Lungkow vermicelli and was solely authorized to use
said trademark. He added that Ong merely copied the
[G.R. No. 130360. August 15, 2001]
WILSON ONG CHING KIAN CHUAN, petitioner, vs.
HON. COURT OF APPEALS and LORENZO TAN,
respondents.
DECISION
QUISUMBING, J.:
This petition for review[1]seeks to annul the decision[2]
dated August 27, 1997 of the Court of Appeals which set
aside the resolutions[3] dated October 13 and December
15, 1993 as well as the order dated March 1, 1994 of the
Regional Trial Court of Quezon City, Branch 94.[4]
Petitioner Wilson Ong Ching Kian Chuan (Ong), imports
vermicelli from China National Cereals Oils and
Foodstuffs Import and Export Corporation, based in
Beijing, China, under the firm name C.K.C. Trading. He
repacks it in cellophane wrappers with a design of two-
dragons and the TOWER trademark on the uppermost
portion. Ong acquired a Certificate of Copyright
Registration from the National Library on June 9, 1993
on the said design.
Ong discovered that private respondent Lorenzo Tan
repacked his vermicelli he imports from the same
company but based in Qingdao, China in a nearly
identical wrapper. On September 16, 1993, Ong filed
against Tan a verified complaint for infringement of
copyright with damages and prayer for temporary
restraining order or writ of preliminary injunction with the
Regional Trial Court in Quezon City. Ong alleged that he
was the holder of a Certificate of Copyright Registration
over the cellophane wrapper with the two-dragon design,
and that Tan used an identical wrapper in his business.
In his prayer for a preliminary injunction in addition to
damages, he asked that Tan be restrained from using
the wrapper. He said he would post a bond to guarantee
the payment of damages resulting from the issuance of
the writ of preliminary injunction.
The trial court issued a temporary restraining order on
the same date the complaint was filed. Tan filed an
opposition to Ongs application for a writ of preliminary
injunction with counter-application for the issuance of a
similar writ against Ong. Tan alleged that Ong was not
entitled to an injunction. According to Tan, Ong did not
have a clear right over the use of the trademark Pagoda
and Lungkow vermicelli as these were registered in the
name of CHINA NATIONAL CEREALS OIL AND
FOODSTUFFS IMPORT AND EXPORT
CORPORATION, SHANDONG CEREALS AND OILS
BRANCH (hereafter Ceroilfood Shandong), based in
Qingdao, China. Further, Tan averred that he was the
exclusive distributor in the Philippines of the Pagoda and
two-dragon design from Ceroilfood Shandong which had
the Certificates of Registration issued by different
countries. He concluded that Ongs Certificate of
Copyright Registration was not valid for lack of
originality.
On September 30, 1993, Ong countered Tans opposition
to the issuance of the writ of preliminary injunction.
On October 13, 1993, the court issued the writ in Ongs
favor upon his filing of a P100,000.00 bond. [5]
Tan filed a motion to dissolve the writ of preliminary
injunction, but the trial court denied it on December 15,
1993.[6] The motion for reconsideration was also denied
on March 1, 1994.
Tan elevated the case to the Court of Appeals via a
special civil action for certiorari with a prayer for the
issuance of a TRO and/or writ of preliminary injunction.
Ong filed an opposition to Tans prayer for an issuance of
TRO and/or writ of preliminary injunction on the ground
that the trial court did not commit a grave abuse of
discretion in issuing the writ in his favor.
After oral argument, the Court of Appeals rendered a
decision on August 8, 1994, setting aside the trial courts
order. It decreed:
WHEREFORE, the petition is GIVEN DUE COURSE,
and GRANTED. The order dated October 13, 1993 and
related orders, as well as the writ of preliminary
injunction issued by the respondent court, are SET
ASIDE as issued with grave abuse of discretion. No
costs.
SO ORDERED.[7]
Ong filed a motion for reconsideration and on January 3,
1995, the Court of Appeals modified its August 8, 1994
order as follows:
WHEREFORE the phrase the order dated October 13,
1993 and related orders, as well as the writ of
preliminary injunction issued by the respondent court,
are SET ASIDE as issued with grave abuse of discretion
is hereby deleted in our resolution dated 08 August
1994. In all other respects, said resolution must be
maintained.
However, let a writ of preliminary injunction be issued
enjoining the herein respondents and any and all
persons acting for and in their behalf from enforcing
and/or implementing the Writ of Preliminary Injunction
issued on October 15, 1993 pursuant to the Resolution
dated October 13, 1993 of the PUBLIC RESPONDENT
in Civil Case No. Q-93-17628 entitled WILSON ONG
CHING KIAN CHUAN, ETC. vs. LORENZO TAN, ETC.
upon petitioners filing of a bond of P200,000.00.
The Branch Clerk of Court of the RTC, Branch 94,
Quezon City is directed to elevate the records of Civil
Case No. 293-17128 within TEN (10) DAYS from notice.
The parties are given THIRTY (30) DAYS from notice to
file their memorandum or any pertinent manifestation on
the matter, after which the case shall be considered
submitted for decision.
SO ORDERED.[8]
Pursuant to the Court of Appeals resolution on January
16, 1996, the parties submitted their memoranda. On
August 27, 1997, the appellate court promulgated its
decision, decreeing as follows:
WHEREFORE, the resolutions dated October 13, 1993
and December 15, 1993 as well as the order dated
March 1, 1994 - all in Civil Case No. Q-93-17628 are
hereby SET ASIDE and our injunction heretofore issued
made permanent.
IT IS SO ORDERED.[9]
On October 17, 1997, Ong filed the instant petition for
review, claiming that the Court of Appeals committed
grave and serious errors tantamount to acting with grave
abuse of discretion and/or acting without or in excess of
its jurisdiction:
I. WHEN IT ISSUED A PERMANENT PRELIMINARY
INJUNCTION IN FAVOR OF THE PRIVATE
RESPONDENT WHEN THE LATTERS RIGHT TO
SUCH A RELIEF IS NOT CLEAR, DOUBTFUL AND
HAS NO LEGAL OR FACTUAL BASIS.
A. CERTIFICATE OF COPYRIGHT
REGISTRATION JUSTIFY ISSUANCE OF
WRIT OF PRELIMINARY INJUNCTION
UNDER P.D. NO. 49.
B. ISSUANCE OF PRELIMINARY
INJUNCTION MUST BE BASED ON CLEAR
AND UNMISTAKABLE RIGHT WHICH
PETITIONER HAD AND WHICH RIGHT WAS
INVADED BY THE PRIVATE RESPONDENT.
C. COURT OF APPEALS DECISION OF
AUGUST 8, 1994 AND ITS RESOLUTION OF
JANUARY 3, 1995 RESULTS IN
CONFUSION.
II. BY INTERFERING WITH THE JUDICIAL
DISCRETION OF THE TRIAL COURT.
A. RESPONDENT COURT OF APPEALS
INTERFERENCE WITH THE DISCRETION
OF TRIAL COURT CONSTITUTES GRAVE
ABUSE OF DISCRETION.
III. BY ISSUING A WRIT OF PRELIMINARY
INJUNCTION IN FAVOR OF THE PRIVATE
RESPONDENT AND DISREGARDING THE WRIT OF
PRELIMINARY INJUNCTION ISSUED BY THE TRIAL
COURT WHOM (SIC), UNDER THE JANUARY 13,
1995 RESOLUTION OF RESPONDENT COURT OF
APPEALS, WAS JUDICIALLY HELD NOT TO HAVE
COMMITTED ANY GRAVE ABUSE OF DISCRETION
IN THE ISSUANCE OF THE OCTOBER 13, 1993 AND
RELATED ORDERS.
A. ISSUANCE OF WRIT OF PRELIMINARY
INJUNCTION ADDRESSED TO THE SOUND
DISCRETION OF THE TRIAL COURT.
IV. WHEN IT MADE ITS OWN FINDINGS AND
CONCLUSIONS, PRE-EMPTING THE TRIAL COURT
AND PRE-JUDGING THE CASE, THUS LEAVING THE
TRIAL COURT WITH NOTHING TO RULE UPON.
A. COURT OF APPEALS PREJUDGED THE
CASE REMANDED TO THE TRIAL COURT
The issues for our determination are: Was the issuance
of the writ of preliminary injunction proper? Was there
grave abuse of discretion committed by the Court of
Appeals when it set aside the order of the trial court,
then issued a judgment touching on the merits?
Petitioner avers that the CA erred in issuing a
preliminary injunction in private respondents favor. He
says, firstly, that he is more entitled to it. He states that
as holder of the Certificate of Copyright Registration of
the twin-dragon design, he has the protection of P.D. No.
49.[10] Said law allows an injunction in case of
infringement. Petitioner asserts that private respondent
has no registered copyright and merely relies on the
trademark of his principal abroad, which insofar as
Philippine laws is concerned, cannot prevail over the
petitioners copyright.
Private respondent, for his part, avers that petitioner has
no clear right over the use of the copyrighted wrapper
since the PAGODA trademark and label were first
adopted and used and have been duly registered by
Ceroilfood Shandong not only in China but in nearly 20
countries and regions worldwide. Petitioner was not the
original creator of the label, but merely copied the design
of Ceroilfood Shandong. Private respondent presented
copies of the certificates of copyright registration in the
name of Ceroilfood Shandong issued by at least twenty
countries and regions worldwide which although
unauthenticated are, according to him, sufficient to
provide a sampling of the evidence needed in the
determination of the grant of preliminary injunction. [11]
Private respondent alleges, that the trademark PAGODA
BRAND was registered in China on October 31, 1979 [12]
while the trademark LUNGKOW VERMICELLI WITH
TWO-DRAGON DEVICE was registered on August 15,
1985.[13]
To resolve this controversy, we have to return to basics.
A person to be entitled to a copyright must be the
original creator of the work. He must have created it by
his own skill, labor and judgment without directly copying
or evasively imitating the work of another.[14] The grant of
preliminary injunction in a case rests on the sound
discretion of the court with the caveat that it should be
made with extreme caution.[15] Its grant depends chiefly
on the extent of doubt on the validity of the copyright,
existence of infringement, and the damages sustained
by such infringement.[16] In our view, the copies of the
certificates of copyright registered in the name of
Ceroilfood Shandong sufficiently raise reasonable doubt.
With such a doubt, the preliminary injunction is
unavailing.[17] In Medina vs. City Sheriff, Manila, 276
SCRA 133, 139 (1997), where the complainants title was
disputed, we held that injunction was not proper.
Petitioner Ong argues that the Court of Appeals erred
and contradicted itself in its January 3, 1995 Resolution,
where it deleted the phrase the order dated October 13,
1993 and related orders, as well as the writ of
preliminary injunction issued by the respondent court,
are SET ASIDE as issued with grave abuse of discretion
in its August 8, 1994 decision, and at the same time
issued a writ of preliminary injunction in Tans favor.
Ongs claim (that the Court of Appeals in deleting the
aforequoted phrase in the August 8, 1994 decision
abandoned its earlier finding of grave abuse of discretion
on the part of the trial court), however, is without logical
basis. The appellate court merely restated in its own
words the issue raised in the petition: from a) whether
the RTC committed grave abuse of discretion, to b)
whether Tan was entitled to an injunctive relief. Then it
clarified that the relief sought is a prohibition against Ong
and his agents from enforcing the writ of preliminary
injunction. Properly understood, an order enjoining the
enforcement of a writ of preliminary injunction issued by
the RTC in a certiorari proceeding under Rule 65 of the
Rules of Court effectively sets aside the RTC order for
being issued with grave abuse of discretion.
To be entitled to an injunctive writ, petitioner must show,
inter alia, the existence of a clear and unmistakable right
and an urgent and paramount necessity for the writ to
prevent serious damage.[18] From the above discussion,
we find that petitioners right has not been clearly and
unmistakably demonstrated. That right is what is in
dispute and has yet to be determined. In Developers
Group of Companies, Inc. vs. Court of Appeals, 219
SCRA 715, 722-723 (1993), we held that in the absence
of proof of a legal right and the injury sustained by the
plaintiff, an order of the trial court granting the issuance
of an injunctive writ will be set aside, for having been
issued with grave abuse of discretion. Conformably,
there was no abuse of discretion by the Court of Appeals
when it issued its own order to restrain the enforcement
of the preliminary injunction issued by the trial court.
Finally, we note that the complaint initially filed with the
RTC was for infringement of copyright. The trial courts
resolution subject of Tans petition under Rule 65 before
the CA concerns the correctness of the grant of the writ
of preliminary injunction. The only issue brought before
the CA involved the grave abuse of discretion allegedly
committed by the trial court in granting the writ of
preliminary injunction. The Court of Appeals in declaring
that the wrapper of petitioner is a copy of Ceroilfood
Shandongs wrapper went beyond that issue and
touched on the merits of the infringement case, which
remains to be decided by the trial court. [19] In our view, it
was premature for the Court of Appeals to declare that
the design of petitioners wrapper is a copy of the
wrapper allegedly registered by Ceroilfood Shandong.
That matter remains for decision after appropriate
proceedings at the trial court.
WHEREFORE, the instant petition is PARTIALLY
GRANTED. The prayer for a writ of preliminary injunction
to prohibit Tan from using the cellophane wrapper with
two-dragon device is denied, but the finding of the
respondent appellate court that Ongs copyrighted
wrapper is a copy of that of Ceroilfood Shandong is SET
ASIDE for being premature. The Regional Trial Court of
Quezon City, Branch 94, is directed to proceed with the
trial to determine the merits of Civil Case No. 33779
expeditiously. Let the records of this case be
REMANDED to said trial court promptly.
No pronouncement as to costs.
SO ORDERED.
[G.R. No. 132604. March 6, 2002]
VENANCIO SAMBAR, doing business under the
name and style of CVS Garment Enterprises,
petitioner, vs. LEVI STRAUSS & CO., and LEVI
STRAUSS (PHIL.), INC., respondents.
DECISION
QUISUMBING, J.:
This petition for review on certiorari prays for the
reversal of the decision dated January 30, 1998, of the
Court of Appeals in CA-G.R. CV No. 51553. That
decision affirmed the decision in Civil Case No. 88-2220
of the Regional Trial Court, Branch 66, Makati City,
making permanent the writ of preliminary injunction,
ordering CVS Garment and Industrial Company
(CVSGIC) and petitioner Venancio Sambar to pay
private respondents jointly and solidarily the sum of
P50,000 as temperate and nominal damages, P10,000
as exemplary damages, and P25,000 as attorneys fees
and litigation costs, and ordering the Director of the
National Library to cancel Copyright Registration No. 1-
1998 in the name of Venancio Sambar.
The facts are as follows:

On September 28, 1987, private respondents, through a
letter from their legal officer, demanded that CVS
Garment Enterprises (CVSGE) desist from using their
stitched arcuate design on the Europress jeans which
CVSGE advertised in the Manila Bulletin.
Atty. Benjamin Gruba, counsel of CVSGE, replied that
the arcuate design on the back pockets of Europress
jeans was different from the design on the back pockets
of Levis jeans. He further asserted that his client had a
copyright on the design it was using.
Thereafter, private respondents filed a complaint against
Sambar, doing business under the name and style of
CVSGE. Private respondents also impleaded the
Director of the National Library. Summons was sent to
Sambar in his business address at 161-B Iriga corner
Retiro, La Loma, Quezon City.
Atty. Gruba claimed that he erroneously received the
original summons as he mistook it as addressed to his
client, CVSGIC. He returned the summons and the
pleadings and manifested in court that CVSGE, which
was formerly doing business in the premises, already
stopped operation and CVSGIC took over CVSGEs
occupation of the premises. He also claimed he did not
know the whereabouts of Sambar, the alleged owner of
CVSGE.
Thereafter, private respondents amended their complaint
to include CVSGIC. When private respondents learned
the whereabouts of Sambar and CVSGE, the case was
revived.
Private respondents alleged in their complaint that Levi
Strauss and Co. (LS&Co.), an internationally known
clothing manufacturer, owns the arcuate design
trademark which was registered under U.S. Trademark
Registration No. 404, 248 on November 16, 1943, and in
the Principal Register of trademarks with the Philippine
Patent Office under Certificate of Registration No. 20240
issued on October 8, 1973; that through a Trademark
Technical Data and Technical Assistance Agreement
with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co.
granted LSPI a non-exclusive license to use the arcuate
trademark in its manufacture and sale of Levis pants,
jackets and shirts in the Philippines; that in 1983,
LS&Co. also appointed LSPI as its agent and attorney-
in-fact to protect its trademark in the Philippines; and
that sometime in 1987, CVSGIC and Venancio Sambar,
without the consent and authority of private respondents
and in infringement and unfair competition, sold and
advertised, and despite demands to cease and desist,
continued to manufacture, sell and advertise denim
pants under the brand name Europress with back
pockets bearing a design similar to the arcuate
trademark of private respondents, thereby causing
confusion on the buying public, prejudicial to private
respondents goodwill and property right.
In its answer, CVSGIC admitted it manufactured, sold
and advertised and was still manufacturing and selling
denim pants under the brand name of Europress,
bearing a back pocket design of two double arcs
meeting in the middle. However, it denied that there was
infringement or unfair competition because the display
rooms of department stores where Levis and Europress
jeans were sold, were distinctively segregated by
billboards and other modes of advertisement. CVSGIC
avers that the public would not be confused on the
ownership of such known trademark as Levis, Jag,
Europress, etc.. Also, CVSGIC claimed that it had its
own original arcuate design, as evidenced by Copyright
Registration No. 1-1998, which was very different and
distinct from Levis design. CVSGIC prayed for actual,
moral and exemplary damages by way of counterclaim.
Petitioner Venancio Sambar filed a separate answer. He
denied he was connected with CVSGIC. He admitted
that Copyright Registration No. 1-1998 was issued to
him, but he denied using it. He also said he did not
authorize anyone to use the copyrighted design. He
counterclaimed for moral and exemplary damages and
payment of attorneys fees.
After hearing, the trial court issued a writ of preliminary
injunction enjoining CVSGIC and petitioner from
manufacturing, advertising and selling pants with the
arcuate design on their back pockets. CVSGIC and
petitioner did not appear during the October 13 and 27,
1993 hearings, when they were to present evidence.
Consequently, the trial court ruled that they waived their
right to present evidence.
On May 3, 1995, the trial court rendered its decision.
The dispositive portion reads:
IN VIEW OF THE FOREGOING, judgment is hereby
rendered:
a) making the writ of preliminary injunction permanent;
b) ordering the defendants CVS Garment and Industrial
Company and Venancio Sambar to pay the plaintiffs
jointly and solidarily the sum of P50,000.00 as temperate
and nominal damages, the sum of P10,000.00 as
exemplary damages, and the sum of P25,000.00 as
attorneys fees and litigation expenses and to pay the
costs.
SO ORDERED.[1]
Private respondents moved for a reconsideration praying
for the cancellation of petitioners copyright registration.
The trial court granted reconsideration in its July 14,
1995 order, thus:
IN VIEW OF THE FOREGOING, judgment is hereby
rendered:
a) making the writ of preliminary injunction permanent;
b) ordering the defendants CVS Garment and Industrial
Company and Venancio Sambar to pay the plaintiffs
jointly and solidarily the sum of P50,000.00 as temperate
and nominal damages, the sum of P10,000.00 as
exemplary damages, and the sum of P25,000.00 as
attorneys fees and litigation expenses and to pay the
costs;
c) ordering the Director of the National Library to cancel
the Copyright Registration No. 1-1998 issued in the
name of Venancio Sambar.[2]
Petitioner appealed to the Court of Appeals which on
January 30, 1998 decided in favor of private
respondents as follows:
WHEREFORE, the judgment appealed from is
AFFIRMED in toto.
SO ORDERED.[3]
In this instant petition, petitioner avers that the Court of
Appeals erred in:
I. ...RULING THAT THERE WAS AN INFRINGEMENT
OF RESPONDENTS ARCUATE MARK.
II. ...RULING THAT PETITIONER IS JOINTLY AND
SOLIDARILY LIABLE WITH CVS GARMENTS
INDUSTRIAL CORPORATION FOR INFRINGEMENT
OF RESPONDENTS ARCUATE MARK.
III. ...IN ORDERING, THERE BEING NO
INFRINGEMENT OR UNFAIR COMPETITION, THE
AWARD OF DAMAGES AND CANCELLATION OF
COPYRIGHT REGISTRATION NO. 1-1998 ISSUED IN
THE NAME OF PETITIONER.[4]
Briefly, we are asked to resolve the following issues:
1. Did petitioner infringe on private respondents arcuate
design?
2. Must we hold petitioner solidarily liable with CVS
Garments Industrial Corporation?
3. Are private respondents entitled to nominal, temperate
and exemplary damages and cancellation of petitioners
copyright?
On the first issue, petitioner claims that he did not
infringe on private respondents arcuate design because
there was no colorable imitation which deceived or
confused the public. He cites Emerald Garment
Manufacturing Corporation vs. Court of Appeals, G.R.
No. 100098, 251 SCRA 600 (1995), as authority. He
disagreed with the Court of Appeals that there were
confusing similarities between Levis and Europress
arcuate designs, despite the trial courts observation of
differences in them. Petitioner maintains that although
the backpocket designs had similarities, the public was
not confused because Levis jeans had other marks not
found in Europress jeans. Further, he says Levis long
history and popularity made its trademark easily
identifiable by the public.
In its comment, private respondents aver that the Court
of Appeals did not err in ruling that there was
infringement in this case. The backpocket design of
Europress jeans, a double arc intersecting in the middle
was the same as Levis mark, also a double arc
intersecting at the center. Although the trial court found
differences in the two designs, these differences were
not noticeable. Further, private respondents said,
infringement of trademark did not require exact similarity.
Colorable imitation enough to cause confusion among
the public, was sufficient for a trademark to be infringed.
Private respondents explained that in a market research
they conducted with 600 respondents, the result showed
that the public was confused by Europress trademark vis
the Levis trademark.
We find that the first issue raised by petitioner is factual.
The basic rule is that factual questions are beyond the
province of this Court in a petition for review. Although
there are exceptions to this rule, this case is not one of
them.[5] Hence, we find no reason to disturb the findings
of the Court of Appeals that Europress use of the
arcuate design was an infringement of the Levis design.
On the second issue, petitioner claims that private
respondents did not show that he was connected with
CVSGIC, nor did they prove his specific acts of
infringement to make him liable for damages. Again, this
is a factual matter and factual findings of the trial court,
concurred in by the Court of Appeals, are final and
binding on this Court.[6] Both the courts below found that
petitioner had a copyright over Europress arcuate design
and that he consented to the use of said design by
CVSGIC. We are bound by this finding, especially in the
absence of a showing that it was tainted with
arbitrariness or palpable error.[7] It must be stressed that
it was immaterial whether or not petitioner was
connected with CVSGIC. What is relevant is that
petitioner had a copyright over the design and that he
allowed the use of the same by CVSGIC.
Petitioner also contends that the Court of Appeals erred
when it said that he had the burden to prove that he was
not connected with CVSGIC and that he did not
authorize anyone to use his copyrighted design.
According to petitioner, these are important elements of
private respondents cause of action against him, hence,
private respondents had the ultimate burden of proof.
Pertinent is Section 1, Rule 131 of the Rules of Court[8]
which provides that the burden of proof is the duty of a
party to prove the truth of his claim or defense, or any
fact in issue by the amount of evidence required by law.
In civil cases, the burden of proof may be on either the
plaintiff or the defendant. It is on the latter, if in his
answer he alleges an affirmative defense, which is not a
denial of an essential ingredient in the plaintiffs cause of
action, but is one which, if established, will be a good
defense i.e., an avoidance of the claim, which prima
facie, the plaintiff already has because of the defendants
own admissions in the pleadings.[9]
Petitioners defense in this case was an affirmative
defense. He did not deny that private respondents
owned the arcuate trademark nor that CVSGIC used on
its products a similar arcuate design. What he averred
was that although he owned the copyright on the
Europress arcuate design, he did not allow CVSGIC to
use it. He also said he was not connected with CVSGIC.
These were not alleged by private respondents in their
pleadings, and petitioner therefore had the burden to
prove these.
Lastly, are private respondents entitled to nominal,
temperate and exemplary damages and cancellation of
petitioners copyright?
Petitioner insists that he had not infringed on the arcuate
trademark, hence, there was no basis for nominal and
temperate damages. Also, an award of nominal
damages precludes an award of temperate damages.
He cites Ventanilla vs. Centeno, G.R. No. L-14333, 1
SCRA 215 (1961) on this. Thus, he contends, assuming
arguendo that there was infringement, the Court of
Appeals still erred in awarding both nominal and
temperate damages.
Petitioner likewise said that the grant of exemplary
damages was inconsistent with the trial courts finding
that the design of Europress jeans was not similar to
Levis design and that no pecuniary loss was suffered by
respondents to entitle them to such damages.
Lastly, petitioner maintains that as Europress arcuate
design is not a copy of that of Levis, citing the trial courts
findings that although there are similarities, there are
also differences in the two designs, cancellation of his
copyright was not justified.
On this matter, private respondents assert that the lower
courts found that there was infringement and Levis was
entitled to damages based on Sections 22 and 23 of RA
No. 166 otherwise known as the Trade Mark Law,[10] as
amended, which was the law then governing. Said
sections define infringement and prescribe the remedies
therefor. Further, private respondents aver it was
misleading for petitioner to claim that the trial court ruled
that private respondents did not suffer pecuniary loss,
suggesting that the award of damages was improper.
According to the private respondents, the trial court did
not make any such ruling. It simply stated that there was
no evidence that Levis had suffered decline in its sales
because of the use of the arcuate design by Europress
jeans. They offer that while there may be no direct proof
that they suffered a decline in sales, damages may still
be measured based on a reasonable percentage of the
gross sales of the respondents, pursuant to Section 23
of the Trademark law.[11]
Finally, regarding the cancellation of petitioners
copyright, private respondents deny that the trial court
ruled that the arcuate design of Europress jeans was not
the same as Levis arcuate design jeans. On the
contrary, the trial court expressly ruled that there was
similarity. The cancellation of petitioners copyright was
justified because petitioners copyright can not prevail
over respondents registration in the Principal Register of
Bureau of Patents, Trademarks, and Technology
Transfer. According to private respondents, the essence
of copyright registration is originality and a copied design
is inherently non-copyrightable. They insist that
registration does not confer originality upon a copycat
version of a prior design.
From the foregoing discussion, it is clear that the matters
raised by petitioner in relation to the last issue are purely SO ORDERED.
factual, except the matter of nominal and temperate
damages. Petitioner claims that damages are not due
private respondents and his copyright should not be
[G.R. No. 108946. January 28, 1999]
cancelled because he had not infringed on Levis
trademark. Both the trial court and the Court of Appeals FRANCISCO G. JOAQUIN, JR., and BJ
found there was infringement. Thus, the award of PRODUCTIONS, INC., petitioners, vs. FRANKLIN
damages and cancellation of petitioners copyright are DRILON GABRIEL ZOSA, WILLIAM ESPOSO,
appropriate.[12] Award of damages is clearly provided in FELIPE MEDINA, JR., and CASEY FRANCISCO,
Section 23,[13] while cancellation of petitioners copyright respondents.
finds basis on the fact that the design was a mere copy
DECISION
of that of private respondents trademark. To be entitled
to copyright, the thing being copyrighted must be
original, created by the author through his own skill,
labor and judgment, without directly copying or evasively
imitating the work of another.[14]
MENDOZA, J.:

However, we agree with petitioner that it was error for

This is a petition for certiorari. Petitioners seek to annul
the Court of Appeals to affirm the award of nominal
the resolution of the Department of Justice, dated
damages combined with temperate damages[15] by the
August 12, 1992, in Criminal Case No. Q-92-27854,
Regional Trial Court of Makati. What respondents are
entitled Gabriel Zosa, et al. v. City Prosecutor of Quezon
entitled to is an award for temperate damages, not
City and Francisco Joaquin, Jr., and its resolution, dated
nominal damages. For although the exact amount of
December 3, 1992, denying petitioner Joaquins motion
damage or loss can not be determined with reasonable
for reconsideration.
certainty, the fact that there was infringement means
they suffered losses for which they are entitled to
Petitioner BJ Productions, Inc. (BJPI) is the
moderate damages.[16] We find that the award of
holder/grantee of Certificate of Copyright No. M922,
P50,000.00 as temperate damages fair and reasonable,
dated January 28, 1971, of Rhoda and Me, a dating
considering the circumstances herein as well as the
game show aired from 1970 to 1977.
global coverage and reputation of private respondents
Levi Strauss & Company and Levi Strauss (Phil.), Inc.
On June 28, 1973, petitioner BJPI submitted to the
National Library an addendum to its certificate of
WHEREFORE, the decision dated January 30, 1998, of
copyright specifying the shows format and style of
the Court of Appeals, in CA-G.R. CV No. 51553
presentation.
AFFIRMING the judgment of the Regional Trial Court of
Makati, Branch 66, dated July 14, 1995, is hereby
On July 14, 1991, while watching television, petitioner
MODIFIED so that nominal damages are deleted but the
Francisco Joaquin, Jr., president of BJPI, saw on RPN
amount of P50,000 is hereby awarded only as
Channel 9 an episode of Its a Date, which was produced
TEMPERATE DAMAGES. In all other respects, said
by IXL Productions, Inc. (IXL). On July 18, 1991, he
judgment is hereby AFFIRMED, to wit:
wrote a letter to private respondent Gabriel M. Zosa,
president and general manager of IXL, informing Zosa
a) the writ of preliminary injunction is made permanent;
that BJPI had a copyright to Rhoda and Me and
demanding that IXL discontinue airing Its a Date.
b) the defendants CVS Garment and Industrial Company
and Venancio Sambar are ordered also to pay the
In a letter, dated July 19, 1991, private respondent Zosa
plaintiffs jointly and solidarily the sum of P10,000.00 as
apologized to petitioner Joaquin and requested a
exemplary damages, and the sum of P25,000.00 as
meeting to discuss a possible settlement. IXL, however,
attorneys fees and litigation expenses, and to pay the
continued airing Its a Date, prompting petitioner Joaquin
costs; and
to send a second letter on July 25, 1991 in which he
reiterated his demand and warned that, if IXL did not
c) the Director of the National Library is ordered to
comply, he would endorse the matter to his attorneys for
cancel the Copyright Registration No. 1-1998 issued in
proper legal action.
the name of Venancio Sambar.
Meanwhile, private respondent Zosa sought to register
IXLs copyright to the first episode of Its a Date for which
it was issued by the National Library a certificate of
copyright on August 14, 1991.
Upon complaint of petitioners, an information for
violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN
Channel 9, namely, William Esposo, Felipe Medina, and
Casey Francisco, in the Regional Trial Court of Quezon
City where it was docketed as Criminal Case No. 92-
27854 and assigned to Branch 104 thereof. However,
private respondent Zosa sought a review of the
resolution of the Assistant City Prosecutor before the
Department of Justice.
On August 12, 1992, respondent Secretary of Justice
Franklin M. Drilon reversed the Assistant City
Prosecutors findings and directed him to move for the
dismissal of the case against private respondents. [1]
Petitioner Joaquin filed a motion for reconsideration, but
his motion was denied by respondent Secretary of
Justice on December 3, 1992. Hence, this petition.
Petitioners contend that:
1. The public respondent gravely abused his discretion
amounting to lack of jurisdiction when he invoked non-
presentation of the master tape as being fatal to the
existence of probable cause to prove infringement,
despite the fact that private respondents never raised
the same as a controverted issue.
2. The public respondent gravely abused his discretion
amounting to lack of jurisdiction when he arrogated unto
himself the determination of what is copyrightable - an
issue which is exclusively within the jurisdiction of the
regional trial court to assess in a proper proceeding.
Both public and private respondents maintain that
petitioners failed to establish the existence of probable
cause due to their failure to present the copyrighted
master videotape of Rhoda and Me. They contend that
petitioner BJPIs copyright covers only a specific episode
of Rhoda and Me and that the formats or concepts of
dating game shows are not covered by copyright
protection under P. D. No. 49.
Non-Assignment of Error
Petitioners claim that their failure to submit the
copyrighted master videotape of the television show
Rhoda and Me was not raised in issue by private
respondents during the preliminary investigation and,
therefore, it was error for the Secretary of Justice to
reverse the investigating prosecutors finding of probable
cause on this ground.
A preliminary investigation falls under the authority of the
state prosecutor who is given by law the power to direct
and control criminal actions.[2] He is, however, subject
to the control of the Secretary of Justice. Thus, Rule
112, 4 of the Revised Rules of Criminal Procedure,
provides:
SEC. 4. Duty of investigating fiscal. - If the investigating
fiscal finds cause to hold the respondent for trial, he shall
prepare the resolution and corresponding information.
He shall certify under oath that he, or as shown by the
record, an authorized officer, has personally examined
the complainant and his witnesses, that there is
reasonable ground to believe that a crime has been
committed and that the accused is probably guilty
thereof, that the accused was informed of the complaint
and of the evidence submitted against him and that he
was given an opportunity to submit controverting
evidence. Otherwise, he shall recommend dismissal of
the complaint.
In either case, he shall forward the records of the case to
the provincial or city fiscal or chief state prosecutor
within five (5) days from his resolution. The latter shall
take appropriate action thereon within ten (10) days from
receipt thereof, immediately informing the parties of said
action.
No complaint or information may be filed or dismissed by
an investigating fiscal without the prior written authority
or approval of the provincial or city fiscal or chief state
prosecutor.
Where the investigating assistant fiscal recommends the
dismissal of the case but his findings are reversed by the
provincial or city fiscal or chief state prosecutor on the
ground that a probable cause exists, the latter may, by
himself, file the corresponding information against the
respondent or direct any other assistant fiscal or state
prosecutor to do so, without conducting another
preliminary investigation.
If upon petition by a proper party, the Secretary of
Justice reverses the resolution of the provincial or city
fiscal or chief state prosecutor, he shall direct the fiscal
concerned to file the corresponding information without
conducting another preliminary investigation or to
dismiss or move for dismissal of the complaint or
information.
In reviewing resolutions of prosecutors, the Secretary of
Justice is not precluded from considering errors,
although unassigned, for the purpose of determining
whether there is probable cause for filing cases in court.
He must make his own finding of probable cause and is
not confined to the issues raised by the parties during
preliminary investigation. Moreover, his findings are not
subject to review unless shown to have been made with
grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of
the question whether the format or mechanics of a show
is entitled to copyright protection is for the court, and not
the Secretary of Justice, to make. They assail the
following portion of the resolution of the respondent
Secretary of Justice:
[T]he essence of copyright infringement is the copying,
in whole or in part, of copyrightable materials as defined
and enumerated in Section 2 of PD. No. 49. Apart from
the manner in which it is actually expressed, however,
the idea of a dating game show is, in the opinion of this
Office, a non-copyrightable material. Ideas, concepts,
formats, or schemes in their abstract form clearly do not
fall within the class of works or materials susceptible of
copyright registration as provided in PD. No. 49.[3]
(Emphasis added.)
It is indeed true that the question whether the format or
mechanics of petitioners television show is entitled to
copyright protection is a legal question for the court to
make. This does not, however, preclude respondent
Secretary of Justice from making a preliminary
determination of this question in resolving whether there
is probable cause for filing the case in court. In doing so
in this case, he did not commit any grave error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice
gravely abused his discretion in ruling that the master
videotape should have been presented in order to
determine whether there was probable cause for
copyright infringement. They contend that 20th Century
Fox Film Corporation v. Court of Appeals,[4] on which
respondent Secretary of Justice relied in reversing the
resolution of the investigating prosecutor, is inapplicable
to the case at bar because in the present case, the
parties presented sufficient evidence which clearly
establish linkages between the copyrighted show Rhoda
and Me and the infringing TV show Its a Date.[5]
The case of 20th Century Fox Film Corporation involved
raids conducted on various videotape outlets allegedly
selling or renting out pirated videotapes. The trial court
found that the affidavits of NBI agents, given in support
of the application for the search warrant, were
insufficient without the master tape. Accordingly, the trial
court lifted the search warrants it had previously issued
against the defendants. On petition for review, this Court
sustained the action of the trial court and ruled:[6]
The presentation of the master tapes of the copyrighted
films from which the pirated films were allegedly copied,
was necessary for the validity of search warrants against
those who have in their possession the pirated films. The
petitioners argument to the effect that the presentation of
the master tapes at the time of application may not be
necessary as these would be merely evidentiary in
nature and not determinative of whether or not a
probable cause exists to justify the issuance of the
search warrants is not meritorious. The court cannot
presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.
The application for search warrants was directed against
video tape outlets which allegedly were engaged in the
unauthorized sale and renting out of copyrighted films
belonging to the petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the similarity
or at least substantial similarity of the purported pirated
works to the copyrighted work. Hence, the applicant
must present to the court the copyrighted films to
compare them with the purchased evidence of the video
tapes allegedly pirated to determine whether the latter is
an unauthorized reproduction of the former. This linkage
of the copyrighted films to the pirated films must be
established to satisfy the requirements of probable
cause. Mere allegations as to the existence of the
copyrighted films cannot serve as basis for the issuance
of a search warrant.
This ruling was qualified in the later case of Columbia
Pictures, Inc. v. Court of Appeals[7] in which it was held:
In fine, the supposed pronunciamento in said case
regarding the necessity for the presentation of the
master tapes of the copyrighted films for the validity of
search warrants should at most be understood to merely
serve as a guidepost in determining the existence of
probable cause in copyright infringement cases where
there is doubt as to the true nexus between the master
tape and the pirated copies. An objective and careful
reading of the decision in said case could lead to no
other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in
all or similar copyright infringement cases. . . .[8]
In the case at bar, during the preliminary investigation,
petitioners and private respondents presented written
descriptions of the formats of their respective televisions
shows, on the basis of which the investigating
prosecutor ruled:
As may [be] gleaned from the evidence on record, the
substance of the television productions complainants
RHODA AND ME and Zosas ITS A DATE is that two
matches are made between a male and a female, both
single, and the two couples are treated to a night or two
of dining and/or dancing at the expense of the show. The
major concepts of both shows is the same. Any
difference appear mere variations of the major concepts.
That there is an infringement on the copyright of the
show RHODA AND ME both in content and in the
execution of the video presentation are established
because respondents ITS A DATE is practically an exact
copy of complainants RHODA AND ME because of
substantial similarities as follows, to wit:
RHODA AND ME ITS A DATE
Set I Set I
a. Unmarried participant a. same
of one gender (searcher) appears on one side of a
divider, while three (3) unmarried participants of the
other gender are on the other side of the divider. This
arrangement is done to ensure that the searcher does
not see the searchees.
b. Searcher asks a question b. same
to be answered by each of the searchees. The purpose
is to determine who among the searchees is the most
compatible with the searcher.
c. Searcher speculates on the c. same
match to the searchee.
d. Selection is made by the d. Selection is
use of compute (sic) methods, based on the
or by the way questions are answer of the
answered, or similar methods. Searchees.
Set 2 Set 2
Same as above with the genders same
of the searcher and searchees interchanged.[9]
Petitioners assert that the format of Rhoda and Me is a
product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the
presentation of a point-by-point comparison of the
formats of the two shows clearly demonstrates the nexus
between the shows and hence establishes the existence
of probable cause for copyright infringement. Such being
the case, they did not have to produce the master tape.
To begin with, the format of a show is not copyrightable.
Section 2 of P.D. No. 49,[10] otherwise known as the
DECREE ON INTELLECTUAL PROPERTY, enumerates
the classes of work entitled to copyright protection, to
wit:
Section 2. The rights granted by this Decree shall, from
the moment of creation, subsist with respect to any of
the following classes of works:
(A) Books, including composite and cyclopedic works,
manuscripts, directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations
prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions;
choreographic works and entertainments in dumb
shows, the acting form of which is fixed in writing or
otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture,
engraving, lithography, and other works of art; models or
designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of
manufacture, whether or not patentable, and other works
of applied art;
(J) Maps, plans, sketches, and charts;

(K) Drawings or plastic works of a scientific or technical
character;
(L) Photographic works and works produced by a
process analogous to photography; lantern slides;
(M) Cinematographic works and works produced by a
process analogous to cinematography or any process for
making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies,
labels, tags, and box wraps;
(P) Dramatizations, translations, adaptations,
abridgements, arrangements and other alterations of
literary, musical or artistic works or of works of the
Philippine government as herein defined, which shall be
protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or
of works referred to in Section 9 of this Decree which by
reason of the selection and arrangement of their
contents constitute intellectual creations, the same to be
protected as such in accordance with Section 8 of this
Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as 172 of the
INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES (R.A. No. 8293).[11] The format or
mechanics of a television show is not included in the list
of protected works in 2 of P.D. No. 49. For this reason,
the protection afforded by the law cannot be extended to
cover them.
Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right granted
by the statute, and not simply a pre-existing right
regulated by the statute. Being a statutory grant, the
rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions
specified in the statute.[12]
Since . . . copyright in published works is purely a
statutory creation, a copyright may be obtained only for a
work falling within the statutory enumeration or
description.[13]
Regardless of the historical viewpoint, it is authoritatively
settled in the United States that there is no copyright
except that which is both created and secured by act of
Congress . . . .[14]
P.D. No. 49, 2, in enumerating what are subject to
copyright, refers to finished works and not to concepts.
The copyright does not extend to an idea, procedure,
process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such
work.[15] Thus, the new INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES provides:
Sec. 175. Unprotected Subject Matter. - Notwithstanding
the provisions of Sections 172 and 173, no protection
shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle,
discovery or mere data as such, even if they are
expressed, explained, illustrated or embodied in a work;
news of the day and other miscellaneous facts having
the character of mere items of press information; or any
official text of a legislative, administrative or legal nature,
as well as any official translation thereof.
What then is the subject matter of petitioners copyright?
This Court is of the opinion that petitioner BJPIs
copyright covers audio-visual recordings of each episode
of Rhoda and Me, as falling within the class of works
mentioned in P.D. 49, 2(M), to wit:
Cinematographic works and works produced by a
process analogous to cinematography or any process for
making audio-visual recordings;
The copyright does not extend to the general concept or
format of its dating game show. Accordingly, by the very
nature of the subject of petitioner BJPIs copyright, the
investigating prosecutor should have the opportunity to
compare the videotapes of the two shows.
Mere description by words of the general format of the
two dating game shows is insufficient; the presentation
of the master videotape in evidence was indispensable
to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can
describe because it involves a whole spectrum of visuals
and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the
general copyright/format of both dating game shows.[16]
WHEREFORE, the petition is hereby DISMISSED.

SO ORDERED.
[G.R. No. 115758. March 19, 2002]
ELIDAD C. KHO, doing business under the name and
style of KEC COSMETICS LABORATORY, petitioner,
vs. HON. COURT OF APPEALS, SUMMERVILLE
GENERAL MERCHANDISING and COMPANY, and
ANG TIAM CHAY, respondents.
DECISION
DE LEON, JR., J.:
Before us is a petition for review on certiorari of the
Decision[1] dated May 24, 1993 of the Court of Appeals
setting aside and declaring as null and void the
Orders[2] dated February 10, 1992 and March 19, 1992
of the Regional Trial Court, Branch 90, of Quezon City
granting the issuance of a writ of preliminary injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C. Kho filed a
complaint for injunction and damages with a prayer for
the issuance of a writ of preliminary injunction, docketed
as Civil Case No. Q-91-10926, against the respondents
Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.
The petitioners complaint alleges that petitioner, doing
business under the name and style of KEC Cosmetics
Laboratory, is the registered owner of the copyrights
Chin Chun Su and Oval Facial Cream Container/Case,
as shown by Certificates of Copyright Registration No. 0-
1358 and No. 0-3678; that she also has patent rights on
Chin Chun Su & Device and Chin Chun Su for
medicated cream after purchasing the same from
Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office on
February 7, 1980 under Registration Certificate No.
4529; that respondent Summerville advertised and sold
petitioners cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses,
thereby misleading the public, and resulting in the
decline in the petitioners business sales and income;
and, that the respondents should be enjoined from
allegedly infringing on the copyrights and patents of the
petitioner.
The respondents, on the other hand, alleged as their
defense that Summerville is the exclusive and
authorized importer, re-packer and distributor of Chin
Chun Su products manufactured by Shun Yi Factory of
Taiwan; that the said Taiwanese manufacturing
company authorized Summerville to register its trade
name Chin Chun Su Medicated Cream with the
Philippine Patent Office and other appropriate
governmental agencies; that KEC Cosmetics Laboratory
of the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the
authority of Quintin Cheng, assignee of the patent
registration certificate, to distribute and market Chin
Chun Su products in the Philippines had already been
terminated by the said Taiwanese Manufacturing
Company.
After due hearing on the application for preliminary
injunction, the trial court granted the same in an Order
dated February 10, 1992, the dispositive portion of which
reads:
ACCORDINGLY, the application of plaintiff Elidad C.
Kho, doing business under the style of KEC Cosmetic
Laboratory, for preliminary injunction, is hereby granted.
Consequentially, plaintiff is required to file with the Court
a bond executed to defendants in the amount of five
hundred thousand pesos (P500,000.00) to the effect that
plaintiff will pay to defendants all damages which
defendants may sustain by reason of the injunction if the
Court should finally decide that plaintiff is not entitled
thereto.
SO ORDERED.[3]
The respondents moved for reconsideration but their
motion for reconsideration was denied by the trial court
in an Order dated March 19, 1992.[4]
On April 24, 1992, the respondents filed a petition for
certiorari with the Court of Appeals, docketed as CA-
G.R. SP No. 27803, praying for the nullification of the
said writ of preliminary injunction issued by the trial
court. After the respondents filed their reply and almost a
month after petitioner submitted her comment, or on
August 14 1992, the latter moved to dismiss the petition
for violation of Supreme Court Circular No. 28-91, a
circular prohibiting forum shopping. According to the
petitioner, the respondents did not state the docket
number of the civil case in the caption of their petition
and, more significantly, they did not include therein a
certificate of non-forum shopping. The respondents
opposed the petition and submitted to the appellate court
a certificate of non-forum shopping for their petition.
On May 24, 1993, the appellate court rendered a
Decision in CA-G.R. SP No. 27803 ruling in favor of the
respondents, the dispositive portion of which reads:
WHEREFORE, the petition is hereby given due course
and the orders of respondent court dated February 10,
1992 and March 19, 1992 granting the writ of preliminary
injunction and denying petitioners motion for
reconsideration are hereby set aside and declared null
and void. Respondent court is directed to forthwith
proceed with the trial of Civil Case No. Q-91-10926 and
resolve the issue raised by the parties on the merits.
SO ORDERED.[5]
In granting the petition, the appellate court ruled that:
The registration of the trademark or brandname Chin
Chun Su by KEC with the supplemental register of the
Bureau of Patents, Trademarks and Technology
Transfer cannot be equated with registration in the
principal register, which is duly protected by the
Trademark Law.
xxx xxx xxx
As ratiocinated in La Chemise Lacoste, S.S. vs.
Fernandez, 129 SCRA 373, 393:
Registration in the Supplemental Register, therefore,
serves as notice that the registrant is using or has
appropriated the trademark. By the very fact that the
trademark cannot as yet be on guard and there are
certain defects, some obstacles which the use must still
overcome before he can claim legal ownership of the
mark or ask the courts to vindicate his claims of an
exclusive right to the use of the same. It would be
deceptive for a party with nothing more than a
registration in the Supplemental Register to posture
before courts of justice as if the registration is in the
Principal Register.
The reliance of the private respondent on the last
sentence of the Patent office action on application Serial
No. 30954 that registrants is presumed to be the owner
of the mark until after the registration is declared
cancelled is, therefore, misplaced and grounded on
shaky foundation. The supposed presumption not only
runs counter to the precept embodied in Rule 124 of the
Revised Rules of Practice before the Philippine Patent
Office in Trademark Cases but considering all the facts
ventilated before us in the four interrelated petitions
involving the petitioner and the respondent, it is devoid
of factual basis. As even in cases where presumption
and precept may factually be reconciled, we have held
that the presumption is rebuttable, not conclusive,
(People v. Lim Hoa, G.R. No. L-10612, May 30, 1958,
Unreported). One may be declared an unfair competitor
even if his competing trademark is registered (Parke,
Davis & Co. v. Kiu Foo & Co., et al., 60 Phil 928; La
Yebana Co. v. chua Seco & Co., 14 Phil 534).[6]
The petitioner filed a motion for reconsideration. This
she followed with several motions to declare
respondents in contempt of court for publishing
advertisements notifying the public of the promulgation
of the assailed decision of the appellate court and stating
that genuine Chin Chun Su products could be obtained
only from Summerville General Merchandising and Co.
In the meantime, the trial court went on to hear
petitioners complaint for final injunction and damages.
On October 22, 1993, the trial court rendered a
Decision[7] barring the petitioner from using the
trademark Chin Chun Su and upholding the right of the
respondents to use the same, but recognizing the
copyright of the petitioner over the oval shaped container
of her beauty cream. The trial court did not award
damages and costs to any of the parties but to their
respective counsels were awarded Seventy-Five
Thousand Pesos (P75,000.00) each as attorneys fees.
The petitioner duly appealed the said decision to the
Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a
Resolution[8] denying the petitioners motions for
reconsideration and for contempt of court in CA-G.R. SP
No. 27803.
Hence, this petition anchored on the following
assignment of errors:
I
RESPONDENT HONORABLE COURT OF APPEALS
COMMITTED GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN FAILING
TO RULE ON PETITIONERS MOTION TO DISMISS.
II
RESPONDENT HONORABLE COURT OF APPEALS
COMMITTED GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN
REFUSING TO PROMPTLY RESOLVE PETITIONERS
MOTION FOR RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF PETITIONERS
MOTION FOR RECONSIDERATION, THE
HONORABLE COURT OF APPEALS DENIED
PETITIONERS RIGHT TO SEEK TIMELY APPELLATE
RELIEF AND VIOLATED PETITIONERS RIGHT TO
DUE PROCESS.
IV
RESPONDENT HONORABLE COURT OF APPEALS
COMMITTED GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN FAILING
TO CITE THE PRIVATE RESPONDENTS IN
CONTEMPT.[9]
The petitioner faults the appellate court for not
dismissing the petition on the ground of violation of
Supreme Court Circular No. 28-91. Also, the petitioner
contends that the appellate court violated Section 6,
Rule 9 of the Revised Internal Rules of the Court of
Appeals when it failed to rule on her motion for
reconsideration within ninety (90) days from the time it is
submitted for resolution. The appellate court ruled only
after the lapse of three hundred fifty-four (354) days, or
on June 3, 1994. In delaying the resolution thereof, the
appellate court denied the petitioners right to seek the
timely appellate relief. Finally, petitioner describes as
arbitrary the denial of her motions for contempt of court
against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of
Civil Procedure, one of the grounds for the issuance of a
writ of preliminary injunction is a proof that the applicant
is entitled to the relief demanded, and the whole or part
of such relief consists in restraining the commission or
continuance of the act or acts complained of, either for a
limited period or perpetually. Thus, a preliminary
injunction order may be granted only when the
application for the issuance of the same shows facts
entitling the applicant to the relief demanded.[10] This is
the reason why we have ruled that it must be shown that
the invasion of the right sought to be protected is
material and substantial, that the right of complainant is
clear and unmistakable, and, that there is an urgent and
paramount necessity for the writ to prevent serious
damage.[11]
In the case at bar, the petitioner applied for the issuance
of a preliminary injunctive order on the ground that she is
entitled to the use of the trademark on Chin Chun Su
and its container based on her copyright and patent over
the same. We first find it appropriate to rule on whether
the copyright and patent over the name and container of
a beauty cream product would entitle the registrant to
the use and ownership over the same to the exclusion of
others.
Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of goods.[12] In
relation thereto, a trade name means the name or
designation identifying or distinguishing an
enterprise.[13] Meanwhile, the scope of a copyright is
confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain
protected from the moment of their creation.[14]
Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human
activity which is new, involves an inventive step and is
industrially applicable.[15]
Petitioner has no right to support her claim for the
exclusive use of the subject trade name and its
container. The name and container of a beauty cream
product are proper subjects of a trademark inasmuch as
the same falls squarely within its definition. In order to be
entitled to exclusively use the same in the sale of the
beauty cream product, the user must sufficiently prove
that she registered or used it before anybody else did.
The petitioners copyright and patent registration of the
name and container would not guarantee her the right to
the exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order
cannot be issued for the reason that the petitioner has
not proven that she has a clear right over the said name
and container to the exclusion of others, not having
proven that she has registered a trademark thereto or
used the same before anyone did.
We cannot likewise overlook the decision of the trial
court in the case for final injunction and damages. The
dispositive portion of said decision held that the
petitioner does not have trademark rights on the name
and container of the beauty cream product. The said
decision on the merits of the trial court rendered the
issuance of the writ of a preliminary injunction moot and
academic notwithstanding the fact that the same has
been appealed in the Court of Appeals. This is
supported by our ruling in La Vista Association, Inc. v.
Court of Appeals[16], to wit:
Considering that preliminary injunction is a provisional
remedy which may be granted at any time after the
commencement of the action and before judgment when
it is established that the plaintiff is entitled to the relief
demanded and only when his complaint shows facts
entitling such reliefs xxx and it appearing that the trial
court had already granted the issuance of a final
injunction in favor of petitioner in its decision rendered
after trial on the merits xxx the Court resolved to Dismiss
the instant petition having been rendered moot and
academic. An injunction issued by the trial court after it
has already made a clear pronouncement as to the
plaintiffs right thereto, that is, after the same issue has
been decided on the merits, the trial court having
appreciated the evidence presented, is proper,
notwithstanding the fact that the decision rendered is not
yet final xxx. Being an ancillary remedy, the proceedings
for preliminary injunction cannot stand separately or
proceed independently of the decision rendered on the
merit of the main case for injunction. The merit of the
main case having been already determined in favor of
the applicant, the preliminary determination of its non-
existence ceases to have any force and effect. (italics
supplied)
La Vista categorically pronounced that the issuance of a
final injunction renders any question on the preliminary
injunctive order moot and academic despite the fact that
the decision granting a final injunction is pending appeal.
Conversely, a decision denying the applicant-plaintiffs
right to a final injunction, although appealed, renders
moot and academic any objection to the prior dissolution
of a writ of preliminary injunction.
The petitioner argues that the appellate court erred in
not dismissing the petition for certiorari for non-
compliance with the rule on forum shopping. We
disagree. First, the petitioner improperly raised the
technical objection of non-compliance with Supreme
Court Circular No. 28-91 by filing a motion to dismiss the
petition for certiorari filed in the appellate court. This is
prohibited by Section 6, Rule 66 of the Revised Rules of
Civil Procedure which provides that (I)n petitions for
certiorari before the Supreme Court and the Court of
Appeals, the provisions of Section 2, Rule 56, shall be
observed. Before giving due course thereto, the court
may require the respondents to file their comment to,
and not a motion to dismiss, the petition xxx (italics
supplied). Secondly, the issue was raised one month
after petitioner had filed her answer/comment and after
private respondent had replied thereto. Under Section 1,
Rule 16 of the Revised Rules of Civil Procedure, a
motion to dismiss shall be filed within the time for but
before filing the answer to the complaint or pleading
asserting a claim. She therefore could no longer submit
a motion to dismiss nor raise defenses and objections
not included in the answer/comment she had earlier
tendered. Thirdly, substantial justice and equity require
this Court not to revive a dissolved writ of injunction in
favor of a party without any legal right thereto merely on
a technical infirmity. The granting of an injunctive writ
based on a technical ground rather than compliance with
the requisites for the issuance of the same is contrary to
the primary objective of legal procedure which is to serve
as a means to dispense justice to the deserving party.
The petitioner likewise contends that the appellate court
unduly delayed the resolution of her motion for
reconsideration. But we find that petitioner contributed to
this delay when she filed successive contentious
motions in the same proceeding, the last of which was
on October 27, 1993, necessitating counter-
manifestations from private respondents with the last
one being filed on November 9, 1993. Nonetheless, it is
well-settled that non-observance of the period for
deciding cases or their incidents does not render such
judgments ineffective or void.[17] With respect to the
purported damages she suffered due to the alleged
delay in resolving her motion for reconsideration, we find
that the said issue has likewise been rendered moot and
academic by our ruling that she has no right over the
trademark and, consequently, to the issuance of a writ of
preliminary injunction.
Finally, we rule that the Court of Appeals correctly
denied the petitioners several motions for contempt of
court. There is nothing contemptuous about the
advertisements complained of which, as regards the
proceedings in CA-G.R. SP No. 27803 merely
announced in plain and straightforward language the
promulgation of the assailed Decision of the appellate
court. Moreover, pursuant to Section 4 of Rule 39 of the
Revised Rules of Civil Procedure, the said decision
nullifying the injunctive writ was immediately executory.
WHEREFORE, the petition is DENIED. The Decision
and Resolution of the Court of Appeals dated May 24,
1993 and June 3, 1994, respectively, are hereby
AFFIRMED. With costs against the petitioner.
SO ORDERED.

[G.R. No. 148222. August 15, 2003]
PEARL & DEAN (PHIL.), INCORPORATED,
petitioner, vs. SHOEMART, INCORPORATED, and
NORTH EDSA MARKETING, INCORPORATED,
respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under Rule
45 of the Rules of Court, petitioner Pearl & Dean (Phil.)
Inc. (P & D) assails the May 22, 2001 decision[1] of the
Court of Appeals reversing the October 31, 1996
decision[2] of the Regional Trial Court of Makati, Branch
133, in Civil Case No. 92-516 which declared private
respondents Shoemart Inc. (SMI) and North Edsa
Marketing Inc. (NEMI) liable for infringement of
trademark and copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals[3]
contained a summary of this dispute:
Promotions and Publicity Division Manager, Ramonlito
Abano. Only the contract for SM Makati, however, was
returned signed. On October 4, 1985, Vergara wrote
Abano inquiring about the other contract and reminding
him that their agreement for installation of light boxes
was not only for its SM Makati branch, but also for SM
Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs house
counsel informed Pearl and Dean that it was rescinding
the contract for SM Makati due to non-performance of
the terms thereof. In his reply dated February 17, 1986,
Vergara protested the unilateral action of SMI, saying it
was without basis. In the same letter, he pushed for the
signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company
formerly contracted by Pearl and Dean to fabricate its
display units, offered to construct light boxes for
Shoemarts chain of stores. SMI approved the proposal
and ten (10) light boxes were subsequently fabricated by
Metro Industrial for SMI. After its contract with Metro
Industrial was terminated, SMI engaged the services of
EYD Rainbow Advertising Corporation to make the light
boxes. Some 300 units were fabricated in 1991. These
were delivered on a staggered basis and installed at SM
Megamall and SM City.

Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a

Sometime in 1989, Pearl and Dean, received reports
corporation engaged in the manufacture of advertising
that exact copies of its light boxes were installed at SM
display units simply referred to as light boxes. These
City and in the fastfood section of SM Cubao. Upon
units utilize specially printed posters sandwiched
investigation, Pearl and Dean found out that aside from
between plastic sheets and illuminated with back lights.
the two (2) reported SM branches, light boxes similar to
Pearl and Dean was able to secure a Certificate of
those it manufactures were also installed in two (2) other
Copyright Registration dated January 20, 1981 over
SM stores. It further discovered that defendant-appellant
these illuminated display units. The advertising light
North Edsa Marketing Inc. (NEMI), through its marketing
boxes were marketed under the trademark Poster Ads.
arm, Prime Spots Marketing Services, was set up
The application for registration of the trademark was filed
primarily to sell advertising space in lighted display units
with the Bureau of Patents, Trademarks and Technology
located in SMIs different branches. Pearl and Dean
Transfer on June 20, 1983, but was approved only on
noted that NEMI is a sister company of SMI.
September 12, 1988, per Registration No. 41165. From
1981 to about 1988, Pearl and Dean employed the
In the light of its discoveries, Pearl and Dean sent a
services of Metro Industrial Services to manufacture its
letter dated December 11, 1991 to both SMI and NEMI
advertising displays.
enjoining them to cease using the subject light boxes
and to remove the same from SMIs establishments. It
Sometime in 1985, Pearl and Dean negotiated with
also demanded the discontinued use of the trademark
defendant-appellant Shoemart, Inc. (SMI) for the lease
Poster Ads, and the payment to Pearl and Dean of
and installation of the light boxes in SM City North Edsa.
compensatory damages in the amount of Twenty Million
Since SM City North Edsa was under construction at that
Pesos (P20,000,000.00).
time, SMI offered as an alternative, SM Makati and SM
Cubao, to which Pearl and Dean agreed. On September
Upon receipt of the demand letter, SMI suspended the
11, 1985, Pearl and Deans General Manager, Rodolfo
leasing of two hundred twenty-four (224) light boxes and
Vergara, submitted for signature the contracts covering
NEMI took down its advertisements for Poster Ads from
SM Cubao and SM Makati to SMIs Advertising
the lighted display units in SMIs stores. Claiming that
both SMI and NEMI failed to meet all its demands, Pearl
and Dean filed this instant case for infringement of
trademark and copyright, unfair competition and
damages.
In denying the charges hurled against it, SMI maintained
that it independently developed its poster panels using
commonly known techniques and available technology,
without notice of or reference to Pearl and Deans
copyright. SMI noted that the registration of the mark
Poster Ads was only for stationeries such as letterheads,
envelopes, and the like. Besides, according to SMI, the
word Poster Ads is a generic term which cannot be
appropriated as a trademark, and, as such, registration
of such mark is invalid. It also stressed that Pearl and
Dean is not entitled to the reliefs prayed for in its
complaint since its advertising display units contained no
copyright notice, in violation of Section 27 of P.D. 49.
SMI alleged that Pearl and Dean had no cause of action
against it and that the suit was purely intended to malign
SMIs good name. On this basis, SMI, aside from praying
for the dismissal of the case, also counterclaimed for
moral, actual and exemplary damages and for the
cancellation of Pearl and Deans Certification of
Copyright Registration No. PD-R-2558 dated January
20, 1981 and Certificate of Trademark Registration No.
4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed
or used any advertising display units, nor having
engaged in the business of advertising. It repleaded
SMIs averments, admissions and denials and prayed for
similar reliefs and counterclaims as SMI.
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly
and severally liable for infringement of copyright under
Section 2 of PD 49, as amended, and infringement of
trademark under Section 22 of RA No. 166, as
amended, and are hereby penalized under Section 28 of
PD 49, as amended, and Sections 23 and 24 of RA 166,
as amended. Accordingly, defendants are hereby
directed:
(1) to pay plaintiff the following damages:
(a) actual damages - P16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiffs copyright
from 1991 to 1992
(b) moral damages - P1,000.000.00
(c) exemplary damages - P1,000,000.00
(d) attorneys fees - P1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the National
Library, all light boxes of SMI which were fabricated by
Metro Industrial Services and EYD Rainbow Advertising
Corporation;
(3) to deliver, under oath, to the National Library, all
filler-posters using the trademark Poster Ads, for
destruction; and
(4) to permanently refrain from infringing the copyright
on plaintiffs light boxes and its trademark Poster Ads.
Defendants counterclaims are hereby ordered dismissed
for lack of merit.
SO ORDERED.[4]
On appeal, however, the Court of Appeals reversed the
trial court:
Since the light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box
wraps, to be properly classified as a copyrightable class
O work, we have to agree with SMI when it posited that
what was copyrighted were the technical drawings only,
and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian
object, a copyright over the drawings like plaintiff-
appellants will not extend to the actual object. It has so
been held under jurisprudence, of which the leading
case is Baker vs. Selden (101 U.S. 841 (1879). In that
case, Selden had obtained a copyright protection for a
book entitled Seldens Condensed Ledger or
Bookkeeping Simplified which purported to explain a
new system of bookkeeping. Included as part of the
book were blank forms and illustrations consisting of
ruled lines and headings, specially designed for use in
connection with the system explained in the work. These
forms showed the entire operation of a day or a week or
a month on a single page, or on two pages following
each other. The defendant Baker then produced forms
which were similar to the forms illustrated in Seldens
copyrighted books. The Court held that exclusivity to the
actual forms is not extended by a copyright. The reason
was that to grant a monopoly in the underlying art when
no examination of its novelty has ever been made would
be a surprise and a fraud upon the public; that is the
province of letters patent, not of copyright. And that is
precisely the point. No doubt aware that its alleged
original design would never pass the rigorous
examination of a patent application, plaintiff-appellant
fought to foist a fraudulent monopoly on the public by
conveniently resorting to a copyright registration which
merely employs a recordal system without the benefit of
an in-depth examination of novelty.
The principle in Baker vs. Selden was likewise applied in
Muller vs. Triborough Bridge Authority [43 F. Supp. 298
(S.D.N.Y. 1942)]. In this case, Muller had obtained a
copyright over an unpublished drawing entitled Bridge
Approach the drawing showed a novel bridge approach
to unsnarl traffic congestion. The defendant constructed
a bridge approach which was alleged to be an
infringement of the new design illustrated in plaintiffs
drawings. In this case it was held that protection of the
drawing does not extend to the unauthorized duplication
of the object drawn because copyright extends only to
the description or expression of the object and not to the
object itself. It does not prevent one from using the
drawings to construct the object portrayed in the
drawing.
In two other cases, Imperial Homes Corp. v. Lamont,
458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379
F. 2d 84, it was held that there is no copyright
infringement when one who, without being authorized,
uses a copyrighted architectural plan to construct a
structure. This is because the copyright does not extend
to the structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and
Deans copyright over the technical drawings of the
latters advertising display units.
xxx xxx xxx
The Supreme Court trenchantly held in Faberge,
Incorporated vs. Intermediate Appellate Court that the
protective mantle of the Trademark Law extends only to
the goods used by the first user as specified in the
certificate of registration, following the clear mandate
conveyed by Section 20 of Republic Act 166, as
amended, otherwise known as the Trademark Law,
which reads:
SEC. 20. Certification of registration prima facie
evidence of validity.- A certificate of registration of a
mark or trade-name shall be prima facie evidence of the
validity of the registration, the registrants ownership of
the mark or trade-name, and of the registrants exclusive
right to use the same in connection with the goods,
business or services specified in the certificate, subject
to any conditions and limitations stated therein.
(underscoring supplied)
The records show that on June 20, 1983, Pearl and
Dean applied for the registration of the trademark Poster
Ads with the Bureau of Patents, Trademarks, and
Technology Transfer. Said trademark was recorded in
the Principal Register on September 12, 1988 under
Registration No. 41165 covering the following products:
stationeries such as letterheads, envelopes and calling
cards and newsletters.
With this as factual backdrop, we see no legal basis to
the finding of liability on the part of the defendants-
appellants for their use of the words Poster Ads, in the
advertising display units in suit. Jurisprudence has
interpreted Section 20 of the Trademark Law as an
implicit permission to a manufacturer to venture into the
production of goods and allow that producer to
appropriate the brand name of the senior registrant on
goods other than those stated in the certificate of
registration. The Supreme Court further emphasized the
restrictive meaning of Section 20 when it stated, through
Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be
deemed as including goods not specified therein, then a
situation may arise whereby an applicant may be
tempted to register a trademark on any and all goods
which his mind may conceive even if he had never
intended to use the trademark for the said goods. We
believe that such omnibus registration is not
contemplated by our Trademark Law.
While we do not discount the striking similarity between
Pearl and Deans registered trademark and defendants-
appellants Poster Ads design, as well as the parallel use
by which said words were used in the parties respective
advertising copies, we cannot find defendants-appellants
liable for infringement of trademark. Poster Ads was
registered by Pearl and Dean for specific use in its
stationeries, in contrast to defendants-appellants who
used the same words in their advertising display units.
Why Pearl and Dean limited the use of its trademark to
stationeries is simply beyond us. But, having already
done so, it must stand by the consequence of the
registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-
appellants that the words Poster Ads are a simple
contraction of the generic term poster advertising. In the
absence of any convincing proof that Poster Ads has
acquired a secondary meaning in this jurisdiction, we
find that Pearl and Deans exclusive right to the use of
Poster Ads is limited to what is written in its certificate of
registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for
infringement of the trademark Poster Ads.
There being no finding of either copyright or trademark
infringement on the part of SMI and NEMI, the monetary
award granted by the lower court to Pearl and Dean has
no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed
decision is REVERSED and SET ASIDE, and another is
rendered DISMISSING the complaint and counterclaims
in the above-entitled case for lack of merit.[5]
Dissatisfied with the above decision, petitioner P & D
filed the instant petition assigning the following errors for
the Courts consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN
RULING THAT NO COPYRIGHT INFRINGEMENT WAS
COMMITTED BY RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN
RULING THAT NO INFRINGEMENT OF PEARL &
DEANS TRADEMARK POSTER ADS WAS
COMMITTED BY RESPONDENTS SM AND NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED
IN DISMISSING THE AWARD OF THE TRIAL COURT,
DESPITE THE LATTERS FINDING, NOT DISPUTED
BY THE HONORABLE COURT OF APPEALS, THAT
SM WAS GUILTY OF BAD FAITH IN ITS
NEGOTIATION OF ADVERTISING CONTRACTS WITH
PEARL & DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED
IN NOT HOLDING RESPONDENTS SM AND NEMI
LIABLE TO PEARL & DEAN FOR ACTUAL, MORAL &
EXEMPLARY DAMAGES, ATTORNEYS FEES AND
COSTS OF SUIT.[6]
ISSUES
In resolving this very interesting case, we are challenged
once again to put into proper perspective four main
concerns of intellectual property law patents, copyrights,
trademarks and unfair competition arising from
infringement of any of the first three. We shall focus then
on the following issues:
(1) if the engineering or technical drawings of an
advertising display unit (light box) are granted copyright
protection (copyright certificate of registration) by the
National Library, is the light box depicted in such
engineering drawings ipso facto also protected by such
copyright?
(2) or should the light box be registered separately and
protected by a patent issued by the Bureau of Patents
Trademarks and Technology Transfer (now Intellectual
Property Office) in addition to the copyright of the
engineering drawings?
(3) can the owner of a registered trademark legally
prevent others from using such trademark if it is a mere
abbreviation of a term descriptive of his goods, services
or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & Ds complaint was that SMI infringed on its
copyright over the light boxes when SMI had the units
manufactured by Metro and EYD Rainbow Advertising
for its own account. Obviously, petitioners position was
premised on its belief that its copyright over the
engineering drawings extended ipso facto to the light
boxes depicted or illustrated in said drawings. In ruling
that there was no copyright infringement, the Court of
Appeals held that the copyright was limited to the
drawings alone and not to the light box itself. We agree
with the appellate court.
First, petitioners application for a copyright certificate as
well as Copyright Certificate No. PD-R2588 issued by
the National Library on January 20, 1981 clearly stated
that it was for a class O work under Section 2 (O) of PD
49 (The Intellectual Property Decree) which was the
statute then prevailing. Said Section 2 expressly
enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the
following works:
xxxxxxxxx
(O) Prints, pictorial illustrations, advertising copies,
labels, tags, and box wraps;
xxxxxxxxx
Although petitioners copyright certificate was entitled
Advertising Display Units (which depicted the box-type
electrical devices), its claim of copyright infringement
cannot be sustained.
Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights
are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions
specified in the statute.[7] Accordingly, it can cover only
the works falling within the statutory enumeration or
description.[8]
P & D secured its copyright under the classification class
O work. This being so, petitioners copyright protection
extended only to the technical drawings and not to the
light box itself because the latter was not at all in the
category of prints, pictorial illustrations, advertising
copies, labels, tags and box wraps. Stated otherwise,
even as we find that P & D indeed owned a valid
copyright, the same could have referred only to the
technical drawings within the category of pictorial
illustrations. It could not have possibly stretched out to
include the underlying light box. The strict application[9]
of the laws enumeration in Section 2 prevents us from
giving petitioner even a little leeway, that is, even if its
copyright certificate was entitled Advertising Display
Units. What the law does not include, it excludes, and for
the good reason: the light box was not a literary or
artistic piece which could be copyrighted under the
copyright law. And no less clearly, neither could the lack
of statutory authority to make the light box copyrightable
be remedied by the simplistic act of entitling the
copyright certificate issued by the National Library as
Advertising Display Units.
In fine, if SMI and NEMI reprinted P & Ds technical
drawings for sale to the public without license from P &
D, then no doubt they would have been guilty of
copyright infringement. But this was not the case. SMIs
and NEMIs acts complained of by P & D were to have
units similar or identical to the light box illustrated in the
technical drawings manufactured by Metro and EYD
Rainbow Advertising, for leasing out to different
advertisers. Was this an infringement of petitioners
copyright over the technical drawings? We do not think
so.
During the trial, the president of P & D himself admitted
that the light box was neither a literary not an artistic
work but an engineering or marketing invention.[10]
Obviously, there appeared to be some confusion
regarding what ought or ought not to be the proper
subjects of copyrights, patents and trademarks. In the
leading case of Kho vs. Court of Appeals,[11] we ruled
that these three legal rights are completely distinct and
separate from one another, and the protection afforded
by one cannot be used interchangeably to cover items or
works that exclusively pertain to the others:
Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of goods. In
relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual
creations in the literary and artistic domain protected
from the moment of their creation. Patentable inventions,
on the other hand, refer to any technical solution of a
problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its
manufacture and commercial use of the light boxes
without license from petitioner, private respondents
cannot be held legally liable for infringement of P & Ds
copyright over its technical drawings of the said light
boxes, should they be liable instead for infringement of
patent? We do not think so either.
For some reason or another, petitioner never secured a
patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it
really was. And because it had no patent, petitioner
could not legally prevent anyone from manufacturing or
commercially using the contraption. In Creser Precision
Systems, Inc. vs. Court of Appeals,[12] we held that
there can be no infringement of a patent until a patent
has been issued, since whatever right one has to the
invention covered by the patent arises alone from the
grant of patent. x x x (A)n inventor has no common law
right to a monopoly of his invention. He has the right to
make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is
free to copy and use it with impunity. A patent, however,
gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, selling or
using the invention.[13] On the assumption that
petitioners advertising units were patentable inventions,
petitioner revealed them fully to the public by submitting
the engineering drawings thereof to the National Library.
To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection. The
ultimate goal of a patent system is to bring new designs
and technologies into the public domain through
disclosure.[14] Ideas, once disclosed to the public
without the protection of a valid patent, are subject to
appropriation without significant restraint.[15]
On one side of the coin is the public which will benefit
from new ideas; on the other are the inventors who must
be protected. As held in Bauer & Cie vs. ODonnel,[16]
The act secured to the inventor the exclusive right to
make use, and vend the thing patented, and
consequently to prevent others from exercising like
privileges without the consent of the patentee. It was
passed for the purpose of encouraging useful invention
and promoting new and useful inventions by the
protection and stimulation given to inventive genius, and
was intended to secure to the public, after the lapse of
the exclusive privileges granted the benefit of such
inventions and improvements.
The law attempts to strike an ideal balance between the
two interests:
(The p)atent system thus embodies a carefully crafted
bargain for encouraging the creation and disclosure of
new useful and non-obvious advances in technology and
design, in return for the exclusive right to practice the
invention for a number of years. The inventor may keep
his invention secret and reap its fruits indefinitely. In
consideration of its disclosure and the consequent
benefit to the community, the patent is granted. An
exclusive enjoyment is guaranteed him for 17 years, but
upon the expiration of that period, the knowledge of the
invention inures to the people, who are thus enabled to
practice it and profit by its use.[17]
The patent law has a three-fold purpose: first, patent law
seeks to foster and reward invention; second, it
promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the
invention once the patent expires; third, the stringent
requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free use
of the public.[18]
It is only after an exhaustive examination by the patent
office that a patent is issued. Such an in-depth
investigation is required because in rewarding a useful
invention, the rights and welfare of the community must
be fairly dealt with and effectively guarded. To that end,
the prerequisites to obtaining a patent are strictly
observed and when a patent is issued, the limitations on
its exercise are equally strictly enforced. To begin with, a
genuine invention or discovery must be demonstrated
lest in the constant demand for new appliances, the
heavy hand of tribute be laid on each slight technological
advance in art.[19]
There is no such scrutiny in the case of copyrights nor
any notice published before its grant to the effect that a
person is claiming the creation of a work. The law
confers the copyright from the moment of creation[20]
and the copyright certificate is issued upon registration
with the National Library of a sworn ex-parte claim of
creation.
Therefore, not having gone through the arduous
examination for patents, the petitioner cannot exclude
others from the manufacture, sale or commercial use of
the light boxes on the sole basis of its copyright
certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity
without any opportunity for the patent office (IPO) to
scrutinize the light boxs eligibility as a patentable
invention. The irony here is that, had petitioner secured
a patent instead, its exclusivity would have been for 17
years only. But through the simplified procedure of
copyright-registration with the National Library without
undergoing the rigor of defending the patentability of its
invention before the IPO and the public the petitioner
would be protected for 50 years. This situation could not
have been the intention of the law.
In the oft-cited case of Baker vs. Selden[21], the United
States Supreme Court held that only the expression of
an idea is protected by copyright, not the idea itself. In
that case, the plaintiff held the copyright of a book which
expounded on a new accounting system he had
developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant
reproduced forms similar to those illustrated in the
plaintiffs copyrighted book. The US Supreme Court ruled
that:
There is no doubt that a work on the subject of book-
keeping, though only explanatory of well known systems,
may be the subject of a copyright; but, then, it is claimed
only as a book. x x x. But there is a clear distinction
between the books, as such, and the art, which it is,
intended to illustrate. The mere statement of the
proposition is so evident that it requires hardly any
argument to support it. The same distinction may be
predicated of every other art as well as that of
bookkeeping. A treatise on the composition and use of
medicines, be they old or new; on the construction and
use of ploughs or watches or churns; or on the mixture
and application of colors for painting or dyeing; or on the
mode of drawing lines to produce the effect of
perspective, would be the subject of copyright; but no
one would contend that the copyright of the treatise
would give the exclusive right to the art or manufacture
described therein. The copyright of the book, if not
pirated from other works, would be valid without regard
to the novelty or want of novelty of its subject matter.
The novelty of the art or thing described or explained
has nothing to do with the validity of the copyright. To
give to the author of the book an exclusive property in
the art described therein, when no examination of its
novelty has ever been officially made, would be a
surprise and a fraud upon the public. That is the
province of letters patent, not of copyright. The claim to
an invention of discovery of an art or manufacture must
be subjected to the examination of the Patent Office
before an exclusive right therein can be obtained; and a
patent from the government can only secure it.
The difference between the two things, letters patent and
copyright, may be illustrated by reference to the subjects
just enumerated. Take the case of medicines. Certain
mixtures are found to be of great value in the healing art.
If the discoverer writes and publishes a book on the
subject (as regular physicians generally do), he gains no
exclusive right to the manufacture and sale of the
medicine; he gives that to the public. If he desires to
acquire such exclusive right, he must obtain a patent for
the mixture as a new art, manufacture or composition of
matter. He may copyright his book, if he pleases; but
that only secures to him the exclusive right of printing
and publishing his book. So of all other inventions or
discoveries.
The copyright of a book on perspective, no matter how
many drawings and illustrations it may contain, gives no
exclusive right to the modes of drawing described,
though they may never have been known or used
before. By publishing the book without getting a patent
for the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his
book, or any material part thereof, as a book intended to
convey instruction in the art, any person may practice
and use the art itself which he has described and
illustrated therein. The use of the art is a totally different
thing from a publication of the book explaining it. The
copyright of a book on bookkeeping cannot secure the
exclusive right to make, sell and use account books
prepared upon the plan set forth in such book. Whether
the art might or might not have been patented, is a
question, which is not before us. It was not patented,
and is open and free to the use of the public. And, of
course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.
The plausibility of the claim put forward by the
complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in
the books, which have been made the subject of
copyright. In describing the art, the illustrations and
diagrams employed happened to correspond more
closely than usual with the actual work performed by the
operator who uses the art. x x x The description of the
art in a book, though entitled to the benefit of copyright,
lays no foundation for an exclusive claim to the art itself.
The object of the one is explanation; the object of the
other is use. The former may be secured by copyright.
The latter can only be secured, if it can be secured at all,
by letters patent. (underscoring supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark
Poster Ads which petitioners president said was a
contraction of poster advertising. P & D was able to
secure a trademark certificate for it, but one where the
goods specified were stationeries such as letterheads,
envelopes, calling cards and newsletters.[22] Petitioner
admitted it did not commercially engage in or market
these goods. On the contrary, it dealt in electrically
operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at
all specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly
cited Faberge Inc. vs. Intermediate Appellate Court,[23]
where we, invoking Section 20 of the old Trademark
Law, ruled that the certificate of registration issued by
the Director of Patents can confer (upon petitioner) the
exclusive right to use its own symbol only to those goods
specified in the certificate, subject to any conditions and
limitations specified in the certificate x x x. One who has
adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by
others for products which are of a different
description.[24] Faberge, Inc. was correct and was in
fact recently reiterated in Canon Kabushiki Kaisha vs.
Court of Appeals.[25]
Assuming arguendo that Poster Ads could validly qualify
as a trademark, the failure of P & D to secure a
trademark registration for specific use on the light boxes
meant that there could not have been any trademark
infringement since registration was an essential element
thereof.
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair
competition, a situation which was possible even if P & D
had no registration.[26] However, while the petitioners
complaint in the RTC also cited unfair competition, the
trial court did not find private respondents liable therefor.
Petitioner did not appeal this particular point; hence, it
cannot now revive its claim of unfair competition.
But even disregarding procedural issues, we
nevertheless cannot hold respondents guilty of unfair
competition.
By the nature of things, there can be no unfair
competition under the law on copyrights although it is
applicable to disputes over the use of trademarks. Even
a name or phrase incapable of appropriation as a
trademark or tradename may, by long and exclusive use
by a business (such that the name or phrase becomes
associated with the business or product in the mind of
the purchasing public), be entitled to protection against
unfair competition.[27] In this case, there was no
evidence that P & Ds use of Poster Ads was distinctive
or well-known. As noted by the Court of Appeals,
petitioners expert witnesses himself had testified that
Poster Ads was too generic a name. So it was difficult to
identify it with any company, honestly speaking.[28] This
crucial admission by its own expert witness that Poster
Ads could not be associated with P & D showed that, in
the mind of the public, the goods and services carrying
the trademark Poster Ads could not be distinguished
from the goods and services of other entities.
This fact also prevented the application of the doctrine of
secondary meaning. Poster Ads was generic and
incapable of being used as a trademark because it was
used in the field of poster advertising, the very business
engaged in by petitioner. Secondary meaning means
that a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market
(because it is geographically or otherwise descriptive)
might nevertheless have been used for so long and so
exclusively by one producer with reference to his article
that, in the trade and to that branch of the purchasing
public, the word or phrase has come to mean that the
article was his property.[29] The admission by petitioners
own expert witness that he himself could not associate
Poster Ads with petitioner P & D because it was too
generic definitely precluded the application of this
exception.
Having discussed the most important and critical issues,
we see no need to belabor the rest.
All told, the Court finds no reversible error committed by
the Court of Appeals when it reversed the Regional Trial
Court of Makati City.
WHEREFORE, the petition is hereby DENIED and the
decision of the Court of Appeals dated May 22, 2001 is
AFFIRMED in toto.
SO ORDERED.
[G.R. No. 161295. June 29, 2005]
JESSIE G. CHING, petitioner, vs. WILLIAM M.
SALINAS, SR., WILLIAM M. SALINAS, JR.,
JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS,
ALONTO SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (Board of Directors and
Officers of WILAWARE PRODUCT CORPORATION),
respondents.
DECISION
CALLEJO, SR., J.:
This petition for review on certiorari assails the
Decision[1] and Resolution[2] of the Court of Appeals
(CA) in CA-G.R. SP No. 70411 affirming the January 3,
2002 and February 14, 2002 Orders[3] of the Regional
Trial Court (RTC) of Manila, Branch 1, which quashed
and set aside Search Warrant Nos. 01-2401 and 01-
2402 granted in favor of petitioner Jessie G. Ching.
Jessie G. Ching is the owner and general manager of
Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as Leaf Spring
Eye Bushing for Automobile made up of plastic.
On September 4, 2001, Ching and Joseph Yu were
issued by the National Library Certificates of Copyright
Registration and Deposit of the said work described
therein as Leaf Spring Eye Bushing for Automobile.[4]
On September 20, 2001, Ching requested the National
Bureau of Investigation (NBI) for police/investigative
assistance for the apprehension and prosecution of
illegal manufacturers, producers and/or distributors of
the works.[5]
After due investigation, the NBI filed applications for
search warrants in the RTC of Manila against William
Salinas, Sr. and the officers and members of the Board
of Directors of Wilaware Product Corporation. It was
alleged that the respondents therein reproduced and
distributed the said models penalized under Sections
177.1 and 177.3 of Republic Act (R.A.) No. 8293. The
applications sought the seizure of the following:
a.) Undetermined quantity of Leaf spring eye bushing for
automobile that are made up of plastic polypropylene;
b.) Undetermined quantity of Leaf spring eye bushing for
automobile that are made up of polyvinyl chloride plastic;
c.) Undetermined quantity of Vehicle bearing cushion
that is made up of polyvinyl chloride plastic;
d.) Undetermined quantity of Dies and jigs, patterns and
flasks used in the manufacture/fabrication of items a to
d;
e.) Evidences of sale which include delivery receipts,
invoices and official receipts.[6]
The RTC granted the application and issued Search
Warrant Nos. 01-2401 and 01-2402 for the seizure of the
aforecited articles.[7] In the inventory submitted by the
NBI agent, it appears that the following articles/items
were seized based on the search warrants:
Leaf Spring eye bushing
a) Plastic Polypropylene
- C190 27 }
- C240 rear 40 }
- C240 front 41 } BAG 1
b) Polyvinyl Chloride Plastic
- C190 13 }
c) Vehicle bearing cushion
- center bearing cushion 11 }
Budder for C190 mold 8 }
Diesel Mold
a) Mold for spring eye bushing rear 1 set
b) Mold for spring eye bushing front 1 set
c) Mold for spring eye bushing for C190 1 set
d) Mold for C240 rear 1 piece of the
set
e) Mold for spring eye bushing for L300 2 sets
f) Mold for leaf spring eye bushing C190
with metal 1 set
g) Mold for vehicle bearing cushion 1 set[8]
The respondents filed a motion to quash the search
warrants on the following grounds:
2. The copyright registrations were issued in violation of
the Intellectual Property Code on the ground that:
a) the subject matter of the registrations are not artistic
or literary;
b) the subject matter of the registrations are spare parts
of automobiles meaning there (sic) are original parts that
they are designed to replace. Hence, they are not
original.[9]
The respondents averred that the works covered by the
certificates issued by the National Library are not artistic
in nature; they are considered automotive spare parts
and pertain to technology. They aver that the models are
not original, and as such are the proper subject of a
patent, not copyright.[10]
In opposing the motion, the petitioner averred that the
court which issued the search warrants was not the
proper forum in which to articulate the issue of the
validity of the copyrights issued to him. Citing the ruling
of the Court in Malaloan v. Court of Appeals,[11] the
petitioner stated that a search warrant is merely a
judicial process designed by the Rules of Court in
anticipation of a criminal case. Until his copyright was
nullified in a proper proceeding, he enjoys rights of a
registered owner/holder thereof.
On January 3, 2002, the trial court issued an Order[12]
granting the motion, and quashed the search warrant on
its finding that there was no probable cause for its
issuance. The court ruled that the work covered by the
certificates issued to the petitioner pertained to solutions
to technical problems, not literary and artistic as
provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been
denied by the trial courts Order of February 14, 2002,
the petitioner filed a petition for certiorari in the CA,
contending that the RTC had no jurisdiction to delve into
and resolve the validity of the copyright certificates
issued to him by the National Library. He insisted that his
works are covered by Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner averred that
the copyright certificates are prima facie evidence of its
validity, citing the ruling of the United States Court of
Appeals in Wildlife Express Corporation v. Carol Wright
Sales, Inc.[13] The petitioner asserted that the
respondents failed to adduce evidence to support their
motion to quash the search warrants. The petitioner
noted that respondent William Salinas, Jr. was not being
honest, as he was able to secure a similar copyright
registration of a similar product from the National Library
on January 14, 2002.
On September 26, 2003, the CA rendered judgment
dismissing the petition on its finding that the RTC did not
commit any grave abuse of its discretion in issuing the
assailed order, to wit:
It is settled that preliminarily, there must be a finding that
a specific offense must have been committed to justify
the issuance of a search warrant. In a number of cases
decided by the Supreme Court, the same is explicitly
provided, thus:
The probable cause must be in connection with one
specific offense, and the judge must, before issuing the
warrant, personally examine in the form of searching
questions and answers, in writing and under oath, the
complainant and any witness he may produce, on facts
personally known to them and attach to the record their
sworn statements together with any affidavit submitted.
In the determination of probable cause, the court must
necessarily resolve whether or not an offense exists to
justify the issuance or quashal of the search warrant.
In the instant case, the petitioner is praying for the
reinstatement of the search warrants issued, but
subsequently quashed, for the offense of Violation of
Class Designation of Copyrightable Works under Section
177.1 in relation to Section 177.3 of Republic Act 8293,
when the objects subject of the same, are patently not
copyrightable.
It is worthy to state that the works protected under the
Law on Copyright are: literary or artistic works (Sec. 172)
and derivative works (Sec. 173). The Leaf Spring Eye
Bushing and Vehicle Bearing Cushion fall on neither
classification. Accordingly, if, in the first place, the item
subject of the petition is not entitled to be protected by
the law on copyright, how can there be any violation?[14]
The petitioners motion for reconsideration of the said
decision suffered the same fate. The petitioner forthwith
filed the present petition for review on certiorari,
contending that the revocation of his copyright
certificates should be raised in a direct action and not in
a search warrant proceeding.
The petitioner posits that even assuming ex argumenti
that the trial court may resolve the validity of his
copyright in a proceeding to quash a search warrant for
allegedly infringing items, the RTC committed a grave
abuse of its discretion when it declared that his works
are not copyrightable in the first place. He claims that
R.A. No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, which took effect on
January 1, 1998, provides in no uncertain terms that
copyright protection automatically attaches to a work by
the sole fact of its creation, irrespective of its mode or
form of expression, as well as of its content, quality or
purpose.[15] The law gives a non-inclusive definition of
work as referring to original intellectual creations in the
literary and artistic domain protected from the moment of
their creation; and includes original ornamental designs
or models for articles of manufacture, whether or not
registrable as an industrial design and other works of
applied art under Section 172.1(h) of R.A. No. 8293.
As such, the petitioner insists, notwithstanding the
classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works
which may have a bearing on the utility aspect to which
the petitioners utility designs were classified. Moreover,
according to the petitioner, what the Copyright Law
protects is the authors intellectual creation, regardless of
whether it is one with utilitarian functions or incorporated
in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not
provide that the intended use or use in industry of an
article eligible for patent bars or invalidates its
registration under the Law on Copyright. The test of
protection for the aesthetic is not beauty and utility, but
art for the copyright and invention of original and
ornamental design for design patents.[16] In like
manner, the fact that his utility designs or models for
articles of manufacture have been expressed in the field
of automotive parts, or based on something already in
the public domain does not automatically remove them
from the protection of the Law on Copyright.[17]
The petitioner faults the CA for ignoring Section 218 of
R.A. No. 8293 which gives the same presumption to an
affidavit executed by an author who claims copyright
ownership of his work.
The petitioner adds that a finding of probable cause to
justify the issuance of a search warrant means merely a
reasonable suspicion of the commission of the offense. It
is not equivalent to absolute certainty or a finding of
actual and positive cause.[18] He assists that the
determination of probable cause does not concern the
issue of whether or not the alleged work is copyrightable.
He maintains that to justify a finding of probable cause in
the issuance of a search warrant, it is enough that there
exists a reasonable suspicion of the commission of the
offense.
The petitioner contends that he has in his favor the
benefit of the presumption that his copyright is valid;
hence, the burden of overturning this presumption is on
the alleged infringers, the respondents herein. But this
burden cannot be carried in a hearing on a proceeding to
quash the search warrants, as the issue therein is
whether there was probable cause for the issuance of
the search warrant. The petitioner concludes that the
issue of probable cause should be resolved without
invalidating his copyright.
In their comment on the petition, the respondents aver
that the work of the petitioner is essentially a technical
solution to the problem of wear and tear in automobiles,
the substitution of materials, i.e., from rubber to plastic
matter of polyvinyl chloride, an oil resistant soft texture
plastic material strong enough to endure pressure
brought about by the vibration of the counter bearing and
thus brings bushings. Such work, the respondents
assert, is the subject of copyright under Section 172.1 of
R.A. No. 8293. The respondents posit that a technical
solution in any field of human activity which is novel may
be the subject of a patent, and not of a copyright. They
insist that the certificates issued by the National Library
are only certifications that, at a point in time, a certain
work was deposited in the said office. Furthermore, the
registration of copyrights does not provide for automatic
protection. Citing Section 218.2(b) of R.A. No. 8293, the
respondents aver that no copyright is said to exist if a
party categorically questions its existence and legality.
Moreover, under Section 2, Rule 7 of the Implementing
Rules of R.A. No. 8293, the registration and deposit of
work is not conclusive as to copyright outlay or the time
of copyright or the right of the copyright owner. The
respondents maintain that a copyright exists only when
the work is covered by the protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the
issue whether the petitioners utility models are
copyrightable and, if so, whether he is the owner of a
copyright over the said models. It bears stressing that
upon the filing of the application for search warrant, the
RTC was duty-bound to determine whether probable
cause existed, in accordance with Section 4, Rule 126 of
the Rules of Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. A search
warrant shall not issue but upon probable cause in
connection with one specific offense to be determined
personally by the judge after examination under oath or
affirmation of the complainant and the witnesses he may
produce, and, particularly, describing the place to be
searched and the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC
QC, Br. 93,[19] the Court held that in the determination
of probable cause, the court must necessarily resolve
whether or not an offense exists to justify the issuance of
a search warrant or the quashal of one already issued by
the court. Indeed, probable cause is deemed to exist
only where facts and circumstances exist which could
lead a reasonably cautious and prudent man to believe
that an offense has been committed or is being
committed. Besides, in Section 3, Rule 126 of the Rules
of Criminal Procedure, a search warrant may be issued
for the search and seizure of personal property (a)
subject of the offense; (b) stolen or embezzled and other
proceeds or fruits of the offense; or (c) used or intended
to be used as the means of committing an offense.
The RTC is mandated under the Constitution and Rules
of Criminal Procedure to determine probable cause. The
court cannot abdicate its constitutional obligation by
refusing to determine whether an offense has been
committed.[20] The absence of probable cause will
cause the outright nullification of the search warrant.[21]
For the RTC to determine whether the crime for
infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was
burdened to prove that (a) respondents Jessie Ching
and Joseph Yu were the owners of copyrighted material;
and (b) the copyrighted material was being copied and
distributed by the respondents. Thus, the ownership of a
valid copyright is essential.[22]
Ownership of copyrighted material is shown by proof of
originality and copyrightability. By originality is meant
that the material was not copied, and evidences at least
minimal creativity; that it was independently created by
the author and that it possesses at least same minimal
degree of creativity.[23] Copying is shown by proof of
access to copyrighted material and substantial similarity
between the two works.[24] The applicant must thus
demonstrate the existence and the validity of his
copyright because in the absence of copyright
protection, even original creation may be freely
copied.[25]
By requesting the NBI to investigate and, if feasible, file
an application for a search warrant for infringement
under R.A. No. 8293 against the respondents, the
petitioner thereby authorized the RTC (in resolving the
application), to delve into and determine the validity of
the copyright which he claimed he had over the utility
models. The petitioner cannot seek relief from the RTC
based on his claim that he was the copyright owner over
the utility models and, at the same time, repudiate the
courts jurisdiction to ascertain the validity of his claim
without running afoul to the doctrine of estoppel.
To discharge his burden, the applicant may present the
certificate of registration covering the work or, in its
absence, other evidence.[26] A copyright certificate
provides prima facie evidence of originality which is one
element of copyright validity. It constitutes prima facie
evidence of both validity and ownership[27] and the
validity of the facts stated in the certificate.[28] The
presumption of validity to a certificate of copyright
registration merely orders the burden of proof. The
applicant should not ordinarily be forced, in the first
instance, to prove all the multiple facts that underline the
validity of the copyright unless the respondent,
effectively challenging them, shifts the burden of doing
so to the applicant.[29] Indeed, Section 218.2 of R.A.
No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or
other subject matter to which the action relates if the
defendant does not put in issue the question whether
copyright subsists in the work or other subject matter;
and
(b) Where the subsistence of the copyright is
established, the plaintiff shall be presumed to be the
owner of the copyright if he claims to be the owner of the
copyright and the defendant does not put in issue the
question of his ownership.
A certificate of registration creates no rebuttable
presumption of copyright validity where other evidence in
the record casts doubt on the question. In such a case,
validity will not be presumed.[30]
To discharge his burden of probable cause for the
issuance of a search warrant for violation of R.A. No.
8293, the petitioner-applicant submitted to the RTC
Certificate of Copyright Registration Nos. 2001-197 and
2001-204 dated September 3, 2001 and September 4,
2001, respectively, issued by the National Library
covering work identified as Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion both classified
under Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. 172.1. Literary
and artistic works, hereinafter referred to as works, are
original intellectual creations in the literary and artistic
domain protected from the moment of their creation and
shall include in particular:
...
(h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art.
Related to the provision is Section 171.10, which
provides that a work of applied art is an artistic creation
with utilitarian functions or incorporated in a useful
article, whether made by hand or produced on an
industrial scale.
But, as gleaned from the specifications appended to the
application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for
Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial
bore that is centrally located and provided with a
perpendicular flange on one of its ends and a cylindrical
metal jacket surrounding the peripheral walls of said
body, with the bushing made of plastic that is either
polyvinyl chloride or polypropylene.[31] Likewise, the
Vehicle Bearing Cushion is illustrated as a bearing
cushion comprising a generally semi-circular body
having a central hole to secure a conventional bearing
and a plurality of ridges provided therefore, with said
cushion bearing being made of the same plastic
materials.[32] Plainly, these are not literary or artistic
works. They are not intellectual creations in the literary
and artistic domain, or works of applied art. They are
certainly not ornamental designs or one having
decorative quality or value.
It bears stressing that the focus of copyright is the
usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is
a work of art.[33] Works for applied art include all original
pictorials, graphics, and sculptural works that are
intended to be or have been embodied in useful article
regardless of factors such as mass production,
commercial exploitation, and the potential availability of
design patent protection.[34]
As gleaned from the description of the models and their
objectives, these articles are useful articles which are
defined as one having an intrinsic utilitarian function that
is not merely to portray the appearance of the article or
to convey information. Indeed, while works of applied art,
original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial
design are not.[35] A useful article may be copyrightable
only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that
can be identified separately from, and are capable of
existing independently of the utilitarian aspects of the
article.
We agree with the contention of the petitioner (citing
Section 171.10 of R.A. No. 8293), that the authors
intellectual creation, regardless of whether it is a creation
with utilitarian functions or incorporated in a useful article
produced on an industrial scale, is protected by
copyright law. However, the law refers to a work of
applied art which is an artistic creation. It bears stressing
that there is no copyright protection for works of applied
art or industrial design which have aesthetic or artistic
features that cannot be identified separately from the
utilitarian aspects of the article.[36] Functional
components of useful articles, no matter how artistically
designed, have generally been denied copyright
protection unless they are separable from the useful
article.[37]
In this case, the petitioners models are not works of
applied art, nor artistic works. They are utility models,
useful articles, albeit with no artistic design or value.
Thus, the petitioner described the utility model as
follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-
springs of automobile are made of hard rubber. These
rubber bushings after a time, upon subjecting them to so
much or intermittent pressure would eventually wore
(sic) out that would cause the wobbling of the leaf spring.
The primary object of this utility model, therefore, is to
provide a leaf-spring eye bushing for automobile that is
made up of plastic.
Another object of this utility model is to provide a leaf-
spring eye bushing for automobiles made of polyvinyl
chloride, an oil resistant soft texture plastic or
polypropylene, a hard plastic, yet both causes cushion to
the leaf spring, yet strong enough to endure pressure
brought about by the up and down movement of said
leaf spring.
Yet, an object of this utility model is to provide a leaf-
spring eye bushing for automobiles that has a much
longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-
spring eye bushing for automobiles that has a very
simple construction and can be made using simple and
ordinary molding equipment.
A further object of this utility model is to provide a leaf-
spring eye bushing for automobile that is supplied with a
metal jacket to reinforce the plastic eye bushing when in
engaged with the steel material of the leaf spring.
These and other objects and advantages will come to
view and be understood upon a reading of the detailed
description when taken in conjunction with the
accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye
bushing according to the present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another
embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment;
and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings
wherein like reference numerals designated same parts
throughout, there is shown a utility model for a leaf-
spring eye bushing for automobile generally designated
as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally
cylindrical body 11 having a co-axial bore 12 centrally
provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing
10 is provided with a perpendicular flange 13 on one of
its ends and a cylindrical metal jacket 14 surrounding the
peripheral walls 15 of said body 11. When said leaf-
spring bushing 10 is installed, the metal jacket 14 acts
with the leaf-spring eye (not shown), which is also made
of steel or cast steel. In effect, the bushing 10 will not be
directly in contact with steel, but rather the metal jacket,
making the life of the bushing 10 longer than those
without the metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic,
preferably polyvinyl chloride, an oil resistant soft texture
plastic or a hard polypropylene plastic, both are capable
to endure the pressure applied thereto, and, in effect,
would lengthen the life and replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the
co-axial bore 12 of said bushing 10 is insertably provided
with a steel tube 17 to reinforce the inner portion thereof.
This steel tube 17 accommodates or engages with the
leaf-spring bolt (not shown) connecting the leaf spring
and the automobiles chassis.
Figures 4 and 5 show another embodiment wherein the
leaf eye bushing 10 is elongated and cylindrical as to its
construction. Said another embodiment is also made of
polypropylene or polyvinyl chloride plastic material. The
steel tube 17 and metal jacket 14 may also be applied to
this embodiment as an option thereof.[38]
VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for
vehicle propeller shafts are made of hard rubber. These
rubber bushings after a time, upon subjecting them to so
much or intermittent pressure would eventually be worn
out that would cause the wobbling of the center bearing.
The primary object of this utility model therefore is to
provide a vehicle-bearing cushion that is made up of
plastic.
Another object of this utility model is to provide a vehicle
bearing cushion made of polyvinyl chloride, an oil
resistant soft texture plastic material which causes
cushion to the propellers center bearing, yet strong
enough to endure pressure brought about by the
vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-
bearing cushion that has a much longer life span than
rubber bushings.
Still an object of this utility model is to provide a vehicle
bearing cushion that has a very simple construction and
can be made using simple and ordinary molding
equipment.
These and other objects and advantages will come to
view and be understood upon a reading of the detailed
description when taken in conjunction with the
accompanying drawings.
Figure 1 is a perspective view of the present utility model
for a vehicle-bearing cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing,
wherein like reference numeral designate same parts
throughout, there is shown a utility model for a vehicle-
bearing cushion generally designated as reference
numeral 10.
Said bearing cushion 10 comprises of a generally semi-
circular body 11, having central hole 12 to house a
conventional bearing (not shown). As shown in Figure 1,
said body 11 is provided with a plurality of ridges 13
which serves reinforcing means thereof.
The subject bearing cushion 10 is made of polyvinyl
chloride, a soft texture oil and chemical resistant plastic
material which is strong, durable and capable of
enduring severe pressure from the center bearing
brought about by the rotating movement of the propeller
shaft of the vehicle.[39]
A utility model is a technical solution to a problem in any
field of human activity which is new and industrially
applicable. It may be, or may relate to, a product, or
process, or an improvement of any of the aforesaid.[40]
Essentially, a utility model refers to an invention in the
mechanical field. This is the reason why its object is
sometimes described as a device or useful object.[41] A
utility model varies from an invention, for which a patent
for invention is, likewise, available, on at least three
aspects: first, the requisite of inventive step[42] in a
patent for invention is not required; second, the
maximum term of protection is only seven years[43]
compared to a patent which is twenty years,[44] both
reckoned from the date of the application; and third, the
provisions on utility model dispense with its substantive
examination[45] and prefer for a less complicated
system.
Being plain automotive spare parts that must conform to
the original structural design of the components they
seek to replace, the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion are not ornamental. They lack
the decorative quality or value that must characterize
authentic works of applied art. They are not even artistic
creations with incidental utilitarian functions or works
incorporated in a useful article. In actuality, the personal
properties described in the search warrants are
mechanical works, the principal function of which is utility
sans any aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing
and Vehicle Bearing Cushion as included in the catch-all
phrase other literary, scholarly, scientific and artistic
works in Section 172.1(a) of R.A. No. 8293. Applying the
principle of ejusdem generis which states that where a
statute describes things of a particular class or kind
accompanied by words of a generic character, the
generic word will usually be limited to things of a similar
nature with those particularly enumerated, unless there
be something in the context of the state which would
repel such inference,[46] the Leaf Spring Eye Bushing
and Vehicle Bearing Cushion are not copyrightable,
being not of the same kind and nature as the works
enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor
of the petitioner despite the issuance of the certificates
of copyright registration and the deposit of the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion.
Indeed, in Joaquin, Jr. v. Drilon[47] and Pearl & Dean
(Phil.), Incorporated v. Shoemart, Incorporated,[48] the
Court ruled that:
Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right granted
by the statute, and not simply a pre-existing right
regulated by it. Being a statutory grant, the rights are
only such as the statute confers, and may be obtained
and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the
statute. Accordingly, it can cover only the works falling
within the statutory enumeration or description.
That the works of the petitioner may be the proper
subject of a patent does not entitle him to the issuance
of a search warrant for violation of copyright laws. In Kho
v. Court of Appeals[49] and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated,[50] the Court
ruled that these copyright and patent rights are
completely distinct and separate from one another, and
the protection afforded by one cannot be used
interchangeably to cover items or works that exclusively
pertain to the others. The Court expounded further, thus:
Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of goods. In
relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original intellectual
creations in the literary and artistic domain protected
from the moment of their creation. Patentable inventions,
on the other hand, refer to any technical solution of a
problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.
The petitioner cannot find solace in the ruling of the
United States Supreme Court in Mazer v. Stein[51] to
buttress his petition. In that case, the artifacts involved in
that case were statuettes of dancing male and female
figures made of semi-vitreous china. The controversy
therein centered on the fact that although copyrighted as
works of art, the statuettes were intended for use and
used as bases for table lamps, with electric wiring,
sockets and lampshades attached. The issue raised was
whether the statuettes were copyright protected in the
United States, considering that the copyright applicant
intended primarily to use them as lamp bases to be
made and sold in quantity, and carried such intentions
into effect. At that time, the Copyright Office interpreted
the 1909 Copyright Act to cover works of artistic
craftsmanship insofar as their form, but not the utilitarian
aspects, were concerned. After reviewing the history and
intent of the US Congress on its copyright legislation and
the interpretation of the copyright office, the US
Supreme Court declared that the statuettes were held
copyrightable works of art or models or designs for
works of art. The High Court ruled that:
Works of art (Class G) (a) In General. This class
includes works of artistic craftsmanship, in so far as their
form but not their mechanical or utilitarian aspects are
concerned, such as artistic jewelry, enamels, glassware,
and tapestries, as well as all works belonging to the fine
arts, such as paintings, drawings and sculpture.
So we have a contemporaneous and long-continued
construction of the statutes by the agency charged to
administer them that would allow the registration of such
a statuette as is in question here.[52]
The High Court went on to state that [t]he dichotomy of
protection for the aesthetic is not beauty and utility but
art for the copyright and the invention of original and
ornamental design for design patents. Significantly, the
copyright office promulgated a rule to implement Mazer
to wit:
[I]f the sole intrinsic function of an article is its utility, the
fact that the work is unique and attractively shaped will
not qualify it as a work of art.
In this case, the bushing and cushion are not works of
art. They are, as the petitioner himself admitted, utility
models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant
petition is hereby DENIED for lack of merit. The assailed
Decision and Resolution of the Court of Appeals in CA-
G.R. SP No. 70411 are AFFIRMED. Search Warrant
Nos. 01-2401 and 01-2402 issued on October 15, 2001
are ANNULLED AND SET ASIDE. Costs against the
petitioner.
SO ORDERED.
G.R. No. 195835, March 14, 2016
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, Petitioners, v. LIM ENG CO,
Respondent.
DECISION
REYES, J.:
This is a petition for review on certiorari1 under Rule 45
of the Rules of Court, assailing the Decision2 dated July
9, 2010 and Resolution3 dated February 24, 2011 of the
Court of Appeals (CA) in CA-G.R. SP No. 95471, which
annulled the Resolutions dated March 10, 20064 and
May 25, 20065 of the Department of Justice (DOJ) in I.S.
No. 2004-925, finding no probable cause for copyright
infringement against Sison Olano, Sergio Ong, Marilyn
Go and Jap Fuk Hai (petitioners) and directing the
withdrawal of the criminal information filed against them.
The Antecedents
The petitioners are the officers and/or directors of
Metrotech Steel Industries, Inc. (Metrotech).6 Lim Eng
Co (respondent), on the other hand, is the Chairman of
LEC Steel Manufacturing Corporation (LEC), a company
which specializes in architectural metal manufacturing.7
Sometime in 2002, LEC was invited by the architects of
the Manansala Project (Project), a high-end residential
building in Rockwell Center, Makati City, to submit
design/drawings and specifications for interior and
exterior hatch doors. LEC complied by submitting on
July 16, 2002, shop plans/drawings, including the
diskette therefor, embodying the designs and
specifications required for the metal hatch doors.8
After a series of consultations and revisions, the final
shop plans/drawings were submitted by LEC on January
15, 2004 and thereafter copied and transferred to the
title block of Ski-First Balfour Joint Venture (SKI-FB), the
Project's contractor, and then stamped approved for
construction on February 3, 2004.9
LEC was thereafter subcontracted by SKI-FB, to
manufacture and install interior and exterior hatch doors
for the 7th to 22nd floors of the Project based on the final
shop plans/drawings.10
Sometime thereafter, LEC learned that Metrotech was
also subcontracted to install interior and exterior hatch
doors for the Project's 23rd to 41st floors.11
On June 24, 2004, LEC demanded Metrotech to cease
from infringing its intellectual property rights. Metrotech,
however, insisted that no copyright infringement was
committed because the hatch doors it manufactured
were patterned in accordance with the drawings
provided by SKI-FB.12

On July 2, 2004, LEC deposited with the National Library
the final shop plans/drawings of the designs and
specifications for the interior and exterior hatch doors of
the Project.13 On July 6, 2004, LEC was issued a
Certificate of Copyright Registration and Deposit
showing that it is the registered owner of plans/drawings
for interior and exterior hatch doors under Registration
Nos. 1-2004-13 and 1-2004-14, respectively.14 This
copyright pertains to class work "I" under Section 172 of
Republic Act (R.A.) No. 8293, The Intellectual Property
Code of the Philippines, which covers "illustrations,
maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or
science."
On December 9, 2004, LEC was issued another
Certificate of Copyright Registration and Deposit
showing that it is the registered owner of plans/drawings
for interior and exterior hatch doors under Registration
Nos. H-2004-566 and H-2004-56715 which is classified
under Section 172(h) of R.A. No. 8293 as "original
ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art."
When Metrotech still refused to stop fabricating hatch
doors based on LEC's shop plans/drawings, the latter
sought the assistance of the National Bureau of
Investigation (NBI) which in turn applied for a search
warrant before the Regional Trial Court (RTC) of Quezon
City, Branch 24. The application was granted on August
13, 2004 thus resulting in the confiscation of finished and
unfinished metal hatch doors as well as machines used
in fabricating and manufacturing hatch doors from the
premises of Metrotech.16
On August 13, 2004, the respondent filed a Complaint-
Affidavit17 before the DOJ against the petitioners for
copyright infringement. In the meantime or on
September 8, 2004, the RTC quashed the search
warrant on the ground that copyright infringement was
not established.18
Traversing the complaint, the petitioners admitted
manufacturing hatch doors for the Project. They denied,
however, that they committed copyright infringement and
averred that the hatch doors they manufactured were
functional inventions that are proper subjects of patents
and that the records of the Intellectual Property Office
reveal that there is no patent, industrial design or utility
model registration on LEC's hatch doors. Metrotech
further argued that the manufacturing of hatch doors per
se is not copyright infringement because copyright
protection does not extend to the objects depicted in the
illustrations and plans. Moreover, there is no artistic or
ornamental expression embodied in the subject hatch
doors that would subject them to copyright protection.19
Resolutions of the DOJ
In a Resolution20 dated August 18, 2005, the
investigating prosecutor dismissed the respondent's
complaint based on inadequate evidence showing that:
(1) the petitioners committed the prohibited acts under
Section 177 of R.A. No. 8293; and (2) the interior and
exterior hatch doors of the petitioners are among the
classes of copyrightable work enumerated in Sections
172 and 173 of the same law.21
Adamant, the respondent filed a petition for review
before the DOJ but it was also denied due course in the
Resolution22 dated November 16, 2005.
Upon the respondent's motion for reconsideration,
however, the Resolution23 dated January 27, 2006 of
the DOJ reversed and set aside the Resolution dated
August 18, 2005 and directed the Chief State Prosecutor
to file the appropriate information for copyright
infringement against the petitioners.24 The DOJ
reasoned that the pieces of evidence adduced show that
the subject hatch doors are artistic or ornamental with
distinctive hinges, door and jamb, among others. The
petitioners were not able to sufficiently rebut these
allegations and merely insisted on the non-artistic nature
of the hatch doors. The DOJ further held that probable
cause was established insofar as the artistic nature of
the hatch doors and based thereon the act of the
petitioners in manufacturing or causing to manufacture
hatch doors similar to those of the respondent can be
considered as unauthorized reproduction; hence,
copyright infringement under Section 177.1 in relation to
Section 216 of R.A. No. 8293.25cralawred
Aggrieved, the petitioners moved for reconsideration.
This time, the DOJ made a complete turn around by
granting the motion, vacating its Resolution dated
January 27, 2006 and declaring that the evidence on
record did not establish probable cause because the
subject hatch doors were plainly metal doors with
functional components devoid of any aesthetic or artistic
features. Accordingly, the DOJ Resolution26 dated
March 10, 2006 disposed as follows:
chanRoblesvirtualLawlibrary
WHEREFORE, finding cogent reason to reverse the
assailed resolution, the motion for reconsideration is
GRANTED finding no probable cause against the
[petitioners]. Consequently, the City Prosecutor of
Manila is hereby directed to cause the withdrawal of the
information, if any has been filed in court, and to report
the action taken thereon within TEN (10) DAYS from
receipt hereof.
SO ORDERED.
[ G.R. No. 11937, April 01, 1918 ]
PEDRO SERRANO LAKTAW, PLAINTIFF AND
APPELLANT, VS. MAMERTO PAGLINAWAN,
DEFENDANT AND APPELLEE.
DECISION
ARAULLO, J.:
In the complaint presented in the Court of First Instance
of the City of Manila on February 20, 1915, it was
alleged: (1) That the plaintiff was, according to the laws
regulating literary properties, the registered owner and
author of a literary work entitled Diccionario Hispano-
Tagalog (Spanish-Tagalog Dictionary) published in the
City of Manila in 1889 by the printing establishment La
Opinion, and a copy of which was attached to the
complaint, as Exhibit A; (2) that the defendant, without
the consent of the plaintiff, reproduced said literary work,
improperly copied the greater part thereof in the work
published by him and entitled Diccionariong Kastila-
Tagalog (Spanish-Tagalog Dictionary), a copy of which
was also attached to the complaint as Exhibit B; (3) that
said act of the defendant, which is a violation of article 7
of the Law of January 10, 1879, on Intellectual Property,
caused irreparable injuries to the plaintiff, who was
surprised when, on publishing his new work entitled
Diccionario Tagalog-Hispano (Tagalog-Spanish
Dictionary) he learned of the fact, and (4) that the
damages occasioned to the plaintiff by the publication of
defendant's work amounted to $10,000. The plaintiff
therefore prayed the court to order the defendant to
withdraw from sale all stock of the work herein identified
as Exhibit B and to pay the plaintiff the sum of $10,000,
with costs.
The defendant in his answer denied generally each and
every allegation of the complaint and prayed the court to
absolve him from the complaint. After trial and the
introduction of evidence by both parties, the court on
August 20, 1915, rendered judgment, absolving the
defendant from the complaint, but without making any
special pronouncement as to costs. The plaintiff moved
for a new trial on the ground that the judgment was
against the law and the weight of the evidence. Said
motion having been overruled, plaintiff excepted to the
order overruling it, and appealed the case to the
Supreme Court upon a bill of exceptions.
The ground of the decision appealed from is that a
comparison of the plaintiff's dictionary with that of the
defendant does not show that the latter is an improper
copy of the former, which has been published and
offered for sale by the plaintiff for about twenty-five years
or more. For this reason the court held that the plaintiff
had no right of action and that the remedy sought by him
could not be granted.
The appellant contends that the court below erred in not
declaring that the defendant had reproduced the
plaintiff's work and that the defendant had violated article
7 of the Law of January 10, 1879, on Intellectual
Property.
Said article provides:
"Nobody may reproduce another person's work without
the owner's consent, even merely to annotate or add
anything to it, or improve any edition thereof."
Therefore, in order that said article may be violated, it is
not necessary, as the court below seems to have
understood, that a work should be an improper copy of
another work previously published. It is enough that
another's work has been reproduced without the consent
of the owner, even though it be only to annotate, add
something to it, or improve any edition thereof.
Upon making a careful and minute comparison of Exhibit
A, the dictionary written and published by the plaintiff,
and Exhibit B, written and published by the defendant,
and, taking into account the memorandum (fols. 55 to
59) presented by the defendant, in which he enumerates
the words and terms which, according to him, are in his
dictionary but not in that of the plaintiff, and viceversa,
and the equivalents or definitions given by the defendant
which are not similar to those given by the plaintiff, as
well as the new Tagalog words which are in the
dictionary of the defendant but not in that of the plaintiff;
and considering the notes, Exhibit C, first series,
presented by the plaintiff, in which the terms copied by
the defendant from the plaintiff's dictionary are
enumerated in detail and in relation to each letter of the
alphabet and in which the plaintiff's own words and
terms are set forth, with a summary, at the foot of each
group of letters, which shows the number of initial
Spanish words contained in the defendant's dictionary,
the words that are his own and the fact that the
remaining ones are truly copied from the plaintiff's "H"
dictionary considering all of these facts, we come to a 357
conclusion completely different and contrary to that of
the trial court, for said evidence clearly shows: 64

That, of the Spanish words in the defendant's dictionary, "I"

Exhibit B, which correspond to each letter of the 814
alphabet, those that are enumerated below have been
copied and reproduced from the plaintiff's dictionary, 328
with the exception of those that are stated to be the
defendant's own. "J"
Letter 113
Words
Defendant's own 25
"A"
1,184 "K"
11
231
11
"B"
364 "L"
502
28
94
"C"
660 "LL"
36
261
2
"CH"
76 "M"
994
10
225
"D"
874 "N"
259
231
53
"E"
880 "Ñ"
6
301
2
"F"
383 "O"
317
152
67
"G"
302 "P"
803
111
358
3,108
"Q"
84 Therefore, of the 23,560 Spanish words in the
defendant's dictionary, after deducting 17 words
11 corresponding to the letters K and X (for the plaintiff has
no words corresponding to them), only 3,108 words are
"R" the defendant's own, or, what is the same thing, the
847 defendant has added only this number of words to those
that are in the plaintiff's dictionary, he having reproduced
140 or copied the remaining 20,452 words.

"S" That the defendant also literally reproduced and copied

746 for the Spanish words in his dictionary, the equivalents,
definitions and different meanings in Tagalog, given in
118 plaintiff's dictionary, having reproduced, as to some
words, everything that appears in the plaintiff's dictionary
"T" for similar Spanish words, although as to some he made
591 some additions of his own. Said copies and
reproductions are numerous as may be seen, by
147 comparing both dictionaries and using as a guide or
index the defendant's memorandum and notes, first
"U" series, Exhibit C, in which, as to each word, the
107 similarities and differences between them are set forth in
detail.
15 That the printer's errors in the plaintiff's dictionary as to
the expression of some words in Spanish as well as their
"V" equivalents in Tagalog are also reproduced, a fact which
342 shows that the defendant, in preparing his dictionary,
literally copied those Spanish words and their meanings
96 and equivalents in Tagalog from the plaintiff's dictionary.
The trial court has chosen at random, as is stated in the
"X" judgment appealed from, some words from said
6 dictionaries in making the comparison on which its
conclusion is based, and consequently the conclusion
6 reached by it must be inaccurate and not well founded,
because said comparison was not complete.
"Y"
24 In said judgment some words of the defendant's
dictionary are transcribed, the equivalents and meanings
4 of which in Tagalog are exactly the same as those that
are given in the plaintiff's dictionary, with the exception,
"Z" as to some of them, of only one acceptation, which is the
73 defendant's own production. And with respect to the
examples used by the defendant in his dictionary, which,
17 according to the judgment, are not copied from the
plaintiff's the judgment referring to the preposition a (to),
in Tagalog sa it must be noted that the defendant, in
______ giving in his dictionary an example of said preposition,
uses the expression "voy a Tayabas" (I am going to
_____ Tayabas) instead of "voy a Bulacan" (I am going to
Bulacan), as the plaintiff does in his dictionary, or what is
the same thing, that one speaks of Bulacan while the
23,560 other speaks of Tayabas. This does not show that there
was no reproduction or copying by the defendant of the
plaintiff's work, but just the opposite, for he who intends
to imitate the work of another, tries to make it appear in
some manner that there is some difference between the
original and the imitation; and in the example referred to,
with respect to the preposition a (to), that dissimilarity as
to the province designated seems to effect the same
purpose.
In the judgment appealed from, the court gives one to
understand that the reproduction of another's dictionary
without the owner's consent does not constitute a
violation of the Law of Intellectual Property for the court's
idea of a dictionary is stated in the decision itself, as
follows:
"Dictionaries have to be made with the aid of others, and
they are improved by the increase of words. What may
be said of a pasture ground may be said also of a
dictionary, i. e., that it should be common property for all
who may desire to write a new dictionary, and the
defendant has come to this pasture ground and taken
whatever he needed from it in the exercise of a perfect
right."
Such idea is very erroneous, especially in relation to the
Law of Intellectual Property. Danvila y Collado, the
author of the Law of January 10, 1879, on Intellectual
Property, which was discussed and approved in the
Spanish Cortes, in his work entitled La Propiedad
Intelectual (page 362, 1st ed.) states with respect to
dictionaries and in relation to article 7 of said law:
"The protection of the law cannot be denied to the author
of a dictionary, for although words are not the property of
anybody, their definitions, the examples that explain their
sense, and the manner of expressing their different
meanings, may constitute a special work. On this point,
the correctional court of the Seine held, on August 16,
1864, that a dictionary constitutes property, although
some of the words therein are explained by mere
definitions expressed in a few lines and sanctioned by
usage, provided that the greater part of the other words
contain new meanings; new meanings which evidently
may only belong to the first person who published them."
Therefore, the plaintiff, Pedro Serrano, cannot be denied
the legal protection which he seeks, and which is based
on the fact that the dictionary published by him in 1889 is
his property said property right being recognized and
having been granted by article 7, in connection with
article 2, of said law and on the further fact that said
work was reproduced by the defendant without his
permission.
This law was published in the Gaceta de Madrid on
January 12, 1879. It took effect in these Islands six
months after its promulgation or publication, as provided
in article 56 thereof. The body of rules for the execution
of said law having been approved by royal decree of
September 3, 1880, and published in the Gaceta de
Madrid on September 6, 1880 and extended to the
Philippine Islands by royal decree of May 5, 1887, it was
in turn published in the Gaceta de Manila, with the
approval of the Governor-General of the Islands, on
June 15, 1887. Said law of January 10, 1879, and the
rules for its application, were therefore in force in these
Islands when the plaintiff's dictionary was edited and
published in 1889.
It appears from the evidence that although the plaintiff
did not introduce at the trial the certificate of registration
of his property rights to said work which, according to
said rules, was kept in the Central Government of these
Islands, and was issued to him in 1890, the same having
been lost during the revolution against Spain, and no
trace relative to the issuance of said certificate being
obtainable in the Division of Archives of the Executive
Bureau on account of the loss of the corresponding
records, yet as in the first page of said dictionary the
property right of the plaintiff was reserved by means of
the words "Es propiedad del autor" (All rights reserved),
taken in connection with the permission granted him by
the Governor-General on November 24, 1889, to print
and publish said dictionary, after an examination thereof
by the permanent committee of censors, which
examination was made, and the necessary license
granted to him, these facts constitute sufficient proof,
under the circumstances of the case, as they have not
been overcome by any evidence on the part of the
defendant, showing that said plaintiff did not comply with
the requirements of article 36 of said law, which was a
prerequisite to the enjoyment of the benefits thereof
according to the preceding articles, among which is
article 7, which is alleged in the complaint to have been
violated by the defendant.
Even considering that said Law of January 10, 1879,
ceased to operate in these Islands, upon the termination
of Spanish sovereignty and the substitution thereof by
that of the United States of America, the right of the
plaintiff to invoke said law in support of the action
instituted by him in the present case cannot be disputed.
His property right to the work Diccionario Hispano-
Tagalog (Spanish-Tagalog Dictionary), published by him
and edited in 1889, is recognized and sanctioned by said
law, and by virtue thereof, he had acquired a right of
which he cannot be deprived merely because the law is
not in force now or is of no actual application. This
conclusion is necessary to protect intellectual property
rights vested after the sovereignty of Spain was
superseded by that of the United States. It was so held
in the Treaty of Paris of December 10, 1898, between
Spain and the United States, when it declared in article
13 thereof that the rights to literary, artistic, and industrial
properties acquired by the subject of Spain in the Island
of Cuba and in Porto Rico and the Philippines and other
ceded territories, at the time of the exchange of the
ratifications of said Treaty, shall continue to be
respected.
In addition to what has been said, according to article
428 of the Civil Code, the author of a literary, scientific,
or artistic work, has the right to exploit it and dispose
thereof at will. In relation to this right, there exists the
exclusive right of the author, who is the absolute owner
of his own work, to produce it, according to article 2 of
the Law of January 10, 1879, and consequently, nobody
may reproduce it, without his permission, not even to
annotate or add something to it, or to improve any
edition thereof, according to article 7 of said law.
Manresa, in his commentaries on article 429 of the Civil
Code (vol. 3, p. 633, 3d ed.) says that the concrete
statement of the right to literary properties is found in the
legal doctrine according to which nobody may reproduce
another person's work, without the consent of its owner,
or even to annotate or add something to it or to improve
any edition thereof. And on page 616 of said volume,
Manresa says the following:
"He who writes a book, or carves a statue, or makes an
invention, has the absolute right to reproduce or sell it,
just as the owner of land has the absolute right to sell it
or its fruits. But while the owner of land, by selling it and
its fruits, perhaps fully realizes all its economic value, by
receiving its benefits and utilities, which are represented,
for example, by the price, on the other hand the author
of a book, statue or invention, does not reap all the
benefits and advantages of his own property by
disposing of it, for the most important form of realizing
the economic advantages of a book, statue or invention,
consists in the right to reproduce it in similar or like
copies, everyone of which serves to give to the person
reproducing them all the conditions which the original
requires in order to give the author the full enjoyment
thereof. If the author of a book, after its publication,
cannot prevent its reproduction by any person who may
want to reproduce it, then the property right granted him
is reduced to a very insignificant thing and the effort
made in the production of the book is in no way
rewarded."
Indeed the property right recognized and protected by
the Law of January 10, 1879, on Intellectual Property,
would be illusory if, by reason of the fact that said law is
no longer in force as a consequence of the change of
sovereignty in these Islands, the author of a work, who
has the exclusive right to reproduce it, could not prevent
another person from so doing without his consent, and
could not enforce this right through the courts of justice
in order to prosecute the violator of this legal provision
and the defrauder or usurper of his right, for he could not
obtain the full enjoyment of the book or other work, and
his property right thereto, which is recognized by law,
would be reduced, as Manresa says, to an insignificant
thing, if he should have no more right than that of selling
his work.
The reproduction by the defendant without the plaintiff's
consent of the Diccionario Hispano-Tagalog (Spanish-
Tagalog Dictionary), published and edited in the City of
Manila in 1889, by the publication of the Diccionariong
Kastila-Tagalog (Spanish-Tagalog Dictionary), published
in the same city and edited in the press El Progreso in
1913, as appears from Exhibit B, which is attached to
the complaint, has caused the plaintiff, according to the
latter, damages in the sum of $10,000. It is true that it
cannot be denied that the reproduction of the plaintiff's
book by the defendant has caused damages to the
former, but the amount thereof has not been determined
at the trial, for the statement of the plaintiff as to the
proceeds he would have realized if he had printed in
1913 the number of copies of his work which he stated in
his declaration a fact which he did not do because the
defendant had reproduced it was not corroborated in any
way at the trial and is based upon mere calculations
made by the plaintiff himself; for which reason no
pronouncement can be made in this decision as to the
indemnification for damages which the plaintiff seeks to
recover.
The plaintiff having prayed, not for a permanent
injunction against the defendant, as the plaintiff himself
in his brief erroneously states, but for a judgment
ordering the defendant to withdraw from sale all stock of
his work Diccionariong Kastila-Tagalog (Spanish-
Tagalog Dictionary), of which Exhibit B is a copy, and
the suit instituted by said plaintiff being proper, we
reverse the judgment appealed from and order the
defendant to withdraw from sale, as prayed for in the
complaint, all stock of his work above-mentioned, and to
pay the costs of first instance. We make no special
pronouncement as to the costs of this instance. So
ordered.

G.R. No. L-19439 October 31, 1964
MAURO MALANG SANTOS, plaintiff-appellant,
vs.
MCCULLOUGH PRINTING COMPANY, defendant-
appellee.
Tañada Teehankee & Carreon for plaintiff-appellant.
Esposo & Usison for defendant-appellee.
PAREDES, J.:
This is an action for damages based on the provisions of
Articles 721 and 722 of the Civil Code of the Philippines,
allegedly on the unauthorized use, adoption and
appropriation by the defendant company of plaintiff's
intellectual creation or artistic design for a Christmas
Card. The design depicts "a Philippine rural Christmas
time scene consisting of a woman and a child in a nipa
hut adorned with a star-shaped lantern and a man
astride a carabao, beside a tree, underneath which
appears the plaintiff's pen name, Malang."
The complaint alleges that plaintiff Mauro Malang Santos
designed for former Ambassador Felino Neri, for his
personal Christmas Card greetings for the year 1959,
the artistic motif in question. The following year the
defendant McCullough Printing Company, without the
knowledge and authority of plaintiff, displayed the very
design in its album of Christmas cards and offered it for
sale, for a price. For such unauthorized act of defendant,
plaintiff suffered moral damages to the tune of
P16,000.00, because it has placed plaintiff's professional
integrity and ethics under serious question and caused
him grave embarrassment before Ambassador Neri. He
further prayed for the additional sum of P3,000.00 by
way of attorney's fee.
Defendant in answer to the complaint, after some
denials and admissions, moved for a dismissal of the
action claiming that —
(1) The design claimed does not contain a clear
notice that it belonged to him and that he prohibited its
use by others;
(2) The design in question has been published but
does not contain a notice of copyright, as in fact it had
never been copyrighted by the plaintiff, for which reason
this action is barred by the Copyright Law;
(3) The complaint does not state a cause of action.
The documentary evidence submitted were the
Christmas cards, as originally designed by plaintiff, the
design as printed for Ambassador Neri, and the
subsequent reprints ordered by other parties. The case
was submitted an a "Stipulation of Fact" the pertinent
portions of which are hereunder reproduced:
1. That the plaintiff was the artist who created the
design shown in Exhibit A, ...
2. That the design carries the pen name of plaintiff,
MALANG, on its face ... and indicated in Exhibit A, ...
3. That said design was created by plaintiff in the
latter part of 1959 for the personal use of former
Ambassador Felino Neri; ...
4. That former Ambassador Neri had 800 such
cards ... printed by the defendant company in 1959, ...
which he distributed to his friends in December, 1959;
5. That defendant company utilized plaintiff's
design in the year 1960 in its album of Christmas card
samples displayed to its customers ... .
6. That the Sampaguita Pictures, Inc., placed an
order with defendant company for 700 of said cards ...
while Raul Urra & Co. ordered 200 ..., which cards were
sent out by them to their respective correspondent,
clients and friends during the Christmas season of 1960;
7. That defendant company's use of plaintiff's
design was without knowledge, authority or consent of
plaintiff;
8. That said design has not been copyrighted;
9. That plaintiff is an artist of established name,
good-will and reputation. ... .
Upon the basis of the facts stipulated, the lower court
rendered judgment on December 1, 1961, the pertinent
portions of which are recited below:
As a general proposition, there can be no dispute that
the artist acquires ownership of the product of his art. At
the time of its creation, he has the absolute dominion
over it. To help the author protect his rights the copyright
law was enacted.
In intellectual creations, a distinction must be made
between two classes of property rights; the fact of
authorship and the right to publish and/or distribute
copies of the creation. With regard to the first, i.e. the
fact of authorship, the artist cannot be divested of the
same. In other words, he may sell the right to print
hundred of his work yet the purchaser of said right can
never be the author of the creation.
It is the second right, i.e., the right to publish, republish,
multiply and/or distribute copies of the intellectual
creation which the state, through the enactment of the
copyright law, seeks to protect. The author or his
assigns or heirs may have the work copyrighted and
once this is legally accomplished any infringement of the
copyright will render the infringer liable to the owner of
the copyright.
xxx xxx xxx
The plaintiff in this case did not choose to protect his
intellectual creation by a copyright. The fact that the
design was used in the Christmas card of Ambassador
Neri who distributed eight hundred copies thereof among
his friends during the Christmas season of 1959, shows
that the, same was published.
Unless satisfactorily explained a delay in applying for a
copyright, of more than thirty days from the date of its
publication, converts the property to one of public
domain.
Since the name of the author appears in each of the
alleged infringing copies of the intellectual creation, the
defendant may not be said to have pirated the work nor
guilty of plagiarism Consequently, the complaint does
not state a cause of action against the defendant.
xxx xxx ;xxx
WHEREFORE, the Court dismisses the complaint
without pronouncement as to costs.
In his appeal to this Court, plaintiff-appellant pointed five
(5) errors allegedly committed by the trial court, all of
which bring to the fore, the following propositions: (1)
whether plaintiff is entitled to protection, notwithstanding
the, fact that he has not copyrighted his design; (2)
whether the publication is limited, so as to prohibit its
use by others, or it is general publication, and (3)
whether the provisions of the Civil Code or the Copyright
Law should apply in the case. We will undertake a
collective discussion of these propositions.
Under the established facts, We find that plaintiff is not
entitled to a protection, the provision of the Civil Code,
notwithstanding. Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended dated
September 18, 1947) entitled "Rules of Practice in the
Philippines Patent Office relating to the Registration of
Copyright Claims" promulgated pursuant to Republic Act
165, provides, among others, that an intellectual creation
should be copyrighted thirty (30) days after its
publication, if made in Manila, or within sixty (60) day's if
made elsewhere, failure of which renders such creation
public property. In the case at bar, even as of this
moment, there is no copyright for the design in question.
We are not also prepared to accept the contention of
appellant that the publication of the design was a limited
one, or that there was an understanding that only
Ambassador Neri should, have absolute right to use the
same. In the first place, if such were the condition then
Ambassador Neri would be the aggrieved party, and not
the appellant. In the second place, if there was such a
limited publication or prohibition, the same was not
shown on the face of the design. When the purpose is a
limited publication, but the effect is general publication,
irrevocable rights thereupon become vested in the
public, in consequence of which enforcement of the
restriction becomes impossible (Nutt vs. National
Institute, 31 F [2d] 236). It has been held that the effect
of offering for sale a dress, for example manufactured in
accordance with an original design which is not
protected by either a copyright or a patent, is to divest
the owner of his common law rights therein by virtue of
the publication of a 'copy' and thereafter anyone is free
to copy the design or the dress (Fashion Originators
Guild of America v. Federal Trade Commission, 114 F
[2d] 80). When Ambassador Neri distributed 800 copies
of the design in controversy, the plaintiff lost control of
his design and the necessary implication was that there
had been a general publication, there having been no
showing of a clear indication that a limited publication
was intended. The author of a literary composition has a
light to the first publication thereof. He has a right to
determine whether it shall be published at all, and if
published, when, where, by whom, and in what form.
This exclusive right is confined to the first publication.
When once published, it is dedicated to the public, and
the author loses the exclusive right to control
subsequent publication by others, unless the work is
placed under the protection of the copyright law. (See II
Tolentino's Comments on the Civil Code, p. 433, citing
Wright v. Eisle 83 N.Y. Supp. 887.)
CONFORMABLY WITH ALL THE FOREGOING, We
find that the errors assigned have not been committed
by the lower court. The decision appealed from,
therefore, should be, as it is hereby affirmed. Costs
taxed against plaintiff-appellant.
Bengzon, C.J., Bautista Angelo, Concepcion, Reyes,
J.B.L., Barrera, Dizon, Makalintal, Bengzon, J. P., and
Zaldivar JJ., concur.
Regala, J., took no part.
A.M. No. 10-7-17-SC October 15, 2010
IN THE MATTER OF THE CHARGES OF
PLAGIARISM, ETC., AGAINST ASSOCIATE
JUSTICE MARIANO C. DEL CASTILLO.
DECISION
PER CURIAM:
This case is concerned with charges that, in preparing a
decision for the Court, a designated member plagiarized
the works of certain authors and twisted their meanings
to support the decision.
The Background Facts
Petitioners Isabelita C. Vinuya and about 70 other
elderly women, all members of the Malaya Lolas
Organization, filed with the Court in G.R. No. 162230 a
special civil action of certiorari with application for
preliminary mandatory injunction against the Executive
Secretary, the Secretary of Foreign Affairs, the Secretary
of Justice, and the Office of the Solicitor General.
Petitioners claimed that in destroying villages in the
Philippines during World War II, the Japanese army
systematically raped them and a number of other
women, seizing them and holding them in houses or
cells where soldiers repeatedly ravished and abused
them.
Petitioners alleged that they have since 1998 been
approaching the Executive Department, represented by
the respondent public officials, requesting assistance in
filing claims against the Japanese military officers who
established the comfort women stations. But that
Department declined, saying that petitioners’ individual
claims had already been fully satisfied under the Peace
Treaty between the Philippines and Japan.
Petitioners wanted the Court to render judgment,
compelling the Executive Department to espouse their
claims for official apology and other forms of reparations
against Japan before the International Court of Justice
and other international tribunals.
On April 28, 2010, the Court rendered judgment
dismissing petitioners’ action. Justice Mariano C. del
Castillo wrote the decision for the Court. The Court
essentially gave two reasons for its decision: it cannot
grant the petition because, first, the Executive
Department has the exclusive prerogative under the
Constitution and the law to determine whether to
espouse petitioners’ claim against Japan; and, second,
the Philippines is not under any obligation in
international law to espouse their claims.
On June 9, 2010, petitioners filed a motion for
reconsideration of the Court’s decision. More than a
month later on July 18, 2010, counsel for petitioners,
Atty. Herminio Harry Roque, Jr., announced in his online
blog that his clients would file a supplemental petition
"detailing plagiarism committed by the court" under the
second reason it gave for dismissing the petition and
that "these stolen passages were also twisted to support
the court’s erroneous conclusions that the Filipino
comfort women of World War Two have no further legal
remedies." The media gave publicity to Atty. Roque’s
announcement.
On July 19, 2010, petitioners filed the supplemental
motion for reconsideration that Atty. Roque announced.
It accused Justice Del Castillo of "manifest intellectual
theft and outright plagiarism"1 when he wrote the
decision for the Court and of "twisting the true intents of
the plagiarized sources … to suit the arguments of the
assailed Judgment."2 They charged Justice Del Castillo
of copying without acknowledgement certain passages
from three foreign articles:
a. A Fiduciary Theory of Jus Cogens by Evan J. Criddle
and Evan Fox-Descent, Yale Journal of International
Law (2009);
b. Breaking the Silence: Rape as an International Crime
by Mark Ellis, Case Western Reserve Journal of
International Law (2006); and
c. Enforcing Erga Omnes Obligations by Christian J.
Tams, Cambridge University Press (2005).
Petitioners claim that the integrity of the Court’s
deliberations in the case has been put into question by
Justice Del Castillo’s fraud. The Court should thus
"address and disclose to the public the truth about the
manifest intellectual theft and outright plagiarism"3 that
resulted in gross prejudice to the petitioners.
Because of the publicity that the supplemental motion for
reconsideration generated, Justice Del Castillo circulated
a letter to his colleagues, subsequently verified, stating
that when he wrote the decision for the Court he had the
intent to attribute all sources used in it. He said in the
pertinent part:
It must be emphasized that there was every intention to
attribute all sources, whenever due. At no point was
there ever any malicious intent to appropriate another’s
work as our own. We recall that this ponencia was thrice
included in the Agenda of the Court en banc. It was
deliberated upon during the Baguio session on April 13,
2010, April 20, 2010 and in Manila on April 27, 2010.
Each time, suggestions were made which necessitated
major revisions in the draft. Sources were re-studied,
discussions modified, passages added or deleted. The
resulting decision comprises 34 pages with 78 footnotes.
xxxx
As regards the claim of the petitioners that the concepts
as contained in the above foreign materials were
"twisted," the same remains their opinion which we do
not necessarily share.4
On July 27, 2010, the Court En Banc referred the
charges against Justice Del Castillo to its Committee on
Ethics and Ethical Standards, chaired by the Chief
Justice, for investigation and recommendation. The
Chief Justice designated retired Justice Jose C. Vitug to
serve as consultant of the Committee. He graciously
accepted.
On August 2, 2010, the Committee directed petitioners
to comment on Justice Del Castillo’s verified letter.
When this was done, it set the matter for hearing.
In the meantime, on July 19, 2010, Evan Criddle wrote
on his blog that he and his co-author Evan Fox-Descent
(referred to jointly as Criddle-Descent) learned of alleged
plagiarism involving their work but Criddle’s concern,
after reading the supplemental motion for
reconsideration, was the Court’s conclusion that
prohibitions against sexual slavery are not jus cogens or
internationally binding norms that treaties cannot
diminish.
On July 23, 2010, Dr. Mark Ellis wrote the Court
expressing concern that in mentioning his work, the
Court "may have misread the argument [he] made in the
article and employed them for cross purposes." Dr. Ellis
said that he wrote the article precisely to argue for
appropriate legal remedy for victims of war crimes.
On August 8, 2010, after the referral of the matter to the
Committee for investigation, the Dean of the University
of the Philippines (U.P.) College of Law publicized a
Statement from his faculty, claiming that the Vinuya
decision was "an extraordinary act of injustice" and a
"singularly reprehensible act of dishonesty and
misrepresentation by the Highest Court of the land." The
statement said that Justice Del Castillo had a "deliberate
intention to appropriate the original authors’ work," and
that the Court’s decision amounted to "an act of
intellectual fraud by copying works in order to mislead
and deceive."5
On August 18, 2010 Mr. Christian J. Tams wrote Chief
Justice Renato C. Corona that, although relevant
sentences in the Court’s decision were taken from his
work, he was given generic reference only in the
footnote and in connection with a citation from another
author (Bruno Simma) rather than with respect to the
passages taken from his work. He thought that the form
of referencing was inappropriate. Mr. Tams was also
concerned that the decision may have used his work to
support an approach to erga omnes concept (obligations
owed by individual States to the community of nations)
that is not consistent with what he advocated.
On August 26, 2010, the Committee heard the parties’
submissions in the summary manner of administrative
investigations. Counsels from both sides were given
ample time to address the Committee and submit their
evidence. The Committee queried them on these.
Counsels for Justice Del Castillo later asked to be heard
with the other parties not in attendance so they could
make submissions that their client regarded as sensitive
and confidential, involving the drafting process that went
into the making of the Court’s decision in the Vinuya
case. Petitioners’ counsels vigorously objected and the
Committee sustained the objection. After consulting
Justice Del Castillo, his counsels requested the
Committee to hear the Justice’s court researcher, whose
name need not be mentioned here, explain the research
work that went into the making of the decision in the
Vinuya case. The Committee granted the request.
The researcher demonstrated by Power Point
presentation how the attribution of the lifted passages to
the writings of Criddle-Descent and Ellis, found in the
beginning drafts of her report to Justice Del Castillo,
were unintentionally deleted. She tearfully expressed
remorse at her "grievous mistake" and grief for having
"caused an enormous amount of suffering for Justice Del
Castillo and his family."6
On the other hand, addressing the Committee in reaction
to the researcher’s explanation, counsel for petitioners
insisted that lack of intent is not a defense in plagiarism
since all that is required is for a writer to acknowledge
that certain words or language in his work were taken
from another’s work. Counsel invoked the Court’s ruling
in University of the Philippines Board of Regents v. Court
of Appeals and Arokiaswamy William Margaret Celine,7
arguing that standards on plagiarism in the academe
should apply with more force to the judiciary.
After the hearing, the Committee gave the parties ten
days to file their respective memoranda. They filed their
memoranda in due course. Subsequently after
deliberation, the Committee submitted its unanimous
findings and recommendations to the Court.
The Issues
This case presents two issues:
1. Whether or not, in writing the opinion for the Court in
the Vinuya case, Justice Del Castillo plagiarized the
published works of authors Tams, Criddle-Descent, and
Ellis.
2. Whether or not Justice Del Castillo twisted the works
of these authors to make it appear that such works
supported the Court’s position in the Vinuya decision.
The Court’s Rulings
Because of the pending motion for reconsideration in the
Vinuya case, the Court like its Committee on Ethics and
Ethical Standards will purposely avoid touching the
merits of the Court’s decision in that case or the
soundness or lack of soundness of the position it has so
far taken in the same. The Court will deal, not with the
essential merit or persuasiveness of the foreign author’s
works, but how the decision that Justice Del Castillo
wrote for the Court appropriated parts of those works
and for what purpose the decision employed the same.
At its most basic, plagiarism means the theft of another
person’s language, thoughts, or ideas. To plagiarize, as
it is commonly understood according to Webster, is "to
take (ideas, writings, etc.) from (another) and pass them
off as one’s own."8 The passing off of the work of
another as one’s own is thus an indispensable element
of plagiarism.
The Passages from Tams
Petitioners point out that the Vinuya decision lifted
passages from Tams’ book, Enforcing Erga Omnes
Obligations in International Law (2006) and used them in
Footnote 69 with what the author thought was a mere
generic reference. But, although Tams himself may have
believed that the footnoting in this case was not "an
appropriate form of referencing,"9 he and petitioners
cannot deny that the decision did attribute the source or
sources of such passages. Justice Del Castillo did not
pass off Tams’ work as his own. The Justice primarily
attributed the ideas embodied in the passages to Bruno
Simma, whom Tams himself credited for them. Still,
Footnote 69 mentioned, apart from Simma, Tams’ article
as another source of those ideas.
The Court believes that whether or not the footnote is
sufficiently detailed, so as to satisfy the footnoting
standards of counsel for petitioners is not an ethical
matter but one concerning clarity of writing. The
statement "See Tams, Enforcing Obligations Erga
Omnes in International Law (2005)" in the Vinuya
decision is an attribution no matter if Tams thought that it
gave him somewhat less credit than he deserved. Such
attribution altogether negates the idea that Justice Del
Castillo passed off the challenged passages as his own.
That it would have been better had Justice Del Castillo
used the introductory phrase "cited in" rather than the
phrase "See" would make a case of mere inadvertent
slip in attribution rather than a case of "manifest
intellectual theft and outright plagiarism." If the Justice’s
citations were imprecise, it would just be a case of bad
footnoting rather than one of theft or deceit. If it were
otherwise, many would be target of abuse for every
editorial error, for every mistake in citing pagination, and
for every technical detail of form.
The Passages from Ellis
and Criddle-Descent
Petitioners also attack the Court’s decision for lifting and
using as footnotes, without attribution to the author,
passages from the published work of Ellis. The Court
made the following statement on page 27 of its decision,
marked with Footnote 65 at the end:
We fully agree that rape, sexual slavery, torture, and
sexual violence are morally reprehensible as well as
legally prohibited under contemporary international law.
65 xxx
Footnote 65 appears down the bottom of the page.
Since the lengthy passages in that footnote came almost
verbatim from Ellis’ article,10 such passages ought to
have been introduced by an acknowledgement that they
are from that article. The footnote could very well have
read:
65 In an article, Breaking the Silence: Rape as an
International Crime, Case Western Reserve Journal of
International Law (2006), Mark Ellis said: The concept of
rape as an international crime is relatively new. This is
not to say that rape has never been historically
prohibited, particularly in war. But modern-day sensitivity
to the crime of rape did not emerge until after World War
II. In the Nuremberg Charter, the word rape was not
mentioned. The article on crimes against humanity
explicitly set forth prohibited acts, but rape was not
mentioned by name. (For example, the Treaty of Amity
and Commerce between Prussia and the United States
provides that in time of war all women and children "shall
not be molested in their persons." The Treaty of Amity
and Commerce, Between his Majesty the King of
Prussia and the United States of America, art. 23, Sept.
10, 1785, U.S.-Pruss., 8 Treaties & Other Int'l
Agreements Of The U.S. 78, 85. The 1863 Lieber
Instructions classified rape as a crime of "troop
discipline." (Mitchell, The Prohibition of Rape in
International Humanitarian Law as a Norm of Jus
cogens: Clarifying the Doctrine, 15 Duke J. Comp. Int’l.
L. 219, 224). It specified rape as a capital crime
punishable by the death penalty (Id. at 236). The 1907
Hague Convention protected women by requiring the
protection of their "honour." ("Family honour and rights,
the lives of persons, and private property, as well as
religious convictions and practice, must be respected."
Convention (IV) Respecting the Laws & Customs of War
on Land, art. 46, Oct. 18, 1907. General Assembly
resolution 95 (I) of December 11, 1946 entitled,
"Affirmation of the Principles of International Law
recognized by the Charter of the Nürnberg Tribunal";
General Assembly document A/64/Add.1 of 1946; See
Agreement for the Prosecution and Punishment of the
Major War Criminals of the European Axis, Aug. 8, 1945,
59 Stat. 1544, 82 U.N.T.S. 279. Article 6(c) of the
Charter established crimes against humanity as the
following:
CRIMES AGAINST HUMANITY: namely, murder,
extermination, enslavement, deportation, and other
inhumane acts committed against any civilian
population, before or during the war, or persecutions on
political, racial or religious grounds in execution of or in
connection with any crime within the Jurisdiction of the
Tribunal, whether or not in violation of the domestic law
of the country where perpetrated.
The Nuremberg Judgment did not make any reference to
rape and rape was not prosecuted. (Judge Gabrielle Kirk
McDonald, The International Criminal Tribunals Crime
and Punishment in the International Arena,7 ILSA J. Int’l.
Comp. L. 667, 676.) However, International Military
Tribunal for the Far East prosecuted rape crimes, even
though its Statute did not explicitly criminalize rape. The
Far East Tribunal held General Iwane Matsui,
Commander Shunroku Hata and Foreign Minister Hirota
criminally responsible for a series of crimes, including
rape, committed by persons under their authority. (The
Tokyo Judgment: Judgment Of The International Military
Tribunal For The Far East 445-54 (1977).
The first mention of rape as a specific crime came in
December 1945 when Control Council Law No. 10
included the term rape in the definition of crimes against
humanity. Law No. 10, adopted by the four occupying
powers in Germany, was devised to establish a uniform
basis for prosecuting war criminals in German courts.
(Control Council for Germany, Law No. 10: Punishment
of Persons Guilty of War Crimes, Crimes Against Peace
and Against Humanity, Dec. 20, 1945, 3 Official Gazette
Control Council for Germany 50, 53 (1946))
The 1949 Geneva Convention Relative to the Treatment
of Prisoners of War was the first modern-day
international instrument to establish protections against
rape for women. Geneva Convention Relative to the
Protection of Civilian Persons in Time of War, Aug. 12,
1949, art. 27, 6 U.S.T. 3316, 75 U.N.T.S. 287 (entry into
force Oct. 20, 1950) [hereinafter Fourth Geneva
Convention].Furthermore, the ICC, the ICTY, and the
International Criminal Tribunal for Rwanda (ICTR) have
significantly advanced the crime of rape by enabling it to
be prosecuted as genocide, a war crime, and a crime
against humanity.
But, as it happened, the acknowledgment above or a
similar introduction was missing from Footnote 65.
Next, petitioners also point out that the following eight
sentences and their accompanying footnotes appear in
text on pages 30-32 of the Vinuya decision:
xxx In international law, the term "jus cogens" (literally,
"compelling law") refers to norms that command
peremptory authority, superseding conflicting treaties
and custom. Jus cogens norms are considered
peremptory in the sense that they are mandatory, do not
admit derogation, and can be modified only by general
international norms of equivalent authority.711avvphi1
Early strains of the jus cogens doctrine have existed
since the 1700s,72 but peremptory norms began to
attract greater scholarly attention with the publication of
Alfred von Verdross's influential 1937 article, Forbidden
Treaties in International Law.73 The recognition of jus
cogens gained even more force in the 1950s and 1960s
with the ILC’s preparation of the Vienna Convention on
the Law of Treaties (VCLT).74 Though there was a
consensus that certain international norms had attained
the status of jus cogens,75 the ILC was unable to reach
a consensus on the proper criteria for identifying
peremptory norms.
After an extended debate over these and other theories
of jus cogens, the ILC concluded ruefully in 1963 that
"there is not as yet any generally accepted criterion by
which to identify a general rule of international law as
having the character of jus cogens."76 In a commentary
accompanying the draft convention, the ILC indicated
that "the prudent course seems to be to x x x leave the
full content of this rule to be worked out in State practice
and in the jurisprudence of international tribunals."77
Thus, while the existence of jus cogens in international
law is undisputed, no consensus exists on its
substance,77 beyond a tiny core of principles and
rules.78
Admittedly, the Vinuya decision lifted the above,
including their footnotes, from Criddle-Descent’s article,
A Fiduciary Theory of Jus Cogens.11 Criddle-Descent’s
footnotes were carried into the Vinuya decision’s own
footnotes but no attributions were made to the two
authors in those footnotes.
The Explanation
Unless amply explained, the above lifting from the works
of Ellis and Criddle-Descent could be construed as
plagiarism. But one of Justice Del Castillo’s researchers,
a court-employed attorney, explained how she
accidentally deleted the attributions, originally planted in
the beginning drafts of her report to him, which report
eventually became the working draft of the decision. She
said that, for most parts, she did her research
electronically. For international materials, she sourced
these mainly from Westlaw, an online research service
for legal and law-related materials to which the Court
subscribes.
In the old days, the common practice was that after a
Justice would have assigned a case for study and report,
the researcher would source his materials mostly from
available law books and published articles on print.
When he found a relevant item in a book, whether for
one side of the issue or for the other, he would place a
strip of paper marker on the appropriate page, pencil
mark the item, and place the book on his desk where
other relevant books would have piled up. He would later
paraphrase or copy the marked out passages from some
of these books as he typed his manuscript on a manual
typewriter. This occasion would give him a clear
opportunity to attribute the materials used to their
authors or sources.
With the advent of computers, however, as Justice Del
Castillo’s researcher also explained, most legal
references, including the collection of decisions of the
Court, are found in electronic diskettes or in internet
websites that offer virtual libraries of books and articles.
Here, as the researcher found items that were relevant
to her assignment, she downloaded or copied them into
her "main manuscript," a smorgasbord plate of materials
that she thought she might need. The researcher’s
technique in this case is not too far different from that
employed by a carpenter. The carpenter first gets the
pieces of lumber he would need, choosing the kinds and
sizes suitable to the object he has in mind, say a table.
When ready, he would measure out the portions he
needs, cut them out of the pieces of lumber he had
collected, and construct his table. He would get rid of the
scraps.
Here, Justice Del Castillo’s researcher did just that. She
electronically "cut" relevant materials from books and
journals in the Westlaw website and "pasted" these to a
"main manuscript" in her computer that contained the
issues for discussion in her proposed report to the
Justice. She used the Microsoft Word program.12 Later,
after she decided on the general shape that her report
would take, she began pruning from that manuscript
those materials that did not fit, changing the positions in
the general scheme of those that remained, and adding
and deleting paragraphs, sentences, and words as her
continuing discussions with Justice Del Castillo, her chief
editor, demanded. Parenthetically, this is the standard
scheme that computer-literate court researchers use
everyday in their work.
Justice Del Castillo’s researcher showed the Committee
the early drafts of her report in the Vinuya case and
these included the passages lifted from the separate
articles of Criddle-Descent and of Ellis with proper
attributions to these authors. But, as it happened, in the
course of editing and cleaning up her draft, the
researcher accidentally deleted the attributions.
First Finding
The Court adopts the Committee’s finding that the
researcher’s explanation regarding the accidental
removal of proper attributions to the three authors is
credible. Given the operational properties of the
Microsoft program in use by the Court, the accidental
decapitation of attributions to sources of research
materials is not remote.
For most senior lawyers and judges who are not
computer literate, a familiar example similar to the
circumstances of the present case would probably help
illustrate the likelihood of such an accident happening. If
researcher X, for example, happens to be interested in
"the inalienable character of juridical personality" in
connection with an assignment and if the book of the
learned Civilist, Arturo M. Tolentino, happens to have
been published in a website, researcher X would
probably show interest in the following passage from that
book:
xxx Both juridical capacity and capacity to act are not
rights, but qualities of persons; hence, they cannot be
alienated or renounced.15
xxx
_____________________________
15 3 Von Tuhr 296; 1 Valverde 291.
Because the sentence has a footnote mark (#15) that
attributes the idea to other sources, it is evident that
Tolentino did not originate it. The idea is not a product of
his intellect. He merely lifted it from Von Tuhr and
Valverde, two reputable foreign authors.
When researcher X copies and pastes the above
passage and its footnote into a manuscript-in-the-making
in his computer, the footnote number would, given the
computer program in use, automatically change and
adjust to the footnoting sequence of researcher X’s
manuscript. Thus, if the preceding footnote in the
manuscript when the passage from Tolentino was
pasted on it is 23, Tolentino’s footnote would
automatically change from the original Footnote 15 to
Footnote 24.
But then, to be of use in his materials-gathering scheme,
researcher X would have to tag the Tolentino passage
with a short description of its subject for easy reference.
A suitable subject description would be: "The inalienable
character of juridical personality.23" The footnote mark,
23 From Tolentino, which researcher X attaches to the
subject tag, serves as reminder to him to attribute the
passage in its final form to Tolentino. After the passage
has been tagged, it would now appear like this:
The inalienable character of juridical personality.23
xxx Both juridical capacity and capacity to act are not
rights, but qualities of persons; hence, they cannot be
alienated or renounced.24
xxx
_____________________________
23 From Tolentino.
24 3 Von Tuhr 296; 1 Valverde 291.
The tag is of course temporary and would later have to
go. It serves but a marker to help researcher X
maneuver the passage into the right spot in his final
manuscript.
The mistake of Justice Del Castillo’s researcher is that,
after the Justice had decided what texts, passages, and
citations were to be retained including those from
Criddle-Descent and Ellis, and when she was already
cleaning up her work and deleting all subject tags, she
unintentionally deleted the footnotes that went with such
tags—with disastrous effect.
To understand this, in Tolentino’s example, the
equivalent would be researcher X’s removal during
cleanup of the tag, "The inalienable character of juridical
personality.23," by a simple "delete" operation, and the
unintended removal as well of the accompanying
footnote (#23). The erasure of the footnote eliminates
the link between the lifted passage and its source,
Tolentino’s book. Only the following would remain in the
manuscript:
xxx Both juridical capacity and capacity to act are not
rights, but qualities of persons; hence, they cannot be
alienated or renounced.43
_____________________________
43 3 Von Tuhr 296; 1 Valverde 291.
As it happened, the Microsoft word program does not
have a function that raises an alarm when original
materials are cut up or pruned. The portions that remain
simply blend in with the rest of the manuscript, adjusting
the footnote number and removing any clue that what
should stick together had just been severed.
This was what happened in the attributions to Ellis and
Criddle-Descent. The researcher deleted the subject
tags and, accidentally, their accompanying footnotes that
served as reminder of the sources of the lifted passages.
With 119 sources cited in the decision, the loss of the 2
of them was not easily detectable.
Petitioners point out, however, that Justice Del Castillo’s
verified letter of July 22, 2010 is inconsistent with his
researcher’s claim that the omissions were mere errors
in attribution. They cite the fact that the Justice did not
disclose his researcher’s error in that letter despite the
latter’s confession regarding her mistake even before the
Justice sent his letter to the Chief Justice. By denying
plagiarism in his letter, Justice Del Castillo allegedly
perjured himself and sought to whitewash the case.13
But nothing in the July 22 letter supports the charge of
false testimony. Justice Del Castillo merely explained
"that there was every intention to attribute all sources
whenever due" and that there was never "any malicious
intent to appropriate another’s work as our own," which
as it turns out is a true statement. He recalled how the
Court deliberated upon the case more than once,
prompting major revisions in the draft of the decision. In
the process, "(s)ources were re-studied, discussions
modified, passages added or deleted." Nothing in the
letter suggests a cover-up. Indeed, it did not preclude a
researcher’s inadvertent error.
And it is understandable that Justice Del Castillo did not
initially disclose his researcher’s error. He wrote the
decision for the Court and was expected to take full
responsibility for any lapse arising from its preparation.
What is more, the process of drafting a particular
decision for the Court is confidential, which explained his
initial request to be heard on the matter without the
attendance of the other parties.
Notably, neither Justice Del Castillo nor his researcher
had a motive or reason for omitting attribution for the
lifted passages to Criddle-Descent or to Ellis. The latter
authors are highly respected professors of international
law. The law journals that published their works have
exceptional reputations. It did not make sense to
intentionally omit attribution to these authors when the
decision cites an abundance of other sources. Citing
these authors as the sources of the lifted passages
would enhance rather than diminish their informative
value. Both Justice Del Castillo and his researcher gain
nothing from the omission. Thus, the failure to mention
the works of Criddle-Decent and Ellis was
unquestionably due to inadvertence or pure oversight.
Petitioners of course insist that intent is not material in
committing plagiarism since all that a writer has to do, to
avoid the charge, is to enclose lifted portions with
quotation marks and acknowledge the sources from
which these were taken.14 Petitioners point out that the
Court should apply to this case the ruling in University of
the Philippines Board of Regents v. Court of Appeals
and Arokiaswamy William Margaret Celine.15 They
argue that standards on plagiarism in the academe
should apply with more force to the judiciary.
But petitioners’ theory ignores the fact that plagiarism is
essentially a form of fraud where intent to deceive is
inherent. Their theory provides no room for errors in
research, an unrealistic position considering that there is
hardly any substantial written work in any field of
discipline that is free of any mistake. The theory places
an automatic universal curse even on errors that, as in
this case, have reasonable and logical explanations.
Indeed, the 8th edition of Black’s Law Dictionary defines
plagiarism as the "deliberate and knowing presentation
of another person's original ideas or creative
expressions as one's own."16 Thus, plagiarism
presupposes intent and a deliberate, conscious effort to
steal another’s work and pass it off as one’s own.
Besides, the Court said nothing in U.P. Board of
Regents that would indicate that an intent to pass off
another’s work as one’s own is not required in
plagiarism. The Court merely affirmed the academic
freedom of a university to withdraw a master’s degree
that a student obtained based on evidence that she
misappropriated the work of others, passing them off as
her own. This is not the case here since, as already
stated, Justice Del Castillo actually imputed the
borrowed passages to others.
Second Finding
The Court also adopts the Committee’s finding that the
omission of attributions to Criddle-Descent and Ellis did
not bring about an impression that Justice Del Castillo
himself created the passages that he lifted from their
published articles. That he merely got those passages
from others remains self-evident, despite the accidental
deletion. The fact is that he still imputed the passages to
the sources from which Criddle-Descent and Ellis
borrowed them in the first place.
This is best illustrated in the familiar example above.
After the deletion of the subject tag and, accidentally, its
footnote which connects to the source, the lifted passage
would appear like this:
xxx Both juridical capacity and capacity to act are not
rights, but qualities of persons; hence, they cannot be
alienated or renounced.43
_____________________________
43 3 Von Tuhr 296; 1 Valverde 291.
Although the unintended deletion severed the passage’s
link to Tolentino, the passage remains to be attributed to
Von Tuhr and Valverde, the original sources that
Tolentino himself cites. The text and its footnote
reference cancel out any impression that the passage is
a creation of researcher X. It is the same with the
passages from Criddle-Descent and Ellis. Because such
passages remained attributed by the footnotes to the
authors’ original sources, the omission of attributions to
Criddle-Descent and Ellis gave no impression that the
passages were the creations of Justice Del Castillo. This
wholly negates the idea that he was passing them off as
his own thoughts.
True the subject passages in this case were reproduced
in the Vinuya decision without placing them in quotation
marks. But such passages are much unlike the creative
line from Robert Frost,17 "The woods are lovely, dark,
and deep, but I have promises to keep, and miles to go
before I sleep, and miles to go before I sleep." The
passages here consisted of common definitions and
terms, abridged history of certain principles of law, and
similar frequently repeated phrases that, in the world of
legal literature, already belong to the public realm.
To paraphrase Bast and Samuels,18 while the academic
publishing model is based on the originality of the
writer’s thesis, the judicial system is based on the
doctrine of stare decisis, which encourages courts to cite
historical legal data, precedents, and related studies in
their decisions. The judge is not expected to produce
original scholarship in every respect. The strength of a
decision lies in the soundness and general acceptance
of the precedents and long held legal opinions it draws
from.
Third Finding
Petitioners allege that the decision twisted the passages
from Tams, Criddle-Descent, and Ellis. The Court adopts
the Committee’s finding that this is not so. Indeed, this
allegation of twisting or misrepresentation remains a
mystery to the Court. To twist means "to distort or
pervert the meaning of."19 For example, if one lifts the
lyrics of the National Anthem, uses it in his work, and
declares that Jose Palma who wrote it "did not love his
country," then there is "twisting" or misrepresentation of
what the anthem’s lyrics said. Here, nothing in the
Vinuya decision said or implied that, based on the lifted
passages, authors Tams, Criddle-Descent, and Ellis
supported the Court’s conclusion that the Philippines is
not under any obligation in international law to espouse
Vinuya et al.’s claims.
The fact is that, first, since the attributions to Criddle-
Descent and Ellis were accidentally deleted, it is
impossible for any person reading the decision to
connect the same to the works of those authors as to
conclude that in writing the decision Justice Del Castillo
"twisted" their intended messages. And, second, the
lifted passages provided mere background facts that
established the state of international law at various
stages of its development. These are neutral data that
could support conflicting theories regarding whether or
not the judiciary has the power today to order the
Executive Department to sue another country or whether
the duty to prosecute violators of international crimes
has attained the status of jus cogens.
Considering how it was impossible for Justice Del
Castillo to have twisted the meaning of the passages he
lifted from the works of Tams, Criddle-Descent, and Ellis,
the charge of "twisting" or misrepresentation against him
is to say the least, unkind. To be more accurate,
however, the charge is reckless and obtuse.
No Misconduct
On occasions judges and justices have mistakenly cited
the wrong sources, failed to use quotation marks,
inadvertently omitted necessary information from
footnotes or endnotes. But these do not, in every case,
amount to misconduct. Only errors that are tainted with
fraud, corruption, or malice are subject of disciplinary
action.20 This is not the case here. Justice Del Castillo’s
acts or omissions were not shown to have been impelled
by any of such disreputable motives.21 If the rule were
otherwise, no judge or justice, however competent,
honest, or dedicated he may be, can ever hope to retire
from the judiciary with an unblemished record.22
No Inexcusable Negligence
Finally, petitioners assert that, even if they were to
concede that the omission was the result of plain error,
Justice Del Castillo is nonetheless guilty of gross
inexcusable negligence. They point out that he has full
control and supervision over his researcher and should
not have surrendered the writing of the decision to the
latter.23
But this assumes that Justice Del Castillo abdicated the
writing of the Vinuya decision to his researcher, which is
contrary to the evidence adduced during the hearing. As
his researcher testified, the Justice set the direction that
the research and study were to take by discussing the
issues with her, setting forth his position on those issues,
and reviewing and commenting on the study that she
was putting together until he was completely satisfied
with it.24 In every sense, Justice Del Castillo was in
control of the writing of the report to the Court, which
report eventually became the basis for the decision, and
determined its final outcome.
Assigning cases for study and research to a court
attorney, the equivalent of a "law clerk" in the United
States Supreme Court, is standard practice in the high
courts of all nations. This is dictated by necessity. With
about 80 to 100 cases assigned to a Justice in our Court
each month, it would be truly senseless for him to do all
the studies and research, going to the library, searching
the internet, checking footnotes, and watching the
punctuations. If he does all these by himself, he would
have to allocate at least one to two weeks of work for
each case that has been submitted for decision. The
wheels of justice in the Supreme Court will grind to a halt
under such a proposition.
What is important is that, in this case, Justice Del
Castillo retained control over the writing of the decision
in the Vinuya case without, however, having to look over
his researcher’s shoulder as she cleaned up her draft
report to ensure that she hit the right computer keys. The
Justice’s researcher was after all competent in the field
of assignment given her. She finished law from a leading
law school, graduated third in her class, served as
Editor-in Chief of her school’s Law Journal, and placed
fourth in the bar examinations when she took it. She
earned a master’s degree in International Law and
Human Rights from a prestigious university in the United
States under the Global-Hauser program, which counsel
for petitioners concedes to be one of the top post
graduate programs on International Law in the world.
Justice Del Castillo did not exercise bad judgment in
assigning the research work in the Vinuya case to her.
Can errors in preparing decisions be prevented? Not
until computers cease to be operated by human beings
who are vulnerable to human errors. They are hypocrites
who believe that the courts should be as error-free as
they themselves are.
Incidentally, in the course of the submission of
petitioners’ exhibits, the Committee noted that
petitioners’ Exhibit J, the accusing statement of the
Faculty of the U.P. College of Law on the allegations of
plagiarism and misinterpretation, was a mere dummy.
The whole of the statement was reproduced but the
signatures portion below merely listed the names of 38
faculty members, in solid rows, with the letters "Sgd" or
"signed" printed beside the names without exception.
These included the name of retired Supreme Court
Justice Vicente V. Mendoza, a U.P. professor.
Because the Committee declined to admit a mere
dummy of Exhibit J, it directed Atty. Roque to present
the signed copy within three days of the August 26
hearing.25 He complied. As it turned out, the original
statement was signed by only a minority of the faculty
members on the list. The set of signatories that
appeared like solid teeth in the dummy turned out to be
broken teeth in the original. Since only 37 out of the 81
on the list signed the document, it does not appear to be
a statement of the Faculty but of just some of its
members. And retired Justice V. V. Mendoza did not
sign the statement, contrary to what the dummy
represented. The Committee wondered why the Dean
submitted a dummy of the signed document when U.P.
has an abundance of copying machines.
Since the above circumstances appear to be related to
separate en banc matter concerning the supposed
Faculty statement, there is a need for the Committee to
turn over the signed copy of the same to the en banc for
its consideration in relation to that matter.
WHEREFORE, in view of all of the above, the Court:
1. DISMISSES for lack of merit petitioner Vinuya, et al.’s
charges of plagiarism, twisting of cited materials, and
gross neglect against Justice Mariano C. del Castillo;
2. DIRECTS the Public Information Office to send copies
of this decision to Professors Evan J. Criddle and Evan
Fox-Descent, Dr. Mark Ellis, and Professor Christian J.
Tams at their known addresses;
3. DIRECTS the Clerk of Court to provide all court
attorneys involved in legal research and reporting with
copies of this decision and to enjoin them to avoid
editing errors committed in the Vinuya case while using
the existing computer program especially when the
volume of citations and footnoting is substantial; and

4. Finally, DIRECTS the Clerk of Court to acquire the
necessary software for use by the Court that can prevent
future lapses in citations and attributions.
Further, the Court DIRECTS the Committee on Ethics
and Ethical Standards to turn over to the en banc the
dummy as well as the signed copy of petitioners’ Exhibit
J, entitled "Restoring Integrity," a statement by the
Faculty of the University of the Philippines College of
Law for the en banc’s consideration in relation to the
separate pending matter concerning that supposed
Faculty statement.
SO ORDERED.
A.M. No. 10-7-17-SC February 8, 2011
IN THE MATTER OF THE CHARGES OF
PLAGIARISM, ETC., AGAINST ASSOCIATE
JUSTICE MARIANO C. DEL CASTILLO.
RESOLUTION
PER CURIAM:
Petitioners Isabelita C. Vinuya, et al., all members of the
Malaya Lolas Organization, seek reconsideration of the
decision of the Court dated October 12, 2010 that
dismissed their charges of plagiarism, twisting of cited
materials, and gross neglect against Justice Mariano Del
Castillo in connection with the decision he wrote for the
Court in G.R. No. 162230, entitled Vinuya v. Romulo.1
Mainly, petitioners claim that the Court has by its
decision legalized or approved of the commission of
plagiarism in the Philippines. This claim is absurd. The
Court, like everyone else, condemns plagiarism as the
world in general understands and uses the term.
Plagiarism, a term not defined by statute, has a popular
or common definition. To plagiarize, says Webster, is "to
steal and pass off as one’s own" the ideas or words of
another. Stealing implies malicious taking. Black’s Law
Dictionary, the world’s leading English law dictionary
quoted by the Court in its decision, defines plagiarism as
the "deliberate and knowing presentation of another
person's original ideas or creative expressions as one’s
own."2 The presentation of another person’s ideas as
one’s own must be deliberate or premeditated—a taking
with ill intent.
There is no commonly-used dictionary in the world that
embraces in the meaning of plagiarism errors in
attribution by mere accident or in good faith.
Certain educational institutions of course assume
different norms in its application. For instance, the
Loyola Schools Code of Academic Integrity ordains that
"plagiarism is identified not through intent but through
the act itself. The objective act of falsely attributing to
one’s self what is not one’s work, whether intentional or
out of neglect, is sufficient to conclude that plagiarism
has occurred. Students who plead ignorance or appeal
to lack of malice are not excused."3
But the Court’s decision in the present case does not set
aside such norm. The decision makes this clear, thus:
To paraphrase Bast and Samuels, while the academic
publishing model is based on the originality of the
writer’s thesis, the judicial system is based on the
doctrine of stare decisis, which encourages courts to cite
historical legal data, precedents, and related studies in
their decisions. The judge is not expected to produce
original scholarship in every respect. The strength of a
decision lies in the soundness and general acceptance
of the precedents and long held legal opinions it draws
from.4
Original scholarship is highly valued in the academe and
rightly so. A college thesis, for instance, should contain
dissertations embodying results of original research,
substantiating a specific view.5 This must be so since
the writing is intended to earn for the student an
academic degree, honor, or distinction. He earns no
credit nor deserves it who takes the research of others,
copies their dissertations, and proclaims these as his
own. There should be no question that a cheat deserves
neither reward nor sympathy.
But the policy adopted by schools of disregarding the
element of malicious intent found in dictionaries is
evidently more in the nature of establishing what
evidence is sufficient to prove the commission of such
dishonest conduct than in rewriting the meaning of
plagiarism. Since it would be easy enough for a student
to plead ignorance or lack of malice even as he has
copied the work of others, certain schools have adopted
the policy of treating the mere presence of such copied
work in his paper sufficient objective evidence of
plagiarism. Surely, however, if on its face the student’s
work shows as a whole that he has but committed an
obvious mistake or a clerical error in one of hundreds of
citations in his thesis, the school will not be so
unreasonable as to cancel his diploma.
In contrast, decisions of courts are not written to earn
merit, accolade, or prize as an original piece of work or
art. Deciding disputes is a service rendered by the
government for the public good. Judges issue decisions
to resolve everyday conflicts involving people of flesh
and blood who ache for speedy justice or juridical beings
which have rights and obligations in law that need to be
protected. The interest of society in written decisions is
not that they are originally crafted but that they are fair
and correct in the context of the particular disputes
involved. Justice, not originality, form, and style, is the
object of every decision of a court of law.
There is a basic reason for individual judges of whatever
level of courts, including the Supreme Court, not to use
original or unique language when reinstating the laws
involved in the cases they decide. Their duty is to apply
the laws as these are written. But laws include, under
the doctrine of stare decisis, judicial interpretations of
such laws as are applied to specific situations. Under
this doctrine, Courts are "to stand by precedent and not
to disturb settled point." Once the Court has "laid down a
principle of law as applicable to a certain state of facts, it
will adhere to that principle, and apply it to all future
cases, where facts are substantially the same;
regardless of whether the parties or property are the
same."6
And because judicial precedents are not always clearly
delineated, they are quite often entangled in apparent
inconsistencies or even in contradictions, prompting
experts in the law to build up regarding such matters a
large body of commentaries or annotations that, in
themselves, often become part of legal writings upon
which lawyers and judges draw materials for their
theories or solutions in particular cases. And, because of
the need to be precise and correct, judges and
practitioners alike, by practice and tradition, usually lift
passages from such precedents and writings, at times
omitting, without malicious intent, attributions to the
originators.
Is this dishonest? No. Duncan Webb, writing for the
International Bar Association puts it succinctly. When
practicing lawyers (which include judges) write about the
law, they effectively place their ideas, their language,
and their work in the public domain, to be affirmed,
adopted, criticized, or rejected. Being in the public
domain, other lawyers can thus freely use these without
fear of committing some wrong or incurring some
liability. Thus:
The tendency to copy in law is readily explicable. In law
accuracy of words is everything. Legal disputes often
centre round the way in which obligations have been
expressed in legal documents and how the facts of the
real world fit the meaning of the words in which the
obligation is contained. This, in conjunction with the risk-
aversion of lawyers means that refuge will often be
sought in articulations that have been tried and tested. In
a sense therefore the community of lawyers have
together contributed to this body of knowledge,
language, and expression which is common property
and may be utilized, developed and bettered by
anyone.7
The implicit right of judges to use legal materials
regarded as belonging to the public domain is not unique
to the Philippines. As Joyce C. George, whom Justice
Maria Lourdes Sereno cites in her dissenting opinion,
observed in her Judicial Opinion Writing Handbook:
A judge writing to resolve a dispute, whether trial or
appellate, is exempted from a charge of plagiarism even
if ideas, words or phrases from a law review article,
novel thoughts published in a legal periodical or
language from a party’s brief are used without giving
attribution. Thus judges are free to use whatever
sources they deem appropriate to resolve the matter
before them, without fear of reprisal. This exemption
applies to judicial writings intended to decide cases for
two reasons: the judge is not writing a literary work and,
more importantly, the purpose of the writing is to resolve
a dispute. As a result, judges adjudicating cases are not
subject to a claim of legal plagiarism.8
If the Court were to inquire into the issue of plagiarism
respecting its past decisions from the time of Chief
Justice Cayetano S. Arellano to the present, it is likely to
discover that it has not on occasion acknowledged the
originators of passages and views found in its decisions.
These omissions are true for many of the decisions that
have been penned and are being penned daily by
magistrates from the Court of Appeals, the
Sandiganbayan, the Court of Tax Appeals, the Regional
Trial Courts nationwide and with them, the municipal trial
courts and other first level courts. Never in the judiciary’s
more than 100 years of history has the lack of attribution
been regarded and demeaned as plagiarism.
This is not to say that the magistrates of our courts are
mere copycats. They are not. Their decisions analyze
the often conflicting facts of each case and sort out the
relevant from the irrelevant. They identify and formulate
the issue or issues that need to be resolved and
evaluate each of the laws, rulings, principles, or
authorities that the parties to the case invoke. The
decisions then draw their apt conclusions regarding
whether or not such laws, rulings, principles, or
authorities apply to the particular cases before the Court.
These efforts, reduced in writing, are the product of the
judges’ creativity. It is here—actually the substance of
their decisions—that their genius, originality, and honest
labor can be found, of which they should be proud.
In Vinuya, Justice Del Castillo examined and
summarized the facts as seen by the opposing sides in a
way that no one has ever done. He identified and
formulated the core of the issues that the parties raised.
And when he had done this, he discussed the state of
the law relevant to their resolution. It was here that he
drew materials from various sources, including the three
foreign authors cited in the charges against him. He
compared the divergent views these present as they
developed in history. He then explained why the Court
must reject some views in light of the peculiar facts of
the case and applied those that suit such facts. Finally,
he drew from his discussions of the facts and the law the
right solution to the dispute in the case. On the whole,
his work was original. He had but done an honest work.
The Court will not, therefore, consistent with established
practice in the Philippines and elsewhere, dare permit
the filing of actions to annul the decisions promulgated
by its judges or expose them to charges of plagiarism for
honest work done.
This rule should apply to practicing lawyers as well.
Counsels for the petitioners, like all lawyers handling
cases before courts and administrative tribunals, cannot
object to this. Although as a rule they receive
compensation for every pleading or paper they file in
court or for every opinion they render to clients, lawyers
also need to strive for technical accuracy in their
writings. They should not be exposed to charges of
plagiarism in what they write so long as they do not
depart, as officers of the court, from the objective of
assisting the Court in the administration of justice.
As Duncan Webb said:
In presenting legal argument most lawyers will have
recourse to either previous decisions of the courts,
frequently lifting whole sections of a judge’s words to
lend weight to a particular point either with or without
attribution. The words of scholars are also sometimes
given weight, depending on reputation. Some
encyclopaedic works are given particular authority. In
England this place is given to Halsbury’s Laws of
England which is widely considered authoritative. A
lawyer can do little better than to frame an argument or
claim to fit with the articulation of the law in Halsbury’s.
While in many cases the very purpose of the citation is
to claim the authority of the author, this is not always the
case. Frequently commentary or dicta of lesser standing
will be adopted by legal authors, largely without
attribution.
xxxx
The converse point is that originality in the law is viewed
with skepticism. It is only the arrogant fool or the truly
gifted who will depart entirely from the established
template and reformulate an existing idea in the belief
that in doing so they will improve it. While over time
incremental changes occur, the wholesale abandonment
of established expression is generally considered
foolhardy.9
The Court probably should not have entertained at all
the charges of plagiarism against Justice Del Castillo,
coming from the losing party. But it is a case of first
impression and petitioners, joined by some faculty
members of the University of the Philippines school of
law, have unfairly maligned him with the charges of
plagiarism, twisting of cited materials, and gross neglect
for failing to attribute lifted passages from three foreign
authors. These charges as already stated are false,
applying the meaning of plagiarism as the world in
general knows it.
True, Justice Del Castillo failed to attribute to the foreign
authors materials that he lifted from their works and used
in writing the decision for the Court in the Vinuya case.
But, as the Court said, the evidence as found by its
Ethics Committee shows that the attribution to these
authors appeared in the beginning drafts of the decision.
Unfortunately, as testified to by a highly qualified and
experienced court-employed researcher, she
accidentally deleted the same at the time she was
cleaning up the final draft. The Court believed her since,
among other reasons, she had no motive for omitting the
attribution. The foreign authors concerned, like the
dozens of other sources she cited in her research, had
high reputations in international law.1awphi1
Notably, those foreign authors expressly attributed the
controversial passages found in their works to earlier
writings by others. The authors concerned were not
themselves the originators. As it happened, although the
ponencia of Justice Del Castillo accidentally deleted the
attribution to them, there remained in the final draft of the
decision attributions of the same passages to the earlier ABELLADA, RAUL B. DE MESA, Promulgated:
writings from which those authors borrowed their ideas
in the first place. In short, with the remaining attributions AND ALOYSIUS M. COLAYCO,
after the erroneous clean-up, the passages as it finally
appeared in the Vinuya decision still showed on their Respondents. January 19, 2009
face that the lifted ideas did not belong to Justice Del
Castillo but to others. He did not pass them off as his
own.

With our ruling, the Court need not dwell long on

petitioners’ allegations that Justice Del Castillo had also x -------------------------------------------------------------------------
committed plagiarism in writing for the Court his decision --------------- x
in another case, Ang Ladlad v. Commission on
Elections.10 Petitioners are nit-picking. Upon close
examination and as Justice Del Castillo amply
demonstrated in his comment to the motion for DECISION
reconsideration, he in fact made attributions to passages
in such decision that he borrowed from his sources
although they at times suffered in formatting lapses. YNARES-SANTIAGO, J.:

Considering its above ruling, the Court sees no point in

further passing upon the motion of the Integrated Bar of
the Philippines for leave to file and admit motion for
reconsideration-in-intervention dated January 5, 2011
and Dr. Peter Payoyo’s claim of other instances of
alleged plagiarism in the Vinuya decision.
ACCORDINGLY, the Court DENIES petitioners’ motion
for reconsideration for lack of merit.
SO ORDERED.
This petition for review on certiorari[1] assails the July
12, 2006 Decision[2] of the Court of Appeals in CA-G.R.
SP Nos. 88092 and 90762, which affirmed the
December 20, 2004 Decision of the Director-General of
the Intellectual Property Office (IPO) in Appeal No. 10-
2004-0002. Also assailed is the December 11, 2006
Resolution[3] denying the motion for reconsideration.

Petitioner ABS-CBN Broadcasting Corporation (ABS-

ABS-CBN BROADCASTING G.R. Nos. 175769-70
CBN) is licensed under the laws of the Republic of the
Philippines to engage in television and radio
CORPORATION,
broadcasting.[4] It broadcasts television programs by
Petitioner, Present: wireless means to Metro Manila and nearby provinces,
and by satellite to provincial stations through Channel 2
on Very High Frequency (VHF) and Channel 23 on Ultra
Ynares-Santiago, J. (Chairperson), High Frequency (UHF). The programs aired over
Channels 2 and 23 are either produced by ABS-CBN or
- versus - Austria-Martinez,
purchased from or licensed by other producers.
Chico-Nazario,

Nachura, and ABS-CBN also owns regional television stations which

pattern their programming in accordance with perceived
Leonardo-De Castro,* JJ. demands of the region. Thus, television programs shown
in Metro Manila and nearby provinces are not
PHILIPPINE MULTI-MEDIA SYSTEM,
necessarily shown in other provinces.
INC., CESAR G. REYES, FRANCIS

CHUA (ANG BIAO), MANUEL F.

Respondent Philippine Multi-Media System, Inc. (PMSI)
is the operator of Dream Broadcasting System. It
delivers digital direct-to-home (DTH) television via
satellite to its subscribers all over the Philippines. Herein
individual respondents, Cesar G. Reyes, Francis Chua,
Manuel F. Abellada, Raul B. De Mesa, and Aloysius M.
Colayco, are members of PMSIs Board of Directors.
PMSI was granted a legislative franchise under Republic
Act No. 8630[5] on May 7, 1998 and was given a
Provisional Authority by the National
Telecommunications Commission (NTC) on February 1,
2000 to install, operate and maintain a nationwide DTH
satellite service. When it commenced operations, it
offered as part of its program line-up ABS-CBN
Channels 2 and 23, NBN, Channel 4, ABC Channel 5,
GMA Channel 7, RPN Channel 9, and IBC Channel 13,
together with other paid premium program channels.
However, on April 25, 2001,[6] ABS-CBN demanded for
PMSI to cease and desist from rebroadcasting Channels
2 and 23. On April 27, 2001,[7] PMSI replied that the
rebroadcasting was in accordance with the authority
granted it by NTC and its obligation under NTC
Memorandum Circular No. 4-08-88,[8] Section 6.2 of
which requires all cable television system operators
operating in a community within Grade A or B contours
to carry the television signals of the authorized television
broadcast stations.[9]
Thereafter, negotiations ensued between the parties in
an effort to reach a settlement; however, the
negotiations were terminated on April 4, 2002 by ABS-
CBN allegedly due to PMSIs inability to ensure the
prevention of illegal retransmission and further
rebroadcast of its signals, as well as the adverse effect
of the rebroadcasts on the business operations of its
regional television stations.[10]
On May 13, 2002, ABS-CBN filed with the IPO a
complaint for Violation of Laws Involving Property
Rights, with Prayer for the Issuance of a Temporary
Restraining Order and/or Writ of Preliminary Injunction,
which was docketed as IPV No. 10-2002-0004. It alleged
that PMSIs unauthorized rebroadcasting of Channels 2
and 23 infringed on its broadcasting rights and copyright.
On July 2, 2002, the Bureau of Legal Affairs (BLA) of the
IPO granted ABS-CBNs application for a temporary
restraining order. On July 12, 2002, PMSI suspended its
retransmission of Channels 2 and 23 and likewise filed a
petition for certiorari with the Court of Appeals, which
was docketed as CA-G.R. SP No. 71597.
Subsequently, PMSI filed with the BLA a Manifestation
reiterating that it is subject to the must-carry rule under
Memorandum Circular No. 04-08-88. It also submitted a
letter dated December 20, 2002 of then NTC
Commissioner Armi Jane R. Borje to PMSI stating as
follows:
This refers to your letter dated December 16, 2002
requesting for regulatory guidance from this Commission
in connection with the application and coverage of NTC
Memorandum Circular No. 4-08-88, particularly Section
6 thereof, on mandatory carriage of television broadcast
signals, to the direct-to-home (DTH) pay television
services of Philippine Multi-Media System, Inc. (PMSI).
Preliminarily, both DTH pay television and cable
television services are broadcast services, the only
difference being the medium of delivering such services
(i.e. the former by satellite and the latter by cable). Both
can carry broadcast signals to the remote areas, thus
enriching the lives of the residents thereof through the
dissemination of social, economic, educational
information and cultural programs.
The DTH pay television services of PMSI is equipped to
provide nationwide DTH satellite services. Concededly,
PMSIs DTH pay television services covers very much
wider areas in terms of carriage of broadcast signals,
including areas not reachable by cable television
services thereby providing a better medium of
dissemination of information to the public.
In view of the foregoing and the spirit and intent of NTC
memorandum Circular No. 4-08-88, particularly section 6
thereof, on mandatory carriage of television broadcast
signals, DTH pay television services should be deemed
covered by such NTC Memorandum Circular.
For your guidance. (Emphasis added)[11]
On August 26, 2003, PMSI filed another Manifestation
with the BLA that it received a letter dated July 24, 2003
from the NTC enjoining strict and immediate compliance
with the must-carry rule under Memorandum Circular
No. 04-08-88, to wit:
Dear Mr. Abellada:
Last July 22, 2003, the National Telecommunications
Commission (NTC) received a letter dated July 17, 2003
from President/COO Rene Q. Bello of the International
Broadcasting Corporation (IBC-Channel 13) complaining
that your company, Dream Broadcasting System, Inc.,
has cut-off, without any notice or explanation
whatsoever, to air the programs of IBC-13, a free-to-air
television, to the detriment of the public.
We were told that, until now, this has been going on.
Please be advised that as a direct broadcast satellite
operator, operating a direct-to-home (DTH) broadcasting
system, with a provisional authority (PA) from the NTC,
your company, along with cable television operators, are
mandated to strictly comply with the existing policy of
NTC on mandatory carriage of television broadcast
signals as provided under Memorandum Circular No. 04-
08-88, also known as the Revised Rules and
Regulations Governing Cable Television System in the
Philippines.
This mandatory coverage provision under Section 6.2 of
said Memorandum Circular, requires all cable television
system operators, operating in a community within the
Grade A or B contours to must-carry the television
signals of the authorized television broadcast stations,
one of which is IBC-13. Said directive equally applies to
your company as the circular was issued to give
consumers and the public a wider access to more
sources of news, information, entertainment and other
programs/contents.
This Commission, as the governing agency vested by
laws with the jurisdiction, supervision and control over all
public services, which includes direct broadcast satellite
operators, and taking into consideration the paramount
interest of the public in general, hereby directs you to
immediately restore the signal of IBC-13 in your network
programs, pursuant to existing circulars and regulations
of the Commission.
For strict compliance. (Emphasis added)[12]
Meanwhile, on October 10, 2003, the NTC issued
Memorandum Circular No. 10-10-2003, entitled
Implementing Rules and Regulations Governing
Community Antenna/Cable Television (CATV) and Direct
Broadcast Satellite (DBS) Services to Promote
Competition in the Sector. Article 6, Section 8 thereof
states:
As a general rule, the reception, distribution and/or
transmission by any CATV/DBS operator of any
television signals without any agreement with or
authorization from program/content providers are
prohibited.
On whether Memorandum Circular No. 10-10-2003
amended Memorandum Circular No. 04-08-88, the NTC
explained to PMSI in a letter dated November 3, 2003
that:
To address your query on whether or not the provisions
of MC 10-10-2003 would have the effect of amending
the provisions of MC 4-08-88 on mandatory carriage of
television signals, the answer is in the negative.
xxxx
The Commission maintains that, MC 4-08-88 remains
valid, subsisting and enforceable.
Please be advised, therefore, that as duly licensed
direct-to-home satellite television service provider
authorized by this Commission, your company continues
to be bound by the guidelines provided for under MC 04-
08-88, specifically your obligation under its mandatory
carriage provisions, in addition to your obligations under
MC 10-10-2003. (Emphasis added)
Please be guided accordingly.[13]
On December 22, 2003, the BLA rendered a
decision[14] finding that PMSI infringed the broadcasting
rights and copyright of ABS-CBN and ordering it to
permanently cease and desist from rebroadcasting
Channels 2 and 23.
On February 6, 2004, PMSI filed an appeal with the
Office of the Director-General of the IPO which was
docketed as Appeal No. 10-2004-0002. On December
23, 2004, it also filed with the Court of Appeals a Motion
to Withdraw Petition; Alternatively, Memorandum of the
Petition for Certiorari in CA-G.R. SP No. 71597, which
was granted in a resolution dated February 17, 2005.
On December 20, 2004, the Director-General of the IPO
rendered a decision[15] in favor of PMSI, the dispositive
portion of which states:
WHEREFORE, premises considered, the instant appeal
is hereby GRANTED. Accordingly, Decision No. 2003-01
dated 22 December 2003 of the Director of Bureau of
Legal Affairs is hereby REVERSED and SET ASIDE.
Let a copy of this Decision be furnished the Director of
the Bureau of Legal Affairs for appropriate action, and
the records be returned to her for proper disposition. The
Documentation, Information and Technology Transfer
Bureau is also given a copy for library and reference
purposes.
SO ORDERED.[16]
Thus, ABS-CBN filed a petition for review with prayer for
issuance of a temporary restraining order and writ of
preliminary injunction with the Court of Appeals, which
was docketed as CA-G.R. SP No. 88092.
On July 18, 2005, the Court of Appeals issued a
temporary restraining order. Thereafter, ABS-CBN filed a
petition for contempt against PMSI for continuing to
rebroadcast Channels 2 and 23 despite the restraining
order. The case was docketed as CA- G.R. SP No.
90762.
On November 14, 2005, the Court of Appeals ordered
the consolidation of CA-G.R. SP Nos. 88092 and 90762.
In the assailed Decision dated July 12, 2006, the Court
of Appeals sustained the findings of the Director-General
of the IPO and dismissed both petitions filed by ABS-
CBN.[17]
ABS-CBNs motion for reconsideration was denied,
hence, this petition.
ABS-CBN contends that PMSIs unauthorized
rebroadcasting of Channels 2 and 23 is an infringement
of its broadcasting rights and copyright under the
Intellectual Property Code (IP Code);[18]that
Memorandum Circular No. 04-08-88 excludes DTH
satellite television operators; that the Court of Appeals
interpretation of the must-carry rule violates Section 9 of
Article III[19] of the Constitution because it allows the
taking of property for public use without payment of just
compensation; that the Court of Appeals erred in
dismissing the petition for contempt docketed as CA-
G.R. SP No. 90762 without requiring respondents to file
comment.
Respondents, on the other hand, argue that PMSIs
rebroadcasting of Channels 2 and 23 is sanctioned by
Memorandum Circular No. 04-08-88; that the must-carry
rule under the Memorandum Circular is a valid exercise
of police power; and that the Court of Appeals correctly
dismissed CA-G.R. SP No. 90762 since it found no need
to exercise its power of contempt.
After a careful review of the facts and records of this
case, we affirm the findings of the Director-General of
the IPO and the Court of Appeals.
There is no merit in ABS-CBNs contention that PMSI
violated its broadcasters rights under Section 211 of the
IP Code which provides in part:
Chapter XIV
BROADCASTING ORGANIZATIONS
Sec. 211. Scope of Right. - Subject to the provisions of
Section 212, broadcasting organizations shall enjoy the
exclusive right to carry out, authorize or prevent any of
the following acts:
211.1. The rebroadcasting of their broadcasts;
xxxx
Neither is PMSI guilty of infringement of ABS-CBNs
copyright under Section 177 of the IP Code which states
that copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the
public performance of the work (Section 177.6), and
other communication to the public of the work (Section
177.7).[20]
Section 202.7 of the IP Code defines broadcasting as
the transmission by wireless means for the public
reception of sounds or of images or of representations
thereof; such transmission by satellite is also
broadcasting where the means for decrypting are
provided to the public by the broadcasting organization
or with its consent.
On the other hand, rebroadcasting as defined in Article
3(g) of the International Convention for the Protection of
Performers, Producers of Phonograms and Broadcasting
Organizations, otherwise known as the 1961 Rome
Convention, of which the Republic of the Philippines is a
signatory, [21] is the simultaneous broadcasting by one
broadcasting organization of the broadcast of another
broadcasting organization.
The Director-General of the IPO correctly found that
PMSI is not engaged in rebroadcasting and thus cannot
be considered to have infringed ABS-CBNs broadcasting
rights and copyright, thus:
That the Appellants [herein respondent PMSI]
subscribers are able to view Appellees [herein petitioner
ABS-CBN] programs (Channels 2 and 23) at the same
time that the latter is broadcasting the same is
undisputed. The question however is, would the
Appellant in doing so be considered engaged in
broadcasting. Section 202.7 of the IP Code states that
broadcasting means
the transmission by wireless means for the public
reception of sounds or of images or of representations
thereof; such transmission by satellite is also
broadcasting where the means for decrypting are
provided to the public by the broadcasting organization
or with its consent.
Section 202.7 of the IP Code, thus, provides two
instances wherein there is broadcasting, to wit:
1. The transmission by wireless means for the
public reception of sounds or of images or of
representations thereof; and
2. The transmission by satellite for the public
reception of sounds or of images or of representations
thereof where the means for decrypting are provided to
the public by the broadcasting organization or with its
consent.
It is under the second category that Appellants DTH
satellite television service must be examined since it is
satellite-based. The elements of such category are as
follows:
1. There is transmission of sounds or images
or of representations thereof;
2. The transmission is through satellite;
3. The transmission is for public reception;
and
4. The means for decrypting are provided to
the public by the broadcasting organization or with its
consent.
It is only the presence of all the above elements can a
determination that the DTH is broadcasting and
consequently, rebroadcasting Appellees signals in
violation of Sections 211 and 177 of the IP Code, may
be arrived at.
Accordingly, this Office is of the view that the
transmission contemplated under Section 202.7 of the IP
Code presupposes that the origin of the signals is the
broadcaster. Hence, a program that is broadcasted is
attributed to the broadcaster. In the same manner, the
rebroadcasted program is attributed to the
rebroadcaster.
In the case at hand, Appellant is not the origin nor does
it claim to be the origin of the programs broadcasted by
the Appellee. Appellant did not make and transmit on its
own but merely carried the existing signals of the
Appellee. When Appellants subscribers view Appellees
programs in Channels 2 and 23, they know that the
origin thereof was the Appellee.
Aptly, it is imperative to discern the nature of
broadcasting. When a broadcaster transmits, the signals
are scattered or dispersed in the air. Anybody may pick-
up these signals. There is no restriction as to its number,
type or class of recipients. To receive the signals, one is
not required to subscribe or to pay any fee. One only has
to have a receiver, and in case of television signals, a
television set, and to tune-in to the right
channel/frequency. The definition of broadcasting,
wherein it is required that the transmission is wireless, all
the more supports this discussion. Apparently, the
undiscriminating dispersal of signals in the air is possible
only through wireless means. The use of wire in
transmitting signals, such as cable television, limits the
recipients to those who are connected. Unlike wireless
transmissions, in wire-based transmissions, it is not
enough that one wants to be connected and possesses
the equipment. The service provider, such as cable
television companies may choose its subscribers.
The only limitation to such dispersal of signals in the air
is the technical capacity of the transmitters and other
equipment employed by the broadcaster. While the
broadcaster may use a less powerful transmitter to limit
its coverage, this is merely a business strategy or
decision and not an inherent limitation when
transmission is through cable.

Accordingly, the nature of broadcasting is to scatter the
signals in its widest area of coverage as possible. On
this score, it may be said that making public means that
accessibility is undiscriminating as long as it [is] within
the range of the transmitter and equipment of the
broadcaster. That the medium through which the
Appellant carries the Appellees signal, that is via
satellite, does not diminish the fact that it operates and
functions as a cable television. It remains that the
Appellants transmission of signals via its DTH satellite
television service cannot be considered within the
purview of broadcasting. x x x
xxxx
This Office also finds no evidence on record showing
that the Appellant has provided decrypting means to the
public indiscriminately. Considering the nature of this
case, which is punitive in fact, the burden of proving the
existence of the elements constituting the acts
punishable rests on the shoulder of the complainant.
Accordingly, this Office finds that there is no
rebroadcasting on the part of the Appellant of the
Appellees programs on Channels 2 and 23, as defined
under the Rome Convention.[22]
Under the Rome Convention, rebroadcasting is the
simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting
organization. The Working Paper[23] prepared by the
Secretariat of the Standing Committee on Copyright and
Related Rights defines broadcasting organizations as
entities that take the financial and editorial responsibility
for the selection and arrangement of, and investment in,
the transmitted content.[24] Evidently, PMSI would not
qualify as a broadcasting organization because it does
not have the aforementioned responsibilities imposed
upon broadcasting organizations, such as ABS-CBN.
ABS-CBN creates and transmits its own signals; PMSI
merely carries such signals which the viewers receive in
its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and
23. Likewise, it does not pass itself off as the origin or
author of such programs. Insofar as Channels 2 and 23
are concerned, PMSI merely retransmits the same in
accordance with Memorandum Circular 04-08-88. With
regard to its premium channels, it buys the channels
from content providers and transmits on an as-is basis to
its viewers. Clearly, PMSI does not perform the functions
of a broadcasting organization; thus, it cannot be said
that it is engaged in rebroadcasting Channels 2 and 23.
The Director-General of the IPO and the Court of
Appeals also correctly found that PMSIs services are
similar to a cable television system because the services
it renders fall under cable retransmission, as described
in the Working Paper, to wit:
(G) Cable Retransmission
47. When a radio or television program is being
broadcast, it can be retransmitted to new audiences by
means of cable or wire. In the early days of cable
television, it was mainly used to improve signal
reception, particularly in so-called shadow zones, or to
distribute the signals in large buildings or building
complexes. With improvements in technology, cable
operators now often receive signals from satellites
before retransmitting them in an unaltered form to their
subscribers through cable.
48. In principle, cable retransmission can be either
simultaneous with the broadcast over-the-air or delayed
(deferred transmission) on the basis of a fixation or a
reproduction of a fixation. Furthermore, they might be
unaltered or altered, for example through replacement of
commercials, etc. In general, however, the term
retransmission seems to be reserved for such
transmissions which are both simultaneous and
unaltered.
49. The Rome Convention does not grant rights against
unauthorized cable retransmission. Without such a right,
cable operators can retransmit both domestic and
foreign over the air broadcasts simultaneously to their
subscribers without permission from the broadcasting
organizations or other rightholders and without obligation
to pay remuneration.[25] (Emphasis added)
Thus, while the Rome Convention gives broadcasting
organizations the right to authorize or prohibit the
rebroadcasting of its broadcast, however, this protection
does not extend to cable retransmission. The
retransmission of ABS-CBNs signals by PMSI which
functions essentially as a cable television does not
therefore constitute rebroadcasting in violation of the
formers intellectual property rights under the IP Code.
It must be emphasized that the law on copyright is not
absolute. The IP Code provides that:
Sec. 184. Limitations on Copyright. -
184.1. Notwithstanding the provisions of Chapter V, the
following acts shall not constitute infringement of
copyright:
xxxx
(h) The use made of a work by or under the direction or
control of the Government, by the National Library or by
educational, scientific or professional institutions where
such use is in the public interest and is compatible with
fair use;
The carriage of ABS-CBNs signals by virtue of the must-
carry rule in Memorandum Circular No. 04-08-88 is
under the direction and control of the government though
the NTC which is vested with exclusive jurisdiction to
supervise, regulate and control telecommunications and
broadcast services/facilities in the Philippines.[26] The
imposition of the must-carry rule is within the NTCs
power to promulgate rules and regulations, as public
safety and interest may require, to encourage a larger
and more effective use of communications, radio and
television broadcasting facilities, and to maintain
effective competition among private entities in these
activities whenever the Commission finds it reasonably
feasible.[27] As correctly observed by the Director-
General of the IPO:
Accordingly, the Must-Carry Rule under NTC Circular
No. 4-08-88 falls under the foregoing category of
limitations on copyright. This Office agrees with the
Appellant [herein respondent PMSI] that the Must-Carry
Rule is in consonance with the principles and objectives
underlying Executive Order No. 436,[28] to wit:
The Filipino people must be given wider access to more
sources of news, information, education, sports event
and entertainment programs other than those provided
for by mass media and afforded television programs to
attain a well informed, well-versed and culturally refined
citizenry and enhance their socio-economic growth:
WHEREAS, cable television (CATV) systems could
support or supplement the services provided by
television broadcast facilities, local and overseas, as the
national information highway to the countryside.[29]
The Court of Appeals likewise correctly observed that:
[T]he very intent and spirit of the NTC Circular will
prevent a situation whereby station owners and a few
networks would have unfettered power to make time
available only to the highest bidders, to communicate
only their own views on public issues, people, and to
permit on the air only those with whom they agreed
contrary to the state policy that the (franchise) grantee
like the petitioner, private respondent and other TV
station owners, shall provide at all times sound and
balanced programming and assist in the functions of
public information and education.
This is for the first time that we have a structure that
works to accomplish explicit state policy goals.[30]
Indeed, intellectual property protection is merely a
means towards the end of making society benefit from
the creation of its men and women of talent and genius.
This is the essence of intellectual property laws, and it
explains why certain products of ingenuity that are
concealed from the public are outside the pale of
protection afforded by the law. It also explains why the
author or the creator enjoys no more rights than are
consistent with public welfare.[31]
Further, as correctly observed by the Court of Appeals,
the must-carry rule as well as the legislative franchises
granted to both ABS-CBN and PMSI are in consonance
with state policies enshrined in the Constitution,
specifically Sections 9,[32] 17,[33] and 24[34] of Article II
on the Declaration of Principles and State Policies.[35]
ABS-CBN was granted a legislative franchise under
Republic Act No. 7966, Section 1 of which authorizes it
to construct, operate and maintain, for commercial
purposes and in the public interest, television and radio
broadcasting in and throughout the Philippines x x x.
Section 4 thereof mandates that it shall provide
adequate public service time to enable the government,
through the said broadcasting stations, to reach the
population on important public issues; provide at all
times sound and balanced programming; promote public
participation such as in community programming; assist
in the functions of public information and education x x x.
PMSI was likewise granted a legislative franchise under
Republic Act No. 8630, Section 4 of which similarly
states that it shall provide adequate public service time
to enable the government, through the said broadcasting
stations, to reach the population on important public
issues; provide at all times sound and balanced
programming; promote public participation such as in
community programming; assist in the functions of public
information and education x x x. Section 5, paragraph 2
of the same law provides that the radio spectrum is a
finite resource that is a part of the national patrimony
and the use thereof is a privilege conferred upon the
grantee by the State and may be withdrawn anytime,
after due process.
In Telecom. & Broadcast Attys. of the Phils., Inc. v.
COMELEC,[36] the Court held that a franchise is a mere
privilege which may be reasonably burdened with some
form of public service. Thus:
All broadcasting, whether by radio or by television
stations, is licensed by the government. Airwave
frequencies have to be allocated as there are more
individuals who want to broadcast than there are
frequencies to assign. A franchise is thus a privilege
subject, among other things, to amendment by Congress
in accordance with the constitutional provision that any
such franchise or right granted . . . shall be subject to
amendment, alteration or repeal by the Congress when
the common good so requires.
xxxx
Indeed, provisions for COMELEC Time have been made
by amendment of the franchises of radio and television
broadcast stations and, until the present case was
brought, such provisions had not been thought of as
taking property without just compensation. Art. XII, 11 of
the Constitution authorizes the amendment of franchises
for the common good. What better measure can be
conceived for the common good than one for free air
time for the benefit not only of candidates but even more
of the public, particularly the voters, so that they will be
fully informed of the issues in an election? [I]t is the right
of the viewers and listeners, not the right of the
broadcasters, which is paramount.
Nor indeed can there be any constitutional objection to
the requirement that broadcast stations give free air
time. Even in the United States, there are responsible
scholars who believe that government controls on
broadcast media can constitutionally be instituted to
ensure diversity of views and attention to public affairs to
further the system of free expression. For this purpose,
broadcast stations may be required to give free air time
to candidates in an election. Thus, Professor Cass R.
Sunstein of the University of Chicago Law School, in
urging reforms in regulations affecting the broadcast
industry, writes:
xxxx
In truth, radio and television broadcasting companies,
which are given franchises, do not own the airwaves and
frequencies through which they transmit broadcast
signals and images. They are merely given the
temporary privilege of using them. Since a franchise is a
mere privilege, the exercise of the privilege may
reasonably be burdened with the performance by the
grantee of some form of public service. x x x[37]
There is likewise no merit to ABS-CBNs claim that
PMSIs carriage of its signals is for a commercial
purpose; that its being the countrys top broadcasting
company, the availability of its signals allegedly
enhances PMSIs attractiveness to potential
customers;[38] or that the unauthorized carriage of its
signals by PMSI has created competition between its
Metro Manila and regional stations.
ABS-CBN presented no substantial evidence to prove
that PMSI carried its signals for profit; or that such
carriage adversely affected the business operations of
its regional stations. Except for the testimonies of its
witnesses,[39] no studies, statistical data or information
have been submitted in evidence.
Administrative charges cannot be based on mere
speculation or conjecture. The complainant has the
burden of proving by substantial evidence the allegations
in the complaint.[40] Mere allegation is not evidence,
and is not equivalent to proof.[41]
Anyone in the country who owns a television set and
antenna can receive ABS-CBNs signals for free. Other
broadcasting organizations with free-to-air signals such
as GMA-7, RPN-9, ABC-5, and IBC-13 can likewise be
accessed for free. No payment is required to view the
said channels[42] because these broadcasting networks
do not generate revenue from subscription from their
viewers but from airtime revenue from contracts with
commercial advertisers and producers, as well as from
direct sales.
In contrast, cable and DTH television earn revenues
from viewer subscription. In the case of PMSI, it offers its
customers premium paid channels from content
providers like Star Movies, Star World, Jack TV, and
AXN, among others, thus allowing its customers to go
beyond the limits of Free TV and Cable TV.[43] It does
not advertise itself as a local channel carrier because
these local channels can be viewed with or without DTH
television.
Relevantly, PMSIs carriage of Channels 2 and 23 is
material in arriving at the ratings and audience share of
ABS-CBN and its programs. These ratings help
commercial advertisers and producers decide whether to
buy airtime from the network. Thus, the must-carry rule
is actually advantageous to the broadcasting networks
because it provides them with increased viewership
which attracts commercial advertisers and producers.
On the other hand, the carriage of free-to-air signals
imposes a burden to cable and DTH television providers
such as PMSI. PMSI uses none of ABS-CBNs resources
or equipment and carries the signals and shoulders the
costs without any recourse of charging.[44] Moreover,
such carriage of signals takes up channel space which
can otherwise be utilized for other premium paid
channels.
There is no merit to ABS-CBNs argument that PMSIs
carriage of Channels 2 and 23 resulted in competition
between its Metro Manila and regional stations. ABS-
CBN is free to decide to pattern its regional
programming in accordance with perceived demands of
the region; however, it cannot impose this kind of
programming on the regional viewers who are also
entitled to the free-to-air channels. It must be
emphasized that, as a national broadcasting
organization, one of ABS-CBNs responsibilities is to
scatter its signals to the widest area of coverage as
possible. That it should limit its signal reach for the sole
purpose of gaining profit for its regional stations
undermines public interest and deprives the viewers of
their right to access to information.
Indeed, television is a business; however, the welfare of
the people must not be sacrificed in the pursuit of profit.
The right of the viewers and listeners to the most diverse
choice of programs available is paramount.[45] The
Director-General correctly observed, thus:
The Must-Carry Rule favors both broadcasting
organizations and the public. It prevents cable television
companies from excluding broadcasting organization
especially in those places not reached by signal. Also,
the rule prevents cable television companies from
depriving viewers in far-flung areas the enjoyment of
programs available to city viewers. In fact, this Office
finds the rule more burdensome on the part of the cable
television companies. The latter carries the television
signals and shoulders the costs without any recourse of
charging. On the other hand, the signals that are carried
by cable television companies are dispersed and
scattered by the television stations and anybody with a
television set is free to pick them up.
With its enormous resources and vaunted technological
capabilities, Appellees [herein petitioner ABS-CBN]
broadcast signals can reach almost every corner of the
archipelago. That in spite of such capacity, it chooses to
maintain regional stations, is a business decision. That
the Must-Carry Rule adversely affects the profitability of
maintaining such regional stations since there will be
competition between them and its Metro Manila station is
speculative and an attempt to extrapolate the effects of
the rule. As discussed above, Appellants DTH satellite
television services is of limited subscription. There was
not even a showing on part of the Appellee the number
of Appellants subscribers in one region as compared to
non-subscribing television owners. In any event, if this
Office is to engage in conjecture, such competition
between the regional stations and the Metro Manila
station will benefit the public as such competition will
most likely result in the production of better television
programs.[46]
All told, we find that the Court of Appeals correctly
upheld the decision of the IPO Director-General that
PMSI did not infringe on ABS-CBNs intellectual property
rights under the IP Code. The findings of facts of
administrative bodies charged with their specific field of
expertise, are afforded great weight by the courts, and in
the absence of substantial showing that such findings
are made from an erroneous estimation of the evidence
presented, they are conclusive, and in the interest of
stability of the governmental structure, should not be
disturbed.[47]
Moreover, the factual findings of the Court of Appeals
are conclusive on the parties and are not reviewable by
the Supreme Court. They carry even more weight when
the Court of Appeals affirms the factual findings of a
lower fact-finding body,[48] as in the instant case.
There is likewise no merit to ABS-CBNs contention that
the Memorandum Circular excludes from its coverage
DTH television services such as those provided by
PMSI. Section 6.2 of the Memorandum Circular requires
all cable television system operators operating in a
community within Grade A or B contours to carry the
television signals of the authorized television broadcast
stations.[49] The rationale behind its issuance can be
found in the whereas clauses which state:
Whereas, Cable Television Systems or Community
Antenna Television (CATV) have shown their ability to
offer additional programming and to carry much
improved broadcast signals in the remote areas, thereby
enriching the lives of the rest of the population through
the dissemination of social, economic, educational
information and cultural programs;
Whereas, the national government supports the
promotes the orderly growth of the Cable Television
industry within the framework of a regulated fee
enterprise, which is a hallmark of a democratic society;
Whereas, public interest so requires that monopolies in
commercial mass media shall be regulated or prohibited,
hence, to achieve the same, the cable TV industry is
made part of the broadcast media;
Whereas, pursuant to Act 3846 as amended and
Executive Order 205 granting the National
Telecommunications Commission the authority to set
down rules and regulations in order to protect the public
and promote the general welfare, the National
Telecommunications Commission hereby promulgates
the following rules and regulations on Cable Television
Systems;
The policy of the Memorandum Circular is to carry
improved signals in remote areas for the good of the
general public and to promote dissemination of
information. In line with this policy, it is clear that DTH
television should be deemed covered by the
Memorandum Circular. Notwithstanding the different
technologies employed, both DTH and cable television
have the ability to carry improved signals and promote
dissemination of information because they operate and
function in the same way.
In its December 20, 2002 letter,[50] the NTC explained
that both DTH and cable television services are of a
similar nature, the only difference being the medium of
delivering such services. They can carry broadcast
signals to the remote areas and possess the capability to
enrich the lives of the residents thereof through the
dissemination of social, economic, educational
information and cultural programs. Consequently, while
the Memorandum Circular refers to cable television, it
should be understood as to include DTH television which
provides essentially the same services.
In Eastern Telecommunications Philippines, Inc. v.
International Communication Corporation,[51] we held:
The NTC, being the government agency entrusted with
the regulation of activities coming under its special and
technical forte, and possessing the necessary rule-
making power to implement its objectives, is in the best
position to interpret its own rules, regulations and
guidelines. The Court has consistently yielded and
accorded great respect to the interpretation by
administrative agencies of their own rules unless there is
an error of law, abuse of power, lack of jurisdiction or
grave abuse of discretion clearly conflicting with the
letter and spirit of the law.[52]
With regard to the issue of the constitutionality of the
must-carry rule, the Court finds that its resolution is not
necessary in the disposition of the instant case. One of
the essential requisites for a successful judicial inquiry
into constitutional questions is that the resolution of the
constitutional question must be necessary in deciding
the case.[53] In Spouses Mirasol v. Court of
Appeals,[54] we held:
As a rule, the courts will not resolve the constitutionality
of a law, if the controversy can be settled on other
grounds. The policy of the courts is to avoid ruling on
constitutional questions and to presume that the acts of
the political departments are valid, absent a clear and
unmistakable showing to the contrary. To doubt is to
sustain. This presumption is based on the doctrine of
separation of powers. This means that the measure had
first been carefully studied by the legislative and
executive departments and found to be in accord with
the Constitution before it was finally enacted and
approved.[55]
The instant case was instituted for violation of the IP
Code and infringement of ABS-CBNs broadcasting rights
and copyright, which can be resolved without going into
the constitutionality of Memorandum Circular No. 04-08-
88. As held by the Court of Appeals, the only relevance
of the circular in this case is whether or not compliance
therewith should be considered manifestation of lack of
intent to commit infringement, and if it is, whether such
lack of intent is a valid defense against the complaint of
petitioner.[56]
The records show that petitioner assailed the
constitutionality of Memorandum Circular No. 04-08-88
by way of a collateral attack before the Court of Appeals.
In Philippine National Bank v. Palma,[57] we ruled that
for reasons of public policy, the constitutionality of a law
cannot be collaterally attacked. A law is deemed valid
unless declared null and void by a competent court;
more so when the issue has not been duly pleaded in
the trial court.[58]
As a general rule, the question of constitutionality must
be raised at the earliest opportunity so that if not raised
in the pleadings, ordinarily it may not be raised in the
trial, and if not raised in the trial court, it will not be
considered on appeal.[59] In Philippine Veterans Bank v.
Court of Appeals,[60] we held:
We decline to rule on the issue of constitutionality as all
the requisites for the exercise of judicial review are not
present herein. Specifically, the question of
constitutionality will not be passed upon by the Court
unless, at the first opportunity, it is properly raised and
presented in an appropriate case, adequately argued,
and is necessary to a determination of the case,
particularly where the issue of constitutionality is the very
lis mota presented. x x x[61]
Finally, we find that the dismissal of the petition for
contempt filed by ABS-CBN is in order.
Indirect contempt may either be initiated (1) motu proprio
by the court by issuing an order or any other formal
charge requiring the respondent to show cause why he
should not be punished for contempt or (2) by the filing
of a verified petition, complying with the requirements for
filing initiatory pleadings.[62]
ABS-CBN filed a verified petition before the Court of
Appeals, which was docketed CA G.R. SP No. 90762,
for PMSIs alleged disobedience to the Resolution and
Temporary Restraining Order, both dated July 18, 2005,
issued in CA-G.R. SP No. 88092. However, after the
cases were consolidated, the Court of Appeals did not
require PMSI to comment on the petition for contempt. It
ruled on the merits of CA-G.R. SP No. 88092 and
ordered the dismissal of both petitions.
ABS-CBN argues that the Court of Appeals erred in
dismissing the petition for contempt without having
ordered respondents to comment on the same.
Consequently, it would have us reinstate CA-G.R. No.
90762 and order respondents to show cause why they
should not be held in contempt.
It bears stressing that the proceedings for punishment of
indirect contempt are criminal in nature. The modes of
procedure and rules of evidence adopted in contempt
proceedings are similar in nature to those used in
criminal prosecutions. [63] While it may be argued that
the Court of Appeals should have ordered respondents
to comment, the issue has been rendered moot in light
of our ruling on the merits. To order respondents to
comment and have the Court of Appeals conduct a
hearing on the contempt charge when the main case has
already been disposed of in favor of PMSI would be
circuitous. Where the issues have become moot, there is
no justiciable controversy, thereby rendering the
resolution of the same of no practical use or value.[64]
WHEREFORE, the petition is DENIED. The July 12,
2006 Decision of the Court of Appeals in CA-G.R. SP
Nos. 88092 and 90762, sustaining the findings of the
Director-General of the Intellectual Property Office and
dismissing the petitions filed by ABS-CBN Broadcasting
Corporation, and the December 11, 2006 Resolution
denying the motion for reconsideration, are AFFIRMED.
SO ORDERED.
G.R. No. 176694 July 18, 2014
GMA NETWORK, INC., Petitioner,
vs.
CENTRAL CATV, INC., Respondent.
DECISION
BRION, J.:
We resolve the challenge, under the standards of a Rule
45 petition for review, to the decision1 dated November
14, 2006 and the resolution2 dated February 15, 2007 of
the Court of Appeals (CA) in CA-G.R. SP No. 93439
affirming the order3 dated December 10, 2004 of the
National Telecommunications Commission (NTC)4 that
dismissed the complaint of petitioner GMA Network, Inc.
based on the motion to dismiss by way of demurrer to
evidence of respondent Central CATV, Inc.
THE FACTUAL ANTECEDENTS
Sometime in February 2000, the petitioner, together with
the Kapisanan ng mga Brodkaster ng Pilipinas,
Audiovisual Communicators, Incorporated, Filipinas
Broadcasting Network and Rajah Broadcasting Network,
Inc. (complainants), filed with the NTC a complaint
against the respondent to stop it from soliciting and
showing advertisements in its cable television
(CATV)system, pursuant to Section 2 of Executive Order
(EO) No. 205.5 Under this provision, a grantee’s
authority to operate a CATV system shall not infringe on
the television and broadcast markets. The petitioner
alleged that the phrase "television and broadcast
markets" includes the commercial or advertising market.
In its answer, the respondent admitted the airing of
commercial advertisement on its CATV network but
alleged that Section 3 of EO No. 436, which was issued
by former President Fidel V. Ramos on September 9,
1997, expressly allowed CATVproviders to carry
advertisements and other similar paid segments
provided there is consent from their program providers.6
After the petitioner presented and offered its evidence,
the respondent filed a motion to dismiss by demurrer
toevidence claiming that the evidence presented by the
complainants failed toshow how the respondent’s acts of
soliciting and/or showing advertisements infringed upon
the television and broadcast market.7
THE NTC RULING
The NTC granted the respondent’s demurrer to evidence
and dismissed the complaint. It ruled that since EO No.
205 does not define "infringement," EO No. 436 merely
clarified or filled-in the details of the term to mean that
the CATV operatorsmay show advertisements, provided
that they secure the consent of their program providers.
In the present case, the documents attached to the
respondent’s demurrer to evidence showed that its
program providers have given such consent. Although
the respondent did not formally offer these documents
as evidence, the NTC could still consider them since
they formed part of the records and the NTC is not
bound by the strict application of technical rules.8
The NTC added that since the insertion of
advertisements under EO No. 436 would result in the
alteration ordeletion of the broadcast signals of the
consenting television broadcast station, its ruling
necessarily results in the amendment of these
provisions.The second paragraph9 of Section 3 of EO
No. 436 is deemed to amend the previous provisional
authority issued to the respondent, as well as Sections
6.2.1 and 6.4 of the NTC’s Memorandum Circular (MC)
4-08-88. Sections 6.2.1 and 6.4 require the CATV
operators within the Grade A or B contours of a
television broadcast station to carry the latter’s television
broadcast signals in full, without alteration or deletion.
This is known as the "must-carry-rule."10
With the denial of its motion for reconsideration,11 the
petitioner went to the CA, alleging that the NTC
committed grave procedural and substantive errors in
dismissing the complaint.
THE CA RULING
The CA upheld the NTC ruling. The NTC did not err in
considering the respondent’s pieces of evidence
thatwere attached to its demurrer to evidence since
administrative agencies are not bound by the technical
rules of procedure.12
Due to the failure of EO No. 205 to define what
constitutes "infringement," EO No. 436 merely filled-in
the details without expanding, modifying and/or
repealing EO No. 205.13 The NTC was also correct in
modifying or amending the must-carryrule under MC 4-
08-88 as the NTC merely implemented the directive of
EO No. 436.14
Hence, this present petition for review on certiorari.
THE PARTIES’ ARGUMENTS
On the procedural issues, the petitioner argues that the
NTC erred in: (i) granting the demurrer to evidence
based only on the insufficiency of the complaint and not
on the insufficiency of evidence; and (ii) considering the
evidence of the respondent in its demurrer to evidence
on top of the petitioner’s evidence.15
On the substantive issue,the petitioner alleges that the
NTC gravely erred in failing to differentiate between EO
No. 205, which is a law, and EO No. 436 which is merely
an executive issuance. An executive issuance cannot
make a qualification on the clearprohibition in the law,
EO No. 205.16 In allowing infringement under certain
conditions, EO No. 436 overturned EO No. 205 which
prohibits, without qualification, the infringement on the
markets of free TV networks, such as the petitioner. In
doing so, the Executive arrogated upon itself the power
of subordinate legislation that Congress has explicitly
reserved to the NTC.17
Too, in granting the demurrer toevidence, the NTC
effectively revised EO No. 205, contrary to the basic rule
that in the exercise of quasilegislative power, the
delegate cannot supplant and modify its enabling
statute.18
On the other hand, the respondent agrees with the CA
that the NTC properly considered the certifications
attached to the respondent’s demurrer to evidence19
since the petitioner had the chance to peruse these
certifications in the course of the presentation of its
evidence.
EO No. 205 does not expressly prohibit CATV operators
from soliciting and showing advertisements. The non-
infringement limitation under Section 2 thereof, although
couched in general terms, should not be interpreted in
such a way as to deprive CATV operatorsof legitimate
business opportunities.20 Also, EO No. 436, being an
executive issuance and a valid administrative legislation,
has the force and effect of a law and cannot be subject
to collateral attack.21
THE ISSUES
1) Whether the CA erred in affirming the order of the
NTC which granted the respondent’s motion to dismiss
by demurrer to evidence.
2) Whether the respondent is prohibited from showing
advertisements under Section 2 of EO No. 205, in
relation toparagraph 2, Section 3 of EO No. 436.
THE COURT’S RULING
We deny the petition for lack of merit.
Procedural Issues
The remedy of a demurrer to evidence is applicable in
the proceedings before the NTC, pursuant to Section 1,
Rule 9, Part 9 of its Rules of Practice and Procedure
which provides for the suppletory application of the
Rules of Court.
Rule 3322 of the Rules of Court provides for the rule on
demurrer to evidence:
Section 1. Demurrer to evidence. — After the plaintiff
has completed the presentation of his evidence, the
defendant may move for dismissal on the ground that
upon the facts and the law the plaintiff has shown no
right to relief. If his motion is denied he shall have the
right to present evidence. If the motion is granted but on
appeal the order of dismissal is reversed he shall be
deemed to have waivedthe right to present evidence.
In other words, the issue to be resolved in a motion to
dismiss based on a demurrer to evidence is whether the
plaintiff is entitled to the relief prayed for based on the
facts and the law.23 In Casent Realty Development
Corp. v. Philbanking Corp.,24 the Court explained that
these facts and law do not include the defendant’s
evidence:
What should be resolved in a motion to dismiss based
on a demurrer to evidence is whether the plaintiff is
entitled to the relief based on the facts and the law. The
evidence contemplated by the rule on demurrer is that
which pertains to the merits of the case, excluding
technical aspects such as capacity to sue. However, the
plaintiff’s evidence should not be the only basis in
resolving a demurrer to evidence. The "facts" referred
toin Section 8 should include all the means sanctioned
by the Rules of Court in ascertaining matters in judicial
proceedings. These include judicial admissions,
mattersof judicial notice, stipulations made during the
pre-trial and trial, admissions, and presumptions, the
only exclusion being the defendant’s evidence.
In granting the demurrer to evidence in the present case,
the NTC considered both the insufficiency of the
allegations in the complaint and the insufficiency of the
complainants’ evidence in light of its interpretation of the
provisions of EO No. 205 and EO No. 436. The NTC
ruled that the complainants, including the petitioner,
failed to proveby substantial evidence that the
respondent aired the subject advertisements without the
consent of its program providers, asrequired under EO
No. 436. The NTC, therefore, has issued the assailed
order upon a consideration of the applicable laws and
the evidence of the petitioner. On this score, the grant of
the demurrer suffers no infirmity.
However, the NTC further extended itsconsideration of
the issue to the respondent’s pieces of evidence
thatwere attached to its demurrer to evidence. On this
score,we agree with the petitioner that the NTC erred.
Rule 33 of the Rules of Court, as explained in our ruling
in Casent, proscribes the court or the tribunal from
considering the defendant’s evidence in the resolution of
a motion to dismiss based on a demurrer to evidence.
While an administrative agency is not strictly bound by
technical rules of procedure in the conduct of its
administrative proceedings, the relaxation of the rules
should not result in violating fundamental evidentiary
rules, including due process.25 In the present case, the
NTC proceeded against the very nature of the remedy of
demurrer to evidence when it considered the
respondent’s evidence, specifically the certifications
attached to the respondent’s demurrer to evidence.
Despite the petitioner’s objections,26 the NTC
disregarded the rule on demurrer by allowing the
submission of the respondent’s evidence while depriving
the petitioner of the opportunity to question, examine or
refute the submitted documents.27
That the petitioner had the chance to peruse these
documents is of no moment. In a demurrer to evidence,
the respondent’s evidence should not have been
considered in the first place.As the NTC optedto
consider the respondent’s evidence, it should not have
resolved the case through the remedy of demurrer but
instead allowed the respondent to formally present its
evidence where the petitioner could properly raise its
objections. Clearly, there was a violation of the
petitioner’s due process right.
Substantive Issues
The primary issue in the present case is whether the
respondent, as a CATV operator, could show
commercial advertisements in its CATV networks. The
petitioner anchors its claim on Section 228 of EO No.
205 while the respondent supports its defense from
paragraph 2, Section 329 of EO No. 436. The Court
finds, however, that both the NTC and the CA failed to
correctly appreciate EO No. 205 and EO No. 436 in
resolving the present case.
1. EO No. 205 is a law while EONo. 436 is an executive
issuance
For one, we agree with the petitioner that the NTC and
the CA proceeded from the wrong premise that both EO
No. 205 and EO No. 436 are statutes. This is a critical
point to consider since the NTC and the CA rulings on
the merits would have no leg to stand on had they
properly appreciated the nature of these two executive
issuances.
EO No. 205 was issued by President Corazon Aquino on
June 30, 1987. Under Section 6, Article 18 ofthe 1987
Constitution, the incumbent President shall continue to
exerciselegislative powers until the first Congress is
convened. The Congress was convened only on July 27,
1987.30 Therefore, at the time of the issuance of EO No.
205, President Aquino was still exercising legislative
powers. In fact, the intent to regard EO No. 205 as a law
is clear under Section 7 thereof which provides for the
repeal or modification of all inconsistent laws,orders,
issuances and rules and regulations, or parts thereof.
EO No. 436, on the other hand, is an executive order
which was issued by President Ramos in the exercise
purely of his executive power. In short, it is not a law.
The NTC and the CA, however, failed to consider the
distinction between the two executive orders. In
considering EO No. 436 as a law, the NTC and the CA
hastily concluded thatit has validly qualified Section 2 of
EO No. 205 and has amended the provisionsof MC 4-
08-88. Following this wrong premise, the NTC and the
CA ruled that the respondent has a right to show
advertisements under Section 3 of EO No. 436.
The incorrect interpretation by the NTC and the CA led
to the erroneous resolution of the petitioner’s complaint
and appeal. While the respondent indeed has the right to
solicit and show advertisements, as will be discussed
below, the NTC and the CA incorrectly interpreted and
appreciated the relevant provisions of the law and rules.
We seek to correct this error in the present case by
ruling that MC 4-08-88 alone sufficiently resolves the
issue on whether the respondent could show
advertisements in its CATV networks. In other words,
EONo. 436 is not material in resolving the substantive
issue before us.
2. The CATV operators are not prohibited from showing
advertisements under EO No. 205 and its implementing
rules and regulations, MC 4-08-88
Section 631 of EO No. 205 expressly and unequivocally
vests with the NTC the delegated legislative authority to
issue its implementing rules and regulations.32
Following this authority, the NTC has issued the
implementing rules and regulations of EO No. 205
through MC 4-08-88. Its whereas clause provides that it
was issued pursuant to Act No. 384633 and EO No. 205
which granted the NTC the authority to set down rules
and regulations on CATV systems.
MC 4-08-88 has sufficiently filled-inthe details of Section
2 of EO No. 205, specifically the contentious provisothat
"the authority to operate [CATV] shall not infringe on the
television and broadcast markets."
First,Section 6.1 of MC 04-08-88 clarifies what the
phrase "television and broadcast markets" covers, when
it identified the major television markets as follows:
SECTION 6 CARRIAGE OF TELEVISION
BROADCAST SIGNALS
6.1 Major Television Markets
For purposes of the cable television rules, the following
is a list of the major television markets:
a. Naga
b. Legaspi
c. Metro Manila
d. Metro Cebu
e. Bacolod
f. Iloilo
g. Davao
h. Cagayan de Oro
i. Zamboanga34
It is clear from this provision that the phrase "television
market" connotes "audience" or "viewers" in geographic
areas and not the commercial or advertising marketas
what the petitioner claims. Second, the kind of
infringement prohibited by Section 2 of EO No. 205 was
particularly clarified under Sections 6.2, 6.2.1, 6.4(a)(1)
and 6.4(b) of MC 04-08-88, which embody the "must-
carry rule." This rule mandates that the local TV
broadcast signals of an authorized TV broadcast station,
such as the petitioner, should be carried in fullby the
CATV operator, without alteration or deletion. These
sections provide as follows:
6.2 Mandatory Coverage
6.2.1 A cable TV system operating in a community which
is within the Grade A or Grade B contours of an
authorized TV broadcast station or stations mustcarry
the TV signals of these stations.
6.4 Manner of Carriage
a. Where a television broadcast signal is required to be
carried by a community unit, pursuant tothe rules in this
sub-part:
1. The signal shall be carried without material
degradation in quality(within the limitations imposed by
the technical state of the art), and where applicable, in
accordance with the technical standards[.]
xxxx
b. Where a television broadcast signal is carried by a
community unit, pursuant to the rules in the CATV
standards the program broadcast shall be carried in full,
without deletion or alternation of anyexcept as required
by this part.35
An understanding of the "must-carryrule" would show
how it carries out the directive of Section 2 of EONo. 205
that the CATV operation must not infringe upon the
broadcast television markets, specifically the audience
market. In ABS-CBN Broadcasting Corporation v.
Philippine Multi-Media System, Inc.,36 the Court clarified
the "must-carry rule" and its interplay in the free-signal
TV, such as the petitioner, and the CATV operators,
such as the respondent, and to quote:
Anyone in the country who owns a television set and
antenna can receive ABS-CBN’s signals for free. Other
broadcasting organizations with free-to-air signals such
as GMA-7, RPN-9, ABC-5, and IBC-13 can likewise be
accessed for free. No payment is required to view the
said channels because these broadcasting networks do
not generate revenue from subscription from their
viewers but from airtime revenue from contracts with
commercial advertisers and producers, as well as from
direct sales.
In contrast, cable and DTH television earn revenues
from viewer subscription.In the case of PMSI, it offers its
customers premium paid channels from content
providers like Star Movies, Star World, Jack TV, and
AXN, among others, thus allowing its customers to go
beyond the limits of "Free TV and Cable TV." It does not
advertise itself as a local channel carrier because these
local channels can be viewed with or without DTH
television.
Relevantly, PMSI’s carriage of Channels 2 and 23 is
material in arriving at the ratings and audience share of
ABS-CBN and its programs. These ratings help
commercial advertisers and producers decide whether to
buy airtime from the network. Thus, the must-carry rule
is actually advantageous to the broadcasting networks
because it provides them with increased viewership
which attracts commercial advertisers and producers.
On the other hand, the carriage of free-to-air signals
imposes a burden to cable and DTH television
providerssuch as PMSI. PMSI uses none of ABS-CBN’s
resourcesor equipment and carries the signals and
shoulders the costs without any recourse of charging.
Moreover, such carriage of signals takes up channel
space which can otherwise be utilized for other premium
paid channels.
Contrary to the petitioner’s claim,EO No. 205 was not
issued solely for the benefit of the free-signal TV
networks. In fact, it was issued to end the monopoly of
Sining Makulay, Inc. which was granted by then
President Ferdinand Marcos an exclusive franchise,
through Presidential Decree (PD) No. 1512, to operate
CATV system anywhere within the Philippines.37 EO
No. 205 encouraged the growth of CATV operation when
it expressly repealed PD No. 151238 thus encouraging
competition in the CATV industry. As stated in the
whereas clause of EO No. 205, the primary purpose of
the law in regulating the CATV operations was for the
protection of the public and the promotion of the general
welfare.
MC 4-08-88 mirrored the legislative intent of EO No. 205
and acknowledged the importance of the CATV
operations in the promotion of the general welfare. The
circular provides in its whereas clause that the CATV
has the ability to offer additional programming and to
carry much improved broadcast signals in the remote
areas, thereby enriching the lives of the rest of the
population through the dissemination of social, economic
and educational information,and cultural programs.
Unavoidably, however, the improved broadcast signals
that CATV offers may infringe or encroach upon the
audience or viewer market of the free-signal TV. This is
so because the latter’s signal may not reach the remote
areas or reach them with poorsignal quality. To foreclose
this possibility and protect the free-TV market (audience
market), the must-carry rule was adopted to level the
playing field. With the must-carry rule in place, the CATV
networks are required to carry and show in fullthe
freelocal TV’s programs, including advertisements,
without alteration or deletion. This, in turn, benefits the
public who would have a wide-range of choices of
programs or broadcast to watch. This also benefits the
free-TV signal as their broadcasts are carried under the
CATV’s much-improved broadcast signals thus
expanding their viewer’s share.
In view of the discussion above, the Court finds that the
quoted sections of MC 4-08-88, i.e., 6.2, 6.2.1, 6.4(a)(1)
and 6.4(b) which embody the "must-carry rule," are the
governing rules in the present case. These provisions
sufficiently and fairly implement the intent of Section 2 of
EO No. 205 to protect the broadcast television market
vis-à-visthe CATV system. For emphasis, under these
rules, the phrase "television and broadcast markets"
means viewers oraudience market and not commercial
advertisement market as claimed bythe petitioner.
Therefore, the respondent’s act of showing
advertisements does not constitute an infringement of
the "television and broadcast markets" under Section 2
of EO No. 205.
The implementing rules and regulations embodied in this
circular, whose validity is undisputed by the parties,
"partake of the nature of a statute and are just as binding
as if they have been written in the statute itself. As such,
they have the force and effect of law and enjoy the
presumption of constitutionality and legality until they are
set aside with finality in an appropriate case by a
competent court."39
The Court further finds that the NTC also erred in ruling
that EO No. 436 has deemed to amend Sections 6.2.1
and 6.4 of MC4-08-88. In arriving at this ruling, the NTC
proceeded from the wrong interpretation of EO No. 436
as a law, resulting in the consequenterroneous
conclusion that EO No. 436 could amend MC 4-08-88.
The Court cannot uphold these patently incorrect
findings of the NTC even though it is a specialized
implementing agency.
Since the right of the respondent to show
advertisements is clearly supported by EO No. 205 and
MC 4-08-88, the Court finds no necessity to pass upon
the issue on the validity of EO No. 436, specifically
Section 3 thereof.
WHEREFORE, we DENY the petition and, accordingly,
AFFIRM the decision and resolution of the Court of
Appeals dated November 14, 2006 and February 15,
2007, respectively. Costs against petitioner GMA
Network, Inc.
SO ORDERED.
G.R. No. L-36402 March 16, 1987
FILIPINO SOCIETY OF COMPOSERS, AUTHORS
AND PUBLISHERS, INC., plaintiff-appellant,

vs.
BENJAMIN TAN, defendant-appellee.
Lichauco, Picazo & Agcaoili Law Office for plaintiff-
appellant.
Ramon A. Nieves for defendant-appellee.
PARAS, J.:
An appeal was made to the Court of Appeals docketed
as CA-G.R. No. 46373-R * entitled Filipino Society of
Composers, Authors, Publishers, Inc., Plaintiff-Appellant
v. Benjamin Tan, Defendant-Appellee, from the decision
of the Court of First Instance of Manila, Branch VII in
Civil Case No. 71222 ** "Filipino Society of Composers,
Authors and Publishers, Inc., Plaintiff v. Benjamin Tan,
Defendant," which had dismissed plaintiffs' complaint
without special pronouncement as to costs.
The Court of Appeals, finding that the case involves pure
questions of law, certified the same to the Supreme
Court for final determination (Resolution, CA-G.R. No.
46373-R, Rollo, p. 36; Resolution of the Supreme Court
of February 16, 1973 in L-36402, Rollo, p. 38).
The undisputed facts of this case are as follows:
Plaintiff-appellant is a non-profit association of authors,
composers and publishers duly organized under the
Corporation Law of the Philippines and registered with
the Securities and Exchange Commission. Said
association is the owner of certain musical compositions
among which are the songs entitled: "Dahil Sa Iyo",
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."
On the other hand, defendant-appellee is the operator of
a restaurant known as "Alex Soda Foundation and
Restaurant" where a combo with professional singers,
hired to play and sing musical compositions to entertain
and amuse customers therein, were playing and singing
the above-mentioned compositions without any license
or permission from the appellant to play or sing the
same. Accordingly, appellant demanded from the
appellee payment of the necessary license fee for the
playing and singing of aforesaid compositions but the
demand was ignored.
Hence, on November 7, 1967, appellant filed a complaint
with the lower court for infringement of copyright against
defendant-appellee for allowing the playing in defendant-
appellee's restaurant of said songs copyrighted in the
name of the former.
Defendant-appellee, in his answer, countered that the
complaint states no cause of action. While not denying
the playing of said copyrighted compositions in his
establishment, appellee maintains that the mere singing
and playing of songs and popular tunes even if they are
copyrighted do not constitute an infringement (Record on
Appeal, p. 11; Resolution, CA-G.R. NO. 46373-R, Rollo,
pp. 32-36) under the provisions of Section 3 of the
Copyright Law (Act 3134 of the Philippine Legislature).
The lower court, finding for the defendant, dismissed the
complaint (Record on Appeal, p. 25).
Plaintiff appealed to the Court of Appeals which as
already stated certified the case to the Supreme Court
for adjudication on the legal question involved.
(Resolution, Court of Appeals, Rollo, p. 36; Resolution of
the Supreme Court of February 18, 1973, Rollo, p. 38).
In its brief in the Court of Appeals, appellant raised the
following Assignment of Errors:
I
THE LOWER COURT ERRED IN HOLDING THAT THE
MUSICAL COMPOSITIONS OF THE APPELLANT
WERE IN THE NATURE OF PUBLIC PROPERTY
WHEN THEY WERE COPYRIGHTED OR
REGISTERED.
II
THE LOWER COURT ERRED IN HOLDING THAT THE
MUSICAL COMPOSITIONS OF THE APPELLANT
WERE PLAYED AND SUNG IN THE SODA FOUNTAIN
AND RESTAURANT OF THE APPELLEE BY
INDEPENDENT CONTRACTORS AND ONLY UPON
THE REQUEST OF CUSTOMERS.
III
THE LOWER COURT ERRED IN HOLDING THAT THE
PLAYING AND SINGING OF COPYRIGHTED
MUSICAL COMPOSITIONS IN THE SODA FOUNTAIN
AND RESTAURANT OF THE APPELLEE ARE NOT
PUBLIC PERFORMANCES FOR PROFIT OF THE
SAID COMPOSITIONS WITHIN THE MEANING AND
CONTEMPLATION OF THE COPYRIGHT LAW.
IV

THE LOWER COURT ERRED IN NOT HOLDING THAT
THE APPELLEE IS LIABLE TO THE APPELLANT FOR
FOUR (4) SEPARATE INFRINGEMENTS. (Brief for
Appellant, pp. A and B).
The petition is devoid of merit.
The principal issues in this case are whether or not the
playing and signing of musical compositions which have
been copyrighted under the provisions of the Copyright
Law (Act 3134) inside the establishment of the
defendant-appellee constitute a public performance for
profit within the meaning and contemplation of the
Copyright Law of the Philippines; and assuming that
there were indeed public performances for profit,
whether or not appellee can be held liable therefor.
Appellant anchors its claim on Section 3(c) of the
Copyright Law which provides:
SEC. 3. The proprietor of a copyright or his heirs or
assigns shall have the exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or
reproduce the copyrighted work in any manner or by any
method whatever for profit or otherwise; if not
reproduced in copies for sale, to sell any manuscripts or
any record whatsoever thereof;
xxx xxx xxx
It maintains that playing or singing a musical
composition is universally accepted as performing the
musical composition and that playing and singing of
copyrighted music in the soda fountain and restaurant of
the appellee for the entertainment of the customers
although the latter do not pay for the music but only for
the food and drink constitute performance for profit
under the Copyright Law (Brief for the Appellant, pp. 19-
25).
We concede that indeed there were "public
performances for profit. "
The word "perform" as used in the Act has been applied
to "One who plays a musical composition on a piano,
thereby producing in the air sound waves which are
heard as music ... and if the instrument he plays on is a
piano plus a broadcasting apparatus, so that waves are
thrown out, not only upon the air, but upon the other,
then also he is performing the musical composition."
(Buck, et al. v. Duncan, et al.; Same Jewell La Salle
Realty Co., 32F. 2d. Series 367).
In relation thereto, it has been held that "The playing of
music in dine and dance establishment which was paid
for by the public in purchases of food and drink
constituted "performance for profit" within a Copyright
Law." (Buck, et al. v. Russon No. 4489 25 F. Supp. 317).
Thus, it has been explained that while it is possible in
such establishments for the patrons to purchase their
food and drinks and at the same time dance to the music
of the orchestra, the music is furnished and used by the
orchestra for the purpose of inducing the public to
patronize the establishment and pay for the
entertainment in the purchase of food and drinks. The
defendant conducts his place of business for profit, and
it is public; and the music is performed for profit (Ibid, p.
319). In a similar case, the Court ruled that "The
Performance in a restaurant or hotel dining room, by
persons employed by the proprietor, of a copyrighted
musical composition, for the entertainment of patrons,
without charge for admission to hear it, infringes the
exclusive right of the owner of the copyright." (Herbert v.
Shanley Co.; John Church Co. v. Hillard Hotel Co., et al.,
242 U.S. 590-591). In delivering the opinion of the Court
in said two cases, Justice Holmes elaborated thus:
If the rights under the copyright are infringed only by a
performance where money is taken at the door, they are
very imperfectly protected. Performances not different in
kind from those of the defendants could be given that
might compete with and even destroy the success of the
monopoly that the law intends the plaintiffs to have. It is
enough to say that there is no need to construe the
statute so narrowly. The defendants' performances are
not eleemosynary. They are part of a total for which the
public pays, and the fact that the price of the whole is
attributed to a particular item which those present are
expected to order is not important. It is true that the
music is not the sole object, but neither is the food,
which probably could be got cheaper elsewhere. The
object is a repast in surroundings that to people having
limited power of conversation or disliking the rival noise,
give a luxurious pleasure not to be had from eating a
silent meal. If music did not pay, it would be given up. If
it pays, it pays out of the public's pocket. Whether it pays
or not, the purpose of employing it is profit, and that is
enough. (Ibid., p. 594).
In the case at bar, it is admitted that the patrons of the
restaurant in question pay only for the food and drinks
and apparently not for listening to the music. As found by
the trial court, the music provided is for the purpose of
entertaining and amusing the customers in order to
make the establishment more attractive and desirable
(Record on Appeal, p. 21). It will be noted that for the
playing and singing the musical compositions involved,
the combo was paid as independent contractors by the
appellant (Record on Appeal, p. 24). It is therefore
obvious that the expenses entailed thereby are added to
the overhead of the restaurant which are either
eventually charged in the price of the food and drinks or
to the overall total of additional income produced by the
bigger volume of business which the entertainment was
programmed to attract. Consequently, it is beyond
question that the playing and singing of the combo in
defendant-appellee's restaurant constituted performance
for profit contemplated by the Copyright Law. (Act 3134
amended by P.D. No. 49, as amended).
Nevertheless, appellee cannot be said to have infringed
upon the Copyright Law. Appellee's allegation that the
composers of the contested musical compositions
waived their right in favor of the general public when
they allowed their intellectual creations to become
property of the public domain before applying for the
corresponding copyrights for the same (Brief for
Defendant-Appellee, pp. 14-15) is correct.
The Supreme Court has ruled that "Paragraph 33 of
Patent Office Administrative Order No. 3 (as amended,
dated September 18, 1947) entitled 'Rules of Practice in
the Philippines Patent Office relating to the Registration
of Copyright Claims' promulgated pursuant to Republic
Act 165, provides among other things that an intellectual
creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within the (60) days if
made elsewhere, failure of which renders such creation
public property." (Santos v. McCullough Printing
Company, 12 SCRA 324-325 [1964]. Indeed, if the
general public has made use of the object sought to be
copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been
donated to the public domain and the same can no
longer be copyrighted.
A careful study of the records reveals that the song
"Dahil Sa Iyo" which was registered on April 20, 1956
(Brief for Appellant, p. 10) became popular in radios,
juke boxes, etc. long before registration (TSN, May 28,
1968, pp. 3-5; 25) while the song "The Nearness Of
You" registered on January 14, 1955 (Brief for Appellant,
p. 10) had become popular twenty five (25) years prior to
1968, (the year of the hearing) or from 1943 (TSN, May
28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin"
and "Sapagkat Kami Ay Tao Lamang" both registered on
July 10, 1966, appear to have been known and sang by
the witnesses as early as 1965 or three years before the
hearing in 1968. The testimonies of the witnesses at the
hearing of this case on this subject were unrebutted by
the appellant. (Ibid, pp. 28; 29 and 30).
Under the circumstances, it is clear that the musical
compositions in question had long become public
property, and are therefore beyond the protection of the
Copyright Law.
PREMISES CONSIDERED, the appealed decision of the
Court of First Instance of Manila in Civil Case No. 71222
is hereby AFFIRMED.
SO ORDERED.
G.R. No. 110318 August 28, 1996
COLUMBIA PICTURES, INC., ORION PICTURES
CORPORATION, PARAMOUNT PICTURES
CORPORATION, TWENTIETH CENTURY FOX FILM
CORPORATION, UNITED ARTISTS
CORPORATION, UNIVERSAL CITY STUDIOS, INC.,
THE WALT DISNEY COMPANY, and WARNER
BROTHERS, INC., petitioners,
vs.
COURT OF APPEALS, SUNSHINE HOME VIDEO,
INC. and DANILO A. PELINDARIO, respondents.
REGALADO, J.:p
Before us is a petition for review on certiorari of the
decision of the Court of Appeals1 promulgated on July
22, 1992 and its resolution2 of May 10, 1993 denying
petitioners' motion for reconsideration, both of which
sustained the order3 of the Regional Trial Court, Branch
133, Makati, Metro Manila, dated November 22, 1988 for
the quashal of Search Warrant No. 87-053 earlier issued
per its own order4 on September 5, 1988 for violation of
Section 56 of Presidential Decree No. 49, as amended,
otherwise known as the "Decree on the Protection of
Intellectual Property."
The material facts found by respondent appellate court
are as follows:
Complainants thru counsel lodged a formal complaint
with the National Bureau of Investigation for violation of
PD No. 49, as amended, and sought its assistance in
their anti-film piracy drive. Agents of the NBI and private
researchers made discreet surveillance on various video
establishments in Metro Manila including Sunshine
Home Video Inc. (Sunshine for brevity), owned and
operated by Danilo A. Pelindario with address at No. 6
Mayfair Center, Magallanes, Makati, Metro Manila.
On November 14, 1987, NBI Senior Agent Lauro C.
Reyes applied for a search warrant with the court a quo
against Sunshine seeking the seizure, among others, of
pirated video tapes of copyrighted films all of which were
enumerated in a list attached to the application; and,
television sets, video cassettes and/or laser disc
recordings equipment and other machines and
paraphernalia used or intended to be used in the
unlawful exhibition, showing, reproduction, sale, lease or
disposition of videograms tapes in the premises above
described. In the hearing of the application, NBI Senior
Agent Lauro C. Reyes, upon questions by the court a
quo, reiterated in substance his averments in his
affidavit. His testimony was corroborated by another
witness, Mr. Rene C. Baltazar. Atty. Rico V. Domingo's
deposition was also taken. On the basis of the affidavits
and depositions of NBI Senior Agent Lauro C. Reyes,
Rene C. Baltazar and Atty. Rico V. Domingo, Search
Warrant No. 87-053 for violation of Section 56 of PD No.
49, as amended, was issued by the court a quo.
The search warrant was served at about 1:45 p.m. on
December 14, 1987 to Sunshine and/or their
representatives. In the course of the search of the
premises indicated in the search warrant, the NBI
Agents found and seized various video tapes of duly
copyrighted motion pictures/films owned or exclusively
distributed by private complainants, and machines,
equipment, television sets, paraphernalia, materials,
accessories all of which were included in the receipt for
properties accomplished by the raiding team. Copy of
the receipt was furnished and/or tendered to Mr. Danilo
A. Pelindario, registered owner-proprietor of Sunshine
Home Video.
On December 16, 1987, a "Return of Search Warrant"
was filed with the Court.
A "Motion To Lift the Order of Search Warrant" was filed
but was later denied for lack of merit (p. 280, Records).
A Motion for reconsideration of the Order of denial was
filed. The court a quo granted the said motion for
reconsideration and justified it in this manner:
It is undisputed that the master tapes of the copyrighted
films from which the pirated films were allegedly copies
(sic), were never presented in the proceedings for the
issuance of the search warrants in question. The orders
of the Court granting the search warrants and denying
the urgent motion to lift order of search warrants were,
therefore, issued in error. Consequently, they must be
set aside. (p. 13, Appellant's Brief)5
Petitioners thereafter appealed the order of the trial court
granting private respondents' motion for reconsideration,
thus lifting the search warrant which it had theretofore
issued, to the Court of Appeals. As stated at the outset,
said appeal was dismissed and the motion for
reconsideration thereof was denied. Hence, this petition
was brought to this Court particularly challenging the
validity of respondent court's retroactive application of
the ruling in 20th Century Fox Film Corporation vs. Court
of Appeals, et al.,6 in dismissing petitioners' appeal and
upholding the quashal of the search warrant by the trial
court.
I
Inceptively, we shall settle the procedural considerations
on the matter of and the challenge to petitioners' legal
standing in our courts, they being foreign corporations
not licensed to do business in the Philippines.
Private respondents aver that being foreign corporations,
petitioners should have such license to be able to
maintain an action in Philippine courts. In so challenging
petitioners' personality to sue, private respondents point
to the fact that petitioners are the copyright owners or
owners of exclusive rights of distribution in the
Philippines of copyrighted motion pictures or films, and
also to the appointment of Atty. Rico V. Domingo as their
attorney-in-fact, as being constitutive of "doing business
in the Philippines" under Section 1 (f)(1) and (2), Rule 1
of the Rules of the Board of Investments. As foreign
corporations doing business in the Philippines, Section
133 of Batas Pambansa Blg. 68, or the Corporation
Code of the Philippines, denies them the right to
maintain a suit in Philippine courts in the absence of a
license to do business. Consequently, they have no right
to ask for the issuance of a search warrant.7
In refutation, petitioners flatly deny that they are doing
business in the Philippines,8 and contend that private
respondents have not adduced evidence to prove that
petitioners are doing such business here, as would
require them to be licensed by the Securities and
Exchange Commission, other than averments in the
quoted portions of petitioners' "Opposition to Urgent
Motion to Lift Order of Search Warrant" dated April 28,
1988 and Atty. Rico V. Domingo's affidavit of December
14, 1987. Moreover, an exclusive right to distribute a
product or the ownership of such exclusive right does
not conclusively prove the act of doing business nor
establish the presumption of doing business.9
The Corporation Code provides:
Sec. 133. Doing business without a license. — No
foreign corporation transacting business in the
Philippines without a license, or its successors or
assigns, shall be permitted to maintain or intervene in
any action, suit or proceeding in any court or
administrative agency of the Philippines; but such
corporation may be sued or proceeded against before
Philippine courts or administrative tribunals on any valid
cause of action recognized under Philippine laws.
The obtainment of a license prescribed by Section 125
of the Corporation Code is not a condition precedent to
the maintenance of any kind of action in Philippine
courts by a foreign corporation. However, under the
aforequoted provision, no foreign corporation shall be
permitted to transact business in the Philippines, as this
phrase is understood under the Corporation Code,
unless it shall have the license required by law, and until
it complies with the law intransacting business here, it
shall not be permitted to maintain any suit in local
courts.10 As thus interpreted, any foreign corporation
not doing business in the Philippines may maintain an
action in our courts upon any cause of action, provided
that the subject matter and the defendant are within the
jurisdiction of the court. It is not the absence of the
prescribed license but "doing business" in the
Philippines without such license which debars the
foreign corporation from access to our courts. In other
words, although a foreign corporation is without license
to transact business in the Philippines, it does not follow
that it has no capacity to bring an action. Such license is
not necessary if it is not engaged in business in the
Philippines.11
Statutory provisions in many jurisdictions are
determinative of what constitutes "doing business" or
"transacting business" within that forum, in which case
said provisions are controlling there. In others where no
such definition or qualification is laid down regarding
acts or transactions failing within its purview, the
question rests primarily on facts and intent. It is thus held
that all the combined acts of a foreign corporation in the
State must be considered, and every circumstance is
material which indicates a purpose on the part of the
corporation to engage in some part of its regular
business in the State.12
No general rule or governing principles can be laid down
as to what constitutes "doing" or "engaging in" or
"transacting" business. Each case must be judged in the
light of its own peculiar environmental circumstances.13
The true tests, however, seem to be whether the foreign
corporation is continuing the body or substance of the
business or enterprise for which it was organized or
whether it has substantially retired from it and turned it
over to another.14
As a general proposition upon which many authorities
agree in principle, subject to such modifications as may
be necessary in view of the particular issue or of the
terms of the statute involved, it is recognized that a
foreign corporation is "doing," "transacting," "engaging
in," or "carrying on" business in the State when, and
ordinarily only when, it has entered the State by its
agents and is there engaged in carrying on and
transacting through them some substantial part of its
ordinary or customary business, usually continuous in
the sense that it may be distinguished from merely
casual, sporadic, or occasional transactions and isolated
acts.15
The Corporation Code does not itself define or
categorize what acts constitute doing or transacting
business in the Philippines. Jurisprudence has, however,
held that the term implies a continuity of commercial
dealings and arrangements, and contemplates, to that
extent, the performance of acts or works or the exercise
of some of the functions normally incident to or in
progressive prosecution of the purpose and subject of its
organization.16
This traditional case law definition has evolved into a
statutory definition, having been adopted with some
qualifications in various pieces of legislation in our
jurisdiction.
For instance, Republic Act No. 5455 17 provides:
Sec. 1. Definitions and scope of this Act. — (1) . . . ; and
the phrase "doing business" shall include soliciting
orders, purchases, service contracts, opening offices,
whether called "liaison" offices or branches; appointing
representatives or distributors who are domiciled in the
Philippines or who in any calendar year stay in the
Philippines for a period or periods totalling one hundred
eighty days or more; participating in the management,
supervision or control of any domestic business firm,
entity or corporation in the Philippines; and any other act
or acts that imply a continuity of commercial dealings or
arrangements, and contemplate to that extent the
performance of acts or works, or the exercise of some of
the functions normally incident to, and in progressive
prosecution of, commercial gain or of the purpose and
object of the business organization.
Presidential Decree No. 1789,18 in Article 65 thereof,
defines "doing business" to include soliciting orders,
purchases, service contracts, opening offices, whether
called "liaison" offices or branches; appointing
representatives or distributors who are domiciled in the
Philippines or who in any calendar year stay in the
Philippines for a period or periods totalling one hundred
eighty days or more; participating in the management,
supervision or control of any domestic business firm,
entity or corporation in the Philippines, and any other act
or acts that imply a continuity of commercial dealings or
arrangements and contemplate to that extent the
performance of acts or works, or the exercise of some of
the functions normally incident to, and in progressive
prosecution of, commercial gain or of the purpose and
object of the business organization.
The implementing rules and regulations of said
presidential decree conclude the enumeration of acts
constituting "doing business" with a catch-all definition,
thus:
Sec. 1(g). "Doing Business" shall be any act or
combination of acts enumerated in Article 65 of the
Code. In particular "doing business" includes:
xxx xxx xxx
(10) Any other act or acts which imply a continuity of
commercial dealings or arrangements, and contemplate
to that extent the performance of acts or works, or the
exercise of some of the functions normally incident to, or
in the progressive prosecution of, commercial gain or of
the purpose and object of the business organization.
Finally, Republic Act No. 704219 embodies such
concept in this wise:
Sec. 3. Definitions. — As used in this Act:
xxx xxx xxx
(d) the phrase "doing business shall include
soliciting orders, service contracts, opening offices,
whether called "liaison" offices or branches; appointing
representatives or distributors domiciled in the
Philippines or who in any calendar year stay in the
country for a period or periods totalling one hundred
eight(y) (180) days or more; participating in the
management, supervision or control of any domestic
business, firm, entity or corporation in the Philippines;
and any other act or acts that imply a continuity of
commercial dealings or arrangements, and contemplate
to that extent the performance of acts or works, or the
exercise of some of the functions normally incident to,
and in progressive prosecution of, commercial gain or of
the purpose and object of the business organization:
Provided, however, That the phrase "doing business"
shall not be deemed to include mere investment as a
shareholder by a foreign entity in domestic corporations
duly registered to do business, and/or the exercise of
rights as such investor; nor having a nominee director or
officer to represent its interests in such corporation; nor
appointing a representative or distributor domiciled in the
Philippines which transacts business in its own name
and for its own account.
Based on Article 133 of the Corporation Code and
gauged by such statutory standards, petitioners are not
barred from maintaining the present action. There is no
showing that, under our statutory or case law, petitioners
are doing, transacting, engaging in or carrying on
business in the Philippines as would require obtention of
a license before they can seek redress from our courts.
No evidence has been offered to show that petitioners
have performed any of the enumerated acts or any other
specific act indicative of an intention to conduct or
transact business in the Philippines.
Accordingly, the certification issued by the Securities
and Exchange Commission20 stating that its records do
not show the registration of petitioner film companies
either as corporations or partnerships or that they have
been licensed to transact business in the Philippines,
while undeniably true, is of no consequence to
petitioners' right to bring action in the Philippines. Verily,
no record of such registration by petitioners can be
expected to be found for, as aforestated, said foreign
film corporations do not transact or do business in the
Philippines and, therefore, do not need to be licensed in
order to take recourse to our courts.
Although Section 1(g) of the Implementing Rules and
Regulations of the Omnibus Investments Code lists,
among others —
(1) Soliciting orders, purchases (sales) or service
contracts. Concrete and specific solicitations by a foreign
firm, or by an agent of such foreign firm, not acting
independently of the foreign firm amounting to
negotiations or fixing of the terms and conditions of sales
or service contracts, regardless of where the contracts
are actually reduced to writing, shall constitute doing
business even if the enterprise has no office or fixed
place of business in the Philippines. The arrangements
agreed upon as to manner, time and terms of delivery of
the goods or the transfer of title thereto is immaterial. A
foreign firm which does business through the middlemen
acting in their own names, such as indentors,
commercial brokers or commission merchants, shall not
be deemed doing business in the Philippines. But such
indentors, commercial brokers or commission merchants
shall be the ones deemed to be doing business in the
Philippines.
(2) Appointing a representative or distributor who is
domiciled in the Philippines, unless said representative
or distributor has an independent status, i.e., it transacts
business in its name and for its own account, and not in
the name or for the account of a principal. Thus, where a
foreign firm is represented in the Philippines by a person
or local company which does not act in its name but in
the name of the foreign firm, the latter is doing business
in the Philippines.
as acts constitutive of "doing business," the fact that
petitioners are admittedly copyright owners or owners of
exclusive distribution rights in the Philippines of motion
pictures or films does not convert such ownership into an
indicium of doing business which would require them to
obtain a license before they can sue upon a cause of
action in local courts.
Neither is the appointment of Atty. Rico V. Domingo as
attorney-in-fact of petitioners, with express authority
pursuant to a special power of attorney, inter alia —
To lay criminal complaints with the appropriate
authorities and to provide evidence in support of both
civil and criminal proceedings against any person or
persons involved in the criminal infringement of copyright
or concerning the unauthorized importation, duplication,
exhibition or distribution of any cinematographic work(s)
— films or video cassettes — of which . . . is the owner
of copyright or the owner of exclusive rights of
distribution in the Philippines pursuant to any
agreement(s) between . . . and the respective owners of
copyright in such cinematographic work(s), to initiate and
prosecute on behalf of . . . criminal or civil actions in the
Philippines against any person or persons unlawfully
distributing, exhibiting, selling or offering for sale any
films or video cassettes of which . . . is the owner of
copyright or the owner of exclusive rights of distribution
in the Philippines pursuant to any agreement(s) between
. . . and the respective owners of copyright in such
works.21
tantamount to doing business in the Philippines. We fail
to see how exercising one's legal and property rights
and taking steps for the vigilant protection of said rights,
particularly the appointment of an attorney-in-fact, can
be deemed by and of themselves to be doing business
here.
As a general rule, a foreign corporation will not be
regarded as doing business in the State simply because
it enters into contracts with residents of the State, where
such contracts are consummated outside the State.22 In
fact, a view is taken that a foreign corporation is not
doing business in the State merely because sales of its
product are made there or other business furthering its
interests is transacted there by an alleged agent,
whether a corporation or a natural person, where such
activities are not under the direction and control of the
foreign corporation but are engaged in by the alleged
agent as an independent business.23
It is generally held that sales made to customers in the
State by an independent dealer who has purchased and
obtained title from the corporation to the products sold
are not a doing of business by the corporation.24
Likewise, a foreign corporation which sells its products to
persons styled "distributing agents" in the State, for
distribution by them, is not doing business in the State
so as to render it subject to service of process therein,
where the contract with these purchasers is that they
shall buy exclusively from the foreign corporation such
goods as it manufactures and shall sell them at trade
prices established by it.25
It has moreover been held that the act of a foreign
corporation in engaging an attorney to represent it in a
Federal court sitting in a particular State is not doing
business within the scope of the minimum contact test.
26 With much more reason should this doctrine apply to
the mere retainer of Atty. Domingo for legal protection
against contingent acts of intellectual piracy.
In accordance with the rule that "doing business" imports
only acts in furtherance of the purposes for which a
foreign corporation was organized, it is held that the
mere institution and prosecution or defense of a suit,
particularly if the transaction which is the basis of the suit
took place out of the State, do not amount to the doing of
business in the State. The institution of a suit or the
removal thereof is neither the making of a contract nor
the doing of business within a constitutional provision
placing foreign corporations licensed to do business in
the State under the same regulations, limitations and
liabilities with respect to such acts as domestic
corporations. Merely engaging in litigation has been
considered as not a sufficient minimum contact to
warrant the exercise of jurisdiction over a foreign
corporation.27
As a consideration aside, we have perforce to comment
on private respondents' basis for arguing that petitioners
are barred from maintaining suit in the Philippines. For
allegedly being foreign corporations doing business in
the Philippines without a license, private respondents
repeatedly maintain in all their pleadings that petitioners
have thereby no legal personality to bring an action
before Philippine Courts.28
Among the grounds for a motion to dismiss under the
Rules of Court
are lack of legal capacity to sue29 and that the complaint
states no cause of action. 30 Lack of legal capacity to
sue means that the plaintiff is not in the exercise of his
civil rights, or does not have the necessary qualification
to appear in the case, or does not have the character or
representation he claims.31 On the other hand, a case is
dismissible for lack of personality to sue upon proof that
the plaintiff is not the real party in interest, hence
grounded on failure to state a cause of action.32 The
term "lack of capacity to sue" should not be confused
with the term "lack of personality to sue." While the
former refers to a plaintiff's general disability to sue,
such as on account of minority, insanity, incompetence,
lack of juridical personality or any other general
disqualifications of a party, the latter refers to the fact
that the plaintiff is not the real party in interest.
Correspondingly, the first can be a ground for a motion
to dismiss based on the ground of lack of legal capacity
to sue;33 whereas the second can be used as a ground
for a motion to dismiss based on the fact that the
complaint, on the face thereof, evidently states no cause
of action.34
Applying the above discussion to the instant petition, the
ground available for barring recourse to our courts by an
unlicensed foreign corporation doing or transacting
business in the Philippines should properly be "lack of
capacity to sue," not "lack of personality to sue."
Certainly, a corporation whose legal rights have been
violated is undeniably such, if not the only, real party in
interest to bring suit thereon although, for failure to
comply with the licensing requirement, it is not
capacitated to maintain any suit before our courts.
Lastly, on this point, we reiterate this Court's rejection of
the common procedural tactics of erring local companies
which, when sued by unlicensed foreign corporations not
engaged in business in the Philippines, invoke the
latter's supposed lack of capacity to sue. The doctrine of
lack of capacity to sue based on failure to first acquire a
local license is based on considerations of public policy.
It was never intended to favor nor insulate from suit
unscrupulous establishments or nationals in case of
breach of valid obligations or violation of legal rights of
unsuspecting foreign firms or entities simply because
they are not licensed to do business in the country.35
II
We now proceed to the main issue of the retroactive
application to the present controversy of the ruling in
20th Century Fox Film Corporation vs. Court of Appeals,
et al., promulgated on August 19, 1988,36 that for the
determination of probable cause to support the issuance
of a search warrant in copyright infringement cases
involving videograms, the production of the master tape
for comparison with the allegedly pirate copies is
necessary.
Petitioners assert that the issuance of a search warrant
is addressed to the discretion of the court subject to the
determination of probable cause in accordance with the
procedure prescribed therefore under Sections 3 and 4
of Rule 126. As of the time of the application for the
search warrant in question, the controlling criterion for
the finding of probable cause was that enunciated in
Burgos vs. Chief of Staff 3 7 stating that:
Probable cause for a search warrant is defined as such
facts and circumstances which would lead a reasonably
discreet and prudent man to believe that an offense has
been committed and that the objects sought in
connection with the offense are in the place sought to be
searched.
According to petitioners, after complying with what the
law then required, the lower court determined that there
was probable cause for the issuance of a search
warrant, and which determination in fact led to the
issuance and service on December 14, 1987 of Search
Warrant No. 87-053. It is further argued that any search
warrant so issued in accordance with all applicable legal
requirements is valid, for the lower court could not
possibly have been expected to apply, as the basis for a
finding of probable cause for the issuance of a search
warrant in copyright infringement cases involving
videograms, a pronouncement which was not existent at
the time of such determination, on December 14, 1987,
that is, the doctrine in the 20th Century Fox case that
was promulgated only on August 19, 1988, or over eight
months later.
Private respondents predictably argue in support of the
ruling of the Court of Appeals sustaining the quashal of
the search warrant by the lower court on the strength of
that 20th Century Fox ruling which, they claim, goes into
the very essence of probable cause. At the time of the
issuance of the search warrant involved here, although
the 20th Century Fox case had not yet been decided,
Section 2, Article III of the Constitution and Section 3,
Rule 126 of the 1985 Rules on Criminal Procedure
embodied the prevailing and governing law on the
matter. The ruling in 20th Century Fox was merely an
application of the law on probable cause. Hence, they
posit that there was no law that was retrospectively
applied, since the law had been there all along. To
refrain from applying the 20th Century Fox ruling, which
had supervened as a doctrine promulgated at the time of
the resolution of private respondents' motion for
reconsideration seeking the quashal of the search
warrant for failure of the trial court to require
presentation of the master tapes prior to the issuance of
the search warrant, would have constituted grave abuse
of discretion.38
Respondent court upheld the retroactive application of
the 20th Century Fox ruling by the trial court in resolving
petitioners' motion for reconsideration in favor of the
quashal of the search warrant, on this renovated thesis:
And whether this doctrine should apply retroactively, it
must be noted that in the 20th Century Fox case, the
lower court quashed the earlier search warrant it issued.
On certiorari, the Supreme Court affirmed the quashal
on the ground among others that the master tapes or
copyrighted films were not presented for comparison
with the purchased evidence of the video tapes to
determine whether the latter is an unauthorized
reproduction of the former.
If the lower court in the Century Fox case did not quash
the warrant, it is Our view that the Supreme Court would
have invalidated the warrant just the same considering
the very strict requirement set by the Supreme Court for
the determination of "probable cause" in copyright
infringement cases as enunciated in this 20th Century
Fox case. This is so because, as was stated by the
Supreme Court in the said case, the master tapes and
the pirated tapes must be presented for comparison to
satisfy the requirement of "probable cause." So it goes
back to the very existence of probable
cause. . . .39
Mindful as we are of the ramifications of the doctrine of
stare decisis and the rudiments of fair play, it is our
considered view that the 20th Century Fox ruling cannot
be retroactively applied to the instant case to justify the
quashal of Search Warrant No. 87-053. Herein
petitioners' consistent position that the order of the lower
court of September 5, 1988 denying therein defendants'
motion to lift the order of search warrant was properly
issued, there having been satisfactory compliance with
the then prevailing standards under the law for
determination of probable cause, is indeed well taken.
The lower court could not possibly have expected more
evidence from petitioners in their application for a search
warrant other than what the law and jurisprudence, then
existing and judicially accepted, required with respect to
the finding of probable cause.
Article 4 of the Civil Code provides that "(l)aws shall
have no retroactive effect, unless the contrary is
provided. Correlatively, Article 8 of the same Code
declares that "(j)udicial decisions applying the laws or
the Constitution shall form part of the legal system of the
Philippines."
Jurisprudence, in our system of government, cannot be
considered as an independent source of law; it cannot
create law.40 While it is true that judicial decisions which
apply or interpret the Constitution or the laws are part of
the legal system of the Philippines, still they are not
laws. Judicial decisions, though not laws, are
nonetheless evidence of what the laws mean, and it is
for this reason that they are part of the legal system of
the Philippines.41 Judicial decisions of the Supreme
Court assume the same authority as the statute
itself.42
Interpreting the aforequoted correlated provisions of the
Civil Code and in light of the above disquisition, this
Court emphatically declared in Co vs. Court of Appeals,
et al.43 that the principle of prospectivity applies not only
to original or amendatory statutes and administrative
rulings and circulars, but also, and properly so, to judicial
decisions. Our holding in the earlier case of People vs.
Jabinal44 echoes the rationale for this judicial
declaration, viz.:
Decisions of this Court, although in themselves not laws,
are nevertheless evidence of what the laws mean, and
this is the reason why under Article 8 of the New Civil
Code, "Judicial decisions applying or interpreting the
laws or the Constitution shall form part of the legal
system." The interpretation upon a law by this Court
constitutes, in a way, a part of the law as of the date that
the law was originally passed, since this Court's
construction merely establishes the contemporaneous
legislative intent that the law thus construed intends to
effectuate. The settled rule supported by numerous
authorities is a restatement of the legal maxim "legis
interpretatio legis vim obtinet" — the interpretation
placed upon the written law by a competent court has
the force of law. . . . , but when a doctrine of this Court is
overruled and a different view is adopted, the new
doctrine should be applied prospectively, and should not
apply to parties who had relied on the old doctrine and
acted on the faith thereof . . . . (Emphasis supplied).
This was forcefully reiterated in Spouses Benzonan vs.
Court of Appeals, et al.,45 where the Court expounded:
. . . . But while our decisions form part of the law of the
land, they are also subject to Article 4 of the Civil Code
which provides that "laws shall have no retroactive effect
unless the contrary is provided." This is expressed in the
familiar legal maxim lex prospicit, non respicit, the law
looks forward not backward. The rationale against
retroactivity is easy to perceive. The retroactive
application of a law usually divests rights that have
already become vested or impairs the obligations of
contract and hence, is unconstitutional (Francisco v.
Certeza, 3 SCRA 565 [1961]). The same consideration
underlies our rulings giving only prospective effect to
decisions enunciating new doctrines. . . . .
The reasoning behind Senarillos vs. Hermosisima46 that
judicial interpretation of a statute constitutes part of the
law as of the date it was originally passed, since the
Court's construction merely establishes the
contemporaneous legislative intent that the interpreted
law carried into effect, is all too familiar. Such judicial
doctrine does not amount to the passage of a new law
but consists merely of a construction or interpretation of
a pre-existing one, and that is precisely the situation
obtaining in this case.
It is consequently clear that a judicial interpretation
becomes a part of the law as of the date that law was
originally passed, subject only to the qualification that
when a doctrine of this Court is overruled and a different
view is adopted, and more so when there is a reversal
thereof, the new doctrine should be applied
prospectively and should not apply to parties who relied
on the old doctrine and acted in good faith.4 7 To hold
otherwise would be to deprive the law of its quality of
fairness and justice then, if there is no recognition of
what had transpired prior to such adjudication.48
There is merit in petitioners' impassioned and well-
founded argumentation:
The case of 20th Century Fox Film Corporation vs. Court
of Appeals, et al., 164 SCRA 655 (August 19, 1988)
(hereinafter 20th Century Fox) was inexistent in
December of 1987 when Search Warrant 87-053 was
issued by the lower court. Hence, it boggles the
imagination how the lower court could be expected to
apply the formulation of 20th Century Fox in finding
probable cause when the formulation was yet non-
existent.
xxx xxx xxx
In short, the lower court was convinced at that time after
conducting searching examination questions of the
applicant and his witnesses that "an offense had been
committed and that the objects sought in connection with
the offense (were) in the place sought to be searched"
(Burgos v. Chief of Staff, et al., 133 SCRA 800). It is
indisputable, therefore, that at the time of the application,
or on December 14, 1987, the lower court did not
commit any error nor did it fail to comply with any legal
requirement for the valid issuance of search warrant.
. . . (W)e believe that the lower court should be
considered as having followed the requirements of the
law in issuing Search Warrant No. 87-053. The search
warrant is therefore valid and binding. It must be noted
that nowhere is it found in the allegations of the
Respondents that the lower court failed to apply the law
as then interpreted in 1987. Hence, we find it absurd that
it is (sic) should be seen otherwise, because it is simply
impossible to have required the lower court to apply a
formulation which will only be defined six months later.
Furthermore, it is unjust and unfair to require compliance
with legal and/or doctrinal requirements which are
inexistent at the time they were supposed to have been
complied with.
xxx xxx xxx
. . . If the lower court's reversal will be sustained, what
encouragement can be given to courts and litigants to
respect the law and rules if they can expect with
reasonable certainty that upon the passage of a new
rule, their conduct can still be open to question? This
certainly breeds instability in our system of dispensing
justice. For Petitioners who took special effort to redress
their grievances and to protect their property rights by
resorting to the remedies provided by the law, it is most
unfair that fealty to the rules and procedures then
obtaining would bear but fruits of
injustice.49
Withal, even the proposition that the prospectivity of
judicial decisions imports application thereof not only to
future cases but also to cases still ongoing or not yet
final when the decision was promulgated, should not be
countenanced in the jural sphere on account of its
inevitably unsettling repercussions. More to the point, it
is felt that the reasonableness of the added requirement
in 20th Century Fox calling for the production of the
master tapes of the copyrighted films for determination
of probable cause in copyright infringement cases needs
revisiting and clarification.
It will be recalled that the 20th Century Fox case arose
from search warrant proceedings in anticipation of the
filing of a case for the unauthorized sale or renting out of
copyrighted films in videotape format in violation of
Presidential Decree No. 49. It revolved around the
meaning of probable cause within the context of the
constitutional provision against illegal searches and
seizures, as applied to copyright infringement cases
involving videotapes.
Therein it was ruled that —
The presentation of master tapes of the copyrighted
films from which the pirated films were allegedly copied,
was necessary for the validity of search warrants against
those who have in their possession the pirated films. The
petitioner's argument to the effect that the presentation
of the master tapes at the time of application may not be
necessary as these would be merely evidentiary in
nature and not determinative of whether or not a
probable cause exists to justify the issuance of the
search warrants is not meritorious. The court cannot
presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.
The application for search warrants was directed against
video tape outlets which allegedly were engaged in the
unauthorized sale and renting out of copyrighted films
belonging to the petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the similarity
or at least substantial similarity of the purported pirated
works to the copyrighted work. Hence, the applicant
must present to the court the copyrighted films to
compare them with the purchased evidence of the video
tapes allegedly pirated to determine whether the latter is
an unauthorized reproduction of the former. This linkage
of the copyrighted films to the pirated films must be
established to satisfy the requirements of probable
cause. Mere allegations as to the existence of the
copyrighted films cannot serve as basis for the issuance
of a search warrant.
For a closer and more perspicuous appreciation of the
factual antecedents of 20th Century Fox, the pertinent
portions of the decision therein are quoted hereunder, to
wit:
In the instant case, the lower court lifted the three
questioned search warrants against the private
respondents on the ground that it acted on the
application for the issuance of the said search warrants
and granted it on the misrepresentations of applicant
NBI and its witnesses that infringement of copyright or a
piracy of a particular film have been committed. Thus the
lower court stated in its questioned order dated January
2, 1986:
According to the movant, all three witnesses during the
proceedings in the application for the three search
warrants testified of their own personal knowledge. Yet,
Atty. Albino Reyes of the NBI stated that the counsel or
representative of the Twentieth Century Fox Corporation
will testify on the video cassettes that were pirated, so
that he did not have personal knowledge of the alleged
piracy. The witness Bacani also said that the video
cassettes were pirated without stating the manner it was
pirated and that it was Atty. Domingo that has
knowledge of that fact.
On the part of Atty. Domingo, he said that the re-taping
of the allegedly pirated tapes was from master tapes
allegedly belonging to the Twentieth Century Fox,
because, according to him it is of his personal
knowledge.
At the hearing of the Motion for Reconsideration, Senior
NBI Agent Atty. Albino Reyes testified that when the
complaint for infringement was brought to the NBI, the
master tapes of the allegedly pirated tapes were shown
to him and he made comparisons of the tapes with those
purchased by their man Bacani. Why the master tapes
or at least the film reels of the allegedly pirated tapes
were not shown to the Court during the application gives
some misgivings as to the truth of that bare statement of
the NBI agent on the witness stand.
Again as the application and search proceedings is a
prelude to the filing of criminal cases under PD 49, the
copyright infringement law, and although what is
required for the issuance thereof is merely the presence
of probable cause, that probable cause must be
satisfactory to the Court, for it is a time-honored precept
that proceedings to put a man to task as an offender
under our laws should be interpreted in strictissimi juris
against the government and liberally in favor of the
alleged offender.
xxx xxx xxx

This doctrine has never been overturned, and as a
matter of fact it had been enshrined in the Bill of Rights
in our 1973 Constitution.
So that lacking in persuasive effect, the allegation that
master tapes were viewed by the NBI and were
compared to the purchased and seized video tapes from
the respondents' establishments, it should be dismissed
as not supported by competent evidence and for that
matter the probable cause hovers in that grey debatable
twilight zone between black and white resolvable in favor
of respondents herein.
But the glaring fact is that "Cocoon," the first video tape
mentioned in the search warrant, was not even duly
registered or copyrighted in the Philippines. (Annex C of
Opposition p. 152 record.) So, that lacking in the
requisite presentation to the Court of an alleged master
tape for purposes of comparison with the purchased
evidence of the video tapes allegedly pirated and those
seized from respondents, there was no way to determine
whether there really was piracy, or copying of the film of
the complainant Twentieth Century Fox.
xxx xxx xxx
The lower court, therefore, lifted the three (3) questioned
search warrants in the absence of probable cause that
the private respondents violated P.D. 49. As found out
by the court, the NBI agents who acted as witnesses did
not have personal knowledge of the subject matter of
their testimony which was the alleged commission of the
offense by the private respondents. Only the petitioner's
counsel who was also a witness during the application
for the issuance of the search warrants stated that he
had personal knowledge that the confiscated tapes
owned by the private respondents were pirated tapes
taken from master tapes belonging to the petitioner.
However, the lower court did not give much credence to
his testimony in view of the fact that the master tapes of
the allegedly pirated tapes were not shown to the court
during the application (Emphasis ours).
The italicized passages readily expose the reason why
the trial court therein required the presentation of the
master tapes of the allegedly pirated films in order to
convince itself of the existence of probable cause under
the factual milieu peculiar to that case. In the case at
bar, respondent appellate court itself observed:
We feel that the rationale behind the aforequoted
doctrine is that the pirated copies as well as the master
tapes, unlike the other types of personal properties
which may be seized, were available for presentation to
the court at the time of the application for a search
warrant to determine the existence of the linkage of the
copyrighted films with the pirated ones. Thus, there is no
reason not the present them (Emphasis supplied ).50
In fine, the supposed pronunciamento in said case
regarding the necessity for the presentation of the
master tapes of the copyrighted films for the validity of
search warrants should at most be understood to merely
serve as a guidepost in determining the existence of
probable cause in copyright infringement cases where
there is doubt as to the true nexus between the master
tape and the pirated copies. An objective and careful
reading of the decision in said case could lead to no
other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in
all or similar copyright infringement cases. Judicial dicta
should always be construed within the factual matrix of
their parturition, otherwise a careless interpretation
thereof could unfairly fault the writer with the vice of
overstatement and the reader with the fallacy of undue
generalization.
In the case at bar, NBI Senior Agent Lauro C. Reyes
who filed the application for search warrant with the
lower court following a formal complaint lodged by
petitioners, judging from his affidavit51 and his
deposition,52 did testify on matters within his personal
knowledge based on said complaint of petitioners as well
as his own investigation and surveillance of the private
respondents' video rental shop. Likewise, Atty. Rico V.
Domingo, in his capacity as attorney-in-fact, stated in his
affidavit53 and further expounded in his deposition54
that he personally knew of the fact that private
respondents had never been authorized by his clients to
reproduce, lease and possess for the purpose of selling
any of the copyrighted films.
Both testimonies of Agent Reyes and Atty. Domingo
were corroborated by Rene C. Baltazar, a private
researcher retained by Motion Pictures Association of
America, Inc. (MPAA, Inc.), who was likewise presented
as a witness during the search warrant proceedings.55
The records clearly reflect that the testimonies of the
abovenamed witnesses were straightforward and
stemmed from matters within their personal knowledge.
They displayed none of the ambivalence and uncertainty
that the witnesses in the 20th Century Fox case
exhibited. This categorical forthrightness in their
statements, among others, was what initially and
correctly convinced the trial court to make a finding of
the existence of probable cause.
There is no originality in the argument of private
respondents against the validity of the search warrant,
obviously borrowed from 20th Century Fox, that
petitioners' witnesses — NBI Agent Lauro C. Reyes,
Atty. Rico V. Domingo and Rene C. Baltazar — did not
have personal knowledge of the subject matter of their
respective testimonies and that said witnesses' claim
that the video tapes were pirated, without stating the
manner by which these were pirated, is a conclusion of
fact without basis.56 The difference, it must be pointed
out, is that the records in the present case reveal that (1)
there is no allegation of misrepresentation, much less a
finding thereof by the lower court, on the part of
petitioners' witnesses; (2) there is no denial on the part
of private respondents that the tapes seized were
illegitimate copies of the copyrighted ones not have they
shown that they were given any authority by petitioners
to copy, sell, lease, distribute or circulate, or at least, to
offer for sale, lease, distribution or circulation the said
video tapes; and (3) a discreet but extensive surveillance
of the suspected area was undertaken by petitioners'
witnesses sufficient to enable them to execute
trustworthy affidavits and depositions regarding matters
discovered in the course thereof and of which they have
personal knowledge.
It is evidently incorrect to suggest, as the ruling in 20th
Century Fox may appear to do, that in copyright
infringement cases, the presentation of master tapes of
the copyrighted films is always necessary to meet the
requirement of probable cause and that, in the absence
thereof, there can be no finding of probable cause for the
issuance of a search warrant. It is true that such master
tapes are object evidence, with the merit that in this
class of evidence the ascertainment of the controverted
fact is made through demonstrations involving the direct
use of the senses of the presiding magistrate.57 Such
auxiliary procedure, however, does not rule out the use
of testimonial or documentary evidence, depositions,
admissions or other classes of evidence tending to prove
the factum probandum,58 especially where the
production in court of object evidence would result in
delay, inconvenience or expenses out of proportion to its
evidentiary value.59
Of course, as a general rule, constitutional and statutory
provisions relating to search warrants prohibit their
issuance except on a showing of probable cause,
supported by oath or affirmation. These provisions
prevent the issuance of warrants on loose, vague, or
doubtful bases of fact, and emphasize the purpose to
protect against all general searches.60 Indeed, Article III
of our Constitution mandates in Sec. 2 thereof that no
search warrant shall issue except upon probable cause
to be determined personally by the judge after
examination under oath or affirmation of the complainant
and the witnesses he may produce, and particularly
describing the place to be searched and the things to be
seized; and Sec. 3 thereof provides that any evidence
obtained in violation of the preceding section shall be
inadmissible for any purpose in any proceeding.
These constitutional strictures are implemented by the
following provisions of Rule 126 of the Rules of Court:
Sec. 3. Requisites for issuing search warrant. — A
search warrant shall not issue but upon probable cause
in connection with one specific offense to be determined
personally by the judge after examination under oath or
affirmation of the complainant and the witnesses he may
produce, and particularly describing the place to be
searched and the things to be seized.
Sec. 4. Examination of complainant; record. — The
judge must, before issuing the warrant, personally
examine in the form of searching questions and
answers, in writing and under oath the complainant and
any witnesses he may produce on facts personally
known to them and attach to the record their sworn
statements together with any affidavits submitted.
Sec. 5. Issuance and form of search warrant. — If the
judge is thereupon satisfied of the existence of facts
upon which the application is based, or that there is
probable cause to believe that they exist, he must issue
the warrant, which must be substantially in the form
prescribed by these Rules.
The constitutional and statutory provisions of various
jurisdictions requiring a showing of probable cause
before a search warrant can be issued are mandatory
and must be complied with, and such a showing has
been held to be an unqualified condition precedent to the
issuance of a warrant. A search warrant not based on
probable cause is a nullity, or is void, and the issuance
thereof is, in legal contemplation, arbitrary.61 It
behooves us, then, to review the concept of probable
cause, firstly, from representative holdings in the
American jurisdiction from which we patterned our
doctrines on the matter.
Although the term "probable cause" has been said to
have a well-defined meaning in the law, the term is
exceedingly difficult to define, in this case, with any
degree of precision; indeed, no definition of it which
would justify the issuance of a search warrant can be
formulated which would cover every state of facts which
might arise, and no formula or standard, or hard and fast
rule, may be laid down which may be applied to the facts
of every situation.62 As to what acts constitute probable
cause seem incapable of definition.63 There is, of
necessity, no exact test.64
At best, the term "probable cause" has been understood
to mean a reasonable ground of suspicion, supported by
circumstances sufficiently strong in themselves to
warrant a cautious man in the belief that the person
accused is guilty of the offense with which he is
charged;65 or the existence of such facts and
circumstances as would excite an honest belief in a
reasonable mind acting on all the facts and
circumstances within the knowledge of the magistrate
that the charge made by the applicant for the warrant is
true.66
Probable cause does not mean actual and positive
cause, nor does it import absolute certainty. The
determination of the existence of probable cause is not
concerned with the question of whether the offense
charged has been or is being committed in fact, or
whether the accused is guilty or innocent, but only
whether the affiant has reasonable grounds for his
belief.67 The requirement is less than certainty or proof ,
but more than suspicion or possibility.68
In Philippine jurisprudence, probable cause has been
uniformly defined as such facts and circumstances which
would lead a reasonable, discreet and prudent man to
believe that an offense has been committed, and that the
objects sought in connection with the offense are in the
place sought to be searched.69 It being the duty of the
issuing officer to issue, or refuse to issue, the warrant as
soon as practicable after the application therefor is
filed,70 the facts warranting the conclusion of probable
cause must be assessed at the time of such judicial
determination by necessarily using legal standards then
set forth in law and jurisprudence, and not those that
have yet to be crafted thereafter.
As already stated, the definition of probable cause
enunciated in Burgos, Sr. vs. Chief of Staff, et al., supra,
vis-a-vis the provisions of Sections 3 and 4 of Rule 126,
were the prevailing and controlling legal standards, as
they continue to be, by which a finding of probable cause
is tested. Since the propriety of the issuance of a search
warrant is to be determined at the time of the application
therefor, which in turn must not be too remote in time
from the occurrence of the offense alleged to have been
committed, the issuing judge, in determining the
existence of probable cause, can and should logically
look to the touchstones in the laws theretofore enacted
and the decisions already promulgated at the time, and
not to those which had not yet even been conceived or
formulated.
It is worth noting that neither the Constitution nor the
Rules of Court attempt to define probable cause,
obviously for the purpose of leaving such matter to the
court's discretion within the particular facts of each case.
Although the Constitution prohibits the issuance of a
search warrant in the absence of probable cause, such
constitutional inhibition does not command the
legislature to establish a definition or formula for
determining what shall constitute probable cause.71
Thus, Congress, despite its broad authority to fashion
standards of reasonableness for searches and
seizures,72 does not venture to make such a definition
or standard formulation of probable cause, nor
categorize what facts and circumstances make up the
same, much less limit the determination thereof to and
within the circumscription of a particular class of
evidence, all in deference to judicial discretion and
probity.73
Accordingly, to restrict the exercise of discretion by a
judge by adding a particular requirement (the
presentation of master tapes, as intimated by 20th
Century Fox) not provided nor implied in the law for a
finding of probable cause is beyond the realm of judicial
competence or statesmanship. It serves no purpose but
to stultify and constrict the judicious exercise of a court's
prerogatives and to denigrate the judicial duty of
determining the existence of probable cause to a mere
ministerial or mechanical function. There is, to repeat, no
law or rule which requires that the existence of probable
cause is or should be determined solely by a specific
kind of evidence. Surely, this could not have been
contemplated by the framers of the Constitution, and we
do not believe that the Court intended the statement in
20th Century Fox regarding master tapes as the dictum
for all seasons and reasons in infringement cases.
Turning now to the case at bar, it can be gleaned from
the records that the lower court followed the prescribed
procedure for the issuance of a search warrant: (1) the
examination under oath or affirmation of the complainant
and his witnesses, with them particularly describing the
place to be searched and the things to be seized; (2) an
examination personally conducted by the judge in the
form of searching questions and answers, in writing and
under oath of the complainant and witnesses on facts
personally known to them; and, (3) the taking of sworn
statements, together with the affidavits submitted, which
were duly attached to the records.
Thereafter, the court a quo made the following factual
findings leading to the issuance of the search warrant
now subject of this controversy:
In the instant case, the following facts have been
established: (1) copyrighted video tapes bearing titles
enumerated in Search Warrant No. 87-053 were being
sold, leased, distributed or circulated, or offered for sale,
lease, distribution, or transferred or caused to be
transferred by defendants at their video outlets, without
the written consent of the private complainants or their
assignee; (2) recovered or confiscated from defendants'
possession were video tapes containing copyrighted
motion picture films without the authority of the
complainant; (3) the video tapes originated from
spurious or unauthorized persons; and (4) said video
tapes were exact reproductions of the films listed in the
search warrant whose copyrights or distribution rights
were owned by complainants.
The basis of these facts are the affidavits and
depositions of NBI Senior Agent Lauro C. Reyes, Atty.
Rico V. Domingo, and Rene C. Baltazar. Motion Pictures
Association of America, Inc. (MPAA) thru their counsel,
Atty. Rico V. Domingo, filed a complaint with the
National Bureau of Investigation against certain video
establishments one of which is defendant, for violation of
PD No. 49 as amended by PD No. 1988. Atty. Lauro C.
Reyes led a team to conduct discreet surveillance
operations on said video establishments. Per information
earlier gathered by Atty. Domingo, defendants were
engaged in the illegal sale, rental, distribution, circulation
or public exhibition of copyrighted films of MPAA without
its written authority or its members. Knowing that
defendant Sunshine Home Video and its proprietor, Mr.
Danilo Pelindario, were not authorized by MPAA to
reproduce, lease, and possess for the purpose of selling
any of its copyrighted motion pictures, instructed his
researcher, Mr. Rene Baltazar to rent two video
cassettes from said defendants on October 21, 1987.
Rene C. Baltazar proceeded to Sunshine Home Video
and rented tapes containing Little Shop of Horror. He
was issued rental slip No. 26362 dated October 21, 1987
for P10.00 with a deposit of P100.00. Again, on
December 11, 1987, the returned to Sunshine Home
Video and rented Robocop with rental slip No. 25271
also for P10.00: On the basis of the complaint of MPAA
thru counsel, Atty. Lauro C. Reyes personally went to
Sunshine Home Video at No. 6 Mayfair Center,
Magallanes Commercial Center, Makati. His last visit
was on December 7, 1987. There, he found the video
outlet renting, leasing, distributing video cassette tapes
whose titles were copyrighted and without the authority
of MPAA.
Given these facts, a probable cause exists. . . .74
The lower court subsequently executed a volte-face,
despite its prior detailed and substantiated findings, by
stating in its order of November 22, 1988 denying
petitioners' motion for reconsideration and quashing the
search warrant that —
. . . The two (2) cases have a common factual milieu;
both involve alleged pirated copyrighted films of private
complainants which were found in the possession or
control of the defendants. Hence, the necessity of the
presentation of the master tapes from which the pirated
films were allegedly copied is necessary in the instant
case, to establish the existence of probable cause.75
Being based solely on an unjustifiable and improper
retroactive application of the master tape requirement
generated by 20th Century Fox upon a factual situation
completely different from that in the case at bar, and
without anything more, this later order clearly defies
elemental fair play and is a gross reversible error. In fact,
this observation of the Court in La Chemise Lacoste,
S.A. vs. Fernandez, et al., supra, may just as easily
apply to the present case:
A review of the grounds invoked . . . in his motion to
quash the search warrants reveals the fact that they are
not appropriate for quashing a warrant. They are matters
of defense which should be ventilated during the trial on
the merits of the case. . . .
As correctly pointed out by petitioners, a blind espousal
of the requisite of presentation of the master tapes in
copyright infringement cases, as the prime determinant
of probable cause, is too exacting and impracticable a
requirement to be complied with in a search warrant
application which, it must not be overlooked, is only an
ancillary proceeding. Further, on realistic considerations,
a strict application of said requirement militates against
the elements of secrecy and speed which underlie covert
investigative and surveillance operations in police
enforcement campaigns against all forms of criminality,
considering that the master tapes of a motion picture
required to be presented before the court consists of
several reels contained in circular steel casings which,
because of their bulk, will definitely draw attention, unlike
diminutive objects like video tapes which can be easily
concealed.76 With hundreds of titles being pirated, this
onerous and tedious imposition would be multiplied a
hundredfold by judicial fiat, discouraging and preventing
legal recourses in foreign jurisdictions.
Given the present international awareness and furor
over violations in large scale of intellectual property
rights, calling for transnational sanctions, it bears calling
to mind the Court's admonition also in La Chemise
Lacoste, supra, that —
. . . . Judges all over the country are well advised to
remember that court processes should not be used as
instruments to, unwittingly or otherwise, aid
counterfeiters and intellectual pirates, tie the hands of
the law as it seeks to protect the Filipino consuming
public and frustrate executive and administrative
implementation of solemn commitments pursuant to
international conventions and treaties.
III
The amendment to Section 56 of Presidential Decree
No. 49 by Presidential Decree No. 1987,77 which should
here be publicized judicially, brought about the revision
of its penalty structure and enumerated additional acts
considered violative of said decree on intellectual
property, namely, (1) directly or indirectly transferring or
causing to be transferred any sound recording or motion
picture or other audio-visual works so recorded with
intent to sell, lease, publicly exhibit or cause to be sold,
leased or publicly exhibited, or to use or cause to be
used for profit such articles on which sounds, motion
pictures, or other audio-visual works are so transferred
without the written consent of the owner or his assignee;
(2) selling, leasing, distributing, circulating, publicly
exhibiting, or offering for sale, lease, distribution, or
possessing for the purpose of sale, lease, distribution,
circulation or public exhibition any of the
abovementioned articles, without the written consent of
the owner or his assignee; and, (3) directly or indirectly
offering or making available for a fee, rental, or any other
form of compensation any equipment, machinery,
paraphernalia or any material with the knowledge that
such equipment, machinery, paraphernalia or material
will be used by another to reproduce, without the
consent of the owner, any phonograph record, disc, wire,
tape, film or other article on which sounds, motion
pictures or other audio-visual recordings may be
transferred, and which provide distinct bases for criminal
prosecution, being crimes independently punishable
under Presidential Decree No. 49, as amended, aside
from the act of infringing or aiding or abetting such
infringement under Section 29.
The trial court's finding that private respondents
committed acts in blatant transgression of Presidential
Decree No. 49 all the more bolsters its findings of
probable cause, which determination can be reached
even in the absence of master tapes by the judge in the
exercise of sound discretion. The executive concern and
resolve expressed in the foregoing amendments to the
decree for the protection of intellectual property rights
should be matched by corresponding judicial vigilance
and activism, instead of the apathy of submitting to
technicalities in the face of ample evidence of guilt.
The essence of intellectual piracy should be essayed in
conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a
copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or
piracy, which is a synonymous term in this connection,
consists in the doing by any person, without the consent
of the owner of the copyright, of anything the sole right to
do which is conferred by statute on the owner of the
copyright.78
A copy of a piracy is an infringement of the original, and
it is no defense that the pirate, in such cases, did not
know what works he was indirectly copying, or did not
know whether or not he was infringing any copyright; he
at least knew that what he was copying was not his, and
he copied at his peril. In determining the question of
infringement, the amount of matter copied from the
copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole
or even a large portion of the work shall have been
copied. If so much is taken that the value of the original
is sensibly diminished, or the labors of the original author
are substantially and to an injurious extent appropriated
by another, that is sufficient in point of law to constitute a
piracy.79 The question of whether there has been an
actionable infringement of a literary, musical, or artistic
work in motion pictures, radio or television being one of
fact,80 it should properly be determined during the trial.
That is the stage calling for conclusive or preponderating
evidence, and not the summary proceeding for the
issuance of a search warrant wherein both lower courts
erroneously require the master tapes.
In disregarding private respondent's argument that
Search Warrant No. 87-053 is a general warrant, the
lower court observed that "it was worded in a manner
that the enumerated seizable items bear direct relation
to the offense of violation of Sec. 56 of PD 49 as
amended. It authorized only the seizur(e) of articles used
or intended to be used in the unlawful sale, lease and
other unconcerted acts in violation of PD 49 as
amended. . . .81
On this point, Bache and Co., (Phil.), Inc., et al. vs. Ruiz,
et al.,82 instructs and enlightens:
A search warrant may be said to particularly describe the
things to be seized when the description therein is as
specific as the circumstances will ordinarily allow
(People vs. Rubio, 57 Phil. 384); or when the description
expresses a conclusion of fact — not of law — by which
the warrant officer may be guided in making the search
and seizure (idem., dissent of Abad Santos, J.,); or when
the things described are limited to those which bear
direct relation to the offense for which the warrant is
being issued (Sec 2, Rule 126, Revised Rules of Court).
. . . If the articles desired to be seized have any direct
relation to an offense committed, the applicant must
necessarily have some evidence, other than those
articles, to prove the said offense; and the articles
subject of search and seizure should come in handy
merely to strengthen such evidence. . . .
On private respondents' averment that the search
warrant was made applicable to more than one specific
offense on the ground that there are as many offenses of
infringement as there are rights protected and, therefore,
to issue one search warrant for all the movie titles
allegedly pirated violates the rule that a search warrant
must be issued only in connection with one specific
offense, the lower court said:
. . . . As the face of the search warrant itself indicates, it
was issued for violation of Section 56, PD 49 as
amended only. The specifications therein (in Annex A)
merely refer to the titles of the copyrighted motion
pictures/films belonging to private complainants which
defendants were in control/possession for sale, lease,
distribution or public exhibition in contravention of Sec.
56, PD 49 as amended.83
That there were several counts of the offense of
copyright infringement and the search warrant
uncovered several contraband items in the form of
pirated video tapes is not to be confused with the
number of offenses charged. The search warrant herein
issued does not violate the one-specific-offense rule.
It is pointless for private respondents to insist on
compliance with the registration and deposit
requirements under Presidential Decree No. 49 as
prerequisites for invoking the court's protective mantle in
copyright infringement cases. As explained by the court
below:
Defendants-movants contend that PD 49 as amended
covers only producers who have complied with the
requirements of deposit and notice (in other words
registration) under Sections 49 and 50 thereof. Absent
such registration, as in this case, there was no right
created, hence, no infringement under PD 49 as
amended. This is not well-taken.
As correctly pointed out by private complainants-
oppositors, the Department of Justice has resolved this
legal question as far back as December 12, 1978 in its
Opinion No. 191 of the then Secretary of Justice Vicente
Abad Santos which stated that Sections 26 and 50 do
not apply to cinematographic works and PD No. 49 "had
done away with the registration and deposit of
cinematographic works" and that "even without prior
registration and deposit of a work which may be entitled
to protection under the Decree, the creator can file
action for infringement of its rights". He cannot demand,
however, payment of damages arising from
infringement. The same opinion stressed that "the
requirements of registration and deposit are thus
retained under the Decree, not as conditions for the
acquisition of copyright and other rights, but as
prerequisites to a suit for damages". The statutory
interpretation of the Executive Branch being correct, is
entitled (to) weight and respect.
xxx xxx xxx
Defendants-movants maintain that complainant and his
witnesses led the Court to believe that a crime existed
when in fact there was none. This is wrong. As earlier
discussed, PD 49 as amended, does not require
registration and deposit for a creator to be able to file an
action for infringement of his rights. These conditions are
merely pre-requisites to an action for damages. So, as
long as the proscribed acts are shown to exist, an action
for infringement may be initiated.84
Accordingly, the certifications85 from the Copyright
Section of the National Library, presented as evidence
by private respondents to show non-registration of some
of the films of petitioners, assume no evidentiary weight
or significance whatsoever.
Furthermore, a closer review of Presidential Decree No.
49 reveals that even with respect to works which are
required under Section 26 thereof to be registered and
with copies to deposited with the National Library, such
as books, including composite and cyclopedic works,
manuscripts, directories and gazetteers; and periodicals,
including pamphlets and newspapers; lectures, sermons,
addresses, dissertations prepared for oral delivery; and
letters, the failure to comply with said requirements does
not deprive the copyright owner of the right to sue for
infringement. Such non-compliance merely limits the
remedies available to him and subjects him to the
corresponding sanction.
The reason for this is expressed in Section 2 of the
decree which prefaces its enumeration of copyrightable
works with the explicit statement that "the rights granted
under this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of
works." This means that under the present state of the
law, the copyright for a work is acquired by an
intellectual creator from the moment of creation even in
the absence of registration and deposit. As has been
authoritatively clarified:
The registration and deposit of two complete copies or
reproductions of the work with the National Library within
three weeks after the first public dissemination or
performance of the work, as provided for in Section 26
(P.D. No. 49, as amended), is not for the purpose of
securing a copyright of the work, but rather to avoid the
penalty for non-compliance of the deposit of said two
copies and in order to recover damages in an
infringement suit.86
One distressing observation. This case has been fought
on the basis of, and its resolution long delayed by resort
to, technicalities to a virtually abusive extent by private
respondents, without so much as an attempt to adduce
any credible evidence showing that they conduct their
business legitimately and fairly. The fact that private
respondents could not show proof of their authority or
that there was consent from the copyright owners for
them to sell, lease, distribute or circulate petitioners'
copyrighted films immeasurably bolsters the lower
court's initial finding of probable cause. That private
respondents are licensed by the Videogram Regulatory
Board does not insulate them from criminal and civil
liability for their unlawful business practices. What is
more deplorable is that the reprehensible acts of some
unscrupulous characters have stigmatized the
Philippines with an unsavory reputation as a hub for
intellectual piracy in this part of the globe, formerly in the
records of the General Agreement on Tariffs and Trade
and, now, of the World Trade Organization. Such acts
must not be glossed over but should be denounced and
repressed lest the Philippines become an international
pariah in the global intellectual community.
WHEREFORE, the assailed judgment and resolution of
respondent Court of Appeals, and necessarily inclusive
of the order of the lower court dated November 22, 1988,
are hereby REVERSED and SET ASIDE. The order of
the court a quo of September 5, 1988 upholding the
validity of Search Warrant No. 87-053 is hereby
REINSTATED, and said court is DIRECTED to take and
expeditiously proceed with such appropriate proceedings
as may be called for in this case. Treble costs are further
assessed against private respondents.
SO ORDERED.
[G.R. No. 131522. July 19, 1999]
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N.
FERNANDO, petitioners, vs. FELICIDAD C. ROBLES
and GOODWILL TRADING CO., INC., respondents.
DECISION
PARDO, J.:
The case before us is a petition for review on certiorari[1]
to set aside the (a) decision of the Court of Appeals[2],
and (b) the resolution denying petitioners motion for
reconsideration,[3] in which the appellate court affirmed
the trial courts dismissal of the complaint for
infringement and/or unfair competition and damages but
deleted the award for attorneys fees.
The facts are as follows:
Petitioners are authors and copyright owners of duly
issued certificates of copyright registration covering their
published works, produced through their combined
resources and efforts, entitled COLLEGE ENGLISH
FOR TODAY (CET for brevity), Books 1 and 2, and
WORKBOOK FOR COLLEGE FRESHMAN ENGLISH,
Series 1.
Respondent Felicidad Robles and Goodwill Trading Co.,
Inc. are the author/publisher and distributor/seller of
another published work entitled DEVELOPING
ENGLISH PROFICIENCY (DEP for brevity), Books 1
and 2 (1985 edition) which book was covered by
copyrights issued to them.
In the course of revising their published works,
petitioners scouted and looked around various
bookstores to check on other textbooks dealing with the
same subject matter. By chance they came upon the
book of respondent Robles and upon perusal of said
book they were surprised to see that the book was
strikingly similar to the contents, scheme of presentation,
illustrations and illustrative examples in their own book,
CET.
After an itemized examination and comparison of the two
books (CET and DEP), petitioners found that several
pages of the respondents book are similar, if not all
together a copy of petitioners book, which is a case of
plagiarism and copyright infringement.
Petitioners then made demands for damages against
respondents and also demanded that they cease and
desist from further selling and distributing to the general
public the infringed copies of respondent Robles works.
However, respondents ignored the demands, hence, on
July 7, 1988, petitioners filed with the Regional Trial
Court, Makati, a complaint for Infringement and/or unfair
competition with damages[4] against private
respondents.[5]
In the complaint, petitioners alleged that in 1985,
respondent Felicidad C. Robles being substantially
familiar with the contents of petitioners works, and
without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their
book CET. The textual contents and illustrations of CET
were literally reproduced in the book DEP. The
plagiarism, incorporation and reproduction of particular
portions of the book CET in the book DEP, without the
authority or consent of petitioners, and the
misrepresentations of respondent Robles that the same
was her original work and concept adversely affected
and substantially diminished the sale of the petitioners
book and caused them actual damages by way of
unrealized income.
Despite the demands of the petitioners for respondents
to desist from committing further acts of infringement
and for respondent to recall DEP from the market,
respondents refused. Petitioners asked the court to
order the submission of all copies of the book DEP,
together with the molds, plates and films and other
materials used in its printing destroyed, and for
respondents to render an accounting of the proceeds of
all sales and profits since the time of its publication and
sale.
Respondent Robles was impleaded in the suit because
she authored and directly committed the acts of
infringement complained of, while respondent Goodwill
Trading Co., Inc. was impleaded as the publisher and
joint co-owner of the copyright certificates of registration
covering the two books authored and caused to be
published by respondent Robles with obvious
connivance with one another.
On July 27, 1988, respondent Robles filed a motion for a
bill of particulars[6] which the trial court approved on
August 17, 1988. Petitioners complied with the desired
particularization, and furnished respondent Robles the
specific portions, inclusive of pages and lines, of the
published and copyrighted books of the petitioners which
were transposed, lifted, copied and plagiarized and/or
otherwise found their way into respondents book.
On August 1, 1988, respondent Goodwill Trading Co.,
Inc. filed its answer to the complaint[7] and alleged that
petitioners had no cause of action against Goodwill
Trading Co., Inc. since it was not privy to the
misrepresentation, plagiarism, incorporation and
reproduction of the portions of the book of petitioners;
that there was an agreement between Goodwill and the
respondent Robles that Robles guaranteed Goodwill that
the materials utilized in the manuscript were her own or
that she had secured the necessary permission from
contributors and sources; that the author assumed sole
responsibility and held the publisher without any liability.
On November 28, 1988, respondent Robles filed her
answer[8], and denied the allegations of plagiarism and
copying that petitioners claimed. Respondent stressed
that (1) the book DEP is the product of her independent
researches, studies and experiences, and was not a
copy of any existing valid copyrighted book; (2) DEP
followed the scope and sequence or syllabus which are
common to all English grammar writers as
recommended by the Association of Philippine Colleges
of Arts and Sciences (APCAS), so any similarity
between the respondents book and that of the
petitioners was due to the orientation of the authors to
both works and standards and syllabus; and (3) the
similarities may be due to the authors exercise of the
right to fair use of copyrigthed materials, as guides.
Respondent interposed a counterclaim for damages on
the ground that bad faith and malice attended the filing
of the complaint, because petitioner Habana was
professionally jealous and the book DEP replaced CET
as the official textbook of the graduate studies
department of the Far Eastern University.[9]
During the pre-trial conference, the parties agreed to a
stipulation of facts[10] and for the trial court to first
resolve the issue of infringement before disposing of the
claim for damages.
After the trial on the merits, on April 23, 1993, the trial
court rendered its judgment finding thus:
WHEREFORE, premises considered, the court hereby
orders that the complaint filed against defendants
Felicidad Robles and Goodwill Trading Co., Inc. shall be
DISMISSED; that said plaintiffs solidarily reimburse
defendant Robles for P20,000.00 attorneys fees and
defendant Goodwill for P5,000.00 attorneys fees.
Plaintiffs are liable for cost of suit.
IT IS SO ORDERED.
Done in the City of Manila this 23rd day of April, 1993.
(s/t) MARVIE R. ABRAHAM SINGSON
Assisting Judge
S. C. Adm. Order No. 124-92[11]
On May 14, 1993, petitioners filed their notice of appeal
with the trial court[12], and on July 19, 1993, the court
directed its branch clerk of court to forward all the
records of the case to the Court of Appeals.[13]
In the appeal, petitioners argued that the trial court
completely disregarded their evidence and fully
subscribed to the arguments of respondent Robles that
the books in issue were purely the product of her
researches and studies and that the copied portions
were inspired by foreign authors and as such not subject
to copyright. Petitioners also assailed the findings of the
trial court that they were animated by bad faith in
instituting the complaint.[14]
On June 27, 1997, the Court of Appeals rendered
judgment in favor of respondents Robles and Goodwill
Trading Co., Inc. The relevant portions of the decision
state:
It must be noted, however, that similarity of the allegedly
infringed work to the authors or proprietors copyrighted
work does not of itself establish copyright infringement,
especially if the similarity results from the fact that both
works deal with the same subject or have the same
common source, as in this case.
Appellee Robles has fully explained that the portion or
material of the book claimed by appellants to have been
copied or lifted from foreign books. She has duly proven
that most of the topics or materials contained in her
book, with particular reference to those matters claimed
by appellants to have been plagiarized were topics or
matters appearing not only in appellants and her books
but also in earlier books on College English, including
foreign books, e.i. Edmund Burkes Speech on
Conciliation, Boerigs Competence in English and
Broughtons, Edmund Burkes Collection.
xxx
Appellants reliance on the last paragraph on Section 11
is misplaced. It must be emphasized that they failed to
prove that their books were made sources by
appellee.[15]
The Court of Appeals was of the view that the award of
attorneys fees was not proper, since there was no bad
faith on the part of petitioners Habana et al. in instituting
the action against respondents.
On July 12, 1997, petitioners filed a motion for
reconsideration,[16] however, the Court of Appeals
denied the same in a Resolution[17] dated November
25, 1997.
Hence, this petition.
In this appeal, petitioners submit that the appellate court
erred in affirming the trial courts decision.
Petitioners raised the following issues: (1) whether or
not, despite the apparent textual, thematic and
sequential similarity between DEP and CET,
respondents committed no copyright infringement; (2)
whether or not there was animus furandi on the part of
respondent when they refused to withdraw the copies of
CET from the market despite notice to withdraw the
same; and (3) whether or not respondent Robles abused
a writers right to fair use, in violation of Section 11 of
Presidential Decree No. 49.[18]
We find the petition impressed with merit.
The complaint for copyright infringement was filed at the
time that Presidential Decree No. 49 was in force. At
present, all laws dealing with the protection of intellectual
property rights have been consolidated and as the law
now stands, the protection of copyrights is governed by
Republic Act No. 8293. Notwithstanding the change in
the law, the same principles are reiterated in the new law
under Section 177. It provides for the copy or economic
rights of an owner of a copyright as follows:
Sec.177. Copy or Economic rights.Subject to the
provisions of chapter VIII, copyright or economic rights
shall consist of the exclusive right to carry out, authorize
or prevent the following acts:
177.1 Reproduction of the work or substantial portion of
the work;
177.2 Dramatization, translation, adaptation,
abridgement, arrangement or other transformation of the
work;
177.3 The first public distribution of the original and each
copy of the work by sale or other forms of transfer of
ownership;
177.4 Rental of the original or a copy of an audiovisual
or cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data
and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy
which is the subject of the rental; (n)
177.5 Public display of the original or copy of the work;
177.6 Public performance of the work; and
177.7 Other communication to the public of the work[19]
The law also provided for the limitations on copyright,
thus:
Sec. 184.1 Limitations on copyright.-- Notwithstanding
the provisions of Chapter V, the following acts shall not
constitute infringement of copyright:
(a) the recitation or performance of a work, once it has
been lawfully made accessible to the public, if done
privately and free of charge or if made strictly for a
charitable or religious institution or society; [Sec. 10(1),
P.D. No. 49]
(b) The making of quotations from a published work if
they are compatible with fair use and only to the extent
justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press
summaries; Provided, that the source and the name of
the author, if appearing on the work are mentioned;
(Sec. 11 third par. P.D.49)
xxxxxxxxxxxx
(e) The inclusion of a work in a publication, broadcast, or
other communication to the public, sound recording of
film, if such inclusion is made by way of illustration for
teaching purposes and is compatible with fair use:
Provided, That the source and the name of the author, if
appearing in the work is mentioned;[20]
In the above quoted provisions, work has reference to
literary and artistic creations and this includes books and
other literary, scholarly and scientific works.[21]
A perusal of the records yields several pages of the book
DEP that are similar if not identical with the text of CET.
On page 404 of petitioners Book 1 of College English for
Today, the authors wrote:
Items in dates and addresses:
He died on Monday, April 15, 1975.
Miss Reyes lives in 214 Taft Avenue,
Manila[22]
On page 73 of respondents Book 1 Developing English
Today, they wrote:
He died on Monday, April 25, 1975.
Miss Reyes address is 214 Taft Avenue Manila[23]
On Page 250 of CET, there is this example on
parallelism or repetition of sentence structures, thus:
The proposition is peace. Not peace through the medium
of war; not peace to be hunted through the labyrinth of
intricate and endless negotiations; not peace to arise out
of universal discord, fomented from principle, in all parts
of the empire; not peace to depend on the juridical
determination of perplexing questions, or the precise
marking of the boundary of a complex government. It is
simple peace; sought in its natural course, and in its
ordinary haunts. It is peace sought in the spirit of peace,
and laid in principles purely pacific.
--- Edmund Burke, Speech on Criticism.[24]
On page 100 of the book DEP[25], also in the topic of
parallel structure and repetition, the same example is
found in toto. The only difference is that petitioners
acknowledged the author Edmund Burke, and
respondents did not.
In several other pages[26] the treatment and manner of
presentation of the topics of DEP are similar if not a
rehash of that contained in CET.
We believe that respondent Robles act of lifting from the
book of petitioners substantial portions of discussions
and examples, and her failure to acknowledge the same
in her book is an infringement of petitioners copyrights.
When is there a substantial reproduction of a book? It
does not necessarily require that the entire copyrighted
work, or even a large portion of it, be copied. If so much
is taken that the value of the original work is substantially
diminished, there is an infringement of copyright and to
an injurious extent, the work is appropriated.[27]
In determining the question of infringement, the amount
of matter copied from the copyrighted work is an
important consideration. To constitute infringement, it is
not necessary that the whole or even a large portion of
the work shall have been copied. If so much is taken that
the value of the original is sensibly diminished, or the
labors of the original author are substantially and to an
injurious extent appropriated by another, that is sufficient
in point of law to constitute piracy.[28]
The essence of intellectual piracy should be essayed in
conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a
copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or
piracy, which is a synonymous term in this connection,
consists in the doing by any person, without the consent
of the owner of the copyright, of anything the sole right to
do which is conferred by statute on the owner of the
copyright.[29]
The respondents claim that the copied portions of the
book CET are also found in foreign books and other
grammar books, and that the similarity between her style
and that of petitioners can not be avoided since they
come from the same background and orientation may be
true. However, in this jurisdiction under Sec 184 of
Republic Act 8293 it is provided that:
Limitations on Copyright. Notwithstanding the provisions
of Chapter V, the following shall not constitute
infringement of copyright:
xxxxxxxxxxxx
(c) The making of quotations from a published work if
they are compatible with fair use and only to the extent
justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press
summaries: Provided, That the source and the name of
the author, if appearing on the work, are mentioned.
A copy of a piracy is an infringement of the original, and
it is no defense that the pirate, in such cases, did not
know whether or not he was infringing any copyright; he
at least knew that what he was copying was not his, and
he copied at his peril.[30]
The next question to resolve is to what extent can
copying be injurious to the author of the book being
copied. Is it enough that there are similarities in some
sections of the books or large segments of the books are
the same?
In the case at bar, there is no question that petitioners
presented several pages of the books CET and DEP that
more or less had the same contents. It may be correct
that the books being grammar books may contain
materials similar as to some technical contents with
other grammar books, such as the segment about the
Author Card. However, the numerous pages that the
petitioners presented showing similarity in the style and
the manner the books were presented and the identical
examples can not pass as similarities merely because of
technical consideration.
The respondents claim that their similarity in style can be
attributed to the fact that both of them were exposed to
the APCAS syllabus and their respective academic
experience, teaching approach and methodology are
almost identical because they were of the same
background.
However, we believe that even if petitioners and
respondent Robles were of the same background in
terms of teaching experience and orientation, it is not an
excuse for them to be identical even in examples
contained in their books. The similarities in examples
and material contents are so obviously present in this
case. How can similar/identical examples not be
considered as a mark of copying?
We consider as an indicia of guilt or wrongdoing the act
of respondent Robles of pulling out from Goodwill
bookstores the book DEP upon learning of petitioners
complaint while pharisaically denying petitioners
demand. It was further noted that when the book DEP
was re-issued as a revised version, all the pages cited
by petitioners to contain portion of their book College
English for Today were eliminated.
In cases of infringement, copying alone is not what is
prohibited. The copying must produce an injurious effect.
Here, the injury consists in that respondent Robles lifted
from petitioners book materials that were the result of
the latters research work and compilation and
misrepresented them as her own. She circulated the
book DEP for commercial use and did not acknowledge
petitioners as her source.
Hence, there is a clear case of appropriation of
copyrighted work for her benefit that respondent Robles
committed. Petitioners work as authors is the product of
their long and assiduous research and for another to
represent it as her own is injury enough. In copyrighting
books the purpose is to give protection to the intellectual
product of an author. This is precisely what the law on
copyright protected, under Section 184.1 (b). Quotations
from a published work if they are compatible with fair use
and only to the extent justified by the purpose, including
quotations from newspaper articles and periodicals in
the form of press summaries are allowed provided that
the source and the name of the author, if appearing on
the work, are mentioned.
In the case at bar, the least that respondent Robles
could have done was to acknowledge petitioners
Habana et. al. as the source of the portions of DEP. The
final product of an authors toil is her book. To allow
another to copy the book without appropriate
acknowledgment is injury enough.
WHEREFORE, the petition is hereby GRANTED. The
decision and resolution of the Court of Appeals in CA-G.
R. CV No. 44053 are SET ASIDE. The case is ordered
remanded to the trial court for further proceedings to
receive evidence of the parties to ascertain the damages
caused and sustained by petitioners and to render
decision in accordance with the evidence submitted to it.
SO ORDERED.
[G.R. No. 166337. March 7, 2005]
BAYANIHAN MUSIC vs. BMG
THIRD DIVISION
Gentlemen:
Quoted hereunder, for your information, is a resolution of
this Court dated MAR 7 2005.
G.R. No. 166337 (Bayanihan Music Philippines, Inc. vs.
BMG Records (Pilipinas) and Jose Mari Chan, et al.)
Subject of this petition for review on certiorari is the
Decision dated December 14, 2004[1] of the Court of
Appeals in CA-G.R. SP No. 69626, upholding the Order
dated August 24, 2001 of the Regional Trial Court at
Quezon City, Branch 90, which found no merit in
petitioner's application for the issuance of a writ of
preliminary injunction, along with the Order dated
January 10, 2002, which denied petitioner's motion for
reconsideration.
On July 16, 1973, private respondent Jose Mari Chan
(Chan) entered into a contract with petitioner Bayanihan
Music Philippines, Inc. (Bayanihan), whereunder the
former assigned to the latter all his rights, interests and
participation over his musical composition "Can We Just
Stop and Talk A While". On March 11, 1976, the parties
entered into a similar contract over Chan's other musical
composition entitled "Afraid For Love To Fade".
On the strength of the abovementioned contracts,
Bayanihan applied for and was granted by the National
Library a Certificate of Copyright Registration for each of
the two musical compositions, thus: November 19, 1973,
for the song "Can We Just Stop and Talk A While" and
on May 21, 1980, for the song "Afraid for Love To Fade."
Apparently, without the knowledge and consent of
petitioner Bayanihan, Chan authorized his co-
respondent BMG Records (Pilipinas) [BMG] to record
and distribute the aforementioned musical compositions
in a then recently released album of singer Lea Salonga.
In separate letters both dated December 7, 1999,
petitioner Bayanihan informed respondents Chan and
BMG of its existing copyrights over the subject musical
compositions and the alleged violation of such right by
the two. Demands were made on both to settle the
matter with Bayanihan. However no settlement was
reached by the parties.
Hence, on August 8, 2000, Bayanihan filed with the
Regional Trial Court at Quezon City a complaint against
Chan and BMG for violation of Section 216 of Republic
Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, with a prayer for the
issuance of Temporary Restraining Order (TRO) and/or
writ of preliminary injunction, enjoining respondent BMG
from further recording and distributing the subject
musical compositions in whatever form of musical
products, and Chan from further granting any authority to
record and distribute the same musical compositions.
In its answer, BMG contended, among others, that: (1)
the acts of recording and publication sought to be
enjoined had already been consummated, thereby
rendering moot Bayanihan's prayer for TRO and/or
preliminary injunction; and (2) there is no clear showing
that petitioner Bayanihan would be greatly damaged by
the refusal of the prayed for TRO and/or preliminary
injunction. BMG also pleaded a cross-claim against its
co-respondent Chan for violation of his warranty that his
musical compositions are free from claims of third
persons, and a counterclaim for damages against
petitioner Bayanihan.
Chan, for his part, filed his own answer to the complaint,
thereunder alleging that: (1) it was never his intention to
divest himself of all his rights and interest over the
musical compositions in question; (2) the contracts he
entered into with Bayanihan are mere music publication
agreements giving Bayanihan, as assignee, the power to
administer his copyright over his two songs and to act as
the exclusive publisher thereof; (3) he was not cognizant
of the application made by and the subsequent grant of
copyrights to Bayanihan; and (4) Bayanihan was
remissed in its obligations under the contracts because it
failed to effectively advertise his musical compositions
for almost twenty (20) years, hence, he caused the
rescission of said contracts in 1997. Chan also included
in his answer a counterclaim for damages against
Bayanihan.
After hearing the parties, the lower court came out with
an order denying Bayanihan's prayer for TRO, saying,
thus:
After carefully considering the arguments and evaluating
the evidence presented by counsels, this Court finds that
the plaintiff has not been able to show its entitlement to
the relief of TRO as prayed for in its verified complaint
(see Section 4, Rule 58 of the 1997 Rules of Civil
Procedure, as amended), hence, this Court is of the
considered and humble view that the ends of justice
shall be served better if the aforecited application is
denied.
IN VIEW OF THE FOREGOING, the aforecited
application or prayer for the issuance of a TRO is
denied.
SO ORDERED.
Thereafter, the same court, in its subsequent Order
dated August 24, 2001,[2]cralaw likewise denied
Bayanihan's prayer for a writ of preliminary injunction, to
wit:
After carefully going over the pleadings and the pertinent
portions of the records insofar as they are pertinent to
the issue under consideration, this Court finds that the
plaintiff has not been able to show its entitlement to the
relief of preliminary injunction as prayed for in its verified
complaint (see Section 4, Rule 58 of the 1997 Rules of
Civil Procedure, as amended), hence, this Court is of the
considered and humble view that the ends of justice
shall be served better if the aforecited application is
denied, (see also Order dated July 16, 2001).
IN VIEW OF THE FOREGOING, the application or
prayer for the issuance of a writ of preliminary injunction
is denied.
SO ORDERED.
Its motion for a reconsideration of the same order having
been likewise denied by the trial court in its next Order of
January 10, 2002,[3]cralaw petitioner Bayanihan then
went to the Court of Appeals on a petition for certiorari,
thereat docketed as CA-G.R. SP No. 69626, imputing
grave abuse of discretion on the part of the trial court in
issuing the Orders of August 24, 2001 and January 10,
2001, denying its prayers for a writ of preliminary
injunction and motion for reconsideration, respectively.
In the herein assailed Decision dated December 14,
2004, the Court of Appeals upheld the challenged orders
of the trial court and accordingly dismissed Bayanihan
petition, thus:
WHEREFORE, finding neither flaw of jurisdiction nor
taint of grave abuse of discretion in the issuance of the
assailed Orders of the respondent court dated August
24, 2001 and January 10, 2002, the instant petition is
DISMISSED. No costs.
SO ORDERED.[4]cralaw
Hence, Bayanihan's present recourse.
It is petitioner's submission that the appellate court
committed reversible error when it dismissed its petition
for certiorari and upheld the trial court's denial of its
application for a writ of preliminary injunction. Petitioner
insists that as assignee of the copyrights over the
musical compositions in question, it has a clear legal
right to a writ of preliminary injunction; that respondents
BMG and Chan violated its copyrights over the same
musical compositions; that despite knowledge by
respondent BMG of petitioner's copyrights over the said
musical compositions, BMG continues to record and
distribute the same, to petitioner's great and irreparable
injury.
We DENY.
We have constantly reminded courts that there is no
power, the exercise of which is more delicate and
requires greater caution, deliberation and sound
discretion, or which is more dangerous in a doubtful
case, than the issuance of an injunction. A court should,
as much as possible, avoid issuing the writ which would
effectively dispose of the main case without trial.
Here, nothing is more evident than the trial court's
abiding awareness of the extremely difficult balancing
act it had to perform in dealing with petitioner's prayer for
injunctive reliefs. Conscious, as evidently it is, of the fact
that there is manifest abuse of discretion in the issuance
of an injunctive writ if the following requisites provided
for by law are not present: (1) there must be a right in
esse or the existence of a right to be protected; and (2)
the act against which the injunction is to be directed is a
violation of such right,[5]cralaw the trial court threaded
the correct path in denying petitioner's prayer therefor.
For, such a writ should only be granted if a party is
clearly entitled thereto.[6]cralaw
Of course, while a clear showing of the right to an
injunctive writ is necessary albeit its existence need not
be conclusively established,[7]cralaw as the evidence
required therefor need not be conclusive or complete,
still, for an applicant, like petitioner Bayanihan, to be
entitled to the writ, he is required to show that he has the
ostensible right to the final relief prayed for in its
complaint.[8]cralaw Here, the trial court did not find
ample justifications for the issuance of the writ prayed for
by petitioner.
Unquestionably, respondent Chan, being undeniably the
composer and author of the lyrics of the two (2) songs, is
protected by the mere fact alone that he is the creator
thereof, conformably with Republic Act No. 8293,
otherwise known as the Intellectual Property Code,
Section 172.2 of which reads:
172.2. Works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality and
purpose.
An examination of petitioner's verified complaint in light
of the two (2) contracts sued upon and the evidence it
adduced during the hearing on the application for
preliminary injunction, yields not the existence of the
requisite right protectable by the provisional relief but
rather a lingering doubt on whether there is or there is no
such right. The two contracts between petitioner and
Chan relative to the musical compositions subject of the
suit contain the following identical stipulations:
7. It is also hereby agreed to by the parties herein
that in the event the PUBLISHER [petitioner herein] fails
to use in any manner whatsoever within two (2) years
any of the compositions covered by this contract, then
such composition may be released in favor of the
WRITER and excluded from this contract and the
PUBLISHER shall execute the necessary release in
writing in favor of the WRITER upon request of the
WRITER;
xxx xxx xxx
9. This contract may be renewed for a period of two-
and-one-half (2 1/2) years at the option of the
PUBLISHER. Renewal may be made by the
PUBLISHER by advising the WRITER of such renewal in
writing at least five (5) days before the expiration of this
contract.[9]cralaw
It would thus appear that the two (2) contracts expired
on October 1, 1975 and March 11, 1978, respectively,
there being neither an allegation, much less proof, that
petitioner Bayanihan ever made use of the compositions
within the two-year period agreed upon by the parties.
Anent the copyrights obtained by petitioner on the basis
of the selfsame two (2) contracts, suffice it to say 'that
such purported copyrights are not presumed to subsist in
accordance with Section 218[a] and [b], of the
Intellectual Property Code,[10]cralaw because
respondent Chan had put in issue the existence thereof.
It is noted that Chan revoked and terminated said
contracts, along with others, on July 30, 1997, or almost
two years before petitioner Bayanihan wrote its sort of
complaint/demand letter dated December 7, 1999
regarding the recent "use/recording of the songs 'Can
We Just Stop and Talk A While' and 'Afraid for Love to
Fade,'" or almost three (3) years before petitioner filed its
complaint on August 8, 2000, therein praying, inter alia,
for injunctive relief. By then, it would appear that
petitioner had no more right that is protectable by
injunction.
Lastly, petitioner's insinuation that the trial court indulged
in generalizations and was rather skimpy in dishing out
its reasons for denying its prayer for provisional
injunctive relief, the same deserves scant consideration.
For sure, the manner by which the trial court crafted its SP No. 79887 and its September 15, 2004 resolution[4]
challenged orders is quite understandable, lest it be denying reconsideration thereof.
subjected to a plausible suspicion of having prejudged
the merits of the main case.

WHEREFORE, petition is hereby DENIED. The facts are as follows:

SO ORDERED.

On March 14, 2003, Special Investigator Eliezer P.

MANLY SPORTWEAR G.R. No. 165306 Salcedo of the National Bureau of Investigation (NBI)
applied for a search warrant before the Regional Trial
MANUFACTURING, INC., Court (RTC) of Quezon City, based on the information
that Dadodette Enterprises and/or Hermes Sports
Petitioner, Present: Center were in possession of goods, the copyright of
which belonged to Manly Sportswear Mfg., Inc.
(MANLY).[5]
Davide, Jr., C.J. (Chairman),

- versus - Quisumbing,

Ynares-Santiago, After finding reasonable grounds that a violation of

Sections 172 and 217 of Republic Act (RA) No. 8293[6]
Carpio, and has been committed, Judge Estrella T. Estrada of RTC-
Azcuna, JJ. Quezon City, Branch 83, issued on March 17, 2003
Search Warrant No. 4044(03).[7]
DADODETTE ENTERPRISES

AND/OR HERMES SPORTS Promulgated:

Respondents thereafter moved to quash and annul the
CENTER,
search warrant contending that the same is invalid since
Respondents. September 20, 2005 the requisites for its issuance have not been complied
with. They insisted that the sporting goods manufactured
by and/or registered in the name of MANLY are ordinary
and common hence, not among the classes of work
protected under Section 172 of RA 8293.
x -------------------------------------------------------------------------
--------------- x

On June 10, 2003, the trial court granted the motion to

quash and declared Search Warrant No. 4044(03) null
DECISION
and void based on its finding that the copyrighted
products of MANLY do not appear to be original
creations and were being manufactured and distributed
by different companies locally and abroad under various
brands, and therefore unqualified for protection under
YNARES-SANTIAGO, J.:
Section 172 of RA 8293. Moreover, MANLYs certificates
of registrations were issued only in 2002, whereas there
were certificates of registrations for the same sports
articles which were issued earlier than MANLYs, thus
further negating the claim that its copyrighted products
were original creations.[8]
This petition for review on certiorari[1] under Rule 45 of
the Revised Rules of Civil Procedure assails the July 13,
2004 decision[2] of the Court of Appeals[3] in CA-G.R.
On August 11, 2003, the trial court denied[9] MANLYs
motion for reconsideration. Hence it filed a petition for
certiorari[10] before the Court of Appeals which was
denied for lack of merit. The appellate court found that
the trial court correctly granted the motion to quash and
that its ruling in the ancillary proceeding did not preempt
the findings of the intellectual property court as it did not
resolve with finality the status or character of the seized
items.
After denial of its motion for reconsideration on
September 15, 2004, MANLY filed the instant petition for
review on certiorari raising the sole issue of whether or
not the Court of Appeals erred in finding that the trial
court did not gravely abuse its discretion in declaring in
the hearing for the quashal of the search warrant that the
copyrighted products of MANLY are not original
creations subject to the protection of RA 8293.
We deny the petition.
The power to issue search warrants is exclusively vested
with the trial judges in the exercise of their judicial
function.[11] As such, the power to quash the same also
rests solely with them. After the judge has issued a
warrant, he is not precluded to subsequently quash the
same, if he finds upon reevaluation of the evidence that
no probable cause exists.
Our ruling in Solid Triangle Sales Corp. v. Sheriff, RTC,
Q.C., Br. 93[12] is instructive, thus:
Inherent in the courts power to issue search warrants is
the power to quash warrants already issued. In this
connection, this Court has ruled that the motion to quash
should be filed in the court that issued the warrant
unless a criminal case has already been instituted in
another court, in which case, the motion should be filed
with the latter. The ruling has since been incorporated in
Rule 126 of the Revised Rules of Criminal Procedure[.]
In the instant case, we find that the trial court did not
abuse its discretion when it entertained the motion to
quash considering that no criminal action has yet been
instituted when it was filed. The trial court also properly
quashed the search warrant it earlier issued after finding
upon reevaluation of the evidence that no probable
cause exists to justify its issuance in the first place. As
ruled by the trial court, the copyrighted products do not
appear to be original creations of MANLY and are not
among the classes of work enumerated under Section
172 of RA 8293. The trial court, thus, may not be faulted
for overturning its initial assessment that there was
probable cause in view of its inherent power to issue
search warrants and to quash the same. No objection
may be validly posed to an order quashing a warrant
already issued as the court must be provided with the
opportunity to correct itself of an error unwittingly
committed, or, with like effect, to allow the aggrieved
party the chance to convince the court that its ruling is
erroneous.
Moreover, the trial court was acting within bounds when
it ruled, in an ancillary proceeding, that the copyrighted
products of petitioner are not original creations. This is
because in the determination of the existence of
probable cause for the issuance or quashal of a warrant,
it is inevitable that the court may touch on issues
properly threshed out in a regular proceeding. In so
doing, it does not usurp the power of, much less
preclude, the court from making a final judicial
determination of the issues in a full-blown trial.
Consequently, MANLYs assertion that the trial courts
order quashing the warrant preempted the finding of the
intellectual property court has no legal basis.
As pertinently held in Solid Triangle Sales Corp. v.
Sheriff, RTC, Q.C., Br. 93:[13]
When the court, in determining probable cause for
issuing or quashing a search warrant, finds that no
offense has been committed, it does not interfere with or
encroach upon the proceedings in the preliminary
investigation. The court does not oblige the investigating
officer not to file an information for the courts ruling that
no crime exists is only for purposes of issuing or
quashing the warrant. This does not, as petitioners
would like to believe, constitute a usurpation of the
executive function. Indeed, to shirk from this duty would
amount to an abdication of a constitutional obligation.
...
... The finding by the court that no crime exists does not
preclude the authorized officer conducting the
preliminary investigation from making his own
determination that a crime has been committed and that
probable cause exists for purposes of filing the
information.
As correctly observed by the Court of Appeals, the trial
courts finding that the seized products are not
copyrightable was merely preliminary as it did not finally
and permanently adjudicate on the status and character
of the seized items. MANLY could still file a separate
copyright infringement suit against the respondents
because the order for the issuance or quashal of a
warrant is not res judicata.
Thus, in Vlasons Enterprises Corporation v. Court of
Appeals[14] we held that:
The proceeding for the seizure of property in virtue of a
search warrant does not end with the actual taking of the
property by the proper officers and its delivery, usually
constructive, to the court. The order for the issuance of
the warrant is not a final one and cannot constitute res
judicata. Such an order does not ascertain and
adjudicate the permanent status or character of the
seized property. By its very nature, it is provisional,
interlocutory. It is merely the first step in the process to
determine the character and title of the property. That
determination is done in the criminal action involving the
crime or crimes in connection with which the search
warrant was issued. Hence, such a criminal action
should be prosecuted, or commenced if not yet
instituted, and prosecuted. The outcome of the criminal
action will dictate the disposition of the seized property
We have also ruled in Ching v. Salinas, Sr., et al.[15]
that:
The RTC had jurisdiction to delve into and resolve the
issue whether the petitioners utility models are
copyrightable and, if so, whether he is the owner of a
copyright over the said models. It bears stressing that
upon the filing of the application for search warrant, the
RTC was duty-bound to determine whether probable
cause existed, in accordance with Section 4, Rule 126 of
the Rules of Criminal Procedure[.]
Further, the copyright certificates issued in favor of
MANLY constitute merely prima facie evidence of validity
and ownership. However, no presumption of validity is
created where other evidence exist that may cast doubt
on the copyright validity. Hence, where there is sufficient
proof that the copyrighted products are not original
creations but are readily available in the market under
various brands, as in this case, validity and originality will
not be presumed and the trial court may properly quash
the issued warrant for lack of probable cause.
Besides, no copyright accrues in favor of MANLY
despite issuance of the certificates of registration and
deposit[16] pursuant to Section 2, Rule 7 of the
Copyrights Safeguards and Regulations[17] which
states:
Sec. 2 Effects of Registration and Deposit of Work. The
registration and deposit of the work is purely for
recording the date of registration and deposit of the work
and shall not be conclusive as to copyright ownership or
the term of the copyrights or the rights of the copyright
owner, including neighboring rights.
At most, the certificates of registration and deposit
issued by the National Library and the Supreme Court
Library serve merely as a notice of recording and
registration of the work but do not confer any right or title
upon the registered copyright owner or automatically put
his work under the protective mantle of the copyright
law. It is not a conclusive proof of copyright ownership.
As it is, non-registration and deposit of the work within
the prescribed period only makes the copyright owner
liable to pay a fine.[18]
WHEREFORE, the petition is DENIED. The July 13,
2004 decision of the Court of Appeals in CA-G.R. SP
No. 79887 and resolution dated September 15, 2004,
are AFFIRMED.
SO ORDERED.
G.R. No. 195956, March 11, 2015
ABS-CBN CORPORATION, Petitioner, v. FELIPE
GOZON, GILBERTO R. DUAVIT, JR., MARISSA L.
FLORES, JESSICA A. SOHO, GRACE DELA PEÑA-
REYES, JOHN OLIVER T. MANALASTAS, JOHN
DOES AND JANE DOES, Respondents.
DECISION
LEONEN, J.:
The main issue in this case is whether there is probable
cause to charge respondents with infringement under
Republic Act No. 8293, otherwise known as the
Intellectual Property Code. The resolution of this issue
requires clarification of the concept of "copyrightable
material" in relation to material that is rebroadcast live as
a news story. We are also asked to rule on whether
criminal prosecution for infringement of copyrightable
material, such as live rebroadcast, can be negated by
good faith.
ABS-CBN Corporation (ABS-CBN) filed the Petition for
Review on Certiorari1 to assail the November 9, 2010
Decision2 and the March 3, 2011 Resolution3 of the
Court of Appeals. The Court of Appeals reinstated the
Department of Justice Resolution dated August 1, 2005
that ordered the withdrawal of the Information finding
probable cause for respondents' violation of Sections
1774 and 2115 of the Intellectual Property Code.6
Respondents are officers and employees of GMA
Network, Inc. (GMA-7). They are: Felipe Gozon (Gozon),
GMA-7 President; Gilberto R. Duavit, Jr. (Duavit, Jr.),
Executive Vice-President; Marissa L. Flores (Flores),
Vice-President for News and Public Affairs; Jessica A.
Soho (Soho), Director for News; Grace Déla Peña-
Reyes (Dela Peña-Reyes), Head of News and Public
Affairs; John Oliver Manalastas '(Manalastas), Program
Manager; and others.
The controversy arose from GMA-7's news coverage on
the homecoming of Filipino overseas worker and
hostage victim Angelo dela Cruz on July 22, 2004. As
summarized by the Court of
Appeals:chanroblesvirtuallawlibrary
Overseas Filipino worker Angelo dela Cruz was
kidnapped by Iraqi militants and as a condition for his
release, a demand was made for the withdrawal of
Filipino troops in Iraq. After negotiations, he was
released by his captors and was scheduled to return to
the country in the afternoon of 22 July 2004. Occasioned
by said homecoming and the public interest it generated,
both . . . GMA Network, Inc. . . . and [petitioner] made
their respective broadcasts and coverage of the live
event.7
ABS-CBN "conducted live audio-video coverage of and
broadcasted the arrival of Angelo dela Cruz at the Ninoy
Aquino International Airport (NAIA) and the subsequent
press conference."8 ABS-CBN allowed Reuters
Television Service (Reuters) to air the footages it had
taken earlier under a special embargo agreement.9
ABS-CBN alleged that under the special embargo
agreement, any of the footages it took would be for the
"use of Renter's international subscribers only, and shall
be considered and treated by Reuters under 'embargo'
against use by other subscribers in the Philippines. . . .
[N]o other Philippine subscriber of Reuters would be
allowed to use ABS-CBN footage without the latter's
consent."10
GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela
Peña-Reyes, and Manalastas are connected, "assigned
and stationed news reporters and technical men at the
NAIA for its live broadcast and non-live news coverage
of the arrival of dela Cruz."11 GMA-7 subscribes to both
Reuters and Cable News Network (CNN). It received a
live video feed of the coverage of Angelo dela Cruz's
arrival from Reuters.12
GMA-7 immediately carried the live newsfeed in its
program "Flash Report," together with its live
broadcast.13 Allegedly, GMA-7 did not receive any
notice or was not aware that Reuters was airing footages
of ABS-CBN.14 GMA-7's news control room staff saw
neither the "No Access Philippines" notice nor a notice
that the video feed was under embargo in favor of ABS-
CBN.15
On August 13, 2004, ABS-CBN filed the Complaint for
copyright infringement under Sections 17716 and 21117
of the Intellectual Property Code.18
On December 3, 2004, Assistant City Prosecutor Dindo
Venturanza issued the Resolution19 finding probable
cause to indict Dela Peña-Reyes and Manalastas.20
Consequently, the Information21 for violation of the
Intellectual Property Code was filed on December 17,
2004. It reads:chanroblesvirtuallawlibrary
That on or about the 22nd of July 2004, in Quezon City,
Philippines, the above-named accused, conspiring
together, confederating with and mutually helping each
other, being the Head of News Operations and the
Program Manager, respectively, for the News and Public
Affairs Department of GMA Network, Inc., did then and
there, willfully, unlawfully and feloniously use and
broadcast the footage of the arrival of Angelo [d]ela Cruz
at the Ninoy Aquino International Airport of which ABS-
CBN holds the exclusive ownership and copyright by
then and there using, airing, and broadcasting the said
footage in its news program "FLASH REPORT" without
first obtaining the consent or authority of said copyright
owner, to their damage and prejudice.
Contrary to law.22
On January 4, 2005, respondents filed the Petition for
Review before the Department of Justice.23 In the
Resolution (Gonzalez Resolution) dated August 1, 2005,
Department of Justice Secretary Raul M. Gonzalez
(Secretary Gonzalez) ruled in favor of respondents and
held that good faith may be raised as a defense in the
case.24 The dispositive portion of the Resolution
reads:chanroblesvirtuallawlibrary
WHEREFORE, THE PETITION FOR REVIEW FILED
BY GMA-7 in I.S. No. 04-10458 is considered
meritorious and is hereby GRANTED. This case is
hereby Dismissed, the resolution of the City Prosecutor
of Quezon City is hereby reversed and the same is
ordered to withdraw the information if any and report
action taken to this office within ten (10) days.25
(Emphasis in the original)
Both parties moved for reconsideration of the Gonzalez
Resolution.26
Meanwhile, on January 19, 2005, the trial court granted
the Motion to Suspend Proceedings filed earlier by Dela
Peña-Reyes and Manalastas.27 The trial court Order
reads:chanroblesvirtuallawlibrary
Perusing the motion, the court finds that a petition for
review was filed with the Department of Justice on
January 5, 2005 as confirmed by the public prosecutor.
Under Section 11 (c), Rule 116 of the Rules of Criminal
Procedure, once a petition for review is filed with the
Department of Justice, a suspension of the criminal
proceedings may be allowed by the court.
Accordingly, to allow the Department of Justice the
opportunity to act on said petition for review, let the
proceedings on this case be suspended for a period of
sixty (60) days counted from January 5, 2005, the date
the petition was filed with the Department of Justice. The
arraignment of the accused on February 1, 2005 is
accordingly cancelled. Let the arraignment be
rescheduled to March 8, 2005 at 8:30 a.m. The accused
through counsel are notified in open court.
SO ORDERED.28
On June 29, 2010, Department of Justice Acting
Secretary Alberto C. Agra (Secretary Agra) issued the
Resolution (Agra Resolution) that reversed the Gonzalez
Resolution and found probable cause to charge Dela
Peña-Reyes and Manalastas for violation of the
Intellectual Property Code.29 Secretary Agra also found
probable cause to indict Gozon, Duavit, Jr., Flores, and
Soho for the same violation.30 He ruled
that:chanroblesvirtuallawlibrary
[w]hile good faith may be a defense in copyright
infringement, the same is a disputable presumption that
must be proven in a full-blown trial. Disputable
presumptions may be contradicted and overcome by
other evidence. Thus, a full-blown trial is the proper
venue where facts, issues and laws are evaluated and
considered. The very purpose of trial is to allow a party
to present evidence to overcome the disputable
presumptions involved.31
The dispositive portion of the Agra Resolution
provides:chanroblesvirtuallawlibrary
WHEREFORE, premises considered:
(a) The Motion for Reconsideration filed by appellees
ABS-CBN Broadcasting Corporation (ABS-CBN) of our
Resolution promulgated on August 1, 2005 (Resolution
No. 364, Series of 2005) and the Petition for Review filed
by complainant-appellant ABS-CBN in I.S. No. 04-10458
on April 10, 2006, are GRANTED and the City
Prosecutor of Quezon City is hereby ordered to file the
necessary Information for violation of Section 177 and
211 of Republic Act No. 8293 against GMA-7. Felipe L.
Gozon, Gilberto R. Duavit, Jr., Marissa L. Flores, Jessica
A. Soho, Grace Dela Pena-Reyes, John Oliver T.
Manalastas[.]
SO ORDERED.32 (Emphasis in the original)
Respondents assailed the Agra Resolution through the
Petition for Certiorari with prayer for issuance of a
temporary restraining order and/or Writ of Preliminary
Injunction on September 2, 2010 before the Court of
Appeals. In the Resolution dated September 13, 2010,
the Court of Appeals granted the temporary restraining
order preventing the Department of Justice from
enforcing the Agra Resolution.33
On November 9, 2010, the Court of Appeals rendered
the Decision granting the Petition and reversing and
setting aside the Agra Resolution.34 The Court of
Appeals held that Secretary Agra committed errors of
jurisdiction in issuing the assailed Resolution. Resolving
the issue of copyright infringement, the Court of Appeals
said:chanroblesvirtuallawlibrary
Surely, private respondent has a copyright of its news
coverage. Seemingly, for airing said video feed,
petitioner GMA is liable under the provisions of the
Intellectual Property Code, which was enacted purposely
to protect copyright owners from infringement. However,
it is an admitted fact that petitioner GMA had only aired a
five (5) second footage of the disputed live video feed
that it had received from Reuters and CNN as a
subscriber. Indeed, petitioners had no notice of the right
of ownership of private respondent over the same.
Without notice of the "No Access Philippines" restriction
of the live video feed, petitioner cannot he faulted for
airing a live video feed from Reuters and CNN.
Verily, as aptly opined by Secretary Gonzalez in his
earlier Resolution, the act of petitioners in airing the five
(5) second footage was undeniably attended by good
faith and it thus serves to exculpate them from criminal
liability under the Code. While the Intellectual Properly
Code is a special law, and thus generally categorized as
malum prohibitum, it bears to stress that the provisions
of the Code itself do not ipso facto penalize a person or
entity for copyright infringement by the mere fact that
one had used a copyrighted work or material.
Certainly so, in the exercise of one's moral and
economic or copyrights, the very provisions of Part IV of
the Intellectual Property Code provide for the scope and
limitations on copyright protection under Section 184 and
in fact permit fair use of copyrighted work under Section
185. With the aforesaid statutory limitations on one's
economic and copyrights and the allowable instances
where the other persons can legally use a copyrighted
work, criminal culpability clearly attaches only when the
infringement had been knowingly and intentionally
committed.35 (Emphasis supplied)
The dispositive portion of the Decision
reads:chanroblesvirtuallawlibrary
WHEREFORE, the foregoing considered, the instant
petition is hereby GRANTED and the assailed
Resolution dated 29 June 2010 REVERSED and SET
ASIDE. Accordingly, the earlier Resolution dated 1
August 2005, which ordered the withdrawal of the
Information filed, if any, against the petitioners for
violation of Sections 177 and 211 of the Intellectual
Property Code, is hereby REINSTATED. No costs.
SO ORDERED.36 (Emphasis in the original)
ABS-CBN's Motion for Reconsideration was denied.37 It
then filed its Petition for Review before this court
assailing the Decision and Resolution of the Court of
Appeals.38
The issues for this court's consideration are:
First, whether Secretary Agra committed errors of
jurisdiction in the Resolution dated June 29, 2010 and,
therefore, whether a petition for certiorari was the proper
remedy in assailing that Resolution;
Second, whether news footage is copyrightable under
the law;
Third, whether there was fair use of the broadcast
material;
Fourth, whether lack of knowledge that a material is
copyrighted is a defense against copyright infringement;
Fifth, whether good faith is a defense in a criminal
prosecution for violation of the Intellectual Property
Code; and
Lastly, whether the Court of Appeals was correct in
overturning Secretary Agra's finding of probable
cause.cralawlawlibrary
I
The trial court granted respondents' Motion to Suspend
Proceedings and deferred respondents Dela Peña-
Reyes and Manalastas' arraignment for 60 days in view
of the Petition for Review filed before the Department of
Justice.
Rule 116, Section 11 (c) of the Rules of Criminal
Procedure allows the suspension of the accused's
arraignment in certain circumstances
only:chanroblesvirtuallawlibrary
SEC. 11. Suspension of arraignment.-Upon motion by
the proper party, the arraignment shall be suspended in
the following cases:
(a) The accused appears to be suffering from an
unsound mental condition which effectively renders him
unable to fully understand the charge against him and to
plead intelligently thereto. In such case, the court shall
order his mental examination and, if necessary, his
confinement for such purpose;
(b) There exists a prejudicial question; and
(c) A petition for review of the resolution of the
prosecutor is pending at either the Department of
Justice, or the Office of the President; provided, that the
period of suspension shall not exceed sixty (60) days
counted from the filing of the petition with the reviewing
office. (12a) (Emphasis supplied)
In Samson v. Daway,39 this court acknowledged the
applicability of Rule 116, Section (c) in a criminal
prosecution for infringement under the Intellectual
Property Code. However, this court emphasized the
limits of the order of deferment under the Rule:
While the pendency of a petition for review is a ground
for suspension of the arraignment, the . . . provision
limits the deferment of the arraignment to a period of 60
days reckoned from the filing of the petition with the
reviewing office. It follows, therefore, that after the
expiration of said period, the trial court is bound to
arraign the accused or to deny the motion to defer
arraignment.40
We clarify that the suspension of the arraignment should
always be within the limits allowed by law. In Crespo v.
Judge Mogul,41 this court outlined the effects of filing an
information before the trial court, which includes initiating
a criminal action and giving this court "authority to hear
and determine the case":42ChanRoblesVirtualawlibrary
The preliminary investigation conducted by the fiscal for
the purpose of determining whether a prima facie case
exists warranting the prosecution of the accused is
terminated upon the filing of the information in the proper
court. In turn, as above stated, the filing of said
information sets in motion the criminal action against the
accused in Court. Should the fiscal find it proper to
conduct a reinvestigation of the case, at such stage, the
permission of the Court must be secured. After such
reinvestigation the finding and recommendations of the
fiscal should be submitted to the Court for appropriate
action. While it is true that the fiscal has the quasi
judicial discretion to determine whether or not a criminal
case should be filed in court or not, once the case had
already been brought to Court whatever disposition the
fiscal may feel should be proper in the case thereafter
should be addressed for the consideration of the Court,
the only qualification is that the action of the Court must
not impair the substantial rights of the accused or the
right of the People to due process of law.
Whether the accused had been arraigned or not and
whether it was due to a reinvestigation by the fiscal or a
review by the Secretary of Justice whereby a motion to
dismiss was submitted to the Court, the Court in the
exercise of its discretion may grant the motion or deny it
and require that the trial on the merits proceed for the
proper determination of the case.
However, one may ask, if the trial court refuses to grant
the motion to dismiss filed by the fiscal upon the
directive of the Secretary of Justice will there not be a
vacuum in the prosecution? A state prosecutor to handle
the case cannot possibly be designated by the Secretary
of Justice who does not believe that there is a basis for
prosecution nor can the fiscal be expected to handle the
prosecution of the case thereby defying the superior
order of the Secretary of Justice.
The answer is simple. The role of the fiscal or prosecutor
as We all know is to see that justice is done and not
necessarily to secure the conviction of the person
accused before the Courts. Thus, in spite of his opinion
to the contrary, it is the duty of the fiscal to proceed with
the presentation of evidence of the prosecution to the
Court to enable the Court to arrive at its own
independent judgment as to whether the accused should
be convicted or acquitted. The fiscal should not shirk
from the responsibility of appearing for the People of the
Philippines even under such circumstances much less
should he abandon the prosecution of the case leaving it
to the hands of a private prosecutor for then the entire
proceedings will be null and void. The least that the
fiscal should do is to continue to appear for the
prosecution although he may turn over the presentation
of the evidence to the private prosecutor but still under
his direction and control.
The rule therefore in this jurisdiction is that once a
complaint or information is filed in Court any disposition
of the case as to its dismissal or the conviction or
acquittal of the accused rests in the sound discretion of
the Court. Although the fiscal retains the direction and
control of the prosecution of criminal cases even while
the case is already in Court he cannot impose his
opinion on the trial court. The Court is the best and sole
judge on what to do with the case before it. The
determination of the case is within its exclusive
jurisdiction and competence. A motion to dismiss the
case filed by the fiscal should be addressed to the Court
who has the option to grant or deny the same. It does
not matter if this is done before or after the arraignment
of the accused or that the motion was filed after a
reinvestigation or upon instructions of the Secretary of
Justice who reviewed the records of the investigation.43
(Emphasis supplied, citations omitted)
The doctrine in Crespo was reiterated in Mayor
Balindong v. Court of Appeals,44 where this court
reminded the Department of Justice Secretary to refrain
from entertaining petitions for review when the case is
already pending with this
court:chanroblesvirtuallawlibrary
[I]n order to avoid a situation where the opinion of the
Secretary of Justice who reviewed the action of the fiscal
may be disregarded by the trial court, the Secretary of
Justice should, as far as practicable, refrain from
entertaining a petition for review or appeal from the
action of the fiscal, when the complaint or information
has already been filed in the Court. The matter should
be left entirely for the determination of the Court.45
The trial court should have proceeded with respondents
Dela Peña-Reyes and Manalastas' arraignment after the
60-day period from the filing of the Petition for Review
before the Department of Justice on March 8, 2005. It
was only on September 13, 2010 that the temporary
restraining order was issued by the Court of Appeals.
The trial court erred when it did not act on the criminal
case during the interim period. It had full control and
direction of the case. As Judge Mogul reasoned in
denying the motion to dismiss in Crespo, failure to
proceed with the arraignment "disregards the
requirements of due process [and] erodes the Court's
independence and integrity."46
II
According to ABS-CBN, the Court of Appeals erred in
finding that: a motion for reconsideration was not
necessary before a petition for certiorari could be filed;
the Department of Justice Secretary committed errors of
jurisdiction since the Agra Resolution was issued within
its authority and in accordance with settled laws and
jurisprudence; and respondents were not liable for
copyright infringement.
In its assailed Decision, the Court of Appeals found that
respondents committed a procedural error when they
failed to file a motion for reconsideration before filing the
Petition for Certiorari. However, the Court of Appeals
held that a motion for reconsideration was unnecessary
since the Agra Resolution was a patent nullity and it
would have been useless under the
circumstances:chanroblesvirtuallawlibrary
Given that a reading of the assailed Resolution and the
instant records readily reveals errors -of jurisdiction on
the part of respondent Secretary, direct judicial recourse
is warranted under the circumstances. Aside from the
fact that said Resolution is a patent nullity having been
issued in grave abuse of discretion amounting to lack or
excess of jurisdiction, the filing of a motion for
reconsideration is evidently useless on account of the
fact that the issues and arguments before this Court
have already been duly raised and accordingly delved
into by respondent Secretary in his disposition of the
petition a quo.47 (Emphasis in the original)
In Elma v. Jacobi,48 this court ruled that a petition for
certiorari under Rule 65 of the Rules of Court is proper
when assailing adverse resolutions of the Department of
Justice stemming from the determination of probable
cause.49 However, grave abuse of discretion must be
alleged.50
In Sanrio Company Limited v. Lim,51 this court stressed
the prosecutor's role in determining probable cause.
Judicial review will only lie when it is shown that the
prosecutor acted with grave abuse of discretion
amounting to lack or excess of
jurisdiction:chanroblesvirtuallawlibrary
A prosecutor alone determines the sufficiency of
evidence that will establish probable cause justifying the
filing of a criminal information against the respondent. By
way of exception, however, judicial review is allowed
where respondent has clearly established that the
prosecutor committed grave abuse of discretion.
Otherwise stated, such review is appropriate only when
the prosecutor has exercised his discretion in an
arbitrary, capricious, whimsical or despotic manner by
reason of passion or personal hostility, patent and gross
enough to amount to an evasion of a positive duty or
virtual refusal to perform a duty enjoined by law.52
(Citations omitted)
Grave abuse of discretion refers
to:chanroblesvirtuallawlibrary
such capricious and whimsical exercise of judgment as
is equivalent to lack of jurisdiction. The abuse of
discretion must be grave as where the power is
exercised in an arbitrary or despotic manner by reason
of passion or personal hostility and must be so patent
and gross as to amount to an evasion of positive duty or
to a virtual refusal to perform the duty enjoined by or to
act at all in contemplation of law.53
Resorting to certiorari requires that there be there be "no
appeal, or any plain, speedy, and adequate remedy in
the ordinary course of law[,]"54 such as a motion for
reconsideration. Generally, "a motion for reconsideration
is a condition sine qua non before a petition for certiorari
may lie, its purpose being to grant an opportunity for the
[tribunal or officer] to correct any error attributed to it by
a re-examination of the legal and factual circumstances
of the case."55
However, exceptions to the rule
exist:chanroblesvirtuallawlibrary
(a) where the order is a patent nullity, as where the
Court a quo had no jurisdiction; (b) where the questions
raised in the certiorari proceeding have been duly raised
and passed upon by the lower court, or are the same as
those raised and passed upon in the lower court; (c)
where there is an urgent necessity for the resolution of
the question and any further delay would prejudice the
interests of the Government or of the petitioner or the
subject matter of the action is perishable; (d) where,
under the circumstances, a motion for reconsideration
would be useless; (e) where petitioner was deprived of
due process and there is extreme urgency for relief; (f)
where, in a criminal case, relief from an order of arrest is
urgent and the granting of such relief by the trial Court is
improbable; (g) where the proceedings in the lower court
are a nullity for lack of due process; (h) where the
proceedings was ex parte or in which the petitioner had
no opportunity to object; and (i) where the issue raised is
one purely of law or where public interest is involved.56
(Emphasis in the original, citations omitted)
As argued by respondents, "[a] second motion for
reconsideration would have been useless and futile
since the Department] [of] J[ustice] had already passed
upon the same issues twice."57 Equally pressing under
the circumstances was the need to resolve the matter,
as the Information's filing would lead to respondents'
imminent arrest.58
Moreover, Department of Justice Department Circular
No. 70 dated July 3, 2000, or the 2000 NPS Rules on
Appeal, provides that no second motion for
reconsideration of the Department of Justice Secretary's
resolution shall be
entertained:chanroblesvirtuallawlibrary
SECTION 13. Motion for reconsideration. The aggrieved
party may file a motion for reconsideration within a non-
extendible period of ten (10) days from receipt of the
resolution on appeal, furnishing the adverse party and
the Prosecution Office concerned with copies thereof
and submitting proof of such service. No second or
further motion for reconsideration shall be entertained.
The Agra Resolution was the result of respondents'
Motion for Reconsideration assailing the Gonzalez
Resolution. To file a motion for reconsideration of the
Agra Resolution would be superfluous. Respondents
were, therefore, correct in filing the Petition for Certiorari
of the Agra Resolution before the Court of
Appeals.cralawlawlibrary
III
The Court of Appeals ruled that Secretary Agra
committed errors of jurisdiction, which then required the
grant of the writ of certiorari:chanroblesvirtuallawlibrary
So viewed, by ordering the filing of information without
proof that probable cause exists to charge petitioners
with a crime, respondent Secretary clearly committed an
error of jurisdiction thus warranting the issuance of the
writ of certiorari. Surely, probable cause cannot be had
when the very provisions of the statute exculpates
criminal liability in cases classified as fair use of
copyrighted materials. The fact that they admittedly used
the Reuters live video feed is not, as a matter of course,
tantamount to copyright infringement that would justify
the filing of an information against the petitioners.59
Error of jurisdiction must be distinguished from error of
judgment:
A line must be drawn between errors of judgment and
errors of jurisdiction. An error of judgment is one which
the court may commit in the exercise of its jurisdiction.
An error of jurisdiction renders an order or judgment void
or voidable. Errors of jurisdiction are reviewable on
certiorari; errors of judgment, only by appeal.60
In People v. Hon.
Sandiganbayan61:chanroblesvirtuallawlibrary
An error of judgment is one which the court may commit
in the exercise of its jurisdiction. An error of jurisdiction is
one where the act complained of was issued by the court
without or in excess of jurisdiction, or with grave abuse
of discretion, which is tantamount to lack or in excess of
jurisdiction and which error is correctible only by the
extraordinary writ of certiorari. Certiorari will not be
issued to cure errors of the trial court in its appreciation
of the evidence of the parties, or its conclusions
anchored on the said findings and its conclusions of
law.62 (Emphasis supplied)
This court has adopted a deferential attitude towards
review of the executive's finding of probable cause.63
This is based "not only upon the respect for the
investigatory and [prosecutorial] powers granted by the
Constitution to the executive department but upon
practicality as well."64 Review of the Department of
Justice Secretary's decision or resolution will be allowed
only when grave abuse of discretion is
alleged:chanroblesvirtuallawlibrary
The full discretionary authority to determine probable
cause in a preliminary investigation to ascertain
sufficient ground for the filing of information rests with
the executive branch. Hence, judicial review of the
resolution of the Secretary of Justice is limited to a
determination whether there has been a grave abuse of
discretion amounting to lack or excess of jurisdiction.
Courts cannot substitute the executive branch's
judgment.
. . . .
It is only where the decision of the Justice Secretary is
tainted with grave abuse of discretion amounting to lack
or excess of jurisdiction that the Court of Appeals may
take cognizance of the case in a petition for certiorari
under Rule 65 of the Revised Rules of Civil Procedure.
The Court of Appeals decision may then be appealed to
this Court by way of a petition for review on certiorari.65
(Emphasis supplied, citations omitted)
In this case, it must be shown that Secretary Agra
exceeded his authority when he reversed the findings of
Secretary Gonzalez. This court must determine whether
there is probable cause to file an information for
copyright infringement under the Intellectual Property
Code.cralawlawlibrary
IV
Probable cause pertains to "such facts as are sufficient
to engender a well-founded belief that a crime has been
committed and that respondent is probably guilty
thereof." 66 Preliminary investigation is the inquiry or
proceeding to determine whether there is probable
cause.67
In Webb v. De Leon,68 this court ruled that
determination of probable cause during preliminary
investigation does not require trial-like evaluation of
evidence since existence of probable cause does not
equate to guilt:chanroblesvirtuallawlibrary
It ought to be emphasized that in determining probable
cause, the average man weighs facts and circumstances
without resorting to the calibrations of our technical rules
of evidence of which his knowledge is nil. Rather, he
relies on the calculus of common sense of which all
reasonable men have an abundance.
. . . .
. . . A finding of probable cause merely binds over the
suspect to stand trial. It is not a pronouncement of
guilt.69
In Reyes v. Pearlbank Securities, Inc.,70 finding
probable cause is not equivalent to finding with moral
certainty that the accused committed the crime:
A finding of probable cause needs only to rest on
evidence showing that more likely than not a crime has
been committed by the suspects. It need not be based
on clear and convincing evidence of guilt, not on
evidence establishing guilt beyond reasonable doubt,
and definitely not on evidence establishing absolute
certainty of guilt. In determining probable cause, the
average man weighs facts and circumstances without
resorting to the calibrations of the rules of evidence of
which he has no technical knowledge. He relies on
common sense.71
During preliminary investigation, a public prosecutor
does not adjudicate on the parties' rights, obligations, or
liabilities.72
In the recent case of Estrada v. Office of the
Ombudsman, et al,73 we reiterated Webb on the
determination of probable cause during preliminary
investigation and traced the history of probable cause as
borrowed from American
jurisprudence:chanroblesvirtuallawlibrary
The purpose in determining probable cause is to make
sure that the courts are not clogged with weak cases
that will only be dismissed, as well as to spare a person
from the travails of a needless prosecution.
. . . .
. . . In the United States, from where we borrowed the
concept of probable cause, the prevailing definition of
probable cause is this:chanroblesvirtuallawlibrary
In dealing with probable cause, however, as the very
name implies, we deal with probabilities. These are not
technical; they are the factual and practical
considerations of everyday life on which reasonable and
prudent men, not legal technicians, act. The standard of
proof is accordingly correlative to what must be proved.
"The substance of all the definitions" of probable cause
"is a reasonable ground for belief of guilt." McCarthy v.
De Armit, 99 Pa. St. 63, 69, quoted with approval in the
Carroll opinion. 267 U. S. at 161. And this "means less
than evidence which would justify condemnation" or
conviction, as Marshall, C. J., said for the Court more
than a century ago in Locke v. United States, 7 Cranch
339, 348. Since Marshall's time, at any rate, it has come
to mean more than bare suspicion: Probable cause
exists where "the facts and circumstances within their
[the officers'] knowledge and of which they had
reasonably trustworthy information [are] sufficient in
themselves to warrant a man of reasonable caution in
the belief that" an offense has been or is being
committed. Carroll v. United States, 267 U. S. 132, 162.
These long-prevailing standards seek to safeguard
citizens from rash and unreasonable interferences with
privacy and from unfounded charges of crime. They also
seek to give fair leeway for enforcing the law in the
community's protection. Because many situations which
confront officers in the course of executing their duties
are more or less ambiguous, room must be allowed for
some mistakes on their part. But the mistakes must be
those of reasonable men, acting on facts leading
sensibly to their conclusions of probability. The rule of
probable cause is a practical, nontechnical conception
affording the best compromise that has been found for
accommodating these often opposing interests.
Requiring more would unduly hamper law enforcement.
To allow less would be to leave law-abiding citizens at
the mercy of the officers' whim or caprice.
In the Philippines, there are four instances in the
Revised Rules of Criminal Procedure where probable
cause is needed to be established:
(1)
In Sections 1 and 3 of Rule 112: By the investigating
officer, to determine whether there is sufficient ground to
engender a well-founded belief that a crime has been
committed and the respondent is probably guilty thereof,
and should be held for trial. A preliminary investigation is
required before the filing of a complaint or information for
an offense where the penalty prescribed by law is at
least four years, two months and one day without regard
to the fine;
(2)
In Sections 6 and 9 of Rule 112: By the judge, to
determine whether a warrant of arrest or a commitment
order, if the accused has already been arrested, shall be
issued and that there is a necessity of placing the
respondent under immediate custody in order not to
frustrate the ends of justice;
(3)
In Section 5(b) of Rule 113: By a peace officer or a
private person making a warrantless arrest when an
offense has just been committed, and he has probable
cause to believe based on personal knowledge of facts
or circumstances that the person to be arrested has
committed it; and
(4)
In Section 4 of Rule 126: By the judge, to determine
whether a search warrant shall be issued, and only upon
probable cause in connection with one specific offense
to be determined personally by the judge after
examination under oath or affirmation of the complainant
and the witnesses he may produce, and particularly
describing the place to be searched and the things to be
seized which may be anywhere in the
Philippines.
In all these instances, the evidence necessary to
establish probable cause is based only on the likelihood,
or probability, of guilt.74
Estrada also highlighted that a "[preliminary investigation
is not part of the criminal action. It is merely preparatory
and may even be disposed of in certain situations."75
To determine whether there is probable cause that
respondents committed copyright infringement, a review
of the elements of the crime, including the existing facts,
is required.cralawlawlibrary
V
ABS-CBN claims that news footage is subject to
copyright and prohibited use of copyrighted material is
punishable under the Intellectual Property Code. It
argues that the new footage is not a "newsworthy event"
but "merely an account of the arrival of Angelo dela Cruz
in the Philippines — the latter being the newsworthy
event":76ChanRoblesVirtualawlibrary
To be clear, it is the event itself or the arrival of Angelo
dela Cruz which is not copyrightable because that is the
newsworthy event. However, any footage created from
the event itself, in this case the arrival of Angelo dela
Cruz, are intellectual creations which are copyrightable.
Thus, the footage created by ABS-CBN during the arrival
of Angelo dela Cruz, which includes the statements of
Dindo Amparo, are copyrightable and protected by the
laws on copyright.77
On the other hand, respondents argue that ABS-CBN's
news footage of Angelo dela Cruz's arrival is not
copyrightable or subject to
protection:chanroblesvirtuallawlibrary
Certainly, the arrival of Angelo [d]ela Cruz, which
aroused public attention and the consciousness of the
Filipino people with regard to their countrymen, OFWs
working in foreign countries and how the Philippine
government responds to the issues concerning them, is
"news". There is no ingenuity or inventiveness added in
the said news footage. The video footage of this "news"
is not copyrightable by any legal standard as facts of
everyday life depicted in the news and items of press
information is part of the public domain.78 (Emphasis in
the original)
The news footage is copyrightable.
The Intellectual Property Code is clear about the rights
afforded to authors of various kinds of work. Under the
Code, "works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality and
purpose."79 These include "[audio-visual works and
cinematographic works and works produced by a
process analogous to cinematography or any process for
making audiovisual recordings."80
Contrary to the old copyright law,81 the Intellectual
Property Code does not require registration of the work
to fully recover in an infringement suit. Nevertheless,
both copyright laws provide that copyright for a work is
acquired by an intellectual creator from the moment of
creation.82
It is true that under Section 175 of the Intellectual
Property Code, "news of the day and other
miscellaneous facts having the character of mere items
of press information" are considered unprotected subject
matter.83 However, the Code does not state that
expression of the news of the day, particularly when it
underwent a creative process, is not entitled to
protection.
An idea or event must be distinguished from the
expression of that idea or event. An idea has been
likened to a ghost in that it "must be spoken to a little
before it will explain itself."84 It is a concept that has
eluded exact legal definition.85 To get a better grasp of
the idea/expression dichotomy, the etymology of the
term "idea" is traced:chanroblesvirtuallawlibrary
The word "idea" is derived from a Greek term, meaning
"a form, the look or appearance of a thing as opposed to
its reality, from idein, to see." In the Timaeus, Plato saw
ideas as eternal paradigms, independent objects to
which the divine demiurge looks as patterns in forming
the world. This was later modified to the religious
conception of ideas as the thoughts of God. "It is not a
very long step to extend the term 'idea' to cover patterns,
blueprints, or plans in anyone's mind, not only in God's."
The word entered the French and English vernacular in
the 1600s and possessed two meanings. The first was
the Platonic meaning of a perfect exemplar or paradigm.
The second, which probably has its origin with
Descartes, is of a mental concept or image or, more
broadly, any object of the mind when it is active. Objects
of thought may exist independently. The sun exists
(probably) before and after you think of it. But it is also
possible to think of things that have never existed, such
as a unicorn or Pegasus. John Locke defined ideas very
comprehensively, to include: all objects of the mind.
Language was a way of translating the invisible, hidden
ideas that make up a person's thoughts into the external,
perceptible world of articulate sounds and visible written
symbols that others can understand.86 (Citations
omitted)
There is no one legal definition of "idea" in this
jurisdiction. The term "idea" is mentioned only once in
the Intellectual Property Code.87 In Joaquin, Jr. v.
Drilon,88 a television format (i.e., a dating show format)
is not copyrightable under Section 2 of Presidential
Decree No. 49;89 it is a mere
concept:chanroblesvirtuallawlibrary
P.D. No. 49, §2, in enumerating what are subject to
copyright, refers to finished works and not to concepts.
The copyright does not extend to an idea, procedure,
process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such
work. Thus, the new INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES
provides:chanroblesvirtuallawlibrary
SEC. 175. Unprotected Subject Matter.—
Notwithstanding the provisions of Sections 172 and 173,
no protection shall extend, under this law, to any idea,
procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they
are expressed, explained, illustrated or embodied in a
work; news of the day and other miscellaneous facts
having the character of mere items of press information;
or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof.
What then is the subject matter of petitioners' copyright?
This Court is of the opinion that petitioner BJPFs
copyright covers audio-visual recordings of each episode
of Rhoda and Me, as falling within the class of works
mentioned in P.D. 49, §2(M), to
wit:chanroblesvirtuallawlibrary
Cinematographic works and works produced by a
process analogous to cinematography or any process for
making audio-visual recordings;
The copyright does not extend to the general concept or
format of its dating game show. Accordingly, by the very
nature of the subject of petitioner BJPI's copyright, the
investigating prosecutor should have the opportunity to
compare the videotapes of the two shows.
Mere description by words of the general format of the
two dating game shows is insufficient; the presentation
of the master videotape in evidence was indispensable
to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can
describe because it involves a whole spectrum of visuals
and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the
general copyright/format of both dating game shows90
(Emphasis supplied, citations omitted)
Ideas can be either abstract or concrete.91 It is the
concrete ideas that are generally referred to as
expression:chanroblesvirtuallawlibrary
The words "abstract" and "concrete" arise in many cases
dealing with the idea/expression distinction. The
Nichols court, for example, found that the defendant's
film did not infringe the plaintiffs play because it was "too
generalized an abstraction from what plaintiff wrote . . .
only a part of her ideas." In Eichel v. Marcin, the court
said that authors may exploit facts, experiences, field of
thought, and general ideas found in another's work,
"provided they do not substantially copy a concrete form,
in which the circumstances and ideas have been
developed, arranged, and put into shape." Judge Hand,
in National Comics Publications, Inc. v. Fawcett
Publications, Inc. said that "no one infringes, unless he
descends so far into what is concrete as to invade. . .
'expression.'"
These cases seem to be distinguishing "abstract" ideas
from "concrete" tangible embodiments of these
abstractions that may be termed expression. However, if
the concrete form of a work means more than the literal
expression contained within it, it is difficult to determine
what is meant by "concrete." Webster's New Twentieth
Century Dictionary of the English Language provides
several meanings for the word concrete. These include:
"having a material, perceptible existence; of, belonging
to, or characterized by things or events that can be
perceived by the senses; real; actual;" and "referring to a
particular; specific, not general or abstract."92
In Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,93 this court, citing the American case of
Baker v. Selden, distinguished copyright from patents
and illustrated how an idea or concept is different from
the expression of that idea:chanroblesvirtuallawlibrary
In the oft-cited case of Baker vs. Selden, the United
States Supreme Court held that only the expression of
an idea is protected by copyright, not the idea itself. In
that case, the plaintiff held the copyright of a book which
expounded on a new accounting system he had
developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant
reproduced forms similar to those illustrated in the
plaintiffs copyrighted book. The US Supreme Court ruled
that:chanroblesvirtuallawlibrary
"There is no doubt that a work on the subject of book-
keeping, though only explanatory of well known systems,
may be the subject of a copyright; but, then, it is claimed
only as a book, x x x But there is a clear distinction
between the books, as such, and the art, which it is,
intended to illustrate. The mere statement of the
proposition is so evident that it requires hardly any
argument to support ii. The same distinction may be
predicated of every other art as well as that of
bookkeeping.
A treatise on the composition and use of medicines, be
they old or new; on the construction and use of ploughs
or watches or churns; or on the mixture and application
of colors for painting or dyeing; or on the mode of
drawing lines to produce the effect of perspective, would
be the subject of copyright; but no one would contend
that the copyright of the treatise would give the exclusive
right to the art or manufacture described therein. The
copyright of the book, if not pirated from other works,
would be valid without regard to the novelty or want of
novelty of its subject matter. The novelty of the art or
thing described or explained has nothing to do with the
validity of the copyright. To give to the author of the book
an exclusive property in the art described therein, when
no examination of its novelty has ever been officially
made, would be a surprise and a fraud upon the public.
That is the province of letters patent, not of copyright.
The claim to an invention of discovery of an art or
manufacture must be subjected to the examination of the
Patent Office before an exclusive right therein can be
obtained; and a patent from the government can only
secure it.
The difference between the two things, letters patent and
copyright, may be illustrated by reference to the subjects
just enumerated. Take the case of medicines. Certain
mixtures are found to be of great value in the healing art.
If the discoverer writes and publishes a book on the
subject (as regular physicians generally do), he gains no
exclusive right to the manufacture and sale of the
medicine; he gives that to the public. If he desires to
acquire such exclusive right, he must obtain a patent for
the mixture as a new art, manufacture or composition of
matter. He may copyright his book, if he pleases; but
that only secures to him the exclusive right of printing
and publishing his book. So of all other inventions or
discoveries.
The copyright of a book on perspective, no matter how
many drawings and illustrations it may contain, gives no
exclusive right to the modes of drawing described,
though they may never have been known or used
before. By publishing the book without getting a patent
for the art, the latter is given to the public.
. . . .
Now, whilst no one has a right to print or publish his
book or any material part thereof, as a hook intended to
convey instruction in the art, any person may practice
and use the, art itself which he has described and
illustrated therein. The use of the art is a totally different
thing from a publication of the book, explaining it. The
copyright of a book on bookkeeping cannot secure the
exclusive right to make, sell and use account books
prepared upon the plan set forth in such book. Whether
the art might or might not have been patented, is a
question, which is not before us. It was not patented,
and is open and free to the use of the public. And, of
course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.
The plausibility of the claim put forward by the
complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in
the books, which have been made the subject of
copyright. In describing the art, the illustrations and
diagrams employed happened to correspond more
closely than usual with the actual work performed by the
operator who uses the art. x x x The description of the
art in a book, though entitled to the benefit of copyright,
lays no foundation for an exclusive claim to the art itself.
The object of the one is explanation; the object of the
other is use. The former may be secured by copyright.
The latter can only be secured, if it can be secured at all,
by letters patent."94 (Emphasis supplied)
News or the event itself is not copyrightable. However,
an event can be captured and presented in a specific
medium. As recognized by this court in Joaquin,
television "involves a whole spectrum of visuals and
effects, video and audio."95 News coverage in television
involves framing shots, using images, graphics, and
sound effects. It involves creative process and
originality. Television news footage is an expression of
the news.
In the United States, a line of cases dwelt on the
possibility of television newscasts to be copyrighted.97
Most of these cases focused on private individuals' sale
or resale of tapes of news broadcasts. Conflicting
decisions were rendered by its courts. Noteworthy,
however, is the District Court's pronouncement in Pacific
& Southern Co. v. Duncan,98 which involves a News
Monitoring Service's videotaping and sale of WXIA-TVs
news broadcasts:chanroblesvirtuallawlibrary
It is axiomatic that copyright protection does not extend
to news "events" or the facts or ideas which are the
subject of news reports. Miller v. Universal City Studios,
Inc., 650 F.2d 1365, 1368 (5th Cir. 1981); Wainwright
Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d
91, 95 (2d Cir. 1977), cert, denied, 434 U.S. 1014, 98
S.Ct. 730, 54 L.Ed.2d 759 (1978). But it is equally well-
settled that copyright protection does extend to the
reports themselves, as distinguished from the substance
of the information contained in the reports. Wainwright,
558 F.2d at 95; International News Service v. Associated
Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918);
see Chicago Record-Herald Co. v. Tribune Assn., 275 F.
797 (7th Cir.1921); 1 Nimmer on Copyright § 2.11[B]
(1983). Copyright protects the manner of expression of
news reports, "the particular form or collocation of words
in which the writer has communicated it" International
News Service, 248 U.S. at 234, 39 S.Ct. at 70. Such
protection extends to electronic news reports as well as
written reports. See 17 U.S.C. § 102(a) (5), (6), and (7);
see also Iowa State University Research Foundations,
Inc. v. American Broadcasting Cos., 621 F.2d 57, 61 (2d
Cir. 1980)." (Emphasis supplied)
The idea/expression dichotomy has long been subject to
debate in the field of copyright law. Abolishing the
dichotomy has been proposed, in that non-protectibility
of ideas should be re-examined, if not stricken, from
decisions and the law:chanroblesvirtuallawlibrary
If the underlying purpose of the copyright law is the dual
one expressed by Lord Mansfield, the only excuse for
the continuance of the idea-expression test as a judicial
standard for determining protectibility would be that it
was or could be a truly useful method of determining the
proper balance between the creator's right to profit from
his work and the public's right that the "progress of the
arts not be retarded."
. . . [A]s used in the present-day context[,] the dichotomy
has little or no relationship to the policy which it should
effectuate. Indeed, all too often the sweeping language
of the courts regarding the nonprotectibility of ideas
gives the impression that this is of itself a policy of the
law, instead of merely a clumsy and outdated tool to
achieve a much more basic end.100
The idea/expression dichotomy is a complex matter if
one is trying to determine whether a certain material is a
copy of another.101 This dichotomy would be more
relevant in determining, for instance, whether a stage
play was an infringement of an author's book involving
the same characters and setting. In this case, however,
respondents admitted that the material under review —
which is the subject of the controversy — is an exact
copy of the original. Respondents did not subject ABS-
CBN's footage to any editing of their own. The news
footage did not undergo any transformation where there
is a need to track elements of the original.
Having established the protectible nature of news
footage, we now discuss the concomitant rights
accorded to authors. The authors of a work are granted
several rights in relation to it, including copyright or
economic rights:chanroblesvirtuallawlibrary
SECTION 177. Copyright or Economic Rights. —
Subject to the provisions of Chapter VIII, copyright or
economic rights shall consist of the exclusive right to
carry out, authorize or prevent the following
acts:chanroblesvirtuallawlibrary
177.1.
Reproduction of the work or substantial portion of the
work;
177.2.
Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
177.3.
The first public distribution of the original and each copy
of the work by sale or other forms of transfer of
ownership;
177.4.
Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data
and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy
which is the subject of the rental; (n)
177.5.
Public display of the original or a copy of the work;
177.6.
Public performance of the work; and
177.7.
Other communication to the public of the work. (Sec. 5,
P. D. No. 49a) (Emphasis supplied)
Under Section 211 of the Intellectual Property Code,
broadcasting organizations are granted a more specific
set of rights called related or neighboring
rights:chanroblesvirtuallawlibrary
SECTION 211. Scope of Right. — Subject to the
provisions of Section 212, broadcasting organizations
shall enjoy the exclusive right to carry out, authorize or
prevent any of the following acts:
211.1.
The rebroadcasting of their broadcasts;
211.2.
The recording in any manner, including the making of
films or the use of video tape, of their broadcasts for the
purpose of communication to the public of television
broadcasts of the same; and
211.3.
The use of such records for fresh transmissions or for
fresh recording. (Sec. 52, P.D. No. 49) (Emphasis
supplied)
Section 212 of the Code provides:
CHAPTER XV
LIMITATIONS ON PROTECTION
Section 212. Limitations on Rights. - Sections 203, 208
and 209 shall not apply where the acts referred to in
those Sections are related to:chanroblesvirtuallawlibrary
212.1.
The use by a natural person exclusively for his own
personal purposes;
212.2.
Using short excerpts for reporting current events;
212.3.
Use solely for the purpose of teaching or for scientific
research; and
212.4.
Fair use of the broadcast subject to the conditions under
Section 185. (Sec. 44, P.D. No. 49a)
The Code defines what broadcasting is and who
broadcasting organizations
include:chanroblesvirtuallawlibrary
202.7. "Broadcasting" means the transmission by
wireless means for the public reception of sounds or of
images or of representations thereof; such transmission
by satellite is also "broadcasting" where the means for
decrypting are provided to the public by the broadcasting
organization or with its consent;
202.8. "Broadcasting organization" shall include a
natural person or a juridical entity duly authorized to
engage in broadcasting[.]
Developments in technology, including the process of
preserving once ephemeral works and disseminating
them, resulted in the need to provide a new kind of
protection as distinguished from copyright.102 The
designation "neighboring rights" was abbreviated from
the phrase "rights neighboring to copyright."103
Neighboring or related rights are of equal importance
with copyright as established in the different conventions
covering both kinds of rights.104
Several treaties deal with neighboring or related rights of
copyright.105 The most prominent of these is the
"International Convention for the Protection of
Performers, Producers of Phonograms and Broadcasting
Organizations" (Rome Convention).106
The Rome Convention protects the rights of
broadcasting organizations in relation to their
broadcasts. Article XIII of the Rome Convention
enumerates the minimum rights accorded to
broadcasting organizations:chanroblesvirtuallawlibrary
Article 13
Minimum Rights for Broadcasting Organizations
Broadcasting organisations shall enjoy the right to
authorize or prohibit:
(a)
the rebroadcasting of their broadcasts;
(b)
the fixation of their broadcasts;
(c)
the reproduction:
(i)
of fixations, made without their consent, of their
broadcasts;
(ii)
of fixations, made in accordance with the provisions of
Article 15, of their broadcasts, if the reproduction is
made for purposes different from those referred to in
those provisions;
(d)
the communication to the public of their television
broadcasts if such communication is made in places
accessible to the public against payment of an entrance
fee; it shall be a matter for the domestic law of the State
where protection of this right is claimed to determine the
conditions under which it may be exercised.
With regard to the neighboring rights of a broadcasting
organization in this jurisdiction, this court has discussed
the difference between broadcasting and
rebroadcasting:chanroblesvirtuallawlibrary
Section 202.7 of the IP Code defines broadcasting as
"the transmission by wireless means for the public
reception of sounds or of images or of representations
thereof; such transmission by satellite is also
'broadcasting' where the means for decrypting are
provided to the public by the broadcasting organization
or with its consent."
On the other hand, rebroadcasting as defined in Article
3(g) of the International Convention for the Protection of
Performers, Producers of Phonograms and Broadcasting
Organizations, otherwise known as the 1961 Rome
Convention, of which the Republic of the Philippines is a
signatory, is "the simultaneous broadcasting by one
broadcasting organization of the broadcast of another
broadcasting organization."
. . . .
Under the Rome Convention, rebroadcasting is "the
simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting
organization." The Working Paper prepared by the
Secretariat of the Standing Committee on Copyright and
Related Rights defines broadcasting organizations as
"entities that take the financial and editorial responsibility
for the selection and arrangement of, and investment in,
the transmitted content."107 (Emphasis in the original,
citations omitted)
Broadcasting organizations are entitled to several rights
and to the protection of these rights under the
Intellectual Property Code. Respondents' argument that
the subject news footage is not copyrightable is
erroneous. The Court of Appeals, in its assailed
Decision, correctly recognized the existence of ABS-
CBN's copyright over the news
footage:chanroblesvirtuallawlibrary
Surely, private respondent has a copyright of its news
coverage. Seemingly, for airing said video feed,
petitioner GMA is liable under the provisions of the
Intellectual Property Code, which was enacted purposely
to protect copyright owners from infringement.108
News as expressed in a video footage is entitled to
copyright protection. Broadcasting organizations have
not only copyright on but also neighboring rights over
their broadcasts. Copyrightability of a work is different
from fair use of a work for purposes of news
reporting.cralawlawlibrary
VI
ABS-CBN assails the Court of Appeals' ruling that the
footage shown by GMA-7 falls under the scope of
Section 212.2 and 212.4 of the Intellectual Property
Code:chanroblesvirtuallawlibrary
The evidence on record, as well as the discussions
above, show that the footage used by [respondents]
could hardly be characterized as a short excerpt, as it
was aired over one and a half minutes.
Furthermore, the footage used does not fall under the
contemplation of Section 212.2 of the Intellectual
Property Code. A plain reading of the provision would
reveal that copyrighted material referred to in Section
212 are short portions of an artist's performance under
Section 203, or a producer's sound recordings under
Sections 208 and 209. Section 212 does not refer to
actual use of video footage of another as its own.
. . . .
The Angelo dela Cruz footage does not fall under the
rule on Section 212.4 of the Intellectual Property Code
on fair use of the broadcast.
In determining fair use, several factors are considered,
including the nature of the copyrighted work, and the
amount and substantiality of the person used in relation
to the copyrighted work as a whole.
In the business of television news reporting, the nature
of the copyrighted work or the video footages, are such
that, footage created, must be a novelty to be a good
report. Thus, when the . . . Angelo dela Cruz footage
was used by [respondents], the novelty of the footage
was clearly affected.
Moreover, given that a substantial portion of the Angelo
dela Cruz footage was utilized by GMA-7 for its own, its
use can hardly be classified as fair use.
Hence, [respondents] could not be considered as having
used the Angelo dela Cruz [footage] following the
provisions on fair use.
It is also worthy to note that the Honorable Court of
Appeals seem to contradict itself when it relied on the
provisions of fair use in its assailed rulings considering
that it found that the Angelo dela Cruz footage is not
copyrightable, given that the fair use presupposes an
existing copyright. Thus, it is apparent that the findings
of the Honorable Court of Appeals are erroneous and
based on wrong assumptions.109 (Underscoring in the
original)
On the other hand, respondents counter that GMA-7's
use of ABS-CBN's news footage falls under fair use as
defined in the Intellectual Property Code. Respondents,
citing the Court of Appeals Decision, argue that a strong
statutory defense negates any finding of probable cause
under the same statute. The Intellectual Property Code
provides that fair use negates infringement.
Respondents point out that upon seeing ABS-CBN's
reporter Dindo Amparo on the footage, GMA-7
immediately shut off the broadcast. Only five (5) seconds
passed before the footage was cut. They argue that this
shows that GMA-7 had no prior knowledge of ABS-
CBN's ownership of the footage or was notified of it.
They claim that the Angelo dela Cruz footage is
considered a short excerpt of an event's "news" footage
and is covered by fair use.111
Copyright protection is not absolute.112 The Intellectual
Property Code provides the limitations on copyright:
CHAPTER VIII
LIMITATIONS ON COPYRIGHT
Section 184. Limitations on Copyright. - 184.1.
Notwithstanding the provisions of Chapter V, the
following acts shall not constitute infringement of
copyright:
. . . .
184.2. The provisions of this section shall be interpreted
in such a way as to allow the work to be used in a
manner which does not conflict with the normal
exploitation of the work and does not unreasonably
prejudice the right holder's legitimate interests.
. . . .cralawlawlibrary
CHAPTER XV
LIMITATIONS ON PROTECTION
Section 212. Limitations on Rights. - Sections 203, 208
and 209 shall not apply where the acts referred to in
those Sections are related to:
. . . .
212.2. Using short excerpts for reporting current events;
212.4. Fair use of the broadcast subject to the conditions
under Section 185. (Sec. 44, P.D. No. 49a) (Emphasis
supplied)
The determination of what constitutes fair use depends
on several factors. Section 185 of the Intellectual
Property Code states:
SECTION 185. Fair Use of a Copyrighted Work. —
185.1. The fair use of a copyrighted work for criticism,
comment, news reporting, teaching including multiple
copies for classroom use, scholarship, research, and
similar purposes is not an infringement of copyright. ... In
determining whether the use made of a work in any
particular case is fair use, the factors to be considered
shall include:chanroblesvirtuallawlibrary
The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
The effect of the use upon the potential market for or
value of the copyrighted work.
Respondents allege that the news footage was only five
(5) seconds long, thus falling under fair use. ABS-CBN
belies this contention and argues that the footage aired
for two (2) minutes and 40 seconds.113 According to the
Court of Appeals, the parties admitted that only five (5)
seconds of the news footage was broadcasted by GMA-
7.114
This court defined fair use as "a privilege to use the
copyrighted material in a reasonable manner without the
consent of the copyright owner or as copying the theme
or ideas rather than their expression."115 Fair use is an
exception to the copyright owner's monopoly of the use
of the work to avoid stifling "the very creativity which that
law is designed to foster."116
Determining fair use requires application of the four-
factor test. Section 185 of the Intellectual Property Code
lists four (4) factors to determine if there was fair use of
a copyrighted work:
The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
The effect of the use upon the potential market for or
value of the copyrighted work.
First, the purpose and character of the use of the
copyrighted material must fall under those listed in
Section 185, thus: "criticism, comment, news reporting,
teaching including multiple copies for classroom use,
scholarship, research, and similar purposes."117 The
purpose and character requirement is important in view
of copyright's goal to promote creativity and encourage
creation of works. Hence, commercial use of the
copyrighted work can be weighed against fair use.
The "transformative test" is generally used in reviewing
the purpose and character of the usage of the
copyrighted work.118 This court must look into whether
the copy of the work adds "new expression, meaning or
message" to transform it into something else.119 "Meta-
use" can also occur without necessarily transforming the
copyrighted work used.120
Second, the nature of the copyrighted work is significant
in deciding whether its use was fair. If the nature of the
work is more factual than creative, then fair use will be
weighed in favor of the user.
Third, the amount and substantiality of the portion used
is important to determine whether usage falls under fair
use. An exact reproduction of a copyrighted work,
compared to a small portion of it, can result in the
conclusion that its use is not fair. There may also be
cases where, though the entirety of the copyrighted work
is used without consent, its purpose determines that the
usage is still fair.121 For example, a parody using a
substantial amount of copyrighted work may be
permissible as fair use as opposed to a copy of a work
produced purely for economic gain.
Lastly, the effect of the use on the copyrighted work's
market is also weighed for or against the user. If this
court finds that the use had or will have a negative
impact on the copyrighted work's market, then the use is
deemed unfair.
The structure and nature of broadcasting as a business
requires assigned values for each second of broadcast
or airtime. In most cases, broadcasting organizations
generate revenue through sale of time or timeslots to
advertisers, which, in turn, is based on market share:
122ChanRoblesVirtualawlibrary
Once a news broadcast has been transmitted, the
broadcast becomes relatively worthless to the station. In
the case of the aerial broadcasters, advertising sales
generate most of the profits derived from news reports.
Advertising rates are, in turn, governed by market share.
Market share is determined by the number of people
watching a show at any particular time, relative to total
viewers at that time. News is by nature time-limited, and
so re-broadcasts are generally of little worth because
they draw few viewers. Newscasts compete for market
share by presenting their news in an appealing format
that will capture a loyal audience. Hence, the primary
reason for copyrighting newscasts by broadcasters
would seem to be to prevent competing stations from
rebroadcasting current news from the station with the
best coverage of a particular news item, thus
misappropriating a portion of the market share.
Of course, in the real world there are exceptions to this
perfect economic view. However, there are also many
caveats with these exceptions. A common exception is
that some stations rebroadcast the news of others. The
caveat is that generally, the two stations are not
competing for market share. CNN, for example, often
makes news stories available to local broadcasters.
First, the local broadcaster is often not affiliated with a
network (hence its need for more comprehensive
programming), confining any possible competition to a
small geographical area. Second, the local broadcaster
is not in competition with CNN. Individuals who do not
have cable TV (or a satellite dish with decoder) cannot
receive CNN; therefore there is no competition. . . .
Third, CNN sells the right of rebroadcast to the local
stations. Ted Turner, owner of CNN, does not have First
Amendment freedom of access argument foremost on
his mind. (Else he would give everyone free cable TV so
everyone could get CNN.) He is in the business for a
profit. Giving away resources does not a profit make.123
(Emphasis supplied)
The high value afforded to limited time periods is also
seen in other media. In social media site Instagram,
users are allowed to post up to only 15 seconds of
video.124 In short-video sharing website Vine,125 users
are allowed a shorter period of six (6) seconds per post.
The mobile application 1 Second Everyday takes it
further by capturing and stitching one (1) second of
video footage taken daily over a span of a certain
period.126
Whether the alleged five-second footage may be
considered fair use is a matter of defense. We
emphasize that the case involves determination of
probable cause at the preliminary investigation stage.
Raising the defense of fair use does not automatically
mean that no infringement was committed. The
investigating prosecutor has full discretion to evaluate
the facts, allegations, and evidence during preliminary
investigation. Defenses raised during preliminary
investigation are subject to further proof and evaluation
before the trial court. Given the insufficiency of available
evidence, determination of whether the Angelo dela Cruz
footage is subject to fair use is better left to the trial court
where the proceedings are currently pending.
GMA-7's rebroadcast of ABS-CBN's news footage
without the latter's consent is not an issue. The mere act
of rebroadcasting without authority from the owner of the
broadcast gives rise to the probability that a crime was
committed under the Intellectual Property
Code.cralawlawlibrary
VII
Respondents cannot invoke the defense of good faith to
argue that no probable cause exists.
Respondents argue that copyright infringement is malum
in se, in that "[c]opying alone is not what is being
prohibited, but its injurious effect which consists in the
lifting from the copyright owners' film or materials, that
were the result of the latter's creativity, work and
productions and without authority, reproduced, sold and
circulated for commercial use to the detriment of the
latter."127
Infringement under the Intellectual Property Code is
malum prohibitum. The Intellectual Property Code is a
special law. Copyright is a statutory
creation:chanroblesvirtuallawlibrary
Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right granted
by the statute, and not simply a pre-existing right
regulated by the statute. Being a statutory grant, the
rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions
specified in the statute.128
The general rule is that acts punished under a special
law are malum prohibitum.129 "An act which is declared
malum prohibitum, malice or criminal intent is completely
immaterial."130
In contrast, crimes mala in se concern inherently
immoral acts:chanroblesvirtuallawlibrary
Not every criminal act, however, involves moral
turpitude. It is for this reason that "as to what crime
involves moral turpitude, is for the Supreme Court to
determine". In resolving the foregoing question, the
Court is guided by one of the general rules that crimes
mala in se involve moral turpitude, while crimes mala
prohibita do not, the rationale of which was set forth in
"Zari v. Flores" to wit:chanroblesvirtuallawlibrary
It (moral turpitude) implies something immoral in itself,
regardless of the fact that it is punishable by law or not.
It must not be merely mala prohibita, but the act itself
must be inherently immoral. The doing of the act itself,
and not its prohibition by statute fixes the moral
turpitude. Moral turpitude does not, however, include
such acts as are not of themselves immoral but whose
illegality lies in their being positively prohibited.
(Emphasis supplied)
[These] guidelines nonetheless proved short of providing
a clear-cut solution, for in International Rice Research
Institute v. NLRC, the Court admitted that it cannot
always be ascertained whether moral turpitude does or
does not exist by merely classifying a crime as malum in
se or as malum prohibitum. There are crimes which are
mala in se and yet but rarely involve moral turpitude and
there are crimes which involve moral turpitude and are
mala prohibita only. In the final analysis, whether or not
a crime involves moral turpitude is ultimately a question
of fact and frequently depends on all the circumstances
surrounding the violation of the statue.131 (Emphasis in
the original)
"Implicit in the concept of mala in se is that of mens
rea."132Mens rea is defined as "the nonphysical
element which, combined with the act of the accused,
makes up the crime charged. Most frequently it is the
criminal intent, or the guilty mind[.]"133
Crimes mala in se presuppose that the person who did
the felonious act had criminal intent to do so, while
crimes mala prohibita do not require knowledge or
criminal intent:chanroblesvirtuallawlibrary
In the case of mala in se it is necessary, to constitute a
punishable offense, for the person doing the act to have
knowledge of the nature of his act and to have a criminal
intent; in the case of mala prohibita, unless such words
as "knowingly" and "willfully" are contained in the statute,
neither knowledge nor criminal intent is necessary. In
other words, a person morally quite innocent and with
every intention of being a law-abiding citizen becomes a
criminal, and liable to criminal penaltes, if he does an act
prohibited by these statutes.134 (Emphasis supplied)
Hence, "[i]ntent to commit the crime and intent to
perpetrate the act must be distinguished. A person may
not have consciously intended to commit a crime; but he
did intend to commit an act, and that act is, by the very
nature of things, the crime itself[.]"135 When an act is
prohibited by a special law, it is considered injurious to
public welfare, and the performance of the prohibited act
is the crime itself.136
Volition, or intent to commit the act, is different from
criminal intent. Volition or voluntariness refers to
knowledge of the act being done. On the other hand,
criminal intent — which is different from motive, or the
moving power for the commission of the crime137 —
refers to the state of mind beyond voluntariness. It is this
intent that is being punished by crimes mala in se.
Unlike other jurisdictions that require intent for a criminal
prosecution of copyright infringement, the Philippines
does not statutorily support good faith as a defense.
Other jurisdictions provide in their intellectual property
codes or relevant laws that mens rea, whether express
or implied, is an element of criminal copyright
infringement.138
In Canada, criminal offenses are categorized under
three (3) kinds: "the full mens rea offence, meaning the
accused's actual or subjective state of mind has to be
proved; strict liability offences where no mens rea has to
be proved but the accused can avoid liability if he can
prove he took all reasonable steps to avoid the particular
event; [and] absolute liability offences where Parliament
has made it clear that guilt follows proof of the
prescribed act only."139 Because of the use of the word
"knowingly" in Canada's Copyright Act, it has been held
that copyright infringement is a full mens rea offense.140
In the United States, willful intent is required for criminal
copyright infringement.141 Before the passage of the No
Electronic Theft Act, "civil copyright infringements were
violations of criminal copyright laws only if a defendant
willfully infringed a copyright 'for purposes of
commercial advantage or private financial gain.'"142
However, the No Electronic Theft Act now allows
criminal copyright infringement without the requirement
of commercial gain. The infringing act may or may not be
for profit.143
There is a difference, however, between the required
liability in civil copyright infringement and that in criminal
copyright infringement in the United States. Civil
copyright infringement does not require culpability and
employs a strict liability regime144 where "lack of
intention to infringe is not a defense to an action for
infringement."145
In the Philippines, the Intellectual Property Code, as
amended, provides for the prosecution of criminal
actions for the following violations of intellectual property
rights: Repetition of Infringement of Patent (Section 84);
Utility Model (Section 108); Industrial Design (Section
119); Trademark Infringement (Section 155 in relation to
Section 170); Unfair Competition (Section 168 in relation
to Section 170); False Designations of Origin, False
Description or Representation (Section 169.1 in relation
to Section 170); infringement of copyright, moral rights,
performers' rights, producers' rights, and broadcasting
rights (Section 177, 193, 203, 208 and 211 in relation to
Section 217); and other violations of intellectual property
rights as may be defined by law.
The Intellectual Property Code requires strict liability for
copyright infringement whether for a civil action or a
criminal prosecution; it does not require mens rea or
culpa:146ChanRoblesVirtualawlibrary
SECTION 216. Remedies for Infringement. —
216.1. Any person infringing a right protected under this
law shall be liable:
To an injunction restraining such infringement. The
court may also order the defendant to desist from an
infringement, among others, to prevent the entry into the
channels of commerce of imported goods that involve an
infringement, immediately after customs clearance of
such goods.
Pay to the copyright proprietor or his assigns or heirs
such actual damages, including legal costs and other
expenses, as he may have incurred due to the
infringement as well as the profits the infringer may have
made due to such infringement, and in proving profits
the plaintiff shall be required to prove sales only and the
defendant shall be required to prove every element of
cost which he claims, or, in lieu of actual damages and
profits, such damages which to the court shall appear to
be just and shall not be regarded as penalty.
Deliver under oath, for impounding during the pendency
of the action, upon such terms and conditions as the
court may prescribe, sales invoices and other
documents evidencing sales, all articles and their
packaging alleged to infringe a copyright and
implements for making them.
Deliver under oath for destruction without any
compensation all infringing copies or devices, as well as
all plates, molds, or other means for making such
infringing copies as the court may order.
Such other terms and conditions, including the payment
of moral and exemplary damages, which the court may
deem proper, wise and equitable and the destruction of
infringing copies of the work even in the event of
acquittal in a criminal case.
216.2. In an infringement action, the court shall also
have the power to order the seizure and impounding of
any article which may serve as evidence in the court
proceedings. (Sec. 28. P.D. No. 49a)
SECTION 217, Criminal Penalties. —
217.1. Any person infringing any right secured by
provisions of Part IV of this Act or aiding or abetting such
infringement shall be guilty of a crime punishable by:
Imprisonment of one (1) year to three (3) years plus a
fine ranging from Fifty thousand pesos (P50,000) to One
hundred fifty thousand pesos (P150,000) for the first
offense.
Imprisonment of three (3) years and one (1) day to six
(6) years plus a fine ranging from One hundred fifty
thousand pesos (P150,000) to Five hundred thousand
pesos (P500,000) for the second offense.
Imprisonment of six (6) years and one (1) day to nine (9)
years plus a fine ranging from Five hundred thousand
pesos (P500,000) to One million five hundred thousand
pesos (P1,500,000) for the third and subsequent
offenses.
In all cases, subsidiary imprisonment in cases of
insolvency.
217.2. In determining the number of years of
imprisonment and the amount of fine, the court shall
consider the value of the infringing materials that the
defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason
of the infringement.
217.3. Any person who at the time when copyright
subsists in a work has in his possession an article which
he knows, or ought to know, to be an infringing copy of
the work for the purpose of:
Selling, letting for hire, or by way of trade offering or
exposing for sale, or hire, the article;
Distributing the article for purpose of trade, or for any
other purpose to an extent that will prejudice the rights of
the copyright owner in the work; or
Trade exhibit of the article in public, shall be guilty of an
offense and shall be liable on conviction to imprisonment
and fine as above mentioned. (Sec. 29, P.D. No. 49a)
(Emphasis supplied)
The law is clear. Inasmuch as there is wisdom in
prioritizing the flow and exchange of ideas as opposed to
rewarding the creator, it is the plain reading of the law in
conjunction with the actions of the legislature to which
we defer. We have continuously "recognized the power
of the legislature . . . to forbid certain acts in a limited
class of cases and to make their commission criminal
without regard to the intent of the doer. Such legislative
enactments are based on the experience that repressive
measures which depend for their efficiency upon proof of
the dealer's knowledge or of his intent are of little use
and rarely accomplish their purposes."147
Respondents argue that live broadcast of news requires
a different treatment in terms of good faith, intent, and
knowledge to commit infringement. To argue this point,
they rely on the differences of the media used in Habana
et al. v. Robles, Columbia Pictures v. Court of Appeals,
and this case:chanroblesvirtuallawlibrary
Petitioner ABS-CBN argues that lack of notice that the
Angelo dela Cruz was under embargo is not a defense in
copyright infringement and cites the case of Columbia
Pictures vs. Court of Appeals and Habana et al. vs.
Robles (310 SCRA 511). However, these cases refer to
film and literary work where obviously there is "copying"
from an existing material so that the copier knew that he
is copying from an existing material not owned by him.
But, how could respondents know that what they are
"copying was not [theirs]" when they were not copying
but merely receiving live video feed from Reuters and
CNN which they aired? What they knew and what they
aired was the Reuters live video feed and the CNN feed
which GMA-7 is authorized to carry in its news
broadcast, it being a subscriber of these companies[.]

It is apt to stress that the subject of the alleged copyright
infringement is not a film or literary work but live
broadcast of news footage. In a film or literary work, the
infringer is confronted face to face with the material he is
allegedly copying and therefore knows, or is presumed
to know, that what he is copying is owned by another.
Upon the other hand, in live broadcast, the alleged
infringer is not confronted with the fact that the material
he airs or re-broadcasts is owned by another, and
therefore, he cannot be charged of knowledge of
ownership of the material by another. This specially
obtains in the Angelo dela Cruz news footage which
GMA-7 received from Reuters and CNN. Reuters and
CNN were beaming live videos from the coverage which
GMA-7 received as a subscriber and, in the exercise of
its rights as a subscriber, GMA-7 picked up the live video
and simultaneously re-broadcast it. In simultaneously
broadcasting the live video footage of Reuters, GMA-7
did not copy the video footage of petitioner ABS-
CBN[.]148 (Emphasis in the original)
Respondents' arguments must fail.
Respondents are involved and experienced in the
broadcasting business. They knew that there would be
consequences in carrying A.BS-CBN's footage in their
broadcast. That is why GMA-7 allegedly cut the feed
from Reuters upon seeing ABS-CBN's logo and reporter.
To admit a different treatment for broadcasts would
mean abandonment of a broadcasting organization's
minimum rights, including copyright on the broadcast
material and the right against unauthorized re broadcast
of copyrighted material. The nature of broadcast
technology is precisely why related or neighboring rights
were created and developed. Carving out an exception
for live broadcasts would go against our commitments
under relevant international treaties and agreements,
which provide for the same minimum rights.149
Contrary to respondents' assertion, this court in
Habana,150 reiterating the ruling in Columbia
Pictures,151 ruled that lack of knowledge of infringement
is not a valid defense. Habana and Columbia Pictures
may have different factual scenarios from this case, but
their rulings on copyright infringement are analogous. In
Habana, petitioners were the authors and copyright
owners of English textbooks and workbooks. The case
was anchored on the protection of literary and artistic
creations such as books. In Columbia Pictures, video
tapes of copyrighted films were the subject of the
copyright infringement suit.
In Habana, knowledge of the infringement is presumed
when the infringer commits the prohibited
act:chanroblesvirtuallawlibrary
The essence of intellectual piracy should be essayed in
conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a
copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or
piracy, which is a synonymous term in this connection,
consists in the doing by any person, without the consent
of the owner of the copyright, of anything the sole right to
do which is conferred by statute on the owner of the
copyright.
. . . .
A copy of a piracy is an infringement of the original, and
it is no defense that the pirate, in such cases, did not
know whether or not he was infringing any copyright; he
at least knew that what he was copying was not his, and
he copied at his peril.
. . . .
In cases of infringement, copying alone is not what is
prohibited. The copying must produce an "injurious
effect". Here, the injury consists in that respondent
Robles lifted from petitioners' book materials that were
the result of the latter's research work and compilation
and misrepresented them as her own. She circulated the
book DEP for commercial use and did not acknowledge
petitioners as her source.152 (Emphasis supplied)
Habana and Columbia Pictures did not require
knowledge of the infringement to constitute a violation of
the copyright. One does not need to know that he or she
is copying a work without consent to violate copyright
law. Notice of fact of the embargo from Reuters or CNN
is not material to find probable cause that respondents
committed infringement. Knowledge of infringement is
only material when the person is charged of aiding and
abetting a copyright infringement under Section 217 of
the Intellectual Property Code.153
We look at the purpose of copyright in relation to criminal
prosecutions requiring
willfulness:chanroblesvirtuallawlibrary
Most importantly, in defining the contours of what it
means to willfully infringe copyright for purposes of
criminal liability, the courts should remember the ultimate
aim of copyright. Copyright is not primarily about
providing the strongest possible protection for copyright
owners so that they have the highest possible incentive
to create more works. The control given to copyright
owners is only a means to an end: the promotion of
knowledge and learning. Achieving that underlying goal
of copyright law also requires access to copyrighted
works and it requires permitting certain kinds of uses of
copyrighted works without the permission of the
copyright owner. While a particular defendant may
appear to be deserving of criminal sanctions, the
standard for determining willfulness should be set with
reference to the larger goals of copyright embodied in
the Constitution and the history of copyright in this
country.154
In addition, "[t]he essence of intellectual piracy should be
essayed in conceptual terms in order to underscore its
gravity by an appropriate understanding thereof.
Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of
the copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright."155
Intellectual property rights, such as copyright and the
neighboring right against rebroadcasting, establish an
artificial and limited monopoly to reward creativity.
Without these legally enforceable rights, creators will
have extreme difficulty recovering their costs and
capturing the surplus or profit of their works as reflected
in their markets. This, in turn, is based on the theory that
the possibility of gain due to creative work creates an
incentive which may improve efficiency or simply
enhance consumer welfare or utility. More creativity
redounds to the public good.
These, however, depend on the certainty of
enforcement. Creativity, by its very nature, is vulnerable
to the free rider problem. It is easily replicated despite
the costs to and efforts of the original creator. The more
useful the creation is in the market, the greater the
propensity that it will be copied. The most creative and
inventive individuals are usually those who are unable to
recover on their creations.
Arguments against strict liability presuppose that the
Philippines has a social, historical, and economic climate
similar to those of Western jurisdictions. As it stands,
there is a current need to strengthen intellectual property
protection.
Thus, unless clearly provided in the law, offenses
involving infringement of copyright protections should be
considered malum prohibitum. It is the act of
infringement, not the intent, which causes the damage.
To require or assume the need to prove intent defeats
the purpose of intellectual property protection.
Nevertheless, proof beyond reasonable doubt is still the
standard for criminal prosecutions under the Intellectual
Property Code.cralawlawlibrary
VIII
Respondents argue that GMA-7's officers and
employees cannot be held liable for infringement under
the Intellectual Property Code since it does not expressly
provide direct liability of the corporate officers. They
explain that "(i) a corporation may be charged and
prosecuted for a crime where the penalty is fine or both
imprisonment and fine, and if found guilty, may be fined;
or (ii) a corporation may commit a crime but if the statute
prescribes the penalty therefore to be suffered by the
corporate officers, directors or employees or other
persons, the latter shall be responsible for the
offense."156
Section 217 of the Intellectual Property Code states that
"any person" may be found guilty of infringement. It also
imposes the penalty of both imprisonment and
fine:chanroblesvirtuallawlibrary
Section 217. Criminal Penalties. - 217.1. Any person
infringing any right secured by provisions of Part IV of
this Act or aiding or abetting such infringement shall be
guilty of a crime punishable by:
(a)
Imprisonment of one (1) year to three (3) years plus a
fine ranging from Fifty thousand pesos (P50,000) to One
hundred fifty thousand pesos (P150,000) for the first
offense.
(b)
Imprisonment of three (3) years and one (1) day to six
(6) years plus a fine ranging from One hundred fifty
thousand pesos (P150,000) to Five hundred thousand
pesos (P500,000) for the second offense.
(c)
Imprisonment of six (6) years and one (1) day to nine (9)
years plus a fine ranging from five hundred thousand
pesos (P500,000) to One million five hundred thousand
pesos (P1,500,000) for the third and subsequent
offenses.
(d)
In all cases, subsidiary imprisonment in cases of
insolvency. (Emphasis supplied)
Corporations have separate and distinct personalities
from their officers or directors.157 This court has ruled
that corporate officers and/or agents may be held
individually liable for a crime committed under the
Intellectual Property
Code:158ChanRoblesVirtualawlibrary
Petitioners, being corporate officers and/or directors,
through whose act, default or omission the corporation
commits a crime, may themselves be individually held
answerable for the crime. . . . The existence of the
corporate entity does not shield from prosecution the
corporate agent who knowingly and intentionally caused
the corporation to commit a crime. Thus, petitioners
cannot hide behind the cloak of the separate corporate
personality of the corporation to escape criminal liability.
A corporate officer cannot protect himself behind a
corporation where he is the actual, present and efficient
actor.159
However, the criminal liability of a. corporation's officers
or employees stems from their active participation in the
commission of the wrongful
act:chanroblesvirtuallawlibrary
The principle applies whether or not the crime requires
the consciousness of wrongdoing. It applies to those
corporate agents who themselves commit the crime and
to those, who, by virtue of their managerial positions or
other similar relation to the corporation, could be
deemed responsible for its commission, if by virtue of
their relationship to the corporation, they had the power
to prevent the act. Moreover, all parties active in
promoting a crime, whether agents or not, are principals.
Whether such officers or employees are benefited by
their delictual acts is not a touchstone of their criminal
liability. Benefit is not an operative fact. 160 (Emphasis
supplied)
An accused's participation in criminal acts involving
violations of intellectual property rights is the subject of
allegation and proof. The showing that the accused did
the acts or contributed in a meaningful way in the
commission of the infringements is certainly different
from the argument of lack of intent or good faith. Active
participation requires a showing of overt physical acts or
intention to commit such acts. Intent or good faith, on the
other hand, are inferences from acts proven to have
been or not been committed.
We find that the Department of Justice committed grave
abuse of discretion when it resolved to file the
Information against respondents despite lack of proof of
their actual participation in the alleged crime.
Ordering the inclusion of respondents Gozon, GMA-7
President; Duavit, Jr., Executive Vice-President; Flores,
Vice-President for News and Public Affairs; and Soho,
Director for News, as respondents, Secretary Agra
overturned the City Prosecutor's finding that only
respondents Dela Peña-Reyes and Manalastas are
responsible for the crime charged due to their duties.161
The Agra Resolution reads:chanroblesvirtuallawlibrary
Thus, from the very nature of the offense and the penalty
involved, it is necessary that GMA-7's directors, officers,
employees or other officers thereof responsible for the
offense shall be charged and penalized for violation of
the Sections 177 and 211 of Republic Act No. 8293. In
their complaint for libel, respondents Felipe L Gozon,
Gilberto R. Duavit, Jr., Marissa L. Flores, Jessica A.
Soho, Grace Dela Pena-Reyes, John Oliver T.
Manalastas felt they were aggrieved because they were
"in charge of the management, operations and
production of news and public affairs programs of the
network" (GMA-7). This is clearly an admission on
respondents' part. Of course, respondents may argue
they have no intention to infringe the copyright of ABS-
CBN; that they acted in good faith; and that they did not
directly cause the airing of the subject footage, but again
this is preliminary investigation and what is required is
simply probable cause. Besides, these contentions can
best be addressed in the course of trial.162 (Citation
omitted)
In contrast, the Office of the City Prosecutor, in the
Resolution dated December 3, 2004, found that
respondents Gozon, Duavit, Jr., Flores, and Soho did
not have active participation in the commission of the
crime charged:chanroblesvirtuallawlibrary
This Office, however, does not subscribe to the view that
respondents Atty. Felipe Gozon, Gilberto Duavit,
Marissa Flores and Jessica Soho should be held liable
for the said offense. Complainant failed to present clear
and convincing evidence that the said respondents
conspired with Reyes and Manalastas. No evidence was
adduced to prove that these respondents had an active
participation in the actual commission of the copyright
infringement or they exercised their moral ascendancy
over Reyes and Manalastas in airing the said footage. It
must be stressed that, conspiracy must be established
by positive and conclusive evidence. It must be shown to
exist as clearly and convincingly as the commission of
the offense itself.163 (Emphasis supplied, citations
omitted)
The City Prosecutor found respondents Dela Peña-
Reyes and Manalastas liable due to the nature of their
work and responsibilities. He found
that:chanroblesvirtuallawlibrary
[t]his Office however finds respondents Grace Déla
Peña-Reyes and John Oliver T. Manalastas liable for
copyright infringement penalized under Republic Act No.
8293. It is undisputed that complainant ABS-CBN holds
the exclusive ownership and copyright over the "Angelo
[d]ela Cruz news footage". Hence, any airing and re-
broadcast of the said footage without any consent and
authority from ABS-CBN will be held as an infringement
and violation of the intellectual property rights of the
latter. Respondents Grace Dela Peña-Reyes as the
Head of the News Operation and John Oliver T.
Manalastas as the Program Manager cannot escape
liability since the news control room was under their
direct control and supervision. Clearly, they must have
been aware that the said footage coming from Reuters
or CNN has a "No Access Philippines" advisory or
embargo thus cannot be re-broadcast. We find no merit
to the defense of ignorance interposed by the
respondents. It is simply contrary to human experience
and logic that experienced employees of an established
broadcasting network would be remiss in their duty in
ascertaining if the said footage has an embargo.164
(Emphasis supplied)
We agree with the findings as to respondents Dela
Peña-Reyes and Manalastas. Both respondents
committed acts that promoted infringement of ABS-
CBN's footage. We note that embargoes are common
occurrences in and between news agencies and/or
broadcast organizations.165 Under its Operations
Guide, Reuters has two (2) types of embargoes:
transmission embargo and publication embargo.166
Under ABS-CBN's service contract with Reuters,
Reuters will embargo any content contributed by ABS-
CBN from other broadcast subscribers within the same
geographical location:chanroblesvirtuallawlibrary
4a. Contributed Content
You agree to supply us at our request with news and
sports news stones broadcast on the Client Service of
up to three (3) minutes each for use in our Services on a
non-exclusive basis and at a cost of US$300.00 (Three
Hundred United States Dollars) per story. In respect of
such items we agree to embargo them against use by
other broadcast subscribers in the Territory and confirm
we will observe all other conditions of usage regarding
Contributed Content, as specified in Section 2.5 of the
Reuters Business Principles for Television Services. For
the purposes of clarification, any geographical restriction
imposed by you on your use of Contributed Content will
not prevent us or our clients from including such
Contributed Content in online transmission services
including the internet. We acknowledge Contributed
Content is your copyright and we will not acquire any
intellectual property rights in the Contributed
Content.167 (Emphasis supplied)
Respondents Dela Peña-Reyes and Manalastas merely
denied receiving the advisory sent by Reuters to its
clients, including GMA-7. As in the records, the advisory
reads:chanroblesvirtuallawlibrary
ADVISORY - - +++LIVE COVER PLANS+++
PHILIPPINES: HOSTAGE RETURN
* *ATTENTION ALL CLIENTS**
PLEASE BE ADVISED OF THE FOLLOWING LIVE
COVER PLANNED FOR THURSDAY, JULY 22:
. . . .
SOURCE: ABS-CBN
TV AND WEB RESTRICTIONS: NO ACCESS
PHILIPPINES.168
There is probable cause that respondents Dela Peña-
Reyes and Manalastas directly committed copyright
infringement of ABS-CBN's news footage to warrant
piercing of the corporate veil. They are responsible in
airing the embargoed Angelo dela Cruz footage. They
could have prevented the act of infringement had they
been diligent in their functions as Head of News
Operations and Program Manager.
Secretary Agra, however, committed grave abuse of
discretion when he ordered the filing of the Information
against all respondents despite the erroneous piercing of
the corporate veil. Respondents Gozon, Duavit, Jr.,
Flores, and Soho cannot be held liable for the criminal
liability of the corporation.
Mere membership in the Board or being President per se
does not mean knowledge, approval, and participation in
the act alleged as criminal. There must be a showing of
active participation, not simply a constructive one.
Under principles of criminal law, the principals of a crime
are those "who take a direct part in the execution of the
act; [t]hose who directly force or induce others to commit
it; [or] [t]hose who cooperate in the commission of the
offense by another act without which it would not have
been accomplished."169 There is conspiracy "when two
or more persons come to an agreement concerning the
commission of a felony and decide to commit
it":170ChanRoblesVirtualawlibrary
Conspiracy is not presumed. Like the physical acts
constituting the crime itself, the elements of conspiracy
must be proven beyond reasonable doubt. While
conspiracy need not be established by direct evidence,
for it may be inferred from the conduct of the accused
before, during and after the commission of the crime, all
taken together, however, the evidence must be strong
enough to show the community of criminal design. For
conspiracy to exist, it is essential that there must be a
conscious design to commit an offense. Conspiracy is
the product of intentionality on the part of the cohorts.
It is necessary that a conspirator should have performed
some overt act as a direct or indirect contribution to the
execution of the crime committed. The overt act may
consist of active participation in the actual commission of
the crime itself or it may consist of moral assistance to
his co-conspirators by being present at the commission
of the crime or by exerting moral ascendancy over the
other co-conspirators[.]171 (Emphasis supplied,
citations omitted)
In sum, the trial court erred in failing to resume the
proceedings after the designated period. The Court of
Appeals erred when it held that Secretary Agra
committed errors of jurisdiction despite its own
pronouncement that ABS-CBN is the owner of the
copyright on the news footage. News should be
differentiated from expression of the news, particularly
when the issue involves rebroadcast of news footage.
The Court of Appeals also erroneously held that good
faith, as. well as lack of knowledge of infringement, is a
defense against criminal prosecution for copyright and
neighboring rights infringement. In its current form, the
Intellectual Property Code is malum prohibitum and
prescribes a strict liability for copyright infringement.
Good faith, lack of knowledge of the copyright, or lack of
intent to infringe is not a defense against copyright
infringement. Copyright, however, is subject to the rules
of fair use and will be judged on a case-to-case basis.
Finding probable cause includes a determination of the
defendant's active participation, particularly when the
corporate veil is pierced in cases involving a
corporation's criminal liability.cralawred
WHEREFORE, the Petition is partially GRANTED. The
Department of Justice Resolution dated June 29, 2010
ordering the filing of the Information is hereby
REINSTATED as to respondents Grace Dela Peña-
Reyes and John Oliver T. Manalastas. Branch 93 of the
Regional Trial Court of Quezon City is directed to
continue with the proceedings in Criminal Case No. Q-
04-131533.
SO ORDERED.
G.R. No. 166391, October 21, 2015
MICROSOFT CORPORATION, Petitioner, v.
ROLANDO D. MANANSALA AND/OR MEL
MANANSALA, DOING BUSINESS AS DATAMAN
TRADING COMPANY AND/OR COMIC ALLEY,
Respondent.
DECISION
BERSAMIN, J.:
This appeal seeks to overturn the decision promulgated
on February 27, 2004,1 whereby the Court of Appeals
(CA) dismissed the petition for certiorari filed by
petitioner to annul the orders of the Department of
Justice (DOJ) dated March 20, 2000,2 May 15, 2001,3
and January 27, 20034 dismissing the criminal charge of
violation of Section 29 of Presidential Decree No. 49
(Decree on Intellectual Property) it had instituted against
the respondents; and the resolution promulgated on
December 6, 2004 denying its motion for
reconsideration.5
Antecedents
The CA summarized the factual and procedural
antecedents thusly:
Petitioner (Microsoft Corporation) is the copyright and
trademark owner of all rights relating to all versions and
editions of Microsoft software (computer programs) such
as, but not limited to, MS-DOS (disk operating system),
Microsoft Encarta, Microsoft Windows, Microsoft Word,
Microsoft Excel, Microsoft Access, Microsoft Works,
Microsoft Powerpoint, Microsoft Office, Microsoft Flight
Simulator and Microsoft FoxPro, among others, and their
user's guide/manuals.
Private Respondent-Rolando Manansala is doing
business under the name of DATAMAN TRADING
COMPANY and/or COMIC ALLEY with business
address at 3rd Floor, University Mall Building, Tail Avc,
Manila.
Private Respondent Manansala, without authority from
petitioner, was engaged in distributing and selling
Microsoft computer software programs.
On November 3, 1997, Mr. John Benedict A. Sacriz, a
private investigator accompanied by an agent from the
National Bureau of Investigation (NBI) was able to
purchase six (6) CD-ROMs containing various computer
programs belonging to petitioner.
As a result of the test-purchase, the agent from the NBI
applied for a search warrant to search the premises of
the private respondent.
On November 17, 1997, a Search Warrant was issued
against the premises of the private respondent.
On November 19, 1997, the search warrant was served
on the private respondent's premises and yielded
several illegal copies of Microsoft programs.
Subsequently, petitioner, through Atty. Teodoro Kalaw IV
tiled an Affidavit-Complaint in the DOJ based on the
results of the search and seizure operation conducted on
private respondent's premises.
However, in a Resolution dated March 20, 2000, public
respondent State Prosecutor dismissed the charge
against private respondent for violation of Section 29
P.D. 49 in this wise, to quote:
'The evidence is extant in the records to show that
respondent is selling Microsoft computer software
programs bearing the copyrights and trademarks owned
by Microsoft Corporation. There is, however, no proof
that respondent was the one who really printed or copied
the products of complainant for sale in his store.
WHEREFORE, it is hereby, recommended that
respondent be charged for violation of Article 189 of the
Revised Penal Code. The charge for violation of Section
29 of PD No. 49 is recommended dismissed for lack of
evidence.'
Petitioner filed a Motion for Partial Reconsideration
arguing that printing or copying is not essential in the
crime of copyright infringement under Section 29 of PD
No. 49.
On May 15, 2001, the public respondent issued a
Resolution denying the Motion for Partial
Reconsideration.
Thereafter, petitioner filed a Petition for Review with the
DOJ, which denied the petition for
review.6ChanRoblesVirtualawlibrary
Dissatisfied with the outcome of its appeal, the petitioner
filed its petition for certiorari in the CA to annul the DOJ's
dismissal of its petition for review on the ground of grave
abuse of discretion amounting to lack or excess of
jurisdiction on the part of the DOJ.
On February 27, 2004, the CA rendered the assailed
decision affirming the dismissal by the DOJ,7 disposing
as follows:
WHEREFORE, premises considered, the instant petition
is DENIED. Consequently, the Orders dated March 20,
2000, May 15, 2001 and January 27, 2003 respectively
are hereby AFFIRMED.
SO ORDERED.8ChanRoblesVirtualawlibrary
Issue
The petitioner insists that printing or copying was not
essential in the commission of the crime of copyright
infringement under Section 29 of Presidential Decree
No. 49; hence, contrary to the holding of the DOJ, as
upheld by the CA, the mere selling of pirated computer
software constituted copyright infringement.9
Ruling of the Court
The appeal is meritorious.
Although the general rule is that the determination of the
existence of probable cause by the public prosecutor is
not to be judicially scrutinized because it is an executive
function, an exception exists when the determination is
tainted with grave abuse of discretion.10 Bearing this in
mind, we hold that the DOJ committed grave abuse of
discretion in sustaining the public prosecutor's dismissal
of the charge of copyright infringement under Section 29
of Presidential Decree No. 49 on the ground of lack of
evidence because the public prosecutor thereby
flagrantly disregarded the existence of acts sufficient to
engender the well-founded belief that the crime of
copyright infringement had been committed, and that the
respondent was probably guilty thereof.11
Section 5 of Presidential Decree No. 49 specifically
defined copyright as an exclusive right in the following
manner:
Section 5. Copyright shall consist in the exclusive right;
(A) To print, reprint, publish, copy, distribute, multiply,
sell, and make photographs, photo-engravings, and
pictorial illustrations of the works;
(B) To make any translation or other version or extracts
or arrangements or adaptations thereof; to dramatize it if
it be a non-dramatic work; to convert it into a non-
dramatic work if it be a drama; to complete or execute if
it be a model or design;
(C) To exhibit, perform, represent, produce, or
reproduce, the work in any manner or by any method
whatever for profit or otherwise; it not reproduced in
copies for sale, to sell any manuscript or any record
whatsoever thereof;
(D) To make any other use or disposition of the work
consistent with the laws of the land.
Accordingly, the commission of any of the acts
mentioned in Section 5 of Presidential Decree No. 49
without the copyright owner's consent constituted
actionable copyright infringement. In Columbia Pictures,
Inc. v. Court of Appeals,12 the Court has emphatically
declared:
Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the
doing by any person, without the consent of the owner of
the copyright, of anything the sole right to do which is
conferred by statute on the owner of the copyright.
The "gravamen of copyright infringement," according to
NBI-Microsoft Corporation v. Hwang:13
is not merely the unauthorized manufacturing of
intellectual works but rather the unauthorized
performance of any of the acts covered by Section 5.
Hence, any person who performs any of the acts under
Section 5 without obtaining the copyright owners prior
consent renders himself civilly and criminally liable for
copyright infringement.14ChanRoblesVirtualawlibrary
The CA stated in the assailed decision as follows:
A reading of Section 5 (a) of the Copyright Law shows
that the acts enumerated therein are punctuated by
commas and the last phrase is conjoined by the words
'and'. Clearly, the same should be interpreted to mean
as 'relating to one another' because it is basic in legal
hermeneutics that the word 'and' is not meant to
separate words but is a conjunction used to denote a
'joinder' or 'union'.
In the book of Noli C. Diaz entitled as STATUTORY
CONSTRUCTION, the word 'and' was defined as a
'conjunction connecting words or phrases expressing the
idea that the latter is to be added to or taken along with
the first'. Stated differently, the word 'and' is a
conjunction pertinently defined as meaning 'together
with', 'joined with', 'along or together with', 'added to or
linked to' used to conjoin 'word with word', 'phrase with
phrase', 'clause with clause'. The word 'and' does not
mean 'or', it is a conjunction used to denote a joinder or
union, 'binding together', relating the one to the other.
Hence the key to interpret and understand Section 5 (a)
of P.D. 49 is the word 'and'. From the foregoing
definitions of the word 'and' it is unmistakable that to
hold a person liable under the said provision of law, all
the acts enumerated therein must be present and
proven. As such, it is not correct to construe the acts
enumerated therein as being separate or independent
from one another.
In the case at bar, petitioner failed to allege and adduce
evidence showing that the private respondent is the one
who copied, replicated or reproduced the software
programs of the petitioner. In other words, 'sale' alone of
pirated copies of Microsoft software programs does not
constitute copyright infringement punishable under P.D.
49.15ChanRoblesVirtualawlibrary
The CA erred in its reading and interpretation of Section
5 of Presidential Decree No. 49. Under the rules on
syntax, the conjunctive word "and" denotes a "joinder or
union" of words, phrases, or clause;16 it is different from
the disjunctive word "or" that signals disassociation or
independence.17 However, a more important rule of
statutory construction dictates that laws should be
construed in a manner that avoids absurdity or
unreasonableness.18 As the Court pointed out in
Automotive Parts & Equipment Company, Inc. v.
Lingad:19
Nothing is better settled then that courts are not to give
words a meaning which would lead to absurd or
unreasonable consequence. That is a principle that goes
back to In re Allen decided on October 29, 1903, where
it was held that a literal interpretation is to be rejected if it
would be unjust or lead to absurd results. That is a
strong argument against its adoption. The words of
Justice Laurel are particularly apt. Thus: 'The fact that
the construction placed upon the statute by the
appellants would lead to an absurdity is another
argument for rejecting it x x x.'
It is of the essence of judicial duty to construe statutes
so as to avoid such a deplorable result. That has long
been a judicial function. A literal reading of a legislative
act which could be thus characterized is to be avoided if
the language thereof can be given a reasonable
application consistent with the legislative purpose. In the
apt language of Frankfurter: A decent respect for the
policy of Congress must save us from imputing to it a
self-defeating, if not disingenuous purpose. Certainly, we
must reject a construction that at best amounts to a
manifestation of verbal ingenuity but hardly satisfies the
test of rationality on which law must be
based.20ChanRoblesVirtualawlibrary
The conjunctive "and" should not be taken in its ordinary
acceptation, but should be construed like the disjunctive
"or" if the literal interpretation of the law would pervert or
obscure the legislative intent.21 To accept the CA's
reading and interpretation is to accept absurd results
because the violations listed in Section 5(a) of
Presidential Decree No. 49 - "To print, reprint, publish,
copy, distribute, multiply, sell, and make photographs,
photo-engravings, and pictorial illustrations of the works"
— cannot be carried out on all of the classes of works
enumerated in Section 2 of Presidential Decree No. 49,
viz.:
Section 2. - The Rights granted by this Decree shall,
from the moment of creation, subsist with respect to any
of the following classes of
works:chanRoblesvirtualLawlibrary
(A) Books, including composite and encyclopedic works,
manuscripts, directories, and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations
prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions;
choreographic works and entertainments in dumb
shows, the acting form of which is fixed in writing or
otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture,
engraving, lithography, and other works of art; models or
designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of
manufacture, whether or not patentable, and other works
of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings, or plastic works of a scientific or technical
character;
(L) Photographic works and works produced by a
process analogous to photography; lantern slides;
(M) Cinematographic works and works produced by a
process analogous to cinematography or any process for
making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial, illustration, advertising copies,
labels, tags, and box wraps;
(P) Dramatization, translations, adaptations,
abridgements, arrangements and other alterations of
literary, musical or artistic works or of works of the
Philippine Government as herein defined, which shall be
protected as provided in Section 8 of this Decree.
(Q) Collection of literary, scholarly, or artistic works or of
works referred to in Section 9 of this Decree which by
reason of the selection and arrangement of their
contents constitute intellectual creations, the same to be
protected as such in accordance with Section 8 of this
Decree.
(R) Other literary, scholarly, scientific and artistic works.
Presidential Decree No. 49 thereby already
acknowledged the existence of computer programs as
works or creations protected by copyright.22 To hold, as
the CA incorrectly did, that the legislative intent was to
require that the computer programs be first
photographed, photo-engraved, or pictorially illustrated
as a condition for the commission of copyright
infringement invites ridicule. Such interpretation of
Section 5(a) of Presidential Decree No. 49 defied logic
and common sense because it focused on terms like
"copy," "multiply," and "sell," but blatantly ignored terms
like "photographs," "photo-engravings," and "pictorial
illustrations." Had the CA taken the latter words into
proper account, it would have quickly seen the absurdity
of its interpretation.
The mere sale of the illicit copies of the software
programs was enough by itself to show the existence of
probable cause for copyright infringement. There was no
need for the petitioner to still prove who copied,
replicated or reproduced the software programs. Indeed,
the public prosecutor and the DOJ gravely abused their
discretion in dismissing the petitioner's charge for
copyright infringement against the respondents for lack
of evidence. There was grave abuse of discretion
because the public prosecutor and the DOJ acted
whimsically or arbitrarily in disregarding the settled
jurisprudential rules on finding the existence of probable
cause to charge the offender in court. Accordingly, the
CA erred in upholding the dismissal by the DOJ of the
petitioner's petition for review. We reverse.
WHEREFORE, the Court GRANTS the petition for
review on certiorari; REVERSES and SETS ASIDE the
decision promulgated on February 27, 2004 in C.A.-G.R.
SP No. 76402; DIRECTS the Department of Justice to
render the proper resolution to charge respondent
ROLANDO D. MANANSALA and/or MEL MANANSALA,
doing business as DATAMAN TRADING COMPANY
and/or COMIC ALLEY in accordance with this decision;
and ORDERS the respondents to pay the costs of suit.
SO ORDERED
G.R. No. 195835, March 14, 2016
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO,
AND JAP FUK HAI, Petitioners, v. LIM ENG CO,
Respondent.
DECISION
REYES, J.:
This is a petition for review on certiorari1 under Rule 45
of the Rules of Court, assailing the Decision2 dated July
9, 2010 and Resolution3 dated February 24, 2011 of the
Court of Appeals (CA) in CA-G.R. SP No. 95471, which
annulled the Resolutions dated March 10, 20064 and
May 25, 20065 of the Department of Justice (DOJ) in I.S.
No. 2004-925, finding no probable cause for copyright
infringement against Sison Olano, Sergio Ong, Marilyn
Go and Jap Fuk Hai (petitioners) and directing the
withdrawal of the criminal information filed against them.
The Antecedents
The petitioners are the officers and/or directors of
Metrotech Steel Industries, Inc. (Metrotech).6 Lim Eng
Co (respondent), on the other hand, is the Chairman of
LEC Steel Manufacturing Corporation (LEC), a company
which specializes in architectural metal manufacturing.7
Sometime in 2002, LEC was invited by the architects of
the Manansala Project (Project), a high-end residential
building in Rockwell Center, Makati City, to submit
design/drawings and specifications for interior and
exterior hatch doors. LEC complied by submitting on
July 16, 2002, shop plans/drawings, including the
diskette therefor, embodying the designs and
specifications required for the metal hatch doors.8
After a series of consultations and revisions, the final
shop plans/drawings were submitted by LEC on January
15, 2004 and thereafter copied and transferred to the
title block of Ski-First Balfour Joint Venture (SKI-FB), the
Project's contractor, and then stamped approved for
construction on February 3, 2004.9
LEC was thereafter subcontracted by SKI-FB, to
manufacture and install interior and exterior hatch doors
for the 7th to 22nd floors of the Project based on the final
shop plans/drawings.10
Sometime thereafter, LEC learned that Metrotech was
also subcontracted to install interior and exterior hatch
doors for the Project's 23rd to 41st floors.11
On June 24, 2004, LEC demanded Metrotech to cease
from infringing its intellectual property rights. Metrotech,
however, insisted that no copyright infringement was
committed because the hatch doors it manufactured
were patterned in accordance with the drawings
provided by SKI-FB.12
On July 2, 2004, LEC deposited with the National Library
the final shop plans/drawings of the designs and
specifications for the interior and exterior hatch doors of
the Project.13 On July 6, 2004, LEC was issued a
Certificate of Copyright Registration and Deposit
showing that it is the registered owner of plans/drawings
for interior and exterior hatch doors under Registration
Nos. 1-2004-13 and 1-2004-14, respectively.14 This
copyright pertains to class work "I" under Section 172 of
Republic Act (R.A.) No. 8293, The Intellectual Property
Code of the Philippines, which covers "illustrations,
maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or
science."
On December 9, 2004, LEC was issued another
Certificate of Copyright Registration and Deposit
showing that it is the registered owner of plans/drawings
for interior and exterior hatch doors under Registration
Nos. H-2004-566 and H-2004-56715 which is classified
under Section 172(h) of R.A. No. 8293 as "original
ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art."
When Metrotech still refused to stop fabricating hatch
doors based on LEC's shop plans/drawings, the latter
sought the assistance of the National Bureau of
Investigation (NBI) which in turn applied for a search
warrant before the Regional Trial Court (RTC) of Quezon
City, Branch 24. The application was granted on August
13, 2004 thus resulting in the confiscation of finished and
unfinished metal hatch doors as well as machines used
in fabricating and manufacturing hatch doors from the
premises of Metrotech.16
On August 13, 2004, the respondent filed a Complaint-
Affidavit17 before the DOJ against the petitioners for
copyright infringement. In the meantime or on
September 8, 2004, the RTC quashed the search
warrant on the ground that copyright infringement was
not established.18

Traversing the complaint, the petitioners admitted
manufacturing hatch doors for the Project. They denied,
however, that they committed copyright infringement and
averred that the hatch doors they manufactured were
functional inventions that are proper subjects of patents
and that the records of the Intellectual Property Office
reveal that there is no patent, industrial design or utility
model registration on LEC's hatch doors. Metrotech
further argued that the manufacturing of hatch doors per
se is not copyright infringement because copyright
protection does not extend to the objects depicted in the
illustrations and plans. Moreover, there is no artistic or
ornamental expression embodied in the subject hatch
doors that would subject them to copyright protection.19
Resolutions of the DOJ
In a Resolution20 dated August 18, 2005, the
investigating prosecutor dismissed the respondent's
complaint based on inadequate evidence showing that:
(1) the petitioners committed the prohibited acts under
Section 177 of R.A. No. 8293; and (2) the interior and
exterior hatch doors of the petitioners are among the
classes of copyrightable work enumerated in Sections
172 and 173 of the same law.21
Adamant, the respondent filed a petition for review
before the DOJ but it was also denied due course in the
Resolution22 dated November 16, 2005.
Upon the respondent's motion for reconsideration,
however, the Resolution23 dated January 27, 2006 of
the DOJ reversed and set aside the Resolution dated
August 18, 2005 and directed the Chief State Prosecutor
to file the appropriate information for copyright
infringement against the petitioners.24 The DOJ
reasoned that the pieces of evidence adduced show that
the subject hatch doors are artistic or ornamental with
distinctive hinges, door and jamb, among others. The
petitioners were not able to sufficiently rebut these
allegations and merely insisted on the non-artistic nature
of the hatch doors. The DOJ further held that probable
cause was established insofar as the artistic nature of
the hatch doors and based thereon the act of the
petitioners in manufacturing or causing to manufacture
hatch doors similar to those of the respondent can be
considered as unauthorized reproduction; hence,
copyright infringement under Section 177.1 in relation to
Section 216 of R.A. No. 8293.25cralawred
Aggrieved, the petitioners moved for reconsideration.
This time, the DOJ made a complete turn around by
granting the motion, vacating its Resolution dated
January 27, 2006 and declaring that the evidence on
record did not establish probable cause because the
subject hatch doors were plainly metal doors with
functional components devoid of any aesthetic or artistic
features. Accordingly, the DOJ Resolution26 dated
March 10, 2006 disposed as follows:
chanRoblesvirtualLawlibrary
WHEREFORE, finding cogent reason to reverse the
assailed resolution, the motion for reconsideration is
GRANTED finding no probable cause against the
[petitioners]. Consequently, the City Prosecutor of
Manila is hereby directed to cause the withdrawal of the
information, if any has been filed in court, and to report
the action taken thereon within TEN (10) DAYS from
receipt hereof.
SO ORDERED.27ChanRoblesVirtualawlibrary
The respondent thereafter filed a motion for
reconsideration of the foregoing resolution but it was
denied28 on May 25, 2006. The respondent then sought
recourse before the CA via a petition for certiorari29
ascribing grave abuse of discretion on the part of the
DOJ.
In its assailed Decision30 dated July 9, 2010, the CA
granted the petition. The CA held that the vacillating
findings of the DOJ on the presence or lack of probable
cause manifest capricious and arbitrary exercise of
discretion especially since its opposite findings were
based on the same factual evidence and arguments.
The CA then proceeded to make its own finding of
probable cause and held that:
chanRoblesvirtualLawlibrary
[F]or probable cause for copyright infringement to exist,
essentially, it must be shown that the violator reproduced
the works without the consent of the owner of the
copyright.
In the present case before Us, [the petitioners] do not
dispute that: (1) LEG was issued copyrights for the
illustrations of the hatch doors under Section 171.i, and
for the hatch doors themselves as ornamental design or
model for articles of manufacture pursuant to Section
171.h of R.A. [No.] 8293; and (2) they manufactured
hatch doors based on drawings and design furnished by
SKI-FB, which consists of LEC works subject of
copyrights. These two (2) circumstances, taken together,
are sufficient to excite the belief in a reasonable mind
that [the petitioners] are probably guilty of copyright
infringement. First, LEC has indubitably established that
it is the owner of the copyright for both the illustrations of
the hatch doors and [the] hatch doors themselves, and
second, [the petitioners] manufactured hatch doors
based on LEC's works, sans EEC's consent.
xxxx
[T]he fact that LEC enjoys ownership of copyright not
only on the illustrations of the hatch doors but on the
hatch doors itself and that [the petitioners] manufactured
the same is sufficient to warrant a finding of probable
cause for copyright infringement. x x
x.31ChanRoblesVirtualawlibrary
The CA further ruled that any allegation on the non-
existence of ornamental or artistic values on the hatch
doors are matters of evidence which are best ventilated
in a full-blown trial rather than during the preliminary
investigation stage. Accordingly, the CA disposed as
follows:
chanRoblesvirtualLawlibrary
WHEREFORE, considering the foregoing premises, the
present Petition is GRANTED, and accordingly, the
assailed Resolutions dated 10 March 2006 and 25 May
2006 are ANNULLED and SET ASIDE. The Resolution
of the Secretory of Justice dated 27 January 2006
finding probable cause against [the petitioners], is
REINSTATED.
SO ORDERED.32ChanRoblesVirtualawlibrary
The CA reiterated the above ruling in its Resolution33
dated February 24, 2011 when it denied the petitioners'
motion for reconsideration. Hence, the present appeal,
arguing that:
There was no evidence of actual reproduction of the
hatch doors during the preliminary investigation that
would lead the investigating prosecutor to declare the
existence of probable cause;34
Even assuming that the petitioners manufactured hatch
doors based on the illustrations and plans covered by
the respondent's Certificate of Registration Nos. 1-2004-
13 and 1-2004-14, the petitioners could not have
committed copyright infringement. Certificate of
Registration Nos. 1-2004-13 and 1-2004-14 are
classified under Section 172(i) which pertains to
"illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science." Hence the original works that
are copyrighted are the illustrations and plans of interior
hatch doors and exterior hatch doors. Thus, it is the
reproduction of the illustrations and plans covered by the
copyright registration that amounts to copyright
infringement. The petitioners did not reproduce the
illustrations and plans covered under Certificate of
Registration Nos. 1-2004-13 and 1-2004-14.
The manufacturing of hatch doors per se does not fall
within the purview of copyright infringement because
copyright protection does not extend to the objects
depicted in the illustrations and plans;35 and
LEC's copyright registration certificates are not
conclusive proofs that the items covered thereby are
copyrightable. The issuance of registration certificate
and acceptance of deposit by the National Library is
ministerial in nature and does not involve a
determination of whether the item deposited is
copyrightable or not. Certificates of registration and
deposit serve merely as a notice of recording and
registration of the work but do not confer any right or title
upon the registered copyright owner or automatically put
his work under the protective mantle of the copyright
law.36
Ruling of the Court
It is a settled judicial policy that courts do not reverse the
Secretary of Justice's findings and conclusions on the
matter of probable cause. Courts are not empowered to
substitute their judgment for that of the executive branch
upon which full discretionary authority has been
delegated in the determination of probable cause during
a preliminary investigation. Courts may, however, look
into whether the exercise of such discretionary authority
was attended with grave abuse of discretion.37
Otherwise speaking, "judicial review of the resolution of
the Secretary of Justice is limited to a determination of
whether there has been a grave abuse of discretion
amounting to lack or excess of jurisdiction."38
The CA anchored its act of reversing the DOJ Resolution
dated March 10, 2006 upon the foregoing tenets. Thus,
the Court's task in the present petition is only to
determine if the CA erred in concluding that the DOJ
committed grave abuse of discretion in directing the
withdrawal of any criminal information filed against the
petitioners.
Grave abuse of discretion has been defined as "such
capricious and whimsical exercise of judgment as is
equivalent to lack of jurisdiction. The abuse of discretion
must be grave as where the power is exercised in an
arbitrary or despotic manner by reason of passion or
personal hostility and must be so patent and gross as to
amount to an evasion of positive duty or to a virtual
refusal to perform the duty enjoined by or to act at all in
contemplation of law."39 "'Capricious,' usually used in
tandem with the term 'arbitrary,' conveys the notion of
willful and unreasoning action."40cralawred
According to the CA, the DOJ's erratic findings on the
presence or absence of probable cause constitute grave
abuse of discretion. The CA explained:
chanRoblesvirtualLawlibrary
This, to Our minds, in itself creates a nagging, persistent
doubt as to whether [the DOJ Secretary] issued the said
resolutions untainted with a whimsical and arbitrary use
of his discretion. For one cannot rule that there is reason
to overturn the investigating prosecutor's findings at the
first instance and then go on to rule that ample evidence
exists showing that the hatch doors possess artistic and
ornamental elements at the second instance and
proceed to rule that no such artistry can be found on the
purely utilitarian hatch doors at the last instance. x x
x.41ChanRoblesVirtualawlibrary
The Court disagrees. It has been held that the issuance
by the DOJ of several resolutions with varying findings of
fact and conclusions of law on the existence of probable
cause, by itself, is not indicative of grave abuse of
discretion.42
Inconsistent findings and conclusions on the part of the
DOJ will denote grave abuse of discretion only if coupled
with gross misapprehension of facts,43 which, after a
circumspect review of the records, is not attendant in the
present case.
The facts upon which the resolutions issued by the
investigating prosecutor and the DOJ were actually
uniform, viz:
chanRoblesvirtualLawlibrary
(a)
LEC is the registered owner of plans/drawings for interior
and exterior hatch doors under Certificate of Registration
Nos. 1-2004-13 and 1-2004-14 classified under Section
172(i) of R.A. No. 8293 as pertaining to "illustrations,
maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or
science";
(b)
LEC is also the registered owner of plans/drawings for
interior and exterior hatch doors under Certificate of
Registration Nos. H-2004-566 and H-2004-567 classified
under Section 172(h) of R.A. No. 8293 as to "original
ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art";
(c)
LEC as the subcontractor of SKI-FB in the Project first
manufactured and installed the interior and exterior
hatch doors at the Manansala Tower in Rockwell Center,
Makati City, from the 7th to 22nd floors. The hatch doors
were based on the plans/drawings submitted by LEC to
SKI-FB and subject of the above copyright registration
numbers; and
(d)
thereafter, Metrotech fabricated and installed hatch
doors at the same building's 23rd to 41st floor based on
the drawings and specifications provided by SKI-FB.44
The positions taken by the DOJ and the investigating
prosecutor differed only in the issues tackled and the
conclusions arrived at.
It may be observed that in the Resolution dated August
18, 2005 issued by the investigating prosecutor, the
primary issue was whether the hatch doors of LEC fall
within copyrightable works. This was resolved by ruling
that hatch doors themselves are not covered by LEC's
Certificate of Registration Nos. 1-2004-13 and 1-2004-14
issued on the plans/drawing depicting them. The DOJ
reversed this ruling in its Resolution dated January 27,
2006 wherein the issue was streamlined to whether the
illustrations of the hatch doors under LEC's Certificate of
Registration Nos. H-2004-566 and H-2004-567 bore
artistic ornamental designs.
This situation does not amount to grave abuse of
discretion but rather a mere manifestation of the intricate
issues involved in the case which thus resulted in
varying conclusions of law. Nevertheless, the DOJ
ultimately pronounced its definite construal of copyright
laws and their application to the evidence on record
through its Resolution dated March 10, 2006 when it
granted the petitioners' motion for reconsideration. Such
construal, no matter how erroneous to the CA's
estimation, did not amount to grave abuse of discretion.
"[I]t is elementary that not every erroneous conclusion of
law or fact is an abuse of discretion."45
More importantly, the Court finds that no grave abuse of
discretion was committed by the DOJ in directing the
withdrawal of the criminal information against the
respondents because a finding of probable cause
contradicts the evidence on record, law, and
jurisprudence.
"Probable cause has been defined as the existence of
such facts and circumstances as would excite the belief
in a reasonable mind, acting on the facts within the
knowledge of the prosecutor, that the person charged
was guilty of the crime for which he was prosecuted. It is
a reasonable ground of presumption that a matter is, or
may be, well-founded on such a state of facts in the
mind of the prosecutor as would lead a person of
ordinary caution and prudence to believe, or entertain an
honest or strong suspicion, that a thing is so."46
"The term does not mean actual and positive cause nor
does it import absolute certainty. It is merely based on
opinion and reasonable belief. Thus, a finding of
probable cause does not require an inquiry into whether
there is sufficient evidence to procure a conviction. It is
enough that it is believed that the act or omission
complained of constitutes the offense charged."47
"In order that probable cause to file a criminal case may
be arrived at, or in order to engender the well-founded
belief that a crime has been committed, the elements of
the crime charged should be present. This is based on
the principle that every crime is defined by its elements,
without which there should be - at the most - no criminal
offense."48
A copyright refers to "the right granted by a statute to the
proprietor of an intellectual production to its exclusive
use and enjoyment to the extent specified in the
statute."49 Under Section 177 of R.A. No. 8293, the
Copyright or Economic Rights consist of the exclusive
right to carry out, authorize or prevent the following acts:
chanRoblesvirtualLawlibrary
177.1
Reproduction of the work or substantial portion of the
work;
177.2
Dramatization, translation, adaptation, abridgment,
arrangement or other transformation of the work;
177.3
The first public distribution of the original and each copy
of the work by sale or other forms of transfer of
ownership;
177.4
Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data
and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy
which is the subject of the rental;
177.5
Public display of the original or a copy of the work;
177.6
Public performance of the work; and
177.7
Other communication to the public of the work.
Copyright infringement is thus committed by any person
who shall use original literary or artistic works, or
derivative works, without the copyright owner's consent
in such a manner as to violate the foregoing copy and
economic rights. For a claim of copyright infringement to
prevail, the evidence on record must demonstrate: (1)
ownership of a validly copyrighted material by the
complainant; and (2) infringement of the copyright by the
respondent.50
While both elements subsist in the records, they did not
simultaneously concur so as to substantiate infringement
of LEC's two sets of copyright registrations.
The respondent failed to substantiate the alleged
reproduction of the drawings/sketches of hatch doors
copyrighted under Certificate of Registration Nos. 1-
2004-13 and 1-2004-14. There is no proof that the
respondents reprinted the copyrighted
sketches/drawings of LEC's hatch doors. The raid
conducted by the NBI on Metrotech's premises yielded
no copies or reproduction of LEC's copyrighted
sketches/drawings of hatch doors. What were
discovered instead were finished and unfinished hatch
doors.
Certificate of Registration Nos. 1-2004-13 and 1-2004-14
pertain to class work "I" under Section 172 of R.A. No.
8293 which covers "illustrations, maps, plans, sketches,
charts and three-dimensional works relative to
geography, topography, architecture or science."51 As
such, LEC's copyright protection there under covered
only the hatch door sketches/drawings and not the
actual hatch door they depict.52
As the Court held in Pearl and Dean (Philippines),
Incorporated v. Shoemart, Incorporated:53
Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights
are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the
works falling within the statutory enumeration or
description.54 (Citations omitted and italics in the
original)
Since the hatch doors cannot be considered as either
illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science, to be properly classified as a
copyrightable class "I" work, what was copyrighted were
their sketches/drawings only, and not the actual hatch
doors themselves. To constitute infringement, the
usurper must have copied or appropriated the original
work of an author or copyright proprietor, absent
copying, there can be no infringement of copyright.55
"Unlike a patent, a copyright gives no exclusive right to
the art disclosed; protection is given only to the
expression of the idea — not the idea itself."56
The respondent claimed that the petitioners committed
copyright infringement when they
fabricated/manufactured hatch doors identical to those
installed by LEC. The petitioners could not have
manufactured such hatch doors in substantial quantities
had they not reproduced the copyrighted plans/drawings
submitted by LEC to SK1-FB. This insinuation, without
more, does not suffice to establish probable cause for
infringement against the petitioners. "[Although the
determination of probable cause requires less than
evidence which would justify conviction, it should at least
be more than mere suspicion."57
Anent, LEC's Certificate of Registration Nos. H-2004-
566 and H-2004-567, the Court finds that the ownership
thereof was not established by the evidence on record
because the element of copyrightability is absent.
"Ownership of copyrighted material is shown by proof of
originality and copyrightability."58 While it is true that
where the complainant presents a copyright certificate in
support of the claim of infringement, the validity and
ownership of the copyright is presumed. This
presumption, however, is rebuttable and it cannot be
sustained where other evidence in the record casts
doubt on the question of ownership,59 as in the instant
case.
Moreover, "[t]he presumption of validity to a certificate of
copyright registration merely orders the burden of proof.
The applicant should not ordinarily be forced, in the first
instance, to prove all the multiple facts that underline the
validity of the copyright unless the respondent,
effectively challenging them, shifts the burden of doing
so to the applicant."60
Here, evidence negating originality and copyrightability
as elements of copyright ownership was satisfactorily
proffered against LEC's certificate of registration.
The following averments were not successfully rebuffed
by LEC:
chanRoblesvirtualLawlibrary
[T]he hinges on LEC's "hatch doors" have no ornamental
or artistic value. In fact, they are just similar to hinges
found in truck doors that had been in common use since
the 1960's. The gaskets on LEC's "hatch doors", aside
from not being ornamental or artistic, were merely
procured from a company named Pemko and are not
original creations of LEC. The locking device in LEC's
"hatch doors" are ordinary drawer locks commonly used
in furniture and office
desks.61ChanRoblesVirtualawlibrary
In defending the copyrightability of its hatch doors'
design, LEC merely claimed:
chanRoblesvirtualLawlibrary
LEC's Hatch Doors were particularly designed to blend
in with the floor of the units in which they are installed
and, therefore, appeal to the aesthetic sense of the
owner of units or any visitors thereto[;]
LEC's Hatch Doors have a distinct set of hinges, a
distinct door a distinct jamb, all of which are both
functional or utilitarian and artistic or ornamental at the
same time[;] and
Moreover, the Project is a high-end residential building
located in the Rockwell Center, a very prime area in
Metro Manila. As such, the owner of the Project is not
expected to settle for Hatch Doors that simply live up to
their function as such. The owner would require, as is
the case for the Project, Hatch Doors that not only fulfill
their utilitarian purposes but also appeal to the artistic or
ornamental sense of their
beholders.62ChanRoblesVirtualawlibrary
From the foregoing description, it is clear that the hatch
doors were not artistic works within the meaning of
copyright laws. A copyrightable work refers to literary
and artistic works defined as original intellectual
creations in the literary and artistic domain.63
A hatch door, by its nature is an object of utility. It is
defined as a small door, small gate or an opening that
resembles a window equipped with an escape for use in
case of fire or emergency.64 It is thus by nature,
functional and utilitarian serving as egress access during
emergency. It is not primarily an artistic creation but
rather an object of utility designed to have aesthetic
appeal. It is intrinsically a useful article, which, as a
whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information" is
excluded from copyright eligibility.65
The only instance when a useful article may be the
subject of copyright protection is when it incorporates a
design element that is physically or conceptually
separable from the underlying product. This means that
the utilitarian article can function without the design
element. In such an instance, the design element is
eligible for copyright protection.66
The design of a useful article shall be considered a
pictorial, graphic, or sculptural work only if, and only to
the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified
separately from, and are capable of existing
independently of, the utilitarian aspects of the article.67
A belt, being an object utility with the function of
preventing one's pants from falling down, is in itself not
copyrightable. However, an ornately designed belt
buckle which is irrelevant to or did not enhance the belt's
function hence, conceptually separable from the belt, is
eligible for copyright. It is copyrightable as a sculptural
work with independent aesthetic value, and not as an
integral element of the belt's functionality.68
A table lamp is not copyrightable because it is a
functional object intended for the purpose of providing
illumination in a room. The general shape of a table lamp
is likewise not copyrightable because it contributes to the
lamp's ability to illuminate the reaches of a room. But, a
lamp base in the form of a statue of male and female
dancing figures made of semi vitreous china is
copyrightable as a work of art because it is unrelated to
the lamp's utilitarian function as a device used to combat
darkness.69
In the present case, LEC's hatch doors bore no design
elements that are physically and conceptually separable,
independent and distinguishable from the hatch door
itself. The allegedly distinct set of hinges and distinct
jamb, were related and necessary hence, not physically
or conceptually separable from the hatch door's
utilitarian function as an apparatus for emergency
egress. Without them, the hatch door will not function.
More importantly, they are already existing articles of
manufacture sourced from different suppliers. Based on
the records, it is unrebutted that: (a) the hinges are
similar to those used in truck doors; (b) the gaskets were
procured from a company named Pemko and are not
original creations of LEC; and (c) the locking device are
ordinary drawer locks commonly used in furniture and
office desks.
Being articles of manufacture already in existence, they
cannot be deemed as original creations. As earlier
stated, valid copyright ownership denotes originality of
the copyrighted material. Originality means that the
material was not copied, evidences at least minimal
creativity and was independently created by the
author.70 It connotes production as a result of
independent labor.71 LEC did not produce the door
jambs and hinges; it bought or acquired them from
suppliers and thereafter affixed them to the hatch doors.
No independent original creation can be deduced from
such acts.
The same is true with respect to the design on the door's
panel. As LEC has stated, the panels were "designed to
blend in with the floor of the units in which they [were]
installed."72 Photos of the panels indeed show that their
color and pattern design were similar to the wooden floor
parquet of the condominium units.73 This means that
the design on the hatch door panel was not a product of
LEC's independent artistic judgment and discretion but
rather a mere reproduction of an already existing design.
Verily then, the CA erred in holding that a probable
cause for copyright infringement is imputable against the
petitioners. Absent originality and copyrightability as
elements of a valid copyright ownership, no infringement
can subsist.chanrobleslaw
WHEREFORE, premises considered, the petition is
hereby GRANTED. The Decision dated July 9, 2010 and
Resolution dated February 24, 2011 of the Court of
Appeals in CA-G.R. SP No. 95471 are REVERSED and
SET ASIDE. The Resolutions dated March 10, 2006 and
May 25, 2006 of the Department of Justice in I.S. No.
2004-925 dismissing the complaint for copyright
infringement are REINSTATED.
SO ORDERED
G.R. No. 222702
RAPPLER, INC., Petitioner,
vs.
ANDRES D. BAUTISTA, Respondent.
RESOLUTION
CARPIO, J.:
Petitioner Rappler, Inc. (petitioner) filed a petition for
certiorari and prohibition against Andres D. Bautista
(respondent), in his capacity as Chairman of the
Commission on Elections (COMELEC). The petition
seeks to nullify Part VI (C), paragraph 19 and Part VI
(D), paragraph 20 of the Memorandum of Agreement
(MOA) on the 2016 presidential and vice-presidential
debates, for being executed without or in excess of
jurisdiction or with grave abuse of discretion amounting
to lack or excess of jurisdiction and for violating the
fundamental rights of petitioner protected under the
Constitution. The MOA, signed on 13 January 2016, was
executed by the COMELEC through its Chairman,
respondent Bautista, and the Kapisanan ng mga
Brodkaster ng Pilipinas (KBP), and the various media
networks, namely: ABS-CBN Corporation, GMA
Network, Inc., Nine Media Corporation, TV5 Network,
Inc., Philstar Daily, Inc.,· Philippine Daily Inquirer, Inc.,
Manila Bulletin Publishing Corporation, Philippine
Business Daily Mirror Publishing, Inc., and petitioner.
Under the MOA, the KBP was designated as Debate
Coordinator while ABS-CBN, GMA, Nine Media, and
TV5, together with their respective print media partners
were designated as Lead Networks.
Petitioner alleged that on 21 September 2015,
respondent called for a meeting with various media
outlets to discuss the "PiliPinas 2016 Debates," for
presidential and vice-presidential candidates, which the
COMELEC was organizing. 1 Respondent showed a
presentation explaining the framework of the debates, in
which there will be three presidential debates and one
vice presidential debate. Respondent proposed that
petitioner and Google, Inc. be in charge of online and
social media engagement. Respondent announced
during the meeting that KBP will coordinate with all
media entities regarding the organization and conduct of
the debates.
On 22 September 2015, petitioner sent a proposed draft
for broadcast pool guidelines to COMELEC and the
KBP. A broadcast pool has a common audio and video
feed of the debates, and the cost will be apportioned
among those needing access to the same. KBP
informed petitioner that the proposal will be discussed in
the next meeting.
On 19 October 2015, another meeting was held at the
COMELEC office to discuss a draft MOA on the debates.
In the draft, petitioner and Google's participation were
dropped in favor of the online outlets owned by the Lead
Networks. After the meeting, the representatives of the
Lead Networks drew lots to determine who will host each
leg of the debates. GMA and its partner Philippine Daily
Inquirer sponsored the first presidential debate in
Mindanao on 21 February 2016; TV5, Philippine Star,
and Businessworld sponsored the second phase of
presidential debate in the Visayas on 20 March 2016;
ABS-CBN and Manila Bulletin will sponsor the
presidential debate to be held in Luzon on 24 April 20
16; and the lone vice-presidential debate will be
sponsored by CNN, Business Mirror, and petitioner on
10 April 2016. Petitioner alleged that the draft MOA
permitted online streaming, provided proper attribution is
given the Lead Network.
On 12 January 2016, petitioner was informed that the
MOA signing was scheduled the following day. Upon
petitioner's request, the draft MOA was emailed to
petitioner on the evening of 12 January 2016. Petitioner
communicated with respondent its concerns regarding
certain provisions of the MOA particularly regarding
online streaming and the imposition of a maximum limit
of two minutes of debate excerpts for news reporting.
Respondent assured petitioner that its concerns will be
addressed afterwards, but it has to sign the MOA
because time was of the essence. On 13 January 2016,
petitioner, along with other media networks and entities,
executed the MOA with the KBP and the COMELEC for
the conduct of the three presidential debates and one
vice-presidential debate. Petitioner alleged that it made
several communications with respondent and the
COMELEC Commissioners regarding its concerns on
some of the MOA provisions, but petitioner received no
response. Hence, this petition.
In this petition for certiorari and prohibition, petitioner
prays for the Court to render judgment:
a. Declaring null and void, for being unconstitutional,
pertinent parts of the Memorandum of Agreement that
violate the rights of the Petitioner, specifically Part VI
(C), paragraph 19 and Part VI (D), paragraph 20 [of the
MOA];
b. Prohibiting the Respondent from implementing
specifically Part VI (C), paragraph 19 and Part VI (D),
paragraph 20 of the MOA;
c. Pending resolution of this case, issuing a Preliminary
Injunction enjoining the Respondent from implementing
Part VI (C), paragraph 19 and Part VI (D), paragraph 20
of the MOA; and
d. Pending resolution of this case, issuing a Preliminary
Mandatory Injunction requiring the Respondent to
ensure an unimpaired and equal access to all mass
media, online or traditional, to all the Debates.2
Part VI (C), paragraph 19 and Part VI (D), paragraph 20
of the MOA read:
VI
ROLES AND RESPONSIBILITIES OF THE LEAD
NETWORKS
xxxx
C. ONLINE STREAMING
xxxx
19. Subject to copyright conditions or separate
negotiations with the Lead Networks, allow the debates
they have produced to be shown or streamed on other
websites;
D. NEWS REPORTING AND FAIR USE
20. Allow a maximum of two minutes of excerpt from the
debates they have produced to be used for news
reporting or fair use by other media or entities as allowed
by the copyright law: Provided, that the use of excerpts
longer than two minutes shall be subject to the consent
of the Lead Network concerned;3
Respondent argues that the petition should be dismissed
for its procedural defects. In several cases, this Court
has acted liberally and set aside procedural lapses in
cases involving transcendental issues of public interest,4
especially when time constraint is a factor to be
considered, as in this case. As held in GMA Network,
Inc. v. Commission on Elections:5
Respondent claims that certiorari and prohibition are not
the proper remedies that petitioners have taken to
question the assailed Resolution of the
COMELEC.1âwphi1 Technically, respondent may have
a point. However, considering the very important and
pivotal issues raised, and the limited time, such
technicality should not deter the Court from having to
make the final and definitive pronouncement that
everyone else depends for enlightenment and guidance.
"[T]his Court has in the past seen fit to step in and
resolve petitions despite their being the subject of an
improper remedy, in view of the public importance of the
issues raised therein.6
The urgency to resolve this case is apparent considering
that the televised debates have already started and only
two of the scheduled four national debates remain to be
staged. 7 And considering the importance of the debates
in informing the electorate of the positions of the
presidential and vice-presidential candidates on vital
issues affecting the nation, this case falls under the
exception laid down in GMA Network, Inc. v.
Commission on Elections.
Petitioner is a signatory to the MOA. In fact, the sole
vice-presidential debate, to be held in Manila on 10 April
2016, will be sponsored by CNN Philippines (owned and
operated by Nine Media Corporation) and its partners
Business Mirror and petitioner. Petitioner, however, is
alleging that it is being discriminated particularly as
regards the MOA provisions on live audio broadcast via
online streaming. Petitioner argues that the MOA grants
radio stations the right to simultaneously broadcast live
the audio of the debates, even if the radio stations are
not obliged to perform any obligation under the MOA.
Yet, this right to broadcast by live streaming online the
audio of the debates is denied petitioner and other online
media entities, which also have the capacity to live
stream the audio of the debates. Petitioner insists that it
signed the MOA believing in good faith the issues it has
raised will be resolved by the COMELEC.
The provisions on Live Broadcast and Online Streaming
under the MOA read:
VI
ROLES AND RESPONSIBILITIES OF THE LEAD
NETWORKS
xxxx
B1. LIVE BROADCAST
10. Broadcast the debates produced by the Lead
Networks in their respective television stations and other
news media platforms;
11. Provide a live feed of the debate to other radio
stations, other than those of the Lead Network's, for
simultaneous broadcast;
12. Provide a live feed of the debates produced by them
to radio stations not belonging to any of the Lead
Networks for simultaneous broadcast;
xxxx
C. ONLINE STREAMING
17. Live broadcast the debates produced by the Lead
Networks on their respective web sites and social media
sites for free viewing by the public;
18. Maintain a copy of the debate produced by the Lead
Network on its on-line site(s) for free viewing by the
public during the period of elections or longer;
19. Subject to copyright conditions or separate
negotiations with the Lead Networks, allow the debates
they have produced to be shown or streamed on other
websites;8 (Boldfacing and underscoring supplied)
Petitioner's demand to exercise the right to live stream
the debates is a contractual right of petitioner under the
MOA. Under Part VI (C), paragraph 19 of the MOA, the
Lead Networks are expressly mandated to "allow the
debates they have produced to be shown or streamed
on other websites," but "subject to copyright conditions
or separate negotiations with the Lead Networks." The
use of the word "or" means that compliance with the
"copyright conditions" is sufficient for petitioner to
exercise its right to live stream the debates in its
website.
The "copyright conditions" refer to the limitations on
copyright as provided under Section 184.1 (c) of the
Intellectual Property Code (IPC), thus:
SEC. 184. Limitations on Copyright. - 184. l
Notwithstanding the provisions of Chapter V, the
following acts shall not constitute infringement of
copyright:
xxxx
(c) The reproduction or communication to the public by
mass media of articles on current political, social,
economic, scientific or religious topic, lectures,
addresses and other works of the same nature, which
are delivered in public if such use is for information
purposes and has not been expressly reserved;
Provided, That the source is clearly indicated; (Sec. 11,
P.D. No. 49) (Boldfacing and underscoring supplied)
Under this provision, the debates fall under "addresses
and other works of the same nature." Thus, the copyright
conditions for the debates are: (1) the reproduction or
communication to the public by mass media of the
debates is for information purposes; (2) the debates
have not been expressly reserved by the Lead Networks
(copyright holders); and (3) the source is clearly
indicated.
Condition 1 is complied because the live streaming by
petitioner is obviously for information purposes.
Condition 2 is also complied because Part VI (C),
paragraph 19 of the MOA expressly "allow[s] the
debates x x x to be shown or streamed on other
websites," including petitioner's website. This means that
the "reproduction or communication (of the debates) to
the public by mass media x x x has not been expressly
reserved" or withheld. Condition 3 is complied by clearly
indicating and acknowledging that the source of the
debates is one or more of the Lead Networks.
Part VI (C), paragraph 19 of the MOA, which expressly
allows the debates produced by the Lead Networks to be
shown or streamed on other websites, clearly means
that the Lead Networks have not "expressly reserved" or
withheld the use of the debate audio for online
streaming. In short, the MOA expressly allows the live
streaming of the debates subject only to compliance with
the "copyright conditions." Once petitioner complies with
the copyright conditions, petitioner can exercise the right
to live stream the audio of the debates as expressly
allowed by the MOA.
Under the MOA, the Lead Networks are mandated to
promote the debates for maximum audience.9 The MOA
recognizes the public function of the debates and the
need for the widest possible dissemination of the
debates. The MOA has not reserved or withheld the
reproduction of the debates to the public but has in fact
expressly allowed the reproduction of the debates
"subject to copyright conditions." Thus, petitioner may
live stream the debate in its entirety by complying with
the "copyright conditions," including the condition that
"the source is clearly indicated" and that there will be no
alteration, which means that the streaming will include
the proprietary graphics used by the Lead Networks. If
petitioner opts for a clean feed without the proprietary
graphics used by the Lead Networks, in order for
petitioner to layer its own proprietary graphics and text
on the same, then petitioner will have to negotiate
separately with the Lead Networks. Similarly, if petitioner
wants to alter the debate audio by deleting the
advertisements, petitioner will also have to negotiate
with the Lead Networks.
Once the conditions imposed under Section 184.1 (c) of
the IPC are complied with, the information - in this case
the live audio of the debates - now forms part of the
public domain. There is now freedom of the press to
report or publicly disseminate the live audio of the
debates. In fact, the MOA recognizes the right of other
mass media entities, not parties to the MOA, to
reproduce the debates subject only to the same
copyright conditions. The freedom of the press to report
and disseminate the live audio of the debates, subject to
compliance with Section 184. l (c) of the IPC, can no
longer be infringed or subject to prior restraint. Such
freedom of the press to report and disseminate the live
audio of the debates is now protected and guaranteed
under Section 4, Article III of the Constitution, which
provides that "[N]o law shall be passed abridging the
freedom x x x of the press."
The presidential and vice-presidential debates are held
primarily for the benefit of the electorate to assist the
electorate in making informed choices on election day.
Through the conduct of the national debates among
presidential and vice-presidential candidates, the
electorate will have the "opportunity to be informed of
the candidates' qualifications and track record, platforms
and programs, and their answers to significant issues of
national concern." 10 The political nature of the national
debates and the public's interest in the wide availability
of the information for the voters' education certainly
justify allowing the debates to be shown or streamed in
other websites for wider dissemination, in accordance
with the MOA.

Therefore, the debates should be allowed to be live

streamed on other websites, including petitioner's, as
expressly mandated in Part VI (C), paragraph 19 of the
MOA. The respondent, as representative of the
COMELEC which provides over-all supervision under
the MOA, including the power to "resolve issues that
may arise among the parties involved in the organization
of the debates," 11 should be directed by this Court to
implement Part VI (C), paragraph 19 of the MOA, which
allows the debates to be shown or live streamed
unaltered on petitioner's and other websites subject to
the copyright condition that the source is clearly
indicated.

WHEREFORE, we PARTIALLY GRANT the petition.

Respondent Andres D. Bautista, as Chairman of the
COMELEC, is directed to implement Part VI (C),
paragraph 19 of the MOA, which allows the debates to
be shown or live streamed unaltered on petitioner's and
other websites subject to the copyright condition that the
source is clearly indicated. Due to the time constraint,
this Resolution is immediately executory.

SO ORDERED.