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: "DahilSa Iyo", "SapagkatIkaw 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 case, the Court ruled that "The Performance in a restaurant or hotel dining room, by persons employed by the proprietor, of a
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
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 "SapagkatIkaw 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.

Fernan (Chairman), Gutierrez, Jr., Padilla, Bidin and Cortes, JJ., concur.

Alampay, J., took no part.

 FIRST DIVISION appropriated. 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
[G.R. No. 131522. July 19, 1999] 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. 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,
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners, vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO.,
therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in
INC., respondents.
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.
SYNOPSIS
3. ID.; ID.; ID.; WHEN NOT COMMITTED. In this jurisdiction under Sec. 184 of Republic Act 8293 it is provided that: Limitations on
Petitioners herein are authors and copyright owners of their published books while respondents Robles and Goodwill Trading Co.,
Copyright. Notwithstanding the provisions of Chapter V, the following shall not constitute infringement of copyright: xxx ( c ) The
Inc. are authors and publishers, respectively, of another published work that was also covered by copyrights issued to them. In the
making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose,
course of revising their published works, petitioners chanced upon the book of respondent Robles. After an itemized examination
including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the
and comparison of the books, petitioners found that several pages of the respondents book are similar, if not altogether a copy
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
from the petitioners book, which is a case of plagiarism and copyright infringement. When respondents ignored demands of
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
petitioners for damages, the latter filed a complaint for infringement and/or unfair competition with damages. The trial court
was copying was not his, and he copied at his peril.
dismissed the complaint of the petitioners herein. Petitioners appealed their case to the Court of Appeals (CA), which affirmed the
judgment of the trial court. The CA also deleted the award of attorneys fees, since its view was that there was no bad faith on the
4. ID.; ID.; COPYRIGHT; PURPOSE THEREOF. In copyrighting books the purpose is to give protection to the intellectual product of an
part of the petitioners in instituting the action. The petitioners filed a motion for reconsideration, but, the CA denied the same,
author. This is precisely what the law on copyright protected, under Section 184.1 (b). Quotations from a published work if they
hence, this petition for review on certiorari.
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
In cases of infringement, copying alone is not what is prohibited. The copying must produce an injurious effect. Here, the injury
work, are mentioned.
consists in that respondent Robles lifted from petitioners book materials that were the result of the latters research work and
APPEARANCES OF COUNSEL
compilation and misrepresented them as her own. The least that respondent Robles could have done was to acknowledge
petitioners as the source of her book. To allow another to copy the book without appropriate acknowledgment is injury enough.
Jesus R. Cornego for petitioners.
The petition was granted. The case was ordered remanded to the trial court for further proceedings to receive evidence of the
Crisanto L. Francisco Associates for respondents.
parties to ascertain the damages caused and sustained by petitioners and to render decision in accordance with the evidence
submitted to it.
DECISION
SYLLABUS
PARDO, J.:
1. COMMERCIAL LAW; INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES; PROVIDES PROTECTION FOR COPYRIGHT OWNER. At
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
present, all laws dealing with the protection of intellectual property rights have been consolidated and as the law now stands, the
resolution denying petitioners motion for reconsideration,[3] in which the appellate court affirmed the trial courts dismissal of the
protection of copyrights is governed by Republic Act No. 8293. Notwithstanding the change in the law, the same principles are
complaint for infringement and/or unfair competition and damages but deleted the award for attorneys fees.
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
The facts are as follows:
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
Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering their published works,
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
produced through their combined resources and efforts, entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), Books 1 and 2,
a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of
and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.
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
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of another published
Other communication to the public of the work The law also provided for the limitations on copyright, thus: Sec. 184.1 Limitations
work entitled DEVELOPING ENGLISH PROFICIENCY (DEP for brevity), Books 1 and 2 (1985 edition) which book was covered by
on copyright. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) the
copyrights issued to them.
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
In the course of revising their published works, petitioners scouted and looked around various bookstores to check on other
published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from
textbooks dealing with the same subject matter. By chance they came upon the book of respondent Robles and upon perusal of
newspaper articles and periodicals in the form of press summaries; Provided, that the source and the name of the author, if
said book they were surprised to see that the book was strikingly similar to the contents, scheme of presentation, illustrations and
appearing on the work are mentioned; (Sec. 11 third par. P.D. 49) xxx (e) The inclusion of a work in a publication, broadcast, or
illustrative examples in their own book, CET.
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; In the
After an itemized examination and comparison of the two books (CET and DEP), petitioners found that several pages of the
above-quoted provisions, work has reference to literary and artistic creations and this includes books and other literary, scholarly
respondents book are similar, if not all together a copy of petitioners book, which is a case of plagiarism and copyright
and scientific works.
infringement.
2. ID.; ID.; INFRINGEMENT; CONSTRUED; WHEN COMMITTED. When is there a substantial reproduction of a book? It does not
Petitioners then made demands for damages against respondents and also demanded that they cease and desist from further
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
selling and distributing to the general public the infringed copies of respondent Robles works.
the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is
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.
x xx
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)
x xxxxxxxxxxx
(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:
x xxxxxxxxxxx
(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.

Kapunan, and Ynares-Santiago, JJ., concur.

Davide, Jr., C.J., (Chairman), pls. see dissenting opinion.
Melo, J., no part. Personal reasons.
 SECOND DIVISION
2. COMMERCIAL LAW; INTELLECTUAL PROPERTY LAW; COPYRIGHT; CONSTRUED. Copyright, in the strict sense of the term, is purely
[G.R. No. 108946. January 28, 1999] 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. 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.
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO,
Regardless of the historical viewpoint, it is authoritatively settled in the United States that there is no copyright except that which is
FELIPE MEDINA, JR., and CASEY FRANCISCO, respondents.
both created and secured by act of Congress.... P.D. No. 49, Section 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,
SYNOPSIS
concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides: SEC. 175. Unprotected Subject Matter. -
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922 dated January 28, 1971 of Rhoda
Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system,
and Me, a dating game show aired from 1970 to 1977. In 1973, petitioner BJPI submitted to the National Library an addendum to
method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or
its certificate of copyright specifying the shows format and style presentation. In 1991, petitioner Francisco Joaquin, Jr., president
embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any
of BJPI, saw on RPN 9 an episode of Its a Date. He immediately protested the airing of the show through a letter sent to Grabriel M.
official text of a legislative, administrative or legal nature, as well as any official translation thereof.
Zosa, president and general manager of IXL Productions, Inc., the producer of Its a Date. Petitioner Joaquin informed respondent
Zosa of a copyright to Rhoda and Me and demanded that IXL discontinue airing Its a Date. Respondent Zosa apologized to Joaquin,
3. ID.; ID.; ID.; FORMAT OR MECHANICS OF A TELEVISION SHOW IS NOT INCLUDED IN THE LIST OF PROTECTED WORKS. To begin
but continued airing the show. Zosa also sought to register IXLs copyright to the first episode of Its a Date for which a certificate of
with, the format of a show is not copyrightable. Section 2 of P.D. No. 49, otherwise known as the DECREE ON INTELLECTUAL
copyright was issued by the National Library on August 14, 1991. With these developments, petitioners herein filed a complaint
PROPERTY, enumerates the classes of work entitled to copyright protection, to wit: Section 2. The rights granted by this Decree
against Zosa and other RPN Channel 9 officers as a result of which an information for violation of P.D. No. 49 was filed before the
shall, from the moment of creation, subsist with respect to any of the following classes of works: (A) Books, including composite
Regional Trial Court of Quezon City. Zosa appealed to the Department of Justice. The Secretary of Justice reversed the prosecutors
and cyclopedic works, manuscripts, directories, and gazetteers; (B) Periodicals, including pamphlets and newspaper. (C) Lectures,
findings and directed the dismissal of the case. Petitioner Joaquin filed a motion for reconsideration, but it was denied by the
sermons, addresses, dissertations prepared for oral delivery; (D) Letters; (E) Dramatic or dramatico-musical compositions;
Secretary of Justice. Hence, this petition. Both public and private respondents maintained that petitioners failed to establish the
choreographic works and entertainments in dumb shows, the acting form of which is fixed in writing or otherwise; (F) Musical
existence of probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me. They contended
compositions, with or without words; (G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other
that BJPIs copyright covers only a specific episode of Rhosa and Me and that the formats or concepts of dating game shows were
works of art; models or designs for works of art; (H) Reproductions of work of art; (I) Original ornamental designs or models for
not covered by the copyright protection under P.D: No. 49.
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
The Supreme Court ruled that BJPIs copyright covered audio-visual recordings of every episode of Rhoda and Me, as falling within
to photography; lantern slides; (M) Cinematographic works and works produced by a process analogous to cinematography or any
the class of works mentioned in P.D. No. 49. The copyright, however, does not extend to the general concept or format of its
process for making audio-visual recordings; (N) Computer programs; (O) Prints, pictorial illustrations advertising copies, labels, tags,
dating game show. Accordingly, by the very nature of the subject of petitioner BJPIs copyright, the investigating prosecutor should
and box wraps; (P) Dramatizations, translations, adaptions, abridgements, arrangements and other alterations of literary, musical
have been given the opportunity to compare the videotapes of the two shows. Mere description by words of the general format of
or artistic works or of works of the Philippine government as herein defined, which shall be protected as provided in Section 8 of
the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the
this Decree; (Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree which by reason
determination of the existence of probable cause. The petition was therefore dismissed.
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
SYLLABUS
Section 172 of the INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A. No. 8293). The format or mechanics of a television
show is not included in the list of protected works in Section 2 of P.D. No. 49. For this reason, the protection afforded by the law
1. REMEDIAL LAW; CRIMINAL PROCEDURE; PRELIMINARY INVESTIGATION; AUTHORITY OF THE STATE PROSECUTOR, SUBJECT TO
cannot be extended to cover them.
THE CONTROL OF THE SECRETARY OF JUSTICE. A preliminary investigation falls under the authority of the state prosecutor who is
given by law the power to direct and control criminal actions. He is, however, subject to the control of the Secretary of Justice.
APPEARANCES OF COUNSEL
Thus, Rule 112, Sec. 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
MedelMacamdel Rosario ColladoPolines for petitioners.
under oath that he, or as shown by the record, an authorized officer, has personally examined the complainant and his witnesses,
Angelo Medina for F. Medina, Jr.
that there is reasonable ground to believe that a crime has been committed and that the accused is probably guilty thereof, that
Atienza, Tabora, del Rosario Salvador for W. Esposo. Francisco L. Rosario, Jr. for Casey Francisco.
the accused was informed of the complaint and of the evidence submitted against him and that he was given an opportunity to
De Borja Medialda Ata Bello GuevarraSerapio for G. Zosa.
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
DECISION
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 approval of the
MENDOZA, J.:
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
This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice, dated August 12, 1992, in
latter may, by himself, file the corresponding information against the respondent or direct any other assistant fiscal or state
Criminal Case No. Q-92-27854, entitled Gabriel Zosa, et al. v. City Prosecutor of Quezon City and Francisco Joaquin, Jr., and its
procesutor to do so, without conducting another preliminary investigation. If upon petition by a proper party, the Secretary of
resolution, dated December 3, 1992, denying petitioner Joaquins motion for reconsideration.
Justice reverses the resolution of the provincial or city fiscal or chief state prosecutor, he shall direct the fiscal concerned to file the
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda
corresponding information without conducting another preliminary investigation or to dismiss or move for dismissal of the
and Me, a dating game show aired from 1970 to 1977.
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
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the shows
own finding of probable cause and is not confined to the issues raised by the parties during preliminary investigation. Moreover, his
format and style of presentation.
findings are not subject to review unless shown to have been made with grave abuse.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an episode of
Its a Date, which was produced by IXL Productions, Inc. (IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel M.
Zosa, president and general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL
discontinue airing Its a Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and requested a meeting to discuss a
possible settlement. IXL, however, continued airing Its a Date, prompting petitioner Joaquin to send a second letter on July 25,
1991 in which he reiterated his demand and warned that, if IXL did not comply, he would endorse the matter to his attorneys for
proper legal action.
Meanwhile, private respondent Zosa sought to register 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.

Puno, Quisumbing, and Buena, JJ., concur.

Bellosillo, J., (Chairman), no part due to relation to one of the parties.
 THIRD DIVISION
Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light boxes and NEMI took down
[G.R. No. 148222. August 15, 2003] its advertisements for Poster Ads from 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
PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART, INCORPORATED, and NORTH EDSA MARKETING,
techniques and available technology, without notice of or reference to Pearl and Deans copyright. SMI noted that the registration
INCORPORATED, respondents.
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
DECISION
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
CORONA, J.:
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
In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner Pearl & Dean (Phil.) Inc. (P & D) assails
Registration No. PD-R-2558 dated January 20, 1981 and Certificate of Trademark Registration No. 4165 dated September 12, 1988.
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, for its part, denied having manufactured, installed or used any advertising display units, nor having engaged in the business
(NEMI) liable for infringement of trademark and copyright, and unfair competition.
of advertising. It repleaded SMIs averments, admissions and denials and prayed for similar reliefs and counterclaims as SMI.
FACTUAL ANTECEDENTS
The RTC of Makati City decided in favor of P & D:
The May 22, 2001 decision of the Court of Appeals[3] contained a summary of this dispute:
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
Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply
28 of PD 49, as amended, and Sections 23 and 24 of RA 166, as amended. Accordingly, defendants are hereby directed:
referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with back
lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January 20, 1981 over these illuminated
(1) to pay plaintiff the following damages:
display units. The advertising light boxes were marketed under the trademark Poster Ads. The application for registration of the
trademark was filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983, but was approved only on
(a) actual damages - P16,600,000.00,
September 12, 1988, per Registration No. 41165. From 1981 to about 1988, Pearl and Dean employed the services of Metro
representing profits
Industrial Services to manufacture its advertising displays.
derived by defendants
as a result of infringe-
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and installation of the
ment of plaintiffs copyright
light boxes in SM City North Edsa. Since SM City North Edsa was under construction at that time, SMI offered as an alternative, SM
from 1991 to 1992
Makati and SM Cubao, to which Pearl and Dean agreed. On September 11, 1985, Pearl and Deans General Manager, Rodolfo
Vergara, submitted for signature the contracts covering SM Cubao and SM Makati to SMIs Advertising Promotions and Publicity
(b) moral damages - P1,000.000.00
Division Manager, RamonlitoAbano. 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
(c) exemplary damages - P1,000,000.00
for its SM Makati branch, but also for SM Cubao. SMI did not bother to reply.
(d) attorneys fees - P1,000,000.00
Instead, in a letter dated January 14, 1986, SMIs house counsel informed Pearl and Dean that it was rescinding the contract for SM
plus
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.
(e) costs of suit;
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricate its display units, offered
(2) to deliver, under oath, for impounding in the National Library, all light boxes of SMI which were fabricated by Metro Industrial
to construct light boxes for Shoemarts chain of stores. SMI approved the proposal and ten (10) light boxes were subsequently
Services and EYD Rainbow Advertising Corporation;
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
(3) to deliver, under oath, to the National Library, all filler-posters using the trademark Poster Ads, for destruction; and
staggered basis and installed at SM Megamall and SM City.
(4) to permanently refrain from infringing the copyright on plaintiffs light boxes and its trademark Poster Ads.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at SM City and in the fastfood
section of SM Cubao. Upon investigation, Pearl and Dean found out that aside from the two (2) reported SM branches, light boxes
Defendants counterclaims are hereby ordered dismissed for lack of merit.
similar to those it manufactures were also installed in two (2) other SM stores. It further discovered that defendant-appellant North
Edsa Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell advertising
SO ORDERED.[4]
space in lighted display units located in SMIs different branches. Pearl and Dean noted that NEMI is a sister company of SMI.
On appeal, however, the Court of Appeals reversed the trial court:
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI enjoining them to cease
using the subject light boxes and to remove the same from SMIs establishments. It also demanded the discontinued use of the
Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising
trademark Poster Ads, and the payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos
copies, labels, tags or box wraps, to be properly classified as a copyrightable class O work, we have to agree with SMI when it
(P20,000,000.00).
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.
xxxxxxxxx
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.
xxxxxxxxx
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.
xxxxxxxxx
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:
x xxxxxxxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
x xxxxxxxx
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 xx (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 xx. 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.
x xx
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 xx 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)
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.
Puno, (Chairman), Panganiban, Sandoval-Gutierrez, and Carpio-Morales, JJ., concur.

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 xx. One who has adopted and used a trademark on his goods does not prevent the
Feist Publications, Inc. v. Rural Telephone Service Company, Inc.
No. 89-1909
Argued Jan. 9, 1991
Decided March 27, 1991
499 U.S. 340
Syllabus
Respondent Rural Telephone Service Company is a certified public utility providing telephone service to several communities in
Kansas. Pursuant to state regulation, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. It
obtains data for the directory from subscribers, who must provide their names and addresses to obtain telephone service.
Petitioner Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories covering a much
larger geographic range than directories such as Rural's. When Rural refused to license its white pages listings to Feist for a
directory covering 11 different telephone service areas, Feist extracted the listings it needed from Rural's directory without Rural's
consent. Although Feist altered many of Rural's listings, several were identical to listings in Rural's white pages. The District Court
granted summary judgment to Rural in its copyright infringement suit, holding that telephone directories are copyrightable. The
Court of Appeals affirmed.
Held: Rural's white pages are not entitled to copyright, and therefore Feist's use of them does not constitute infringement. Pp. 499
U. S. 344-364.
(a) Article I, § 8, cl. 8, of the Constitution mandates originality as a prerequisite for copyright protection. The constitutional
requirement necessitates independent creation plus a modicum of creativity. Since facts do not owe their origin to an act of
authorship, they are not original, and thus are not copyrightable. Although a compilation of facts may possess the requisite
originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so
that readers may use them effectively, copyright protection extends only to those components of the work that are original to the
author, not to the facts themselves. This fact/expression dichotomy severely limits the scope of protection in fact-based works. Pp.
499 U. S. 344-351.
(b) The Copyright Act of 1976 and its predecessor, the Copyright Act of 1909, leave no doubt that originality is the touchstone of
copyright protection in directories and other fact-based works. The 1976 Act explains that copyright extends to "original works of
authorship," 17 U.S.C. § 102(a), and that there can be no copyright in facts, § 102(b).
A compilation is not copyrightable per se, but is copyrightable only if its facts have been "selected, coordinated, or arranged in such
a way that the resulting work as a whole constitutes an original work of authorship." § 101 (emphasis added). Thus, the statute
envisions that some ways of selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection.
Even a compilation that is copyrightable receives only limited protection, for the copyright does not extend to facts contained in
the compilation. § 103(b). Lower courts that adopted a "sweat of the brow" or "industrious collection" test -- which extended a
compilation's copyright protection beyond selection and arrangement to the facts themselves -- misconstrued the 1909 Act and
eschewed the fundamental axiom of copyright law that no one may copyright facts or ideas. Pp. 499 U. S. 351-361.
(c) Rural's white pages do not meet the constitutional or statutory requirements for copyright protection. While Rural has a valid
copyright in the directory as a whole because it contains some forward text and some original material in the yellow pages, there is
nothing original in Rural's white pages. The raw data are uncopyrightable facts, and the way in which Rural selected, coordinated,
and arranged those facts is not original in any way. Rural's selection of listings -- subscribers' names, towns, and telephone numbers
-- could not be more obvious, and lacks the modicum of creativity necessary to transform mere selection into copyrightable
expression. In fact, it is plausible to conclude that Rural did not truly "select" to publish its subscribers' names and telephone
numbers, since it was required to do so by state law. Moreover, there is nothing remotely creative about arranging names
alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come
to be expected as a matter of course. Pp. 499 U. S. 361-364.
916 F.2d 718 (CA 10 1990), reversed.
O'CONNOR J., delivered the opinion of the Court, in which REHNQUIST, C.J., and WHITE, MARSHALL, STEVENS, SCALIA, KENNEDY,
and SOUTER, JJ., joined. BLACKMUN, J., concurred in the judgment.
JUSTICE O'CONNOR delivered the opinion of the Court.
This case requires us to clarify the extent of copyright protection available to telephone directory white pages.
I
Rural Telephone Service Company is a certified public utility that provides telephone service to several communities in northwest
Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue annually an updated
telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone directory, consisting
of white pages and yellow pages. The white pages list in alphabetical order the names of Rural's subscribers, together with their
towns and telephone numbers. The yellow pages list Rural's business subscribers alphabetically by category, and feature classified
advertisements of various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by selling yellow
pages advertisements.
Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical directory, which
covers only a particular calling area, Feist's area-wide directories cover a much larger geographical range, reducing the need to call
directory assistance or consult multiple directories. The Feist directory that is the subject of this litigation covers 11 different
telephone service areas in 15 counties and contains 46,878 white pages listings -- compared to Rural's approximately 7,700 listings.
Like Rural's directory, Feist's is distributed free of charge and includes both white pages and yellow pages. Feist and Rural compete
vigorously for yellow pages advertising.
As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons desiring
telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a telephone number. Feist
is not a telephone company, let alone one with monopoly status, and therefore lacks independent access to any subscriber
information. To obtain white pages listings for its area-wide directory, Feist approached each of the 11 telephone companies
operating in northwest Kansas and offered to pay for the right to use its white pages listings.
Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for Feist, as
omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to potential yellow pages
advertisers. In a decision subsequent to that which we review here, the District Court determined that this was precisely the reason
Rural refused to license its listings. The refusal was motivated by an unlawful purpose "to extend its monopoly in telephone service
to a monopoly in yellow pages advertising." Rural Telephone Service Co. v. Feist Publications, Inc., 737 F.Supp. 610, 622 (Kan.1990).
Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist began by removing several thousand
listings that fell outside the geographic range of its area-wide directory, then hired personnel to investigate the 4,935 that
remained. These employees verified the data reported by Rural and sought to obtain additional information. As a result, a typical
Feist listing includes the individual's street address; most of Rural's listings do not. Notwithstanding these additions, however, 1,309
of the 46,878 listings in Feist's 1983 directory were identical to listings in Rural's 1982-1983 white pages. App. 54 (15-16), 57. Four
of these were fictitious listings that Rural had inserted into its directory to detect copying.
Rural sued for copyright infringement in the District Court for the District of Kansas, taking the position that Feist, in compiling its
own directory, could not use the information contained in Rural's white pages. Rural asserted that Feist's employees were obliged
to travel door-to-door or conduct a telephone survey to discover the same information for themselves. Feist responded that such
efforts were economically impractical and, in any event, unnecessary, because the information copied was beyond the scope of
copyright protection. The District Court granted summary judgment to Rural, explaining that "[c]ourts have consistently held that
telephone directories are copyrightable" and citing a string of lower court decisions. 663 F.Supp.214, 218 (1987). In an unpublished
opinion, the Court of Appeals for the Tenth Circuit affirmed "for substantially the reasons given by the district court." App. to Pet.
for Cert. 4a, judgt.order reported at 916 F.2d 718 (1990). We granted certiorari, 498 U.S. 808 (1990), to determine whether the
copyright in Rural's directory protects the names, towns, and telephone numbers copied by Feist.
II
A
This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable; the other, that
compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That there can be no valid
copyright in facts is universally understood. The most fundamental axiom of copyright law is that "[n]o author may copyright his
ideas or the facts he narrates." Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 471 U. S. 556 (1985). Rural
wisely concedes this point, noting in its brief that "[f]acts and discoveries, of course, are not themselves subject to copyright
protection." Brief for Respondent 24. At the same time, however, it is beyond dispute that compilations of facts are within the
subject matter of copyright. Compilations were expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of
1976.
There is an undeniable tension between these two propositions. Many compilations consist of nothing but raw data -- i.e., wholly
factual information not accompanied by any original written expression. On what basis may one claim a copyright in such a work?
Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place.
Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope.
The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality.
To qualify for copyright protection, a work must be original to the author. See Harper Row, supra, at 471 U. S. 547-549. Original, as
the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other
works), and that it possesses at least some minimal degree of creativity. 1 M. Nimmer& D. Nimmer, Copyright §§ 2.01[A], [B] (1990)
(hereinafter Nimmer). To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast
majority of works make the grade quite easily, as they possess some creative spark, "no matter how crude, humble or obvious" it
might be. Id. § 1.08[C][1]. Originality does not signify novelty; a work may be original even though it closely resembles other works,
so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other,
compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. See Sheldon v. Metro-Goldwyn
Pictures Corp., 81 F.2d 49, 54 (CA2 1936).
Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, § 8, cl. 8, of the
Constitution, which authorizes Congress to "secur[e] for limited Times to Authors . . . the exclusive Right to their respective
Writings." In two decisions from the late 19th Century -- The Trade-Mark Cases, 100 U. S. 82 (1879); and Burrow-Giles Lithographic
Co. v. Sarony, 111 U. S. 53 (1884) -- this Court defined the crucial terms "authors" and "writings." In so doing, the Court made it
unmistakably clear that these terms presuppose a degree of originality.
In The Trade-Mark Cases, the Court addressed the constitutional scope of "writings." For a particular work to be classified "under
the head of writings of authors," the Court determined, "originality is required." 100 U.S. at 100 U. S. 94. The Court explained that
originality requires independent creation plus a modicum of creativity:
"[W]hile the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only
such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of
intellectual labor, embodied in the form of books, prints, engravings, and the like."
Ibid. (emphasis in original).
In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the word "authors." The Court defined
"author," in a constitutional sense, to mean "he to whom anything owes its origin; originator; maker." 111 U.S. at 111 U. S. 58
(internal quotations omitted). As in The Trade-Mark Cases, the Court emphasized the creative component of originality. It
described copyright as being limited to "original intellectual conceptions of the author," ibid., and stressed the importance of
requiring an author who accuses another of infringement to prove "the existence of those facts of originality, of intellectual
production, of thought, and conception." Id. 111 U.S. at 111 U. S. 590.
The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection
today. See Goldstein v. California, 412 U. S. 546, 412 U. S. 561-562 (1973). It is the very "premise of copyright law." Miller v.
Universal City Studios, Inc., 650 F.2d 1365, 1368 (CA5 1981). Leading scholars agree on this point. As one pair of commentators
succinctly puts it: "The originality requirement is constitutionally mandated for all works." Patterson & Joyce, Monopolizing the
Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L.Rev. 719, 763, n. 155 (1989)
(emphasis in original) (hereinafter Patterson & Joyce).Accord, id.at 759-760, and n. 140; Nimmer § 1.06[A] ("originality is a
statutory as well as a constitutional requirement"); id. § 1.08[C][1] ("a modicum of intellectual labor . . . clearly constitutes an
essential constitutional element").
It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual compilations.
"No one may claim originality as to facts." Id. § 2.11[A], p. 2-157. This is because facts do not owe their origin to an act of
authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not
created the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one who discovers a fact is not its
"maker" or "originator." 111 U.S. at 111 U. S. 58. "The discoverer merely finds and records." Nimmer § 2.03[E]. Census-takers, for
example, do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world
around them. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum.L.Rev.
516, 525 (1981) (hereinafter Denicola). Census data therefore do not trigger copyright, because these data are not "original" in the
constitutional sense. Nimmer§ 2.03[E]. The same is true of all facts -- scientific, historical, biographical, and news of the day. "[T]hey
may not be copyrighted, and are part of the public domain available to every person." Miller, supra, at 1369.
Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts
to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers.
These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal
degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Nimmer §§
2.11[D], 3.03; Denicola 523, n. 38. Thus, even a directory that contains absolutely no protectible written expression, only facts,
meets the constitutional minimum for copyright protection if it features an original selection or arrangement. See Harper & Row,
471 U.S. at 471 U. S. 547. Accord, Nimmer § 3.03.
This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of
the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to
those components of a work that are original to the author. Patterson & Joyce 800-802; Ginsburg, Creation and Commercial Value:
Copyright Protection of Works of Information, 90 Colum.L.Rev. 1865, 1868, and n. 12 (1990) (hereinafter Ginsburg). Thus, if the
compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written
expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. In Harper
& Row, for example, we explained that President Ford could not prevent others from copying bare historical facts from his
autobiography, see 471 U.S. at 471 U. S. 556-557, but that he could prevent others from copying his "subjective descriptions and
portraits of public figures." Id. at 471 U. S. 563. Where the compilation author adds no written expression, but rather lets the facts
speak for themselves, the expressive element is more elusive. The only conceivable expression is the manner in which the compiler
has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for
copyright protection. See Patry, Copyright in Compilations of Facts (or Why the "White Pages" Are Not Copyrightable), 12 Com. &
Law 37, 64 (Dec.1990) (hereinafter Patry). No matter how original the format, however, the facts themselves do not become
original through association. See Patterson & Joyce 776.
This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler
remains free to use the facts contained in another's publication to aid in preparing a competing work, so long as the competing
work does not feature the same selection and arrangement. As one commentator explains it:
"[N]o matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking. . . . [T]he very
same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even
if the author was the first to discover the facts or to propose the ideas."
Ginsburg 1868.
It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As Justice Brennan
has correctly observed, however, this is not "some unforeseen byproduct of a statutory scheme." Harper & Row, 471 U.S. at 471 U.
S. 589 (dissenting opinion). It is, rather, "the essence of copyright," ibid. and a constitutional requirement. The primary objective of
copyright is not to reward the labor of authors, but "[t]o promote the Progress of Science and useful Arts." Art. I, § 8, cl. 8.Accord,
Twentieth Century Music Corp. v. Aiken, 422 U. S. 151, 422 U. S. 156 (1975). To this end, copyright assures authors the right to their
original expression, but encourages others to build freely upon the ideas and information conveyed by a work. Harper & Row,
supra, 471 U.S. at 471 U. S. 556-557. This principle, known as the idea/expression or fact/expression dichotomy, applies to all works
of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's
selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is
the means by which copyright advances the progress of science and art.
This Court has long recognized that the fact/expression dichotomy limits severely the scope of protection in fact-based works.
More than a century ago, the Court observed:
"The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it
contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book."
Baker v. Selden, 101 U. S. 99, 101 U. S. 103 (1880). We reiterated this point in Harper & Row:
"[N]o author may copyright facts or ideas. The copyright is limited to those aspects of the work -- termed 'expression' -- that display
the stamp of the author's originality."
"[C]opyright does not prevent subsequent users from copying from a prior author's work those constituent elements that are not
original -- for example . . . facts, or materials in the public domain -- as long as such use does not unfairly appropriate. the author's
original contributions."
471 U.S. at 471 U. S. 547-548 (citation omitted).
This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a wholly consistent manner. Facts,
whether alone or as part of a compilation, are not original, and therefore may not be copyrighted. A factual compilation is eligible
for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or
arrangement. In no event may copyright extend to the facts themselves.
B independently . . . is precisely the scope of protection given . . . copyrighted matter, and the law is clear that facts are not entitled
As we have explained, originality is a constitutionally mandated prerequisite for copyright protection. The Court's decisions
announcing this rule predate the Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower courts
temporarily to lose sight of this requirement.
The 1909 Act embodied the originality requirement, but not as clearly as it might have. See Nimmer § 2.01. The subject matter of
copyright was set out in § 3 and § 4 of the Act. Section 4 stated that copyright was available to "all the writings of an author." 35
Stat. 1076. By using the words "writings" and "author" -- the same words used in Article I, § 8 of the Constitution and defined by
the Court in The Trade-Mark Cases and Burrow-Giles -- the statute necessarily incorporated the originality requirement articulated
in the Court's decisions. It did so implicitly, however, thereby leaving room for error.
Section 3 was similarly ambiguous. It stated that the copyright in a work protected only "the copyrightable component parts of the
work." It thus stated an important copyright principle, but failed to identify the specific characteristic -- originality -- that
determined which component parts of a work were copyrightable and which were not.
Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect statutory language. They understood from this
Court's decisions that there could be no copyright without originality. See Patterson & Joyce 760-761. As explained in the Nimmer
treatise:
"The 1909 Act neither defined originality nor even expressly required that a work be 'original' in order to command protection.
However, the courts uniformly inferred the requirement from the fact that copyright protection may only be claimed by 'authors.' .
. . It was reasoned that, since an author is 'the . . . creator, originator,' it follows that a work is not the product of an author unless
the work is original."
Nimmer § 2.01 (footnotes omitted) (citing cases).
But some courts misunderstood the statute. See, e.g., Leon v. Pacific Telephone & Telegraph Co., 91 F.2d 484 (CA9 1937); Jeweler's
Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (CA2 1922). These courts ignored § 3 and § 4, focusing their attention
instead on § 5 of the Act. Section 5, however, was purely technical in nature: it provided that a person seeking to register a work
should indicate on the application the type of work, and it listed 14 categories under which the work might fall. One of these
categories was "[b]ooks, including composite and cyclopoedic works, directories, gazetteers, and other compilations." § 5(a).
Section 5 did not purport to say that all compilations were automatically copyrightable. Indeed, it expressly disclaimed any such
function, pointing out that "the subject matter of copyright [i]s defined in section four." Nevertheless, the fact that factual
compilations were mentioned specifically in § 5 led some courts to infer erroneously that directories and the like were
copyrightable per se, "without any further or precise showing of original -- personal -- authorship." Ginsburg 1895.
Making matters worse, these courts developed a new theory to justify the protection of factual compilations. Known alternatively
as "sweat of the brow" or "industrious collection," the underlying notion was that copyright was a reward for the hard work that
went into compiling facts. The classic formulation of the doctrine appeared in Jeweler's Circular Publishing Co., 281 F. at 88:
"The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials
which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality,
either in thought or in language, or anything more than industrious collection. The man who goes through the streets of a town and
puts down the names of each of the inhabitants, with their occupations and their street number acquires material of which he is
the author."
(Emphasis added).
The "sweat of the brow" doctrine had numerous flaws, the most glaring being that it extended copyright protection in a
compilation beyond selection and arrangement -- the compiler's original contributions -- to the facts themselves. Under the
doctrine, the only defense to infringement was independent creation. A subsequent compiler was "not entitled to take one word of
information previously published," but rather had to "independently wor[k] out the matter for himself, so as to arrive at the same
result from the same common sources of information." Id. at 88-89 (internal quotations omitted). "Sweat of the brow" courts
thereby eschewed the most fundamental axiom of copyright law -- that no one may copyright facts or ideas. See Miller v. Universal
City Studios, Inc., 650 F.2d at 1372 (criticizing "sweat of the brow" courts because "ensur[ing] that later writers obtain the facts
to such protection").
Decisions of this Court applying the 1909 Act make clear that the statute did not permit the "sweat of the brow" approach. The best
example is International News Service v. Associated Press, 248 U. S. 215 (1918). In that decision, the Court stated unambiguously
that the 1909 Act conferred copyright protection only on those elements of a work that were original to the author. International
News Service had conceded taking news reported by Associated Press and publishing it in its own newspapers. Recognizing that § 5
of the Act specifically mentioned "[p]eriodicals, including newspapers," § 5(b), the Court acknowledged that news articles were
copyrightable. Id. at 248 U. S. 234. It flatly rejected, however, the notion that the copyright in an article extended to the factual
information it contained:
"[T]he news element -- the information respecting current events contained in the literary production -- is not the creation of the
writer, but is a report of matters that ordinarily are publici juris; it is the history of the day."
Ibid. *
Without a doubt, the "sweat of the brow" doctrine flouted basic copyright principles. Throughout history, copyright law has
"recognize[d] a greater need to disseminate factual works than works of fiction or fantasy." Harper & Row, 471 U.S. at 471 U. S.
563. Accord, Gorman, Fact or Fancy: The Implications for Copyright, 29 J.Copyright Soc. 560, 563 (1982). But "sweat of the brow"
courts took a contrary view; they handed out proprietary interests in facts and declared that authors are absolutely precluded from
saving time and effort by relying upon the facts contained in prior works. In truth, "[i]t is just such wasted effort that the
proscription against the copyright of ideas and facts . . . [is] designed to prevent." Rosemont Enterprises, Inc. v. Random House,
Inc., 366 F.2d 303, 310 (CA2 1966), cert. denied 385 U.S. 1009 (1967).
"Protection for the fruits of such research . . . may, in certain circumstances, be available under a theory of unfair competition. But
to accord copyright protection on this basis alone distorts basic copyright principles in that it creates a monopoly in public domain
materials without the necessary justification of protecting and encouraging the creation of 'writings' by 'authors.'"
Nimmer § 3.04, p. 3-23 (footnote omitted).
C
"Sweat of the brow" decisions did not escape the attention of the Copyright Office. When Congress decided to overhaul the
copyright statute and asked the Copyright Office to study existing problems, see Mills Music, Inc. v. Snyder, 469 U. S. 153, 469 U. S.
159 (1985), the Copyright Office promptly recommended that Congress clear up the confusion in the lower courts as to the basic
standards of copyrightability. The Register of Copyrights explained in his first report to Congress that "originality" was a "basic
requisit[e]" of copyright under the 1909 Act, but that "the absence of any reference to [originality] in the statute seems to have led
to misconceptions as to what is copyrightable matter." Report of the Register of Copyrights on the General Revision of the U.S.
Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961). The Register suggested making the originality
requirement explicit. Ibid.
Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress dropped the reference to "all the writings of an
author" and replaced it with the phrase "original works of authorship." 17 U.S.C. § 102(a). In making explicit the originality
requirement, Congress announced that it was merely clarifying existing law:
"The two fundamental criteria of copyright protection [are] originality and fixation in tangible form. . . . The phrase 'original works
of authorship,' which is purposely left undefined, is intended to incorporate without change the standard of originality established
by the courts under the present [1909] copyright statute."
H.R.Rep. No. 94-1476, p. 51 (1976) (emphasis added) (hereinafter H.R.Rep.); S.Rep. No. 94-473, p. 50 (1975), U.S.Code Cong.
&Admin.News 1976, pp. 5659, 5664 (emphasis added) (hereinafter S.Rep.). This sentiment was echoed by the Copyright Office:
"Our intention here is to maintain the established standards of originality. . . ." Supplementary Report of the Register of Copyrights
on the General Revision of U.S. Copyright Law, 89th Cong., 1st Sess., Part 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).
To ensure that the mistakes of the "sweat of the brow" courts would not be repeated, Congress took additional measures. For
example, § 3 of the 1909 Act had stated that copyright protected only the "copyrightable component parts" of a work, but had not
identified originality as the basis for distinguishing those component parts that were copyrightable from those that were not. The
1976 Act deleted this section and replaced it with § 102(b), which identifies specifically those elements of a work for which
copyright is not available:
"In no case does copyright protection for an original work of authorship extend to any 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."
§ 102(b) is universally understood to prohibit any copyright in facts. Harper Row, supra, at 471 U. S. 547, 471 U. S. 556.Accord,
Nimmer § 2.03[E] (equating facts with "discoveries"). As with § 102(a), Congress emphasized that § 102(b) did not change the law,
but merely clarified it:
"Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate . .
. that the basic dichotomy between expression and idea remains unchanged."
H.R.Rep. at 57; S.Rep.at 54, U.S.Code Cong. &Admin.News 1976, p. 5670.
Congress took another step to minimize confusion by deleting the specific mention of "directories . . . and other compilations" in §
5 of the 1909 Act. As mentioned, this section had led some courts to conclude that directories were copyrightable per se, and that
every element of a directory was protected. In its place, Congress enacted two new provisions. First, to make clear that
compilations were not copyrightable per se, Congress provided a definition of the term "compilation." Second, to make clear that
the copyright in a compilation did not extend to the facts themselves, Congress enacted 17 U.S.C. § 103.
The definition of "compilation" is found in § 101 of the 1976 Act. It defines a "compilation" in the copyright sense as
"a work formed by the collection and assembly of preexisting materials or of data that are selected, coordinated, or arranged in
such a way that the resulting work, as a whole, constitutes an original work of authorship."
(Emphasis added.)
The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se. It conveys this
message through its tripartite structure, as emphasized above by the italics. The statute identifies three distinct elements, and
requires each to be met for a work to qualify as a copyrightable compilation: (1) the collection and assembly of preexisting
material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of an "original" work of authorship. "[T]his tripartite conjunctive structure is
self-evident, and should be assumed to accurately express the legislative purpose.'" Patry 51, quoting Mills Music, 469 U.S. at 469
U. S. 164.
At first glance, the first requirement does not seem to tell us much. It merely describes what one normally thinks of as a
compilation -- a collection of preexisting material, facts, or data. What makes it significant is that it is not the sole requirement. It is
not enough for copyright purposes that an author collects and assembles facts. To satisfy the statutory definition, the work must
get over two additional hurdles. In this way, the plain language indicates that not every collection of facts receives copyright
protection. Otherwise, there would be a period after "data."
The third requirement is also illuminating. It emphasizes that a compilation, like any other work, is copyrightable only if it satisfies
the originality requirement ("an original work of authorship"). Although § 102 states plainly that the originality requirement applies
to all works, the point was emphasized with regard to compilations to ensure that courts would not repeat the mistake of the
"sweat of the brow" courts by concluding that fact-based works are treated differently and measured by some other standard. As
Congress explained it, the goal was to
"make plain that the criteria of copyrightable subject matter stated in section 102 apply with full force to works . . . containing
preexisting material."
H.R.Rep. at 57; S.Rep.at 55.
The key to the statutory definition is the second requirement. It instructs courts that, in determining whether a fact-based work is
an original work of authorship, they should focus on the manner in which the collected facts have been selected, coordinated, and
arranged. This is a straightforward application of the originality requirement. Facts are never original, so the compilation author can
claim originality, if at all, only in the way the facts are presented. To that end, the statute dictates that the principal focus should be
on whether the selection, coordination, and arrangement are sufficiently original to merit protection.
Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. It states that, to merit protection,
the facts must be selected, coordinated, or arranged "in such a way" as to render the work as a whole original. This implies that
some "ways" will trigger copyright, but that others will not. See Patry 57, and n. 76. Otherwise, the phrase "in such a way" is
meaningless, and Congress should have defined "compilation" simply as "a work formed by the collection and assembly of
preexisting materials or data that are selected, coordinated, or arranged." That Congress did not do so is dispositive. In accordance
with "the established principle that a court should give effect, if possible, to every clause and word of a statute," Moskal v. United
States, 498 U. S. 103, 498 U. S. 109-110 (1990) (internal quotations omitted), we conclude that the statute envisions that there will
be some fact-based works in which the selection, coordination, and arrangement are not sufficiently original to trigger copyright
protection.
As discussed earlier, however, the originality requirement is not particularly stringent. A compiler may settle upon a selection or
arrangement that others have used; novelty is not required. Originality requires only that the author make the selection or
arrangement independently (i.e., without copying that selection or arrangement from another work), and that it display some
minimal level of creativity. Presumably, the vast majority of compilations will pass this test, but not all will. There remains a narrow
category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent. See generally Bleistein v.
Donaldson Lithographing Co., 188 U. S. 239, 188 U. S. 251 (1903) (referring to "the narrowest and most obvious limits"). Such works
are incapable of sustaining a valid copyright. Nimmer § 2.01[B].
Even if a work qualifies as a copyrightable compilation, it receives only limited protection. This is the point of § 103 of the Act.
Section 103 explains that "[t]he subject matter of copyright . . . includes compilations," § 103(a), but that copyright protects only
the author's original contributions -- not the facts or information conveyed:
"The copyright in a compilation . . . extends only to the material contributed by the author of such work, as distinguished from the
preexisting material employed in the work, and does not imply any exclusive right in the preexisting material."
§ 103(b).
As § 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or data he or she
has collected.
"The most important point here is one that is commonly misunderstood today: copyright . . . has no effect one way or the other on
the copyright or public domain status of the preexisting material."
H.R.Rep. at 57; S.Rep.at 55, U.S.Code Cong. &Admin.News 1976, p. 5670. The 1909 Act did not require, as "sweat of the brow"
courts mistakenly assumed, that each subsequent compiler must start from scratch, and is precluded from relying on research
undertaken by another. See, e.g., Jeweler's Circular publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works
may be freely copied, because copyright protects only the elements that owe their origin to the compiler -- the selection,
coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not "sweat of the brow," is the touchstone of
copyright protection in directories and other fact-based works. Nor is there any doubt that the same was true under the 1909 Act.
The 1976 revisions were a direct response to the Copyright Office's concern that many lower courts had misconstrued this basic
principle, and Congress emphasized repeatedly that the purpose of the revisions was to clarify, not change, existing law. The
revisions explain with painstaking clarity that copyright requires originality, § 102(a); that facts are never original, § 102(b); that the
copyright in a compilation does not extend to the facts it contains, § 103(b); and that a compilation is copyrightable only to the
extent that it features an original selection, coordination, or arrangement, § 101.
The 1976 revisions have proven largely successful in steering courts in the right direction. A good example is Miller v. Universal City
Studios, Inc., 650 F.2d at 1369-1370:
"A copyright in a directory . . . is properly viewed as resting on the originality of the selection and arrangement of the factual
material, rather than on the industriousness of the efforts to develop the information. Copyright protection does not extend to the
facts themselves, and the mere use of information contained in a directory without a substantial copying of the format does not
constitute infringement."
(Citation omitted.) Additionally, the Second Circuit, which almost 70 years ago issued the classic formulation of the "sweat of the
brow" doctrine in Jeweler's Circular Publishing Co., has now fully repudiated the reasoning of that decision. See, e.g., Financial
Information, Inc. v. Moody's Investors Service, Inc., 808 F.2d 204, 207 (CA2 1986), cert. denied, 484 U.S. 820 (1987); Financial
Information, Inc. v. Moody's Investors Service, Inc., 751 F.2d 501, 510 (CA2 1984) (Newman, J., concurring); Hoehling v. Universal
City Studios, Inc., 618 F.2d 972, 979 (CA2 1980). Even those scholars who believe that "industrious collection" should be rewarded
seem to recognize that this is beyond the scope of existing copyright law. See Denicola 516 ("the very vocabulary of copyright is ill-
suited to analyzing property rights in works of nonfiction"); id. at 520-521, 525; Ginsburg 1867, 1870.
III
There is no doubt that Feist took from the white pages of Rural's directory a substantial amount of factual information. At a
minimum, Feist copied the names, towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying, however, is
copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original. See Harper & Row, 471 U.S. at 471 U. S. 548. The first element is not
at issue here; Feist appears to concede that Rural's directory, considered as a whole, is subject to a valid copyright because it
contains some foreword text, as well as original material in its yellow pages advertisements. See Brief for Petitioner 18; Pet. for
Cert. 9.
The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names, towns, and
telephone numbers from Rural's white pages, copy anything that was "original" to Rural? Certainly, the raw data does not satisfy
the originality requirement. Rural may have been the first to discover and report the names, towns, and telephone numbers of its
subscribers, but this data does not "ow[e] its origin'" to Rural. Burrow-Giles, 111 U.S. at 111 U. S. 58. Rather, these bits of
information are uncopyrightable facts; they existed before Rural reported them, and would have continued to exist if Rural had
never published a telephone directory. The originality requirement
"rule[s] out protecting . . . names, addresses, and telephone numbers of which the plaintiff, by no stretch of the imagination, could
be called the author."
Patterson & Joyce 776.
Rural essentially concedes the point by referring to the names, towns, and telephone numbers as "preexisting material." Brief for
Respondent 17. Section 103(b) states explicitly that the copyright in a compilation does not extend to "the preexisting material
employed in the work."
The question that remains is whether Rural selected, coordinated, or arranged these uncopyrightable facts in an original way. As
mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is
equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity
whatsoever. The standard of originality is low, but it does exist. See Patterson & Joyce 760, n. 144 ("While this requirement is
sometimes characterized as modest, or a low threshold, it is not without effect") (internal quotations omitted; citations omitted).
As this Court has explained, the Constitution mandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U.S. at
100 U. S. 94, and an author who claims infringement must prove "the existence of . . . intellectual production, of thought, and
conception." Burrow-Giles, supra, 111 U.S. at 111 U. S. 59-60.
The selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum constitutional standards for
copyright protection. As mentioned at the outset, Rural's white pages are entirely typical. Persons desiring telephone service in
Rural's service area fill out an application, and Rural issues them a telephone number. In preparing its white pages, Rural simply
takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages
directory, devoid of even the slightest trace of creativity.
Rural's selection of listings could not be more obvious: it publishes the most basic information -- name, town, and telephone
number -- about each person who applies to it for telephone service. This is "selection" of a sort, but it lacks the modicum of
creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effortto make the white
pages directory useful, but insufficient creativity to make it original.
We note in passing that the selection featured in Rural's white pages may also fail the originality requirement for another reason.
Feist points out that Rural did not truly "select" to publish the names and telephone numbers of its subscribers; rather, it was
required to do so by the Kansas Corporation Commission as part of its monopoly franchise. See 737 F.Supp. at 612. Accordingly,
one could plausibly conclude that this selection was dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than list Rural's
subscribers in alphabetical order. This arrangement may, technically speaking, owe its origin to Rural; no one disputes that Rural
undertook the task of alphabetizing the names itself. But there is nothing remotely creative about arranging names alphabetically
in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected
as a matter of course. See Brief for Information Industry Association et al. as Amici Curiae 10 (alphabetical arrangement "is
universally observed in directories published by local exchange telephone companies"). It is not only unoriginal, it is practically
inevitable. This time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the
Constitution.
We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural, and therefore were not
protected by the copyright in Rural's combined white and yellow pages directory. As a constitutional matter, copyright protects
only those constituent elements of a work that possess more than a de minimis quantum of creativity. Rural's white pages, limited
to basic subscriber information and arranged alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not
afford protection from copying to a collection of facts that are selected, coordinated, and arranged in a way that utterly lacks
originality. Given that some works must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that Rural's white
pages pass muster, it is hard to believe that any collection of facts could fail.
Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement. This decision
should not be construed as demeaning Rural's efforts in compiling its directory, but rather as making clear that copyright rewards
originality, not effort. As this Court noted more than a century ago,
"'great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not
contemplate their being rewarded in this way.'"
Baker v. Selden, 101 U.S. at 101 U. S. 105.
The judgment of the Court of Appeals is
Reversed.
JUSTICE BLACKMUN concurs in the judgment.
* The Court ultimately rendered judgment for Associated Press on noncopyright grounds that are not relevant here. See 248 U.S. at
248 U. S. 235, 248 U. S. 241-242.
 THIRD DIVISION 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
G.R. Nos. 175769-70 January 19, 2009 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,
ABS-CBN BROADCASTING CORPORATION, Petitioner, vs. PHILIPPINE MULTI-MEDIA SYSTEM, INC., CESAR G. REYES, FRANCIS CHUA
thus enriching the lives of the residents thereof through the dissemination of social, economic, educational information and
(ANG BIAO), MANUEL F. ABELLADA, RAUL B. DE MESA, AND ALOYSIUS M. COLAYCO, Respondents.
cultural programs.
DECISION
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
YNARES-SANTIAGO, J.:
television services thereby providing a better medium of dissemination of information to the public.
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
In view of the foregoing and the spirit and intent of NTC memorandum Circular No. 4-08-88, particularly section 6 thereof, on
90762, which affirmed the December 20, 2004 Decision of the Director-General of the Intellectual Property Office (IPO) in Appeal
mandatory carriage of television broadcast signals, DTH pay television services should be deemed covered by such NTC
No. 10-2004-0002. Also assailed is the December 11, 2006 Resolution[3] denying the motion for reconsideration.
Memorandum Circular.
Petitioner ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed under the laws of the Republic of the Philippines to engage in
For your guidance. (Emphasis added)[11]
television and radio broadcasting.[4] It broadcasts television programs by 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 High Frequency
On August 26, 2003, PMSI filed another Manifestation with the BLA that it received a letter dated July 24, 2003 from the NTC
(UHF). The programs aired over Channels 2 and 23 are either produced by ABS-CBN or purchased from or licensed by other
enjoining strict and immediate compliance with the must-carry rule under Memorandum Circular No. 04-08-88, to wit:
producers.
Dear Mr. Abellada:
ABS-CBN also owns regional television stations which pattern their programming in accordance with perceived demands of the
region. Thus, television programs shown in Metro Manila and nearby provinces are not necessarily shown in other provinces.
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
Respondent Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting System. It delivers digital direct-to-
System, Inc., has cut-off, without any notice or explanation whatsoever, to air the programs of IBC-13, a free-to-air television, to
home (DTH) television via satellite to its subscribers all over the Philippines. Herein individual respondents, Cesar G. Reyes, Francis
the detriment of the public.
Chua, Manuel F. Abellada, Raul B. De Mesa, and Aloysius M. Colayco, are members of PMSIs Board of Directors.
We were told that, until now, this has been going on.
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
Please be advised that as a direct broadcast satellite operator, operating a direct-to-home (DTH) broadcasting system, with a
satellite service. When it commenced operations, it offered as part of its program line-up ABS-CBN Channels 2 and 23, NBN,
provisional authority (PA) from the NTC, your company, along with cable television operators, are mandated to strictly comply with
Channel 4, ABC Channel 5, GMA Channel 7, RPN Channel 9, and IBC Channel 13, together with other paid premium program
the existing policy of NTC on mandatory carriage of television broadcast signals as provided under Memorandum Circular No. 04-
channels.
08-88, also known as the Revised Rules and Regulations Governing Cable Television System in the Philippines.
However, on April 25, 2001,[6] ABS-CBN demanded for PMSI to cease and desist from rebroadcasting Channels 2 and 23. On April
This mandatory coverage provision under Section 6.2 of said Memorandum Circular, requires all cable television system operators,
27, 2001,[7] PMSI replied that the rebroadcasting was in accordance with the authority granted it by NTC and its obligation under
operating in a community within the Grade A or B contours to must-carry the television signals of the authorized television
NTC Memorandum Circular No. 4-08-88,[8] Section 6.2 of which requires all cable television system operators operating in a
broadcast stations, one of which is IBC-13. Said directive equally applies to your company as the circular was issued to give
community within Grade A or B contours to carry the television signals of the authorized television broadcast stations.[9]
consumers and the public a wider access to more sources of news, information, entertainment and other programs/contents.
Thereafter, negotiations ensued between the parties in an effort to reach a settlement; however, the negotiations were terminated
This Commission, as the governing agency vested by laws with the jurisdiction, supervision and control over all public services,
on April 4, 2002 by ABS-CBN allegedly due to PMSIs inability to ensure the prevention of illegal retransmission and further
which includes direct broadcast satellite operators, and taking into consideration the paramount interest of the public in general,
rebroadcast of its signals, as well as the adverse effect of the rebroadcasts on the business operations of its regional television
hereby directs you to immediately restore the signal of IBC-13 in your network programs, pursuant to existing circulars and
stations.[10]
regulations of the Commission.
On May 13, 2002, ABS-CBN filed with the IPO a complaint for Violation of Laws Involving Property Rights, with Prayer for the
For strict compliance. (Emphasis added)[12]
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.
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
On July 2, 2002, the Bureau of Legal Affairs (BLA) of the IPO granted ABS-CBNs application for a temporary restraining order. On
Competition in the Sector. Article 6, Section 8 thereof states:
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.
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.
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
On whether Memorandum Circular No. 10-10-2003 amended Memorandum Circular No. 04-08-88, the NTC explained to PMSI in a
stating as follows:
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.
x xxx
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;
x xxx
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 xx
x xxx
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:
x xxx
(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
xx. 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 xx.
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 xx. 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.
x xxx
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:
x xxx
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 xx[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 lismota presented. x xx[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) motuproprio 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.
Austria-Martinez, Chico-Nazario, Nachura, and Leonardo-de Castro, JJ., concur.
 SECOND DIVISION
That on or about the 22nd of July 2004, in Quezon City, Philippines, the above-named accused, conspiring together, confederating
G.R. No. 195956, March 11, 2015 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"
ABS-CBN CORPORATION, Petitioner, v. FELIPE GOZON, GILBERTO R. DUAVIT, JR., MARISSA L. FLORES, JESSICA A. SOHO, GRACE DELA
without first obtaining the consent or authority of said copyright owner, to their damage and prejudice.
PEÑA-REYES, JOHN OLIVER T. MANALASTAS, JOHN DOES AND JANE DOES, Respondents.
Contrary to law.22
DECISION
On January 4, 2005, respondents filed the Petition for Review before the Department of Justice.23 In the Resolution (Gonzalez
LEONEN, J.:
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:
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
WHEREFORE, THE PETITION FOR REVIEW FILED BY GMA-7 in I.S. No. 04-10458 is considered meritorious and is hereby GRANTED.
"copyrightable material" in relation to material that is rebroadcast live as a news story. We are also asked to rule on whether
This case is hereby Dismissed, the resolution of the City Prosecutor of Quezon City is hereby reversed and the same is ordered to
criminal prosecution for infringement of copyrightable material, such as live rebroadcast, can be negated by good faith.
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
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
Meanwhile, on January 19, 2005, the trial court granted the Motion to Suspend Proceedings filed earlier by Dela Peña-Reyes and
August 1, 2005 that ordered the withdrawal of the Information finding probable cause for respondents' violation of Sections 1774
Manalastas.27 The trial court Order reads:
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),
Perusing the motion, the court finds that a petition for review was filed with the Department of Justice on January 5, 2005 as
Vice-President for News and Public Affairs; Jessica A. Soho (Soho), Director for News; Grace Déla Peña-Reyes (Dela Peña-Reyes),
confirmed by the public prosecutor. Under Section 11 (c), Rule 116 of the Rules of Criminal Procedure, once a petition for review is
Head of News and Public Affairs; John Oliver Manalastas '(Manalastas), Program Manager; and others.
filed with the Department of Justice, a suspension of the criminal proceedings may be allowed by the court.
The controversy arose from GMA-7's news coverage on the homecoming of Filipino overseas worker and hostage victim Angelo
Accordingly, to allow the Department of Justice the opportunity to act on said petition for review, let the proceedings on this case
dela Cruz on July 22, 2004. As summarized by the Court of Appeals:
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
Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a condition for his release, a demand was made
8, 2005 at 8:30 a.m. The accused through counsel are notified in open court.
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
SO ORDERED.28
Network, Inc. . . . and [petitioner] made their respective broadcasts and coverage of the live event.7
On June 29, 2010, Department of Justice Acting Secretary Alberto C. Agra (Secretary Agra) issued the Resolution (Agra Resolution)
ABS-CBN "conducted live audio-video coverage of and broadcasted the arrival of Angelo dela Cruz at the Ninoy Aquino
that reversed the Gonzalez Resolution and found probable cause to charge Dela Peña-Reyes and Manalastas for violation of the
International Airport (NAIA) and the subsequent press conference."8 ABS-CBN allowed Reuters Television Service (Reuters) to air
Intellectual Property Code.29 Secretary Agra also found probable cause to indict Gozon, Duavit, Jr., Flores, and Soho for the same
the footages it had taken earlier under a special embargo agreement.9
violation.30 He ruled that:
ABS-CBN alleged that under the special embargo agreement, any of the footages it took would be for the "use of Renter's
[w]hile good faith may be a defense in copyright infringement, the same is a disputable presumption that must be proven in a full-
international subscribers only, and shall be considered and treated by Reuters under 'embargo' against use by other subscribers in
blown trial. Disputable presumptions may be contradicted and overcome by other evidence. Thus, a full-blown trial is the proper
the Philippines. . . . [N]o other Philippine subscriber of Reuters would be allowed to use ABS-CBN footage without the latter's
venue where facts, issues and laws are evaluated and considered. The very purpose of trial is to allow a party to present evidence
consent."10
to overcome the disputable presumptions involved.31
GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes, and Manalastas are connected, "assigned and stationed news
The dispositive portion of the Agra Resolution provides:
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
WHEREFORE, premises considered:
arrival from Reuters.12
(a) The Motion for Reconsideration filed by appellees ABS-CBN Broadcasting Corporation (ABS-CBN) of our Resolution promulgated
GMA-7 immediately carried the live newsfeed in its program "Flash Report," together with its live broadcast.13 Allegedly, GMA-7
on August 1, 2005 (Resolution No. 364, Series of 2005) and the Petition for Review filed by complainant-appellant ABS-CBN in I.S.
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
No. 04-10458 on April 10, 2006, are GRANTED and the City Prosecutor of Quezon City is hereby ordered to file the necessary
neither the "No Access Philippines" notice nor a notice that the video feed was under embargo in favor of ABS-CBN.15
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[.]
On August 13, 2004, ABS-CBN filed the Complaint for copyright infringement under Sections 17716 and 21117 of the Intellectual
Property Code.18
SO ORDERED.32 (Emphasis in the original)
On December 3, 2004, Assistant City Prosecutor DindoVenturanza issued the Resolution19 finding probable cause to indict Dela
Respondents assailed the Agra Resolution through the Petition for Certiorari with prayer for issuance of a temporary restraining
Peña-Reyes and Manalastas.20 Consequently, the Information21 for violation of the Intellectual Property Code was filed on
order and/or Writ of Preliminary Injunction on September 2, 2010 before the Court of Appeals. In the Resolution dated September
December 17, 2004. It reads:
13, 2010, the Court of Appeals granted the temporary restraining order preventing the Department of Justice from enforcing the
Agra Resolution.33
On November 9, 2010, the Court of Appeals rendered the Decision granting the Petition and reversing and setting aside the Agra
Resolution.34 The Court of Appeals held that Secretary Agra committed errors of jurisdiction in issuing the assailed Resolution.
Resolving the issue of copyright infringement, the Court of Appeals said:
Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed, petitioner GMA is liable
under the provisions of the Intellectual Property Code, which was enacted purposely to protect copyright owners from
infringement. However, it is an admitted fact that petitioner GMA had only aired a five (5) second footage of the disputed live video
feed that it had received from Reuters and CNN as a subscriber. Indeed, petitioners had no notice of the right of ownership of
private respondent over the same. Without notice of the "No Access Philippines" restriction of the live video feed, petitioner
cannot 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 malumprohibitum, it bears to stress that the provisions
of the Code itself do not ipso facto penalize a person or entity for copyright infringement by the mere fact that one had used a
copyrighted work or material.
Certainly so, in the exercise of one's moral and economic or copyrights, the very provisions of Part IV of the Intellectual Property
Code provide for the scope and limitations on copyright protection under Section 184 and in fact permit fair use of copyrighted
work under Section 185. With the aforesaid statutory limitations on one's economic and copyrights and the allowable instances
where the other persons can legally use a copyrighted work, criminal culpability clearly attaches only when the infringement had
been knowingly and intentionally committed.35 (Emphasis supplied)
The dispositive portion of the Decision reads:
WHEREFORE, the foregoing considered, the instant petition is hereby GRANTED and the assailed Resolution dated 29 June 2010
REVERSED and SET ASIDE. Accordingly, the earlier Resolution dated 1 August 2005, which ordered the withdrawal of the
Information filed, if any, against the petitioners for violation of Sections 177 and 211 of the Intellectual Property Code, is hereby
REINSTATED. No costs.
SO ORDERED.36 (Emphasis in the original)
ABS-CBN's Motion for Reconsideration was denied.37 It then filed its Petition for Review before this court assailing the Decision
and Resolution of the Court of Appeals.38
The issues for this court's consideration are:
First, whether Secretary Agra committed errors of jurisdiction in the Resolution dated June 29, 2010 and, therefore, whether a
petition for certiorari was the proper remedy in assailing that Resolution;
Second, whether news footage is copyrightable under the law;
Third, whether there was fair use of the broadcast material;
Fourth, whether lack of knowledge that a material is copyrighted is a defense against copyright infringement;
Fifth, whether good faith is a defense in a criminal prosecution for violation of the Intellectual Property Code; and
Lastly, whether the Court of Appeals was correct in overturning Secretary Agra's finding of probable cause.
I
The trial court granted respondents' Motion to Suspend Proceedings and deferred respondents Dela Peña-Reyes and Manalastas'
arraignment for 60 days in view of the Petition for Review filed before the Department of Justice.
Rule 116, Section 11 (c) of the Rules of Criminal Procedure allows the suspension of the accused's arraignment in certain
circumstances only:
SEC. 11. Suspension of arraignment.-Upon motion by the proper party, the arraignment shall be suspended in the following cases:
(a) The accused appears to be suffering from an unsound mental condition which effectively renders him unable to fully understand
the charge against him and to plead intelligently thereto. In such case, the court shall order his mental examination and, if
necessary, his confinement for such purpose;
(b) There exists a prejudicial question; and
(c) A petition for review of the resolution of the prosecutor is pending at either the Department of Justice, or the Office of the
President; provided, that the period of suspension shall not exceed sixty (60) days counted from the filing of the petition with the
reviewing office. (12a) (Emphasis supplied)
In Samson v. Daway,39 this court acknowledged the applicability of Rule 116, Section (c) in a criminal prosecution for infringement
under the Intellectual Property Code. However, this court emphasized the limits of the order of deferment under the Rule:
While the pendency of a petition for review is a ground for suspension of the arraignment, the . . . provision limits the deferment of
the arraignment to a period of 60 days reckoned from the filing of the petition with the reviewing office. It follows, therefore, that
after the expiration of said period, the trial court is bound to arraign the accused or to deny the motion to defer arraignment.40
We clarify that the suspension of the arraignment should always be within the limits allowed by law. In Crespo v. Judge Mogul,41
this court outlined the effects of filing an information before the trial court, which includes initiating a criminal action and giving
this court "authority to hear and determine the case":
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:
[I]n order to avoid a situation where the opinion of the Secretary of Justice who reviewed the action of the fiscal may be
disregarded by the trial court, the Secretary of Justice should, as far as practicable, refrain from entertaining a petition for review or
appeal from the action of the fiscal, when the complaint or information has already been filed in the Court. The matter should be
left entirely for the determination of the Court.45
The trial court should have proceeded with respondents Dela Peña-Reyes and Manalastas' arraignment after the 60-day period
from the filing of the Petition for Review before the Department of Justice on March 8, 2005. It was only on September 13, 2010
that the temporary restraining order was issued by the Court of Appeals. The trial court erred when it did not act on the criminal
case during the interim period. It had full control and direction of the case. As Judge Mogul reasoned in denying the motion to
dismiss in Crespo, failure to proceed with the arraignment "disregards the requirements of due process [and] erodes the Court's
independence and integrity."46
II
According to ABS-CBN, the Court of Appeals erred in finding that: a motion for reconsideration was not necessary before a petition
for certiorari could be filed; the Department of Justice Secretary committed errors of jurisdiction since the Agra Resolution was
issued within its authority and in accordance with settled laws and jurisprudence; and respondents were not liable for copyright
infringement.
In its assailed Decision, the Court of Appeals found that respondents committed a procedural error when they failed to file a
motion for reconsideration before filing the Petition for Certiorari. However, the Court of Appeals held that a motion for
reconsideration was unnecessary since the Agra Resolution was a patent nullity and it would have been useless under the
circumstances:
Given that a reading of the assailed Resolution and the instant records readily reveals errors -of jurisdiction on the part of
respondent Secretary, direct judicial recourse is warranted under the circumstances. Aside from the fact that said Resolution is a
patent nullity having been issued in grave abuse of discretion amounting to lack or excess of jurisdiction, the filing of a motion for
reconsideration is evidently useless on account of the fact that the issues and arguments before this Court have already been duly
raised and accordingly delved into by respondent Secretary in his disposition of the petition a quo.47 (Emphasis in the original)
In Elma v. Jacobi,48 this court ruled that a petition for certiorari under Rule 65 of the Rules of Court is proper when assailing
adverse resolutions of the Department of Justice stemming from the determination of probable cause.49 However, grave abuse of
discretion must be alleged.50
In Sanrio Company Limited v. Lim,51 this court stressed the prosecutor's role in determining probable cause. Judicial review will
only lie when it is shown that the prosecutor acted with grave abuse of discretion amounting to lack or excess of jurisdiction:
A prosecutor alone determines the sufficiency of evidence that will establish probable cause justifying the filing of a criminal
information against the respondent. By way of exception, however, judicial review is allowed where respondent has clearly
established that the prosecutor committed grave abuse of discretion. Otherwise stated, such review is appropriate only when the
prosecutor has exercised his discretion in an arbitrary, capricious, whimsical or despotic manner by reason of passion or personal
hostility, patent and gross enough to amount to an evasion of a positive duty or virtual refusal to perform a duty enjoined by law.52
(Citations omitted)
Grave abuse of discretion refers to:
such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The abuse of discretion must be grave as
where the power is exercised in an arbitrary or despotic manner by reason of passion or personal hostility and must be so patent
and gross as to amount to an evasion of positive duty or to a virtual refusal to perform the duty enjoined by or to act at all in
contemplation of law.53
Resorting to certiorari requires that there be there be "no appeal, or any plain, speedy, and adequate remedy in the ordinary
course of law[,]"54 such as a motion for reconsideration. Generally, "a motion for reconsideration is a condition sine qua non
before a petition for certiorari may lie, its purpose being to grant an opportunity for the [tribunal or officer] to correct any error
attributed to it by a re-examination of the legal and factual circumstances of the case."55
However, exceptions to the rule exist:
(a) where the order is a patent nullity, as where the Court a quo had no jurisdiction; (b) where the questions raised in the certiorari
proceeding have been duly raised and passed upon by the lower court, or are the same as those raised and passed upon in the
lower court; (c) where there is an urgent necessity for the resolution of the question and any further delay would prejudice the
interests of the Government or of the petitioner or the subject matter of the action is perishable; (d) where, under the
circumstances, a motion for reconsideration would be useless; (e) where petitioner was deprived of due process and there is
extreme urgency for relief; (f) where, in a criminal case, relief from an order of arrest is urgent and the granting of such relief by the
trial Court is improbable; (g) where the proceedings in the lower court are a nullity for lack of due process; (h) where the
proceedings was ex parte or in which the petitioner had no opportunity to object; and (i) where the issue raised is one purely of law
or where public interest is involved.56 (Emphasis in the original, citations omitted)
As argued by respondents, "[a] second motion for reconsideration would have been useless and futile since the 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:
SECTION 13.Motion for reconsideration. The aggrieved party may file a motion for reconsideration within a non-extendible period
of ten (10) days from receipt of the resolution on appeal, furnishing the adverse party and the Prosecution Office concerned with
copies thereof and submitting proof of such service. No second or further motion for reconsideration shall be entertained.
The Agra Resolution was the result of respondents' Motion for Reconsideration assailing the Gonzalez Resolution. To file a motion
for reconsideration of the Agra Resolution would be superfluous. Respondents were, therefore, correct in filing the Petition for
Certiorari of the Agra Resolution before the Court of Appeals.
III
The Court of Appeals ruled that Secretary Agra committed errors of jurisdiction, which then required the grant of the writ of
certiorari:
So viewed, by ordering the filing of information without proof that probable cause exists to charge petitioners with a crime,
respondent Secretary clearly committed an error of jurisdiction thus warranting the issuance of the writ of certiorari. Surely,
probable cause cannot be had when the very provisions of the statute exculpates criminal liability in cases classified as fair use of
copyrighted materials. The fact that they admittedly used the Reuters live video feed is not, as a matter of course, tantamount to
copyright infringement that would justify the filing of an information against the petitioners.59
Error of jurisdiction must be distinguished from error of judgment:
A line must be drawn between errors of judgment and errors of jurisdiction. An error of judgment is one which the court may
commit in the exercise of its jurisdiction. An error of jurisdiction renders an order or judgment void or voidable. Errors of
jurisdiction are reviewable on certiorari; errors of judgment, only by appeal.60
In People v. Hon. Sandiganbayan61:
An error of judgment is one which the court may commit in the exercise of its jurisdiction. An error of 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:
The full discretionary authority to determine probable cause in a preliminary investigation to ascertain sufficient ground for the
filing of information rests with the executive branch. Hence, judicial review of the resolution of the Secretary of Justice is limited to
a determination whether there has been a grave abuse of discretion amounting to lack or excess of jurisdiction. Courts cannot
substitute the executive branch's judgment.
. . . .
It is only where the decision of the Justice Secretary is tainted with grave abuse of discretion amounting to lack or excess of
jurisdiction that the Court of Appeals may take cognizance of the case in a petition for certiorari under Rule 65 of the Revised Rules
of Civil Procedure. The Court of Appeals decision may then be appealed to this Court by way of a petition for review on certiorari.65
(Emphasis supplied, citations omitted)
In this case, it must be shown that Secretary Agra exceeded his authority when he reversed the findings of Secretary Gonzalez. This
court must determine whether there is probable cause to file an information for copyright infringement under the Intellectual
Property Code.
IV
Probable cause pertains to "such facts as are sufficient to engender a well-founded belief that a crime has been committed and
that respondent is probably guilty thereof." 66 Preliminary investigation is the inquiry or proceeding to determine whether there is
probable cause.67
In Webb v. De Leon,68 this court ruled that determination of probable cause during preliminary investigation does not require trial-
like evaluation of evidence since existence of probable cause does not equate to guilt:
It ought to be emphasized that in determining probable cause, the average man weighs facts and circumstances without resorting
to the calibrations of our technical rules of evidence of which his knowledge is nil. Rather, he relies on the calculus of common
sense of which all reasonable men have an abundance.
. . . .
. . . A finding of probable cause merely binds over the suspect to stand trial. It is not a pronouncement of guilt.69
In Reyes v. Pearlbank Securities, Inc.,70 finding probable cause is not equivalent to finding with moral certainty that the accused
committed the crime:
A finding of probable cause needs only to rest on evidence showing that more likely than not a crime has been committed by the
suspects. It need not be based on clear and convincing evidence of guilt, not on evidence establishing guilt beyond reasonable
doubt, and definitely not on evidence establishing absolute certainty of guilt. In determining probable cause, the average man
weighs facts and circumstances without resorting to the calibrations of the rules of evidence of which he has no technical
knowledge. He relies on common sense.71
During preliminary investigation, a public prosecutor does not adjudicate on the parties' rights, obligations, or liabilities.72
In the recent case of Estrada v. Office of the Ombudsman, et al,73 we reiterated Webb on the determination of probable cause
during preliminary investigation and traced the history of probable cause as borrowed from American jurisprudence:
The purpose in determining probable cause is to make sure that the courts are not clogged with weak cases that will only be
dismissed, as well as to spare a person from the travails of a needless prosecution.
. . . .
. . . In the United States, from where we borrowed the concept of probable cause, the prevailing definition of probable cause is this:
In dealing with probable cause, however, as the very name implies, we deal with probabilities. These are not technical; they are the
factual and practical considerations of everyday life on which reasonable and prudent men, not legal technicians, act. The standard
of proof is accordingly correlative to what must be proved.
"The substance of all the definitions" of probable cause "is a reasonable ground for belief of guilt." McCarthy v. De Armit, 99 Pa. St.
63, 69, quoted with approval in the Carroll opinion. 267 U. S. at 161.And this "means less than evidence which would justify
condemnation" or conviction, as Marshall, C. J., said for the Court more than a century ago in Locke v. United States, 7 Cranch 339,
348. Since Marshall's time, at any rate, it has come to mean more than bare suspicion: Probable cause exists where "the facts and
circumstances within their [the officers'] knowledge and of which they had reasonably trustworthy information [are] sufficient in
themselves to warrant a man of reasonable caution in the belief that" an offense has been or is being committed. Carroll v. United
States, 267 U. S. 132, 162.
These long-prevailing standards seek to safeguard citizens from rash and unreasonable interferences with privacy and from
unfounded charges of crime. They also seek to give fair leeway for enforcing the law in the community's protection. Because many
situations which confront officers in the course of executing their duties are more or less ambiguous, room must be allowed for
some mistakes on their part. But the mistakes must be those of reasonable men, acting on facts leading sensibly to their
conclusions of probability. The rule of probable cause is a practical, 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.
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":

To be clear, it is the event itself or the arrival of Angelo dela Cruz which is not copyrightable because that is the newsworthy event.
However, any footage created from the event itself, in this case the arrival of Angelo dela Cruz, are intellectual creations which are
copyrightable. Thus, the footage created by ABS-CBN during the arrival of Angelo dela Cruz, which includes the statements of Dindo
Amparo, are copyrightable and protected by the laws on copyright.77
On the other hand, respondents argue that ABS-CBN's news footage of Angelo dela Cruz's arrival is not copyrightable or subject to
protection:
Certainly, the arrival of Angelo [d]ela Cruz, which aroused public attention and the consciousness of the Filipino people with regard
to their countrymen, OFWs working in foreign countries and how the Philippine government responds to the issues concerning
them, is "news". There is no ingenuity or inventiveness added in the said news footage. The video footage of this "news" is not
copyrightable by any legal standard as facts of everyday life depicted in the news and items of press information is part of the
public domain.78 (Emphasis in the original)
The news footage is copyrightable.
The Intellectual Property Code is clear about the rights afforded to authors of various kinds of work. Under the Code, "works are
protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and
purpose."79 These include "[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:
The word "idea" is derived from a Greek term, meaning "a form, the look or appearance of a thing as opposed to its reality, from
idein, to see." In the Timaeus, Plato saw ideas as eternal paradigms, independent objects to which the divine demiurge looks as
patterns in forming the world. This was later modified to the religious conception of ideas as the thoughts of God. "It is not a very
long step to extend the term 'idea' to cover patterns, blueprints, or plans in anyone's mind, not only in God's." The word entered
the French and English vernacular in the 1600s and possessed two meanings. The first was the Platonic meaning of a perfect
exemplar or paradigm. The second, which probably has its origin with Descartes, is of a mental concept or image or, more broadly,
any object of the mind when it is active. Objects of thought may exist independently. The sun exists (probably) before and after you
think of it. But it is also possible to think of things that have never existed, such as a unicorn or Pegasus. John Locke defined ideas
very comprehensively, to include: all objects of the mind. Language was a way of translating the invisible, hidden ideas that make
up a person's thoughts into the external, perceptible world of articulate sounds and visible written symbols that others can
understand.86 (Citations omitted)
There is no one legal definition of "idea" in this jurisdiction. The term "idea" is mentioned only once in the Intellectual Property
Code.87 In Joaquin, Jr. v. Drilon,88 a television format (i.e., a dating show format) is not copyrightable under Section 2 of
Presidential Decree No. 49;89 it is a mere concept:
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The copyright does not
extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in
which it is described, explained, illustrated, or embodied in such work. Thus, the new INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES provides:
SEC. 175. Unprotected Subject Matter.—Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under
this law, to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are
expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of
mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation
thereof.
What then is the subject matter of petitioners' copyright? This Court is of the opinion that petitioner 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:
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:
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:
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:
"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 xx 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 xx 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)
. . . [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:
SECTION 177.Copyright or Economic Rights. — Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of
the exclusive right to carry out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of
the original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;

News or the event itself is not copyrightable. However, an event can be captured and presented in a specific medium. As 177.6. Public performance of the work; and
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. 177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a) (Emphasis supplied)
Television news footage is an expression of the news.
Under Section 211 of the Intellectual Property Code, broadcasting organizations are granted a more specific set of rights called
In the United States, a line of cases dwelt on the possibility of television newscasts to be copyrighted.97 Most of these cases related or neighboring rights:
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 SECTION 211.Scope of Right. — Subject to the provisions of Section 212, broadcasting organizations shall enjoy the exclusive right
Monitoring Service's videotaping and sale of WXIA-TVs news broadcasts: to carry out, authorize or prevent any of the following acts:

It is axiomatic that copyright protection does not extend to news "events" or the facts or ideas which are the subject of news 211.1. The rebroadcasting of their broadcasts;
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 211.2. The recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose
well-settled that copyright protection does extend to the reports themselves, as distinguished from the substance of the of communication to the public of television broadcasts of the same; and
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 § 211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49) (Emphasis supplied)
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 Section 212 of the Code provides:
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) CHAPTER XV
LIMITATIONS ON PROTECTION
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: Section 212.Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred to in those Sections are
related to:
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 212.1. The use by a natural person exclusively for his own personal purposes;
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." 212.2. Using short excerpts for reporting current events;

212.3. Use solely for the purpose of teaching or for scientific research; and
212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. 49a)
The Code defines what broadcasting is and who broadcasting organizations include:
202.7. "Broadcasting" means the transmission by wireless means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also "broadcasting" where the means for decrypting are provided to the
public by the broadcasting organization or with its consent;
202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly authorized to engage in broadcasting[.]
Developments in technology, including the process of preserving once ephemeral works and disseminating them, resulted in the
need to provide a new kind of protection as distinguished from copyright.102 The designation "neighboring rights" was abbreviated
from the phrase "rights neighboring to copyright."103 Neighboring or related rights are of equal importance with copyright as
established in the different conventions covering both kinds of rights.104
Several treaties deal with neighboring or related rights of copyright.105 The most prominent of these is the "International
Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations" (Rome Convention).106
The Rome Convention protects the rights of broadcasting organizations in relation to their broadcasts. Article XIII of the Rome
Convention enumerates the minimum rights accorded to broadcasting organizations:
Article 13
Minimum Rights for Broadcasting Organizations
Broadcasting organisations shall enjoy the right to authorize or prohibit:
(a) the rebroadcasting of their broadcasts;
(b) the fixation of their broadcasts;
(c) the reproduction:
(i) of fixations, made without their consent, of their broadcasts;
(ii) of fixations, made in accordance with the provisions of Article 15, of their broadcasts, if the reproduction is made for purposes
different from those referred to in those provisions;
(d) the communication to the public of their television broadcasts if such communication is made in places accessible to the
public against payment of an entrance fee; it shall be a matter for the domestic law of the State where protection of this right is
claimed to determine the conditions under which it may be exercised.
With regard to the neighboring rights of a broadcasting organization in this jurisdiction, this court has discussed the difference
between broadcasting and rebroadcasting:
Section 202.7 of the IP Code defines broadcasting as "the transmission by wireless means for the public reception of sounds or of
images or of representations thereof; such transmission by satellite is also 'broadcasting' where the means for decrypting are
provided to the public by the broadcasting organization or with its consent."
On the other hand, rebroadcasting as defined in Article 3(g) of the International Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of which the Republic
of the Philippines is a signatory, is "the simultaneous broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization."
. . . .
Under the Rome Convention, rebroadcasting is "the simultaneous broadcasting by one broadcasting organization of the broadcast
of another broadcasting organization." The Working Paper prepared by the Secretariat of the Standing Committee on Copyright
and Related Rights defines broadcasting organizations as "entities that take the financial and editorial responsibility for the
selection and arrangement of, and investment in, the transmitted content."107 (Emphasis in the original, citations omitted)
Broadcasting organizations are entitled to several rights and to the protection of these rights under the Intellectual Property Code.
Respondents' argument that the subject news footage is not copyrightable is erroneous. The Court of Appeals, in its assailed
Decision, correctly recognized the existence of ABS-CBN's copyright over the news footage:
Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed, petitioner GMA is liable
under the provisions of the Intellectual Property Code, which was enacted purposely to protect copyright owners from
infringement.108
News as expressed in a video footage is entitled to copyright protection. Broadcasting organizations have not only copyright on
but also neighboring rights over their broadcasts. Copyrightability of a work is different from fair use of a work for purposes of
news reporting.
VI
ABS-CBN assails the Court of Appeals' ruling that the footage shown by GMA-7 falls under the scope of Section 212.2 and 212.4 of
the Intellectual Property Code:
The evidence on record, as well as the discussions above, show that the footage used by [respondents] could 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.
. . . .
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:
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.
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 malumprohibitum. The Intellectual Property Code is a special law. Copyright is
a statutory creation:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not
simply a pre-existing right regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the
statute.128
The general rule is that acts punished under a special law are malum prohibitum.129 "An act which is declared malumprohibitum,
malice or criminal intent is completely immaterial."130
In contrast, crimes mala in se concern inherently immoral acts:
Not every criminal act, however, involves moral turpitude. It is for this reason that "as to what crime involves moral turpitude, is for
the Supreme Court to determine". In resolving the foregoing question, the Court is guided by one of the general rules that crimes
mala in se involve moral turpitude, while crimes mala prohibita do not, the rationale of which was set forth in "Zari v. Flores" to wit:
It (moral turpitude) implies something immoral in itself, regardless of the fact that it is punishable by law or not. It must not be
merely mala prohibita, but the act itself must be inherently immoral. The doing of the act itself, and not its prohibition by statute
fixes the moral turpitude. Moral turpitude does not, however, include such acts as are not of themselves immoral but whose
illegality lies in their being positively prohibited. (Emphasis supplied)
[These] guidelines nonetheless proved short of providing a clear-cut solution, for in International Rice Research Institute v. NLRC,
the Court admitted that it cannot always be ascertained whether moral turpitude does or does not exist by merely classifying a
crime as malum in se or as malumprohibitum. 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:
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:
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:
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:
The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate
understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this
connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do
which is conferred by statute on the owner of the copyright.
. . . .
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know whether or not
he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril.
. . . .
In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious effect". Here, the injury
consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's research work and
compilation and misrepresented them as her own. She circulated the book DEP for commercial use and did not acknowledge
petitioners as her source.152 (Emphasis supplied)
Habana and Columbia Pictures did not require knowledge of the infringement to constitute a violation of the copyright. One does
not need to know that he or she is copying a work without consent to violate copyright law. Notice of fact of the embargo from
Reuters or CNN is not material to find probable cause that respondents committed infringement. Knowledge of infringement is only
material when the person is charged of aiding and abetting a copyright infringement under Section 217 of the Intellectual Property
Code.153
We look at the purpose of copyright in relation to criminal prosecutions requiring willfulness:
Most importantly, in defining the contours of what it means to willfully infringe copyright for purposes of criminal liability, the
courts should remember the ultimate aim of copyright. Copyright is not primarily about providing the strongest possible protection
for copyright owners so that they have the highest possible incentive to create more works. The control given to copyright owners
is only a means to an end: the promotion of knowledge and learning. Achieving that underlying goal of copyright law also requires
access to copyrighted works and it requires permitting certain kinds of uses of copyrighted works without the permission of the
copyright owner. While a particular defendant may appear to be deserving of criminal sanctions, the standard for determining
willfulness should be set with reference to the larger goals of copyright embodied in the Constitution and the history of copyright in
this country.154
In addition, "[t]he essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by the
owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in
this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right
to do which is conferred by statute on the owner of the copyright."155
Intellectual property rights, such as copyright and the neighboring right against rebroadcasting, establish an artificial and limited
monopoly to reward creativity. Without these legally enforceable rights, creators will have extreme difficulty recovering their costs
and capturing the surplus or profit of their works as reflected in their markets. This, in turn, is based on the theory that the
possibility of gain due to creative work creates an incentive which may improve efficiency or simply enhance consumer welfare or
utility. More creativity redounds to the public good.
These, however, depend on the certainty of enforcement. Creativity, by its very nature, is vulnerable to the free rider problem. It is
easily replicated despite the costs to and efforts of the original creator. The more useful the creation is in the market, the greater
the propensity that it will be copied. The most creative and inventive individuals are usually those who are unable to recover on
their creations.
Arguments against strict liability presuppose that the Philippines has a social, historical, and economic climate similar to those of
Western jurisdictions. As it stands, there is a current need to strengthen intellectual property protection.
Thus, unless clearly provided in the law, offenses involving infringement of copyright protections should be considered
malumprohibitum. It is the act of infringement, not the intent, which causes the damage. To require or assume the need to prove
intent defeats the purpose of intellectual property protection.
Nevertheless, proof beyond reasonable doubt is still the standard for criminal prosecutions under the Intellectual Property Code.
VIII
Respondents argue that GMA-7's officers and employees cannot be held liable for infringement under the Intellectual Property
Code since it does not expressly provide direct liability of the corporate officers. They explain that "(i) a corporation may be charged
and prosecuted for a crime where the penalty is fine or both imprisonment and fine, and if found guilty, may be fined; or (ii) a
corporation may commit a crime but if the statute prescribes the penalty therefore to be suffered by the corporate officers,
directors or employees or other persons, the latter shall be responsible for the offense."156
Section 217 of the Intellectual Property Code states that "any person" may be found guilty of infringement. It also imposes the
penalty of both imprisonment and fine:
Section 217.Criminal Penalties. - 217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or
abetting such infringement shall be guilty of a crime punishable by:
(a)
Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (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:
Petitioners, being corporate officers and/or directors, through whose act, default or omission the corporation commits a crime,
may themselves be individually held answerable for the crime. . . . The existence of the corporate entity does not shield from
prosecution the corporate agent who knowingly and intentionally caused the corporation to commit a crime. Thus, petitioners
cannot hide behind the cloak of the separate corporate personality of the corporation to escape criminal liability. A corporate
officer cannot protect himself behind a corporation where he is the actual, present and efficient actor.159
However, the criminal liability of a. corporation's officers or employees stems from their active participation in the commission of
the wrongful act:
The principle applies whether or not the crime requires the consciousness of wrongdoing. It applies to those corporate agents who
themselves commit the crime and to those, who, by virtue of their managerial positions or other similar relation to the corporation,
could be deemed responsible for its commission, if by virtue of their relationship to the corporation, they had the power to prevent
the act. Moreover, all parties active in promoting a crime, whether agents or not, are principals. Whether such officers or
employees are benefited by their delictual acts is not a touchstone of their criminal liability. Benefit is not an operative fact. 160
(Emphasis supplied)
An accused's participation in criminal acts involving violations of intellectual property rights is the subject of allegation and proof.
The showing that the accused did the acts or contributed in a meaningful way in the commission of the infringements is certainly
different from the argument of lack of intent or good faith. Active participation requires a showing of overt physical acts or
intention to commit such acts. Intent or good faith, on the other hand, are inferences from acts proven to have been or not been
committed.
We find that the Department of Justice committed grave abuse of discretion when it resolved to file the Information against
respondents despite lack of proof of their actual participation in the alleged crime.
Ordering the inclusion of respondents Gozon, GMA-7 President; Duavit, Jr., Executive Vice-President; Flores, Vice-President for
News and Public Affairs; and Soho, Director for News, as respondents, Secretary Agra overturned the City Prosecutor's finding that
only respondents Dela Peña-Reyes and Manalastas are responsible for the crime charged due to their duties.161 The Agra
Resolution reads:
Thus, from the very nature of the offense and the penalty involved, it is necessary that GMA-7's directors, officers, employees or
other officers thereof responsible for the offense shall be charged and penalized for violation of the Sections 177 and 211 of
Republic Act No. 8293. In their complaint for libel, respondents Felipe L Gozon, Gilberto R. Duavit, Jr., Marissa L. Flores, Jessica A.
Soho, Grace Dela Pena-Reyes, John Oliver T. Manalastas felt they were aggrieved because they were "in charge of the
management, operations and production of news and public affairs programs of the network" (GMA-7). This is clearly an admission
on respondents' part. Of course, respondents may argue they have no intention to infringe the copyright of ABS-CBN; that they
acted in good faith; and that they did not directly cause the airing of the subject footage, but again this is preliminary investigation
and what is required is simply probable cause. Besides, these contentions can best be addressed in the course of trial.162 (Citation
omitted)
In contrast, the Office of the City Prosecutor, in the Resolution dated December 3, 2004, found that respondents Gozon, Duavit, Jr.,
Flores, and Soho did not have active participation in the commission of the crime charged:
This Office, however, does not subscribe to the view that respondents Atty. Felipe Gozon, Gilberto Duavit, Marissa Flores and
Jessica Soho should be held liable for the said offense. Complainant failed to present clear and convincing evidence that the said
respondents conspired with Reyes and Manalastas. No evidence was adduced to prove that these respondents had an active
participation in the actual commission of the copyright infringement or they exercised their moral ascendancy over Reyes and
Manalastas in airing the said footage. It must be stressed that, conspiracy must be established by positive and conclusive evidence.
It must be shown to exist as clearly and convincingly as the commission of the offense itself.163 (Emphasis supplied, citations
omitted)
The City Prosecutor found respondents Dela Peña-Reyes and Manalastas liable due to the nature of their work and responsibilities.
He found that:
[t]his Office however finds respondents Grace 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:
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)
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":
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 malumprohibitum and prescribes a strict liability for copyright infringement. Good faith, lack of
knowledge of the copyright, or lack of intent to infringe is not a defense against copyright infringement. Copyright, however, is
subject to the rules of fair use and will be judged on a case-to-case basis. Finding probable cause includes a determination of the
defendant's active participation, particularly when the corporate veil is pierced in cases involving a corporation's criminal liability.
WHEREFORE, the Petition is partially GRANTED. The Department of Justice Resolution dated June 29, 2010 ordering the filing of
the Information is hereby REINSTATED as to respondents Grace Dela 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.

Respondents Dela Peña-Reyes and Manalastas merely denied receiving the advisory sent by Reuters to its clients, including GMA-7. SO ORDERED.
As in the records, the advisory reads:
Carpio, Chairperson, Brion, Del Castillo, and Mendoza, JJ., concur.
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