Supreme Court of the Philippines

361 Phil. 900

SECOND DIVISION

G.R. No. 108946, January 28, 1999

FRANCISCO G. JOAQUIN, JR., AND BJ PRODUCTIONS, INC., PETITIONERS, VS. FRANKLIN

DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., AND CASEY FRANCISCO,
RESPONDENTS

DECISION

MENDOZA, J.:

This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice,
dated August 12, 1992, in Criminal Case No. Q-92-27854, entitled Gabriel Zosa, et al. v. City Prosecutor
of Quezon City and Francisco Joaquin, Jr., and its resolution, dated December 3, 1992, denying
petitioner Joaquins motion for reconsideration.

Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated
January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of
copyright specifying the shows format and style of presentation.

On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on
RPN Channel 9 an episode of 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
Unmarried participant of one gender
(searcher) appears on one side of a
divider, while three (3) unmarried
a. participants of the other gender are on a. same
the other side of the divider. This
arrangement is done to ensure that the
searcher does not see the searchees.
Searcher asks a question to be answered
by each of the searchees. The purpose
b. is to determine who among the b. same
searchees is the most compatible with
the searcher.
Searcher speculates on
c. the match to the c. same
searchee.
Selection is made by
the use of Selection is based on
d. compute (sic) methods,or by the way d. the answer of
questions are answered, or similar the Searchees.
methods.
Set 2 Set 2
Same as above with the genders of the
same
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.

Copyright 2016 - Batas.org

Supreme Court of the Philippines

500 Phil. 628

SECOND DIVISION

G.R. NO. 161295, June 29, 2005

JESSIE G. CHING, PETITIONER, VS. WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR.,
JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (BOARD OF DIRECTORS AND OFFICERS OF WILAWARE PRODUCT
CORPORATION), RESPONDENTS.

DECISION

CALLEJO, SR., J.:

This petition for review on certiorari assails the Decision [1] and Resolution[2] of the Court of Appeals (CA)
in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders [3] of the Regional
Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos. 01-2401 and
01-2402 granted in favor of petitioner Jessie G. Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as Leaf Spring Eye Bushing for Automobile made up of
plastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright
Registration and Deposit of the said work described therein as Leaf Spring Eye Bushing for
Automobile.[4]

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers, producers
and/or distributors of the works.[5]

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William
Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation. It
was alleged that the respondents therein reproduced and distributed the said models penalized under
Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought the seizure of the
following:
a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plastic
polypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of polyvinyl
chloride plastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the manufacture/fabrication of
items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts. [6]

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the seizure of
the aforecited articles.[7] In the inventory submitted by the NBI agent, it appears that the following
articles/items were seized based on the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene 27 }
- C190 40 }
- C240 rear 41 } BAG 1
- C240 front

b) Polyvinyl Chloride Plastic 13 }

 - C190

c) Vehicle bearing cushion 11 }

- center bearing cushion

8}
Budder for C190 mold
Diesel Mold

1 set
a) Mold for spring eye bushing rear 1 set
b) Mold for spring eye bushing front
c) Mold for spring eye bushing for C190 1 set 1 piece of the set
d) Mold for C240 rear 2 sets
e) Mold for spring eye bushing for L300
f) Mold for leaf spring eye bushing C190 with 1 set
metal 1 set[8]
g) Mold for vehicle bearing cushion

The respondents filed a motion to quash the search warrants on the following grounds:
2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground
that:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaning there (sic) are
original parts that they are designed to replace. Hence, they are not original.[9]

The respondents averred that the works covered by the certificates issued by the National Library are not
artistic in nature; they are considered automotive spare parts and pertain to technology. They aver that
the models are not original, and as such are the proper subject of a patent, not copyright. [10]

In opposing the motion, the petitioner averred that the court which issued the search warrants was not
the proper forum in which to articulate the issue of the validity of the copyrights issued to him. Citing the
ruling of the Court in Malaloan v. Court of Appeals,[11] the petitioner stated that a search warrant is
merely a judicial process designed by the Rules of Court in anticipation of a criminal case. Until his
copyright was nullified in a proper proceeding, he enjoys rights of a registered owner/holder thereof.

On January 3, 2002, the trial court issued an Order[12] granting the motion, and quashed the search
warrant on its finding that there was no probable cause for its issuance. The court ruled that the work
covered by the certificates issued to the petitioner pertained to solutions to technical problems, not
literary and artistic as provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial courts Order of February 14,
2002, the petitioner filed a petition for certiorari in the CA, contending that the RTC had no jurisdiction to
delve into and resolve the validity of the copyright certificates issued to him by the National Library. He
insisted that his works are covered by Sections 172.1 and 172.2 of the Intellectual Property Code. The
petitioner averred that the copyright certificates are prima facie evidence of its validity, citing the ruling of
the United States Court of Appeals in Wildlife Express Corporation v. Carol Wright Sales, Inc. [13] The
petitioner asserted that the respondents failed to adduce evidence to support their motion to quash the
search warrants. The petitioner noted that respondent William Salinas, Jr. was not being honest, as he
was able to secure a similar copyright registration of a similar product from the National Library on
January 14, 2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the RTC did
not commit any grave abuse of its discretion in issuing the assailed order, to wit:
It is settled that preliminarily, there must be a finding that a specific offense must have been committed
to justify the issuance of a search warrant. In a number of cases decided by the Supreme Court, the
same is explicitly provided, thus:

The probable cause must be in connection with one specific offense, and the judge must, before issuing
the warrant, personally examine in the form of searching questions and answers, in writing and under
oath, the complainant and any witness he may produce, on facts personally known to them and attach to
the record their sworn statements together with any affidavit submitted.

In the determination of probable cause, the court must necessarily resolve whether or not an offense
exists to justify the issuance or quashal of the search warrant.

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but
subsequently quashed, for the offense of Violation of Class Designation of Copyrightable Works under
Section 177.1 in relation to Section 177.3 of Republic Act 8293, when the objects subject of the same,
are patently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works
(Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion
fall on neither classification. Accordingly, if, in the first place, the item subject of the petition is not
entitled to be protected by the law on copyright, how can there be any violation? [14]

The petitioners motion for reconsideration of the said decision suffered the same fate. The petitioner
forthwith filed the present petition for review on certiorari, contending that the revocation of his copyright
certificates should be raised in a direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of his
copyright in a proceeding to quash a search warrant for allegedly infringing items, the RTC committed a
grave abuse of its discretion when it declared that his works are not copyrightable in the first place. He
claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of the Philippines, which
took effect on January 1, 1998, provides in no uncertain terms that copyright protection automatically
attaches to a work by the sole fact of its creation, irrespective of its mode or form of expression, as well
as of its content, quality or purpose.[15] The law gives a non-inclusive definition of work as referring to
original intellectual creations in the literary and artistic domain protected from the moment of their
creation; and includes original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design and other works of applied art under Section 172.1(h) of R.A. No.
8293.

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to
which the petitioners utility designs were classified. Moreover, according to the petitioner, what the
Copyright Law protects is the authors intellectual creation, regardless of whether it is one with utilitarian
functions or incorporated in a useful article produced on an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry of an
article eligible for patent bars or invalidates its registration under the Law on Copyright. The test of
protection for the aesthetic is not beauty and utility, but art for the copyright and invention of original
and ornamental design for design patents.[16] In like manner, the fact that his utility designs or models for
articles of manufacture have been expressed in the field of automotive parts, or based on something
already in the public domain does not automatically remove them from the protection of the Law on
Copyright.[17]

The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same presumption
to an affidavit executed by an author who claims copyright ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search warrant means
merely a reasonable suspicion of the commission of the offense. It is not equivalent to absolute certainty
or a finding of actual and positive cause.[18] He assists that the determination of probable cause does not
concern the issue of whether or not the alleged work is copyrightable. He maintains that to justify a
finding of probable cause in the issuance of a search warrant, it is enough that there exists a reasonable
suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright is valid;
hence, the burden of overturning this presumption is on the alleged infringers, the respondents herein.
But this burden cannot be carried in a hearing on a proceeding to quash the search warrants, as the
issue therein is whether there was probable cause for the issuance of the search warrant. The petitioner
concludes that the issue of probable cause should be resolved without invalidating his copyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially a
technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e., from
rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong enough
to endure pressure brought about by the vibration of the counter bearing and thus brings bushings.
Such work, the respondents assert, is the subject of copyright under Section 172.1 of R.A. No. 8293. The
respondents posit that a technical solution in any field of human activity which is novel may be the
subject of a patent, and not of a copyright. They insist that the certificates issued by the National Library
are only certifications that, at a point in time, a certain work was deposited in the said office.
Furthermore, the registration of copyrights does not provide for automatic protection. Citing Section
218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if a party categorically
questions its existence and legality. Moreover, under Section 2, Rule 7 of the Implementing Rules of R.A.
No. 8293, the registration and deposit of work is not conclusive as to copyright outlay or the time of
copyright or the right of the copyright owner. The respondents maintain that a copyright exists only
when the work is covered by the protection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioners utility models are
copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing
that upon the filing of the application for search warrant, the RTC was duty-bound to determine whether
probable cause existed, in accordance with Section 4, Rule 126 of the Rules of Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. A search warrant shall not issue but upon probable cause
in connection with one specific offense to be determined personally by the judge after examination under
oath or affirmation of the complainant and the witnesses he may produce, and, particularly, describing
the place to be searched and the things to be seized.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93 ,[19] the Court held that in the
determination of probable cause, the court must necessarily resolve whether or not an offense exists to
justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed,
probable cause is deemed to exist only where facts and circumstances exist which could lead a
reasonably cautious and prudent man to believe that an offense has been committed or is being
committed. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant may be
issued for the search and seizure of personal property (a) subject of the offense; (b) stolen or embezzled
and other proceeds or fruits of the offense; or (c) used or intended to be used as the means of
committing an offense.

The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable
cause. The court cannot abdicate its constitutional obligation by refusing to determine whether an
offense has been committed.[20] The absence of probable cause will cause the outright nullification of the
search warrant.[21]

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie
Ching and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was
being copied and distributed by the respondents. Thus, the ownership of a valid copyright is essential. [22]

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality is

meant that the material was not copied, and evidences at least minimal creativity; that it was
independently created by the author and that it possesses at least same minimal degree of creativity. [23]
Copying is shown by proof of access to copyrighted material and substantial similarity between the two
works.[24] The applicant must thus demonstrate the existence and the validity of his copyright because in
the absence of copyright protection, even original creation may be freely copied. [25]

By requesting the NBI to investigate and, if feasible, file an application for a search warrant for
infringement under R.A. No. 8293 against the respondents, the petitioner thereby authorized the RTC (in
resolving the application), to delve into and determine the validity of the copyright which he claimed he
had over the utility models. The petitioner cannot seek relief from the RTC based on his claim that he
was the copyright owner over the utility models and, at the same time, repudiate the courts jurisdiction
to ascertain the validity of his claim without running afoul to the doctrine of estoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work or, in
its absence, other evidence.[26] A copyright certificate provides prima facie evidence of originality which is
one element of copyright validity. It constitutes prima facie evidence of both validity and ownership[27]
and the validity of the facts stated in the certificate. [28] The presumption of validity to a certificate of
copyright registration merely orders the burden of proof. The applicant should not ordinarily be forced,
in the first instance, to prove all the multiple facts that underline the validity of the copyright unless the
respondent, effectively challenging them, shifts the burden of doing so to the applicant. [29] Indeed,
Section 218.2 of R.A. No. 8293 provides:
218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates
if the defendant does not put in issue the question whether copyright subsists in the work or other
subject matter; and

(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner
of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the
question of his ownership.

A certificate of registration creates no rebuttable presumption of copyright validity where other evidence
in the record casts doubt on the question. In such a case, validity will not be presumed.[30]

To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A. No.
8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos. 2001-197
and 2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by the National
Library covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion
both classified under Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works, hereinafter referred to as
works, are original intellectual creations in the literary and artistic domain protected from the moment
of their creation and shall include in particular:
 ...

(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art.

Related to the provision is Section 171.10, which provides that a work of applied art is an artistic
creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced
on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial bore that is centrally located and provided with a
perpendicular flange on one of its ends and a cylindrical metal jacket surrounding the peripheral walls of
said body, with the bushing made of plastic that is either polyvinyl chloride or polypropylene. [31] Likewise,
the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi-circular body
having a central hole to secure a conventional bearing and a plurality of ridges provided therefore, with
said cushion bearing being made of the same plastic materials. [32] Plainly, these are not literary or artistic
works. They are not intellectual creations in the literary and artistic domain, or works of applied art.
They are certainly not ornamental designs or one having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art.[33] Works for applied art include
all original pictorials, graphics, and sculptural works that are intended to be or have been embodied in
useful article regardless of factors such as mass production, commercial exploitation, and the potential
availability of design patent protection.[34]

As gleaned from the description of the models and their objectives, these articles are useful articles which
are defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of
the article or to convey information. Indeed, while works of applied art, original intellectual, literary and
artistic works are copyrightable, useful articles and works of industrial design are not. [35] A useful article
may be copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable of existing independently of
the utilitarian aspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the authors
intellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a
useful article produced on an industrial scale, is protected by copyright law. However, the law refers to a
work of applied art which is an artistic creation. It bears stressing that there is no copyright protection
for works of applied art or industrial design which have aesthetic or artistic features that cannot be
identified separately from the utilitarian aspects of the article. [36] Functional components of useful articles,
no matter how artistically designed, have generally been denied copyright protection unless they are
separable from the useful article.[37]
In this case, the petitioners models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility
model as follows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber.
These rubber bushings after a time, upon subjecting them to so much or intermittent pressure would
eventually wore (sic) out that would cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile
that is made up of plastic.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of
polyvinyl chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both causes
cushion to the leaf spring, yet strong enough to endure pressure brought about by the up and down
movement of said leaf spring.

Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a much
longer life span than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a very
simple construction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is supplied
with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel material of the
leaf spring.

These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.

Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and

Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designated same
parts throughout, there is shown a utility model for a leaf-spring eye bushing for automobile generally
designated as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.

As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 on
one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said body 11.
When said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring eye (not
shown), which is also made of steel or cast steel. In effect, the bushing 10 will not be directly in contact
with steel, but rather the metal jacket, making the life of the bushing 10 longer than those without the
metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant soft
texture plastic or a hard polypropylene plastic, both are capable to endure the pressure applied thereto,
and, in effect, would lengthen the life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is insertably
provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17 accommodates or
engages with the leaf-spring bolt (not shown) connecting the leaf spring and the automobiles chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and cylindrical
as to its construction. Said another embodiment is also made of polypropylene or polyvinyl chloride
plastic material. The steel tube 17 and metal jacket 14 may also be applied to this embodiment as an
option thereof.[38]

VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard
rubber. These rubber bushings after a time, upon subjecting them to so much or intermittent pressure
would eventually be worn out that would cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up
of plastic.

Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride, an
oil resistant soft texture plastic material which causes cushion to the propellers center bearing, yet strong
enough to endure pressure brought about by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life span
than rubber bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple
construction and can be made using simple and ordinary molding equipment.
These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Figure 2 is a sectional view thereof.

Referring now to the several views of the drawing, wherein like reference numeral designate same parts
throughout, there is shown a utility model for a vehicle-bearing cushion generally designated as reference
numeral 10.

Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to house a
conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a plurality of
ridges 13 which serves reinforcing means thereof.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant
plastic material which is strong, durable and capable of enduring severe pressure from the center bearing
brought about by the rotating movement of the propeller shaft of the vehicle. [39]

A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of
the aforesaid.[40] Essentially, a utility model refers to an invention in the mechanical field. This is the
reason why its object is sometimes described as a device or useful object. [41] A utility model varies from
an invention, for which a patent for invention is, likewise, available, on at least three aspects: first, the
requisite of inventive step[42] in a patent for invention is not required; second, the maximum term of
protection is only seven years[43] compared to a patent which is twenty years,[44] both reckoned from the
date of the application; and third, the provisions on utility model dispense with its substantive
examination[45] and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of the components
they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They
lack the decorative quality or value that must characterize authentic works of applied art. They are not
even artistic creations with incidental utilitarian functions or works incorporated in a useful article. In
actuality, the personal properties described in the search warrants are mechanical works, the principal
function of which is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the
catch-all phrase other literary, scholarly, scientific and artistic works in Section 172.1(a) of R.A. No.
8293. Applying the principle of ejusdem generis which states that where a statute describes things of a
particular class or kind accompanied by words of a generic character, the generic word will usually be
limited to things of a similar nature with those particularly enumerated, unless there be something in the
context of the state which would repel such inference, [46] the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion are not copyrightable, being not of the same kind and nature as the works enumerated
in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion. Indeed, in Joaquin, Jr. v. Drilon[47] and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,[48] the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the
rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can
cover only the works falling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of copyright laws. In Kho v. Court of Appeals[49] and Pearl &
Dean (Phil.), Incorporated v. Shoemart, Incorporated,[50] the Court ruled that these copyright and patent
rights are completely distinct and separate from one another, and the protection afforded by one cannot
be used interchangeably to cover items or works that exclusively pertain to the others. The Court
expounded further, thus:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of
human activity which is new, involves an inventive step and is industrially applicable.

The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein[51] to
buttress his petition. In that case, the artifacts involved in that case were statuettes of dancing male and
female figures made of semi-vitreous china. The controversy therein centered on the fact that although
copyrighted as works of art, the statuettes were intended for use and used as bases for table lamps,
with electric wiring, sockets and lampshades attached. The issue raised was whether the statuettes were
copyright protected in the United States, considering that the copyright applicant intended primarily to
use them as lamp bases to be made and sold in quantity, and carried such intentions into effect. At that
time, the Copyright Office interpreted the 1909 Copyright Act to cover works of artistic craftsmanship
insofar as their form, but not the utilitarian aspects, were concerned. After reviewing the history and
intent of the US Congress on its copyright legislation and the interpretation of the copyright office, the US
Supreme Court declared that the statuettes were held copyrightable works of art or models or designs for
works of art. The High Court ruled that:
Works of art (Class G) (a) In General. This class includes works of artistic craftsmanship, in so far as
their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels,
glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and
sculpture.
So we have a contemporaneous and long-continued construction of the statutes by the agency charged
to administer them that would allow the registration of such a statuette as is in question here. [52]

The High Court went on to state that [t]he dichotomy of protection for the aesthetic is not beauty and
utility but art for the copyright and the invention of original and ornamental design for design patents.
Significantly, the copyright office promulgated a rule to implement Mazer to wit:

[I]f the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively
shaped will not qualify it as a work of art.

In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted,
utility models which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The
assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search
Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs
against the petitioner.

SO ORDERED.

Copyright 2016 - Batas.org

Supreme Court of the Philippines

258-A Phil. 841

SECOND DIVISION

G. R. No. 76193, November 09, 1989

UNITED FEATURE SYNDICATE, INC., PETITIONER, VS. MUNSINGWEAR CREATION

MANUFACTURING COMPANY, RESPONDENT.

DECISION

PARAS, J.:

This is a petition for review on certiorari filed by United Feature Syndicate, Inc., seeking to set aside the
Resolution of the Seventh Division of the Court of Appeal [*]s dated September 16, 1986 dismissing the
appeal of petitioner-appellant for having been filed out of time and denying its Motion for Reconsideration
for lack of merit in its Resolution dated October 14, 1986.

The Resolution dismissing the appeal, reads as follows:

"We agree wit the Philippine Patent Office and respondent-appellee that the decision of the
aforementioned office dated October 2, 1984 had already become final and executory at the time the
Notice of Appeal was filed.

"Our reason for this conclusion are borne out by the following facts:

"a) On October 2, 1984, the decision sought to be appealed was rendered by the Philippine Patent Office
and a copy thereof was received by counsel for petitioner-appellant on October 3, 1984 not October 9,
1984 as stated in Notice of Appeal. There can be no doubt about the decision having been received by
petitioner-appellant's counsel on October 3, 1984 for this is clearly written in the Notice of Decision (p.61,
Original Record), and in point of fact the date of receipt cannot be October 9, 1984, as declared in the
Notice of Appeal (p. 1, Rollo), because in the motion for reconsideration subsequently file petitioner-
appellant it was stated that a copy of the decision was received on October 4, 1987 (p. 80, Original
Record).

"b) On October 18, 1984 as shown in the stamp mark of the Philippine Patent Office (p. 80, Original
Record) or on the 15th and last day either for appealing or for moving for reconsideration, petitioner-
appellant filed a motion for reconsideration.

"Sadly and unexplainably for a veteran law office, said motion did not contain or incorporate a notice of
hearing.

"c) Possibly realizing the fatal defect in its motion for reconsideration, petitioner-appellant subsequently
filed a motion for set for hearing its motion for reconsideration. This was done, however, only on October
31, 1984 (p.162, Original Record).

"The motion for reconsideration filed on the last day, fatally failing as it did to contain a notice of hearing,
sail pleading did not interrupt the period for appealing, for the motion was noting but a piece of scrap
paper (Agricultural and Industrial Marketing, Inc. v. Court of Appeals, 118 SCRA [1982] 492; Republic
Planters Bank v. Intermediate Appellate Court, 13 SCRA [1984] 631).

"This deadly and moral deficiency in the motion for reconsideration, therefore, resulted in the decision of
the Philippine Patent Office being final and executory on October 19, 1984, the day after the motion for
reconsideration was filed, said motion having been filed on the 15 th and last day of appealing.

"WHEREFORE, the motion of respondent appellee is hereby granted and the appeal dismissed.

"SO ORDERED." (Rollo, pp. 42-43)

This case arose from a petition filed by petitioner for the cancellation of the resignation of trademark
CHARLIE BROWN (Regitration No. SR. 4224) in the name of respondent MUNSINGWEAR in Inter Partes
Case No. 1350 entitiled "United Feature Syndicate, Inc. v. Munsingwear Creation Mfg. Co., " with the
Philippine Patent Office alleging that petitioner is damaged by the registration of the trademark CHARLIE
BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in the
name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that respondent
was not entitled to the registration of the mark CHARLIE BROWN & DEVICE at the time of application for
registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration, the copyright to
which is exclusively owned worldwide by the petitioner; (3) that as the owner of the pictorial illustration
CHARLIE BROWN, petitioner has since 1950 and continuously up to the present, used and reproduced
the same to the execution of others; (4) that the respondent-registrant has no bona fide use of the
trademark in commerce in the Philippines prior to its application for registration. (Petition, p. 2, Rollo, p.
8)

On October 2, 1984 the Director of the Philippine Patent Office rendered a decision in this case holding
that a copyright registration like that of the name and likeness of CHARLIE BROWN may not provide a
cause of action for the cancellation of a trademark registration. (Petition, p. 4; Rollo, p. 10)

Petitioner filed a motion for reconsideration of the decision rendered by the Philippine Patent Office which
was denied by the Director of said office on the ground that the Decision No. 84-83 was already final and
executory. (Petition, Rollo, opp. 11-12)

From this decision, petitioner-appellant appealed to the Court of Appeals and respondent court its
resolution dated September 16, 1986 denied the appeal. While the Motion for Reconsideration was filed
on time, that is, on the last day within which to appeal, still it is mere scrap of paper because there was
no date of hearing stated therein.

Subsequently, peittioner-appellant filed a motion for reconsideration which public respondent denied for
lack of merit (Annex "B", Rollo, p. 45).

Hence this petition for review on certiorari.

In the resolution on April 6, 1987, the petition was given due course.

In its petition (Rollo, p. 10) and in its memorandum ( Rollo, p. 97), petitioner-appellant raised the
following legal issues:

WHETHER THE RESPONDENT COURT OF APPEALS ACTED IN EXCESS OF JURISDICTION AND/OR

COMMITTED GRAVE ABUSE OF DISCRETION WHEN IT BASED ITS RESOLUTION IN DISMISSING ITS
APPEAL ON STRICT TECHNICAL RULES OF PROCEDURE AS ENUNCIATED IN RULE 15 OF THE RULES OF
COURT INSTEAD OF RELYING ON THE POLICY OF THE PHILIPPINE PATENT OFFICE AS STRESSED IN
RULE 169, AS AMENDED, OF THE RULES OF PRACTICE IN TRADEMARK CASES.

II

WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION

AMOUNTING TO EXCESS OF JURISDICTION WHEN BY DISMISSING THE APPEAL TO IT FROM THE
DECISION OF THE DIRECTOR OF PATENTS, IT KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-
GR. SP. NO. 0342, WHICH WAS AFFIRMED BY THIS HONORABLE SUPREME COURT TO THE EFFECT
THAT A COPYRIGHTED CHARACTER MAY NOT BE APPROPRIATED AS A TRADEMARK BY ANOTHER
UNDER PRESIDENTIAL DECREE NO. 49.

III

WHETHER, ASSUMING ARGUENDO, BUT ONLY ASSUMING, THAT THE DECISION OF THE DIRECTOR OF
PATENTS IN THE CASE AT BAR HAD ALREADY BECOME FINAL WHEN IT WAS APPEALED TO THE COURT
OF APPEALS, THE LATTER, BY APPEALED FROM WAS RENDERED, SHOULD HAVE HARMONIZED THE
DECISION WITH LAW, THE DEMANDS OF JUSTICE AND EQUITY.

The petition is impressed with merit.

Petitioner's contention that the purpose of a notice of hearing to the adverse party is to afford him an
opportunity to resist the motion, more particularly the motion for reconsideration filed by its company is
well taken. Said purpose was served when Musingwear filed its opposition thereto on November 20, 1984
and cured the technical defect of lack of notice of hearing complained of ( Rollo, p. 52). Otherwise stated
such shortcomings of petitioner as to compliance with procedural requirements in taking its appeal
cannot be deemed sufficient to deprive it of a chance to secure a review by this court in order to obtain
substantial justice; more so where liberality accorded to the petitioner becomes compelling because of
the ostensible merit of petitioner's case (Olango v. Court of First Instance of Misamis Oriental, 121 SCRA
338 [1983]).

Moreover, in Siguenza v. Court of Appeals, (137 SCRA 570 [1985]) the Court stressed that the right to
appeal should not be lightly disregarded by a stringent application of rules of procedure especially where
the appeal is on its face meritorious and the interest of substantial justice would be served by permitting
the appeal.

"An appeal is an essential part of our judicial system. We have advised the courts to proceed with caution
so as not to deprive a part of the right to appeal. (National Waterworks and Sewerage Authority v.
Municipal of Libmanan, 97 SCRA 138) and instructed that every party-litigant should be afforded the
amplest opportunity for the proper and just disposition of his cause, freed from the constraints of
technicalities. (A-One Feeds, Inc. v. Court of Appeals, 100 SCRA 590).
"The rules of procedure are not to be applied in a very rigid and technical sense . The rules of procedure
are used only to help secure not override substantial justice . (Gregorio v. Court of Appeals, 72 SCRA
120), therefore, we ruled in Republic v. Court of Appeals, 72 SCRA 120), therefore, we ruled in Republic
v. Court of Appeals (83 SCRA 453) that a six day delay in the perfection of t he appeal does not warrant
its dismissal. And again in Ramos v. Bagaso, 96 SCRA 395, this Court held that the delay of four (4) days
in filling a notice of appeal and a motion for extension of time to file a record on appeal can be excused
on the basis of equity."

It was further emphasized that we allowed the filling of an appeal in some cases where a stringent
application of the rules would have denied it, or when to do so would serve the demands of substantial
justice and in the exercise of our equity jurisdiction (Serrano v. Court of Appeals, 139 SCRA 179 [1985]).

In the case at bar, the petitioner's delay in filing their record on appeal should not be strictly construed
as to deprive them of the right to appeal especially since on its face the appeal appears to be impressed
with merit. (Italics supplied). All aforementioned cases are cited in G.R. No. 76595, Pacific Asia Overseas
Shipping Corporation v. NLRC, et al., May 6, 1988.

Procedural technicality should not prevail over substantive rights of a party to appeal ( NEA v. CA, 126
SCRA 394).

Moreover, a judgment of the Court of Appeals that become final by reason of the mistake of the herein
petitioner's lawyer may still be reviewed on appeal by the Supreme Court particularly where the Supreme
Court already gave due course to the petition for review (Ernesto v. Court of Appeals, 116 SCRA 755
[1982]).

Where strong considerations of substantial justice are manifest in the petition, this Court may relax the
stringent application of technical rules in the exercise of equity jurisdiction. In addition to the basic merits
of the main case, such petition usually embodies justifying circumstances which warrant our heeding the
petitioner's cry for justice, inspite of the earlier negligence of counsel ( Serrano v. Court of Appeals, et al.,
139 SCRA 179 [1985]).

In a number of cases, this Court in the exercise of equity jurisdiction decided to disregard technicalities in
order to resolve the case on its merits based on the evidence ( St. Peter Memorial Park Inc., et al. v.
Cleofas, 121 SCRA 287 [1983]; Helmuth, Jr. v. People of the Philippines, 112 SCRA 573 [1983]).

This case brought before this Court for the resolution of the dismissal of appeal filed by petitioner-
appellant from the decision of the Director of the Philippines Patent Office for being filed out of time. The
normal action to take thereafter, would be to remand this case to the Court of Appeals for further
proceedings. However, in line with jurisprudence, such time consuming procedure may be properly
dispensed with to resolve the issue (Quisumbing v. Court of Appeals, 122 SCRA 709 [1983]) where there
is enough basis to end the basic controversy between the parties here and now. In this case at bar
dispensing with such procedural steps would not anyway affect substantially the merits of their respective
claims as held in Velasco v. Court of Appeals, (95 SCRA621 [1980] cited in Ortigas & Co. Ltd. v. Ruiz, 148
SCRA [1987]) hence the need for this Court to broaden its inquiry in this case and decide the same on
the merits rather than merely resolve the procedural question raised ( Dorado v. Court of Appeals, 153
SCRA 420 [1987]; De Lima v. Laguna Tayabas Co., 160 SCRA 70 [1988]).

Petitioner contends that it will be damaged by the registration of the trademark CHAELIE BROWN &
DEVICE in favor of private respondent and that it has a better right to CHARLIE BROWN appeared in
periodicals having worldwide distribution and covered by copyright registration in its name which
antedates the certificate of registration of respondent issued only on September 12, 1979. (Petition,
Rollo, p. 21)

Petitioner further stresses that Decision No. 84-83 (TM) promulgated by the Philippine Patent Office on
October 2, 1984 which held that "the name and likeness of CHARLIE BROWN may not provide a cause of
action for the cancellation of a trademark registration," was based in the conclusion made in the case of
"Children's Television Workshop v. Touch of Class" earlier decided by the Director of Patent Office on May
10, 1984. However, when the latter case was appealed to the then Intermediate Appellate Court,
docketed as A.C. G.R. SP No. 03432, the appellate court reversed the decision as illegal and contrary to
law. This reversal was affirmed by this Court on August 7, 1985 in G.R. No. 71210 by denying the petition
of respondent Touch of Class.

The Court of Appeals in reversing the Director of Patent's decision in Touch of Class, Inc. succintly
said:

"The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted. The 'Cookie Monster' is
not, however, a trademark. It is a character in a TV series entitled 'Sesame Street.' It was respondent
which appropriated the 'Cookie Monster' as a trademark, after it has been copyrighted. We hold that the
exclusive right secured by P.D. 49 to the petitioner precludes the appropriation of the 'Cookie Monster' by
the respondent."

Pertinenetly, Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on Intellectual
Property," provides:

"Section 2. The rights granted by this Decree shall, form the moment of creation, subsist with respect to
any of the following classes of works:

xxx xxx xxx

"(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. x x x"

Therefore, since the name CHARLIE BROWN" and its principal representation were covered by a
copyright registration way back in 1950 the same are entitled to protection under P.D. No. 49.
Aside from its copyright registration, petitioner is also the owner of several trademark registrations and
application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and
copyright of petitioner United Feature Syndicate, Inc. as early as 1957 and additionally also as TV
SPECIALS featuring the "PEANUTS" characters and "CHARLIE BROWN" (Memorandum, Rollo, p. 97
[211]).

An examination of the records show that the only appreciable defense of respondent-registrant is
embodied in its answer, which reads:

"It uses, the trademark 'CHARLIE BROWN' & 'DEVICE' on children's wear such as T-shirts, undershirts,
sweaters, brief and sandos, in class 25; whereas 'CHARLIE BROWN' is used only by petitioner as
character, in a pictorial illustration used in a comic strip appearing in newspapers and magazines. It has
no trademark significance and therefore respondent-registrant's use of 'CHARLIE BROWN' & 'DEVICE' is
not in conflict with petitioner's use of 'CHARLIE BROWN'" (Rollo, p. 97 [21]).

It is undeniable from the records that petitioner is the actual owner of said trademark due to its prior
registration with the Patent's Office.

Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez and Gobindram Hemandas Sujanani v. Hon.
Roberto V. Ongpin, et al., 129SCRA373 [1984], the Court declared:

"In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our
duties and the rights of foregoing states under the Paris Convention for the Protection of Industrial
Property to which the Philippines and (France) U.S. are parties. We are simply interpreting a solemn
international commitment of the Philippines embodied in a multilateral treaty to which we are a party and
which we entered into because it is in our national interest to do so.

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

SO ORDERED.

Copyright 2016 - Batas.org

Supreme Court of the Philippines

507 Phil. 375

FIRST DIVISION

G.R. NO. 165306, September 20, 2005

MANLY SPORTWEAR MANUFACTURING, INC., PETITIONER, VS. DADODETTE ENTERPRISES

AND/OR HERMES SPORTS CENTER, RESPONDENTS.

DECISION

YNARES-SANTIAGO, J.:

This petition for review on certiorari[1] under Rule 45 of the Revised Rules of Civil Procedure assails the
July 13, 2004 decision[2] of the Court of Appeals[3] in CA-G.R. SP No. 79887 and its September 15, 2004
resolution[4] denying reconsideration thereof.

The facts are as follows:

On March 14, 2003, Special Investigator Eliezer P. Salcedo of the National Bureau of Investigation (NBI)
applied for a search warrant before the Regional Trial Court (RTC) of Quezon City, based on the
information that Dadodette Enterprises and/or Hermes Sports Center were in possession of goods, the
copyright of which belonged to Manly Sportswear Mfg., Inc. (MANLY). [5]

After finding reasonable grounds that a violation of Sections 172 and 217 of Republic Act (RA) No. 8293 [6]
has been committed, Judge Estrella T. Estrada of RTC-Quezon City, Branch 83, issued on March 17, 2003
Search Warrant No. 4044(03).[7]

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

On June 10, 2003, the trial court granted the motion to quash and declared Search Warrant No. 4044(03)
null and void based on its finding that the copyrighted products of MANLY do not appear to be original
creations and were being manufactured and distributed by different companies locally and abroad under
various brands, and therefore unqualified for protection under Section 172 of RA 8293. Moreover,
MANLY's certificates of registrations were issued only in 2002, whereas there were certificates of
registrations for the same sports articles which were issued earlier than MANLY's, thus further negating
the claim that its copyrighted products were original creations. [8]
On August 11, 2003, the trial court denied[9] MANLY's motion for reconsideration. Hence it filed a petition
for certiorari[10] before the Court of Appeals which was denied for lack of merit. The appellate court
found that the trial court correctly granted the motion to quash and that its ruling in the ancillary
proceeding did not preempt the findings of the intellectual property court as it did not resolve with finality
the status or character of the seized items.

After denial of its motion for reconsideration on September 15, 2004, MANLY filed the instant petition for
review on certiorari raising the sole issue of whether or not the Court of Appeals erred in finding that the
trial court did not gravely abuse its discretion in declaring in the hearing for the quashal of the search
warrant that the copyrighted products of MANLY are not original creations subject to the protection of RA
8293.

We deny the petition.

The power to issue search warrants is exclusively vested with the trial judges in the exercise of their
judicial function.[11] As such, the power to quash the same also rests solely with them. After the judge
has issued a warrant, he is not precluded to subsequently quash the same, if he finds upon reevaluation
of the evidence that no probable cause exists.

Our ruling in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93[12] is instructive, thus:
Inherent in the courts' power to issue search warrants is the power to quash warrants already issued. In
this connection, this Court has ruled that the motion to quash should be filed in the court that issued the
warrant unless a criminal case has already been instituted in another court, in which case, the motion
should be filed with the latter. The ruling has since been incorporated in Rule 126 of the Revised Rules of
Criminal Procedure[.]

In the instant case, we find that the trial court did not abuse its discretion when it entertained the motion
to quash considering that no criminal action has yet been instituted when it was filed. The trial court also
properly quashed the search warrant it earlier issued after finding upon reevaluation of the evidence that
no probable cause exists to justify its issuance in the first place. As ruled by the trial court, the
copyrighted products do not appear to be original creations of MANLY and are not among the classes of
work enumerated under Section 172 of RA 8293. The trial court, thus, may not be faulted for
overturning its initial assessment that there was probable cause in view of its inherent power to issue
search warrants and to quash the same. No objection may be validly posed to an order quashing a
warrant already issued as the court must be provided with the opportunity to correct itself of an error
unwittingly committed, or, with like effect, to allow the aggrieved party the chance to convince the court
that its ruling is erroneous.

Moreover, the trial court was acting within bounds when it ruled, in an ancillary proceeding, that the
copyrighted products of petitioner are not original creations. This is because in the determination of the
existence of probable cause for the issuance or quashal of a warrant, it is inevitable that the court may
touch on issues properly threshed out in a regular proceeding. In so doing, it does not usurp the power
of, much less preclude, the court from making a final judicial determination of the issues in a full-blown
trial. Consequently, MANLY's assertion that the trial courts order quashing the warrant preempted the
finding of the intellectual property court has no legal basis.

As pertinently held in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93:[13]
When the court, in determining probable cause for issuing or quashing a search warrant, finds that no
offense has been committed, it does not interfere with or encroach upon the proceedings in the
preliminary investigation. The court does not oblige the investigating officer not to file an information for
the court's ruling that no crime exists is only for purposes of issuing or quashing the warrant. This does
not, as petitioners would like to believe, constitute a usurpation of the executive function. Indeed, to
shirk from this duty would amount to an abdication of a constitutional obligation.

...

... The finding by the court that no crime exists does not preclude the authorized officer conducting the
preliminary investigation from making his own determination that a crime has been committed and that
probable cause exists for purposes of filing the information.

As correctly observed by the Court of Appeals, the trial court's finding that the seized products are not
copyrightable was merely preliminary as it did not finally and permanently adjudicate on the status and
character of the seized items. MANLY could still file a separate copyright infringement suit against the
respondents because the order for the issuance or quashal of a warrant is not res judicata.

Thus, in Vlasons Enterprises Corporation v. Court of Appeals[14] we held that:

The proceeding for the seizure of property in virtue of a search warrant does not end with the actual
taking of the property by the proper officers and its delivery, usually constructive, to the court. The order
for the issuance of the warrant is not a final one and cannot constitute res judicata. Such an order does
not ascertain and adjudicate the permanent status or character of the seized property. By its very
nature, it is provisional, interlocutory. It is merely the first step in the process to determine the character
and title of the property. That determination is done in the criminal action involving the crime or crimes
in connection with which the search warrant was issued. Hence, such a criminal action should be
prosecuted, or commenced if not yet instituted, and prosecuted. The outcome of the criminal action will
dictate the disposition of the seized property...

We have also ruled in Ching v. Salinas, Sr., et al.[15] that:

The RTC had jurisdiction to delve into and resolve the issue whether the petitioner's utility models are
copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing
that upon the filing of the application for search warrant, the RTC was duty-bound to determine whether
probable cause existed, in accordance with Section 4, Rule 126 of the Rules of Criminal Procedure[.]

Further, the copyright certificates issued in favor of MANLY constitute merely prima facie evidence of
validity and ownership. However, no presumption of validity is created where other evidence exist that
may cast doubt on the copyright validity. Hence, where there is sufficient proof that the copyrighted
products are not original creations but are readily available in the market under various brands, as in this
case, validity and originality will not be presumed and the trial court may properly quash the issued
warrant for lack of probable cause.
Besides, no copyright accrues in favor of MANLY despite issuance of the certificates of registration and
deposit[16] pursuant to Section 2, Rule 7 of the Copyrights Safeguards and Regulations [17] which states:
Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the work is purely for
recording the date of registration and deposit of the work and shall not be conclusive as to copyright
ownership or the term of the copyrights or the rights of the copyright owner, including neighboring
rights.

At most, the certificates of registration and deposit issued by the National Library and the Supreme Court
Library serve merely as a notice of recording and registration of the work but do not confer any right or
title upon the registered copyright owner or automatically put his work under the protective mantle of the
copyright law. It is not a conclusive proof of copyright ownership. As it is, non-registration and deposit of
the work within the prescribed period only makes the copyright owner liable to pay a fine. [18]

WHEREFORE, the petition is DENIED. The July 13, 2004 decision of the Court of Appeals in CA-G.R.
SP No. 79887 and resolution dated September 15, 2004, are AFFIRMED.

SO ORDERED.

Davide, Jr., C.J. (Chairman), Quisumbing, Carpio, and Azcuna, JJ., concur.

[1]
Rollo, pp. 13-46.

[2]
CA Rollo, pp. 381-388.

[3]
Decision penned by Associate Justice Jose Catral Mendoza and concurred in by Associate Justices
Godardo A. Jacinto and Edgardo P. Cruz.

[4]
Rollo, pp. 9-10.

[5]
CA Rollo, pp. 68-70.

[6]
The Intellectual Property Code of the Philippines.

[7]
CA Rollo, pp. 101-102.

[8]
Id. at 59-62.

[9]
Id. at 51-54.

[10]
Id. at 2-50.
[11]
Section 2, Article III, 1987 Constitution.

[12]
422 Phil. 72, 83 [2001].

[13]
Id. at 86-87.

[14]
No. L-61688, 28 October 1987, 155 SCRA 186, 191.

[15]
G.R. No. 161295, 29 June 2005.

[16]
Section 191, RA No. 8293 provides:

Sec. 191. Registration and Deposit with National Library and the Supreme Court Library After the first
public dissemination of performance by authority of the copyright owner of a work falling under
Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of
the National Library and the Supreme Court Library, within three (3) weeks, be registered and deposited
with it, by personal delivery or by registered mail, two (2) complete copies or reproductions of the work
in such form as the directors of said libraries may prescribe. A certificate of deposit shall be issued for
which the prescribed fee shall be collected and the copyright owner shall be exempt from making
additional deposit of the works with the National Library and the Supreme Court Library under other laws.
If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for
such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright
owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the
National Library and the Supreme Court Library the amount of the retail price of the best edition of the
work. Only the above mentioned classes of work shall be accepted for deposit by the National Library and
the Supreme Court Library.

[17]
Issued on 13 August 1999 pursuant to Sec. 228 of RA No. 8293 which provides:

Sec. 228. Public Records The section or division of the National Library charged with receiving copies
and instruments deposited and with keeping records required under this Act and everything in it shall be
open to public inspection. The Director of the National Library is empowered to issue such safeguards
and regulations as may be necessary to implement this Section and other provisions of this Act.

[18]
Section 3, Rule 7, Copyrights Safeguards and Regulations

Copyright 2016 - Batas.org

Supreme Court of the Philippines

415 Phil. 365

SECOND DIVISION

G.R. No. 130360, August 15, 2001

WILSON ONG CHING KIAN CHUAN, PETITIONER, VS. HON. COURT OF APPEALS AND
LORENZO TAN, RESPONDENTS.

DECISION

QUISUMBING, J.:

This petition for review[1]seeks to annul the decision[2] dated August 27, 1997 of the Court of Appeals
which set aside the resolutions[3] dated October 13 and December 15, 1993 as well as the order dated
March 1, 1994 of the Regional Trial Court of Quezon City, Branch 94.[4]

Petitioner Wilson Ong Ching Kian Chuan (Ong), imports vermicelli from China National Cereals Oils and
Foodstuffs Import and Export Corporation, based in Beijing, China, under the firm name C.K.C. Trading.
He repacks it in cellophane wrappers with a design of two-dragons and the TOWER trademark on the
uppermost portion. Ong acquired a Certificate of Copyright Registration from the National Library on June
9, 1993 on the said design.

Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he imports from the same
company but based in Qingdao, China in a nearly identical wrapper. On September 16, 1993, Ong filed
against Tan a verified complaint for infringement of copyright with damages and prayer for temporary
restraining order or writ of preliminary injunction with the Regional Trial Court in Quezon City. Ong
alleged that he was the holder of a Certificate of Copyright Registration over the cellophane wrapper with
the two-dragon design, and that Tan used an identical wrapper in his business. In his prayer for a
preliminary injunction in addition to damages, he asked that Tan be restrained from using the wrapper.
He said he would post a bond to guarantee the payment of damages resulting from the issuance of the
writ of preliminary injunction.

The trial court issued a temporary restraining order on the same date the complaint was filed. Tan filed
an opposition to Ongs application for a writ of preliminary injunction with counter-application for the
issuance of a similar writ against Ong. Tan alleged that Ong was not entitled to an injunction. According
to Tan, Ong did not have a clear right over the use of the trademark Pagoda and Lungkow vermicelli as
these were registered in the name of CHINA NATIONAL CEREALS OIL AND FOODSTUFFS IMPORT AND
EXPORT CORPORATION, SHANDONG CEREALS AND OILS BRANCH (hereafter Ceroilfood Shandong),
based in Qingdao, China. Further, Tan averred that he was the exclusive distributor in the Philippines of
the Pagoda and Lungkow vermicelli and was solely authorized to use said trademark. He added that Ong
merely copied the two-dragon design from Ceroilfood Shandong which had the Certificates of Registration
issued by different countries. He concluded that Ongs Certificate of Copyright Registration was not valid
for lack of originality.

On September 30, 1993, Ong countered Tans opposition to the issuance of the writ of preliminary
injunction.

On October 13, 1993, the court issued the writ in Ongs favor upon his filing of a P100,000.00 bond. [5]

Tan filed a motion to dissolve the writ of preliminary injunction, but the trial court denied it on December
15, 1993.[6] The motion for reconsideration was also denied on March 1, 1994.

Tan elevated the case to the Court of Appeals via a special civil action for certiorari with a prayer for the
issuance of a TRO and/or writ of preliminary injunction. Ong filed an opposition to Tans prayer for an
issuance of TRO and/or writ of preliminary injunction on the ground that the trial court did not commit a
grave abuse of discretion in issuing the writ in his favor.

After oral argument, the Court of Appeals rendered a decision on August 8, 1994, setting aside the trial
courts order. It decreed:

WHEREFORE, the petition is GIVEN DUE COURSE, and GRANTED. The order dated October 13, 1993
and related orders, as well as the writ of preliminary injunction issued by the respondent court, are SET
ASIDE as issued with grave abuse of discretion. No costs.

SO ORDERED.[7]

Ong filed a motion for reconsideration and on January 3, 1995, the Court of Appeals modified its August
8, 1994 order as follows:

WHEREFORE the phrase the order dated October 13, 1993 and related orders, as well as the writ of
preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave abuse of
discretion is hereby deleted in our resolution dated 08 August 1994. In all other respects, said resolution
must be maintained.

However, let a writ of preliminary injunction be issued enjoining the herein respondents and any and all
persons acting for and in their behalf from enforcing and/or implementing the Writ of Preliminary
Injunction issued on October 15, 1993 pursuant to the Resolution dated October 13, 1993 of the PUBLIC
RESPONDENT in Civil Case No. Q-93-17628 entitled WILSON ONG CHING KIAN CHUAN, ETC. vs.
LORENZO TAN, ETC. upon petitioners filing of a bond of P200,000.00.

The Branch Clerk of Court of the RTC, Branch 94, Quezon City is directed to elevate the records of Civil
Case No. 293-17128 within TEN (10) DAYS from notice.
The parties are given THIRTY (30) DAYS from notice to file their memorandum or any pertinent
manifestation on the matter, after which the case shall be considered submitted for decision.

SO ORDERED.[8]

Pursuant to the Court of Appeals resolution on January 16, 1996, the parties submitted their
memoranda. On August 27, 1997, the appellate court promulgated its decision, decreeing as follows:

WHEREFORE, the resolutions dated October 13, 1993 and December 15, 1993 as well as the order
dated March 1, 1994 - all in Civil Case No. Q-93-17628 are hereby SET ASIDE and our injunction
heretofore issued made permanent.

IT IS SO ORDERED.[9]

On October 17, 1997, Ong filed the instant petition for review, claiming that the Court of Appeals
committed grave and serious errors tantamount to acting with grave abuse of discretion and/or acting
without or in excess of its jurisdiction:

I. WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE

RESPONDENT WHEN THE LATTERS RIGHT TO SUCH A RELIEF IS NOT CLEAR, DOUBTFUL AND
HAS NO LEGAL OR FACTUAL BASIS.

A. CERTIFICATE OF COPYRIGHT REGISTRATION JUSTIFY ISSUANCE OF WRIT OF PRELIMINARY

INJUNCTION UNDER P.D. NO. 49.

B. ISSUANCE OF PRELIMINARY INJUNCTION MUST BE BASED ON CLEAR AND UNMISTAKABLE

RIGHT WHICH PETITIONER HAD AND WHICH RIGHT WAS INVADED BY THE PRIVATE
RESPONDENT.

C. COURT OF APPEALS DECISION OF AUGUST 8, 1994 AND ITS RESOLUTION OF JANUARY 3,

1995 RESULTS IN CONFUSION.

II. BY INTERFERING WITH THE JUDICIAL DISCRETION OF THE TRIAL COURT.

A. RESPONDENT COURT OF APPEALS INTERFERENCE WITH THE DISCRETION OF TRIAL COURT

CONSTITUTES GRAVE ABUSE OF DISCRETION.

III. BY ISSUING A WRIT OF PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE RESPONDENT

AND DISREGARDING THE WRIT OF PRELIMINARY INJUNCTION ISSUED BY THE TRIAL COURT
WHOM (SIC), UNDER THE JANUARY 13, 1995 RESOLUTION OF RESPONDENT COURT OF
APPEALS, WAS JUDICIALLY HELD NOT TO HAVE COMMITTED ANY GRAVE ABUSE OF
DISCRETION IN THE ISSUANCE OF THE OCTOBER 13, 1993 AND RELATED ORDERS.
 A. ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION ADDRESSED TO THE SOUND
DISCRETION OF THE TRIAL COURT.

IV. WHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS, PRE-EMPTING THE TRIAL COURT
AND PRE-JUDGING THE CASE, THUS LEAVING THE TRIAL COURT WITH NOTHING TO RULE
UPON.

A. COURT OF APPEALS PREJUDGED THE CASE REMANDED TO THE TRIAL COURT

The issues for our determination are: Was the issuance of the writ of preliminary injunction proper? Was
there grave abuse of discretion committed by the Court of Appeals when it set aside the order of the trial
court, then issued a judgment touching on the merits?

Petitioner avers that the CA erred in issuing a preliminary injunction in private respondents favor. He
says, firstly, that he is more entitled to it. He states that as holder of the Certificate of Copyright
Registration of the twin-dragon design, he has the protection of P.D. No. 49. [10] Said law allows an
injunction in case of infringement. Petitioner asserts that private respondent has no registered copyright
and merely relies on the trademark of his principal abroad, which insofar as Philippine laws is concerned,
cannot prevail over the petitioners copyright.

Private respondent, for his part, avers that petitioner has no clear right over the use of the copyrighted
wrapper since the PAGODA trademark and label were first adopted and used and have been duly
registered by Ceroilfood Shandong not only in China but in nearly 20 countries and regions worldwide.
Petitioner was not the original creator of the label, but merely copied the design of Ceroilfood Shandong.
Private respondent presented copies of the certificates of copyright registration in the name of Ceroilfood
Shandong issued by at least twenty countries and regions worldwide which although unauthenticated are,
according to him, sufficient to provide a sampling of the evidence needed in the determination of the
grant of preliminary injunction.[11] Private respondent alleges, that the trademark PAGODA BRAND was
registered in China on October 31, 1979[12] while the trademark LUNGKOW VERMICELLI WITH TWO-
DRAGON DEVICE was registered on August 15, 1985.[13]

To resolve this controversy, we have to return to basics. A person to be entitled to a copyright must be
the original creator of the work. He must have created it by his own skill, labor and judgment without
directly copying or evasively imitating the work of another. [14] The grant of preliminary injunction in a
case rests on the sound discretion of the court with the caveat that it should be made with extreme
caution.[15] Its grant depends chiefly on the extent of doubt on the validity of the copyright, existence of
infringement, and the damages sustained by such infringement. [16] In our view, the copies of the
certificates of copyright registered in the name of Ceroilfood Shandong sufficiently raise reasonable
doubt. With such a doubt, the preliminary injunction is unavailing. [17] In Medina vs. City Sheriff, Manila,
276 SCRA 133, 139 (1997), where the complainants title was disputed, we held that injunction was not
proper.
Petitioner Ong argues that the Court of Appeals erred and contradicted itself in its January 3, 1995
Resolution, where it deleted the phrase the order dated October 13, 1993 and related orders, as well as
the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave
abuse of discretion in its August 8, 1994 decision, and at the same time issued a writ of preliminary
injunction in Tans favor.

Ongs claim (that the Court of Appeals in deleting the aforequoted phrase in the August 8, 1994 decision
abandoned its earlier finding of grave abuse of discretion on the part of the trial court), however, is
without logical basis. The appellate court merely restated in its own words the issue raised in the petition:
from a) whether the RTC committed grave abuse of discretion, to b) whether Tan was entitled to an
injunctive relief. Then it clarified that the relief sought is a prohibition against Ong and his agents from
enforcing the writ of preliminary injunction. Properly understood, an order enjoining the enforcement of a
writ of preliminary injunction issued by the RTC in a certiorari proceeding under Rule 65 of the Rules of
Court effectively sets aside the RTC order for being issued with grave abuse of discretion.

To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and
unmistakable right and an urgent and paramount necessity for the writ to prevent serious damage. [18]
From the above discussion, we find that petitioners right has not been clearly and unmistakably
demonstrated. That right is what is in dispute and has yet to be determined. In Developers Group of
Companies, Inc. vs. Court of Appeals, 219 SCRA 715, 722-723 (1993), we held that in the absence of
proof of a legal right and the injury sustained by the plaintiff, an order of the trial court granting the
issuance of an injunctive writ will be set aside, for having been issued with grave abuse of discretion.
Conformably, there was no abuse of discretion by the Court of Appeals when it issued its own order to
restrain the enforcement of the preliminary injunction issued by the trial court.

Finally, we note that the complaint initially filed with the RTC was for infringement of copyright. The trial
courts resolution subject of Tans petition under Rule 65 before the CA concerns the correctness of the
grant of the writ of preliminary injunction. The only issue brought before the CA involved the grave abuse
of discretion allegedly committed by the trial court in granting the writ of preliminary injunction. The
Court of Appeals in declaring that the wrapper of petitioner is a copy of Ceroilfood Shandongs wrapper
went beyond that issue and touched on the merits of the infringement case, which remains to be decided
by the trial court.[19] In our view, it was premature for the Court of Appeals to declare that the design of
petitioners wrapper is a copy of the wrapper allegedly registered by Ceroilfood Shandong. That matter
remains for decision after appropriate proceedings at the trial court.

WHEREFORE, the instant petition is PARTIALLY GRANTED. The prayer for a writ of preliminary
injunction to prohibit Tan from using the cellophane wrapper with two-dragon device is denied, but the
finding of the respondent appellate court that Ongs copyrighted wrapper is a copy of that of Ceroilfood
Shandong is SET ASIDE for being premature. The Regional Trial Court of Quezon City, Branch 94, is
directed to proceed with the trial to determine the merits of Civil Case No. 33779 expeditiously. Let the
records of this case be REMANDED to said trial court promptly.

No pronouncement as to costs.
SO ORDERED.

[10]
PD 49, Chapter I, Sec. 2. The rights granted by this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of works:
xxx

(o) Prints, pictorial, illustrations, advertising copies, labels, tags, and box wraps.
Chapter II, Article VI, Sec. 28. Any person infringing a copyright shall be liable:
(a) To an injunction restraining such infringement.

Copyright 2016 - Batas.org

Supreme Court of the Philippines

120 Phil. 1112

G.R. No. L-19439, October 31, 1964

MAURO MALANG SANTOS, PLAINTIFF AND APPELLANT, VS. MC-CULLOUGH PRINTING

COMPANY, DEFENDANT AND APPELLEE.

DECISION

PAREDES, J.:

This is an action for damages based on the provisions of Articles 721 and 722 of the Civil Code of the
Philippines, allegedly on the unauthorized use, adoption and appropriation by the defendant company of
plaintiff's intellectual creation or artistic design for a Christmas card. The design depicts "a Philippine rural
Christmas time scene consisting of a woman and a child in nipa hut adorned with a star shaped lantern
and a man astride a carabao beside a tree, underneath which appears the plaintiff's Pen name, Malang".

The complaint alleges that plaintiff Mauro Malang Santos, designed for former Ambassador Felino Neri,
for his Personal Christmas card greetings for the year 1950, the artistic motif in question. The following
year the defendant McCuUough Printing Company, without the knowledge and authority of plaintiff,
displayed the very design in its album of Christmas card and offered it for sale, for a price. For such
unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it
has placed plaintiff's professional integrity and ethics under serious question and caused him grave
embarrassment before Ambassador Neri. He further prayed for the additional sum of P3,000.00 by way of
attorney's fee.

Defendant in answer to the complaint, after some denials and admissions, moved for a dismissal of the
action, claiming that

(1) The design claimed does not contain a clear notice that it belonged to him and that he prohibited its
use by others;

(2) The design in question has been published but does not contain a notice of copyright, as in fact it had
never been copyrighted by the plaintiff, for which reason this action is barred by the Copyright Law;

(3) The complaint does not state a cause of action.

The documentary evidence submitted were the Christmas cards, as originally designed by plaintiff, the
design as printed for Ambassador Neri, and the subsequent reprints ordered by other parties. The case
was submitted on a "Stipulation of Facts", the pertinent portions of which are hereundcr reproduced:

"1. That the plaintiff was the artist who created the design shown in Exhibit A, * * *

2. That the design carries the pen name of plaintiff, MALANG, on its face * * * and indicated in Exhibit A,
***

3. That said design was created by plaintiff in the latter part of 1959 for the personal use of former
Ambassador Felino Neri; * * *

4. That former Ambassador Neri had 800 such cards * * * printed by the defendant company in 1959, *
* * which he distributed to his friends in December, 1959;

5. That defendant company utilized plaintiff's design the year 1960 in its album of Christmas card
samples displayed to its customers * * *.

6. That the Sampaguita Pictures, Inc. placed an order with defendant company for 700 of said cards * *
* while Raul Urra & Co. ordered 200 * * *, which cards were sent out by them to their respective
correspondents, clients and friends during the Christmas season of 1960;

7. That defendant company's use of plaintiff's design was without knowledge, authority or consent of
plaintiff;

8. That said design has not yet been copyrighted;

9. That plaintiff is an artist of established name, goodwill and reputation. * * *."

Upon the basis of the facts stipulated, the lower court rendered judgment on December 1, 1961, the
pertinent portions of which are recited below:

"As a general proposition, there can be no dispute that the artist acquires ownership of the product of his
art. At the time of its creation, he has the absolute dominion over it. To help the author protect his rights
the copyright law was enacted.

"In intellectual creation, a distinction must be made between two classes of property rights: the fact of
authorship and the right to publish and/or distribute copies of the creation. With regards to the first, i.e.,
the fact of authorship, the artist cannot be divested of the same. In other words, he may sell the right to
print hundred of his work yet the purchaser of said right can never be the author of the creation.

"It is the second right, i.e., the right to publish, republish, multiply and/or distribute copies of the
intellectual creation which the state, Ihrough the enactment of the copyright law, seeks to protect. The
author or his assigns or heirs may have the work copyrighted and once this is legally accomplished any
infringement of the copyright will render the infringer liable to the owner of the copyright.

xxxxxxxxxx

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

"Unless satisfactorily explained a i!lay in applying for a copyright, of more than thirty days from the date
of its publication converts the property to one of public domain.

"Since the name of the author appears in each of the alleged infringing copies of the intellectual creation,
the defendant may not be said to have pirated the work nor guilty of plagiarism. Consequently, the
complaint does not state a cause of action against the defendant.

xxxxxxxxxx

WHEREFORE, the Court dismisses the complaint without pronouncement as to costs."

In his appeal to this Court, plaintiff-appellant pointed five (5) errors allegedly committed by the trial
court, all of which bring to the fore, the following propositions, (1) whether plaintiff is entitled to
protection, notwithstanding the fact that he has not copyrighted his design; (2) whether the publication is
limited, so as to prohibit its use of by others, or it is general publication, and (3) whether the provisions
of the Civil Code or the Copyright Law should apply in the case. We will undertake a collective discussion
of these propositions.

Under the established facts, We find that plaintiff is not entitled to a protection, the provision of the Civil
Code, notwithstanding. Paragraph H3 of Patent Office Administrative Order No. 3 (as amended, dated
September 18, 1947) entitled "Rules of Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims", promulgated pursuant to Republic Act 165, provides, among others,
that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila,
or within sixty (60) days if made elsewhere, failure of which renders such creation public property. In the
case at bar, even as of this moment, there is no copyright for the design in question. We are not also
prepared to accept the contention of appellant that the publication of the design was a limited one, or
that there was an understanding that only Ambassador Neri should have absolute right to use the same.
In the first place if such were the condition, then Ambassador Neri would be the aggrieved party, and not
the appellant. In the second place, if there was such a limited publication or prohibition, the same was
not shown on the face of the design. When the purpose is a limited publication, but the effect is general
publication, irrevocable rights thereupon become vested in the public, in consequence of which
enforcement of the restriction becomes impossible (Nutt vs. National Institute, 31 F [2d] 236). It has
been held that the effect of offering for sale a dress, for example, manufactured in accordance with an
original design which is not protected by either a copyright or a patent, is to divest the owner of his
common law rights therein by virtue of the publication of a 'copy' and thereafter anyone is free to copy
the design or the dress (Fashion Originators Guild of America vs. Federal Trade Commission, 114 F [2d]
80). When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff lost control
of his design and the necessary implication was that there had been a general publication, there having
been no showing of a clear indication that a limited publication was intended. The author of a literary
composition has a right to the first publication thereof. He has a right to determine whether it shall be
published at all, and if published, when, where, by whom, and in what form. The exclusive right it
confined to the first publication. When once published, it is dedicated to the public, and the author loses
the exclusive right to control subsequent publication by others, unless the work is placed under the
protection of the copy right law, (See II Tolentino's Comments on the Civil Code, P. 433, citing Wright vs.
Eisle, 83 N.Y. Supp. 887.)

Conformably with all the foregoing. We find that the errors assigned have not been committed by the
lower court. The decision appealed from, therefore, should be, as it is hereby affirmed. Costs taxed
against plaintiff-appellant.

Bengzon C. J., Bautista Angelo, Concepcion, Reyes, J. B. L., Barrera, Dizon, Makalintal, Bengzon, J. P.,
and Zaldivar, JJ., concur.

Copyright 2016 - Batas.org

Supreme Court of the Philippines

 SECOND DIVISION

G.R. No. 195956, March 11, 2015

ABS-CBN CORPORATION, PETITIONER, VS. FELIPE GOZON, GILBERTO R. DUAVIT, JR.,

MARISSA L. FLORES, JESSICA A. SOHO, GRACE DELA PEA-REYES, JOHN OLIVER T.
MANALASTAS, JOHN DOES AND JANE DOES, RESPONDENTS.

DECISION

LEONEN, J.:

The main issue in this case is whether there is probable cause to charge respondents with infringement
under Republic Act No. 8293, otherwise known as the Intellectual Property Code. The resolution of this
issue requires clarification of the concept of "copyrightable material" in relation to material that is
rebroadcast live as a news story. We are also asked to rule on whether criminal prosecution for
infringement of copyrightable material, such as live rebroadcast, can be negated by good faith.

ABS-CBN Corporation (ABS-CBN) filed the Petition for Review on Certiorari [1] to assail the November 9,
2010 Decision[2] and the March 3, 2011 Resolution[3] of the Court of Appeals. The Court of Appeals
reinstated the Department of Justice Resolution dated August 1, 2005 that ordered the withdrawal of the
Information finding probable cause for respondents' violation of Sections 177 [4] and 211[5] of the
Intellectual Property Code.[6] Respondents are officers and employees of GMA Network, Inc. (GMA-7).
They are: Felipe Gozon (Gozon), GMA-7 President; Gilberto R. Duavit, Jr. (Duavit, Jr.), Executive Vice-
President; Marissa L. Flores (Flores), Vice-President for News and Public Affairs; Jessica A. Soho (Soho),
Director for News; Grace Dla Pea-Reyes (Dela Pea-Reyes), Head of News and Public Affairs; John
Oliver Manalastas '(Manalastas), Program Manager; and others.

The controversy arose from GMA-7's news coverage on the homecoming of Filipino overseas worker and
hostage victim Angelo dela Cruz on July 22, 2004. As summarized by the Court of Appeals:
Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a condition for his
release, a demand was made for the withdrawal of Filipino troops in Iraq. After negotiations, he was
released by his captors and was scheduled to return to the country in the afternoon of 22 July 2004.
Occasioned by said homecoming and the public interest it generated, both . . . GMA Network, Inc. . . .
and [petitioner] made their respective broadcasts and coverage of the live event. [7]

ABS-CBN "conducted live audio-video coverage of and broadcasted the arrival of Angelo dela Cruz at the
Ninoy Aquino International Airport (NAIA) and the subsequent press conference." [8] ABS-CBN allowed
Reuters Television Service (Reuters) to air the footages it had taken earlier under a special embargo
agreement.[9]
ABS-CBN alleged that under the special embargo agreement, any of the footages it took would be for the
"use of Renter's international subscribers only, and shall be considered and treated by Reuters under
'embargo' against use by other subscribers in the Philippines. . . . [N]o other Philippine subscriber of
Reuters would be allowed to use ABS-CBN footage without the latter's consent." [10]

GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Pea-Reyes, and Manalastas are connected,
"assigned and stationed news reporters and technical men at the NAIA for its live broadcast and non-live
news coverage of the arrival of dela Cruz."[11] GMA-7 subscribes to both Reuters and Cable News Network
(CNN). It received a live video feed of the coverage of Angelo dela Cruz's arrival from Reuters. [12]

GMA-7 immediately carried the live newsfeed in its program "Flash Report," together with its live
broadcast.[13] Allegedly, GMA-7 did not receive any notice or was not aware that Reuters was airing
footages of ABS-CBN.[14] GMA-7's news control room staff saw neither the "No Access Philippines" notice
nor a notice that the video feed was under embargo in favor of ABS-CBN. [15]

On August 13, 2004, ABS-CBN filed the Complaint for copyright infringement under Sections 177 [16] and
211[17] of the Intellectual Property Code.[18]

On December 3, 2004, Assistant City Prosecutor Dindo Venturanza issued the Resolution [19] finding
probable cause to indict Dela Pea-Reyes and Manalastas.[20] Consequently, the Information[21] for
violation of the Intellectual Property Code was filed on December 17, 2004. It reads:
That on or about the 22nd of July 2004, in Quezon City, Philippines, the above-named accused, conspiring
together, confederating with and mutually helping each other, being the Head of News Operations and
the Program Manager, respectively, for the News and Public Affairs Department of GMA Network, Inc.,
did then and there, willfully, unlawfully and feloniously use and broadcast the footage of the arrival of
Angelo [d]ela Cruz at the Ninoy Aquino International Airport of which ABS-CBN holds the exclusive
ownership and copyright by then and there using, airing, and broadcasting the said footage in its news
program "FLASH REPORT" without first obtaining the consent or authority of said copyright owner, to
their damage and prejudice.

Contrary to law.[22]

On January 4, 2005, respondents filed the Petition for Review before the Department of Justice. [23] In the
Resolution (Gonzalez Resolution) dated August 1, 2005, Department of Justice Secretary Raul M.
Gonzalez (Secretary Gonzalez) ruled in favor of respondents and held that good faith may be raised as a
defense in the case.[24] The dispositive portion of the Resolution reads:
WHEREFORE, THE PETITION FOR REVIEW FILED BY GMA-7 in I.S. No. 04-10458 is considered
meritorious and is hereby GRANTED. This case is hereby Dismissed, the resolution of the City
Prosecutor of Quezon City is hereby reversed and the same is ordered to withdraw the information if any
and report action taken to this office within ten (10) days.[25] (Emphasis in the original)

Both parties moved for reconsideration of the Gonzalez Resolution.[26]

Meanwhile, on January 19, 2005, the trial court granted the Motion to Suspend Proceedings filed earlier
by Dela Pea-Reyes and Manalastas.[27] The trial court Order reads:
Perusing the motion, the court finds that a petition for review was filed with the Department of Justice on
January 5, 2005 as confirmed by the public prosecutor. Under Section 11 (c), Rule 116 of the Rules of
Criminal Procedure, once a petition for review is filed with the Department of Justice, a suspension of the
criminal proceedings may be allowed by the court.

Accordingly, to allow the Department of Justice the opportunity to act on said petition for review, let the
proceedings on this case be suspended for a period of sixty (60) days counted from January 5, 2005, the
date the petition was filed with the Department of Justice. The arraignment of the accused on February
1, 2005 is accordingly cancelled. Let the arraignment be rescheduled to March 8, 2005 at 8:30 a.m. The
accused through counsel are notified in open court.

SO ORDERED.[28]

On June 29, 2010, Department of Justice Acting Secretary Alberto C. Agra (Secretary Agra) issued the
Resolution (Agra Resolution) that reversed the Gonzalez Resolution and found probable cause to charge
Dela Pea-Reyes and Manalastas for violation of the Intellectual Property Code. [29] Secretary Agra also
found probable cause to indict Gozon, Duavit, Jr., Flores, and Soho for the same violation. [30] He ruled
that:
[w]hile good faith may be a defense in copyright infringement, the same is a disputable presumption that
must be proven in a full-blown trial. Disputable presumptions may be contradicted and overcome by
other evidence. Thus, a full-blown trial is the proper venue where facts, issues and laws are evaluated
and considered. The very purpose of trial is to allow a party to present evidence to overcome the
disputable presumptions involved.[31]

The dispositive portion of the Agra Resolution provides:

WHEREFORE, premises considered:

(a) The Motion for Reconsideration filed by appellees ABS-CBN Broadcasting Corporation (ABS-CBN)
of our Resolution promulgated on August 1, 2005 (Resolution No. 364, Series of 2005) and the Petition
for Review filed by complainant-appellant ABS-CBN in I.S. No. 04-10458 on April 10, 2006, are
GRANTED and the City Prosecutor of Quezon City is hereby ordered to file the necessary Information for
violation of Section 177 and 211 of Republic Act No. 8293 against GMA-7. Felipe L. Gozon, Gilberto R.
Duavit, Jr., Marissa L. Flores, Jessica A. Soho, Grace Dela Pena-Reyes, John Oliver T. Manalastas[.]

SO ORDERED.[32] (Emphasis in the original)

Respondents assailed the Agra Resolution through the Petition for Certiorari with prayer for issuance of a
temporary restraining order and/or Writ of Preliminary Injunction on September 2, 2010 before the Court
of Appeals. In the Resolution dated September 13, 2010, the Court of Appeals granted the temporary
restraining order preventing the Department of Justice from enforcing the Agra Resolution. [33]

On November 9, 2010, the Court of Appeals rendered the Decision granting the Petition and reversing
and setting aside the Agra Resolution.[34] The Court of Appeals held that Secretary Agra committed errors
of jurisdiction in issuing the assailed Resolution. Resolving the issue of copyright infringement, the Court
of Appeals said:
Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed,
petitioner GMA is liable under the provisions of the Intellectual Property Code, which was enacted
purposely to protect copyright owners from infringement. However, it is an admitted fact that petitioner
GMA had only aired a five (5) second footage of the disputed live video feed that it had received from
Reuters and CNN as a subscriber. Indeed, petitioners had no notice of the right of ownership of private
respondent over the same. Without notice of the "No Access Philippines" restriction of the live video feed,
petitioner cannot he faulted for airing a live video feed from Reuters and CNN.

Verily, as aptly opined by Secretary Gonzalez in his earlier Resolution, the act of petitioners in airing the
five (5) second footage was undeniably attended by good faith and it thus serves to exculpate them from
criminal liability under the Code. While the Intellectual Properly Code is a special law, and thus generally
categorized as malum prohibitum, it bears to stress that the provisions of the Code itself do not ipso
facto penalize a person or entity for copyright infringement by the mere fact that one had used a
copyrighted work or material.

Certainly so, in the exercise of one's moral and economic or copyrights, the very provisions of Part IV of
the Intellectual Property Code provide for the scope and limitations on copyright protection under Section
184 and in fact permit fair use of copyrighted work under Section 185. With the aforesaid statutory
limitations on one's economic and copyrights and the allowable instances where the other persons can
legally use a copyrighted work, criminal culpability clearly attaches only when the infringement had been
knowingly and intentionally committed.[35] (Emphasis supplied)

The dispositive portion of the Decision reads:

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.

The trial court granted respondents' Motion to Suspend Proceedings and deferred respondents Dela
Pea-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":[42]
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 Pea-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. Sandiganbayan[61]:

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.

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":[76]
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 shows [90] (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 x x But there is a
clear distinction between the books, as such, and the art, which it is, intended to illustrate. The mere
statement of the proposition is so evident that it requires hardly any argument to support ii. The same
distinction may be predicated of every other art as well as that of bookkeeping.

A treatise on the composition and use of medicines, be they old or new; on the construction and use of
ploughs or watches or churns; or on the mixture and application of colors for painting or dyeing; or on
the mode of drawing lines to produce the effect of perspective, would be the subject of copyright; but no
one would contend that the copyright of the treatise would give the exclusive right to the art or
manufacture described therein. The copyright of the book, if not pirated from other works, would be valid
without regard to the novelty or want of novelty of its subject matter. The novelty of the art or thing
described or explained has nothing to do with the validity of the copyright. To give to the author of the
book an exclusive property in the art described therein, when no examination of its novelty has ever been
officially made, would be a surprise and a fraud upon the public. That is the province of letters patent,
not of copyright. The claim to an invention of discovery of an art or manufacture must be subjected to
the examination of the Patent Office before an exclusive right therein can be obtained; and a patent from
the government can only secure it.

The difference between the two things, letters patent and copyright, may be illustrated by reference to
the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great
value in the healing art. If the discoverer writes and publishes a book on the subject (as regular
physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he
gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the
mixture as a new art, manufacture or composition of matter. He may copyright his book, if he pleases;
but that only secures to him the exclusive right of printing and publishing his book. So of all other
inventions or discoveries.

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,
gives no exclusive right to the modes of drawing described, though they may never have been known or
used before. By publishing the book without getting a patent for the art, the latter is given to the public.
. . . .

Now, whilst no one has a right to print or publish his book or any material part thereof, as a hook
intended to convey instruction in the art, any person may practice and use the, art itself which he has
described and illustrated therein. The use of the art is a totally different thing from a publication of the
book, explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make,
sell and use account books prepared upon the plan set forth in such book. Whether the art might or
might not have been patented, is a question, which is not before us. It was not patented, and is open
and free to the use of the public. And, of course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.

The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in the books, which have been made the subject of
copyright. In describing the art, the illustrations and diagrams employed happened to correspond more
closely than usual with the actual work performed by the operator who uses the art. x x x The description
of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim
to the art itself. The object of the one is explanation; the object of the other is use. The former may be
secured by copyright. The latter can only be secured, if it can be secured at all, by letters patent." [94]
(Emphasis supplied)

News or the event itself is not copyrightable. However, an event can be captured and presented in a
specific medium. As recognized by this court in Joaquin, television "involves a whole spectrum of visuals
and effects, video and audio."[95] News coverage in television involves framing shots, using images,
graphics, and sound effects. It involves creative process and originality. Television news footage is an
expression of the news.

In the United States, a line of cases dwelt on the possibility of television newscasts to be copyrighted. [97]
Most of these cases focused on private individuals' sale or resale of tapes of news broadcasts. Conflicting
decisions were rendered by its courts. Noteworthy, however, is the District Court's pronouncement in
Pacific & Southern Co. v. Duncan,[98] which involves a News Monitoring Service's videotaping and sale of
WXIA-TVs news broadcasts:
It is axiomatic that copyright protection does not extend to news "events" or the facts or
ideas which are the subject of news reports. Miller v. Universal City Studios, Inc., 650 F.2d 1365,
1368 (5th Cir. 1981); Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95 (2d Cir.
1977), cert, denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978). But it is equally well-settled
that copyright protection does extend to the reports themselves, as distinguished from the
substance of the information contained in the reports. Wainwright, 558 F.2d at 95; International
News Service v. Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918); see Chicago Record-
Herald Co. v. Tribune Assn., 275 F. 797 (7th Cir.1921); 1 Nimmer on Copyright 2.11[B] (1983).
Copyright protects the manner of expression of news reports, "the particular form or
collocation of words in which the writer has communicated it" International News Service, 248
U.S. at 234, 39 S.Ct. at 70. Such protection extends to electronic news reports as well as written reports.
See 17 U.S.C. 102(a) (5), (6), and (7); see also Iowa State University Research Foundations, Inc. v.
American Broadcasting Cos., 621 F.2d 57, 61 (2d Cir. 1980)." (Emphasis supplied)
The idea/expression dichotomy has long been subject to debate in the field of copyright law. Abolishing
the dichotomy has been proposed, in that non-protectibility of ideas should be re-examined, if not
stricken, from decisions and the law:
If the underlying purpose of the copyright law is the dual one expressed by Lord Mansfield, the only
excuse for the continuance of the idea-expression test as a judicial standard for determining protectibility
would be that it was or could be a truly useful method of determining the proper balance between the
creator's right to profit from his work and the public's right that the "progress of the arts not be
retarded."

. . . [A]s used in the present-day context[,] the dichotomy has little or no relationship to the policy which
it should effectuate. Indeed, all too often the sweeping language of the courts regarding the
nonprotectibility of ideas gives the impression that this is of itself a policy of the law, instead of merely a
clumsy and outdated tool to achieve a much more basic end. [100]

The idea/expression dichotomy is a complex matter if one is trying to determine whether a certain
material is a copy of another.101 This dichotomy would be more relevant in determining, for instance,
whether a stage play was an infringement of an author's book involving the same characters and setting.
In this case, however, respondents admitted that the material under review which is the subject of the
controversy is an exact copy of the original. Respondents did not subject ABS-CBN's footage to any
editing of their own. The news footage did not undergo any transformation where there is a need to
track elements of the original.

Having established the protectible nature of news footage, we now discuss the concomitant rights
accorded to authors. The authors of a work are granted several rights in relation to it, including copyright
or economic rights:
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;

177.6. Public performance of the work; and

177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a) (Emphasis supplied)
Under Section 211 of the Intellectual Property Code, broadcasting organizations are granted a more
specific set of rights called related or neighboring rights:
SECTION 211. Scope of Right. Subject to the provisions of Section 212, broadcasting organizations
shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:

211.1. The rebroadcasting of their broadcasts;

211.2. The recording in any manner, including the making of films or the use of video tape, of their
broadcasts for the purpose of communication to the public of television broadcasts of the same;
and

211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49)
(Emphasis supplied)
Section 212 of the Code provides:

CHAPTER XV
LIMITATIONS ON PROTECTION

Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred to
in those Sections are related to:

212.1. The use by a natural person exclusively for his own personal purposes;

212.2. Using short excerpts for reporting current events;

212.3. Use solely for the purpose of teaching or for scientific research; and

212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. 49a)
The Code defines what broadcasting is and who broadcasting organizations include:
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:

a. The purpose and character of the use, including whether such use is of
a commercial nature or is for non-profit educational purposes;

b. The nature of the copyrighted work;

c. The amount and substantiality of the portion used in relation to the

copyrighted work as a whole; and

d. 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:

a. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;

b. The nature of the copyrighted work;

c. The amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and

d. 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: [122]
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 malum prohibitum. 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 malum prohibitum, 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 malum prohibitum.
There are crimes which are mala in se and yet but rarely involve moral turpitude and there are crimes
which involve moral turpitude and are mala prohibita only. In the final analysis, whether or not a crime
involves moral turpitude is ultimately a question of fact and frequently depends on all the circumstances
surrounding the violation of the statue.[131] (Emphasis in the original)

"Implicit in the concept of mala in se is that of mens rea."[132] Mens 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 crime[137] 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 regime [144] 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:[146]
SECTION 216. Remedies for Infringement.

216.1. Any person infringing a right protected under this law shall be liable:

a. 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.

b. 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.

c. 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.

d. 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.

e. 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:

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.

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:

a. Selling, letting for hire, or by way of trade offering or exposing for sale,
or hire, the article;

b. 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

c. 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 malum prohibitum. It is the act of infringement, not the intent, which causes the damage.
To require or assume the need to prove intent defeats the purpose of intellectual property protection.

Nevertheless, proof beyond reasonable doubt is still the standard for criminal prosecutions under the
Intellectual Property Code.

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:[158]
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 Pea-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 Pea-Reyes and Manalastas liable due to the nature of their
work and responsibilities. He found that:
[t]his Office however finds respondents Grace Dla Pea-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
Pea-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 Pea-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)

Respondents Dela Pea-Reyes and Manalastas merely denied receiving the advisory sent by Reuters to its
clients, including GMA-7. As in the records, the advisory reads:
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 Pea-Reyes and Manalastas directly committed copyright
infringement of ABS-CBN's news footage to warrant piercing of the corporate veil. They are responsible in
airing the embargoed Angelo dela Cruz footage. They could have prevented the act of infringement had
they been diligent in their functions as Head of News Operations and Program Manager.

Secretary Agra, however, committed grave abuse of discretion when he ordered the filing of the
Information against all respondents despite the erroneous piercing of the corporate veil. Respondents
Gozon, Duavit, Jr., Flores, and Soho cannot be held liable for the criminal liability of the corporation.

Mere membership in the Board or being President per se does not mean knowledge, approval, and
participation in the act alleged as criminal. There must be a showing of active participation, not simply a
constructive one.

Under principles of criminal law, the principals of a crime are those "who take a direct part in the
execution of the act; [t]hose who directly force or induce others to commit it; [or] [t]hose who cooperate
in the commission of the offense by another act without which it would not have been accomplished." [169]
There is conspiracy "when two or more persons come to an agreement concerning the commission of a
felony and decide to commit it":[170]
Conspiracy is not presumed. Like the physical acts constituting the crime itself, the elements of
conspiracy must be proven beyond reasonable doubt. While conspiracy need not be established by direct
evidence, for it may be inferred from the conduct of the accused before, during and after the commission
of the crime, all taken together, however, the evidence must be strong enough to show the community of
criminal design. For conspiracy to exist, it is essential that there must be a conscious design to commit an
offense. Conspiracy is the product of intentionality on the part of the cohorts.

It is necessary that a conspirator should have performed some overt act as a direct or indirect
contribution to the execution of the crime committed. The overt act may consist of active participation in
the actual commission of the crime itself or it may consist of moral assistance to his co-conspirators by
being present at the commission of the crime or by exerting moral ascendancy over the other co-
conspirators[.][171] (Emphasis supplied, citations omitted)
In sum, the trial court erred in failing to resume the proceedings after the designated period. The Court
of Appeals erred when it held that Secretary Agra committed errors of jurisdiction despite its own
pronouncement that ABS-CBN is the owner of the copyright on the news footage. News should be
differentiated from expression of the news, particularly when the issue involves rebroadcast of news
footage. The Court of Appeals also erroneously held that good faith, as. well as lack of knowledge of
infringement, is a defense against criminal prosecution for copyright and neighboring rights infringement.
In its current form, the Intellectual Property Code is malum prohibitum and prescribes a strict liability for
copyright infringement. Good faith, lack of knowledge of the copyright, or lack of intent to infringe is not
a defense against copyright infringement. Copyright, however, is subject to the rules of fair use and will
be judged on a case-to-case basis. Finding probable cause includes a determination of the defendant's
active participation, particularly when the corporate veil is pierced in cases involving a corporation's
criminal liability.

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 Pea-
Reyes and John Oliver T. Manalastas. Branch 93 of the Regional Trial Court of Quezon City is directed to
continue with the proceedings in Criminal Case No. Q-04-131533.

SO ORDERED.

Carpio, Chairperson, Brion, Del Castillo, and Mendoza, JJ., concur.

[4]
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;
.
177.6 Public performance of the work; and
.
177.7 Other communication to the public of the work. (Sec. 5, P. D. No. 49a)
.

SECTION 211. Scope of Right. Subject to the provisions of Section 212, broadcasting organizations
shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:

211.1 The rebroadcasting of their broad :asts;

.
211.2 The recording in any manner, including the making of films or the use of video tape, of their
. broadcasts for the purpose of communication to the public of television broadcasts of the
same; and
211.3 The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49)
.

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;
.
177.6 Public performance of the work; and
.
177.7 Other communication to the public of the work. (Sec. 5, P. D. No. 49a)
.

[17]
SECTION 211. Scope of Right. Subject to the provisions of Section 212, broadcasting
organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:

211.1 The rebroadcasting of their broadcasts;

.
211.2 The recording in any manner, including the making of films or the use of video tape, of their
. broadcasts for the purpose of communication to the public of television badcasts of the same;
and
211.3 The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49)
.

Rollo, p. 62. The Complaint was consolidated with GMA-7's Complaint for libel against several of ABS-
[18]

CBN's employees docketed as I.S. No. 04-9681 in rollo, p. 226.

[19]
Id. at 226-231.

[20]
Id. at 231. The Complaint for libel (I.S. No. 04-9681) filed by respondents was consolidated with ABS-
CBN's Complaint for copyright infringement (I.S. No. 04-10458). The Resolution dated December 3,
2004 dismissed respondents' Complaint for libel against Erwin Tulfo, et al.

[54]
RULES OF COURT, Rule 65, sec. 1. Petition for certiorari. - When any tribunal, board or officer
exercising judicial or quasi-judicial functions has acted without or in excess of its or his jurisdiction, or
with grave abuse of discretion amounting to lack or excess of jurisdiction, and there is no appeal, or any
plain, speedy, and adequate remedy in the ordinary course of law, a person aggrieved thereby may file a
verified petition in the proper court, alleging the facts with certainty and praying that judgment be
rendered annulling or modifying the proceedings of such tribunal, board or officer, and granting such
incidental reliefs as law and justice may require[.]

[61]
Fernando v. Vasquez, No. L-26417, January 30, 1970, 31 SCRA 288, 292 [Per J. Sanchez, En Banc].
See Philippine National Construction Corporation v. Court of Appeals, 541 Phil. 658, 672 (2007): "An error
of judgment is one which the court may commit in the exercise of its jurisdiction, and which error is
reviewable only by an appeal. On the other hand, an error of jurisdiction is one where the act complained
of was issued by the court, officer or a quasi-judicial body without or in excess of jurisdiction, or with
grave abuse of discretion which is tantamount to lack or in excess of jurisdiction. This error is correctable
only by the extraordinary writ of certiorari."
[81]
Pres. Decree No. 49 (1972), Decree on the Protection of intellectual Property.

Article V, Section 26. After the first public dissemination or performance by authority of the copyright
owner of a work falling under subsections (A), (B), (C) and (D) of Section 2 of this Decree, there shall,
within three weeks, be registered and deposited with the National Library, by personal delivery or by
registered mail, two complete copies or reproductions of the work in such form as the Director of said
library may prescribe. A certificate of registration and deposit for which the prescribed fee shall be
collected. If, within three weeks after receipt by the copyright owner of a written demand from the
director for such deposit, the required copies or reproductions are not delivered and the fee is not paid,
the copyright owner shall be liable to pay to the National Library the amount of the retail price of the best
edition of the work.

With or without a demand from the director, a copyright owner who has not made such deposit shall not
be entitled to recover damages in an infringement suit and shall be limited to the other remedies
specified in Section 23 of this Decree. (Emphasis supplied)

[82]
See Pres. Dec. No. 49 (1972), sec. 2 and Rep. Act No. 8293 (1997), sec.172.1. However, this court
has already clarified that registration is not required for copyright to subsist. See Columbia Pictures, Inc.
vs. Court of Appeals, 329 Phil. 875 (1996) [Per J. Regalado, En Banc]. It was held that noncompliance
with the registration requirement "merely limits the remedies available to him and subjects him to the
corresponding sanction."

[83]
Rep. Act No. 8293 (1997), 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, (n)
[89]
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:

. . . .

(M) Cinematographic works and works produced by a process analogous to cinematography or any
process for making audio-visual recordings[.]

See Leslie A. Kurtz, Speaking to the Ghost: Idea and Expression in Copyright, 47 (J. MIAMI L. REV.
[101]

1221, 1236 (1992-1993), citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.
1960). Kurtz said that "[t]he need to distinguish idea from expression arises in instances of non-literal
copying. The defendant has added something to the plaintiffs material to reshape or recast it. In such a
case, it is necessary to determine how far 'an imitator must depart from an undeviating reproduction to
escape infringement.'"

See Matthew D. Bunker, TRANSFORMING THE NEWS: COPYRIGHT AND FAIR USE IN NEWS-
[116]

RELATED CONTEXTS, 52 J. COPYRIGHT SOC'Y U.S.A. 309, 311 (2004-2005), citing Iowa St. Univ.
Research Found., Inc. v. Am. Broad. Cos., 621 F.2d 57, 60 (2d Cir. 1980). The four factors are similarly
codified under the United States Copyright Act of 1976, sec. 107:

107 . Limitations on exclusive rights: Fair use Notwithstanding the provisions of sections 106 and 106
A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by
any other means specified by that section, for purposes such as criticism, comment, news reporting,
teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of
copyright. In determining whether the use made of a work in any particular case is a fair use the factors
to be considered shall include

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for
nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a Finding of fair use if such finding is made upon
consideration of all the above factors.

Id. at 317, citing Nunez v. Caribbean International News Corp., 235 F.3d 18 (1st Cir. 2000) and
[120]

Psihoyos v. National Examiner, 49 U.S.P.Q.2d 1766 (S.D. N.Y. 1998). Bunker proposes the term "meta-
use" for the kind of use that does not necessarily transform the original work by adding expression,
meaning, or message, but only changes the purpose of the work. "[ Psihoyos] distinguished between
using the photograph to 'show what it depict[ed]' versus commenting upon the photograph in some
way. Certainly the Nunez use was for purposes of commentary on the photos - the photos had
engendered significant controversy, and the news article reported on that controversy. Thus, the Nunez
use was what we might refer to as a 'meta-use' of the photos that went beyond simply using a
photograph to illustrate a news story - as in Psihoyos - and instead consisted of a news story about the
photographs themselves, or at least public reaction to them."

[137]
In People v. Ballesteros, 349 Phil. 366, 374-375 (1998) [Per J. Romero, Third Division], this court
distinguished motive from intent: "Motive is the moving power which impels one to action for a definite
result. Intent, on the other hand, is the purpose to use a particular means to effect such result. Motive
alone is not proof of a crime. In order to tip the scales in its favor, intent and not motive must be
established by the prosecution. Motive is hardly ever an essential element of a crime. A man driven by
extreme moral perversion may be led to commit a crime, without a real motive but a just for the sake of
committing it. Along the same line, a man who commits a crime with an apparent motive may produce
different results, for which he is punished. As held in a line of cases, the rule is well-settled that the
prosecution need not prove motive on the part of the accused when the latter has been positively
identified as the author of the crime. Lack or absence of motive for committing the crime does not
preclude conviction thereof where (here were reliable witnesses who fully and satisfactorily identified the
accused as the perpetrator of the felony."

[143]
See Lydia Pallas Loren, Digitization, Commodification, Criminalization: The Evolution Of Criminal
Copyright Infringement And The Importance Of The Willfulness Requirement, 77 WASH. U. L. Q. 835
(1999). "While The NET Act retained the element of willfulness, it created a new type of criminal
infringement that does not require a profit motive. Now, to be criminal, infringement must be willful and
be either (1) for purposes of commercial advantage or private financial gain, or (2) infringement through
the reproduction or distribution, including by electronic means, during any 180-day period, of one or
more copies or phonorecords of one or more copyrighted works, which have a total retail value of more
than $1,000. This latter category of infringement can be referred to as non-commercially motivated
infringement."

See Dane S. Ciolino and Erin A. Donelon, Questioning Strict Liability In Copyright, 54 Rutgers L. Rev.
[144]

351 2001-2002, p. 409. The authors argue against the application of strict liability to copyright law.
"[S]trict liability is neither justified nor necessary in copyright law, but rather is rooted in deeply flawed
historical, conceptual, and economic misconceptions about intellectual property in general and copyright
in particular. Worse, strict liability is affirmatively harmful to copyright's utilitarian goals of providing
incentives to authors to create, and providing greater public access to works of authorship.", p. 351.

[149]
Under CONST. (1987), art. VII, sec. 21, a treaty or international agreement is transformed into
domestic law when "concurred in by at least two-thirds of ail the Members of the Senate."
[153]
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:

(a) Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article;

(b) 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

(c) 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)

[165]
A news embargo is defined as "an agreement between the scarce and the media organisation: The
latter is provided with news that ought not to be published until a certain date." See Sonja Gruber, "News
Embargoes", - Under threat, but not extinct", Reuters institute for the Study of Journalism, University of
Oxford. p. 6 and 46-47 (2014), available at (last accessed on 20 February 2015).

See Reuters, Handbook of Journalism, A Guide to Reuters Operations, available at: (last accessed on
[166]

20 February 2015).

According to Reuters: "A TRANSMISSION EMBARGO restricts publication to all clients until a time
specified. A PUBLICATION EMBARGO transmits the story immediately to MEDIA CLIENTS ONLY with
restrictions to prevent them publishing or broadcasting the story until a time specified. The story is then
issued to desktop clients (Eikon, etc.) at the embargo time using the Lynx Editor embargo function.
However, in the age of real time news websites and social media, Reuters no longer uses PUBLICATION
embargoes. ALL embargoes are now TRANSMISSION embargoes."

Supreme Court of the Philippines

369 Phil. 764

FIRST DIVISION

G.R. No. 131522, July 19, 1999

PACITA I. HABANA, ALICIA L. CINCO AND JOVITA N. FERNANDO, PETITIONERS, VS.

FELICIDAD C. ROBLES AND GOODWILL TRADING CO., INC., RESPONDENTS.

DECISION

PARDO, J.:

The case before us is a petition for review on certiorari[1] to set aside the (a) decision of the Court of
Appeals[2], and (b) the resolution denying petitioners' motion for reconsideration, [3] in which the appellate
court affirmed the trial court's dismissal of the complaint for infringement and/or unfair competition and
damages but deleted the award for attorney's fees.

The facts are as follows:

Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering
their published works, produced through their combined resources and efforts, entitled COLLEGE
ENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN
ENGLISH, Series 1.
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and
distributor/seller of another published work entitled "DEVELOPING ENGLISH PROFICIENCY" (DEP for
brevity), Books 1 and 2 (1985 edition) which book was covered by copyrights issued to them.

In the course of revising their published works, petitioners scouted and looked around various bookstores
to check on other textbooks dealing with the same subject matter. By chance they came upon the book
of respondent Robles and upon perusal of said book they were surprised to see that the book was
strikingly similar to the contents, scheme of presentation, illustrations and illustrative examples in their
own book, CET.

After an itemized examination and comparison of the two books (CET and DEP), petitioners found that
several pages of the respondent's book are similar, if not all together a copy of petitioners' book, which is
a case of plagiarism and copyright infringement.

Petitioners then made demands for damages against respondents and also demanded that they cease
and desist from further selling and distributing to the general public the infringed copies of respondent
Robles' works.

However, respondents ignored the demands, hence, on July 7, 1988, petitioners filed with the Regional
Trial Court, Makati, a complaint for "Infringement and/or unfair competition with damages" [4] against
private respondents.[5]

In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles being substantially
familiar with the contents of petitioners' works, and without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their book CET. The textual contents and illustrations of
CET were literally reproduced in the book DEP. The plagiarism, incorporation and reproduction of
particular portions of the book CET in the book DEP, without the authority or consent of petitioners, and
the misrepresentations of respondent Robles that the same was her original work and concept adversely
affected and substantially diminished the sale of the petitioners' book and caused them actual damages
by way of unrealized income.

Despite the demands of the petitioners for respondents to desist from committing further acts of
infringement and for respondent to recall DEP from the market, respondents refused. Petitioners asked
the court to order the submission of all copies of the book DEP, together with the molds, plates and films
and other materials used in its printing destroyed, and for respondents to render an accounting of the
proceeds of all sales and profits since the time of its publication and sale.

Respondent Robles was impleaded in the suit because she authored and directly committed the acts of
infringement complained of, while respondent Goodwill Trading Co., Inc. was impleaded as the publisher
and joint co-owner of the copyright certificates of registration covering the two books authored and
caused to be published by respondent Robles with obvious connivance with one another.

On July 27, 1988, respondent Robles filed a motion for a bill of particulars [6] which the trial court
approved on August 17, 1988. Petitioners complied with the desired particularization, and furnished
respondent Robles the specific portions, inclusive of pages and lines, of the published and copyrighted
books of the petitioners which were transposed, lifted, copied and plagiarized and/or otherwise found
their way into respondent's 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 attorney's fees and defendant Goodwill for
P5,000.00 attorney's 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 author's or proprietor's
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 Burke's "Speech on Conciliation", Boerigs'
"Competence in English" and Broughton's, "Edmund Burke's Collection."

xxx

"Appellant's 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 court's 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 writer's right to fair use, in violation of Section 11 of Presidential Decree No. 49. [18]

We find the petition impressed with merit.

The complaint for copyright infringement was filed at the time that Presidential Decree No. 49 was in
force. At present, all laws dealing with the protection of intellectual property rights have been
consolidated and as the law now stands, the protection of copyrights is governed by Republic Act No.
8293. Notwithstanding the change in the law, the same principles are reiterated in the new law under
Section 177. It provides for the copy or economic rights of an owner of a copyright as follows:
"Sec.177. Copy or Economic rights.--Subject to the provisions of chapter VIII, copyright or economic
rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

177.1 Reproduction of the work or substantial portion of the work;

177.2 Dramatization, translation, adaptation, abridgement, arrangement or other transformation of the

work;

177.3 The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership;

177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a
sound recording, a computer program, a compilation of data and other materials or a musical work in
graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;
(n)

177.5 Public display of the original or copy of the work;

177.6 Public performance of the work; and

177.7 Other communication to the public of the work" [19]

The law also provided for the limitations on copyright, thus:
"Sec. 184.1 Limitations on copyright.-- Notwithstanding the provisions of Chapter V, the following acts
shall not constitute infringement of copyright:

(a) the recitation or performance of a work, once it has been lawfully made accessible to the public, if
done privately and free of charge or if made strictly for a charitable or religious institution or society;
[Sec. 10(1), P.D. No. 49]

(b) The making of quotations from a published work if they are compatible with fair use and only to the
extent justified for the purpose, including quotations from newspaper articles and periodicals in the form
of press summaries; Provided, that the source and the name of the author, if appearing on the work are
mentioned; (Sec. 11 third par. P.D.49)
 xxxxxxxxxxxx

(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound
recording of film, if such inclusion is made by way of illustration for teaching purposes and is compatible
with fair use: Provided, That the source and the name of the author, if appearing in the work
is mentioned;[20]
In the above quoted provisions, "work" has reference to literary and artistic creations and this includes
books and other literary, scholarly and scientific works.[21]

A perusal of the records yields several pages of the book DEP that are similar if not identical with the text
of CET.

On page 404 of petitioners' Book 1 of College English for Today, the authors wrote:
Items in dates and addresses:

He died on Monday, April 15, 1975.

Miss Reyes lives in 214 Taft Avenue,

Manila[22]
On page 73 of respondents Book 1 Developing English Today, they wrote:
He died on Monday, April 25, 1975.

Miss Reyes address is 214 Taft Avenue Manila[23]

On Page 250 of CET, there is this example on parallelism or repetition of sentence structures, thus:
"The proposition is peace. Not peace through the medium of war; not peace to be hunted through the
labyrinth of intricate and endless negotiations; not peace to arise out of universal discord, fomented from
principle, in all parts of the empire; not peace to depend on the juridical determination of perplexing
questions, or the precise marking of the boundary of a complex government. It is simple peace; sought in
its natural course, and in its ordinary haunts. It is peace sought in the spirit of peace, and laid in
principles purely pacific.

--- Edmund Burke, " Speech on Criticism."[24]

On page 100 of the book DEP[25], also in the topic of parallel structure and repetition, the same example
is found in toto. The only difference is that petitioners acknowledged the author Edmund Burke, and
respondents did not.

In several other pages[26] the treatment and manner of presentation of the topics of DEP are similar if not
a rehash of that contained in CET.

We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of
discussions and examples, and her failure to acknowledge the same in her book is an infringement of
petitioners' copyrights.
When is there a substantial reproduction of a book? It does not necessarily require that the entire
copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the
original work is substantially diminished, there is an infringement of copyright and to an injurious extent,
the work is appropriated.[27]

In determining the question of infringement, the amount of matter copied from the copyrighted work is
an important consideration. To constitute infringement, it is not necessary that the whole or even a large
portion of the work shall have been copied. If so much is taken that the value of the original is sensibly
diminished, or the labors of the original author are substantially and to an injurious extent appropriated
by another, that is sufficient in point of law to constitute piracy. [28]

The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its
gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing
by any person, without the consent of the owner of the copyright, of anything the sole right to do which
is conferred by statute on the owner of the copyright. [29]

The respondents' claim that the copied portions of the book CET are also found in foreign books and
other grammar books, and that the similarity between her style and that of petitioners can not be
avoided since they come from the same background and orientation may be true. However, in this
jurisdiction under Sec 184 of Republic Act 8293 it is provided that:
Limitations on Copyright. Notwithstanding the provisions of Chapter V, the following shall not constitute
infringement of copyright:

xxxxxxxxxxxx

(c) The making of quotations from a published work if they are compatible with fair use and only to the
extent justified for the purpose, including quotations from newspaper articles and periodicals in the form
of press summaries: Provided, That the source and the name of the author, if appearing on the
work, are mentioned.
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases,
did not know whether or not he was infringing any copyright; he at least knew that what he was copying
was not his, and he copied at his peril.[30]

The next question to resolve is to what extent can copying be injurious to the author of the book being
copied. Is it enough that there are similarities in some sections of the books or large segments of the
books are the same?

In the case at bar, there is no question that petitioners presented several pages of the books CET and
DEP that more or less had the same contents. It may be correct that the books being grammar books
may contain materials similar as to some technical contents with other grammar books, such as the
segment about the "Author Card". However, the numerous pages that the petitioners presented showing
similarity in the style and the manner the books were presented and the identical examples can not pass
as similarities merely because of technical consideration.

The respondents claim that their similarity in style can be attributed to the fact that both of them were
exposed to the APCAS syllabus and their respective academic experience, teaching approach and
methodology are almost identical because they were of the same background.

However, we believe that even if petitioners and respondent Robles were of the same background in
terms of teaching experience and orientation, it is not an excuse for them to be identical even in
examples contained in their books. The similarities in examples and material contents are so obviously
present in this case. How can similar/identical examples not be considered as a mark of copying?

We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from
Goodwill bookstores the book DEP upon learning of petitioners' complaint while pharisaically denying
petitioners' demand. It was further noted that when the book DEP was re-issued as a revised version, all
the pages cited by petitioners to contain portion of their book College English for Today were eliminated.

In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious
effect". Here, the injury consists in that respondent Robles lifted from petitioners' book materials that
were the result of the 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.

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 author's 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.

[1]
Rule 45, 1997 Rules of Civil Procedure.

[2]
In CA-G. R. CV No. 44053, promulgated on June 27, 1997, J. Tuquero, ponente, JJ. Luna and Hofilena,
concurring, Rollo, pp. 28-35.

[3]
Rollo, p. 43.

[4]
Original Record Vol. I, Complaint, pp. 1-7.

[5]
Docketed as Civil Case No. 88-1317 and assigned to Branch 36.

[6]
Original Record Vol. I, Motion for Bill of Particulars, pp. 30-31.

[7]
Ibid, Answer, pp. 33-39.

[8]
Original Record, Vol. I, Answer, pp. 134-139

[9]
Ibid., pp. 137-138.

[10]
Ibid., pp. 205-206.

[11]
Original Record,Vol. I, Judgment, pp. 415-435.

[12]
Ibid., Notice of Appeal, p. 436.

[13]
Docketed as CA-G. R. CV No. 44053.

CA Rollo, Brief for Plaintiffs-Appellants Pacita I. Habana, Alicia L. Cinco and Pacita N. Fernando, pp. 41-
[14]

90, 47,48,49.

[15]
Decision, by Justice Artemio G. Tuquero, ponente, concurred in by J. Artemon D. Luna and J. Hector L.
Hofilena, CA Rollo, p. 6.

[16]
CA Rollo, pp. 198-203.

[17]
Ibid., p. 236.
[18]
Rollo, Petition, p.10.

[19]
Intellectual Property Code of the Philippines (Republic Act No. 8293), , p. 51.

[20]
Intellectual Property Code of the Philippines, Republic Act No. 8293, pp. 55-56.

[21]
Sec. 172, Intellectual Property Code of the Philippines.

[22]
Volume I, Original Record, Exh. S-1, p. 211.

[23]
Ibid., Exh. S-2, p. 215.

[24]
Volume 1, Original Record, Annex "Z", p. 89.

[25]
Ibid, Annex "V" p.111.

[26]
Page 24 of CET as to examples 2, 9, 11, and 14 also found on p. 33 of DEP; similarity in technique and
presentation on page 15 of CET and page 27 of DEP; on page 18, 20 and 21 of CET and page 29 of DEP;
on page 74 of CET and page 86 of DEP, Original Record, Volume 1, Exhibits pp. 73, 91, 93, 96 and 97.

18 Am Jur 2D, 104 citing Mazer v. Stein, 347 US 218, 98 L ed 630, 74 S Ct 460, reh den 347 US 949,
[27]

98 L ed 1096, 74 S Ct 637 [1953].

[28]
Columbia Pictures Inc. vs. Court of Appeals, 261 SCRA 144, 184, citing 18 CJS, Copyright and Literary
Property, Sec 94, 217, 218.

[29]
18 CJS, Copyright and Literary Property, Sec. 90, 212; 18 Am Jur 2D, Copyright and Literary Property,
Sec.106, 391-392.

[30]
Ibid.

DISSENTING OPINION

DAVIDE, JR., C.J.,

I am unable to join the majority view.

From the following factual and procedural antecedents, I find no alternative but to sustain both the trial
court and the Court of Appeals.
On 12 July 1988, HABANA, et al. filed with the trial court a complaint for infringement and unfair
competition, with damages against private respondent Felicidad C. Robles (hereafter ROBLES) and her
publisher and distributor, Goodwill Trading Co., Inc. (hereafter GOODWILL). The case was docketed as
Civil Case No. 88-1317.

HABANA, et al. averred in their complaint that they were the co-authors and joint copyright owners of
their published works College English for Today, Books 1 and 2 (hereafter CET) and Workbook for College
Freshmen English, Series [1] I; they discovered that ROBLES' own published works, Developing English
Proficiency, Books 1 and 2, (hereafter DEP), published and distributed in 1985, exhibited an uncanny
resemblance, if not outright physical similarity, to CET as to content, scheme, sequence of topics and
ideas, manner of presentation and illustrative examples; the plagiarism, incorporation and reproduction of
particular portions of CET into DEP could no be gainsaid since ROBLES was substantially familiar with CET
and the textual asportation was accomplished without their authority and/or consent; ROBLES and
GOODWILL Jointly misrepresented DEP (over which they shared copyright ownership) "as the former's
original published works and concept"; and "notwithstanding formal demands made ... to cease and
desist from the sale and distribution of DEP, [ROBLES and GOODWILL] persistently failed and refused to
comply therewith." HABANA, et al. then prayed for the court to: (1) order the submission and thereafter
the destruction of all copies of DEP, together with the molds, plates, films and other materials used in the
printing thereof; (2) require ROBLES and GOODWILL to render an accounting of the sales of "infringing
works from the time of its (sic) inceptive publication up to the time of judgment, as well as the amount of
sales and profits...derived"; and (3) to enjoin ROBLES and GOODWILL to solidarily pay actual, moral and
exemplary damages, as well as attorney's fees and expenses of litigation.

In its Answer, GOODWILL denied culpability since "it had no knowledge or information sufficient to form
a belief as to the allegations of plagiarism, incorporation and reproduction" and hence "could not be privy
to the same, if (there were) any"; and that in an Agreement with co-defendant ROBLES, the latter would
be solely responsible for acts of plagiarism or violations of copyright or any other law, to the extent of
answering for any and all damages GOODWILL may suffer. GOODWILL also interposed a compulsory
counterclaim against PACITA, et al. and a crossclaim against its co-defendant anchored on the
aforementioned Agreement.

In her answer, ROBLES asserted that: (1) DEP was the exclusive product of her independent research,
studies and experience; (2) DEP, particularly the segments where the alleged literal similitude appeared,
were admittedly influence or inspired by earlier treatises, mostly by foreign authors; but that "influences
and/or inspirations from other writers" like the methodology and techniques as to presentation, teaching
concept and design, research and orientation which she employed, fell within the ambit of general
information, ideas, principles of general or universal knowledge which were commonly and customarily
understood as incapable of private and exclusive use, appropriation or copyright; and (3) her works were
the result of the legitimate and reasonable exercise of an author's "right to fair use of even copyrighted
materials as [a] guide." She further claimed that her various national and regional professional activities
in general education, language and literature, as well as her teaching experience in graduate and post
graduate education would obviate the remotest possibility of plagiarism.
ROBLES likewise suggested that any similarity between DEP and CET as regards scope and sequence
could be attributed to "the orientation of the authors to the scope and sequence or syllabus - which
incorporates standards known among English grammar book writers - of the subject-matter for Basic
Communication Arts recommended by the Association of Philippine Colleges of Arts and Sciences
(APCAS)." While the syllabus was admittedly adopted in DEP, she claimed to have treated quite
differently in DEP the very ideas, techniques or principles expressed in CET such that neither textbook
could be considered a copy of plagiarism of the other.

At the pre-trial conference, the parties agreed to a stipulation of facts [2] and for the court to first resolve
the issue of infringement before disposing of the claims for damages. After trial on the merits, the trial
court rendered its decision in favor of the defendants, the dispositive portion of which reads:
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 attorney's fees and defendant Goodwill for P5,000.00
attorney's fees. Plaintiffs are liable for costs of suit.

IT IS SO ORDERD.[3]
Noting that the law applicable to the case was Presidential Decree No. 49, [4] the trial court found that
HABANA, et al. failed to discharge their onus of proving that ROBLES and GOODWILL committed acts
constituting copyright infringement. Moreover, the trial court found that "the cause of action or acts
complained of [were] not covered by said decree" as Section 10 thereof barred authors of works already
lawfully made accessible to the public from prohibiting the reproductions, translations, adaptations,
recitation and performance of the same, while Section 11 allowed the utilization of reproductions,
quotations and excerpts of such works. The trial court thus agreed with ROBLES that "the complained
acts [were] of general and universal knowledge and use which plaintiffs cannot claim originality or seek
redress to the law for protection" and observed that DEP and CET had the same sources, consisting
chiefly of earlier works, mostly foreign books. GOODWILL's crossclaim against ROBLES, counterclaim
against HABANA, et al. as well as ROBLES' compulsory counterclaim against GOODWILL were all
dismissed for lack of factual and legal bases.

HABANA, et al. appealed to the Court of Appeals. The case was docketed as CA-G.R. CV No. 44053.
Before said court HABANA, et al., in the main, argued that the trial court totally disregarded their
evidence and merely subscribed to ROBLES' arguments. The Court of Appeals, however, likewise
disposed of the controversy in favor of ROBLES and GOODWILL. [5]

However, the Court of Appeals modified the trial court's decision by reversing the award for attorney's
fees. It held that the good faith and sincerity of HABANA, et al. in commencing the action negated the
basis therefor. Their motion for reconsideration having been denied for want of cogent reasons, HABANA,
et al., instituted this petition. They claim that the Court of Appeals committed reversible error in failing to
appreciate: (1) the insuperable evidence and facts admitted and proved demonstrating plagiarism or
piracy and instead afforded full weight and credit to ROBLES' matrix of general, hypothetical and
sweeping statements and/or defenses; (2) ROBLES' and GOODWILL's animo furandi or intent to
appropriate or copy CET with the non-removal of the damaging copies of DEP from the bookstores
despite notice to withdraw the same; and (3) the fact that ROBLES abused a writer's right to fair use, in
violation of Section 11 of P.D. No. 49. [6] They invoke Laktaw v. Paglinawan [7] which, they theorize is on
all fours with the case at bar. ROBLES contends that appeal by certiorari does not lie in this case for the
challenged decision and the trial court's judgment were amply supported by evidence, pertinent laws and
jurisprudence. Hence, her counterclaim for moral damages should, therefore, be granted or for us to
order the remand of the case to the trial court for reception of evidence on damages. GOODWILL, on its
part, stood pat on its disclaimer, with the assertion that no proof was ever introduced that it co-authored
DEP or that is singly or in cabal with ROBLES committed any act constituting copyright infringement.

The core issue then is whether or not the Court of Appeals erred in affirming the trial court's judgment
that despite the apparent textual, thematic and sequential similarity between DEP and CET, no copyright
was committed by ROBLES and GOODWILL.

While the complaint, in Civil Case No. 88-1317 was filed during the effectivity of PA.D. No. 49, the
provisions of the new intellectual property law, R.A. No. 8293, [8] nevertheless bears significance here. It
took effect on 1 January 1998, but its Section 239.3 clearly states that its provisions shall apply to works
in which copyright protection obtained prior to the effectivity of the Act subsists, provided, however, that
the application of the Act shall not result in the diminution of such protection. Also, the philosophy behind
both statutes as well as the essential principles of copyright protection and copyright infringement have,
to a certain extent, remained the same.

A copyright may be accurately defined as the right granted by a statute to the proprietor of an intellectual
production to its exclusive use and enjoyment to the extent specified in the statute. [9] Under Section 177
of R.A. No. 8293, [10]the copy or economic right (copyright and economic right are used interchangeably
in the statute) consists 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;

1777.3The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership;

177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a
sound recording, a computer program, a compilation of data and other materials or a musical work
in graphic form, irrespective of the ownership of the original or the copy which is the subject of
the rental;

177.5 Public display of the original or a copy of the work;

177.6 Public performance of the work; and

177.7
Other communication to the public of the work.

"The work," as repeatedly mentioned, refers to the literary and artistic works defined as original
intellectual creations in the literary and artistic domain protected from the moment of their creation and
enumerated in Section 172.1, which includes books and other literary, scholarly, scientific and artistic
works. [11]

Stripped in the meantime of its indisputable social and beneficial functions, [12] the use of intellectual
property or creations should basically promote the creator or author's personal and economic gain.
Hence, the copyright protection extended to the creator should ensure his attainment of some form of
personal satisfaction and economic reward from the work he produced. Without conceding the suitability
of Laktaw as precedent, the Court there quoted Manresa and explained:
He who writes a book, or carves a statute, or makes an invention, has the absolute right to reproduce or
sell it, just as the owner of the land has the absolute right to sell it or its fruits. But while the owner of
the land, by selling it and its fruits, perhaps fully realizes all its economic value, by receiving its benefits
and utilities, which are represented for example, by the price, on the other hand the author of a book,
statue or invention does not reap all the benefits and advantages of his own property by disposing of it,
for the most important form of realizing the economic advantages of a book, statue or invention, consists
in the right to reproduce it in similar or like copies, everyone of which serves to give to the person
reproducing them all the conditions which the original requires in order to give the author the full
enjoyment thereof. If the author of a book, after its publication, cannot prevent its reproduction by any
person who may want to reproduce it, then the property right granted him is reduced to a very
insignificant thing and the effort made in the production of the book is in no way rewarded. [13]
The execution, therefore, of any one or more of the exclusive rights conferred by law on a copyright
owner, without his consent, constitutes copyright infringement. In essence, copyright infringement,
known in general as "piracy," is a trespass on a domain owned and occupied by a copyright owner; it is
violation of a private right protected by law. [14]With the invasion of his property rights, a copyright owner
is naturally entitled to seek redress, enforce and hold accountable the defrauder or usurper of said
economic rights.

Now, did ROBLES and GOODWILL infringe upon the copyright of HABANA, et al. by publishing DEP,
which the latter alleged to be a reproduction, or in the least, a substantial reproduction of CET? Both the
trial court and respondent court found in the negative. I submit they were correct.

To constitute infringement, the usurper must have copied or appropriated the "original" work of an
author or copyright proprietor, [15] absent copying, there can be no infringement of copyright. [16] In turn,
a work is deemed by law an original if the author created it by his own skill, labor and judgment. [17] On
its part, a copy is that which comes so near to the original so as to give to every person seeing it the idea
created by the original. It has been held that the test of copyright infringement is whether an ordinary
observer comparing the works can readily see that one has been copied from the other. [18] A visual
comparison of the portions of CET [19] juxtaposed against certain pages of DEP, [20] would inescapably lead
to a conclusion that there is a discernible similarity between the two; however, as correctly assessed by
respondent court and the lower court, no conclusion, can be drawn that DEP, in legal contemplation, is a
copy of CET.

Was DEP a substantial reproduction of CET? To constitute a substantial reproduction, it is not necessary
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 is substantially diminished, or if the labors of the original author are substantially,
and to an injurious extent, appropriated. [21] But the similarity of the books here does not amount to an
appropriation of a substantial portion of CET. If the existence of substantial similarities does not of itself
establish infringement, [22] mere similarities (not substantial similarities) in some sections of the books in
question decisively militate against a claim for infringement where the similarities had been convincingly
established as proceeding from a number of reasons and/or factors.

1. As both books are grammar books, they inevitably deal with the same subjects typically and
ordinarily treated by writers of such genre, [23] e.g., system of book classification, the different
kinds of card catalogs and their entries, use of punctuation marks, paragraphs, the characteristics
of an effective paragraph, language structure, different parts of a book, etc. These standard
subjects fall within the domain of ideas, concepts, universal and general knowledge that have, as
admitted by the protagonists here, been in existence for quite a long time. [24]As such, HABANA,
et al. cannot demand monopoly, by way of example, in the use of the recognized library
classification systems (Dewey Decimal System and the Library of Congress System), or how a
book can be divided into parts (frontispiece, title page, copyright page, preface, table of
contents, etc.) or to the different headings used in a card catalogue (title card, author card and
subject card), since these are of common or general knowledge. Even in this jurisdiction, no
protection can be extended to such an idea, procedure, system method or operation, concept,
principle, discovery or mere data, even if expressed, explained, illustrated or embodied in a work.
[25]

2. As found by respondent court, CET and DEP had common sources and materials, [26] such that
the particular portions claimed to have been lifted and literally reproduced also appeared in
earlier works, mostly by foreign authors. This is clear from the testimony of petitioner Dr. Pacita
Habana:

Q Let's clarify your position Dra. Habana. When defendants test (sic) showed 10 words similar to
yours, you so concluded it was (sic) copied from yours but when I pointed out to you same (sic)
words contained in the earlier book of Wills then you earlier in your test in your book (sic) you
refused to admit that it was copied from Wills.

A Yes, sir. We have never -- all 35 words were copied from there.

Q But what I am asking how could you conclude that by just similarity of 10 words of defendants
words that was copied from yours [sic] and when I point out to you the similarity of that same
words from the words earlier than yours (sic) you refused to admit that you copied?
A I would like to change the final statement now that in the case of defendant Robles you pointed out
her source very clear. She copied it from that book by Wills.

Q So, she did not copy it from yours?

A Alright, maybe she did not copy it but definitely it is a pattern of plagerism [ sic].[27]

3.

4. Similarity in orientation and style can likewise be attributed to the exposure of the authors to the
APCAS syllabus and their respective academic experience, teaching approaches and
methodology. It is not farfetched that they could have even influenced each other as textbook
writers. ROBLES and Dr. Pacita Habana were faculty members of the Institute of English of the
Far Eastern University from 1964 to 1974. [28]Both were ardent students, researchers, lecturers,
textbook writers and teachers of English and grammar. They even used to be on friendly terms
with each other, to the extent that Dr. Habana admitted that ROBLES assisted the former in the
preparation of her doctoral dissertation. Given their near-identical academic and professional
background, it is natural they would use many expressions and definitions peculiar to teaching
English grammar. It comes therefore with no surprise that there are similarities in some parts of
the rival books. Indeed, it is difficult to conceive how writers on the same subject matter can
very well avoid resorting to common sources of information and materials and employing similar
expressions and terms peculiar to the subject they are treating. [29]

To illustrate, an excerpt from page 21 of CET reads:

Author Card

The author card is the main entry card. It contains

1. the author's complete name on the first line, surname first, which may be followed by the date of
his birth and death if he is no longer living;

2. the title of the book, and the subtitle, if there is one;

3. the edition, if it is not the first;

4. the translator or illustrator, if there is any;

5. the imprint which includes the publisher, the place and date of publication;

6. the collation composed of the number of pages, volume, illustrations, and the size of the book;

7. the subjects with which the book deals ;

 8. the call number on the upper left-hand corner.

Names beginning with Mc, or M are filed in the card catalog as though spelled out as MAC, for example
Mc Graw -- MacGraw. The same is true of St. and Saint.
While a portion of DEP found on page 18 which discusses the author card provides:
The author card is the main entry card containing:

1. the author's complete name on the first line, surname first, which may be followed by the date of
his birth and death if he is no longer living;

2. the title of the book, and the subtitle if there is one;

3. the edition, if it is not the first;

4. the translator or illustrator, if any;

5. the imprint which includes the publisher, the place and date of publication;

6. the collation, composed of the number of pages, volume, illustrations, and the size of the book;

7. the subject with which the book deals; and

8. the call number on the upper-left hand corner.

Names beginning with MC, or M are filed in the card catalog considered spelled out as MAC, for example:
Mcleod - Macleod. This is true also of St. and Saint.
The entries found in an author card, having been developed over quite some time, are expectedly
uniform. Hence, HABANA, et at. and ROBLES would have no choice but to articulate the terms particular
to the entries in an identical manner.

I thus find that the ruling of the respondent court is totally supported by the evidence on record. Of
doctrinal persuasion is the principle that factual determinations of the Court of Appeals and the trial court
are conclusive and binding upon this Court, and the latter will not, as a rule, disturb these findings unless
compelling and cogent reasons necessitate a reexamination, if not a reversal, of the same. [30]Tested
against this jurisprudential canon, to subject the challenged decision of the Court of Appeals to further
scrutiny would be superfluous, if not, improvident.

I am not persuaded by the claim of HABANA, et at. that Laktaw is on all fours with and hence applicable
to the case at bar. There, this Court disposed that defendant, without the consent of and causing
irreparable damage to Laktaw, reproduced the latter's literary work Diccionario Hispano-Tagalog, and
improperly copied the greater part thereof in the work Diccionariong Kastila-Tagalog published by
defendant, in violation of Article 7 of the Law of 10 January 1879 on Intellectual Property. This Court
anchored its decision on the following observations:
(1) [O]f the 23, 560 Spanish words in the defendant's dictionary...only 3,108 words are the defendant's
own, or, what is the same thing, the defendant had added only this number of words to those that are in
the plaintiff's dictionary, he having reproduced or copied the remaining 20,452 words;

(2) [T]he defendant also literally reproduced and copied for the Spanish words in his dictionary, the
equivalents, definitions and different meanings in Tagalog, given in plaintiff's dictionary, having
reproduced, as to some words, everything that appears in the plaintiff's dictionary for similar Spanish
words, although as to some he made some additions of his own. Said copies and reproductions are
numerous ...;

(3) [T]he printer's errors in the plaintiff's dictionary as to the expression of some words in Spanish as well
as their equivalents in Tagalog are also reproduced, a fact which shows that the defendant, in preparing
his dictionary, literally copied those Spanish words and their meanings and equivalents in Tagalog from
the plaintiff's dictionary. [31]
Plainly, the rationale in Laktaw does not apply in this case. First, aside from an isolated accounting of the
number of words supposedly usurped in a segment of DEP from CET, [32] the records do not disclose that
all the words allegedly copied were tallied and that the words thus tallied were numerous enough to
support a finding of copying. Second, as already conceded, while there is an identity in the manner by
which some of the ideas and concepts were articulated, this prescinded from various factors already
elucidated. Besides, ROBLES' testimony that she made an independent investigation or research of the
original works or authors she consulted was unrebutted; [33] for germane here is the question of whether
the alleged infringer could have obtained the same information by going to the same source by her own
independent research. [34] ROBLES convinced the trial court and the Court of Appeals on this; thus, we
are bound by this factual determination, as likewise explained earlier. Third, reproduction of the printer's
errors or the author's blunders and inaccuracies in the infringing copy does not ipso facto constitute
copying or plagiarism or infringement, but it is conceded that they are telltale signs that infringement
might have committed. [35] However, the records do not reveal this to be the case. Fourth, the law on
intellectual property violated in Laktaw was a world and time apart from R.A. No. 8293 or even P.D. No.
49. Thus, under Article 7 of the Law of 10 January 1879, the Court ruled that nobody could reproduce
another person's work without the owner's consent, even merely to annotate or add anything to it, or
improve any edition thereof. The more recent laws on intellectual property, however, recognize recent
advancements in technology transfer and information dissemination. They thus allow the use of
copyrighted materials if compatible with fair use and to the extent justified for the purpose. In particular,
the new laws sanction the fair use of copyrighted work for criticism, comment, news reporting, teaching
including multiple copies for classroom use, scholarship, research and similar purposes. [36] Further, the
limitations of the exclusive use of copyrighted materials under Sections 10 and 11 of P.D. No. 49 in
consonance with the principle of fair use have been reproduced and incorporated in the new law. [37] All
told, Laktaw is inapplicable.

Fair use has been defined as a privilege to use the copyrighted material in a reasonable manner without
the consent of the copyrighted owner or as a copying the theme or ideas rather than their expression. [38]
No question of fair or unfair use arises however, if no copying is proved to begin with. This is in
consonance with the principle that there can be no infringement if there was no copying. [39] It is only
where some form of copying has been shown that it becomes necessary to determine whether it has
been carried to an "unfair," that is, illegal, extent. [40] Consequently, there is no reason to address the
issue of whether ROBLES abused a writer's right to fair use with the ascertainment that DEP was not a
copy or a substantial copy of CET.

WHEREFORE, I vote to DENY the petition and to AFFIRM the challenged decision of 27 June 1997 of
the Court of Appeals.

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