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G.R. No.

L-25265 May 9, 1978 the proprietor aid general manager of the National Book Store, as
enterprise engaged in the business of publishing, selling and
PEOPLE OF THE PHILIPPINES, plaintiff-appellant, distributing books, did then and there, wilfully and illegaly sell and
vs. distribute spurious and pirated copies of the high school textbook,
SOCORRO C. RAMOS, defendant-appellee, PHOENIX PUBLISHING HOUSE entitled General Science Today for Philippine School, First Year, by
INC., intervenor. Gilam, Van Houten and Cornista, said accused knowing that said
book was duly copyrighted by the Phoenix Publishing House, Inc.,
and was being distributed exclusively by its sister corporation,
G.R. No. L-25644 May 9, 1978
Alemar's or Sibal and Sons, Inc.1
SOCORRO C. RAMOS, petitioner,
On September 7, 1965, identical motions to quash 2 were filed by accused Ramos on
vs.
the ground of prescription, alleging therein, inter alia, that:
HON. PLACIDO RAMOS, in his capacity as Presiding Judge, Branch III, CFI,
Manila; and the PEOPLE OF THE PHILIPPINES, represented by State
Prosecutor DELIA P. MEDINA, respondents. xxx xxx xxx

Solicitor General Arturo A. Alafriz, Assistant Solicitor General Pacifica P. de Castro Consequently, the delivery of the alleged offense was made as early
and Solicitor Sumilang V. Bernardo for People of the Philippines. as July 17, 1963 and all subsequent knowledge or discoveries of
posterior sales and possession of said books by the respondents,
including that involved in the police search of September 4, 1963
Florence D. Regalado for Socorro C. Ramos.
were only confirmatory of the first. Under 91 of the Revised Penal
Code and in the light of the afore-quoted ruling announced in the
Sevilla & Aquino Law Office for Intervenor. Pangasinan Trans. Co. case, supra; the prescriptive period, therefore,
commenced to run on the day after such discovery on July 17, 1963
and, accordingly, the offense has long since prescribed since under
the Copyright Law, Act 3134:
SANTOS, J.:
Sec. 24. All actions, suits, or proceedings arising
The above-entitled cases — the first an appeal and the second a special civil action — under this Act shall be originally cognizable by the
are decided jointly because they raise a common — issue which arose from the Court of First Instance of the Philippine Islands and
prosecution of a common defendant, Socorro C. Ramos, for alleged violations of the shall prescribe after two years from the time the
copyright law—viz, whether or not the extra day in the leap year, 1964 should be taken cause of action arose.
into consideration in the computation of the two-year period of prescription provided in
Section 24 of the copyright law. Assuming arguendo, that the last actual sale should be the starting
point of computation, again the offense charged has prescribed, since,
The factual and procedural antecedents follow. as already pointed out, the documented evidence on this point shows
that the last sale was made on August 30, 1963.
On September 3, 1965, two criminal cases — No. 80006 of the Court of First Instance
of Manila, Branch III, and No. 80007 also of the same Court, Branch XIV— identical The prosecution, also in both cases, filed its Opposition to the Motion to
in every respect, except for the fact that they pertain to different editions of the same Quash 3 raising two issues, to wit:
textbook, were filed against Socorro C. Ramos, for alleged violations of Act 3134,
otherwise known as the Copyright Law, as amended. The information in Criminal Case 1. That the issue of prescription in this case can be resolved only after
No. 80007 alleged — the presentation of evidence and hence, it is premature to raise that
issue before trial
That on or about July to September, 1963, in the City of Manila and
within the jurisdiction of this Honorable Court, the said accused, as
2. That, as the violation committed by the defendant was a continuing 1. Under applicable and specific provisions of Philippine law, the
offense, the two-year prescriptive period may be counted from two-year period of prescription commencing on September 3, 1963
September 3, 1963, or one day before the search in defendants' ended on September 2, 1965 ...;
premises , which confirmed her possession of spurious and pirated
copies of the textbook in question. 2. The filing (of) proceedings in the Office of the City Fiscal of
Manila did not interrupt the prescriptive period.
The prosecution's theory is that "(T)he crime being a continuing offense, the statute of
limitations begins to run from the completion of the last act or series of acts which In Criminal Case No. 80007, Hon. Jesus De Veyra granted the motion to quash by an
constitute the offense, " and this last act was committed on September 3, 1963. order dated October 7, 1965. 8 Pertinent portion of his order reads:
Therefore when the information was filed on September 3, 1965, it was filed within the
two-year period, albeit the last day of the prescriptive period.
. . . . And now to the main issue - whether the crime has prescribed. In
the Opposition to the Motion to Quash, the Prosecution, in its
Again, in both the accused filed a "Reply to Opposition to Motion to Quash." 4 She insistence on the theory of a continuing crime, admits that the two-
alleged that even assuming that the crime is a continuing offense, the prescriptive year prescriptive period should run from September 3, 1963. This
period should start from August 30, 1963, the date of the last invoiced sale, and not case was filed on September 3, 1965 - one day too late. Article 13,
September 3, 1963, as there was no indubitable proof that she had sold copies of the CCP provides that year shall mean a period of 365 days. This had
questioned book on that date. Nonetheless, accused contended that even if the been applied to criminal cases (People v. del Rosario, 51 O.G., 2686).
prescriptive period should start from September 3, 1963, as proposed by the 1964 was a leap year so that when this case was filed, it was filed one
prosecution, the two-year period was tolled on September 2, 1965. She pointed out that day too late.
two years mean a period of 730 days in accordance with Article 13 of the New Civil
Code, and 1964, being a leap year consisting of 366 days, the 730th day fell on
The Motion to Quash is, therefore, granted and this case dismissed on
September 2, 1965. Hence, "... . when the information was filed on September 3, 1965,
the ground that the crime has already prescribed. (Emphasis
the offense, if any, had already prescribed. "
supplied.)

The prosecution filed a Rejoinder 5 in both cases alleging as follow:


The prosecution appealed the above order to this Court on October 15, 1965. 9

l. That February 28, and 29, 1964, should be regarded as one day
Meanwhile, in Criminal Case No. 80006, the motion to quash was not resolved until
only, and consequently, the two-year period commencing on December 23, 1965. On this date, Hon. Placido Ramos denied the motion to quash, and
September 3, 1963 would end on September 3, 1965;
set the arraignment of the accused on January 12, 1966, thus —

2. That under Act No. 3326, the prescriptive period was interrupted
Wherefore, finding the information to have been filed well within the
by the filing of the proceedings in the fiscal's office; statutory period of two years from the date of the last offense
committed by the accused the Court denies the motion to quash.
3. That prescription would not lie in this case because the
complainant never waived the right to prosecute the defendant.
The arraignment of the accused is hereby set on January 12, 1966 at
8:30 A.M.
Accused Ramos, also in cases, filed an Urgent Motion to Strike the Rejoinder, 6 on the
ground that it was filed after the case had been submitted for resolution. She prayed that
The trial court refused to accept the prosecution's view that the prescriptive period
"in the event that the same should at all be considered and allowed, that the accused be
should run from September 3, held instead, that the same should commence on
notified thereof and granted reasonable opportunity to file a surrejoinder...".
September 4, 1963.

It appears that the Rejoinder was admitted by both trial courts, but a Surrejoinder 7 was xxx xxx xxx
filed only in Criminal Case No. 80006. Here, the accused traversed the prosecution's
contentions in the Rejoinder, thus:
The evidence shows that on September 4, 1963, the Manila Police by The accused thus filed with this Court this petition for certiorari, mandamus and
virtue of a search warrant procured by the offended party, seized, prohibition, 13 with the following prayer:
among other articles, 69 copies of General Science Today for
Philippine Schools, First Year, by Gilman, Van Houten and Cornista (a) Forthwith issue, upon filing by petitioner of a bond in such
and one copy of the same textbook for Second Year (Exhibit 5). The amount as this Honorable Court may fix, a Writ of Preliminary
evidence likewise shows that on September 3, 1963, the National Injunction restraining, enjoining and prohibiting respondents from
Book Store, run and managed by the accused, sold one said textbook, further proceedings in Criminal Case No. 80006 of the Court of First
Exhibit 'D' and Exhibit '2'. The mere possession by the accused on instance of Manila, Branch III, daring the pendency of this Action:
September 4, 1963 of several copies of this textbook which is the
textbook alleged to be spurious and pirated, indicates that said
(b) After due hearing, to render judgment in favor of petitioner and
accused was distributing or selling said textbook on September 4,
against respondents —
1963 . . . This being the case, it follows of necessity that the period of
prescription commenced to run from September 4, 1963 and two
years from this date, by excluding the first and including the last, (1) Annulling and setting aside the Orders of the
would expire on September 4, 1965 and hence, the action, which was respondent Judge of December 23, 1965 (Annex
instituted on September 3, 1965 is well within the prescriptive period. 'G') denying petitioner's motion to quash, and of
January 20, 1966 (Annex 'K') denying petitioner's
motion for reconsideration;
xxx xxx xxx
(2) Ordering respondent Judge to dismiss Criminal
Furthermore, the trial court ignored the accused's theory on leap year:
Case No. 80006 aforesaid; and

Even if the last sale of said textbook could be considered to have


(3) Making the writ of preliminary injunction
taken place on September 3, 1963, Exhibits 'D' and '2', the Court is hereafter La be issued permanent and final.
also of the opinion that the two-year period would expire September
3, 1965.
This Court on February 11, 1966, issued a writ of preliminary injunction restraining the
trial Court from further proceedings in Criminal Case No. 80006. 14 Also on the same
The argument that inasmuch as 1964 is a leap year the two-year
date, the two cases, G.R. No. L-25265 and G.R. No. L-25644, were consolidated.
period must contain 731 days, as contemplated by Article 13 of the
Civil Code of the Philippines, is, in the opinion of the Court, without
merits for this particular legal provision that a year is understood to 1. In G.R. No. L-25265, the appeal, then Solicitor General Arturo Alafriz filed a four-
be of 365 days each is applicable only in determining the number of page brief dated December 21, 1965 15 wherein he recommended affirmance of the
days a year must legally contain but not for the purpose of order of 'Judge De Veyra quashing the information, and the dismissal of the appeal, for
ascertaining the period of prescription based on years. In the the simple reason that "the order appealed from is in accordance with law." Accused,
computation of the period of prescription, a year should be construed now appellee Ramos, filed a brief dated January 21, 1966 16 reiterating her previous
as the calendar year comprising the whole period from January 1 to allegations in the lower court.
December 31, regardless of the number of days it contains.
Consequently, in this particular case, if it is considered that the last The Phoenix Publishing House, Inc., the offended party, filed a motion to intervene in
sale took place on September 3, 1963, the two-year period, following this appeal, on the following grounds:
the rule exclude the- first-and-include-the-last, will expire on
September 3, 1965. a) That the Solicitor General, instead of prosecuting the appeal,
recommended its dismissal
The accused filed a Motion for Reconsideration. 10 Two more pleadings were
filed, 11 after which, the trial court finally denied said motion for reconsideration for b) That, to protect its interest, it is necessary that the movant be
lack of merit, 12 and reset the arraignment of the accused on February 24, 1966 at 8:30 allowed to intervene and to submit memorandum to sustain its view
A.M. that the criminal action against the accused had not yet prescribed. 17
Over the opposition of the accused-appellee, this Court granted the We find for petitioner. As We had occasion to hold in Quizon vs. Baltazar, 76 SCRA
same. 18 Accordingly, the Phoenix Publishing House, Inc. filed its 559:
Memorandum 19 wherein it alleged that the trial court erred
As to the contention of respondents that the denial of a motion to
I. IN ACTING ON DEFENDANT'S MOTION TO QUASH WITHOUT REQUIRING quash is not a ground for certiorari and prohibition, suffice it to state
THE PRESENTATION OF EVIDENCE IN SUPPORT OF THE PLEA OF that to allow an accused to undergo the ordeals of trial and conviction
PRESCRIPTION. when the information or complaint against him is patently defective
or the offense charged therein has been indisputably shown to have
II. IN NOT APPLYING TO THIS CASE THE FOUR-YEAR PRESCRIPTIVE already prescribed is unfair and unjust for which reason, procedurally,
PERIOD PROVIDED FOR IN ACT NO. 3326. the ordinary remedy of appeal cannot be plain and adequate.

III. IN NOT HOLDING THAT THE PRELIMINARY INVESTIGATION As to mandamus, We are incline to agree with respondent's allegation that "petitioner
PROCEEDINGS IN THE MANILA CITY FISCAL'S OFFICE AND IN THE has no cause of action for mandamus which is a writ intended to control the exercise of
DEPARTMENT OF JUSTICE INTERRUPTED PRESCRIPTION. a purely ministerial function. To quash an information is not a ministerial
function," 25 However, mandamus as a remedy is a superfluity here, considering that
petitioner can obtain full relief thru certiorari and prohibition.
IV. IN NOT CONSIDERING FEBRUARY 28 AND 29, 1964, AS ONE DAY FOR
PURPOSES OF PRESCRIPTION.
b. On the applicability of the four-year prescriptive period provided in Act No. 3326. 26
Accused-appellee, Ramos, filed a Reply Memorandum 20 refuting intervenor's
assignment of errors. Subsequent pleadings 21 focused on whether February 28, and 29 The same is not applicable. Said Act provides:
of a leap year should be counted as one day or separate days in computing the period of
prescription. Section 1. Violations penalized by special acts shall unless otherwise
provided in such acts, prescribe in accordance with the following
2. In G.R. No. L-25644-the special civil action — the issues raised in the foregoing rules: (a)........... (b) after four years for those punished by
assignment of errors were relied upon in respondent People's Answer. 22 And, following imprisonment for more than one month, but less than two years; ...
respondent Judge Ramos' reasoning, it was contended that the period of prescription (Emphasis supplied.)
should start from September 4, 1963, and not September 3, 1963, as originally proposed
by the prosecution. Furthermore, as an affirmative defense, it was alleged that the Act No. 3326 applies only if the special act does not provide for its own prescriptive
petitioner has no cause of action for certiorari, prohibition and mandamus since Judge period. It has no application here, where the Copyright Law provides for its own
Ramos did not commit any grave abuse of discretion in refusing to quash the prescriptive period, viz:
information. Respondent contended that the "(P)etitioner's remedy is to appeal the
judgment of conviction rendered after a trial on the merits. " This allegation was Section 24. All actions, suits, or proceedings arising under this Act
opposed by petitioner Ramos; 23 she insisted that she had a cause of action for certiorari shall be originally cognizable by the Courts of First Instance of the
prohibition and mandamus. Respondent People filed a Reply Memorandum 24 disputing Philippines and shall prescribe after two years from the time the cause
petitioner's allegations. of action arose.

We are, thus, faced with conflicting orders of two different Branches of the Court of 2. Now on the main issue of prescription. The question to be resolved is the proper
First Instance of Manila-one holding that the crime has prescribed, the other that it has computation of the two-year period of prescription from September 3, 1963. Resolution
not. of this issue hinges, in turn, on whether February 28, and 29 of a leap year, 1964,
should be counted as one day, as proposed by the prosecution; or as separate days, as
1. Now to resolve the preliminary issues: alleged by the defense.

a. On the propriety of the special civil action for certiorari and prohibition. This issue which was in 1965 still undetermined is now a settled matter. It was held in
1969 in Namarco vs. Tuazon 27 that February 28 and 29 of a leap year should be
counted as separate days in computing periods of prescription. Thus, this Court,
speaking thru former Chief Justice Roberto Concepcion, held that where the both Criminal Cases Nos. 80006 and 80007, with having
prescriptive period was supposed to commence on December 21, 1955, the filing of the allegedly sold and distributed spurious and pirated copies of the textbook in question,
action on December 21, 1965, was done after the ten-year period has lapsed — since not of illegal possession of the same. The prosecution's claim that the preliminary
1960 and 1964 were both leap years and the case was thus filed two (2) days too late. investigation proceedings in the Manila City Fiscal's Office and in the prosecution
Since this case was filed on September 3, 1965, it was filed one day too late; Division of the Department of Justice interrupted the running of the prescriptive period,
considering that the 730th day fell on September 2, 1965 — the year 1964 being a leap is also without merit. We held in People vs. Tayco 30 that the running of the period of
year. prescription is interrupted not by the act of the offended party in reporting the offense
to the final but the filing of the complaint or information in court.
In explaining the rationale for its holding, the Court took pains to trace the antecedent
decisional and statutory bases for its conclusion, thus — WHEREFORE, the order dated October 7, 1965 of the Court of First Instance of
Manila Branch XIV in Criminal Case No. 80007 dismissing the case on the ground of
Prior to the approval of the Civil Code of Spain, the Supreme Court prescription, is AFFIRMED. The order dated December 23, 1965 of the same court,
thereof held, on March 30, 1887, that, when the law spoke of months, Branch III, in Criminal Case No. 80006, is REVERSED and SET ASIDE, and the case
it meant a 'natural' month or 'solar' month, in the absence of express is DISMISSED, on the ground that the crime charged therein had already prescribed.
provision to the contrary. Such provision was incorporated into the Without pronouncement as to costs.
Civil Code of Spain, subsequently promulgated. Hence, the same
Supreme Court declared that, pursuant to Article 7 of said Code, SO ORDERED.
'whenever months are referred to in the law. it shall be understood
that months are of 30 days,' not the 'natural', 'solar' or 'calendar'
months, unless they are 'designated by name,' in which case, 'they
shall be computed by the actual number of days they have.' This
concept was, later, modified in the Philippines, by Section 13 of the
Revised Administrative Code, pursuant to which 'month shall be
understood to refer to a calendar month.' With the approval of the
Civil Code of the Philippines (RA 386) we have reverted to the
provisions of the Spanish Civil Code in accordance with which a
month is to be considered as the regular 30-month and not the solar or
civil month with the particularity that, whereas the Spanish Civil
Code merely mentioned 'months, days or nights,' ours has added
thereto the term 'years' and explicitly ordains in Article 13 that it shall
be understood that years are of three hundred sixty-five days. 28

With respect to the opinion of some members of the Court that Article 13 of the Civil
Code is unrealistic, the Court adverted to the proper remedy thus —

Although some justices of the Supreme Court are inclined to think


that Article 13 of the Civil Code defining 'years' to mean 365 days is
not realistic, the remedy is not judicial legislation. If public interest
demands a reversion to the policy embodied in the Revised
Administrative Code, this may be done through legislative process,
not by judicial decree. 29

Finally, there is no merit in the allegation that the reckoning of the prescriptive period
should start from September 4, 1963. This was the date when the police authorities
discovered several pirated books in accused's store. But the accused was charged, in
G.R. No. L-11937 April 1, 1918 The appellant contends that court below erred in not declaring that the defendant had
reproduced the plaintiff's work and that the defendant had violated article 7 of the Law
PEDRO SERRANO LAKTAW, plaintiff-appellant, of January 10, 1879, on Intellectual Property.
vs.
MAMERTO PAGLINAWAN, defendant-appellee. Said article provides:

Perfecto Gabriel for appellant. Nobody may reproduce another person's work without the owner's consent,
Felix Ferrer and Crossfield and O'Brien for appellee. even merely to annotate or add anything to it, or improve any edition thereof.

ARAULLO, J.: Therefore, in order that said article may be violated, it is not necessary, as the court
below seems to have understood, that a work should be an improper copy of another
In the complaint presented in the Court of First Instance of the City of Manila on work previously published. It is enough that another's work has been reproduced
February 20, 1915, it was alleged: (1) That the plaintiff was, according to the laws without the consent of the owner, even though it be only to annotate, add something to
regulating literary properties, the registered owner and author of a literary work it, or improve any edition thereof.
entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary) published in the
City of Manila in 1889 by the printing establishment La Opinion, and a copy of which Upon making a careful and minute comparison of Exhibit A, the dictionary written and
was attached to the complaint, as Exhibit A; (2) that the defendant, without the consent published by the plaintiff, and Exhibit B, written and published by the defendant, and,
of the plaintiff, reproduced said literary work, improperly copied the greater part taking into account the memorandum (fols. 55 to 59) presented by the defendant, in
thereof in the work published by him and entitled Diccionariong Kastila- which he enumerates the words and terms which, according to him, are in his dictionary
Tagalog (Spanish-Tagalog Dictionary), a copy of which was also attached to the but not in that of that of the plaintiff, and viceversa, and the equivalents or definitions
complaint as Exhibit B; (3) that said act of the defendant, which is a violation of article given by the plaintiff, as well as the new Tagalog words which are in the dictionary of
7 of the Law of January 10, 1879, on Intellectual Property, caused irreparable injuries the defendant but not in that of the plaintiff; and considering the notes, Exhibit C, first
to the plaintiff, who was surprised when, on publishing his new work series, presented by the plaintiff, in which the terms copied by the defendant from the
entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the plaintiff's dictionary are enumerated in detail and in relation to each letter of the
fact, and (4) that the damages occasioned to the plaintiff by the publication of alphabet and which the plaintiff's own words and terms are set forth, with a summary,
defendant's work amounted to $10,000. The plaintiff therefore prayed the court to order at the foot of each group of letters, which shows the number of initial Spanish words
the defendant to withdraw from sale all stock of the work herein identified as Exhibit B contained in the defendant's dictionary, the words that are his own and the fact that the
and to pay the plaintiff the sum of $10,000, with costs. remaining ones are truly copied from the plaintiff's dictionary — considering all of
these facts, we come to a conclusion completely different and contrary to that of the
The defendant in his answer denied generally each and every allegation of the trial court, for said evidence clearly shows:
complaint and prayed the court to absolve him from the complaint. After trial and the
introduction of evidence by both parties, the court on August 20, 1915, rendered 1. That, of the Spanish words in the defendant's dictionary, Exhibit B, which
judgment, absolving the defendant from the complaint, but without making any special correspond to each letter of the alphabet, those that are enumerated below have been
pronouncement as to costs. The plaintiff moved for a new trial on the ground that the copied and reproduced from the plaintiff's dictionary, with the exception of those that
judgment was against the law and the weight of the evidence. Said motion having been are stated to be defendant's own.
overruled, plaintiff excepted to the order overruling it, and appealed the case to the
Supreme Court upon a bill of exceptions.
Letter Words Defendant's own
The ground of the decision appealed from is that a comparison of the plaintiff's "A" 1,184 231
dictionary with that of the defendant does not show that the latter is an improper copy
of the former, which has been published and offered for sale by the plaintiff for about "B" 364 28
twenty-five years or more. For this reason the court held that the plaintiff had no right
of action and that the remedy sought by him could not be granted. "C" 660 261

"CH" 76 10
"D" 874 231 ______ _____

"E" 880 301 23,560 3,108

"F" 383 152


Therefore, of the 23,560 Spanish words in the defendant's dictionary, after deducting 17
"G" 302 111 words corresponding to the letters K and X (for the plaintiff has no words
corresponding to them), only 3,108 words are the defendant's own, or, what is the same
"H" 57 64 thing, the defendant has 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.
"I" 814 328
2. That the defendant also literally reproduced and copied for the Spanish words in his
"J" 113 25 dictionary, the equivalents, definitions and different meanings in Tagalog, given in
plaintiff's dictionary, having reproduced, as to some words, everything that appears in
"K" 11 11 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 as may be seen, by
"L" 502 94
comparing both dictionaries and using as a guide or index the defendant's memorandum
"LL" 36 2 and notes, first series, Exhibit C, in which, as to each word, the similarities and
differences between them are set forth in detail.
"M" 994 225
3. That the printer's errors in the plaintiff's dictionary as to the expression of some
"N" 259 53 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
"Ñ" 6 2 Spanish words and their meanings and equivalents in Tagalog from the plaintiff's
dictionary.
"O" 317 67
The trial court has chosen at random, as is stated in the judgment appealed from, some
"P" 803 358
words from said dictionaries in making the comparison on which its conclusion is
based, and consequently the conclusion reached by it must be inaccurate and not well
"Q" 84 11
founded, because said comparison was not complete.
"R" 847 140
In said judgment some words of the defendant's dictionary are transcribed, the
"S" 746 118 equivalents and meanings of which in Tagalog are exactly the same as those that are
given in the plaintiff's dictionary, with the exception, as to some of them, of only one
"T" 591 147 acceptation, which is the defendant's own production. And with respect to the examples
used by the defendant in his dictionary, which, according to the judgment, are not
"U" 107 15 copied from the plaintiff's — the judgment referring to the preposition a (to), in
Tagalog sa — it must be noted that the defendant, in giving in his dictionary an
"V" 342 96 example of said preposition, uses the expression "voy a Tayabas" (I am going to
Tayabas) instead of "voy aBulacan" (I am going to Bulacan), as the plaintiff does in his
"X" 6 6 dictionary, or what is the same thing, that one speaks of Bulacan while the other speaks
of Tayabas. This does not show that there was no reproduction or copying by the
"Y" 24 4 defendant of the plaintiffs work, but just the opposite, for he who intends to imitate the
work of another, tries to make it appear in some manner that there is some difference
"Z" 73 17
between the original and the imitation; and in the example referred to, with respect to
the preposition a (to), that dissimilarity as to the province designated seems to effect the It appears from the evidence that although the plaintiff did not introduce at the trial the
same purpose. certificate of registration of his property rights to said work which, according to said
rules, was kept in the Central Government of these Islands, and was issued to him in
In the judgment appealed from, the court gives one to understand that the reproduction 1890, the same having been lost during the revolution against Spain, and no trace
of another's dictionary without the owner's consent does not constitute a violation of the relative to the issuance of said certificate being obtainable in the Division of Archives
Law of Intellectual Property for the court's idea of a dictionary is stated in the decision of the Executive Bureau on account of the loss of the corresponding records, yet as in
itself, as follows: the first page of said dictionary the property right of the plaintiff was reserved by means
of the words "Es propiedad del autor" (All rights reserved), taken in connection with the
Dictionaries have to be made with the aid of others, and they are improved by permission granted him by the Governor-General on November 24, 1889, to print and
publish said dictionary, after an examination thereof by the permanent committee of
the increase of words. What may be said of a pasture ground may be said also
censors, which examination was made, and the necessary license granted to him, these
of a dictionary, i. e., that it should be common property for all who may desire
facts constitute sufficient proof, under the circumstances of the case, as they have not
to write a new dictionary, and the defendant has come to this pasture ground
been overcome by any evidence on the part of the defendant, showing that said plaintiff
and taken whatever he needed from it in the exercise of a perfect right.
did not comply with the requirements of article 36 of said law, which was the
prerequisite to the enjoyment of the benefits thereof according to the preceding articles,
Such idea is very erroneous, especially in relation to the Law of Intellectual Property. among which is article 7, which is alleged in the complaint to have been violated by the
Danvilla y Collado the author of the Law of January 10, 1879, on Intellectual Property, defendant.
which was discussed and approved in the Spanish Cortes, in his work entitled La
Propiedad Intelectual (page 362, 1st ed.) states with respect to dictionaries and in
relation to article 7 of said law: Even considering that said Law of January 10, 1879, ceased to operate in these Islands,
upon the termination of Spanish sovereignty and the substitution thereof by that of the
United States of America, the right of the plaintiff to invoke said law in support of the
The protection of the law cannot be denied to the author of a dictionary, for action instituted by him in the present case cannot be disputed. His property right to the
although words are not the property of anybody, their definitions, the example work Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary), published by him
that explain their sense, and the manner of expressing their different meanings, and edited in 1889, is recognized and sanctioned by said law, and by virtue thereof, he
may constitute a special work. On this point, the correctional court of the had acquired a right of which he cannot be deprived merely because the law is not in
Seine held, on August 16, 1864, that a dictionary constitutes property, force now or is of no actual application. This conclusion is necessary to protect
although some of the words therein are explained by mere definitions intellectual property rights vested after the sovereignty of Spain was superseded by that
expressed in a few lines and sanctioned by usage, provided that the greater part of the United States. It was so held superseded by that of the United States. It was so
of the other words contain new meanings; new meanings which evidently may held in the Treaty of Paris of December 10, 1898, between Spain and the United States,
only belonged to the first person who published them. when it declared in article 13 thereof that the rights to literary, artistic, and industrial
properties acquired by the subject of Spain in the Island of Cuba and in Puerto Rico and
Therefore, the plaintiff, Pedro Serrano, cannot be denied the legal protection which he the Philippines and other ceded territories, at the time of the exchange of the ratification
seeks, and which is based on the fact that the dictionary published by him in 1889 is his of said Treaty, shall continue to be respect.
property — said property right being recognized and having been granted by article 7,
in connection with article 2, of said law — and on the further fact that said work was In addition to what has been said, according to article 428 of the Civil Code, the author
reproduced by the defendant without his permission. of a literary, scientific, or artistic work, has the right to exploit it and dispose thereof at
will. In relation to this right, there exists the exclusive right of the author, who is the
This law was published in the Gaceta de Madrid on January 12, 1879. It took effect in absolute owner of his own work, to produce it, according to article 2 of the Law of
these Islands six months after its promulgation or publication, as provided in article 56 January 10, 1879, and consequently, nobody may reproduce it, without his permission,
thereof. The body of rules for the execution of said law having been approved by royal not even to annotate or add something to it, or to improve any edition thereof,
decree of September 3, 1880, and published in the Gaceta de Madrid on September 6, according to article 7 of said law. Manresa, in his commentaries on article 429 of the
1880 and extended to the Philippine Islands by royal decree of May 5, 1887, it was in Civil Code (vol. 3, p. 633, 3d ed.) says that the concrete statement of the right to literary
turn published in the Gaceta de Manila, with the approval of the Governor-General of properties is found in the legal doctrine according to which nobody may reproduce
the Islands, on June 15, 1887. Said law of January 10, 1879, and the rules for its another person's work, without the consent of his owner, or even to annotate or add
application, were therefore in force in these Islands when the plaintiff's dictionary was something to it or to improve any edition thereof. And on page 616 of said volume,
edited and published in 1889. Manresa says the following:
He who writes a book, or carves a statue, or makes an invention, has the instituted by said plaintiff being proper, we reverse the judgment appealed from and
absolute right to reproduce or sell it, just as the owner of land has the absolute order the defendant to withdraw from sale, as prayed for in the complaint, all stock of
right to sell it or its fruits. But while the owner of land, by selling it and its his work above-mentioned, and to pay the costs of first instance. We make no special
fruits, perhaps fully realizes all its economic value, by receiving its benefits pronouncement as to the costs of this instance. So ordered.
and utilities, which are presented, for example, by the price, on the other hand
the author of a book, statue or invention, does not reap all the benefits and Arellano, C. J., Torres, and Street, JJ., concur.
advantages of his own property by disposing of it, for the most important form Carson, and Malcolm, JJ., concur in the result.
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 no way rewarded.

Indeed the property right recognized and protected by the Law of January 10, 1879, on
Intellectual Property, would be illusory if, by reason of the fact that said law is no
longer in force as a consequence of the change of sovereignty in these Islands, the
author of a work, who has the exclusive right to reproduce it, could not prevent another
person from so doing without his consent, and could not enforce this right through the
courts of justice in order to prosecute the violator of this legal provision and the
defrauder or usurper of his right, for he could not obtain the full enjoyment of the book
or other work, and his property right thereto, which is recognized by law, would be
reduced, as Manresa says, to an insignificant thing, if he should have no more right than
that of selling his work.

The reproduction by the defendant without the plaintiff's consent of the Diccionario
Hispano-Tagalog (Spanish-Tagalog Dictionary), published and edited in the City of
Manila in 1889, by the publication of the Diccionariong Kastila-Tagalog (Spanish-
Tagalog Dictionary), published in the same city and edited in the press El Progreso in
1913, as appears from Exhibit B, which is attached to the complaint, has caused the
plaintiff, according to the latter, damages in the sum of $10,000. It is true that it cannot
be denied that the reproduction of the plaintiff's book by the defendant has caused
damages to the former, but the amount thereof has not been determined at the trial, for
the statement of the plaintiff as to the proceeds he would have realized if he had printed
in 1913 the number of copies of his work which he stated in his declaration — a fact
which he did not do because the defendant had reproduced it — was not corroborated in
any way at the trial and is based upon mere calculations made by the plaintiff himself;
for which reason no pronouncement can be made in this decision as to the
indemnification for damages which the plaintiff seeks to recover.

The plaintiff having prayed, not for a permanent injunction against the defendant, as the
plaintiff himself in his brief erroneously states, but for a judgment ordering the
defendant to withdraw from sale all stock of his work Diccionariong Kastila-
Tagalog (Spanish-Tagalog Dictionary), of which Exhibit B is a copy, and the suit
[G.R. No. 131522. July 19, 1999] 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,
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. abridgement, arrangement or other transformation of the work; 177.3 The first
FERNANDO, petitioners, vs. FELICIDAD C. ROBLES and GOODWILL public distribution of the original and each copy of the work by sale or other
TRADING CO., INC., respondents. 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
DECISION 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
SYNOPSIS 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
Petitioners herein are authors and copyright owners of their published books while public of the work The law also provided for the limitations on copyright, thus:
respondents Robles and Goodwill Trading Co., Inc. are authors and publishers, Sec. 184.1 Limitations on copyright. Notwithstanding the provisions of Chapter
respectively, of another published work that was also covered by copyrights issued to V, the following acts shall not constitute infringement of copyright: (a) the
them. In the course of revising their published works, petitioners chanced upon the recitation or performance of a work, once it has been lawfully made accessible to
book of respondent Robles. After an itemized examination and comparison of the the public, if done privately and free of charge or if made strictly for a charitable
books, petitioners found that several pages of the respondents book are similar, if not or religious institution or society; [Sec. 10(1), P.D. No. 49] (b) The making of
altogether a copy from the petitioners book, which is a case of plagiarism and copyright quotations from a published work if they are compatible with fair use and only to
infringement. When respondents ignored demands of petitioners for damages, the latter the extent justified for the purpose, including quotations from newspaper articles
filed a complaint for infringement and/or unfair competition with damages. The trial and periodicals in the form of press summaries; Provided, that the source and the
court dismissed the complaint of the petitioners herein. Petitioners appealed their case name of the author, if appearing on the work are mentioned; (Sec. 11 third par.
to the Court of Appeals (CA), which affirmed the judgment of the trial court. The CA P.D. 49) xxx (e) The inclusion of a work in a publication, broadcast, or other
also deleted the award of attorneys fees, since its view was that there was no bad faith communication to the public, sound recording of film, if such inclusion is made
on the part of the petitioners in instituting the action. The petitioners filed a motion for by way of illustration for teaching purposes and is compatible with fair
reconsideration, but, the CA denied the same, hence, this petition for review use: Provided, That the source and the name of the author, if appearing in the
on certiorari. work is mentioned; In the above-quoted provisions, work has reference to literary
In cases of infringement, copying alone is not what is prohibited. The copying and artistic creations and this includes books and other literary, scholarly and
must produce an injurious effect. Here, the injury consists in that respondent Robles scientific works.
lifted from petitioners book materials that were the result of the latters research work 2. ID.; ID.; INFRINGEMENT; CONSTRUED; WHEN COMMITTED. When is
and compilation and misrepresented them as her own. The least that respondent Robles there a substantial reproduction of a book? It does not necessarily require that the
could have done was to acknowledge petitioners as the source of her book. To allow entire copyrighted work, or even a large portion of it, be copied. If so much is
another to copy the book without appropriate acknowledgment is injury enough. The taken that the value of the original work is substantially diminished, there is an
petition was granted. The case was ordered remanded to the trial court for further infringement of copyright and to an injurious extent, the work is appropriated. In
proceedings to receive evidence of the parties to ascertain the damages caused and determining the question of infringement, the amount of matter copied from the
sustained by petitioners and to render decision in accordance with the evidence copyrighted work is an important consideration. To constitute infringement, it is
submitted to it. not necessary that the whole or even a large portion of the work shall have been
SYLLABUS 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
1. COMMERCIAL LAW; INTELLECTUAL PROPERTY CODE OF THE appropriated by another, that is sufficient in point of law to constitute piracy. The
PHILIPPINES; PROVIDES PROTECTION FOR COPYRIGHT essence of intellectual piracy should be essayed in conceptual terms in order to
OWNER. At present, all laws dealing with the protection of intellectual property underscore its gravity by an appropriate understanding thereof. Infringement of a
rights have been consolidated and as the law now stands, the protection of copyright is a trespass on a private domain owned and occupied by the owner of
copyrights is governed by Republic Act No. 8293. Notwithstanding the change in the copyright, and, therefore, protected by law, and infringement of copyright, or
the law, the same principles are reiterated in the new law under Section 177. It piracy, which is a synonymous term in this connection, consists in the doing by
provides for the copy or economic rights of an owner of a copyright as follows:
any person, without the consent of the owner of the copyright, of anything the sole and beneficial actions, the use of intellectual property or creations should basically
right to do which is conferred by statute on the owner of the copyright. promote the creator or authors personal and economic gain. Hence, the copyright
protection extended to the creator should ensure his attainment of some form of
3. ID.; ID.; ID.; WHEN NOT COMMITTED. In this jurisdiction under Sec. 184 of personal satisfaction and economic reward from the work he produced.
Republic Act 8293 it is provided that: Limitations on Copyright. Notwithstanding
the provisions of Chapter V, the following shall not constitute infringement of 2. ID.; ID.; ID.; INFRINGEMENT; CONSTRUED. The execution of any one or
copyright: xxx ( c ) The making of quotations from a published work if they are more of the exclusive rights conferred by law on a copyright owner, without his
compatible with fair use and only to the extent justified for the purpose, including consent, constitutes copyright infringement. In essence, copyright infringement,
quotations from newspaper articles and periodicals in the form of press known in general as piracy, is a trespass on a domain owned and occupied by a
summaries: Provided, That the source and the name of the author, if appearing on copyright owner; it is violation of a private right protected by law. With the
the work, are mentioned. A copy of a piracy is an infringement of the original, invasion of his property rights, a copyright owner is naturally entitled to seek
and it is no defense that the pirate, in such cases, did not know whether or not he redress, enforce and hold accountable the defrauder or usurper of said economic
was infringing any copyright; he at least knew that what he was copying was not rights.
his, and he copied at his peril.
3. ID.; ID.; ID.; ID.; TEST TO DETERMINE COPYRIGHT INFRINGEMENT;
4. ID.; ID.; COPYRIGHT; PURPOSE THEREOF. In copyrighting books the NO VIOLATION; CASE AT BAR. To constitute infringement, the usurper
purpose is to give protection to the intellectual product of an author. This is must have copied or appropriated the original work of an author or copyright
precisely what the law on copyright protected, under Section 184.1 (b). proprietor; absent copying, there can be no infringement of copyright. In turn, a
Quotations from a published work if they are compatible with fair use and only to work is deemed by law an original if the author created it by his own skill, labor
the extent justified by the purpose, including quotations from newspaper articles and judgment. On its part, a copy is that which comes so near to the original so as
and periodicals in the form of press summaries are allowed provided that the to give to every person seeing it the idea created by the original. It has been held
source and the name of the author, if appearing on the work, are mentioned. 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. To constitute a
substantial reproduction, it is not necessary that the entire copyrighted work, or
DAVIDE, JR.,C.J., dissenting opinion: 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
1. COMMERCIAL LAW; R.A. No. 8293 (INTELLECTUAL PROPERTY substantially, and to an injurious extent, appropriated. But the similarity of the
CODE); COPYRIGHT; DEFINED; PURPOSE OF THE LAW. A copyright books here does not amount to an appropriation of a substantial portion of the
may be accurately defined as the right granted by statute to the proprietor of an published work COLLEGE ENGLISH FOR TODAY. If the existence of
intellectual production to its exclusive use and enjoyment to the extent specified in substantial similarities does not of itself establish infringement, mere similarities
the statute. Under Section 177 of R.A. No. 8293, the copy or economic right (not substantial similarities) in some sections of the books in question decisively
(copyright and economic right are used interchangeably in the statute) consists of militate against a claim for infringement where the similarities had been
the exclusive right to carry out, authorize or prevent the following acts: 177.1 convincingly established as proceeding from a number of reasons and/or factors.
Reproduction of the work or substantial portion of the work; 177.2 Dramatization,
4. ID.; ID.; ID.; FAIR USE OF COPYRIGHTED MATERIAL; DEFINED AND
translation, adaptation, abridgment, arrangement or other transformation of the
CONSTRUED. Fair use has been defined as a privilege to use the copyrighted
work; 177.3 The first public distribution of the original and each copy of the work
material in a reasonable manner without the consent of the copyright owner or as
by sale or other forms of transfer of ownership; 177.4 Rental of the original or a
copying the theme or ideas rather than their expression. No question of fair or
copy of an audiovisual or cinematographic work, a work embodied in a sound
unfair use arises however, if no copying is proved to begin with. This is in
recording, a computer program, a compilation of data and other materials or a
consonance with the principle that there can be no infringement if there was no
musical work in graphic form, irrespective of the ownership of the original or the
copying. It is only where some form of copying has been shown that it becomes
copy which is the subject of the rental; 177.5 Public display of the original or a
necessary to determine whether it has been carried to an unfair, that is, illegal,
copy of the work; 177.6 Public performance of the work; and 177.7 Other
extent.
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 5. REMEDIAL LAW; EVIDENCE; FACTUAL FINDINGS OF THE COURT OF
the literary and artistic domain protected from the moment of their creation and APPEALS AND THE TRIAL COURT; CONCLUSIVE AND BINDING
enumerated in Section 172.1, which includes books and other literary, scholarly, UPON THE SUPREME COURT; EXCEPTION. Of doctrinal persuasion is the
scientific and artistic works. Stripped in the meantime of its indisputable social 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 the book CET in the book DEP, without the authority or consent of petitioners, and the
these findings unless compelling and cogent reasons necessitate a reexamination, misrepresentations of respondent Robles that the same was her original work and
if not a reversal, of the same. Tested against this jurisprudential canon, to subject concept adversely affected and substantially diminished the sale of the petitioners book
the challenged decision of the Court of Appeals to further scrutiny would be and caused them actual damages by way of unrealized income.
superfluous, if not, improvident.
Despite the demands of the petitioners for respondents to desist from committing
PARDO, J.: 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 case before us is a petition for review on certiorari[1] to set aside the (a) the book DEP, together with the molds, plates and films and other materials used in its
decision of the Court of Appeals[2], and (b) the resolution denying petitioners motion printing destroyed, and for respondents to render an accounting of the proceeds of all
for reconsideration,[3] in which the appellate court affirmed the trial courts dismissal of sales and profits since the time of its publication and sale.
the complaint for infringement and/or unfair competition and damages but deleted the Respondent Robles was impleaded in the suit because she authored and directly
award for attorneys fees. committed the acts of infringement complained of, while respondent Goodwill Trading
The facts are as follows: 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
Petitioners are authors and copyright owners of duly issued certificates of respondent Robles with obvious connivance with one another.
copyright registration covering their published works, produced through their combined
resources and efforts, entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), On July 27, 1988, respondent Robles filed a motion for a bill of
Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1. particulars[6] which the trial court approved on August 17, 1988. Petitioners complied
with the desired particularization, and furnished respondent Robles the specific
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the portions, inclusive of pages and lines, of the published and copyrighted books of the
author/publisher and distributor/seller of another published work entitled petitioners which were transposed, lifted, copied and plagiarized and/or otherwise
DEVELOPING ENGLISH PROFICIENCY (DEP for brevity), Books 1 and 2 (1985 found their way into respondents book.
edition) which book was covered by copyrights issued to them.
On August 1, 1988, respondent Goodwill Trading Co., Inc. filed its answer to the
In the course of revising their published works, petitioners scouted and looked complaint[7] and alleged that petitioners had no cause of action against Goodwill
around various bookstores to check on other textbooks dealing with the same subject Trading Co., Inc. since it was not privy to the misrepresentation, plagiarism,
matter. By chance they came upon the book of respondent Robles and upon perusal of incorporation and reproduction of the portions of the book of petitioners; that there was
said book they were surprised to see that the book was strikingly similar to the contents, an agreement between Goodwill and the respondent Robles that Robles guaranteed
scheme of presentation, illustrations and illustrative examples in their own book, CET. 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
After an itemized examination and comparison of the two books (CET and DEP),
assumed sole responsibility and held the publisher without any liability.
petitioners found that several pages of the respondents book are similar, if not all
together a copy of petitioners book, which is a case of plagiarism and copyright On November 28, 1988, respondent Robles filed her answer [8], and denied the
infringement. 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,
Petitioners then made demands for damages against respondents and also
and was not a copy of any existing valid copyrighted book; (2) DEP followed the scope
demanded that they cease and desist from further selling and distributing to the general
and sequence or syllabus which are common to all English grammar writers as
public the infringed copies of respondent Robles works.
recommended by the Association of Philippine Colleges of Arts and Sciences
However, respondents ignored the demands, hence, on July 7, 1988, petitioners (APCAS), so any similarity between the respondents book and that of the petitioners
filed with the Regional Trial Court, Makati, a complaint for Infringement and/or unfair was due to the orientation of the authors to both works and standards and syllabus; and
competition with damages[4] against private respondents.[5] (3) the similarities may be due to the authors exercise of the right to fair use of
copyrigthed materials, as guides.
In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles
being substantially familiar with the contents of petitioners works, and without securing Respondent interposed a counterclaim for damages on the ground that bad faith
their permission, lifted, copied, plagiarized and/or transposed certain portions of their and malice attended the filing of the complaint, because petitioner Habana was
book CET. The textual contents and illustrations of CET were literally reproduced in professionally jealous and the book DEP replaced CET as the official textbook of the
the book DEP. The plagiarism, incorporation and reproduction of particular portions of graduate studies department of the Far Eastern University. [9]
During the pre-trial conference, the parties agreed to a stipulation of facts[10] and including foreign books, e.i. Edmund Burkes Speech on Conciliation, Boerigs
for the trial court to first resolve the issue of infringement before disposing of the claim Competence in English and Broughtons, Edmund Burkes Collection.
for damages.
After the trial on the merits, on April 23, 1993, the trial court rendered its xxx
judgment finding thus:
Appellants reliance on the last paragraph on Section 11 is misplaced. It must be
WHEREFORE, premises considered, the court hereby orders that the complaint filed emphasized that they failed to prove that their books were made sources by appellee. [15]
against defendants Felicidad Robles and Goodwill Trading Co., Inc. shall be
DISMISSED; that said plaintiffs solidarily reimburse defendant Robles for P20,000.00 The Court of Appeals was of the view that the award of attorneys fees was not
attorneys fees and defendant Goodwill for P5,000.00 attorneys fees. Plaintiffs are liable proper, since there was no bad faith on the part of petitioners Habana et al. in instituting
for cost of suit. the action against respondents.
On July 12, 1997, petitioners filed a motion for reconsideration,[16] however, the
IT IS SO ORDERED. Court of Appeals denied the same in a Resolution[17] dated November 25, 1997.

Done in the City of Manila this 23rd day of April, 1993. Hence, this petition.
In this appeal, petitioners submit that the appellate court erred in affirming the
(s/t) MARVIE R. ABRAHAM SINGSON trial courts decision.
Assisting Judge
S. C. Adm. Order No. 124-92[11] 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
On May 14, 1993, petitioners filed their notice of appeal with the trial court [12],
the part of respondent when they refused to withdraw the copies of CET from the
and on July 19, 1993, the court directed its branch clerk of court to forward all the
market despite notice to withdraw the same; and (3) whether or not respondent Robles
records of the case to the Court of Appeals.[13]
abused a writers right to fair use, in violation of Section 11 of Presidential Decree No.
In the appeal, petitioners argued that the trial court completely disregarded their 49.[18]
evidence and fully subscribed to the arguments of respondent Robles that the books in
We find the petition impressed with merit.
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 The complaint for copyright infringement was filed at the time that Presidential
assailed the findings of the trial court that they were animated by bad faith in instituting Decree No. 49 was in force. At present, all laws dealing with the protection of
the complaint.[14] 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
On June 27, 1997, the Court of Appeals rendered judgment in favor of
change in the law, the same principles are reiterated in the new law under Section
respondents Robles and Goodwill Trading Co., Inc. The relevant portions of the
177. It provides for the copy or economic rights of an owner of a copyright as follows:
decision state:
Sec.177. Copy or Economic rights.Subject to the provisions of chapter VIII, copyright
It must be noted, however, that similarity of the allegedly infringed work to the authors
or economic rights shall consist of the exclusive right to carry out, authorize or prevent
or proprietors copyrighted work does not of itself establish copyright infringement,
the following acts:
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.
177.1 Reproduction of the work or substantial portion of the work;
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 177.2 Dramatization, translation, adaptation, abridgement, arrangement or other
most of the topics or materials contained in her book, with particular reference to those transformation of the work;
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,
177.3 The first public distribution of the original and each copy of the work by sale or He died on Monday, April 15, 1975.
other forms of transfer of ownership; Miss Reyes lives in 214 Taft Avenue,
Manila[22]
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a On page 73 of respondents Book 1 Developing English Today, they wrote:
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 He died on Monday, April 25, 1975.
original or the copy which is the subject of the rental; (n) Miss Reyes address is 214 Taft Avenue Manila[23]
On Page 250 of CET, there is this example on parallelism or repetition of sentence
177.5 Public display of the original or copy of the work;
structures, thus:

177.6 Public performance of the work; and


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
177.7 Other communication to the public of the work[19] 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
The law also provided for the limitations on copyright, thus: 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
Sec. 184.1 Limitations on copyright.-- Notwithstanding the provisions of Chapter V, spirit of peace, and laid in principles purely pacific.
the following acts shall not constitute infringement of copyright:
--- Edmund Burke, Speech on Criticism.[24]
(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 On page 100 of the book DEP[25], also in the topic of parallel structure and
strictly for a charitable or religious institution or society; [Sec. 10(1), repetition, the same example is found in toto. The only difference is that petitioners
P.D. No. 49] acknowledged the author Edmund Burke, and respondents did not.
(b) The making of quotations from a published work if they are compatible In several other pages[26] the treatment and manner of presentation of the topics of
with fair use and only to the extent justified for the purpose, including DEP are similar if not a rehash of that contained in CET.
quotations from newspaper articles and periodicals in the form of press
summaries; Provided, that the source and the name of the author, if We believe that respondent Robles act of lifting from the book of petitioners
appearing on the work are mentioned; (Sec. 11 third par. P.D.49) substantial portions of discussions and examples, and her failure to acknowledge the
same in her book is an infringement of petitioners copyrights.
xxxxxxxxxxxx
When is there a substantial reproduction of a book? It does not necessarily require
(e) The inclusion of a work in a publication, broadcast, or other that the entire copyrighted work, or even a large portion of it, be copied. If so much is
communication to the public, sound recording of film, if such inclusion is taken that the value of the original work is substantially diminished, there is an
made by way of illustration for teaching purposes and is compatible with infringement of copyright and to an injurious extent, the work is appropriated. [27]
fair use: Provided, That the source and the name of the author, if
appearing in the work is mentioned;[20] 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
In the above quoted provisions, work has reference to literary and artistic necessary that the whole or even a large portion of the work shall have been copied. If
creations and this includes books and other literary, scholarly and scientific works. [21] 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,
A perusal of the records yields several pages of the book DEP that are similar if that is sufficient in point of law to constitute piracy. [28]
not identical with the text of CET.
The essence of intellectual piracy should be essayed in conceptual terms in order
On page 404 of petitioners Book 1 of College English for Today, the authors to underscore its gravity by an appropriate understanding thereof. Infringement of a
wrote: copyright is a trespass on a private domain owned and occupied by the owner of the
Items in dates and addresses: 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, complaint while pharisaically denying petitioners demand. It was further noted that
without the consent of the owner of the copyright, of anything the sole right to do when the book DEP was re-issued as a revised version, all the pages cited by petitioners
which is conferred by statute on the owner of the copyright. [29] to contain portion of their book College English for Today were eliminated.
The respondents claim that the copied portions of the book CET are also found in In cases of infringement, copying alone is not what is prohibited. The copying
foreign books and other grammar books, and that the similarity between her style and must produce an injurious effect. Here, the injury consists in that respondent Robles
that of petitioners can not be avoided since they come from the same background and lifted from petitioners book materials that were the result of the latters research work
orientation may be true. However, in this jurisdiction under Sec 184 of Republic Act and compilation and misrepresented them as her own. She circulated the book DEP for
8293 it is provided that: commercial use and did not acknowledge petitioners as her source.
Limitations on Copyright. Notwithstanding the provisions of Chapter V, the Hence, there is a clear case of appropriation of copyrighted work for her benefit
following shall not constitute infringement of copyright: 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
xxxxxxxxxxxx enough. In copyrighting books the purpose is to give protection to the intellectual
(c) The making of quotations from a published work if they are compatible product of an author. This is precisely what the law on copyright protected, under
with fair use and only to the extent justified for the purpose, including Section 184.1 (b). Quotations from a published work if they are compatible with fair
quotations from newspaper articles and periodicals in the form of press use and only to the extent justified by the purpose, including quotations from
summaries: Provided, That the source and the name of the author, if newspaper articles and periodicals in the form of press summaries are allowed provided
appearing on the work, are mentioned. 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 In the case at bar, the least that respondent Robles could have done was to
pirate, in such cases, did not know whether or not he was infringing any copyright; he acknowledge petitioners Habana et. al. as the source of the portions of DEP. The final
at least knew that what he was copying was not his, and he copied at his peril.[30] product of an authors toil is her book. To allow another to copy the book
without appropriate acknowledgment is injury enough.
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 WHEREFORE, the petition is hereby GRANTED. The decision and resolution
of the books or large segments of the books are the same? 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
In the case at bar, there is no question that petitioners presented several pages of parties to ascertain the damages caused and sustained by petitioners and to render
the books CET and DEP that more or less had the same contents. It may be correct that decision in accordance with the evidence submitted to it.
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 SO ORDERED.
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
[G.R. No. 147043. June 21, 2005] (ii) xxx distribute directly or indirectly and license copies of the Product (reproduced as
per Section 2(a)(i) and/or acquired from Authorized Replicator or Authorized
Distributor) in object code form to end users[.] xxxx[5]

NBI MICROSOFT CORPORATION & LOTUS DEVELOPMENT The Agreement also authorized Microsoft and Beltron to terminate the contract if
CORP., petitioners, vs. JUDY C. HWANG, BENITO KEH & YVONNE the other fails to comply with any of the Agreements provisions. Microsoft terminated
K. CHUA/BELTRON COMPUTER PHILIPPINES INC., JONATHAN the Agreement effective 22 June 1995 for Beltrons non-payment of royalties.[6]
K. CHUA, EMILY K. CHUA, BENITO T. SANCHEZ, NANCY I.
VELASCO, ALFONSO CHUA, ALBERTO CHUA, SOPHIA ONG, Afterwards, Microsoft learned that respondents were illegally copying and selling
DEANNA CHUA/TAIWAN MACHINERY DISPLAY & TRADE Microsoft software. Consequently, Microsoft, through its Philippine agent, [7] hired the
CENTER, INC., and THE SECRETARY OF JUSTICE, respondents. services of Pinkerton Consulting Services (PCS), a private investigative firm. Microsoft
also sought the assistance of the National Bureau of Investigation (NBI). On 10
November 1995, PCS employee John Benedic[8] Sacriz (Sacriz) and NBI agent
DECISION
Dominador Samiano, Jr. (Samiano), posing as representatives of a computer
CARPIO, J.: shop,[9] bought computer hardware (central processing unit (CPU) and computer
monitor) and software (12 computer disks (CDs) in read-only memory (ROM) format)
from respondents. The CPU contained pre-installed[10] Microsoft Windows 3.1 and MS-
DOS software. The 12 CD-ROMs, encased in plastic containers with Microsoft
The Case packaging, also contained Microsoft software. [11] At least two of the CD-ROMs were
installers, so-called because they contain several software (Microsoft only or both
Microsoft and non-Microsoft).[12] Sacriz and Samiano were not given the Microsoft
This is a petition for certiorari[1] of the Resolutions[2] of the Department of Justice
end-user license agreements, users manuals, registration cards or certificates of
dismissing for lack of merit and insufficiency of evidence petitioner Microsoft
authenticity for the articles they purchased. The receipt issued to Sacriz and Samiano
Corporations complaint against respondents for copyright infringement and unfair
for the CPU and monitor bore the heading T.M.T.C. (PHILS.) INC. BELTRON
competition.
COMPUTER.[13] The receipt for the 12 CD-ROMs did not indicate its source although
the name Gerlie appears below the entry delivered by.[14]
On 17 November 1995, Microsoft applied for search warrants against respondents
The Facts
in the Regional Trial Court, Branch 23, Manila (RTC).[15] The RTC granted Microsofts
application and issued two search warrants (Search Warrant Nos. 95-684 and 95-
Petitioner Microsoft Corporation (Microsoft), a Delaware, United States 685).[16] Using Search Warrant Nos. 95-684 and 95-685, the NBI searched the premises
corporation, owns the copyright and trademark to several computer of Beltron and TMTC and seized several computer-related hardware, software,
software.[3] Respondents Benito Keh and Yvonne Keh are the President/Managing accessories, and paraphernalia. Among these were 2,831 pieces of CD-
Director and General Manager, respectively, of respondent Beltron Computer ROMs containing Microsoft software.[17]
Philippines, Inc. (Beltron), a domestic corporation. Respondents Jonathan K. Chua, Based on the articles obtained from respondents, Microsoft and a certain Lotus
Emily K. Chua, Benito T. Sanchez, and Nancy I. Velasco are Beltrons Directors. On the Development Corporation (Lotus Corporation) charged respondents before the
other hand, respondents Alfonso Chua, Alberto Chua, Judy K. Chua Hwang, Sophia Department of Justice (DOJ) with copyright infringement under Section 5(A) in
Ong, and Deanna Chua are the Directors of respondent Taiwan Machinery Display & relation to Section 29 of Presidential Decree No. 49, as amended, (PD 49) [18] and with
Trade Center, Inc. (TMTC), also a domestic corporation. [4] unfair competition under Article 189(1)[19] of the Revised Penal Code. In its Complaint
In May 1993, Microsoft and Beltron entered into a Licensing Agreement (I.S. No. 96-193), which the NBI indorsed, Microsoft alleged that respondents illegally
(Agreement). Under Section 2(a) of the Agreement, as amended in January 1994, copied and sold Microsoft software.[20]
Microsoft authorized Beltron, for a fee, to: In their joint counter-affidavit, respondents Yvonne Keh (respondent Keh) and
Emily K. Chua (respondent Chua) denied the charges against respondents. Respondents
(i) xxx reproduce and install no more than one (1) copy of [Microsoft] software on each Keh and Chua alleged that: (1) Microsofts real intention in filing the complaint under
Customer System hard disk or Read Only Memory (ROM); [and] I.S. No. 96-193 was to pressure Beltron to pay its alleged unpaid royalties, thus
Microsoft should have filed a collection suit instead of a criminal complaint; (2) TMTC
bought the confiscated 59 boxes of MS-DOS CDs from a Microsoft dealer in Singapore In the order of Honorable William Bayhon dated July 19, 1996 [denying
(R.R. Donnelly); (3) respondents are not the source of the Microsoft Windows 3.1 reconsideration to the Order partially quashing the search warrants], he observed the
software pre-installed in the CPU bought by Sacriz and Samiano, but only of the MS- following:
DOS software; (4) Microsofts alleged proof of purchase (receipt) for the 12 CD-ROMs
is inconclusive because the receipt does not indicate its source; and (5) respondents It is further argued by counsel for respondent that the act taken by private complainant
Benito Keh, Jonathan K. Chua, Alfonso Chua, Alberto Chua, Judy K. Chua Hwang, is to spite revenge against the respondent Beltron for the latter failed to pay the alleged
Sophia Ong, and Deanna Chua are stockholders of Beltron and TMTC in name only monetary obligation in the amount of US$135,121.32. That respondent has some
and thus cannot be held criminally liable.[21] monetary obligation to complainant which is not denied by the complainant.
The other respondents did not file counter-affidavits.
[]It appears therefore that prior to the issuance of the subject search warrants,
Meanwhile, respondents moved to quash Search Warrant Nos. 95-684 and 95-685. complainant had some business transactions with the respondent [Beltron] along the
The RTC partially granted their motion in its Order of 16 April 1996. Microsoft sought same line of products. Complainant failed to reveal the true circumstances existing
reconsideration but the RTC denied Microsofts motion in its Order of 19 July 1996. between the two of them as it now appears, indeed the search warrant[s] xxx [are] being
Microsoft appealed to the Court of Appeals in CA-G.R. CV No. 54600. In its Decision used as a leverage to secure collection of the money obligation which the Court cannot
of 29 November 2001, the Court of Appeals granted Microsofts appeal and set aside the allow.
RTC Orders of 16 April 1996 and 19 July 1996. The Court of Appeals Decision became
final on 27 December 2001. From said order, it can be gleaned that the [RTC] xxx, had admitted that the search
warrants applied for by complainant were merely used as a leverage for the collection
of the alleged monetary obligation of the respondent/s.
The DOJ Resolutions
From said order, it can be surmise (sic) that the obligations between the parties is civil
in nature not criminal.
In the Resolution of 26 October 1999, DOJ State Prosecutor Jocelyn A. Ong
(State Prosecutor Ong) recommended the dismissal of Microsofts complaint for lack of
Moreover, complainant had time and again harped that respondent/s is/are not
merit and insufficiency of evidence. State Prosecutor Ong also recommended the
authorized to sell/copy/distribute Microsoft products at the time of the execution of the
dismissal of Lotus Corporations complaint for lack of interest to prosecute and for
search warrants. Still, this office has no power to pass upon said issue for one has then
insufficiency of evidence. Assistant Chief State Prosecutor Lualhati R. Buenafe
to interpret the provisions of the contract entered into by the parties, which question,
(Assistant Chief State Prosecutor Buenafe) approved State Prosecutor Ongs
should be raised in a proper civil proceeding.
recommendations.[22] The 26 October 1999 Resolution reads in part:
Accordingly, absen[t] a resolution from the proper court of (sic) whether or not the
[T]wo (2) issues have to be resolved in this case, namely:
contract is still binding between the parties at the time of the execution of the search
warrants, this office cannot pass upon the issue of whether respondent/s is or are liable
a) Whether or not Beltron Computer and/or its stockholders should be held for the offense charged.
liable for the offenses charged.
b) Whether or not prima facie case exist[s] against Taiwan Machinery As to the second issue, we find for the respondent/s. TMTC had provided sufficient
Display and Trade Center, Inc. (TMTC) for violation of the offense evidence such as pro-forma invoice from R.R. Donnelley; Debt Advice of the Bank of
charged. Commerce; Official Receipts from the Bureau of Customs; and Import Entry
Declaration of the Bureau of Customs to prove that indeed the Microsoft software in
Complainant had alleged that from the time the license agreement was terminated, their possession were bought from Singapore.
respondent/s is/are no longer authorized to copy/distribute/sell Microsoft products.
However, respondent/s averred that the case is civil in nature, not criminal, considering Thus, respondent/s in this case has/have no intent to defraud the public, as provided
that the case stemmed only out of the desire of complainant to collect from them the under Article 189 of the Revised Penal Code, for they bought said Microsoft MS-DOS
amount of US$135,121.32 and that the contract entered into by the parties cannot be 6.0 from an alleged licensee of Microsoft in Singapore, with all the necessary papers. In
unilaterally terminated. their opinion, what they have are genuine Microsoft software, therefore no unfair
competition exist.
Moreover, violation of P.D. 49 does not exist, for respondent/s was/were not the IV. ONLY TWO OUT OF THE NINE RESPONDENTS BOTHERED TO
manufacturers of the Microsoft software seized and were selling their products as FILE COUNTER-AFFIDAVITS; HENCE, THE CHARGES
genuine Microsoft software, considering that they bought it from a Microsoft licensee. AGAINST SEVEN [RESPONDENTS] REMAIN
UNCONTROVERTED.[27]
Complainant, on the other hand, considering that it has the burden of proving that the In its Comment, filed by the Solicitor General, the DOJ maintains that it did not
respondent/s is/are liable for the offense charged, has not presented any evidence that commit grave abuse of discretion in dismissing Microsofts complaint. [28]
the items seized namely the 59 boxes of MS-DOS 6.0 software are counterfeit.
For their part, respondents allege in their Comment that Microsoft is guilty of
The certification issued on December 12, 1995 by Christopher Austin, Corporate forum-shopping because its petition in CA-G.R. CV No. 54600 was filed ahead of, and
Attorney of the complainant, does not disclose this fact. For the term used by Mr. has a common interest with, this petition. On the merits, respondents reiterate their
Austin was that the items seized were unauthorized. claims in their motion to quash Search Warrant Nos. 95-684 and 95-685 that the articles
seized from them were either owned by others, purchased from legitimate sources, or
The question now, is whether the products were unauthorized because TMTC has no not produced by Microsoft. Respondents also insist that the Agreement entitled Beltron
license to sell Microsoft products, or is it unauthorized because R.R. Donnelley has no to copy and replicate or reproduce Microsoft products. On the confiscated 2,831 CD-
authority to sell said products here in the Philippines. ROMs, respondents allege that a certain corporation[29] left the CD-ROMs with them
for safekeeping. Lastly, respondents claim that there is no proof that the CPU Sacriz
and Samiano bought from them contained pre-installed Microsoft software because the
Still, to determine the culpability of the respondents, complainant should present receipt for the CPU does not indicate [s]oftware hard disk. [30]
evidence that what is in the possession of the respondent/s is/are counterfeit Microsoft
products. In its Reply, Microsoft counters that it is not liable for forum-shopping because its
petition in CA-G.R. CV No. 54600 involved the Orders of the RTC partially quashing
This it failed to do.[23] Search Warrant Nos. 95-684 and 95-685 while this petition concerns the DOJ
Resolutions dismissing its complaint against respondents for copyright infringement
Microsoft sought reconsideration and prayed for an ocular inspection of the and unfair competition. On the merits, Microsoft maintains that respondents should be
articles seized from respondents. However, in the Resolution of 3 December 1999, indicted for copyright infringement and unfair competition. [31]
Assistant Chief State Prosecutor Buenafe, upon State Prosecutor Ongs
recommendation, denied Microsofts motion.[24]
The Issues
Microsoft appealed to the Office of the DOJ Secretary. In the Resolution of 3
August 2000, DOJ Undersecretary Regis V. Puno dismissed Microsofts
appeal.[25] Microsoft sought reconsideration but its motion was denied in the Resolution The petition raises the following issues:
of 22 December 2000.[26]
(1) Whether Microsoft engaged in forum-shopping; and
Hence, this petition. Microsoft contends that:
(2) Whether the DOJ acted with grave abuse of discretion in not finding probable
I. THE DOJ ERRED IN RULING THAT THE LIABILITY OF cause to charge respondents with copyright infringement and unfair
RESPONDENTS WAS ONLY CIVIL IN NATURE BY VIRTUE OF competition.
THE LICENSE AGREEMENT.
II. THE DOJ MISAPPRECIATED THE FACT THAT RESPONDENTS
WERE ENGAGED IN THE ILLEGAL IMPORTATION, SALE AND The Ruling of the Court
DISTRIBUTION OF COUNTERFEIT SOFTWARE AS
EVIDENCED BY THE ITEMS PURCHASED DURING THE TEST-
BUY AND THE ITEMS SEIZED FROM RESPONDENTS The petition has merit.
PREMISES.
III. THE DOJ MISAPPRECIATED THE LAW ON COPYRIGHT Microsoft did not Engage in Forum-Shopping
INFRINGEMENT AND UNFAIR COMPETITION.
Forum-shopping takes place when a litigant files multiple suits involving the same Section 5[39] of PD 49 (Section 5) enumerates the rights vested exclusively on the
parties, either simultaneously or successively, to secure a favorable judgment. [32] Thus, copyright owner. Contrary to the DOJs ruling, the gravamen of copyright infringement
it exists where the elements of litis pendentia are present, namely: (a) identity of is not merely the unauthorized manufacturing of intellectual works but rather the
parties, or at least such parties who represent the same interests in both actions; (b) unauthorized performance of any of the acts covered by Section 5. Hence, any person
identity of rights asserted and relief prayed for, the relief being founded on the same who performs any of the acts under Section 5 without obtaining the copyright owners
facts; and (c) the identity with respect to the two preceding particulars in the two cases prior consent renders himself civilly[40] and criminally[41] liable for copyright
is such that any judgment that may be rendered in the pending case, regardless of which infringement. We held in Columbia Pictures, Inc. v. Court of Appeals:[42]
party is successful, would amount to res judicata in the other case.[33] Forum-shopping
is an act of malpractice because it abuses court processes.[34] To check this pernicious Infringement of a copyright is a trespass on a private domain owned and occupied by
practice, Section 5, Rule 7 of the 1997 Rules of Civil Procedure requires the principal the owner of the copyright, and, therefore, protected by law, and infringement of
party in an initiatory pleading to submit a certification against forum- copyright, or piracy, which is a synonymous term in this connection, consists in the
shopping.[35] Failure to comply with this requirement is a cause for the dismissal of the doing by any person, without the consent of the owner of the copyright, of anything the
case and, in case of willful forum-shopping, for the imposition of administrative sole right to do which is conferred by statute on the owner of the copyright. (Emphasis
sanctions. supplied)
Here, Microsoft correctly contends that it is not liable for forum-shopping. What
Microsoft appealed in CA-G.R. CV No. 54600 were the RTC Orders partially quashing Significantly, under Section 5(A), a copyright owner is vested with the exclusive
Search Warrant Nos. 95-684 and 95-685. In the present case, Microsoft is appealing right to copy, distribute, multiply, [and] sell his intellectual works.
from the DOJ Resolutions dismissing its complaint against respondents for copyright
On the other hand, the elements of unfair competition under Article 189(1) [43] of
infringement and unfair competition. Thus, although the parties in CA-G.R. CV No.
the Revised Penal Code are:
54600 and this petition are identical, the rights asserted and the reliefs prayed for are
not such that the judgment in CA-G.R. CV No. 54600 does not amount to res (a) That the offender gives his goods the general appearance of the goods of
judicata in the present case. This renders forum-shopping impossible here. another manufacturer or dealer;

The DOJ Acted with Grave Abuse of Discretion (b) That the general appearance is shown in the (1) goods themselves, or in
in not Finding Probable Cause to Charge Respondents with the (2) wrapping of their packages, or in the (3) device or
Copyright Infringement and Unfair Competition words therein, or in (4) any other feature of their appearance[;]
(c) That the offender offers to sell or sells those goods or gives other persons
Generally, this Court is loath to interfere in the prosecutors discretion in a chance or opportunity to do the same with a like purpose[; and]
determining probable cause[36] unless such discretion is shown to have been
abused.[37] This case falls under the exception. (d) That there is actual intent to deceive the public or defraud a
competitor.[44]
Unlike the higher quantum of proof beyond reasonable doubt required to secure a
conviction, it is the lower standard of probable cause which is applied during the The element of intent to deceive may be inferred from the similarity of the goods
preliminary investigation to determine whether the accused should be held for trial. or their appearance.[45]
This standard is met if the facts and circumstances incite a reasonable belief that the act
or omission complained of constitutes the offense charged. As we explained in Pilapil On the Sufficiency of Evidence to
v. Sandiganbayan:[38] Support a Finding of Probable Cause
Against Respondents
The term [probable cause] does not mean actual and positive cause nor does it import
absolute certainty. It is merely based on opinion and reasonable belief. Thus, a finding In its pleadings filed with the DOJ, Microsoft invoked three clusters of evidence
of probable cause does not require an inquiry into whether there is sufficient evidence to support its complaint against respondents, namely: (1) the 12 CD-ROMs containing
to procure a conviction. It is enough that it is believed that the act or omission Microsoft software Sacriz and Samiano bought from respondents; (2) the CPU with
complained of constitutes the offense charged. Precisely, there is a trial for the pre-installed Microsoft software Sacriz and Samiano also purchased from respondents;
reception of evidence of the prosecution in support of the charge. and (3) the 2,831 CD-ROMs containing Microsoft software seized from
respondents.[46] The DOJ, on the one hand, refused to pass upon the relevance of these
pieces of evidence because: (1) the obligations between the parties is civil and not
PD 49 and Article 189(1)
criminal considering that Microsoft merely sought the issuance of Search Warrant Nos. installer CD-ROMs purchased from respondents and of the Microsoft software pre-
95-684 and 95-685 to pressure Beltron to pay its obligation under the Agreement, and installed in the CPU is shown by the absence of the standard features accompanying
(2) the validity of Microsofts termination of the Agreement must first be resolved by authentic Microsoft products, namely, the Microsoft end-user license agreements, users
the proper court. On the other hand, the DOJ ruled that Microsoft failed to present manuals, registration cards or certificates of authenticity.
evidence proving that what were obtained from respondents were counterfeit Microsoft
products. On the 2,831 Microsoft CD-ROMs[49] seized from respondents, respondent
Beltron, the only respondent who was party to the Agreement, could not have
This is grave abuse of discretion.[47] reproduced them under the Agreement as the Solicitor General[50] and respondents
contend. Beltrons rights[51] under the Agreement were limited to:
First. Being the copyright and trademark owner of Microsoft software, Microsoft
acted well within its rights in filing the complaint under I.S. No. 96-193 based on the (1) the reproduc[tion] and install[ation of] no more than one copy of [Microsoft]
incriminating evidence obtained from respondents. Hence, it was highly irregular for software on each Customer System hard disk or Read Only Memory (ROM); and
the DOJ to hold, based on the RTC Order of 19 July 1996, that Microsoft sought the
issuance of Search Warrant Nos. 95-684 and 95-685, and by inference, the filing of the (2) the distribut[ion] xxx and licens[ing of] copies of the [Microsoft] Product [as
complaint under I.S. No. 96-193, merely to pressure Beltron to pay its overdue royalties reproduced above] and/or acquired from Authorized Replicator or Authorized
to Microsoft. Significantly, in its Decision in CA-G.R. CV No. 54600 dated 29 Distributor) in object code form to end users.
November 2001, the Court of Appeals set aside the RTC Order of 19 July 1996. The Agreement defines an authorized replicator as a third party approved by
Respondents no longer contested that ruling which became final on 27 December 2001. [Microsoft] which may reproduce and manufacture [Microsoft] Product[s] for [Beltron]
Second. There is no basis for the DOJ to rule that Microsoft must await a prior xxx.[52] An authorized distributor, on the other hand, is a third party approved by
resolution from the proper court of (sic) whether or not the [Agreement] is still binding [Microsoft] from which [Beltron] may purchase MED[53] Product.[54] Being a mere
between the parties. Beltron has not filed any suit to question Microsofts termination of reproducer/installer of one Microsoft software copy on each customers hard disk or
the Agreement. Microsoft can neither be expected nor compelled to wait until Beltron ROM, Beltron could only have acquired the hundreds of Microsoft CD-ROMs found in
decides to sue before Microsoft can seek remedies for violation of its intellectual respondents possession from Microsoft distributors or replicators.
property rights. However, respondents makes no such claim. What respondents contend is that
Furthermore, some of the counterfeit CD-ROMs bought from respondents were these CD-ROMs were left to them for safekeeping. But neither is this claim tenable for
installer CD-ROMs containing Microsoft software only or both Microsoft and non- lack of substantiation. Indeed, respondents Keh and Chua, the only respondents who
Microsoft software. These articles are counterfeit per se because Microsoft does not filed counter-affidavits, did not make this claim in the DOJ. These circumstances give
(and could not have authorized anyone to) produce such CD-ROMs. The copying of the rise to the reasonable inference that respondents mass-produced the CD-ROMs in
genuine Microsoft software to produce these fake CD-ROMs and their distribution are question without securing Microsofts prior authorization.
illegal even if the copier or distributor is a Microsoft licensee. As far as these installer The counterfeit non-installer CD-ROMs Sacriz and Samiano bought from
CD-ROMs are concerned, the Agreement (and the alleged question on the validity of its respondents also suffice to support a finding of probable cause to indict respondents for
termination) is immaterial to the determination of respondents liability for copyright unfair competition under Article 189(1) of the Revised Penal Code for passing off
infringement and unfair competition. Microsoft products. From the pictures of the CD-ROMs packaging,[55] one cannot
Lastly, Section 10(b)[48] of the Agreement provides that Microsofts rights and distinguish them from the packaging of CD-ROMs containing genuine Microsoft
remedies under the contract are not xxx exclusive and are in addition to any other rights software. Such replication, coupled with the similarity of content of these fake CD-
and remedies provided by law or [the] Agreement. Thus, even if the Agreement still ROMs and the CD-ROMs with genuine Microsoft software, implies intent to deceive.
subsists, Microsoft is not precluded from seeking remedies under PD 49 and Article Respondents contention that the 12 CD-ROMs Sacriz and Samiano purchased
189(1) of the Revised Penal Code to vindicate its rights. cannot be traced to them because the receipt for these articles does not indicate its
Third. The Court finds that the 12 CD-ROMs (installer and non-installer) and the source is unavailing. The receipt in question should be taken together with Microsofts
CPU with pre-installed Microsoft software Sacriz and Samiano bought from claim that Sacriz and Samiano bought the CD-ROMs from respondents.[56] Together,
respondents and the 2,831 Microsoft CD-ROMs seized from respondents suffice to these considerations point to respondents as the vendor of the counterfeit CD-ROMs.
support a finding of probable cause to indict respondents for copyright infringement Respondents do not give any reason why the Court should not give credence to
under Section 5(A) in relation to Section 29 of PD 49 for unauthorized copying and Microsofts claim. For the same reason, the fact that the receipt for the CPU does not
selling of protected intellectual works. The installer CD-ROMs with Microsoft indicate [s]oftware hard disk does not mean that the CPU had no pre-installed
software, to repeat, are counterfeit per se. On the other hand, the illegality of the non-
Microsoft software. Respondents Keh and Chua admit in their counter-affidavit that 3. That the 12 installers purchased by the agents which are actually listed in the receipt
respondents are the source of the pre-installed MS-DOS software. were not manufactured by Beltron but rather they were genuine copies purchased by
TMTC from an authorized Microsoft seller in Singapore.
WHEREFORE, we GRANT the petition. We SET ASIDE the Resolutions dated
26 October 1999, 3 December 1999, 3 August 2000, and 22 December 2000 of the 4. That the 2,831 installers seized from them were not a property of Beltron but rather
Department of Justice. they were left to them by someone for safekeeping.

SO ORDERED. The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled that
the issue of the authority of Beltron to copy and sell Microsoft products should first be
resolved in a civil suit. Microsoft appealed the decision of the DOJ secretary before the
Supreme Court. Meanwhile, Beltron filed a motion to quash the search warrant before
Digest the RTC that issued the same. The RTC partially granted the quashal. The Court of
Appeals reversed the RTC. Hwang et al did not appeal the CA decision.
460 SCRA 428 – Mercantile Law – Intellectual Property – Law on Copyright –
Copyright Infringement ISSUE: Whether or not the DOJ Secretary is correct.

In May 1993, Microsoft Corporation and Beltron Computer Philippines, Inc. entered HELD: No. Section 5 of Presidential Decree 49 enumerates the rights vested
into a Licensing Agreement. Under Section 2(a) of the Agreement, Microsoft exclusively on the copyright owner. Contrary to the DOJ’s ruling, the gravamen of
authorized Beltron, for a fee, to: copyright infringement is not merely the unauthorized “manufacturing” of intellectual
works but rather the unauthorized performance of any of the acts covered by Section 5.
1. Reproduce and install no more than one copy of Windows on each Customer System Hence, any person who performs any of the acts under Section 5 without obtaining the
hard disk; copyright owner’s prior consent renders himself civilly and criminally liable for
2. Distribute directly or indirectly and license copies of Windows (reproduced as per copyright infringement.
Section 2 of the Agreement and/or acquired from an Authorized Replicator or Infringement of a copyright is a trespass on a private domain owned and occupied by
Authorized Distributor. the owner of the copyright, and, therefore, protected by law, and infringement of
Their agreement allowed either party to terminate if one fails to comply with their copyright, or piracy, which is a synonymous term in this connection, consists in the
respective obligations. Microsoft terminated the Agreement in June 1995 by reason of doing by any person, without the consent of the owner of the copyright, of anything the
Beltron’s non-payment of royalties. Later, Microsoft learned that Beltron was illegally sole right to do which is conferred by statute on the owner of the copyright.
copying and selling copies of Windows. Microsoft then sought the assistance of the Being the copyright and trademark owner of Microsoft software, Microsoft acted well
National Bureau of Investigation. NBI agents made some purchase from Beltron where within its rights in filing the complaint before DOJ on the incriminating evidence
they acquired a computer unit pre-installed with Windows, 12 windows installer CDs obtained from Beltron. Hence, it was highly irregular for the DOJ to hold that
packed as Microsoft products. The agents were not given the end-user license Microsoft sought the issuance of the search warrants and the filing of the complaint
agreements, user manuals, and certificates of authenticity for the products purchased. merely to pressure Beltron to pay its overdue royalties to Microsoft.
They were given a receipt which has a header of “T.M.T.C. (Phils) Inc. BELTRON
COMPUTER”. TMTC stands for Taiwan Machinery Display and Trade Center. There is no basis for the DOJ to rule that Microsoft must await a prior “resolution from
the proper court of whether or not the Agreement is still binding between the parties.”
A search warrant was subsequently issued where 2,831 CDs of Windows installers, Beltron has not filed any suit to question Microsoft’s termination of the Agreement.
among others, were seized. Based on the items seized from Beltron, Microsoft filed a Microsoft can neither be expected nor compelled to wait until Beltron decides to sue
case of copyright infringement against Beltron and TMTC as well as their officers before Microsoft can seek remedies for violation of its intellectual property rights.
(Judy Hwang et al) before the Department of Justice (DOJ). Beltron, in its counter-
affidavit, argued the following: Furthermore, the articles seized from Beltron are counterfeit per se because Microsoft
does not (and could not have authorized anyone to) produce such CD installers The
1. That Microsoft’s issue with Beltron was really just to have leverage in forcing copying of the genuine Microsoft software to produce these fake CDs and their
Beltron to pay the unpaid royalties; and that Microsoft should have filed a collection distribution are illegal even if the copier or distributor is a Microsoft licensee. As far as
suit. these installer CD-ROMs are concerned, the Agreement (and the alleged question on
2. That the computer unit allegedly purchased by the NBI agents from them cannot be the validity of its termination) is immaterial to the determination of Beltron’s liability
decisively traced as coming from Beltron because the receipt issued to the agents did for copyright infringement and unfair competition. Beltron’s defense that the box of CD
not list the computer unit as one of the items bought. installers found in their possession was only left to them for safekeeping is not tenable.
property rights. Metrotech, however, insisted that no copyright infringement was
G.R. No. 195835, March 14, 2016 committed because the hatch doors it manufactured were patterned in accordance with
the drawings provided by SKI-FB.[12]
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK
HAI, Petitioners, v. LIM ENG CO, Respondent. On July 2, 2004, LEC deposited with the National Library the final shop
plans/drawings of the designs and specifications for the interior and exterior hatch
doors of the Project.[13] On July 6, 2004, LEC was issued a Certificate of Copyright
DECISION
Registration and Deposit showing that it is the registered owner of plans/drawings for
interior and exterior hatch doors under Registration Nos. 1-2004-13 and 1-2004-14,
respectively.[14] This copyright pertains to class work "I" under Section 172 of Republic
REYES, J.: Act (R.A.) No. 8293, The Intellectual Property Code of the Philippines, which covers
This is a petition for review on certiorari[1] under Rule 45 of the Rules of Court, "illustrations, maps, plans, sketches, charts and three-dimensional works relative to
assailing the Decision[2] dated July 9, 2010 and Resolution[3] dated February 24, 2011 of geography, topography, architecture or science."
the Court of Appeals (CA) in CA-G.R. SP No. 95471, which annulled the Resolutions
dated March 10, 2006[4] and May 25, 2006[5] of the Department of Justice (DOJ) in I.S. On December 9, 2004, LEC was issued another Certificate of Copyright Registration
No. 2004-925, finding no probable cause for copyright infringement against Sison and Deposit showing that it is the registered owner of plans/drawings for interior and
Olano, Sergio Ong, Marilyn Go and Jap Fuk Hai (petitioners) and directing the exterior hatch doors under Registration Nos. H-2004-566 and H-2004-567[15] which is
withdrawal of the criminal information filed against them. classified under Section 172(h) of R.A. No. 8293 as "original ornamental designs or
models for articles of manufacture, whether or not registrable as an industrial design,
and other works of applied art."
The Antecedents
When Metrotech still refused to stop fabricating hatch doors based on LEC's shop
The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. plans/drawings, the latter sought the assistance of the National Bureau of Investigation
(Metrotech).[6] Lim Eng Co (respondent), on the other hand, is the Chairman of LEC (NBI) which in turn applied for a search warrant before the Regional Trial Court (RTC)
Steel Manufacturing Corporation (LEC), a company which specializes in architectural of Quezon City, Branch 24. The application was granted on August 13, 2004 thus
metal manufacturing.[7] resulting in the confiscation of finished and unfinished metal hatch doors as well as
machines used in fabricating and manufacturing hatch doors from the premises of
Sometime in 2002, LEC was invited by the architects of the Manansala Project Metrotech.[16]
(Project), a high-end residential building in Rockwell Center, Makati City, to submit
design/drawings and specifications for interior and exterior hatch doors. LEC complied On August 13, 2004, the respondent filed a Complaint-Affidavit[17] before the DOJ
by submitting on July 16, 2002, shop plans/drawings, including the diskette therefor, against the petitioners for copyright infringement. In the meantime or on September 8,
embodying the designs and specifications required for the metal hatch doors.[8] 2004, the RTC quashed the search warrant on the ground that copyright infringement
was not established.[18]
After a series of consultations and revisions, the final shop plans/drawings were
submitted by LEC on January 15, 2004 and thereafter copied and transferred to the title Traversing the complaint, the petitioners admitted manufacturing hatch doors for the
block of Ski-First Balfour Joint Venture (SKI-FB), the Project's contractor, and then Project. They denied, however, that they committed copyright infringement and averred
stamped approved for construction on February 3, 2004. [9] that the hatch doors they manufactured were functional inventions that are proper
subjects of patents and that the records of the Intellectual Property Office reveal that
LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and there is no patent, industrial design or utility model registration on LEC's hatch doors.
exterior hatch doors for the 7th to 22nd floors of the Project based on the final shop Metrotech further argued that the manufacturing of hatch doors per se is not copyright
plans/drawings.[10] infringement because copyright protection does not extend to the objects depicted in the
illustrations and plans. Moreover, there is no artistic or ornamental expression
Sometime thereafter, LEC learned that Metrotech was also subcontracted to install embodied in the subject hatch doors that would subject them to copyright protection. [19]
interior and exterior hatch doors for the Project's 23 rdto 41st floors.[11]

On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual Resolutions of the DOJ
In a Resolution[20] dated August 18, 2005, the investigating prosecutor dismissed the The CA then proceeded to make its own finding of probable cause and held that:
respondent's complaint based on inadequate evidence showing that: (1) the petitioners
committed the prohibited acts under Section 177 of R.A. No. 8293; and (2) the interior [F]or probable cause for copyright infringement to exist, essentially, it must be shown
and exterior hatch doors of the petitioners are among the classes of copyrightable work that the violator reproduced the works without the consent of the owner of the
enumerated in Sections 172 and 173 of the same law.[21] copyright.

Adamant, the respondent filed a petition for review before the DOJ but it was also In the present case before Us, [the petitioners] do not dispute that: (1) LEG was issued
denied due course in the Resolution[22] dated November 16, 2005. copyrights for the illustrations of the hatch doors under Section 171.i, and for the hatch
doors themselves as ornamental design or model for articles of manufacture pursuant to
Upon the respondent's motion for reconsideration, however, the Resolution[23] dated Section 171.h of R.A. [No.] 8293; and (2) they manufactured hatch doors based on
January 27, 2006 of the DOJ reversed and set aside the Resolution dated August 18, drawings and design furnished by SKI-FB, which consists of LEC works subject of
2005 and directed the Chief State Prosecutor to file the appropriate information for copyrights. These two (2) circumstances, taken together, are sufficient to excite the
copyright infringement against the petitioners.[24] The DOJ reasoned that the pieces of belief in a reasonable mind that [the petitioners] are probably guilty of copyright
evidence adduced show that the subject hatch doors are artistic or ornamental with infringement. First, LEC has indubitably established that it is the owner of the
distinctive hinges, door and jamb, among others. The petitioners were not able to copyright for both the illustrations of the hatch doors and [the] hatch doors themselves,
sufficiently rebut these allegations and merely insisted on the non-artistic nature of the and second, [the petitioners] manufactured hatch doors based on LEC's works, sans
hatch doors. The DOJ further held that probable cause was established insofar as the EEC's consent.
artistic nature of the hatch doors and based thereon the act of the petitioners in
manufacturing or causing to manufacture hatch doors similar to those of the respondent x x x x
can be considered as unauthorized reproduction; hence, copyright infringement under
Section 177.1 in relation to Section 216 of R.A. No. 8293. [25] [T]he fact that LEC enjoys ownership of copyright not only on the illustrations of the
hatch doors but on the hatch doors itself and that [the petitioners] manufactured the
Aggrieved, the petitioners moved for reconsideration. This time, the DOJ made a same is sufficient to warrant a finding of probable cause for copyright infringement. x x
complete turn around by granting the motion, vacating its Resolution dated January 27, x.[31]
2006 and declaring that the evidence on record did not establish probable cause because The CA further ruled that any allegation on the non-existence of ornamental or artistic
the subject hatch doors were plainly metal doors with functional components devoid of values on the hatch doors are matters of evidence which are best ventilated in a full-
any aesthetic or artistic features. Accordingly, the DOJ Resolution [26] dated March 10, blown trial rather than during the preliminary investigation stage. Accordingly, the CA
2006 disposed as follows: disposed as follows:

WHEREFORE, finding cogent reason to reverse the assailed resolution, the motion WHEREFORE, considering the foregoing premises, the present Petition
for reconsideration is GRANTED finding no probable cause against the [petitioners]. is GRANTED, and accordingly, the assailed Resolutions dated 10 March 2006 and 25
Consequently, the City Prosecutor of Manila is hereby directed to cause the withdrawal May 2006 are ANNULLED and SET ASIDE. The Resolution of the Secretory of
of the information, if any has been filed in court, and to report the action taken thereon Justice dated 27 January 2006 finding probable cause against [the petitioners],
within TEN (10) DAYS from receipt hereof. is REINSTATED.

SO ORDERED.[27] SO ORDERED.[32]
The respondent thereafter filed a motion for reconsideration of the foregoing resolution The CA reiterated the above ruling in its Resolution[33] dated February 24, 2011 when it
but it was denied[28] on May 25, 2006. The respondent then sought recourse before the denied the petitioners' motion for reconsideration. Hence, the present appeal, arguing
CA via a petition for certiorari[29] ascribing grave abuse of discretion on the part of the that:
DOJ.

In its assailed Decision[30] dated July 9, 2010, the CA granted the petition. The CA held I. There was no evidence of actual reproduction of the hatch doors during the
that the vacillating findings of the DOJ on the presence or lack of probable cause preliminary investigation that would lead the investigating prosecutor to
manifest capricious and arbitrary exercise of discretion especially since its opposite declare the existence of probable cause;[34]
findings were based on the same factual evidence and arguments.
II. Even assuming that the petitioners manufactured hatch doors based on the grave as where the power is exercised in an arbitrary or despotic manner by reason of
illustrations and plans covered by the respondent's Certificate of Registration passion or personal hostility and must be so patent and gross as to amount to an evasion
Nos. 1-2004-13 and 1-2004-14, the petitioners could not have committed of positive duty or to a virtual refusal to perform the duty enjoined by or to act at all in
copyright infringement. Certificate of Registration Nos. 1-2004-13 and 1- contemplation of law."[39] "'Capricious,' usually used in tandem with the term 'arbitrary,'
2004-14 are classified under Section 172(i) which pertains to "illustrations, conveys the notion of willful and unreasoning action." [40]
maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science." Hence the original works that According to the CA, the DOJ's erratic findings on the presence or absence of probable
are copyrighted are the illustrations and plans of interior hatch doors and cause constitute grave abuse of discretion. The CA explained:
exterior hatch doors. Thus, it is the reproduction of the illustrations and plans
covered by the copyright registration that amounts to copyright infringement. This, to Our minds, in itself creates a nagging, persistent doubt as to whether [the DOJ
The petitioners did not reproduce the illustrations and plans covered under Secretary] issued the said resolutions untainted with a whimsical and arbitrary use of
Certificate of Registration Nos. 1-2004-13 and 1-2004-14. his discretion. For one cannot rule that there is reason to overturn the investigating
prosecutor's findings at the first instance and then go on to rule that ample evidence
The manufacturing of hatch doors per se does not fall within the purview of exists showing that the hatch doors possess artistic and ornamental elements at the
copyright infringement because copyright protection does not extend to the second instance and proceed to rule that no such artistry can be found on the purely
objects depicted in the illustrations and plans;[35] and utilitarian hatch doors at the last instance. x x x.[41]
The Court disagrees. It has been held that the issuance by the DOJ of several
III. LEC's copyright registration certificates are not conclusive proofs that the resolutions with varying findings of fact and conclusions of law on the existence of
items covered thereby are copyrightable. The issuance of registration probable cause, by itself, is not indicative of grave abuse of discretion. [42]
certificate and acceptance of deposit by the National Library is ministerial in
nature and does not involve a determination of whether the item deposited is Inconsistent findings and conclusions on the part of the DOJ will denote grave abuse of
copyrightable or not. Certificates of registration and deposit serve merely as a discretion only if coupled with gross misapprehension of facts, [43] which, after a
notice of recording and registration of the work but do not confer any right or circumspect review of the records, is not attendant in the present case.
title upon the registered copyright owner or automatically put his work under
the protective mantle of the copyright law.[36] The facts upon which the resolutions issued by the investigating prosecutor and the
DOJ were actually uniform, viz:
Ruling of the Court
LEC is the registered owner of plans/drawings for interior and exterior hatch doors
It is a settled judicial policy that courts do not reverse the Secretary of Justice's findings under Certificate of Registration Nos. 1-2004-13 and 1-2004-14 classified under
and conclusions on the matter of probable cause. Courts are not empowered to (a) Section 172(i) of R.A. No. 8293 as pertaining to "illustrations, maps, plans,
substitute their judgment for that of the executive branch upon which full discretionary sketches, charts and three-dimensional works relative to geography, topography,
authority has been delegated in the determination of probable cause during a architecture or science";
preliminary investigation. Courts may, however, look into whether the exercise of such LEC is also the registered owner of plans/drawings for interior and exterior hatch
discretionary authority was attended with grave abuse of discretion. [37] doors under Certificate of Registration Nos. H-2004-566 and H-2004-567
(b) classified under Section 172(h) of R.A. No. 8293 as to "original ornamental
Otherwise speaking, "judicial review of the resolution of the Secretary of Justice is designs or models for articles of manufacture, whether or not registrable as an
limited to a determination of whether there has been a grave abuse of discretion industrial design, and other works of applied art";
amounting to lack or excess of jurisdiction." [38] LEC as the subcontractor of SKI-FB in the Project first manufactured and installed
the interior and exterior hatch doors at the Manansala Tower in Rockwell Center,
The CA anchored its act of reversing the DOJ Resolution dated March 10, 2006 upon (c) Makati City, from the 7th to 22nd floors. The hatch doors were based on the
the foregoing tenets. Thus, the Court's task in the present petition is only to determine if plans/drawings submitted by LEC to SKI-FB and subject of the above copyright
the CA erred in concluding that the DOJ committed grave abuse of discretion in registration numbers; and
directing the withdrawal of any criminal information filed against the petitioners. thereafter, Metrotech fabricated and installed hatch doors at the same building's
(d)
23rd to 41st floor based on the drawings and specifications provided by SKI-FB.[44]
Grave abuse of discretion has been defined as "such capricious and whimsical exercise The positions taken by the DOJ and the investigating prosecutor differed only in the
of judgment as is equivalent to lack of jurisdiction. The abuse of discretion must be issues tackled and the conclusions arrived at.
statute."[49] Under Section 177 of R.A. No. 8293, the Copyright or Economic Rights
It may be observed that in the Resolution dated August 18, 2005 issued by the consist of the exclusive right to carry out, authorize or prevent the following acts:
investigating prosecutor, the primary issue was whether the hatch doors of LEC fall
within copyrightable works. This was resolved by ruling that hatch doors themselves 177.1 Reproduction of the work or substantial portion of the work;
are not covered by LEC's Certificate of Registration Nos. 1-2004-13 and 1-2004-14 Dramatization, translation, adaptation, abridgment, arrangement or other
177.2
issued on the plans/drawing depicting them. The DOJ reversed this ruling in its transformation of the work;
Resolution dated January 27, 2006 wherein the issue was streamlined to whether the The first public distribution of the original and each copy of the work by sale
177.3
illustrations of the hatch doors under LEC's Certificate of Registration Nos. H-2004- or other forms of transfer of ownership;
566 and H-2004-567 bore artistic ornamental designs. 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
177.4
This situation does not amount to grave abuse of discretion but rather a mere data and other materials or a musical work in graphic form, irrespective of the
manifestation of the intricate issues involved in the case which thus resulted in varying ownership of the original or the copy which is the subject of the rental;
conclusions of law. Nevertheless, the DOJ ultimately pronounced its definite construal 177.5 Public display of the original or a copy of the work;
of copyright laws and their application to the evidence on record through its Resolution 177.6 Public performance of the work; and
dated March 10, 2006 when it granted the petitioners' motion for reconsideration. Such 177.7 Other communication to the public of the work.
construal, no matter how erroneous to the CA's estimation, did not amount to grave Copyright infringement is thus committed by any person who shall use original literary
abuse of discretion. "[I]t is elementary that not every erroneous conclusion of law or or artistic works, or derivative works, without the copyright owner's consent in such a
fact is an abuse of discretion."[45] manner as to violate the foregoing copy and economic rights. For a claim of copyright
infringement to prevail, the evidence on record must demonstrate: (1) ownership of a
More importantly, the Court finds that no grave abuse of discretion was committed by validly copyrighted material by the complainant; and (2) infringement of the copyright
the DOJ in directing the withdrawal of the criminal information against the respondents by the respondent.[50]
because a finding of probable cause contradicts the evidence on record, law, and
jurisprudence. While both elements subsist in the records, they did not simultaneously concur so as to
substantiate infringement of LEC's two sets of copyright registrations.
"Probable cause has been defined as the existence of such facts and circumstances as
would excite the belief in a reasonable mind, acting on the facts within the knowledge The respondent failed to substantiate the alleged reproduction of the drawings/sketches
of the prosecutor, that the person charged was guilty of the crime for which he was of hatch doors copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-
prosecuted. It is a reasonable ground of presumption that a matter is, or may be, well- 2004-14. There is no proof that the respondents reprinted the copyrighted
founded on such a state of facts in the mind of the prosecutor as would lead a person of sketches/drawings of LEC's hatch doors. The raid conducted by the NBI on Metrotech's
ordinary caution and prudence to believe, or entertain an honest or strong suspicion, premises yielded no copies or reproduction of LEC's copyrighted sketches/drawings of
that a thing is so."[46] hatch doors. What were discovered instead were finished and unfinished hatch doors.

"The term does not mean actual and positive cause nor does it import absolute certainty. Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I"
It is merely based on opinion and reasonable belief. Thus, a finding of probable cause under Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches,
does not require an inquiry into whether there is sufficient evidence to procure a charts and three-dimensional works relative to geography, topography, architecture or
conviction. It is enough that it is believed that the act or omission complained of science."[51]As such, LEC's copyright protection there under covered only the hatch
constitutes the offense charged." [47] door sketches/drawings and not the actual hatch door they depict. [52]

"In order that probable cause to file a criminal case may be arrived at, or in order to As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart,
engender the well-founded belief that a crime has been committed, the elements of the Incorporated:[53]
crime charged should be present. This is based on the principle that every crime is
defined by its elements, without which there should be - at the most - no criminal Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
offense."[48] statutory grant, the rights are limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the persons, and on terms and
A copyright refers to "the right granted by a statute to the proprietor of an intellectual conditions specified in the statute. Accordingly, it can cover only the works falling
production to its exclusive use and enjoyment to the extent specified in the
within the statutory enumeration or description.[54](Citations omitted and italics in the 1960's. The gaskets on LEC's "hatch doors", aside from not being ornamental or
original) artistic, were merely procured from a company named Pemko and are not original
Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, creations of LEC. The locking device in LEC's "hatch doors" are ordinary drawer locks
charts and three-dimensional works relative to geography, topography, architecture or commonly used in furniture and office desks.[61]
science, to be properly classified as a copyrightable class "I" work, what was In defending the copyrightability of its hatch doors' design, LEC merely claimed:
copyrighted were their sketches/drawings only, and not the actual hatch doors
themselves. To constitute infringement, the usurper must have copied or appropriated LEC's Hatch Doors were particularly designed to blend in with the floor of the units in
the original work of an author or copyright proprietor, absent copying, there can be no which they are installed and, therefore, appeal to the aesthetic sense of the owner of
infringement of copyright.[55] units or any visitors thereto[;]

"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is LEC's Hatch Doors have a distinct set of hinges, a distinct door a distinct jamb, all of
given only to the expression of the idea — not the idea itself."[56] which are both functional or utilitarian and artistic or ornamental at the same time[;]
and
The respondent claimed that the petitioners committed copyright infringement when
they fabricated/manufactured hatch doors identical to those installed by LEC. The Moreover, the Project is a high-end residential building located in the Rockwell Center,
petitioners could not have manufactured such hatch doors in substantial quantities had a very prime area in Metro Manila. As such, the owner of the Project is not expected to
they not reproduced the copyrighted plans/drawings submitted by LEC to SK1-FB. This settle for Hatch Doors that simply live up to their function as such. The owner would
insinuation, without more, does not suffice to establish probable cause for infringement require, as is the case for the Project, Hatch Doors that not only fulfill their utilitarian
against the petitioners. "[Although the determination of probable cause requires less purposes but also appeal to the artistic or ornamental sense of their beholders.[62]
than evidence which would justify conviction, it should at least be more than mere From the foregoing description, it is clear that the hatch doors were not artistic works
suspicion."[57] within the meaning of copyright laws. A copyrightable work refers to literary and
artistic works defined as original intellectual creations in the literary and artistic
Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court domain.[63]
finds that the ownership thereof was not established by the evidence on record because
the element of copyrightability is absent. A hatch door, by its nature is an object of utility. It is defined as a small door, small
gate or an opening that resembles a window equipped with an escape for use in case of
"Ownership of copyrighted material is shown by proof of originality and fire or emergency.[64] It is thus by nature, functional and utilitarian serving as egress
copyrightability."[58] While it is true that where the complainant presents a copyright access during emergency. It is not primarily an artistic creation but rather an object of
certificate in support of the claim of infringement, the validity and ownership of the utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a
copyright is presumed. This presumption, however, is rebuttable and it cannot be whole, is not eligible for copyright.
sustained where other evidence in the record casts doubt on the question of
ownership,[59] as in the instant case. A "useful article" defined as an article "having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey information" is excluded
Moreover, "[t]he presumption of validity to a certificate of copyright registration from copyright eligibility.[65]
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 The only instance when a useful article may be the subject of copyright protection is
unless the respondent, effectively challenging them, shifts the burden of doing so to the when it incorporates a design element that is physically or conceptually separable from
applicant."[60] the underlying product. This means that the utilitarian article can function without the
design element. In such an instance, the design element is eligible for copyright
Here, evidence negating originality and copyrightability as elements of copyright protection.[66]
ownership was satisfactorily proffered against LEC's certificate of registration.
The design of a useful article shall be considered a pictorial, graphic, or sculptural work
The following averments were not successfully rebuffed by LEC: 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
[T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. In fact, they independently of, the utilitarian aspects of the article. [67]
are just similar to hinges found in truck doors that had been in common use since the
A belt, being an object utility with the function of preventing one's pants from falling CA-G.R. SP No. 95471 are REVERSED and SET ASIDE. The Resolutions dated
down, is in itself not copyrightable. However, an ornately designed belt buckle which is March 10, 2006 and May 25, 2006 of the Department of Justice in I.S. No. 2004-925
irrelevant to or did not enhance the belt's function hence, conceptually separable from dismissing the complaint for copyright infringement are REINSTATED.
the belt, is eligible for copyright. It is copyrightable as a sculptural work with
independent aesthetic value, and not as an integral element of the belt's functionality. [68] SO ORDERED.

A table lamp is not copyrightable because it is a functional object intended for the
purpose of providing illumination in a room. The general shape of a table lamp is
likewise not copyrightable because it contributes to the lamp's ability to illuminate the
reaches of a room. But, a lamp base in the form of a statue of male and female dancing
figures made of semi vitreous china is copyrightable as a work of art because it is
unrelated to the lamp's utilitarian function as a device used to combat darkness. [69]

In the present case, LEC's hatch doors bore no design elements that are physically and
conceptually separable, independent and distinguishable from the hatch door itself. The
allegedly distinct set of hinges and distinct jamb, were related and necessary hence, not
physically or conceptually separable from the hatch door's utilitarian function as an
apparatus for emergency egress. Without them, the hatch door will not function.

More importantly, they are already existing articles of manufacture sourced from
different suppliers. Based on the records, it is unrebutted that: (a) the hinges are similar
to those used in truck doors; (b) the gaskets were procured from a company named
Pemko and are not original creations of LEC; and (c) the locking device are ordinary
drawer locks commonly used in furniture and office desks.

Being articles of manufacture already in existence, they cannot be deemed as original


creations. As earlier stated, valid copyright ownership denotes originality of the
copyrighted material. Originality means that the material was not copied, evidences at
least minimal creativity and was independently created by the author. [70] It connotes
production as a result of independent labor.[71] LEC did not produce the door jambs and
hinges; it bought or acquired them from suppliers and thereafter affixed them to the
hatch doors. No independent original creation can be deduced from such acts.

The same is true with respect to the design on the door's panel. As LEC has stated, the
panels were "designed to blend in with the floor of the units in which they [were]
installed."[72] Photos of the panels indeed show that their color and pattern design were
similar to the wooden floor parquet of the condominium units. [73] This means that the
design on the hatch door panel was not a product of LEC's independent artistic
judgment and discretion but rather a mere reproduction of an already existing design.

Verily then, the CA erred in holding that a probable cause for copyright infringement is
imputable against the petitioners. Absent originality and copyrightability as elements of
a valid copyright ownership, no infringement can subsist.

WHEREFORE, premises considered, the petition is hereby GRANTED. The Decision


dated July 9, 2010 and Resolution dated February 24, 2011 of the Court of Appeals in
G.R. L-45101 November 28, 1986 of said patents and therefore its immediate discontinuance is demanded, otherwise it
will be compelled to take judicial action. (Rollo, pp. 7-8).
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner,
vs. Private respondent replied stating that her products are different and countered that
THE HONORABLE COURT OF APPEALS and SUSANA petitioner's patents are void because the utility models applied for were not new and
LUCHAN, respondents. patentable and the person to whom the patents were issued was not the true and actual
author nor were her rights derived from such author. (Taken from allegations in the
Ambrosio Padilla Law Offices for petitioner. Answer, par. 4, Rollo, p. 93). And on July 25, 1974, private respondent assailed the
validity of the patents involved and filed with the Philippine Patent Office petitions for
cancellation of (1) Utility Model Letter Patent Extension No. UM-109 (Inter Partes
Case No. 838, Susana Luchan v. Rosario C. Tan), (2) Utility Model Letters Patent No.
UM-1184 (Inter Partes Case No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility
PARAS, J.:p Model Letters Patent Extension No. UM-110 (Inter Partes Case No. 840, Susana
Luchan v. Rosario C. Tan. (Taken from allegations in the Answer, par. 10, Rollo, pp.
Submitted on December 9, 1977 for Our decision is this petition for review on certiorari 94-95).
of the two Resolutions of the Court of Appeals, the first dated July 6, 1976, setting
aside its Decision of February 16, 1976 in CA-G.R. No. SP-04706, titled "SUSANA In view thereof, petitioner, on August 24, 1974, filed a complaint for damages with
LUCHAN v. Hon. HONRADO, et al." wherein it ruled for the dismissal of the petition injunction and preliminary injunction against private respondent with the then Court of
for lack of merit and at the same time nullifying the writ of preliminary injunction it First Instance of Rizal, Pasig Branch, docketed as Civil Case No. 19908, for infringing
had previously issued; and the second, dated November 4, 1976, denying the motion for the aforesaid letters patent, and prayed, among others, that a writ of preliminary
reconsideration of the first resolution above-mentioned. injunction be immediately issued (Complaint, Rollo, p. 90).

Petitioner is doing business under the firm name and style of SWAN In her answer, private respondent alleged that the products she is manufacturing and
MANUFACTURING" while private respondent is likewise doing business under the offering for sale are not Identical, or even only substantially Identical to the products
firm name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING." covered by petitioner's patents and, by way of affirmative defenses, further alleged that
petitioner's patents in question are void on the following grounds:
It is undisputed that petitioner is a patent holder of powder puff namely:
(1) at the time of filing of application for the
1. UM-423 (extended and/or renewed under patents involved, the utility models applied for
Extension No. UM-109 for a period of 5 years from were not new and patentable under Sec. 55 of R.A.
October 6, 1971) 165, as amended by R.A. 864; and

2. UM-450 (extended and/or renewed under (2) the person to whom the patents were issued was
Extension No. UM110 for a period of 5 years from not the true and actual author of the utility models
January 26, 1972) applied for, and neither did she derive her rights
from any true and actual author of these utility
3. UM 1184, for a period of 5years fromApril 5, models.
1974.(Petition, Rollo, pp. 6-7).
for the following reasons:
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed private
respondent that the powder puffs the latter is manufacturing and selling to various (a) since years prior to the filing of applications for
enterprises particularly those in the cosmetics industry, resemble Identical or the patents involved, powder puffs of the kind
substantially Identical powder puffs of which the former is a patent holder under applied for were then already existing and publicly
Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility being sold in the market; both in the Philippines
Model No. 1184; petitioner explained such production and sale constitute infringement and abroad; and
(b) applicant's claims in her applications, of (3) Order dated September 11, 1974 denying
"construction" or process of manufacturing the petitioner's motion petition for reconsideration.
utility models applied for, with respect to UM-423
and UM-450, were but a complicated and On October 15, 1975, the Writ of Preliminary Injunction was issued by the respondent
impractical version of an old, simple one which has Court of Appeals as follows:
been well known to the cosmetics industry since
years previous to her filing of applications, and
NOW, THEREFORE, you, respondents, and/or any person/persons
which belonged to no one except to the general acting on your stead, are hereby ENJOINED to RESTRAIN from
public; and with respect to UM1184; her claim in enforcing or continuing to enforce, the proceedings complained of in
her application of a unitary powder puff, was but an
the petition to wit: 1) Order dated September 18, 1974, granting the
limitation of a product well known to the cosmetics
preliminary injunction; 2) Writ of Preliminary Injunction dated
industry since years previous to her firing of
September 18, 1974; and Order dated September 11, 1975, denying
application, and which belonged to no one except to
petitioner's motion for reconsideration, all issued in connection with
the general public; (Answer, Rollo, pp. 93-94). Civil Case No. 19908, UNTIL FURTHER ORDERS FROM THIS
COURT. (Annex "P", Rollo, p. 1.73)
On September 18, 1974, the trial court issued an Order (Annex "K", Rollo, p. 125)
granting the preliminary injunction prayed for by petitioner. Consequently, the
On February 16, 1976, respondent court promulgated a decision the dispositive portion
corresponding writ was subsequently issued (Annex "K-1", Rollo, p. 131) enjoining the
of which reads:
herein private respondent (then defendant) and all other persons employed by her, her
agents, servants and employees from directly or indirectly manufacturing, making or
causing to be made, selling or causing to be sold, or using or causing to be used in WHEREFORE, finding no merit in the herein petition, the same is
accordance with, or embodying the utility models of the Philippine Patent Office Utility hereby dismissed and the preliminary injunction previously issued by
Model Letters Patent Nos. 423 (Extension No. UM-109), No. 450 (Extension No. UM- this Court is hereby set aside, with costs.
110), and Utility Model No. 1184 or from infringement upon or violating said letters
patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131). SO ORDERED. (CA Decision, Rollo, p. 189).

Private respondent questioned the propriety of the trial court's issuance of the Writ of ln said decision respondent court stated that in disposing of the petition it tackled only
Preliminary Injunction arguing that since there is still a pending cancellation the issue of whether the court a quo acted with grave abuse of discretion in issuing the
proceedings before the Philippine Patent Office concerning petitioner's patents, such challenged orders. It made clear the question of whether the patents have been infringed
cannot be the basis for preliminary injunction (Motion for Reconsideration, Rollo, p. or not was not determined considering the court a quohas yet to decide the case on the
132). merits (Ibid., p. 186).

In an Order dated September 11, 1975, the trial court denied private respondent's Feeling aggrieved, private respondent moved to reconsider the afore-mentioned
motion for reconsideration (Annex "N", Rollo, p. 142). Decision based on the following grounds:

In challenging these Orders private respondent filed a petition for certiorari with the I
respondent court on September 29, 1975 (Annex "D", Rollo, pp. 148-171) reiterating
among other things the invalidity of petitioner's patents and prayed that the trial court THAT THIS HONORABLE COURT ERRED IN
be restrained from enforcing or continuing to enforce the following: NOT APPRECIATING THE EXISTENCE OF A
FAIR QUESTION OF INVALIDITY OF
(1) Order dated September 18, 1974, granting the PRIVATE RESPONDENT'S PATENTS.
preliminary injunction;
II
(2) Writ of preliminary injunction dated September
18, 1974; and
THAT THIS HONORABLE COURT ERRED IN resolved to declare the case submitted for decision on December 9, 1977 (Rollo, p.
NOT REJECTING THE THEORY OF 359).
RESPONDENT JUDGE THAT HE HAS NO
JURISDICTION TO INVALIDATE THE The assignment of errors raised by the petitioner in this case (Rollo, pp. 15-16) may be
PATENTS UPON GROUND OF LACK OF reduced to three main issues:
NOVELTY OF THE PRODUCTS PATENTED.
(Motion for Reconsideration, Rollo, p. 190).
(1) Whether or not in an action for infringement the
Court a quo had jurisdiction to determine the
Reviewing on reconsideration, respondent court gave weight to private respondent's invalidity of the patents at issue which invalidity
allegation that the latter's products are not identical or even only substantially identical was still pending consideration in the patent office.
to the products covered by petitioner's patents. Said court noticed that contrary to the
lower courts position that the court a quo had no jurisdiction to determine the question
(2) Whether or not the Court a quo committed
of invalidity of the patents, Section 45 and 46 of the Patent Law allow the court to make grave abuse of discretion in the issuance of a writ
a finding on the validity or invalidity of patents and in the event there exists a fair of preliminary injunction.
question of its invalidity, the situation calls for a denial of the writ of preliminary
injunction pending the evaluation of the evidence presented (Rollo, pp. 218-226). Thus,
finding the lower court's position to have been opposed to Patent Law, respondent court (3) Whether or not certiorari is the proper remedy.
considered it a grave abuse of discretion when the court a quo issued the writ being
questioned without looking into the defenses alleged by herein private respondent. The first issue has been laid to rest in a number of cases where the Court ruled that
Further, it considered the remedy of appeal, under the circumstances, to be inadequate. "When a patent is sought to be enforced, the questions of invention, novelty or prior
use, and each of them, are open to judicial examination." (Vargas v. F.M. Yaptico &
Thus, on July 6, 1976, respondent court made a complete turnabout from its original Co. 40 Phil. 199 [1919]; Vargas v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v.
decision and promulgated a Resolution, the dispositive portion of which reads: Kosuyana 59 Phil. 207 [1933]).

WHEREFORE, our decision is hereby set aside. The writ of certiorari Under the present Patent Law, there is even less reason to doubt that the trial court has
is ordered issued. Accordingly, the challenged orders, Exhibit H and jurisdiction to declare the patents in question invalid. A patentee shall have the
H-1 and the order denying the motion for reconsideration (Annex exclusive right to make, use and sell the patented article or product and the making,
"K", Petition), are hereby set aside. The writ of preliminary injunction using, or selling by any person without the authorization of the patentee constitutes
previously ordered by this Court and ordered lifted by the Decision infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been
now being set aside is hereby reinstated and made permanent. infringed upon may bring an action before the proper CFI now (RTC) and to secure an
Without pronouncement as to costs. injunction for the protection of his rights (Sec. 42, R.A. 165). Defenses in an action for
infringement are provided for in Section 45 of the same law which in fact were availed
of by private respondent in this case. Then, as correctly stated by respondent Court of
SO ORDERED. (CA Resolution, Rollo, p. 226). Appeals, this conclusion is reinforced by Sec. 46 of the same law which provides that if
the Court shall find the patent or any claim thereof invalid, the Director shall on
In a Resolution dated November 4, 1976, respondent court, not persuaded by the certification of the final judgment ... issue an order cancelling the patent or the claims
grounds embodied in the motion for reconsideration filed by herein petitioner (Annex found invalid and shall publish a notice thereof in the Official Gazette." Upon such
"V ", Rollo, p. 227), denied the same for lack of merit, thereby maintaining the same certification, it is ministerial on the part of the patent office to execute the judgment.
stand it took in its July 6, 1976 Resolution (Rollo, p. 281). Hence, this petition. (Rollo, pp. 221-222).

On December 3, 1976, without giving due course to the petition, this Court required II.
respondent to file her Comment (Rollo, p. 290) which was filed on December 16, 1976
(Rollo, pp. 291-316). Thereafter, petitioner filed her Reply (Rollo, p. 323) and on May
The burden of proof to substantiate a charge of infringement is with the plaintiff. But
30, 1977, the petition was given due course (Rollo, p. 345). Petitioner filed her brief on where the plaintiff introduces the patent in evidence, and the same is in due form, there
July 14, 1977 (Rollo, p. 351) while private respondent filed her brief on August 25, is created a prima facie presumption of its correctness and validity. The decision of the
1977 (Rollo, p. 359). Thereafter, petitioner having failed to file reply brief, the Court
Commissioner (now Director) of Patent in granting the patent is presumed to be correct.
The burden of going forward with the evidence (burden of evidence) then shifts to the valid and infringed beyond question and the record conclusively proves the defense is
defendant to overcome by competent evidence this legal presumption. sham. (Ibid., p. 402)

The question then in the instant case is whether or not the evidence introduced by In the same manner, under our jurisprudence, as a general rule because of the injurious
private respondent herein is sufficient to overcome said presumption. consequences a writ of injunction may bring, the right to the relief demanded must be
clear and unmistakable. (Sangki v. Comelec, 21 SCRA 1392; December 26, 1967) and
After a careful review of the evidence consisting of 64 exhibits and oral testimonies of the dissolution of the writ is proper where applicant has doubtful title to the disputed
five witnesses presented by private respondents before the Court of First Instance property. (Ramos v. C.A., 95 SCRA 359).
before the Order of preliminary injunction was issued as well as those presented by the
petitioner, respondent Court of Appeals was satisfied that there is a prima III.
facie showing of a fair question of invalidity of petitioner's patents on the ground of
lack of novelty. As pointed out by said appellate court said evidence appeared not to It will be noted that the validity of petitioner's patents is in question for want of novelty.
have been considered at all by the court a quo for alleged lack of jurisdiction, on the Private respondent contends that powder puffs Identical in appearance with that
mistaken notion that such question in within the exclusive jurisdiction of the patent covered by petitioner's patents existed and were publicly known and used as early as
office. 1963 long before petitioner was issued the patents in question. (List of Exhibits, Rollo,
pp. 194-199). As correctly observed by respondent Court of Appeals, "since sufficient
It has been repeatedly held that an invention must possess the essential elements of proofs have been introduced in evidence showing a fair question of the invalidity of the
novelty , originality and precedence and for the patentee to be entitled to protection, the patents issued for such models, it is but right that the evidence be looked into, evaluated
invention must be new to the world. Accordingly, a single instance of public use of the and determined on the merits so that the matter of whether the patents issued were in
invention by a patentee for more than two years (now for more than one year only fact valid or not may be resolved." (Rollo, pp. 286-287).
under Sec. 9 of the Patent Law) before the date of his application for his patent, will be
fatal to, the validity of the patent when issued. (Frank, et al. v. Kosuyama Vargas v. All these notwithstanding, the trial court nonetheless issued the writ of preliminary
F.M. Yaptico & Co. and Vargas v. Chua, et al., supra). injunction which under the circumstances should be denied.

The law provides: For failure to determine first the validity of the patents before aforesaid issuance of the
writ, the trial court failed to satisfy the two requisites necessary if an injunction is to
SEC. 9. Invention not considered new or patentable. — An invention issue, namely: the existence of the right to be protected and the violation of said right.
shall not be considered new or capable of being patented if it was (Buayan Cattle Co., Inc. v. Quintillan, 128 SCRA 276).
known or used by others in the Philippines before the invention
thereof by the inventor named in an application for patent for the Under the above established principles, it appears obvious that the trial court committed
invention; or if it was patented or described in any printed publication a grave abuse of discretion which makes certiorari the appropriate remedy.
in the Philippines or any foreign country more than one year before
the application for a patent therefor; or if it had been in public use or As found by respondent Court of Appeals, the injunctive order of the trial court is of so
on sale in the Philippines for more than one year before the
general a tenor that petitioner may be totally barred from the sale of any kind of powder
application for a patent therefor; or if it is the subject matter of a
puff. Under the circumstances, respondent appellate court is of the view that ordinary
validity issued patent in the Philippines granted on an application
appeal is obviously inadequate. (Rollo, p. 288). A parallel was drawn from a decision of
filed before the filing of the application for patent therefor.
the Supreme Court in the case of Sanchez v. Hon. Court of Appeals, 69 SCRA 328
[1976] where the First Division of the Supreme Court ruled that "The prerogative writ
Thus, more specifically, under American Law from which our Patent Law was derived of certiorari may be applied for by proper petition notwithstanding the existence of the
(Vargas v. F.M. Yaptico & Co. supra) it is generally held that in patent cases a regular remedy of an appeal in due cause when among other reasons, the broader
preliminary injunction will not issue for patent infringement unless the validity of the interests of justice so require or an ordinary appeal is not an adequate remedy."
patent is clear and beyond question. The issuance of letters patent, standing alone, is not
sufficient to support such drastic relief (8 Deller's Walker on Patents p. 406). In cases of Private respondent maintains the position that the resolutions sought to be appealed
infringement of patent no preliminary injunction will be granted unless the patent is from had long become final and executory for failure of Hon. Reynaldo P. Honrado, the
trial court judge, to appeal by certiorari from the resolutions of respondent Court of
Appeals. (Rollo, pp. 291-292).

Such contention is untenable.

There is no dispute that petitioner has seasonably petitioned. On the other hand, it is
elementary that the trial judge is a mere nominal party as clearly provided in Section 5,
Rule 65 of the Revised Rules of Court where it shall be the duty of such person or
persons interested in sustaining the proceedings in court, "to appear and defend, both in
his or their own behalf and in behalf of the court or judge affected by the proceedings."

Relative thereto "the judge whose order is under attack is merely a nominal party;
wherefore, a judge in his official capacity should not be made to appear as a party
seeking reversal of a decision that is unfavorable to the action taken by him." (Hon.
Alcasid v. Samson, 102 Phil. 735-736; Tarona v. Sayo, 67 SCRA 508, 524; Lim Se v.
Argel, 70 SCRA 378).

As to petitioner's claim of prescription, private respondent's contention that such refers


to the filing of petitions for cancellation in the Patent Office under Sec. 28 of the Patent
Law and not to a defense against an action for infringement under Sec. 45 thereof
which may be raised anytime, is evident under aforesaid law.

PREMISES CONSIDERED, the assailed resolutions of the Court of Appeals are hereby
AFFIRMED.

SO ORDERED.
G.R. No. 14101 September 24, 1919 two years before the application of the plaintiff for his patent. The parties subsequently
entered into a stipulation that the court should first resolve the question of whether or
ANGEL VARGAS, plaintiff-appellant, not there had been an infraction of the patent, reserving the resultant question of
vs. damages for later decision. After the taking of evidence, including the presentation of
F. M. YAPTICO & CO. (Ltd.), defendant-appellee. exhibits, the trial judge, the Honorable Antonio Villareal, in a very exhaustive and
learned decision, rendered judgment in favor of the defendant and against the plaintiff,
declaring null and without effect the patent in question and dismissing the suit with
Charles C. Cohn for appellants .
John Bordman for appellee. costs against the plaintiff .The preliminary injunction theretofore issued was dissolved.

From this judgment the plaintiff has appealed, specifying five errors. The principal
MALCOLM, J.:
assignment No. 1 is, that the trial court erred in finding that the patented invention of
the plaintiff is lacking in novelty and invention. Defendant, in reply, relies on three
Rude wooden implements for tilling the soil have been in use in the Philippines, propositions, namely: (1) The judgment of the trial court in finding the patent granted
possibly not since the Israelites "went down to sharpen every man his share and his plaintiff void for lack of novelty and invention should be affirmed; (2) The patent
coulter," but certainly for many years. Iron plows called "Urquijo" and "Pony" have granted plaintiff is void from the public use of his plow for over two years prior to his
latterly been the vogue. application for a patent, and (3) If the patent is valid, there has been no contributory
infringement by defendant.
Angel Vargas, a farmer acquainted with local conditions and alive to the commercial
possibilities, took it upon himself to produce, with the native plow as the model, an Before resolving these rival contentions, we should have before us the relevant law. Act
improved, adjustable plow. On July 22, 1910, he made application for a United States No. 2235 of the Philippine Legislature, enacted on February 10, 1913, in effect makes
patent to cover his so-called invention. On March 12, 1912, letters patent were issued the United States Patent Laws applicable in the Philippine Islands. It provides that
by the United States Patent Office in favor of Vargas .On April 24, 1912, a certified "owners of patents, including design patents, which have been issued or may hereafter
copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of be issued, duly registered in the United States Patent Office under the laws of the
the Executive Bureau, Government of the Philippine Islands. The patent and its registry United States relating to the grant of patents, shall receive in the Philippine Islands the
was also published in the newspaper, El Tiempo. protection accorded them in the United States under said laws." (Sec. 1.) Turning to the
United States Patent Laws, we find the Act of Congress of March 3, 1897, amendatory
Since 1910, Vargas has engaged in the manufacture of these plows in the city of Iloilo, of section 4886 of the United States Revised Statutes, reading as follows:
Philippine Islands. On the plows there was first stamped the words "Patent Applied
For," later after the patent had been granted, changed to "Patented Mar. 12, 1912." Any person who has invented or discovered any new and useful art, machine,
Ninety per cent of the plows in use in the Visayas (Iloilo and vicinity) are said to be manufacture, or composition of matter, or any new an useful improvements
Vargas plows. thereof, not known or used by others in this country, before his invention or
discovery thereof, and not patented or described in any printed publication in
During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged in the this or any foreign country, before his invention or discovery thereof, or more
foundry business in the City of Iloilo. It openly held itself out as a manufacturer of than two years prior to his application, and not in public use or on sale in this
plow parts. It has in fact produced points, shares, shoes, and heel pieces in a country for more than two years prior to his application, unless the same is
considerable amount adapted to replace worn-out parts of the Vargas plow. proved to have been abandoned, may upon payment of the fees required by
law, and other due proceeding had, obtain a patent therefor. (29 Stat. L., 692, 7
Such was the existing situation when, in the early part of 1918, the owner of the patent, Fed .Stat. Ann. [2d Ed.], p. 23.)
and thus the proper party to institute judicial proceedings, began action in the Court of
First Instance of Iloilo to enjoin the alleged infringement of U.S. Patent No. 1020232 When a patent is sought to be enforced, "the question of invention, novelty, or prior
by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by use, and each of them, are open to judicial examination." The burden of proof to
reason of this infringement. The court issued the preliminary injunction as prayed for. substantiate a charge of infringement is with the plaintiff. Where, however, the plaintiff
The defendant, in addition to a general denial, alleged, as special defenses, that the introduces the patent in evidence, if it is in due form, it affords a prima
patent lacked novelty or invention, that there was no priority of ideas or device in the facie presumption of its correctness and validity. The decision of the Commissioner of
principle and construction of the plow, and that the plow, whose manufacture it was Patents in granting the patent is always presumed to be correct. The burden then shifts
sought to have enjoined by the plaintiff, had already been in public use for more than to the defendant to overcome by competent evidence this legal presumption .With all
due respect, therefore, for the critical and expert examination of the invention by the others than Vargas, the inventor, more than two years before the application for the
United States Patent Office, the question of the validity of the patent is one for judicial patent, the patent is invalid.
determination, and since a patent has been submitted, the exact question is whether the
defendant has assumed the burden of proof as to anyone of his defenses. (SeeAgawan Although we have spent some time in arriving at this point, yet having reached it, the
Co. vs. Jordan [1869], 7 Wall., 583; Blanchard vs .Putnam [1869], 8 Wall., 420; question in the case is single and can be brought to a narrow compass. Under the
Seymour vs. Osborne [1871], 11 Wall., 516; Reckendorfer vs. Faber [1876], 92 U.S., English Statute of Monopolies (21 Jac. Ch., 3), and under the United States Patent Act
347; 20 R. C. L., 1112, 1168, 1169.) of February 21, 1793, later amended to be as herein quoted, it was always the rule, as
stated by Lord Coke, Justice Story and other authorities, that to entitle a man to a
As herein before stated, the defendant relies on three special defenses. One such patent, the invention must be new to the world. (Pennock and Sellers vs. Dialogue
defense, on which the judgment of the lower court is principally grounded, and to [1829], 2 Pet., 1.) As said by the United States Supreme Court, "it has been repeatedly
which appellant devotes the major portion of his vigorous argument, concerns the held by this court that a single instance of public use of the invention by a patentee for
element of novelty, invention, or discovery, that gives existence to the right to a patent. more than two years before the date of his application for his patent will be fatal to the
On this point the trial court reached the conclusion that "the patented plow of the validity of the patent when issued." (Worley vs. Lower Tobacco Co .[1882], 104 U. S.,
plaintiff, Exhibit D, is not different from the native plow, Exhibit 2, except in the 340; McClurg vs. Kingsland [1843], I How., 202; Consolidated Fruit Jar Co. vs. Wright
material, in the form, in the weight and the grade of the result, the said differences [1877], 94 U. S., 92; Egbert vs. Lippmann [1881], 104 U. S., 333; Coffin vs. Ogden
giving it neither a new function nor a new result distinct from the function and the [1874], 18 Wall., 120; Manning vs. Cape Ann Isinglass and Glue Co. [1883], 108 U. S.,
result obtained from the native plow; consequently, its production does not presuppose 462; Andrews vs. Hovey [1887], 123 U. S., 267; Campbell vs. City of New York
the exercise of the inventive faculty but merely of mechanical skill, which does not give [1881], 1 L. R. A., 48.)
a right to a patent of an invention under the provisions of the Patent Law." In thus
finding, the court may have been right, since the Vargas plow does not appear to be On the facts, we think the testimony shows such a public use of the Vargas plow as to
such a "combination" as contains a novel assemblage of parts exhibiting invention. render the patent invalid Nicolas Roces, a farmer, testified that he had bought twenty
(See Stimpson vs. Woodman [1870], 10 Wall., 117 — rollers; Hicks vs. Kelsey [1874], Vargas plows, of which Exhibit 5 was one, in December, 1907; and Exhibit 5, the court
20 Wall., 353 — stoves; Washburn & Moen Mfg. Co. vs. Beat 'Em All Barbed Wire found, was a plow completely identical with that for which the plaintiff had received a
Co. [1892], 143 U.S., 275 — barbed wire; Lynch vs .Dryden [1873], C. D., 73 — patent. The minor exception, and this in itself corroborative of Roces' testimony, is that
walking cultivators; Torrey vs. Hancock [1910], 184 Fed., 61 — rotary plows.) the handle of plow Exhibit 5 is marked with the letters "A V" and not with the words
"Patent Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a
A second line of defense relates to the fact that defendant has never made a complete business house, testified that he had received plows similar to Exhibits D, 5, and 4, for
Vargas plow, but only points, shares, shoes, and heel pieces, to serve as repairs. sale on commission on May, 1908, from Bonifacio Araneta, partner of Vargas in the
Defendant's contention is, that in common with other foundries, he has for years cast plow business. Ko Pao Ko, a blacksmith, testified that he had made fifty plow frames in
large numbers of plow points and shares suitable for use either on the native wooden 1905 for Vargas and Araneta, of which Exhibit 4 is one; Exhibit 4, the court found, is a
plow, or on the Vargas plow. A difference has long been recognized between repairing plow identical with that patented by Vargas, but without share and mould-board. Alfred
and reconstructing a machine. If, for instance, partial injuries, whether they occur from Berwin, an employee in the office of Attorney John Bordman, testified that on
accident or from wear and tear, to a machine for agricultural purposes, are made this is September 21, 1908, he had knowledge of a transaction wherein Vargas and Araneta
only re-fitting the machine for use, and thus permissible. (Wilson vs. Simpson [1850], 9 desired to obtain money to invest in a plow factory. George Ramon Saul, a mechanic of
How., 109.) Even under the more rigorous doctrine of Leeds & Catlin Co. vs. Victor the "Taller Visayas" of Strachan and MacMurray, testified that he had made Vargas
Talking Machine Co. ([1909], 213 U.S., 325), it may be possible that all the defendant plow points and shares of the present form upon order of Araneta and Vargas in 1906
has done is to manufacture and sell isolated parts to be used to replace worn-out parts. and 1907 .William MacMurray, proprietor of the "Taller Visayas," corroborated the
evidence of the witness Saul by the exhibition of the account against Vargas and
The third defense is, that under the provisions of the statute, an inventor's creation must Araneta wherein, under date of December 13, 1906, appears the item "12 new soft steel
not have been in public use or on sale in the United States (and the Philippine Islands) plow shares forged and bored for rivets as per sample." Against all this, was the
for more than two years prior to his application .Without, therefore, committing testimony of the plaintiff Angel Vargas who denied that Saul could have been seen the
ourselves as to the first two defenses, we propose to base our decision on the one just Vargas plow in 1907 and 1907, who denied that Roces purchased the Vargas plow in
suggested as more easily disposing of the case. (See 20 R. C. L., 1140-1142.) We do so 1907, who denied that Lizarraga could have acted as an agent to sell two plows in
with full consciousness of the doubt which arose in the mind of the trial court, but with November, 1908, who denied any remembrance of the loan mentioned by Berwin as
the belief that since it has been shown that the invention was used in public at Iloilo by having been negotiated in September, 1908, who denied that Ko Pao Ko made fifty
plows one of which is Exhibit 4, for Araneta and Vargas in 1905. Plaintiff introduced
his books to substantiate his oral testimony .It is hardly believable that five or six
witnesses for the defense would deliberately perjure themselves under oath. One might,
but that all together, of different nationalities, would enter into such a conspiracy, is to
suppose the improbable.

Tested by the principles which go to make the law, we think a preponderance of the
evidence is to the effect that for more than two years before the application for the
original letters patent, or before July 22, 1908, there was, by the consent and allowance
of Vargas, a public use of the invention covered by them.

To conclude, we are not certain but that appellee has proved every one of his defenses.
We are certain that he has at least demonstrated the public use of the Vargas plow over
two years prior to the application for a patent. Such being the case, although on a
different ground, we must sustain the judgment of the lower court, without prejudice to
the determination of the damages resulting from the granting of the injunction, with the
costs of this instance against the appellant. So ordered.
G.R. No. L-36650 January 27, 1933 3. That the defendant, Coo Teng Hee, is also of age and a resident of Iloilo,
and is the sole owner of the business known as Coo Kun & Sons Hardware Co.
ANGEL VARGAS, plaintiff-appellee, established in Iloilo.
vs.
PETRONILA CHUA, ET AL., defendants-appellants. 4. That the defendant, Cham Samco & Sons, is a commercial partnership duly
organized under the laws of the Philippine Islands, with their principal office
Jose F. Orozco for appellants. in the City of Manila, and that the defendants Cham Samco, Cham Siong E,
Jose Yulo for appellee. Cham Ai Chia and Lee Cham Say, all of age and residents of the City of
Manila, are the partners of the firm Cham Samco & Sons.
IMPERIAL, J.:
5. The parties take for granted that the complaint in this case is amended in the
The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal from the judgment sense that it includes Coo Paoco as party defendant in his capacity as husband
of the Court of First Instance of Manila, the dispositive part of which reads as follows: of the defendant, Petronila Chua, with Attorney Jose F. Orozco also
representing him, and that he renounces his rights to receive summons in this
case by reproducing the answer of his codefendant, Petronila Chua.
Wherefore judgment is rendered in favor of the plaintiff and against the
defendants, ordering each and every one of them, their agents, mandatories
and attorneys, to henceforth abstain from making, manufacturing, selling or 6. That the plaintiff is the registered owner and possessor of United States
offering for a sale plows of the type of those manufactured by the plaintiff, and Patent No. 1,507,530 on certain plow improvements, issued by the United
States Patent Office on September 2, 1924, a certified copy of which was
particularly plows of the model of Exhibits B, B-1 and B-2, and to render to
registered in the Bureau of Commerce and industry of the Government of the
the plaintiff a detailed accounting of the profits obtained by them from the
Philippine Islands on October 17, 1924. A certified copy of said patent is
manufacture and sale of said type of plows within thirty (30) days from the
attached to this stipulation of facts as Exhibit A.
date of the receipt by them of notice of this decision, with costs against all of
the defendants.
7. That the plaintiff is now and has been engaged, since the issuance of his
patent, in the manufacture and sale of plows of the kind, type and design
Angel Vargas, the plaintiff herein, brought this action to restrain the appellants and the
covered by the aforementioned patent, said plows being of different sizes and
other defendant entity, Cham Samco & Sons, their agents and mandatories, from
numbered in accordance therewith from 1 to 5.
continuing the manufacture and sale of plows similar to his plow described in his patent
No. 1,507,530 issued by the United States Patent Office on September 2, 1924; and to
compel all of said defendants, after rendering an accounting of the profits obtained by 8. That, since the filing of the complaint to date, the defendant, Petronila Chua,
them from the sale of said plows from September 2, 1924, to pay him damages has been manufacturing and selling plows of the kind, type and design
equivalent to double the amount of such profits. represented by Exhibits B, B-1 and B-2, of different sizes, designated by Nos.
2, 4 and 5.
It appears from the bill of exceptions that Cham Samco & Sons did not appeal.
9. That, since the filing of the complaint to date, the defendant, Coo Teng Hee,
doing business in Iloilo under the name of Coo Kun & Sons Hardware Co., has
In addition to the evidence presented, the parties submitted the following stipulation of
been obtaining his plows, of the form and size of Exhibits B, B-1 and B-2,
facts:
from the defendant Petronila Chua.
The parties agree on the following facts:
10. Without prejudice to the plaintiff's right to ask the defendants to render an
accounting in case the court deem it proper, the parties agree that the
1. That the plaintiff, Angel Vargas, is of age and a resident of the municipality defendant Coo Teng Hee, doing business under the name of Coo Kun & Sons
of Iloilo, Iloilo, Philippine Islands. Hardware Co., has been selling to his customers in his store on J. Ma. Basa
Street in Iloilo, plows of the kind, type and design represented by Exhibits B,
2. That the defendant, Petronila Chua, is also of age, and is married to Coo Pao B-1 and B-2, having bought said plows from his codefendant, Petronila Chua,
alias Coo Paoco, and resides in Iloilo. who manufactures them in her factory on Iznart Street, Iloilo.
11. That, according to the invoices marked Exhibits C and C-2 dated March Chua, covered by the former Patent No. 1,020,232, which had been declared
13, 1928, and June 19, 1928, respectively, the defendant Cham Samco & Sons, null and void by this court.
on the dates mentioned, had, in the ordinary course of business, bought of its
codefendant Coo Kun & Sons Hardware Co., 90 plows of the form, type and SECOND ERROR
design of Exhibits B, B-1 and B-2 which it has been selling in its store on Sto.
Cristo Street, Manila.
The trial court erred in mistaking the improvement on the plow for the plow
itself.
12. That the same defendant Cham Samco & Sons, in the ordinary course of
business, bought on March 17, 1928, of the store "El Progreso" owned by Yao
THIRD ERROR
Ki & Co., of Iloilo, a lot of 50 plows, of the form, type and design of Exhibit
B-1, as shown by Invoice C-1, and that it has been selling them in its store on
Sto. Cristo St., Manila. The trial court erred in rendering judgment in favor of the plaintiff and against
the defendants.
13. That, on September 19, 1928, the defendant Cham Samco & Sons, sold in
its store on Sto. Cristo St., Manila, the plow Exhibit B-1, for the sale of which FOURTH ERROR
invoice Exhibit D was issued.
The trial court erred in not dismissing the complaint with costs against the
14. That, on December 20, 1927, the plaintiff herein, through his attorneys plaintiff.
Paredes, Buencamino & Yulo, sent by registered mail to the herein defendant,
Coo Kun & Sons Hardware Co., at Iloilo, the original of the letter Exhibit E, The evidence shows that Exhibit F is the kind of plows the plaintiff, Angel Vargas,
which was received by it on September 28, 1927, according to the receipt manufactures, for which Patent No. 1,507,530, Exhibit A, was issued in his favor.
marked Exhibit E-1 attached hereto. Exhibits B, B-1 and B-2 are samples of the plows which the herein appellants, Coo Pao
and Petronila Chua, have been manufacturing since 1918, and Exhibit 3-Chua
15. That the plows manufactured by the plaintiff in accordance with his patent, represents the plow for which, on March 12, 1912, the appellee obtained a patent from
Exhibit A, are commonly known to the trade in Iloilo, as well as in other parts the United States Patent Office, which was declared null and void by the Supreme
of the Philippines, as "Arados Vargas", and that the plaintiff is the sole Court in the case of Vargas vs. F. M. Yap Tico & Co. (40 Phil., 195).
manufacturer of said plows. A sample of these plows is presented as Exhibit F.
With these facts in view, the principal and perhaps the only question we are called upon
16. That the document, Exhibit 1-Chua, is a certified copy of the amended to decide is whether the plow, Exhibit F, constitutes a real invention or an improvement
complaint, the decision of the Court of First Instance of Iloilo and that of the for which a patent may be obtained, or if, on the contrary, it is substantially the same
Supreme Court (R. G. No. 14101) in civil case No. 3044 of Iloilo, entitled plow represented by Exhibit 3-Chua the patent for which was declared null and void in
"Angel Vargas", plaintiff, vs. F. M. Yaptico & Co., Ltd., defendant", and that the aforementioned case of Vargas vs. F. M. Yaptico & Co., supra.
Exhibit 2-Chua et al. is a certified copy of Patent No. 1,020,232, to which the
aforementioned complaint and decision refer, issued in favor of Angel Vargas We have carefully examined all the plows presented as exhibits as well as the designs
by the United States Patent Office on March 12, 1912, and that Exhibit 3-Chua of those covered by the patent, and we are convinced that no substantial difference
et al., represents the plow manufactured by Angel Vargas in accordance with exists between the plow, Exhibit F, and the plow, Exhibit 3-Chua which was originally
his Patent marked Exhibit 2-Chua et al. patented by the appellee, Vargas. The only difference noted by us is the suppression of
the bolt and the three holes on the metal strap attached to the handle bar. These holes
The appellants assign the following errors: and bolt with its nut were suppressed in Exhibit F in which the beam is movable as in
the original plow. The members of this court, with the plows in view, arrived at the
conclusion that not only is there no fundamental difference between the two plows but
FIRST ERROR
no improvement whatever has been made on the latest model, for the same working and
movement of the beam existed in the original model with the advantage, perhaps, that
The trial court erred in declaring that the Vargas plow, Exhibit F (covered by its graduation could be carried through with more certainty by the use of the bolt which
Patent No. 1,507,530) is distinct from the old model Vargas plow, Exhibit 2- as has already been stated, was adjustable and movable.
As to the fact, upon which much emphasis was laid, that deeper furrows can be made We repeat that in view of the evidence presented, and particularly of the examination
with the new model, we have seen that the same results can be had with the old we have made of the plows, we cannot escape the conclusion that the plow upon which
implement. the appellee's contention is based, does not constitute an invention and, consequently,
the privilege invoked by him is untenable and the patent acquired by him should be
In view of the foregoing, we are firmly convinced that the appellee is not entitled to the declared ineffective.
protection he seeks for the simple reason that his plow, Exhibit F, does not constitute an
invention in the legal sense, and because, according to the evidence, the same type of The judgment appealed from is hereby reversed and the appellants are absolved from
plows had been manufactured in this country and had been in use in many parts of the the complaint, with costs of this instance against the appellee. So ordered.
Philippine Archipelago, especially in the Province of Iloilo, long before he obtained his
last patent.

In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we said:

When a patent is sought to be enforced, "the questions of invention, novelty, or


prior use, and each of them, are open to judicial examination." The burden of
proof to substantiate a charge of infringement is with the plaintiff. Where,
however, the plaintiff introduces the patent in evidence, if it is the due form, it
affords a prima facie presumption of its correctness and validity. The decision
of the Commissioner of Patents in granting the patent is always presumed to
be correct. The burden then shifts to the defendant to overcome by competent
evidence this legal presumption. With all due respects, therefore, for the
critical and expert examination of the invention by the United States Patent
Office, the question of the validity of the patent is one for judicial
determination, and since a patent has been submitted, the exact question is
whether the defendant has assumed the burden of proof as to anyone of his
defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [1869], 8 Wall., 420; Seymour vs. Osborne [1871], 11
Wall., 516; Reckendorfer vs.Faber [1876], 92 U. S., 347; 20 R. C. L., 1112,
1168, 1169.)

Although we spent some time in arriving at this point, yet, having reached it,
the question in the case is single and can be brought to a narrow compass.
Under the English Statute of Monopolies (21 Jac. Ch., 3), and under the
United States Patent Act of February 21, 1793, later amended to be as herein
quoted, it was always the rule, as stated by Lord Coke, Justice Story and other
authorities, that to entitle a man to a patent, the invention must be new to the
world. (Pennock and Sellers vs. Dialogue [1829], 2 Pet., 1.) As said by the
United States Supreme Court, "it has been repeatedly held by this court that a
single instance of public use of the invention by a patentee of more than two
years before the date of his application for his patent will be fatal to the
validity of the patent when issued." (Worley vs. Lower Tobacco Co. [1882],
104 U. S., 340; McClurg vs.Kingsland [1843], 1 How., 202; Consolidated
Fruit Jar Co. vs. Wright [1877], 94 U. S., 92; Egbert vs.Lippmann [1881], 104
U. S., 333; Coffin vs. Ogden [1874], 18 Wall., 120; Manning vs. Cape Ann
Isinglass and Glue Co. [1883], 108 U. S., 462; Andrews vs. Hovey [1887], 123
U. S., 267; Campbell vs. City of New York [1888], 1 L. R. A., 48.)
G.R. No. L-38010 December 21, 1933 plaintiffs insisted that the said part constitutes the essential difference between the
machine in question and other machines and that it was the principal consideration
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs- upon which their patent was issued. The said plaintiffs sustained their contention on this
appellants, point even in their printed brief and memorandum filed in this appeal.
vs.
G. KOSUYAMA, defendant-appellee. During the trial, both parties presented voluminous evidence from which the trial court
arrived at the following conclusions:
J.W. Ferrier for appellants.
Pablo Lorenzo for appellee. In constructing their machine the plaintiffs did nothing but improve, to a
certain degree, those that were already in vogue and in actual us in hemp
producing provinces. It cannot be said that they have invented the "spindle"
inasmuch as this was already known since the year 1909 or 1910. Neither it
can be said that they have invented the stripping knife and the contrivance
which controls the movement and pressure thereof on the ground that stripping
IMPERIAL, J.:
knives together with their control sets were already in actual use in the
different stripping machines long before their machine appeared. Neither can it
Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping machines, issued be said that they invented the fly wheel because that part or piece thereof, so
by the United States Patent Office on December 16,1924, and registered in the Bureau essential in every machine from time immemorial, was already known and
of Commerce and Industry of the Philippine Islands on March 17,1925, was the origin actually employed in hemp stripping machines such as those of Riesgo
of this action brought by the plaintiffs herein who prayed that the judgment be rendered (Exhibit 4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A-Suzara), Browne
against the defendant, ordering him thereby to refrain immediately from the (Exhibit 28-A), McFie, etc., all of which were in use for the benefit of hemp
manufacture and sale of machines similar to the one covered by the patent: to render an long before the appearance of the plaintiffs' machines in the market. Much less
accounting of the profits realized from the manufacture and sale of the machines in can it be said that they invented the pedal to raise the knife in order to allow
question; that in case of refusal or failure to render such accounting, the defendants be the hemp to be stripped to pass under it, on the ground that the use of such
ordered to pay the plaintiffs the sum of P60 as profit on each machine manufactured or contrivance has, likewise, been known since the invention of the most
sold by him; that upon approval of the required bond, said defendant be restrained from primitive of hemp stripping machines.
continuing the manufacture and sale of the same kind of machines; that after the trial
the preliminary injunction issued therein be declared permanent and, lastly, that the said
defendant be sentenced to pay the costs and whatever damages the plaintiffs might be On the other hand, although the plaintiffs alleged in their original complaint
able to prove therein. The action therefore was based upon alleged infringement by the that "the principal and important feature of said machine is a spindle upon
which the hemp to be stripped is wound in the process of stripping,"
defendant of the rights and privileges acquired by the plaintiffs over the aforesaid
nevertheless, in their amended complaint of March 3, 1928, which was filed
patent through the manufacture and sale by the former of machines similar to that
after a portion of the evidence therein had already been submitted and it was
covered by the aforesaid patent.
known that the use of the spindle was nothing new, they still made the
allegations appearing in paragraph 3 of their said amended complaint and
The plaintiffs appealed from the judgment rendered by the trial court dismissing their reproduced on pages 2,3,4 and 5 hereof, copying the same from the application
complaint, with cost, as well as the defendant's counterclaim of P10,000. The defendant which they filed with the United States Patent Office, under which they
did not appeal. obtained their patent in question. The aforesaid application clearly shows that
what they applied for was not a patent for a "pioneer or primary invention" but
In their amended complaint, the plaintiff alleged that their hemp stripping machines, for only for some "new and useful improvement in hemp stripping machines."
which they obtained a patent, have the following characteristics: "A stripping head, a
horizontal table, a stripping knife supported upon such table, a tappering spindle, a rest We have carefully reviewed the evidence presented and have had the opportunity of
holder adjustably secured on the table portion, a lever and means of compelling the ascertaining the truth of the conclusions above stated. We agree with the trial court that,
knife to close upon the table, a pallet or rest in the bottom of the table, a resilient strictly speaking, the hemp stripping machine of the plaintiffs does not constitute an
cushion under such palletor rest." In spite of the fact that they filed an amended invention on the ground that it lacks the elements of novelty, originality and precedence
complaint from which the "spindle" or conical drum, which was the only characteristic (48 C.J., sec. 101, p. 97, and 102, p. 98). In fact, before the plaintiffs herein obtained
feature of the machine mentioned in the original complaint, was eliminated, the their patent, they themselves had already publicly used the same kind of machine for
some months, at least, and, various other machines, having in general, the same Wherefore, reiterating that the defendant cannot be held civilly liable for alleged
characteristics and important parts as that of the said plaintiffs, were known in the infringement of the patent upon which the present action is based on the ground that
Province of Davao. Machines known as Molo, Riesgo, Crumb, Icsiar, Browne and there is no essential part of the machine manufactured and sold by him, which was
McFie were already known in that locality and used by the owners of hemp plantations unknown to the public in the Province of Davao at the time the plaintiffs applied for
before the machine of the plaintiffs came into existence. It may also be noted that and obtained their patent for improved hemp stripping machines, the judgment appealed
Adrian de Icsiar applied for a patent on an invention which resulted in the rejection by from is hereby affirmed, with the costs against the plaintiffs-appellants. So ordered.
the United States Patent Office of the plaintiffs' original application for a patent on the
so called "spindle" or conical drum which was then in actual use in the Dringman and Avanceña, C.J., Malcolm, Villa-Real, and Hull, JJ., concur.
Icsiar hemp stripping machines.

Notwithstanding the foregoing facts, the trial court did not decree the annulment of the
plaintiffs' patent and the herein defendant-appellee insists that the patent in question
should be declared null and void. We are of the opinion that it would be improper and
untimely to render a similar judgment, in view of the nature of the action brought by the
plaintiffs and in the absence of a cross-complaint to that effect. For the purposes of this
appeal, suffice it to hold that the defendant is not civilly liable for alleged infringement
of the patent in question.

In the light of sound logic, the plaintiffs cannot insist that the "spindle" was a patented
invention on the ground that said part of the machine was voluntarily omitted by them
from their application, as evidenced by the photographic copy thereof (Exhibit 41)
wherein it likewise appears that the patent on Improved Hemp Stripping Machines was
issued minus the "spindle" in question. Were we to stress to this part of the machine, we
would be giving the patent obtained by the plaintiffs a wider range than it actually has,
which is contrary to the principles of interpretation in matters relating to patents.

In support of their claim the plaintiffs invoke the doctrine laid down by this court in the
case of Frank and Gohn vs. Benito (51 Phil., 712), wherein it was held that the therein
defendant really infringed upon the patent of the therein plaintiffs. It may be noted that
the plaintiffs in the former and those of the latter case are the same and that the patent
then involved is the very same one upon which the present action of the plaintiffs is
based. The above-cited case, however, cannot be invoked as a precedent to justify a
judgment in favor of the plaintiffs-appellants on the ground that the facts in one case
entirely different from those in the other. In the former case the defendant did not set up
the same special defenses as those alleged by the herein defendant in his answer and the
plaintiffs therein confined themselves to presenting the patent, or rather a copy thereof,
wherein the "spindle" was mentioned, and this court took for granted their claim that it
was one of the essential characteristics thereof which was imitated or copied by the then
defendant. Thus it came to pass that the "spindle" in question was insistently mentioned
in the decision rendered on appeal as the essential part of the plaintiffs' machine
allegedly imitated by the then defendant. In the case under consideration, it is obvious
that the "spindle" is not an integral part of the machine patented by the plaintiffs on the
ground that it was eliminated from their patent inasmuch as it was expressly excluded
in their application, as evidenced by the aforesaid Exhibit 41.