hts"= He $annot de5and, however, pa&5ent of da5a-es
arisin- fro5 infrin-e5ent" The sa5e opinion stressed that 8the reAuire5ents of
re-istration and deposit are thus retained under the De$ree, not as $onditions
for the a$Auisition of $op&ri-ht and other ri-hts, .ut as prereAuisites to a suit for
da5a-es"= The statutor& interpretation of the 69e$utive 3ran$h .ein- $orre$t, is
entitled !to# wei-ht and respe$t"
999 999 999
Defendants45ovants 5aintain that $o5plainant and his witnesses led the Court
to .elieve that a $ri5e e9isted when in fa$t there was none" This is wron-" ,s
earlier dis$ussed, PD 40 as a5ended, does not reAuire re-istration and deposit
for a $reator to .e a.le to file an a$tion for infrin-e5ent of his ri-hts" These
$onditions are 5erel& pre4reAuisites to an a$tion for da5a-es" So, as lon- as
the pros$ri.ed a$ts are shown to e9ist, an a$tion for infrin-e5ent 5a& .e
initiated"*<4+
,$$ordin-l&, the $ertifi$ations*<5+ fro5 the Cop&ri-ht Se$tion of the National
Hi.rar&, presented as eviden$e .& private respondents to show non4re-istration
of so5e of the fil5s of petitioners, assu5e no evidentiar& wei-ht or si-nifi$an$e,
whatsoever"
>urther5ore, a $loser review of Presidential De$ree No" 40 reveals that
even with respe$t to wor2s whi$h are reAuired under Se$tion '1 thereof to .e
re-istered and with $opies to .e deposited with the National Hi.rar&, su$h as
.oo2s, in$ludin- $o5posite and $&$lopedi$ wor2s, 5anus$ripts, dire$tories and
-a:etteersG and periodi$als, in$ludin- pa5phlets and newspapersG le$tures,
ser5ons, addresses, dissertations prepared for oral deliver&G and letters, the
failure to $o5pl& with said reAuire5ents does not deprive the $op&ri-ht owner of
the ri-ht to sue for infrin-e5ent" Su$h non4$o5plian$e 5erel& li5its the
re5edies availa.le to hi5 and su.Ee$ts hi5 to the $orrespondin- san$tion"
The reason for this is e9pressed in Se$tion ' of the de$ree whi$h prefa$es
its enu5eration of $op&ri-hta.le wor2s with the e9pli$it state5ent that 8the ri-hts
-ranted under this De$ree shall, fro5 the 5o5ent of $reation, su.sist with
respe$t to an& of the followin- $lasses of wor2s"= This 5eans that under the
present state of the law, the $op&ri-ht for a wor2 is a$Auired .& an intelle$tual
$reator fro5 the 5o5ent of $reation even in the a.sen$e of re-istration and
deposit" ,s has .een authoritativel& $larified7
The re-istration and deposit of two $o5plete $opies or reprodu$tions of the wor2
with the National Hi.rar& within three wee2s after the first pu.li$ disse5ination or
perfor5an$e of the wor2, as provided for in Se$tion '1 !P"D" No" 40, as
a5ended#, is not for the purpose of se$urin- a $op&ri-ht of the wor2, .ut rather
to avoid the penalt& for non4$o5plian$e of the deposit of said two $opies and in
order to re$over da5a-es in an infrin-e5ent suit"*<1+
One distressin- o.servation" This $ase has .een fou-ht on the .asis of,
and its resolution lon- dela&ed .& resort to, te$hni$alities to a virtuall& a.usive
e9tent .& private respondents, without so 5u$h as an atte5pt to addu$e an&
$redi.le eviden$e showin- that the& $ondu$t their .usiness le-iti5atel& and
fairl&" The fa$t that private respondents $ould not show proof of their authorit& or
that there was $onsent fro5 the $op&ri-ht owners for the5 to sell, lease,
distri.ute or $ir$ulate petitioners? $op&ri-hted fil5s i55easura.l& .olsters the
lower $ourt?s initial findin- of pro.a.le $ause" That private respondents are
li$ensed .& the Video-ra5 Re-ulator& 3oard does not insulate the5 fro5
$ri5inal and $ivil lia.ilit& for their unlawful .usiness pra$ti$es" Fhat is 5ore
deplora.le is that the reprehensi.le a$ts of so5e uns$rupulous $hara$ters have
sti-5ati:ed the Philippines with an unsavor& reputation as a hu. for intelle$tual
pira$& in this part of the -lo.e, for5erl& in the re$ords of the @eneral ,-ree5ent
on Tariffs and Trade and, now, of the Forld Trade Or-ani:ation" Su$h a$ts 5ust
not .e -lossed over .ut should .e denoun$ed and repressed lest the Philippines
.e$o5e an international pariah in the -lo.al intelle$tual $o55unit&"
?HERE)RE, the assailed Eud-5ent and resolution of respondent Court of
,ppeals, and ne$essaril& in$lusive of the order of the lower $ourt dated
Nove5.er '', )0<<, are here.& R6V6RS6D and S6T ,SID6. The order of the
$ourt a 8uo of Septe5.er 5, )0<< upholdin- the validit& of Sear$h Farrant No"
<B4(5/ is here.& R6INST,T6D, and said $ourt is DIR6CT6D to ta2e and
e9peditiousl& pro$eed with su$h appropriate pro$eedin-s as 5a& .e $alled for in
this $ase" Tre.le $osts are further assessed a-ainst private respondents"
" RDERED.
@arvasa! C.2.! ,adilla! /avide! 2r.! 4omero! Melo! ,uno! 5itug! )apunan!
Mendoa! #rancisco! Hermosisima! 2r.! ,anganiban! and Torres! 2r.! 22.! $on$ur.
Bellosillo! 2.! no part in deli.erations"
THIRD DIVISION
[G.R. No. 15F804. #$05/ 14, 2005]
"N+ #*"IC EN!ER!AIN#EN! (PHIL".), INC. $%& I)PI ("*!HEA"!
A"IA), L!D., petitioners, vs. HN. @*DGE DLRE" L. E"PANJL
) !HE REGINAL !RIAL C*R!, BRANCH A0, DA"#ARIKA",
CACI!E, ELENA ". LI#, "*"AN L. !AN, DACID ". LI#, @A#E" H. *+,
?IL"N ALE@ANDR, @R., @"EPH DE L*NA, #ARIA A. CELA
CR*I, DACID CH*NG, @A#E" *+, @HN DE" AND @ANE DE",
AND "LID LAG*NA CRPRA!IN, respondents.
D E C I " I N
GARCIA, J.(
,ssailed and sou-ht to .e nullified in this petition for $ertiorari with
appli$ation for inEun$tive relief are the orders issued .& the respondent Eud-e on
@u%. 25, 2002
*)+
and @$%u$08 F, 2003,
*'+
the first Auashin- ".$05/ ?$00$%t
No. 21AG00, and the se$ond, den&in- re$onsideration of the first"
>ro5 the petition, the $o55ent thereon of private respondents, their
respe$tive anne9es, and other pleadin-s filed .& the parties, the Court -athers
the followin- relevant fa$ts7
In a $ri5inal $o5plaint filed with the Depart5ent of ;usti$e !DO;#, the
Video-ra5 Re-ulator& 3oard !VR3#
*/+
$har-ed herein private respondents
@$:.s *8, D$-,& C/u%g, E6.%$ L,: and another offi$er of respondent "o6,&
L$gu%$ Co07o0$t,o% !SHC# with violation of Presidential De$ree !PD# No" )0<B"
*4+
,s alle-ed in the $o5plaint, do$2eted as I.". No. 2000G15EF, the four !4#
were en-a-ed in the repli$ation, reprodu$tion and distri.ution of video-ra5s
without li$ense and authorit& fro5 VR3" On a$$ount of this and petitioners? own
$o5plaints for $op&ri-ht infrin-e5ent, the National 3ureau of Investi-ation
!N3I#, throu-h ,-ent >erdinand %" Havin, applied on Septe5.er )<, '(((, with
the Re-ional Trial Court at Das5ariRas, Cavite, 3ran$h <(, presided .& the
respondent Eud-e, for the issuan$e of sear$h warrants a-ainst private
respondents D$-,& C/u%g, @$:.s *8, @o/% and @$%. Do.s, doin- .usiness
under the na5e and st&le 8%edia @roup= inside the fa$tor& and produ$tion
fa$ilit& of SHC at Solid $orner Ca5ado Sts", Ha-una International Industrial Par2,
3iRan, Ha-una"
*5+
Durin- the pro$eedin-s on the appli$ation, ,-ent Havin presented, as
witnesses, Rodolfo Pedralve:, a deputi:ed a-ent of VR3, and Rene C" 3alta:ar,
an investi-ator retained .& the law fir5 R.C. Do:,%go & Asso5,$t.s,
petitioners? attorne&4in4fa$t" In their sworn state5ents, the three stated that
petitioners sou-ht their assistan$e, $o5plainin- a.out the 5anufa$ture, sale
and distri.ution of various titles of $o5pa$t dis$s !CDs# in violation of petitioners?
ri-ht as $op&ri-ht ownersG that a$tin- on the $o5plaint, ,-ent Havin and the
witnesses $ondu$ted an investi-ation, in the $ourse of whi$h unna5ed persons
infor5ed the5 that alle-edl& infrin-in- or pirated dis$s were .ein- 5anufa$tured
so5ewhere in an industrial par2 in Ha-unaG that in the pro$ess of their operation,
the& were a.le to enter, a$$o5panied .& another unna5ed sour$e, the
pre5ises of SHC and to see various repli$atin- eAuip5ent and sta$2s of CDsG
and that the& were told .& their anon&5ous sour$e that the dis$s were .ein-
5anufa$tured in the sa5e pre5ises"

The& also testified that private
respondents were !)# en-a-ed in the reprodu$tion or repli$ation of audio and
video $o5pa$ts dis$s without the reAuisite authori:ation fro5 VR3, in violation
of Se$tion 1 of PD No" )0<B, presentin- a VR3 $ertifi$ation to su$h effe$tG and
!'# per petitioners? $ertifi$ation and a listin- of Son& 5usi$ titles, infrin-in- on
petitioners? $op&ri-hts in violation of Se$tion '(< of Repu.li$ ,$t !R,# No" <'0/,
otherwise 2nown as Intelle$tual Propert& Code"
*1+
On the .asis of the fore-oin- sworn state5ents, the respondent Eud-e
issued ".$05/ ?$00$%t No. 21AG00
*B+
for violation of Se$tion '(< of R"," No"
<'0/ and ".$05/ ?$00$%t No. 220G00
*<+
for violation of Se$tion 1 of PD No"
)0<B"
The followin- da&, ele5ents of the Philippine National Poli$e Cri5inal
Investi-ation and Dete$tion @roup, led .& PO' Re--ie Co5andante, enfor$ed
.oth warrants and .rou-ht the sei:ed ite5s to a private warehouse of Carepa2
%ovin- and Stora-e at )'/4 Villon$o Road, Su$at, ParanaAue Cit& and their
$ustod& turned over to VR3"
*0+
,n inventor& of sei:ed ite5s,
*)(+
as well as a
8Return of Sear$h Farrant= were later filed with the respondent $ourt"
%eanwhile, the respondents in I"S" No" '(((4)5B1 .ela.ored to prove
.efore the DO; Prose$utorial Servi$e that, sin$e )00< and up to the ti5e of the
sear$h, the& were li$ensed .& VR3 to operate as repli$ator and dupli$ator of
video-ra5s"
On the stated findin- that 8respondents can not . . . be considered an
unauthoried reproducers o$ videograms(, .ein- &licensed to engage in
reproduction in videograms under SLC in %hich they are the o$$icers andFor or
o$$icials(, the DO;, via a 0.so6ut,o% &$t.& @$%u$08 15, 2001,
*))+
dis5issed
VR3?s $o5plaint in I"S" No" '(((4)5B1"
On >e.ruar& 1, '((), private respondents, ar5ed with the DO; resolution
adverted to, 5oved to Auash the sear$h warrants thus issued"
*)'+
VR3
interposed an opposition for the reason that the DO; has &et to resolve the
5otion for re$onsideration it filed in I"S" No" '(((4)5B1"
6ventuall&, the DO; denied VR3?s 5otion for re$onsideration, pro5ptin-
private respondents to 5ove anew for the Auashal of the sear$h warrants" In its
supple5ent to 5otion, private respondents atta$hed $opies of SHC?s li$ense as
video-ra5 dupli$ator and repli$ator"
In an order dated O$to.er /(, '((),
*)/+
the respondent Eud-e, $itin- the
;anuar& )5, '(() DO; resolution in I"S" No" '(((4)5B1, -ranted private
respondents? 5otion to Auash, as supple5ented, dispositivel& statin-7
8Nonetheless, su$h .ein- the $ase, the aforesaid Sear$h Farrants are
PD,SH6D=
Petitioners forthwith sou-ht $larifi$ation on whether or not the Auashal order
referred to .oth sear$h warrants or to Sear$h Farrant No" ''(4(( alone, sin$e it
was the latter that was .ased on the $har-e of violation of PD No" )0<B"
*)4+
The
respondent Eud-e, in a 5odifi$ator& order dated ;anuar& '0, '((',
*)5+
$larified
that her previous order Auashed onl& Sear$h Farrant No" ''(4(("
%eanwhile, or on Nove5.er '', '((), petitioners filed with the DO; an
affidavit4$o5plaint, do$2eted thereat as I.". No. 2001G1158, $har-in- individual
private respondents with $op&ri-ht infrin-e5ent in violation of Se$tions )B' and
'(< in relation to other provisions of R, No" <'0/"
*)1+
,tta$hed to the affidavit4
$o5plaint were $ertain do$u5ents and re$ords sei:ed fro5 SHC?s pre5ises,
su$h as produ$tion and deliver& re$ords"
>ollowin- their re$eipt of DO;4issued su.poenas to file $ounter4affidavits,
private respondents 5oved, in the sear$h warrant $ase, that the& .e allowed to
e9a5ine the sei:ed ite5s to ena.le the5 to intelli-entl& prepare their defense"
*)B+
On ;anuar& /(, '((', respondent Eud-e issued an order allowin- the
desired e9a5ination, provided it is 5ade under the supervision of the $ourt?s
sheriff and in the 8presence o$ the applicant o$ Search Aarrant @o. 9<=0::="
*)<+
On >e.ruar& <, '((', the parties, represented .& their $ounsels, repaired to
the Carepa2 warehouse" ,n N3I a-ent representin- ,-ent Havin appeared" The
e9a5ination, however, did not push throu-h on a$$ount of petitioners? $ounsel
insisten$e on ,-ent Havin?s ph&si$al presen$e"
*)0+
Private respondents were
a.le to 5a2e an e9a5ination on the followin- s$heduled settin-, >e.ruar& )5,
'((', al.eit it was li5ited, as the 5inutes of the inspe$tion dis$loses, to
inspe$tin- onl& one !)# .o9 $ontainin- /5 assorted CDs, testin- sta5pers,
dis2ettes, a $alendar, or-ani:ers and so5e folders and do$u5ents" The 5inutes
also $ontained an entr& statin- 4 8Other itemsFmachines %ere not e"amined
because they cannot be identi$ied as they are not properly segregated $rom
other itemsFmachines in the %arehouse. The parties agreed to schedule another
e"amination on *to be agreed by the parties+ a$ter the itemsFmachines sub7ect o$
the e"amination shall have been segregated $rom the other itemsFmachines by
Carepak Moving and Storage ! Inc"=
*'(+
Durin- the preli5inar& investi-ation $ondu$ted on >e.ruar& '1, '((' in I"S"
No" '(()4))5<, however, petitioners? $ounsel o.Ee$ted to an& further
e9a5ination, $lai5in- that su$h e9er$ise was a 5ere su.terfu-e to dela&
pro$eedin-s"
*')+
On ,pril )), '((', individual private respondents, throu-h $ounsel, filed a
&Motion To 6uash Search Aarrant *And To 4elease Seied ,roperties+=
-rounded on la$2 of pro.a.le $ause to Eustif& issuan$e of sear$h warrant, it
.ein- inter alia alle-ed that the appli$ant and his witnesses la$2ed the reAuisite
personal 2nowled-e to Eustif& the valid issuan$e of a sear$h warrantG that the
warrant did not suffi$ientl& des$ri.e the ite5s to .e sei:edG and that the warrant
was i5properl& enfor$ed"
*''+
To this 5otion to Auash, petitioners interposed an
opposition dated %a& B, '((' predi$ated on four !4# -rounds"
*'/+
On ;une '1,
'((', respondent SHC filed a %anifestation Eoinin- its $o4respondents in, and
adoptin-, their 5otion to Auash"
*'4+
On @u%. 25, 2002, the respondent Eud-e issued the herein 1,0st $ss$,6.&
o0&.0 Auashin- Sear$h Farrant No" ')04(( prin$ipall& on the -round that the
inte-rit& of the sei:ed ite5s as eviden$e had .een $o5pro5ised, $o55in-led
as the& were with other arti$les" Frote the respondent Eud-e7
3ased on the report su.5itted, it appears that on >e.ruar& )5, '((', an
e9a5ination was a$tuall& $ondu$ted" Dnfortunatel&, the alle-ed sei:ed ite5s
were $o55in-led with and not se-re-ated fro5 thousands of other ite5s stored
in the warehouse" Onl& one .o9 " " " were !si$# e9a5ined in the presen$e of
.oth parties with the sheriff, su$h that another date was set " " " " On >e.ruar&
'', '((', durin- the hearin- .efore the Depart5ent of ;usti$e !DO;#,
*petitioners? $ounsel+ ,tt&" ,revalo 5anifested their o.Ee$tion to the further
e9a5ination on the alle-ed -round that all of the ite5s su.Ee$t of the DO;
$o5plaint have .een e9a5ined"
,nal&:in- the report and the in$idents relative thereto, it shows that the ite5s
su.Ee$t of the Auestioned Sear$h Farrant were $o55in-led with other ite5s in
the warehouse of Carepa2 resultin- in the failure to identif& the 5a$hines and
other ite5s su.Ee$t of this Sear$h Farrant, while the other ite5s enu5erated in
the said Inventor& of Sei:ed Ite5s and Certifi$ation of He-alit&, Orderliness and
Re-ularit& in the 69e$ution and enfor$e5ent of Sear$h Farrants were not
e9a5ined, hen$e, the $har-e i5puted a-ainst the respondents $ould not .e
esta.lished as the eviden$e to show su$h violation fails to deter5ine the
$ulpa.ilit& of said respondents, thus, violatin- their $onstitutional ri-hts"
*'5+
69$eptin-, petitioners 5oved for re$onsideration, ar-uin- on the 5ain that
the Auashal order was erroneousl& .ased on a -round outside the purview of a
5otion to Auash"
*'1+
To this 5otion, private respondents interposed an
opposition, a-ainst whi$h petitioners $ountered with a repl&"
On @$%u$08 F, 2003, respondent Eud-e issued the s.5o%& $ss$,6.& o0&.0
den&in- petitioners? 5otion for re$onsideration on the stren-th of the followin-
pre5ises7
Careful s$rutin& of the re$ords of the $ase reveals that the appli$ation of the
a.ove4entitled $ase ste55ed fro5 the appli$ation for Sear$h Farrant alle-in-
that the respondent was not li$ensed to dupli$ate or repli$ate CDs and VCDs"
The Court was 5isled when the appli$ants de$lared that Solid Ha-una
Corporation !SHC# is not li$ensed to en-a-e in repli$atin-Odupli$atin- CDs and
VCDs, when in truth and in fa$t, SHC was still a holder of a valid and e9istin-
VR3 li$ense" Considerin- the fa$t that respondent was dul& li$ensed whi$h
fa$ts !si$# was not laid .are to this Court when the appli$ation for writ was filed
.& the private $o5plainant throu-h the National 3ureau of Investi-ation, this
Court here.& re$alls and Auashes the a.ove writ"
Hastl&, ta2in- into a$$ount that respondents were li$ensed to en-a-e in
repli$atin-Odupli$atin- CDs and VCDs, the issuan$e of sear$h warrant was of no
for$e and effe$t as there was a.sen$e of pro.a.le $ause to Eustif& said
issuan$e" 999
*'B+
Hen$e, petitioners? present re$ourse"
In a Resolution dated >e.ruar& )0, '((/,
*'<+
the Court issued a te5porar&
restrainin- order enEoinin- the respondents fro5 i5ple5entin- and enfor$in- the
respondent Eud-e?s Auestioned orders"
Petitioners as$ri.e on the respondent Eud-e the $o55ission of -rave a.use
of dis$retion a5ountin- to la$2 or in e9$ess of Eurisdi$tion in issuin- the first
assailed order in that7
)" It was .ased on a -round that is not a .asis for Auashal of a sear$h
warrant, i.e.! private respondents? failure to e9a5ine the sei:ed
ite5s, whi$h -round is e9traneous to the deter5ination of the
validit& of the issuan$e of the sear$h warrant"
'" Pu.li$ respondent, in effe$t, $ondu$ted a &preliminary investigation=
that a.solved the private respondents fro5 an& lia.ilit& for $op&ri-ht
infrin-e5ent"
/" Pu.li$ respondent re$o-ni:ed the 5otion to Auash sear$h warrant
filed .& persons who did not have an& standin- to Auestion the
warrant"
Petitioners also deplore the issuan$e of the se$ond assailed order whi$h
the& ta- as predi$ated on a -round i55aterial to Sear$h Farrant No" ')04(("
Private respondents filed their Co55ent on %a& )/, '((/, essentiall&
reiteratin- their ar-u5ents in the &Motion To 6uash Search Aarrant *And To
4elease Seied ,roperties#=" ,part therefro5, the& aver that petitioners violated
the rule on hierar$h& of $ourts .& filin- the petition dire$tl& with this Court" ,s to
.e e9pe$ted, petitioners? repl& to $o55ent traversed private respondents?
position"
Owin- to their ina.ilit& to lo$ate respondent David Chun-, petitioners
5oved and the Court su.seAuentl& approved the droppin-, without preEudi$e, of
said respondent fro5 the $ase"
*'0+
On >e.ruar& '(, '((4, private respondents filed their ReEoinder, therein
invitin- attention to petitioner I>PI?s failure to e9e$ute the $ertifi$ation on non4
foru5 shoppin- as reAuired .& Rule B, Se$tion 5 of the Rules of Court and
Auestionin- the validit& of the Spe$ial Powers of ,ttorne& of petitioners? attorne&4
in4fa$t to file this $ase"
In Resolution of %ar$h /), '((4, the Court -ave due $ourse to the petition
and dire$ted the su.5ission of 5e5oranda whi$h the parties, after ea$h
se$urin- an e9tension, did su.5it"
The underl&in- issue .efore Ds revolves on the propriet& of the Auashal of
".$05/ ?$00$%t No. 21AG00 whi$h, in turn, resolves itself into Auestion of the
propriet& of the warrant?s issuan$e in the first pla$e"
It has repeatedl& .een said that one?s house, however, hu5.le is his $astle
where his person, papers and effe$ts shall .e se$ured and when$e he shall
enEo& undistur.ed priva$& e9$ept, to .orrow fro5 5illanueva vs. 6uerubin,
*/(+
&in case o$ overriding social need and then only under the stringent procedural
sa$eguards"= The prote$tion a-ainst ille-al sear$hes and sei:ure has found its
wa& into our )0/5 and )0B/ Constitutions and is now e5.odied in ,rti$le III,
Se$tion ' of the )0<B Constitution, thus 4
The ri-ht of the people to .e se$ure in their persons, houses, papers and effe$ts
a-ainst unreasona.le sear$hes and sei:ures of whatever nature and for an&
purpose shall .e inviola.le, and no sear$h warrant or warrant of arrest shall
issue e9$ept upon pro.a.le $ause to .e deter5ined personall& .& the Eud-e
after e9a5ination under oath or affir5ation of the $o5plainant and the witnesses
he 5a& produ$e, and parti$ularl& des$ri.in- the pla$e to .e sear$hed and the
persons or thin-s to .e sei:ed,
and in Se$tion 4, Rule )'1 of the Rules of Court, vi 4
Se$" 4" ReAuisites for issuin- sear$h warrant" I , sear$h warrant shall not issue
.ut upon pro.a.le $ause " " " to .e deter5ined personall& .& the Eud-e after
e9a5ination under oath or affir5ation of the $o5plainant and the witnesses he
5a& produ$e, and parti$ularl& des$ri.in- the pla$e to .e sear$hed and the
thin-s to .e sei:ed"
Co5ple5entin- the aforeAuoted provisions is Se$tion 5 of the sa5e Rule,
readin-7
S6C" 5" 69a5ination of the $o5plainantG re$ord" The Eud-e 5ust, .efore
issuin- the warrant, personall& e9a5ine in for5 of sear$hin- Auestions and
answers, in writin- and under oath, the $o5plainant and an& witnesses he 5a&
produ$e on fa$ts personall& 2nown to the5 and atta$h to the re$ord their sworn
state5ents to-ether with an& affidavits su.5itted"
To prevent stealth& en$roa$h5ent upon, or -radual depre$iation of the ri-ht
to priva$&, a li.eral $onstru$tion in sear$h and sei:ure $ases is -iven in favor of
the individual" Consistent with this postulate, the presu5ption of re-ularit& is
unavailin- in aid of the sear$h pro$ess when an offi$er underta2es to Eustif& it"
*/)+
>or, the presu5ption 7uris tantum of re-ularit& $annot, .& itself, prevail
a-ainst the $onstitutionall& prote$ted ri-hts of an individual .e$ause :eal in the
pursuit of $ri5inals $annot enno.le the use of ar.itrar& 5ethods that the
Constitution itself detests"
*/'+
, $ore reAuisite .efore a warrant shall validl& issue is the e9isten$e of a
pro.a.le $ause, 5eanin- 8the e"istence o$ such $acts and circumstances %hich
%ould lead a reasonably discreet and prudent man to believe that an o$$ense
has been committed and that the ob7ects sought in connection %ith the o$$ense
are in the place to be searched="
*//+
,nd when the law spea2s of fa$ts, the
referen$e is to fa$ts, data or infor5ation personall& 2nown to the appli$ant and
the witnesses he 5a& present" ,.sent the ele5ent of personal 2nowled-e .&
the appli$ant or his witnesses of the fa$ts upon whi$h the issuan$e of a sear$h
warrant 5a& .e Eustified, the warrant is dee5ed not .ased on pro.a.le $ause
and is a nullit&, its issuan$e .ein-, in le-al $onte5plation, ar.itrar&, as held .& us
in Columbia ,ictures! Inc. vs. Court o$ Appeals"
*/4+
Testi5on& .ased on what is
supposedl& told to a witness, .ein- patent hearsa& and, as rule, of no
evidentiar& wei-ht
*/5+
or pro.ative value, whether o.Ee$ted to or not,
*/1+
would,
alone, not suffi$e under the law on the e9isten$e of pro.a.le $ause"
In our view, the issuan$e of the sear$h warrant in Auestion did not 5eet the
reAuire5ents of pro.a.le $ause" The respondent Eud-e did not a$$ordin-l& err in
Auashin- the sa5e, let alone -ravel& a.use her dis$retion"
Petitioners ar-ue that the instant petition is on all fours with Columbia!
*/B+
wherein the en banc Court upheld the validit& of sear$h warrants .ased on the
testi5onies of the appli$ant and his witnesses who $ondu$ted an investi-ation
on the unlawful reprodu$tion and distri.ution of video tapes of $op&ri-hted fil5s"
Fe are not persuaded"
In Columbia! the issuin- $ourt pro.ed the appli$ant?s and his witnesses?
personal 2nowled-e of the fa$t of infrin-e5ent" It was, however, deter5ined .&
this Court that durin- the appli$ation hearin-, therein petitioner?s attorne&4in4fa$t,
a witness of the appli$ant, 8stated in his a$$idavit and $urther e"pounded in his
deposition that he personally kne% o$ the $act that private respondents had
never been authoried by his clients to reproduce! lease and possess $or the
purposes o$ selling any o$ the copyrighted $ilms.=
*/<+
Si-nifi$antl&, the Court, in
upholdin- the validit& of the writ issued upon $o5plaint of Colu5.ia Pi$tures,
In$", et al", stated that 8there is no allegation o$ misrepresentation! much less
$inding thereo$ by the lo%er court! on the part o$ petitioners. %itnesses.=
*/0+
Therein lies the differen$e with the instant $ase"
Here, appli$ant ,-ent Havin and his witnesses, Pedralve: and 3alta:ar,
when Aueried durin- the appli$ation hearin- how the& 2new that audio and video
$o5pa$t dis$s were infrin-in- or pirated, relied for the 5ost part on what alle-ed
unna5ed sour$es told the5 andOor on $ertifi$ations or lists 5ade .& persons
who were never presented as witnesses" In net effe$t, the& testified under oath
as to the truth of fa$ts the& had no personal 2nowled-e of" The followin-
e9$erpts of the depositions of appli$ant Havin and his witnesses su--est as
5u$h7
," Deposition of ,-ent Havin
'<" Puestion7 Fhat happened ne9tM
,nswer7 Fe then went to the Ha-una Industrial Par2, &our Honor " " "
Fe then verified fro5 an infor5ant that David Chun-, ;a5es D& " "
" under the na5e and st&le %edia @roup were the ones repli$atin-
the infrin-in- CDs"
999 999 999
/1" Puestion7 How do &ou 2now that all of these VCDs and CDs &ou
pur$hased or are indeed infrin-in-M
,nswer7 I have with 5e the VR3 $ertifi$ation that the VCDs are
unauthori:ed $opies" I also have with 5e the Co5plaint4,ffidavit
of Son& %usi$ and I>PI that $ertified that these are infrin-in-
$opies, as well as the title list of Son& %usi$ wherein so5e of the
CDs pur$hased are indi$ated" !,nne9 8)(=, Co55ent, Rollo, p"
<4)#
3" Deposition of 3alta:ar
)<" Puestion7 Fhat did &ou see in that addressM
,nswer7 Fe saw that the& had in sto$2 several infrin-in-, pirated and
unauthori:ed CDs" The& also had video-ra5s without VR3 la.els,
aside fro5 artwor2s and la.els" ;ohn Doe -ave us a 8Fholeso5e=
CD while ;ane Doe -ave us 8Jenn& Ro-ers Video2e= and
86n-el.ert Hu5perdin$2 Video2e= whi$h the infor5ant told us
were .ein- reprodu$ed in that fa$ilit&" The infor5ant further
showed us the roo5s where the repli$atin- andOor sta5pin-
5a$hine was lo$ated"
)0" Puestion7 How did &ou deter5ine that the CDs &ou pur$hased are
$ounterfeit, pirated or unauthori:edM
,nswer7 The ,ttorne&4in4fa$t of Son& %usi$ and I>PI $ertified in his
Co5plaint4,ffidavit that the& are unauthori:ed $opies" I also have
with 5e a listin- of Son& %usi$ titles and so5e of the CDs I
pur$hased are in that list"
*4(+
C" Deposition of Pedralve:
'B" Puestion7 Fhat proof do &ou have the& are produ$in- infrin-in-
5aterialsM
,nswer7 Fe were -iven so5e sa5ples .& ;ohn Doe and ;ane Doe"
These are Jenn& Ro-ers Video2e, 6n-el.ert Hu5perdin$2
Video2e, and ,ndrew 6" Fholeso5e CD" The infor5ant told us
that the said sa5ples were .ein- reprodu$ed in the fa$ilit&"
'<" Puestion7 How do &ou 2now that all of these VCDs &ou pur$hased
or -ot are indeed unauthori:edM
,nswer7 The VR3 has $ertified that the& are unauthori:ed $opies"
!,nne9 8)'=, Co55ent, Rollo, pp" <404<5'#"
Dnli2e their $ounterparts in Columbia who were found to .e personall&
2nowled-ea.le a.out their fa$ts! ,-ent Havin and his witnesses, Eud-in- fro5
their a.ove Auoted answers, had no personal 2nowled-e that the dis$s the&
saw, pur$hased or re$eived were, in fa$t, pirated or infrin-in- on petitioners?
$op&ri-hts" To us, it is not enou-h that the appli$ant and his witnesses testif&
that the& saw sta$2s of several alle-edl& infrin-in-, pirated and unauthori:ed
dis$s in the su.Ee$t fa$ilit&" The 5ore de$isive $onsideration deter5inative of
whether or not a pro.a.le $ause o.tains to Eustif& the issuan$e of a sear$h
warrant is that the& had personal 2nowled-e that the dis$s were a$tuall&
infrin-in-, pirated or unauthori:ed $opies"
*4)+
%oreover, unli2e in Columbia! 5isrepresentation on the part of the appli$ant
and his witnesses had .een esta.lished in this $ase"
This is not to sa& that the 5aster tapes should have .een presented in
eviden$e durin- the appli$ation hearin-, as private respondents, o.viousl&
havin- in 5ind the holdin- in 9:
th
Century #o" #ilm Corp. vs. Court o$ Appeals,
*4'+
would have this Court .elieve" It is true that the Court, in 9:
th
Century #o"!
unders$ored the ne$essit&, in deter5inin- the e9isten$e of pro.a.le $ause in
$op&ri-ht infrin-e5ent $ases, of presentin- the 5aster tapes of the $op&ri-hted
wor2" 3ut, as e5phati$all& $larified in Columbia 8such au"iliary procedure!
ho%ever! does not rule out the use o$ testimonial or documentary evidence!
depositions! admissions or other classes o$ evidence """ especially %here the
production in court o$ ob7ect evidence %ould result in delay! inconvenience or
e"penses out o$ proportion to its evidentiary value"
*4/+
Fhat this Court is sa&in-
is that an& eviden$e presented in lieu of the 5aster tapes, if not readil&
availa.le, in si5ilar appli$ation pro$eedin-s 5ust .e relia.le, and, if testi5onial,
it 5ust, at the ver& least, .e .ased on the witness? personal 2nowled-e"
Petitioners ar-ue, $itin- ,eople v. Chua Gy,
*44+
that ,-ent Havin?s
infor5ants? testi5onies are not indispensa.le as the& would onl& .e
$orro.orative"
*45+
Hi2e Columbia! Chua Gy is not a winnin- $ard for petitioners,
for, in the latter $ase, there was a relia.le testi5on& to $orro.orate what the
appli$ant testified to, i.e", the testi5on& of the poli$e poseur4.u&er in a .u&4.ust
operation involvin- prohi.ited dru-s" The $ir$u5stan$es are different in this $ase
wherein the appli$ant and his witnesses had no personal 2nowled-e that the
dis$s the& pur$hased were infrin-in- or pirated $opies" It $annot .e
overe5phasi:ed that not one of the5 testified seein- the pirated dis$s .ein-
5anufa$tured at SHC?s pre5ises" Fhat the& stated instead was that the& were
-iven $opies of 8)enny 4ogers 5ideoke=, 8Dngelbert Humperdinck 5ideoke= and
8Andre% D. Aholesome C/= .& two anon&5ous sour$es, while &et another
infor5ant told the5 that the dis$s were 5anufa$tured at said pre5ises"
Initial hearsa& infor5ation or tips fro5 $onfidential infor5ants $ould ver&
well serve as .asis for the issuan$e of a sear$h warrant, if followed up
personall& .& the re$ipient and validated,
*41+
as what transpired in Columbia.
Dnfortunatel&, the re$ords show that su$h is not the $ase .efore us"
On the issue that the pu.li$ respondent -ravel& a.used her dis$retion in
$ondu$tin- what petitioners per$eived a5ounted to a 8preliminary investigation=,
this Court has alread& ruled in Solid Triangle Sales Corp. vs. Sheri$$ o$ 4TC
6ueon City! Branch =B,
*4B+
that 8in the determination o$ probable cause! the
court must necessarily resolve %hether or not an o$$ense e"ists to 7usti$y the
issuance or 8uashal o$ the %arrant(. In the e9er$ise of this 5andate 4 whi$h we
$an allow as .ein- a2in to $ondu$tin- a preli5inar& investi-ation 4 a.use of
dis$retion $annot plausi.l& .e laid at the doorstep of the issuin- $ourt on
a$$ount of its prima $acie holdin- that no offense has .een $o55itted, even if
$onseAuent to su$h holdin- a warrant is re$alled and the private $o5plainant is
in$identall& deprived of vital eviden$e to prove his $ase" Solid Triangle su$$in$tl&
e9plains wh&7
The pro$eedin-s for the issuan$eOAuashal of a sear$h warrant .efore a $ourt on
the one hand, and the preli5inar& investi-ation .efore an authori:ed offi$er on
the other, are pro$eedin-s entirel& independent of ea$h other" One is not .ound
.& the other?s findin- as re-ards the e9isten$e of a $ri5e" The first is to
deter5ine whether a warrant should issue or .e Auashed, and the se$ond,
whether an infor5ation should .e filed in $ourt"
Fhen the $ourt, in deter5inin- pro.a.le $ause for issuin- or Auashin- a sear$h
warrant, finds that no offense has .een $o55itted, it does not interfere with or
en$roa$h upon the pro$eedin-s in the preli5inar& investi-ation" The $ourt does
not o.li-e the investi-atin- offi$er not to file the infor5ation for the $ourt?s rulin-
that no $ri5e e9ists is onl& of purposes of issuin- or Auashin- the warrant" This
does not, as petitioners would li2e to .elieve, $onstitute a usurpation of the
e9e$utive fun$tion" Indeed, to shir2 fro5 this dut& would a5ount to an a.di$ation
of a $onstitutional o.li-ation"
*4<+
Fhile the lan-ua-e of the first Auestioned Order 5a& .e viewed as
en$roa$hin- on e9e$utive fun$tions, nonetheless, it re5ains that the order of
Auashal is entirel& independent of the pro$eedin-s in I"S" No" '(()4))5<" ,nd
needless to stress, the DO; is .& no 5eans $on$luded .& the respondent
Eud-e?s findin-s as re-ards the e9isten$e, or the non4e9isten$e, of a $ri5e"
Fe $an, to a point, a$$ord 5erit to petitioners? la5ent that the .asis of the
first Auestioned order! i.e.! the 5in-lin- of the sei:ed ite5s with other ite5s, is
e9traneous to the deter5ination of the validit& of the issuan$e of the sear$h
warrant" It is to .e pointed out, thou-h, that pu.li$ respondent $orre$ted her
error when it was raised in petitioners? 5otion for re$onsideration" There $an
reall& .e no serious o.Ee$tion to a Eud-e $orre$tin- or alto-ether alterin- his
$ase disposition on a 5otion for re$onsideration, it .ein- the purpose of su$h
re$ourse to provide the $ourt an opportunit& to $leanse itself of an error
unwittin-l& $o55itted, or, with li2e effe$t, to allow the a--rieved part& the
$han$e to $onvin$e the $ourt that its rulin- is erroneous"
*40+
, 5otion for
re$onsideration .efore resort to certiorari is reAuired pre$isel& 8to a$$ord the
public respondent an opportunity to correct any actual or $ancied error attributed
to it by %ay o$ re0e"amination o$ the legal and $actual aspects o$ the case="
*5(+
Si5ilarl&, as to the 5atter of the respondent Eud-e?s re$o-ni:in- the ,pril )),
'((' 5otion to Auash sear$h warrant
*5)+
filed .& the individual private
respondents, instead of .& SHC, as presu5ptive owner of the sei:ed ite5s, su$h
error was properl& addressed when respondent SHC, represented throu-hout
the pro$eedin-s .elow .& the sa5e $ounsel of its $o4respondents, for5all&
5anifested that it was adoptin- the sa5e 5otion as its own"
*5'+
It is apropos to point out at this Eun$ture that petitioners have i5puted on
individual private respondents $ri5inal lia.ilit&, utili:in- as tools of indi$t5ent the
ver& arti$les and papers sei:ed fro5 the pre5ises of SHC" 3e that as it 5a&,
petitioners should .e dee5ed in estoppel to raise the personalit& of individual
private respondents to interpose a 5otion to Auash" To .e sure, it would .e
unsportin- for petitioners to prose$ute individual private respondents on the
.asis of sei:ed arti$les .ut on the sa5e .reath den& the latter standin- to
Auestion the le-alit& of the sei:ure on the postulate that onl& the part& whose
ri-hts have .een i5paired there.&, 5eanin- SHC, $an raise that $hallen-e"
There $an .e no Aui..lin- that individual private respondents stand to .e
preEudi$ed or at least .e in$onvenient .& an& Eud-5ent in an& $ase .ased on the
sei:ed properties" In a ver& real sense, therefore, the& are real parties in interest
who ou-ht not to .e prevented fro5 assailin- the validit& of Sear$h Farrant ')04
((, al.eit the& $annot plausi.l& as2ed for the release and appropriate as their
own the sei:ed arti$les"
Petitioners? related ar-u5ent that SHC $ould not have validl& adopted
individual private respondents? 5otion to Auash due to la$hes is untena.le"
The re$ords show that the sei:ure in Auestion was effe$ted on Septe5.er
)0, '(((" The $o5plaint in I"S" No" '(((4)5B1 was filed a-ainst the offi$ers of
SHC, all of who5, e9$ept for one, are also private respondents in the instant
petition" I"S" No" '(((4)5B1 was onl& resolved on ;anuar& )5, '(() when the
DO; dis5issed the $o5plaint on the -round that SHC was, in fa$t, dul& li$ensed
.& the VR3" Shortl& thereafter, or on >e.ruar& 1, '((), less than five !5# 5onths
after the sei:ure, private respondents 5oved to Auash .oth sear$h warrants"
*5/+
The 5otion $learl& indi$ates private respondents? desire for the return of the
sei:ed ite5s, and there is nothin- in the re$ords showin- that petitioners
o.Ee$ted to the 5otion on the -round that the 5ovants had no standin- to
Auestion the warrants"
This .rin- Ds to the se$ond assailed order" ,s earlier stated, DO;, in I"S"
No" '(((4)5B1, found respondent SHC to .e li$ensed .& VR3 to en-a-e in the
.usiness of repli$atin- or dupli$atin- video-ra5s"
Petitioners would have the Court .elieve that the se$ond Auestioned order
was .ased on a -round i55aterial to the $har-e of infrin-e5ent" , s$rutin& of
the te9t of the said order, however, shows that the respondent Eud-e denied
petitioners? 5otion for re$onsideration .e$ause she was 5isled .& the
appli$ant?s and his witnesses? testi5on&" It 5a& .e that a VR3 li$ense is no
defense to a $har-e of violatin- Se$tion '(< of R"," No" <'0/" It 5ust .e
stressed in this re-ard, however, that the $ore issue here is the validit& of the
warrant whi$h appli$ant se$ured on the .asis of, a5on- others, his
representation whi$h turned out to .e false"
,s a.ove dis$ussed, the answers of ,-ent Havin and his witnesses to the
pu.li$ respondent?s sear$hin- Auestions, parti$ularl& those relatin- to how the&
2new that the $o5pa$t dis$s the& pur$hased or re$eived were ille-al,
unauthori:ed or infrin-in-, were .ased on $ertifi$ations and not personal
2nowled-e" The su.Ee$t warrant, as well as Sear$h Farrant No" ''(4((, was
issued nonetheless" It 5a& well have .een that the issuin- Eud-e was, in the
end, $onvin$ed to issue the warrants .& 5eans of the erroneous VR3
$ertifi$ation presented durin- the Eoint appli$ation hearin-, overridin- whatever
5is-ivin-s she 5a& have had with the appli$ant?s and his witnesses? other
answers" This Court, however, $annot en-a-e in su$h spe$ulation and sees no
need to"
Su55in- up, the issuan$e of Sear$h Farrant No" ')04(( was, at .otto5,
predi$ated on the sworn testi5onies of persons without personal 2nowled-e of
fa$ts the& were testif&in- on and who relied on a false $ertifi$ation issued .&
VR3" 3ased as it were on hearsa& and false infor5ation, its issuan$e was
without pro.a.le $ause and, therefore, invalid"
@iven the fore-oin- perspe$tive, the peripheral issues of !a# whether or
not petitioner I>PI !South 6ast ,sia#, Htd" failed to $o5pl& with the rules
reAuirin- the filin- of a $ertifi$ation on non4foru5 shoppin-G and !.# whether or
not I>PI?s .oard of dire$tors ratified its $onditional authori:ation for its attorne&4
in4fa$t to represent I>PI in this petition, need not detain us lon-" In our review of
the re$ords, R"V" Do5in-o ,sso$iates, whose authorit& to represent the
petitioners in this petition $ontinues, had dul& e9e$uted the sworn $ertifi$ation on
non4 foru5 shoppin-"
In the sa5e 5anner, this Court, havin- ta2en $o-ni:an$e of this petition,
need not .ela.or the issue of whether or not petitioners have $avalierl&
.rea$hed the rule on hierar$h& of $ourts" Suffi$e it to state that, while the Court
loo2s with disfavor on utter disre-ard of its rules,
*54+
it is within its power to
suspend its own rules or to e9$ept a parti$ular $ase fro5 its operation whenever
the ends of Eusti$e so reAuires, as here"
?HERE)RE, the instant petition is here.& DIS%ISS6D and the
te5porar& restrainin- order issued on >e.ruar& )0, '((/ is $onseAuentl&
R6C,HH6D"
Costs a-ainst petitioners"
" RDERED.
,anganiban! *Chairman+! Sandoval01utierre! and Corona! 22.! $on$ur.
Carpio0Morales! 2.! on leave"