(G.R. No. 121867. July 24, 1997) : INTELLECTUAL PROPERTY LAW (9 November 2018 Cases)

PATENTS: NOW, THEREFORE, by virtue of the powers vested in this Office by Republic Act
No. 165, as amended by Presidential Decree No. 1263, there is hereby issued a
license in favor of the herein [private respondent], United Laboratories,
Inc., [sic] under Letters Patent No. 12207 issued on November 29, 1978, subject to
the following terms and conditions:
[G.R. No. 121867. July 24, 1997]
1. That [private respondent] be hereby granted a non-exclusive and non-
transferable license to manufacture, use and sell in the Philippines its
own brands of pharmaceutical products containing [petitioner's] patented
invention which is disclosed and claimed in Letters Patent No. 12207;
SMITH KLINE & FRENCH LABORATORIES, LTD., petitioner, vs. COURT OF APPEALS,
BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and 2. That the license granted herein shall be for the remaining life of said
DOCTORS PHARMACEUTICALS, INC. respondents. Letters Patent No. 12207 unless this license is terminated in the manner
hereinafter provided and that no right or license is hereby granted to
[private respondent] under any patent to [petitioner] or [sic] other than
DECISION recited herein;
DAVIDE, JR., J.: 3. By virtue of this license, [private respondent] shall pay [petitioner] a
royalty on all license products containing the patented substance made
This is an appeal under Rule 45 of the Rules of Court from the decision [1] of 4 November and sold by [private respondent] in the amount equivalent to TWO AND
1994 of the Court of Appeals in CA-G.R. SP No. 33520, which affirmed the 14 February 1994 ONE HALF PERCENT (2.5%) of the net sales in Philippine currency. The
decision[2] of the Director of the Bureau of Patents, Trademarks and Technology Transfer term "net scale" [sic] means the gross amount billed for the product
(BPTTT) granting a compulsory non-exclusive and non-transferable license to private pertaining to Letters Patent No. 12207, less --
respondent to manufacture, use and sell in the Philippines its own brands of pharmaceutical (a) Transportation charges or allowances, if any, included in such
products containing petitioners patented pharmaceutical product known as Cimetidine. amount;
Petitioner is a foreign corporation with principal office at Welwyn Garden City, England. It (b) Trade, quantity or cash discounts and broker's or agent's or
owns Philippine Letters Patent No. 12207 issued by the BPTTT for the patent of the distributor's commissions, if any, allowed or paid;
drug Cimetidine.
(c) Credits or allowances, if any, given or made on account of rejection or
Private respondent is a domestic corporation engaged in the business of manufacturing return of the patented product previously delivered; and
and distributing pharmaceutical products. On 30 March 1987, it filed a petition for compulsory
licensing[3] with the BPTTT for authorization to manufacture its own brand of medicine from the (d) Any tax, excise or government charge included in such amount, or
drug Cimetidine and to market the resulting product in the Philippines. The petition was filed measured by the production sale, transportation, use of delivery of the
pursuant to the provisions of Section 34 of Republic Act No. 165 (An Act Creating a Patent products.
Office Prescribing Its Powers and Duties, Regulating the Issuance of Patents, and Appropriating
Funds Therefor), which provides for the compulsory licensing of a particular patent after the
expiration of two years from the grant of the latter if the patented invention relates to, inter alia, In case [private respondent's] product containing the patented substance shall contain
medicine or that which is necessary for public health or public safety.Private respondent alleged one or more active ingredients admixed therewith, said product hereinafter identified
that the grant of Philippine Letters Patent No. 12207 was issued on 29 November 1978; that the as admixed product, the royalty to be paid shall be determined in accordance with the
petition was filed beyond the two-year protective period provided in Section 34 of R.A. No. 165; following formula:
and that it had the capability to work the patented product or make use of it in its manufacture of
medicine. Net Sales on Value of Patented
ROYALTY = Admixed
Petitioner opposed, arguing that private respondent had no cause of action and lacked the Product x 0.025 x Substance
capability to work the patented product; the petition failed to specifically divulge how private Value of Patented Value of Other
respondent would use or improve the patented product; and that private respondent was
Substance Active Ingredients
motivated by the pecuniary gain attendant to the grant of a compulsory license. Petitioner also
maintained that it was capable of satisfying the demand of the local market in the manufacture
and marketing of the medicines covered by the patented product. Finally, petitioner challenged 4. The royalties shall be computed after the end of each calendar quarter to all goods
the constitutionality of Sections 34 and 35 of R.A. No. 165 for violating the due process and containing the patented substance herein involved, made and sold during the
equal protection clauses of the Constitution. precedent quarter and to be paid by [private respondent] at its place of business on or
before the thirtieth day of the month following the end of each calendar quarter.
After appropriate proceedings, the BPTTT handed down its decision on 14 February 1994, Payments should be made to [petitioner's] authorized representative in the
with the dispositive portion thereof providing: Philippines;
INTELLECTUAL PROPERTY LAW (9 November 2018 Cases) Page 1

5. [Private respondent] shall keep records in sufficient detail to enable [petitioner] to ... [IT] VIOLATES INTERNATIONAL LAW AS EMBODIED IN THE PARIS
determine the royalties payable and shall further permit its books and records to be CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND
examined from time to time at [private respondent's] premises during office hours, to MUST ACCORDINGLY BE SET ASIDE AND MODIFIED.
the extent necessary to be made at the expense of [petitioner] by a certified public
accountant appointed by [petitioner] and acceptable to [private respondent]. II
6. [Private respondent] shall adopt and use its own trademark or labels on all its ... [IT] IS AN INVALID EXERCISE OF POLICE POWER.
products containing the patented substance herein involved;
III
7. [Private respondent] shall comply with the laws on drugs and medicine requiring
CONCEDING ARGUENDO THE QUESTIONED DECISIONS VALIDITY, THE
previous clinical tests and approval of proper government authorities before selling to
the public its own products manufactured under the license; BPTTTS PRONOUNCEMENT FIXING THE ROYALTY AT 2.5% OF THE NET
WHOLESALE PRICE IN PHILIPPINE CURRENCY WAS RENDERED
WITHOUT ANY FACTUAL BASIS AND AMOUNTS TO EXPROPRIATION OF
8. [Petitioner] shall have the right to terminate the license granted to [private PRIVATE PROPERTY WITHOUT JUST COMPENSATION WHICH IS
respondent] by giving the latter thirty (30) days notice in writing to that effect, in the VIOLATIVE OF THE CONSTITUTION.
event that [private respondent] default [sic] in the payment of royalty provided herein
or if [private respondent] shall default in the performance of other covenants or IV
conditions of this agreement which are to be performed by [private respondent]:
... [IT] SHOULD NOT HAVE PROCEEDED TO DECIDE THE CASE BELOW
FOR FAILURE OF PRIVATE RESPONDENT TO AFFIRMATIVELY PROVE THE
(a) [Private respondent] shall have the right provided it is not JURISDICTIONAL FACT OF PUBLICATION.[5]
in default to payment or royalties or other obligations under
this agreement, to terminate the license granted to In its decision of 4 November 1994,[6] the Court of Appeals affirmed in toto the challenged
its, [sic] giving [petitioner] thirty (30) days-notice in writing to decision. We quote its findings and conclusion upon which the affirmance is anchored, viz.:
that effect;
An assiduous scrutiny of the impugned decision of the public respondent reveals that
(b) Any termination of this license as provided for above the same is supported by substantial evidence. It appears that at the time of the filing
shall not in any way operate to deny [petitioner] its rights or of the petition for compulsory license on March 24, 1987, the subject letters Patent
remedies, either at laws [sic] or equity, or relieve [private No. 12207 issued on November 29, 1978 has been in effect for more than two (2)
respondent] of the payment of royalties or satisfaction of years. The patented invention relates to compound and compositions used in
other obligations incurred prior to the effective date of such inhibiting certain actions of the histamine, hence, it relates to medicine. Moreover,
termination; and after hearing and careful consideration of the evidence presented, the Director of
Patents ruled that - there is ample evidence to show that [private respondent]
(c) Notice of termination of this license shall be filed with the possesses such capability, having competent personnel, machines and equipment
Bureau of Patents, Trademarks and Technology Transfer. as well as permit to manufacture different drugs containing patented active
ingredients such as ethambutol of American Cyanamid and Ampicillin and
Amoxicillin of Beecham Groups, Ltd.
9. In case of dispute as to the enforcement of the provisions of this license, the matter
shall be submitted for arbitration before the Director of Bureau of Patents, Trademarks As to the claim by the petitioner that it has the capacity to work the patented product
and Technology Transfer or any ranking official of the Bureau of Patents, Trademarks although it was not shown that any pretended abuse has been committed, thus the
and Technology Transfer duly delegated by him; reason for granting compulsory license is intended not only to give a chance to
others to supply the public with the quantity of the patented article but especially to
10. This License shall inure to the benefit of each of the parties herein, to the prevent the building up of patent monopolities [sic]. [Parke Davis v. Doctors
subsidiaries and assigns of [petitioner] and to the successors and assigns of [private Pharmaceuticals, Inc., 14 SCRA 1053].
respondent]; and
We find that the granting of compulsory license is not simply because Sec. 34 (1) e,
RA 165 allows it in cases where the invention relates to food and medicine. The
[4]
11. This license take [sic] effect immediately. Director of Patents also considered in determining that the applicant has the
capability to work or make use of the patented product in the manufacture of a useful
Petitioner then appealed to the Court of Appeals by way of a petition for review, which was product. In this case, the applicant was able to show that Cimetidine, (subject matter
of latters Patent No. 12207) is necessary for the manufacture of an anti-ulcer
docketed as CA-G.R. SP No. 33520. Petitioner claimed that the appealed decision was
erroneous because: drug/medicine, which is necessary for the promotion of public health. Hence, the
award of compulsory license is a valid exercise of police power.
I

We do not agree to [sic] petitioners contention that the fixing of the royalty at 2.5% of We take note of the well-crafted petition submitted by petitioner albeit the legal milieu and a
the net wholesale price amounted to expropriation of private property without just good number of decided cases militate against the grounds posited by petitioner. In sum,
compensation. considering the well-entrenched jurisprudence sustaining the position of respondents, We
reiterate the rule in Basay Mining Corporation vs. SEC, to the effect that -
Paragraph 3, Section 35-B, R.A. No. 165, as amended by P.D. No. 1267, states:
The legal presumption is that official duty has been performed. And it is particularly strong as
SEC. 35-B. Terms and Conditions of Compulsory License. regards administrative agencies vested with powers said to be quasi-judicial in nature, in
connection with the enforcement of laws affecting particular fields of activity, the proper
(1). x x x regulation and/or promotion of which requires a technical or special training, aside from a good
knowledge and grasp of the overall conditions, relevant to said field, obtaining in the
nations. The policy and practice underlying our Administrative Law is that courts of justice should
(2). x x x respect the findings of fact of said administrative agencies, unless there is absolutely no
evidence in support thereof or such evidence is clearly, manifestly and patently
(3). A compulsory license shall only be granted subject to the payment of adequate royalties insubstantial.[G.R. No. 76695, October 3, 1988, Minute Resolution; Beautifont, Inc., et
commensurate with the extent to which the invention is worked. However, royalty payments shall al. v. Court of Appeals, et al., G.R. No. 50141, January 29, 1988]
not exceed five percent (5%) of the net wholesale price (as defined in Section 33-A) of the
products manufactured under the license. Its motion for reconsideration having been denied in the resolution[7] of 31 August 1995,
petitioner filed the instant petition for review on certiorari with the following assignment of errors:
If the product, substance, or process subject of the compulsory license is involved in an I
industrial project approved by the Board of Investments, the royalty payable to the patentee or
patentees shall not exceed three percent (3%) of the net wholesale price (as defined in Section THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S
34-A) of the patented commodity and/or commodity manufactured under the patented process, DECISION VIOLATES INTERNATIONAL LAW AS EMBODIED IN (A) THE PARIS
the same rate of royalty shall be paid whenever two or more patents are involved, which royalty CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND (B)
shall be distributed to the patentees in rates proportional to the extent of commercial use by the THE GATT TREATY, URUGUAY ROUND, AND MUST ACCORDINGLY BE SET
licensee giving preferential values to the holder of the oldest subsisting product patent. ASIDE AND MODIFIED.
II
The foregoing provision grants the Director of Patents the use of his sound discretion in fixing
the percentage for the royalty rate. In the instant case, the Director of Patents exercised his THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S
discretion and ruled that a rate of 2.5% of the net wholesale price is fair enough for the DECISION IS AN INVALID EXERCISE OF POLICE POWER, ABSENT ANY
parties. In Parke Davis & Co. vs. DPI and Tiburcio, [L-27004, August 6, 1983, 124 SCRA 115] it SHOWING BY EVIDENCE OF AN OVERWHELMING PUBLIC NEED FOR A
was held that - liberal treatment in trade relations should be afforded to local industry for as COMPULSORY LICENSE OVER CIMETIDINE IN FAVOR OF PRIVATE
reasoned out by respondent company, it is so difficult to compete with the industrial RESPONDENT.
grants [sic] of the drug industry, among them being the petitioner herein, that it always is
necessary that the local drug companies should sell at much lower (than) the prices of said III
foreign drug entities. Besides, foreign produce licensor can later on ask for an increase in
percentage rate of royalty fixed by the Director of Patents if local sales of license should THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THAT THE BPTTT'S
increase.Further, in Price vs. UNILAB, the award of royalty rate of 2.5% was deemed to be just PRONOUNCEMENT FIXING THE ROYALTY FOR AN INVOLUNTARY LICENSE
and reasonable, to wit [166 SCRA 133]: AT 2.5% OF THE NET WHOLESALE PRICE IN PHILIPPINE CURRENCY WAS
RENDERED WITHOUT ANY FACTUAL BASIS AND AMOUNTS TO
EXPROPRIATION OF PRIVATE PROPERTY WITHOUT JUST COMPENSATION
Moreover, what UNILAB has with the compulsory license is the bare right to use the patented AND IS IN VIOLATION OF THE CONSTITUTIONAL RIGHT TO DUE PROCESS.
chemical compound in the manufacture of a special product, without any technical assistance
from herein respondent-appellant. Besides, the special product to be manufactured by UNILAB IV
will only be used, distributed, and disposed locally. Therefore, the royalty rate of 2.5% is just and
reasonable. THE HON. COURT OF APPEALS ERRED IN NOT HOLDING THE BPTTT'S
ACTION WAS RENDERED NULL AND VOID FOR FAILURE OF PRIVATE
RESPONDENT TO AFFIRMATIVELY PROVE THE JURISDICTIONAL FACT OF
It appearing that herein petitioner will be paid royalties on the sales of any products [sic] the PUBLICATION AS REQUIRED BY LAW.
licensee may manufacture using any or all of the patented compounds, the petitioner cannot
complain of a deprivation of property rights without just compensation [Price v. UNILAB, L- We resolved to give due course to the petition and required the parties to submit their
82542, September 19, 1988]. respective memoranda, which they did, with that of public respondent filed only on 7 February
1997.

After a careful perusal of the pleadings and evaluation of the arguments adduced by the (a) If the patented invention is not being worked within the Philippines
parties, we find this petition to be without merit. on a commercial scale, although capable of being so worked, without
satisfactory reason;
In its first assigned error, petitioner invokes Article 5 of the Paris Convention for the
Protection of Industrial Property,[8] or Paris Convention, for short, of which the Philippines (b) If the demand for the patented article in the Philippines is not being
became a party thereto only in 1965.[9] Pertinent portions of said Article 5, Section A, provide: met to an adequate extent and on reasonable terms;
(c) If, by reason of refusal of the patentee to grant a license or licenses

A. x x x on reasonable terms, or by reason of the conditions attached by the
patentee to licensee or to the purchase, lease or use of the patented
(2) Each country of the union shall have the right to take article or working of the patented process or machine for production, the
legislative measures providing for the grant of establishment of any new trade or industry in the Philippines is
compulsory licenses to prevent the abuses which prevented, or the trade or industry therein is unduly restrained;
might result from the exercise of the exclusive rights
(d) If the working of the invention within the country is being prevented
conferred by the patent, for example, failure to work.
or hindered by the importation of the patented article; or
xxx
(e) If the patented invention or article relates to food or medicine or
(4) A compulsory license may not be applied for on the ground manufactured products or substances which can be used as food or
of failure to work or insufficient working before the medicine, or is necessary for public health or public safety.
expiration of a period of four years from the date of
(2) In any of the above cases, a compulsory license shall be granted to the petitioner
filing of the patent application or three years from the
provided that he has proved his capability to work the patented product or to make
date of the grant of the patent, whichever period
use of the patented product in the manufacture of a useful product, or to employ the
expires last; it shall be refused if the patentee justifies
patented process.
his inaction by legitimate reasons. Such a compulsory
license shall be non-exclusive and shall not be (3) The term "worked" or "working" as used in this section means the manufacture
transferable, even in the form of the grant of a sub- and sale of the patented article, of the patented machine, or the application of the
license, except with that part of the enterprise or patented process for production, in or by means of a definite and substantial
goodwill which exploits such license. establishment or organization in the Philippines and on a scale which is reasonable
and adequate under the circumstances. Importation shall not constitute "working."
It is thus clear that Section A(2) of Article 5 above unequivocally and explicitly respects the
right of member countries to adopt legislative measures to provide for the grant of compulsory xxx
licenses to prevent abuses which might result from the exercise of the exclusive rights conferred
by the patent. An example provided of possible abuses is "failure to work;" however, as such is SEC. 35. Grant of License. -- (1) If the Director finds that a case for the grant is a
merely supplied by way of an example, it is plain that the treaty does not preclude the inclusion license under Section 34 hereof has been made out, he shall, within one hundred
of other forms or categories of abuses. eighty days from the date the petition was filed, order the grant of an appropriate
license. The order shall state the terms and conditions of the license which he
Section 34 of R.A. No. 165, even if the Act was enacted prior to the Philippines adhesion himself must fix in default of an agreement on the matter manifested or submitted by
to the Convention, fits well within the aforequoted provisions of Article 5 of the Paris the parties during the hearing.
Convention. In the explanatory note of Bill No. 1156 which eventually became R.A. No. 165, the
legislative intent in the grant of a compulsory license was not only to afford others an opportunity (2) A compulsory license sought under Section 34-B shall be issued within one
to provide the public with the quantity of the patented product, but also to prevent the growth of hundred twenty days from the filing of the proponent's application or receipt of the
monopolies.[10] Certainly, the growth of monopolies was among the abuses which Section A, Board of Investment's endorsement.
Article 5 of the Convention foresaw, and which our Congress likewise wished to prevent in
enacting R.A. No. 165. The case at bar refers more particularly to subparagraph (e) of paragraph 1 of Section 34 -
- the patented invention or article relates to food or medicine or manufactured products or
R.A. No. 165, as amended by Presidential Decree No. 1263, promulgated on 14 substances which can be used as food or medicine, or is necessary for public health or public
December 1977, provides for a system of compulsory licensing under a particular patent. safety. And it may not be doubted that the aforequoted provisions of R.A. No. 165, as amended,
Sections 34 and 35, Article Two, of Chapter VIII read as follows: are not in derogation of, but are consistent with, the recognized right of treaty signatories under
Article 5, Section A(2) of the Paris Convention.
SEC. 34. Grounds for Compulsory Licensing. -- (1) Any person may apply to the
Director for the grant of a license under a particular patent at any time after the Parenthetically, it must be noted that paragraph (4) of Section A, Article 5 of the Paris
expiration of two years from the date of the grant of the patent, under any of the Convention setting time limitations in the application for a compulsory license refers only to an
following circumstances: instance where the ground therefor is "failure to work or insufficient working," and not to any
ground or circumstance as the treaty signatories may reasonably determine.

Neither may petitioner validly invoke what it designates as the GATT Treaty, Uruguay judicial bodies[18] such as the BPTTT. Here, petitioner have not furnished any cogent reason to
Round. This act is better known as the Uruguay Final Act signed for the Philippines on 15 April depart from this rule.
1994 by Trade and Industry Secretary Rizalino Navarro.[11] Forming integral parts thereof are the
Agreement Establishing the World Trade Organization, the Ministerial Declarations and WHEREFORE, the petition is hereby DENIED and the challenged decision of the Court of
Decisions, and the Understanding on Commitments in Financial Services. [12] The Agreement Appeals in CA-G.R. SP No. 33520 is AFFIRMED in toto.
establishing the World Trade Organization includes various agreements and associated legal
instruments. It was only on 14 December 1994 that the Philippine Senate, in the exercise of its Costs against petitioner.
power under Section 21 of Article VII of the Constitution, adopted Senate Resolution No. 97 SO ORDERED.
concurring in the ratification by the President of the Agreement. The President signed the
instrument of ratification on 16 December 1994.[13] But plainly, this treaty has no retroactive COPYRIGHT:
effect. Accordingly, since the challenged BPTTT decision was rendered on 14 February 1994,
petitioner cannot avail of the provisions of the GATT treaty.
The second and third assigned errors relate more to the factual findings of the Court of G.R. No. 195956, March 11, 2015
Appeals. Well-established is the principle that the findings of facts of the latter are conclusive,
unless: (1) the conclusion is a finding grounded entirely on speculation or conjecture; (2) the
inference made is manifestly absurd; (3) there is grave abuse of discretion in the appreciation of ABS-CBN CORPORATION, Petitioner, v. FELIPE GOZON, GILBERTO R. DUAVIT, JR.,
facts; (4) the judgment is premised on a misapprehension of facts; (5) the findings of fact are MARISSA L. FLORES, JESSICA A. SOHO, GRACE DELA PEÑA-REYES, JOHN OLIVER T.
conflicting; and (6) the Court of Appeals, in making its findings, went beyond the issues of the MANALASTAS, JOHN DOES AND JANE DOES, Respondents.
case and the same is contrary to the admissions of both the appellant and appellee. [14] Petitioner
has not convinced us that the instant case falls under any of the exceptions. On the contrary, we DECISION
find the findings of fact and conclusions of respondent Court of Appeals and that of the BPTTT
to be fully supported by the evidence and the applicable law and jurisprudence on the matter.
LEONEN, J.:
Petitioners claim of violations of the due process and eminent domain clauses of the Bill of
Rights are mere conclusions which it failed to convincingly support. As to due the process
The main issue in this case is whether there is probable cause to charge respondents with
argument, suffice it to say that full-blown adversarial proceedings were conducted before the
infringement under Republic Act No. 8293, otherwise known as the Intellectual Property Code.
BPTTT pursuant to the Patent Law. We agree with the Court of Appeals that the BPTTT
The resolution of this issue requires clarification of the concept of "copyrightable material" in
exhaustively studied the facts and its findings were fully supported by substantial evidence.
relation to material that is rebroadcast live as a news story. We are also asked to rule on
It cannot likewise be claimed that petitioner was unduly deprived of its property rights, as whether criminal prosecution for infringement of copyrightable material, such as live rebroadcast,
R.A. No. 165 not only grants the patent holder a protective period of two years to enjoy his can be negated by good faith.
exclusive rights thereto; but subsequently, the law recognizes just compensation in the form of
royalties.[15] ABS-CBN Corporation (ABS-CBN) filed the Petition for Review on Certiorari1 to assail the
November 9, 2010 Decision2 and the March 3, 2011 Resolution3 of the Court of Appeals. The
In Parke, Davies & Co. v. Doctors' Pharmaceuticals, Inc.,[16] we held: Court of Appeals reinstated the Department of Justice Resolution dated August 1, 2005 that
ordered the withdrawal of the Information finding probable cause for respondents' violation of
The right to exclude others from the manufacturing, using, or vending an invention Sections 1774 and 2115 of the Intellectual Property Code.6 Respondents are officers and
relating to, food or medicine should be conditioned to allowing any person to employees of GMA Network, Inc. (GMA-7). They are: Felipe Gozon (Gozon), GMA-7 President;
manufacture, use, or vend the same after a period of three [now two] years from the Gilberto R. Duavit, Jr. (Duavit, Jr.), Executive Vice-President; Marissa L. Flores (Flores), Vice-
date of the grant of the letters patent. After all, the patentee is not entirely deprived of President for News and Public Affairs; Jessica A. Soho (Soho), Director for News; Grace Déla
any proprietary right. In fact, he has been given the period of three years [now two Peña-Reyes (Dela Peña-Reyes), Head of News and Public Affairs; John Oliver Manalastas
years] of complete monopoly over the patent. Compulsory licensing of a patent on '(Manalastas), Program Manager; and others.
food or medicine without regard to the other conditions imposed in Section 34 [now
Section 35] is not an undue deprivation of proprietary interests over a patent right The controversy arose from GMA-7's news coverage on the homecoming of Filipino overseas
because the law sees to it that even after three years of complete monopoly worker and hostage victim Angelo dela Cruz on July 22, 2004. As summarized by the Court of
something is awarded to the inventor in the form of bilateral and workable licensing Appeals:chanroblesvirtuallawlibrary
agreement and a reasonable royalty to be agreed upon by the parties and in default Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a condition
of such an agreement, the Director of Patents may fix the terms and conditions of the for his release, a demand was made for the withdrawal of Filipino troops in Iraq. After
license. negotiations, he was released by his captors and was scheduled to return to the country in the
afternoon of 22 July 2004. Occasioned by said homecoming and the public interest it generated,
As to the fourth assigned error, we hold that petitioner can no longer assail the jurisdiction both . . . GMA Network, Inc. . . . and [petitioner] made their respective broadcasts and coverage
of the BPTTT, raising this issue only for the first time on appeal. In Pantranco North Express, of the live event.7
Inc. v. Court of Appeals,[17] we ruled that where the issue of jurisdiction is raised for the first time ABS-CBN "conducted live audio-video coverage of and broadcasted the arrival of Angelo dela
on appeal, the party invoking it is so barred on the ground of laches or estoppel under the Cruz at the Ninoy Aquino International Airport (NAIA) and the subsequent press
circumstances therein stated. It is now settled that this rule applies with equal force to quasi-

conference."8 ABS-CBN allowed Reuters Television Service (Reuters) to air the footages it had 116 of the Rules of Criminal Procedure, once a petition for review is filed with the Department of
taken earlier under a special embargo agreement.9 Justice, a suspension of the criminal proceedings may be allowed by the court.
ABS-CBN alleged that under the special embargo agreement, any of the footages it took would Accordingly, to allow the Department of Justice the opportunity to act on said petition for review,
be for the "use of Renter's international subscribers only, and shall be considered and treated by let the proceedings on this case be suspended for a period of sixty (60) days counted from
Reuters under 'embargo' against use by other subscribers in the Philippines. . . . [N]o other January 5, 2005, the date the petition was filed with the Department of Justice. The arraignment
Philippine subscriber of Reuters would be allowed to use ABS-CBN footage without the latter's of the accused on February 1, 2005 is accordingly cancelled. Let the arraignment be
consent."10 rescheduled to March 8, 2005 at 8:30 a.m. The accused through counsel are notified in open
court.
GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes, and Manalastas are
connected, "assigned and stationed news reporters and technical men at the NAIA for its live SO ORDERED.28
broadcast and non-live news coverage of the arrival of dela Cruz."11 GMA-7 subscribes to both On June 29, 2010, Department of Justice Acting Secretary Alberto C. Agra (Secretary Agra)
Reuters and Cable News Network (CNN). It received a live video feed of the coverage of Angelo issued the Resolution (Agra Resolution) that reversed the Gonzalez Resolution and found
dela Cruz's arrival from Reuters.12 probable cause to charge Dela Peña-Reyes and Manalastas for violation of the Intellectual
Property Code.29 Secretary Agra also found probable cause to indict Gozon, Duavit, Jr., Flores,
GMA-7 immediately carried the live newsfeed in its program "Flash Report," together with its live and Soho for the same violation.30 He ruled that:chanroblesvirtuallawlibrary
broadcast.13 Allegedly, GMA-7 did not receive any notice or was not aware that Reuters was [w]hile good faith may be a defense in copyright infringement, the same is a disputable
airing footages of ABS-CBN.14 GMA-7's news control room staff saw neither the "No Access presumption that must be proven in a full-blown trial. Disputable presumptions may be
Philippines" notice nor a notice that the video feed was under embargo in favor of ABS-CBN.15 contradicted and overcome by other evidence. Thus, a full-blown trial is the proper venue where
facts, issues and laws are evaluated and considered. The very purpose of trial is to allow a party
On August 13, 2004, ABS-CBN filed the Complaint for copyright infringement under Sections to present evidence to overcome the disputable presumptions involved. 31
17716 and 21117 of the Intellectual Property Code.18 The dispositive portion of the Agra Resolution provides:chanroblesvirtuallawlibrary
WHEREFORE, premises considered:
On December 3, 2004, Assistant City Prosecutor Dindo Venturanza issued the
Resolution19 finding probable cause to indict Dela Peña-Reyes and Manalastas.20 Consequently, (a) The Motion for Reconsideration filed by appellees ABS-CBN Broadcasting Corporation
the Information21 for violation of the Intellectual Property Code was filed on December 17, 2004. (ABS-CBN) of our Resolution promulgated on August 1, 2005 (Resolution No. 364, Series of
It reads:chanroblesvirtuallawlibrary 2005) and the Petition for Review filed by complainant-appellant ABS-CBN in I.S. No. 04-
That on or about the 22nd of July 2004, in Quezon City, Philippines, the above-named accused, 10458 on April 10, 2006, are GRANTED and the City Prosecutor of Quezon City is hereby
conspiring together, confederating with and mutually helping each other, being the Head of ordered to file the necessary Information for violation of Section 177 and 211 of Republic Act No.
News Operations and the Program Manager, respectively, for the News and Public Affairs 8293 against GMA-7. Felipe L. Gozon, Gilberto R. Duavit, Jr., Marissa L. Flores, Jessica A.
Department of GMA Network, Inc., did then and there, willfully, unlawfully and feloniously use Soho, Grace Dela Pena-Reyes, John Oliver T. Manalastas[.]
and broadcast the footage of the arrival of Angelo [d]ela Cruz at the Ninoy Aquino International
Airport of which ABS-CBN holds the exclusive ownership and copyright by then and there using, SO ORDERED.32 (Emphasis in the original)
airing, and broadcasting the said footage in its news program "FLASH REPORT" without first Respondents assailed the Agra Resolution through the Petition for Certiorari with prayer for
obtaining the consent or authority of said copyright owner, to their damage and prejudice. issuance of a temporary restraining order and/or Writ of Preliminary Injunction on September 2,
2010 before the Court of Appeals. In the Resolution dated September 13, 2010, the Court of
Contrary to law.22 Appeals granted the temporary restraining order preventing the Department of Justice from
On January 4, 2005, respondents filed the Petition for Review before the Department of enforcing the Agra Resolution.33
Justice.23 In the Resolution (Gonzalez Resolution) dated August 1, 2005, Department of Justice
Secretary Raul M. Gonzalez (Secretary Gonzalez) ruled in favor of respondents and held that On November 9, 2010, the Court of Appeals rendered the Decision granting the Petition and
good faith may be raised as a defense in the case. 24 The dispositive portion of the Resolution reversing and setting aside the Agra Resolution.34 The Court of Appeals held that Secretary
reads:chanroblesvirtuallawlibrary Agra committed errors of jurisdiction in issuing the assailed Resolution. Resolving the issue of
WHEREFORE, THE PETITION FOR REVIEW FILED BY GMA-7 in I.S. No. 04-10458 is copyright infringement, the Court of Appeals said:chanroblesvirtuallawlibrary
considered meritorious and is hereby GRANTED. This case is hereby Dismissed, the resolution Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video
of the City Prosecutor of Quezon City is hereby reversed and the same is ordered to withdraw feed, petitioner GMA is liable under the provisions of the Intellectual Property Code, which was
the information if any and report action taken to this office within ten (10) days. 25 (Emphasis in enacted purposely to protect copyright owners from infringement. However, it is an admitted fact
the original) that petitioner GMA had only aired a five (5) second footage of the disputed live video feed that it
Both parties moved for reconsideration of the Gonzalez Resolution. 26 had received from Reuters and CNN as a subscriber. Indeed, petitioners had no notice of the
right of ownership of private respondent over the same. Without notice of the "No Access
Meanwhile, on January 19, 2005, the trial court granted the Motion to Suspend Proceedings filed Philippines" restriction of the live video feed, petitioner cannot he faulted for airing a live video
earlier by Dela Peña-Reyes and Manalastas.27 The trial court Order feed from Reuters and CNN.
reads:chanroblesvirtuallawlibrary
Perusing the motion, the court finds that a petition for review was filed with the Department of Verily, as aptly opined by Secretary Gonzalez in his earlier Resolution, the act of petitioners in
Justice on January 5, 2005 as confirmed by the public prosecutor. Under Section 11 (c), Rule airing the five (5) second footage was undeniably attended by good faith and it thus serves to

exculpate them from criminal liability under the Code. While the Intellectual Properly Code is a renders him unable to fully understand the charge against him and to plead intelligently
special law, and thus generally categorized as malum prohibitum, it bears to stress that the thereto. In such case, the court shall order his mental examination and, if necessary, his
provisions of the Code itself do not ipso facto penalize a person or entity for copyright confinement for such purpose;
infringement by the mere fact that one had used a copyrighted work or material.
(b) There exists a prejudicial question; and
Certainly so, in the exercise of one's moral and economic or copyrights, the very provisions of
Part IV of the Intellectual Property Code provide for the scope and limitations on copyright (c) A petition for review of the resolution of the prosecutor is pending at either the Department of
protection under Section 184 and in fact permit fair use of copyrighted work under Section 185. Justice, or the Office of the President; provided, that the period of suspension shall not exceed
With the aforesaid statutory limitations on one's economic and copyrights and the allowable sixty (60) days counted from the filing of the petition with the reviewing office. (12a) (Emphasis
instances where the other persons can legally use a copyrighted work, criminal culpability clearly supplied)
attaches only when the infringement had been knowingly and intentionally In Samson v. Daway,39 this court acknowledged the applicability of Rule 116, Section (c) in a
committed.35 (Emphasis supplied) criminal prosecution for infringement under the Intellectual Property Code. However, this court
The dispositive portion of the Decision reads:chanroblesvirtuallawlibrary emphasized the limits of the order of deferment under the Rule:
WHEREFORE, the foregoing considered, the instant petition is hereby GRANTED and the
assailed Resolution dated 29 June 2010 REVERSED and SET ASIDE. Accordingly, the earlier While the pendency of a petition for review is a ground for suspension of the arraignment, the . .
Resolution dated 1 August 2005, which ordered the withdrawal of the Information filed, if any, . provision limits the deferment of the arraignment to a period of 60 days reckoned from the filing
against the petitioners for violation of Sections 177 and 211 of the Intellectual Property Code, is of the petition with the reviewing office. It follows, therefore, that after the expiration of said
hereby REINSTATED. No costs. period, the trial court is bound to arraign the accused or to deny the motion to defer
arraignment.40
SO ORDERED.36 (Emphasis in the original)
ABS-CBN's Motion for Reconsideration was denied.37 It then filed its Petition for Review before We clarify that the suspension of the arraignment should always be within the limits allowed by
this court assailing the Decision and Resolution of the Court of Appeals. 38 law. In Crespo v. Judge Mogul,41 this court outlined the effects of filing an information before the
trial court, which includes initiating a criminal action and giving this court "authority to hear and
The issues for this court's consideration are: determine the case":42ChanRoblesVirtualawlibrary
The preliminary investigation conducted by the fiscal for the purpose of determining whether
First, whether Secretary Agra committed errors of jurisdiction in the Resolution dated June 29, a prima facie case exists warranting the prosecution of the accused is terminated upon the filing
2010 and, therefore, whether a petition for certiorari was the proper remedy in assailing that of the information in the proper court. In turn, as above stated, the filing of said information sets
Resolution; in motion the criminal action against the accused in Court. Should the fiscal find it proper to
conduct a reinvestigation of the case, at such stage, the permission of the Court must be
Second, whether news footage is copyrightable under the law; secured. After such reinvestigation the finding and recommendations of the fiscal should be
submitted to the Court for appropriate action. While it is true that the fiscal has the quasi judicial
Third, whether there was fair use of the broadcast material; discretion to determine whether or not a criminal case should be filed in court or not, once the
case had already been brought to Court whatever disposition the fiscal may feel should be
Fourth, whether lack of knowledge that a material is copyrighted is a defense against copyright proper in the case thereafter should be addressed for the consideration of the Court, the only
infringement; qualification is that the action of the Court must not impair the substantial rights of the accused
or the right of the People to due process of law.
Fifth, whether good faith is a defense in a criminal prosecution for violation of the Intellectual
Property Code; and Whether the accused had been arraigned or not and whether it was due to a reinvestigation by
the fiscal or a review by the Secretary of Justice whereby a motion to dismiss was submitted to
Lastly, whether the Court of Appeals was correct in overturning Secretary Agra's finding of the Court, the Court in the exercise of its discretion may grant the motion or deny it and require
probable cause.cralawlawlibrary that the trial on the merits proceed for the proper determination of the case.
I However, one may ask, if the trial court refuses to grant the motion to dismiss filed by the fiscal
upon the directive of the Secretary of Justice will there not be a vacuum in the prosecution? A
The trial court granted respondents' Motion to Suspend Proceedings and deferred respondents state prosecutor to handle the case cannot possibly be designated by the Secretary of Justice
Dela Peña-Reyes and Manalastas' arraignment for 60 days in view of the Petition for Review who does not believe that there is a basis for prosecution nor can the fiscal be expected to
filed before the Department of Justice. handle the prosecution of the case thereby defying the superior order of the Secretary of Justice.
Rule 116, Section 11 (c) of the Rules of Criminal Procedure allows the suspension of the The answer is simple. The role of the fiscal or prosecutor as We all know is to see that justice is
accused's arraignment in certain circumstances only:chanroblesvirtuallawlibrary done and not necessarily to secure the conviction of the person accused before the Courts.
SEC. 11. Suspension of arraignment.-Upon motion by the proper party, the arraignment shall be Thus, in spite of his opinion to the contrary, it is the duty of the fiscal to proceed with the
suspended in the following cases: presentation of evidence of the prosecution to the Court to enable the Court to arrive at its own
independent judgment as to whether the accused should be convicted or acquitted. The fiscal
(a) The accused appears to be suffering from an unsound mental condition which effectively should not shirk from the responsibility of appearing for the People of the Philippines even under

such circumstances much less should he abandon the prosecution of the case leaving it to the In Elma v. Jacobi,48 this court ruled that a petition for certiorari under Rule 65 of the Rules of
hands of a private prosecutor for then the entire proceedings will be null and void. The least that Court is proper when assailing adverse resolutions of the Department of Justice stemming from
the fiscal should do is to continue to appear for the prosecution although he may turn over the the determination of probable cause.49 However, grave abuse of discretion must be alleged.50
presentation of the evidence to the private prosecutor but still under his direction and control.
In Sanrio Company Limited v. Lim,51 this court stressed the prosecutor's role in determining
The rule therefore in this jurisdiction is that once a complaint or information is filed in Court any probable cause. Judicial review will only lie when it is shown that the prosecutor acted with grave
disposition of the case as to its dismissal or the conviction or acquittal of the accused rests in the abuse of discretion amounting to lack or excess of jurisdiction:chanroblesvirtuallawlibrary
sound discretion of the Court. Although the fiscal retains the direction and control of the A prosecutor alone determines the sufficiency of evidence that will establish probable cause
prosecution of criminal cases even while the case is already in Court he cannot impose his justifying the filing of a criminal information against the respondent. By way of exception,
opinion on the trial court. The Court is the best and sole judge on what to do with the case however, judicial review is allowed where respondent has clearly established that the prosecutor
before it. The determination of the case is within its exclusive jurisdiction and competence. A committed grave abuse of discretion. Otherwise stated, such review is appropriate only when the
motion to dismiss the case filed by the fiscal should be addressed to the Court who has the prosecutor has exercised his discretion in an arbitrary, capricious, whimsical or despotic manner
option to grant or deny the same. It does not matter if this is done before or after the arraignment by reason of passion or personal hostility, patent and gross enough to amount to an evasion of a
of the accused or that the motion was filed after a reinvestigation or upon instructions of the positive duty or virtual refusal to perform a duty enjoined by law.52 (Citations omitted)
Secretary of Justice who reviewed the records of the investigation. 43 (Emphasis supplied, Grave abuse of discretion refers to:chanroblesvirtuallawlibrary
citations omitted) such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The
The doctrine in Crespo was reiterated in Mayor Balindong v. Court of Appeals,44 where this court abuse of discretion must be grave as where the power is exercised in an arbitrary or despotic
reminded the Department of Justice Secretary to refrain from entertaining petitions for review manner by reason of passion or personal hostility and must be so patent and gross as to amount
when the case is already pending with this court:chanroblesvirtuallawlibrary to an evasion of positive duty or to a virtual refusal to perform the duty enjoined by or to act at all
[I]n order to avoid a situation where the opinion of the Secretary of Justice who reviewed the in contemplation of law.53
action of the fiscal may be disregarded by the trial court, the Secretary of Justice should, as far Resorting to certiorari requires that there be there be "no appeal, or any plain, speedy, and
as practicable, refrain from entertaining a petition for review or appeal from the action of the adequate remedy in the ordinary course of law[,]"54 such as a motion for reconsideration.
fiscal, when the complaint or information has already been filed in the Court. The matter should Generally, "a motion for reconsideration is a condition sine qua non before a petition for
be left entirely for the determination of the Court.45 certiorari may lie, its purpose being to grant an opportunity for the [tribunal or officer] to correct
The trial court should have proceeded with respondents Dela Peña-Reyes and Manalastas' any error attributed to it by a re-examination of the legal and factual circumstances of the
arraignment after the 60-day period from the filing of the Petition for Review before the case."55
Department of Justice on March 8, 2005. It was only on September 13, 2010 that the temporary
restraining order was issued by the Court of Appeals. The trial court erred when it did not act on However, exceptions to the rule exist:chanroblesvirtuallawlibrary
the criminal case during the interim period. It had full control and direction of the case. As Judge (a) where the order is a patent nullity, as where the Court a quo had no jurisdiction; (b) where
Mogul reasoned in denying the motion to dismiss in Crespo, failure to proceed with the the questions raised in the certiorari proceeding have been duly raised and passed upon by the
arraignment "disregards the requirements of due process [and] erodes the Court's independence lower court, or are the same as those raised and passed upon in the lower court; (c) where there
and integrity."46 is an urgent necessity for the resolution of the question and any further delay would prejudice
the interests of the Government or of the petitioner or the subject matter of the action is
II perishable; (d) where, under the circumstances, a motion for reconsideration would be useless;
(e) where petitioner was deprived of due process and there is extreme urgency for relief; (f)
According to ABS-CBN, the Court of Appeals erred in finding that: a motion for reconsideration where, in a criminal case, relief from an order of arrest is urgent and the granting of such relief
was not necessary before a petition for certiorari could be filed; the Department of Justice by the trial Court is improbable; (g) where the proceedings in the lower court are a nullity for lack
Secretary committed errors of jurisdiction since the Agra Resolution was issued within its of due process; (h) where the proceedings was ex parte or in which the petitioner had no
authority and in accordance with settled laws and jurisprudence; and respondents were not opportunity to object; and (i) where the issue raised is one purely of law or where public interest
liable for copyright infringement. is involved.56(Emphasis in the original, citations omitted)
As argued by respondents, "[a] second motion for reconsideration would have been useless and
In its assailed Decision, the Court of Appeals found that respondents committed a procedural futile since the Department] [of] J[ustice] had already passed upon the same issues
error when they failed to file a motion for reconsideration before filing the Petition for Certiorari. twice."57 Equally pressing under the circumstances was the need to resolve the matter, as the
However, the Court of Appeals held that a motion for reconsideration was unnecessary since the Information's filing would lead to respondents' imminent arrest. 58
Agra Resolution was a patent nullity and it would have been useless under the
circumstances:chanroblesvirtuallawlibrary Moreover, Department of Justice Department Circular No. 70 dated July 3, 2000, or the 2000
Given that a reading of the assailed Resolution and the instant records readily reveals errors -of NPS Rules on Appeal, provides that no second motion for reconsideration of the Department of
jurisdiction on the part of respondent Secretary, direct judicial recourse is warranted under the Justice Secretary's resolution shall be entertained:chanroblesvirtuallawlibrary
circumstances. Aside from the fact that said Resolution is a patent nullity having been issued in SECTION 13. Motion for reconsideration. The aggrieved party may file a motion for
grave abuse of discretion amounting to lack or excess of jurisdiction, the filing of a motion for reconsideration within a non-extendible period of ten (10) days from receipt of the resolution on
reconsideration is evidently useless on account of the fact that the issues and arguments before appeal, furnishing the adverse party and the Prosecution Office concerned with copies thereof
this Court have already been duly raised and accordingly delved into by respondent Secretary in and submitting proof of such service. No second or further motion for reconsideration shall be
his disposition of the petition a quo.47(Emphasis in the original) entertained.

The Agra Resolution was the result of respondents' Motion for Reconsideration assailing the IV
Gonzalez Resolution. To file a motion for reconsideration of the Agra Resolution would be
superfluous. Respondents were, therefore, correct in filing the Petition for Certiorari of the Agra Probable cause pertains to "such facts as are sufficient to engender a well-founded belief that a
Resolution before the Court of Appeals.cralawlawlibrary crime has been committed and that respondent is probably guilty thereof." 66 Preliminary
investigation is the inquiry or proceeding to determine whether there is probable cause.67
III
In Webb v. De Leon,68 this court ruled that determination of probable cause during preliminary
The Court of Appeals ruled that Secretary Agra committed errors of jurisdiction, which then investigation does not require trial-like evaluation of evidence since existence of probable cause
required the grant of the writ of certiorari:chanroblesvirtuallawlibrary does not equate to guilt:chanroblesvirtuallawlibrary
So viewed, by ordering the filing of information without proof that probable cause exists to It ought to be emphasized that in determining probable cause, the average man weighs facts
charge petitioners with a crime, respondent Secretary clearly committed an error of jurisdiction and circumstances without resorting to the calibrations of our technical rules of evidence of
thus warranting the issuance of the writ of certiorari. Surely, probable cause cannot be had when which his knowledge is nil. Rather, he relies on the calculus of common sense of which all
the very provisions of the statute exculpates criminal liability in cases classified as fair use of reasonable men have an abundance.
copyrighted materials. The fact that they admittedly used the Reuters live video feed is not, as a
matter of course, tantamount to copyright infringement that would justify the filing of an . . . .
information against the petitioners.59
Error of jurisdiction must be distinguished from error of judgment: . . . A finding of probable cause merely binds over the suspect to stand trial. It is not a
pronouncement of guilt.69
A line must be drawn between errors of judgment and errors of jurisdiction. An error of judgment In Reyes v. Pearlbank Securities, Inc.,70 finding probable cause is not equivalent to finding with
is one which the court may commit in the exercise of its jurisdiction. An error of jurisdiction moral certainty that the accused committed the crime:
renders an order or judgment void or voidable. Errors of jurisdiction are reviewable on certiorari;
errors of judgment, only by appeal.60 A finding of probable cause needs only to rest on evidence showing that more likely than not a
crime has been committed by the suspects. It need not be based on clear and convincing
In People v. Hon. Sandiganbayan61:chanroblesvirtuallawlibrary evidence of guilt, not on evidence establishing guilt beyond reasonable doubt, and definitely not
An error of judgment is one which the court may commit in the exercise of its jurisdiction. on evidence establishing absolute certainty of guilt. In determining probable cause, the average
An error of jurisdiction is one where the act complained of was issued by the court without or in man weighs facts and circumstances without resorting to the calibrations of the rules of evidence
excess of jurisdiction, or with grave abuse of discretion, which is tantamount to lack or in excess of which he has no technical knowledge. He relies on common sense. 71
of jurisdiction and which error is correctible only by the extraordinary writ of certiorari. Certiorari
will not be issued to cure errors of the trial court in its appreciation of the evidence of the parties, During preliminary investigation, a public prosecutor does not adjudicate on the parties' rights,
or its conclusions anchored on the said findings and its conclusions of law. 62 (Emphasis obligations, or liabilities.72
supplied)
This court has adopted a deferential attitude towards review of the executive's finding of In the recent case of Estrada v. Office of the Ombudsman, et al,73 we reiterated Webb on the
probable cause.63 This is based "not only upon the respect for the investigatory and determination of probable cause during preliminary investigation and traced the history of
[prosecutorial] powers granted by the Constitution to the executive department but upon probable cause as borrowed from American jurisprudence:chanroblesvirtuallawlibrary
practicality as well."64 Review of the Department of Justice Secretary's decision or resolution will The purpose in determining probable cause is to make sure that the courts are not clogged with
be allowed only when grave abuse of discretion is alleged:chanroblesvirtuallawlibrary weak cases that will only be dismissed, as well as to spare a person from the travails of a
The full discretionary authority to determine probable cause in a preliminary investigation to needless prosecution.
ascertain sufficient ground for the filing of information rests with the executive branch.Hence,
judicial review of the resolution of the Secretary of Justice is limited to a determination whether . . . .
there has been a grave abuse of discretion amounting to lack or excess of jurisdiction. Courts
cannot substitute the executive branch's judgment. . . . In the United States, from where we borrowed the concept of probable cause, the prevailing
definition of probable cause is this:chanroblesvirtuallawlibrary
. . . . In dealing with probable cause, however, as the very name implies, we deal with probabilities.
These are not technical; they are the factual and practical considerations of everyday life on
It is only where the decision of the Justice Secretary is tainted with grave abuse of discretion which reasonable and prudent men, not legal technicians, act. The standard of proof is
amounting to lack or excess of jurisdiction that the Court of Appeals may take cognizance of the accordingly correlative to what must be proved.
case in a petition for certiorari under Rule 65 of the Revised Rules of Civil Procedure. The Court
of Appeals decision may then be appealed to this Court by way of a petition for review on "The substance of all the definitions" of probable cause "is a reasonable ground for belief of
certiorari.65 (Emphasis supplied, citations omitted) guilt." McCarthy v. De Armit, 99 Pa. St. 63, 69, quoted with approval in the Carroll opinion. 267
In this case, it must be shown that Secretary Agra exceeded his authority when he reversed the U. S. at 161. And this "means less than evidence which would justify condemnation" or
findings of Secretary Gonzalez. This court must determine whether there is probable cause to conviction, as Marshall, C. J., said for the Court more than a century ago in Locke v. United
file an information for copyright infringement under the Intellectual Property States,7 Cranch 339, 348. Since Marshall's time, at any rate, it has come to mean more than
Code.cralawlawlibrary bare suspicion: Probable cause exists where "the facts and circumstances within their [the
officers'] knowledge and of which they had reasonably trustworthy information [are] sufficient in

themselves to warrant a man of reasonable caution in the belief that" an offense has been or is material is punishable under the Intellectual Property Code. It argues that the new footage is not
being committed. Carroll v. United States, 267 U. S. 132, 162. a "newsworthy event" but "merely an account of the arrival of Angelo dela Cruz in the Philippines
— the latter being the newsworthy event":76ChanRoblesVirtualawlibrary
These long-prevailing standards seek to safeguard citizens from rash and unreasonable To be clear, it is the event itself or the arrival of Angelo dela Cruz which is not copyrightable
interferences with privacy and from unfounded charges of crime. They also seek to give fair because that is the newsworthy event. However, any footage created from the event itself, in this
leeway for enforcing the law in the community's protection. Because many situations which case the arrival of Angelo dela Cruz, are intellectual creations which are copyrightable. Thus, the
confront officers in the course of executing their duties are more or less ambiguous, room must footage created by ABS-CBN during the arrival of Angelo dela Cruz, which includes the
be allowed for some mistakes on their part. But the mistakes must be those of reasonable men, statements of Dindo Amparo, are copyrightable and protected by the laws on copyright.77
acting on facts leading sensibly to their conclusions of probability. The rule of probable cause is On the other hand, respondents argue that ABS-CBN's news footage of Angelo dela Cruz's
a practical, nontechnical conception affording the best compromise that has been found for arrival is not copyrightable or subject to protection:chanroblesvirtuallawlibrary
accommodating these often opposing interests. Requiring more would unduly hamper law Certainly, the arrival of Angelo [d]ela Cruz, which aroused public attention and the
enforcement. To allow less would be to leave law-abiding citizens at the mercy of the officers' consciousness of the Filipino people with regard to their countrymen, OFWs working in foreign
whim or caprice. countries and how the Philippine government responds to the issues concerning them, is
In the Philippines, there are four instances in the Revised Rules of Criminal Procedure where "news". There is no ingenuity or inventiveness added in the said news footage. The video
probable cause is needed to be established: footage of this "news" is not copyrightable by any legal standard as facts of everyday life
depicted in the news and items of press information is part of the public domain. 78 (Emphasis in
(1) In Sections 1 and 3 of Rule 112: By the investigating officer, to determine whether the original)
there is sufficient ground to engender a well-founded belief that a crime has been The news footage is copyrightable.
committed and the respondent is probably guilty thereof, and should be held for trial. A
preliminary investigation is required before the filing of a complaint or information for The Intellectual Property Code is clear about the rights afforded to authors of various kinds of
an offense where the penalty prescribed by law is at least four years, two months and work. Under the Code, "works are protected by the sole fact of their creation, irrespective of their
one day without regard to the fine; mode or form of expression, as well as of their content, quality and purpose." 79 These include
"[audio-visual works and cinematographic works and works produced by a process analogous to
cinematography or any process for making audiovisual recordings."80
(2) In Sections 6 and 9 of Rule 112: By the judge, to determine whether a warrant of arrest
or a commitment order, if the accused has already been arrested, shall be issued and Contrary to the old copyright law,81 the Intellectual Property Code does not require registration of
that there is a necessity of placing the respondent under immediate custody in order the work to fully recover in an infringement suit. Nevertheless, both copyright laws provide that
not to frustrate the ends of justice; copyright for a work is acquired by an intellectual creator from the moment of creation.82
(3) In Section 5(b) of Rule 113: By a peace officer or a private person making a It is true that under Section 175 of the Intellectual Property Code, "news of the day and other
warrantless arrest when an offense has just been committed, and he has probable miscellaneous facts having the character of mere items of press information" are considered
cause to believe based on personal knowledge of facts or circumstances that the unprotected subject matter.83 However, the Code does not state that expression of the news of
person to be arrested has committed it; and the day, particularly when it underwent a creative process, is not entitled to protection.
An idea or event must be distinguished from the expression of that idea or event. An idea has
(4) In Section 4 of Rule 126: By the judge, to determine whether a search warrant shall be been likened to a ghost in that it "must be spoken to a little before it will explain itself." 84 It is a
issued, and only upon probable cause in connection with one specific offense to be concept that has eluded exact legal definition.85 To get a better grasp of the idea/expression
determined personally by the judge after examination under oath or affirmation of the dichotomy, the etymology of the term "idea" is traced:chanroblesvirtuallawlibrary
complainant and the witnesses he may produce, and particularly describing the place The word "idea" is derived from a Greek term, meaning "a form, the look or appearance of a
to be searched and the things to be seized which may be anywhere in the thing as opposed to its reality, from idein, to see." In the Timaeus, Plato saw ideas as eternal
Philippines. paradigms, independent objects to which the divine demiurge looks as patterns in forming the
world. This was later modified to the religious conception of ideas as the thoughts of God. "It is
In all these instances, the evidence necessary to establish probable cause is based only on the not a very long step to extend the term 'idea' to cover patterns, blueprints, or plans in anyone's
likelihood, or probability, of guilt.74 mind, not only in God's." The word entered the French and English vernacular in the 1600s and
Estrada also highlighted that a "[preliminary investigation is not part of the criminal action. It is possessed two meanings. The first was the Platonic meaning of a perfect exemplar or paradigm.
merely preparatory and may even be disposed of in certain situations." 75 The second, which probably has its origin with Descartes, is of a mental concept or image or,
more broadly, any object of the mind when it is active. Objects of thought may exist
To determine whether there is probable cause that respondents committed copyright independently. The sun exists (probably) before and after you think of it. But it is also possible to
infringement, a review of the elements of the crime, including the existing facts, is think of things that have never existed, such as a unicorn or Pegasus. John Locke defined ideas
required.cralawlawlibrary very comprehensively, to include: all objects of the mind. Language was a way of translating the
invisible, hidden ideas that make up a person's thoughts into the external, perceptible world of
V articulate sounds and visible written symbols that others can understand.86 (Citations omitted)
There is no one legal definition of "idea" in this jurisdiction. The term "idea" is mentioned only
ABS-CBN claims that news footage is subject to copyright and prohibited use of copyrighted once in the Intellectual Property Code.87 In Joaquin, Jr. v. Drilon,88 a television format (i.e., a

dating show format) is not copyrightable under Section 2 of Presidential Decree No. 49; 89 it is a In the oft-cited case of Baker vs. Selden, the United States Supreme Court held that only the
mere concept:chanroblesvirtuallawlibrary expression of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to the copyright of a book which expounded on a new accounting system he had developed. The
concepts. The copyright does not extend to an idea, procedure, process, system, method of publication illustrated blank forms of ledgers utilized in such a system. The defendant
operation, concept, principle, or discovery, regardless of the form in which it is described, reproduced forms similar to those illustrated in the plaintiffs copyrighted book. The US Supreme
explained, illustrated, or embodied in such work. Thus, the new INTELLECTUAL PROPERTY Court ruled that:chanroblesvirtuallawlibrary
CODE OF THE PHILIPPINES provides:chanroblesvirtuallawlibrary "There is no doubt that a work on the subject of book-keeping, though only explanatory of well
SEC. 175. Unprotected Subject Matter.—Notwithstanding the provisions of Sections 172 and known systems, may be the subject of a copyright; but, then, it is claimed only as a book, x x x
173, no protection shall extend, under this law, to any idea, procedure, system, method or But there is a clear distinction between the books, as such, and the art, which it is, intended to
operation, concept, principle, discovery or mere data as such, even if they are expressed, illustrate. The mere statement of the proposition is so evident that it requires hardly any
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts argument to support ii. The same distinction may be predicated of every other art as well as that
having the character of mere items of press information; or any official text of a legislative, of bookkeeping.
administrative or legal nature, as well as any official translation thereof.
What then is the subject matter of petitioners' copyright? This Court is of the opinion that A treatise on the composition and use of medicines, be they old or new; on the construction and
petitioner BJPFs copyright covers audio-visual recordings of each episode of Rhoda and Me, as use of ploughs or watches or churns; or on the mixture and application of colors for painting or
falling within the class of works mentioned in P.D. 49, §2(M), to wit:chanroblesvirtuallawlibrary dyeing; or on the mode of drawing lines to produce the effect of perspective, would be the
Cinematographic works and works produced by a process analogous to cinematography or any subject of copyright; but no one would contend that the copyright of the treatise would give the
process for making audio-visual recordings; exclusive right to the art or manufacture described therein. The copyright of the book, if not
The copyright does not extend to the general concept or format of its dating game pirated from other works, would be valid without regard to the novelty or want of novelty of its
show.Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the subject matter. The novelty of the art or thing described or explained has nothing to do with the
investigating prosecutor should have the opportunity to compare the videotapes of the two validity of the copyright. To give to the author of the book an exclusive property in the art
shows. described therein, when no examination of its novelty has ever been officially made, would be a
surprise and a fraud upon the public. That is the province of letters patent, not of copyright. The
Mere description by words of the general format of the two dating game shows is insufficient; the claim to an invention of discovery of an art or manufacture must be subjected to the examination
presentation of the master videotape in evidence was indispensable to the determination of the of the Patent Office before an exclusive right therein can be obtained; and a patent from the
existence of probable cause. As aptly observed by respondent Secretary of Justice: government can only secure it.
A television show includes more than mere words can describe because it involves a whole The difference between the two things, letters patent and copyright, may be illustrated by
spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are
found by merely describing the general copyright/format of both dating game shows 90 (Emphasis found to be of great value in the healing art. If the discoverer writes and publishes a book on the
supplied, citations omitted) subject (as regular physicians generally do), he gains no exclusive right to the manufacture and
Ideas can be either abstract or concrete. 91 It is the concrete ideas that are generally referred to sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he
as expression:chanroblesvirtuallawlibrary must obtain a patent for the mixture as a new art, manufacture or composition of matter. He may
The words "abstract" and "concrete" arise in many cases dealing with the idea/expression copyright his book, if he pleases; but that only secures to him the exclusive right of printing and
distinction. The Nichols court, for example, found that the defendant's film did not infringe the publishing his book. So of all other inventions or discoveries.
plaintiffs play because it was "too generalized an abstraction from what plaintiff wrote . . . only a
part of her ideas." In Eichel v. Marcin, the court said that authors may exploit facts, experiences, The copyright of a book on perspective, no matter how many drawings and illustrations it may
field of thought, and general ideas found in another's work, "provided they do not substantially contain, gives no exclusive right to the modes of drawing described, though they may never
copy a concrete form, in which the circumstances and ideas have been developed, arranged, have been known or used before. By publishing the book without getting a patent for the art, the
and put into shape." Judge Hand, in National Comics Publications, Inc. v. Fawcett Publications, latter is given to the public.
Inc. said that "no one infringes, unless he descends so far into what is concrete as to invade. . .
'expression.'" . . . .
These cases seem to be distinguishing "abstract" ideas from "concrete" tangible embodiments of Now, whilst no one has a right to print or publish his book or any material part thereof, as a hook
these abstractions that may be termed expression. However, if the concrete form of a work intended to convey instruction in the art, any person may practice and use the, art itself which he
means more than the literal expression contained within it, it is difficult to determine what is has described and illustrated therein. The use of the art is a totally different thing from a
meant by "concrete." Webster's New Twentieth Century Dictionary of the English publication of the book, explaining it. The copyright of a book on bookkeeping cannot secure the
Language provides several meanings for the word concrete. These include: "having a material, exclusive right to make, sell and use account books prepared upon the plan set forth in such
perceptible existence; of, belonging to, or characterized by things or events that can be book. Whether the art might or might not have been patented, is a question, which is not before
perceived by the senses; real; actual;" and "referring to a particular; specific, not general or us. It was not patented, and is open and free to the use of the public. And, of course, in using
abstract."92 the art, the ruled lines and headings of accounts must necessarily be used as incident to it.
In Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, 93 this court, citing the American
case of Baker v. Selden, distinguished copyright from patents and illustrated how an idea or The plausibility of the claim put forward by the complainant in this case arises from a confusion
concept is different from the expression of that idea:chanroblesvirtuallawlibrary of ideas produced by the peculiar nature of the art described in the books, which have been

made the subject of copyright. In describing the art, the illustrations and diagrams employed rights accorded to authors. The authors of a work are granted several rights in relation to it,
happened to correspond more closely than usual with the actual work performed by the operator including copyright or economic rights:chanroblesvirtuallawlibrary
who uses the art. x x x The description of the art in a book, though entitled to the benefit of SECTION 177. Copyright or Economic Rights. — Subject to the provisions of Chapter VIII,
copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent
explanation; the object of the other is use. The former may be secured by copyright. The latter the following acts:chanroblesvirtuallawlibrary
can only be secured, if it can be secured at all, by letters patent." 94 (Emphasis supplied) 177.1. Reproduction of the work or substantial portion of the work;
News or the event itself is not copyrightable. However, an event can be captured and presented
in a specific medium. As recognized by this court in Joaquin, television "involves a whole
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation
spectrum of visuals and effects, video and audio."95 News coverage in television involves
of the work;
framing shots, using images, graphics, and sound effects. It involves creative process and
originality. Television news footage is an expression of the news.
177.3. The first public distribution of the original and each copy of the work by sale or other
In the United States, a line of cases dwelt on the possibility of television newscasts to be forms of transfer of ownership;
copyrighted.97Most of these cases focused on private individuals' sale or resale of tapes of news
broadcasts. Conflicting decisions were rendered by its courts. Noteworthy, however, is the 177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work
District Court's pronouncement in Pacific & Southern Co. v. Duncan,98 which involves a News embodied in a sound recording, a computer program, a compilation of data and other
Monitoring Service's videotaping and sale of WXIA-TVs news materials or a musical work in graphic form, irrespective of the ownership of the original
broadcasts:chanroblesvirtuallawlibrary or the copy which is the subject of the rental; (n)
It is axiomatic that copyright protection does not extend to news "events" or the facts or
ideas which are the subject of news reports. Miller v. Universal City Studios, Inc., 650 F.2d
1365, 1368 (5th Cir. 1981); Wainwright Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 177.5. Public display of the original or a copy of the work;
91, 95 (2d Cir. 1977), cert, denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978). But it is
equally well-settled that copyright protection does extend to the reports themselves, as 177.6. Public performance of the work; and
distinguished from the substance of the information contained in the
reports. Wainwright, 558 F.2d at 95; International News Service v. Associated Press, 248 U.S.
215, 39 S.Ct. 68, 63 L.Ed. 211 (1918); see Chicago Record-Herald Co. v. Tribune Assn., 275 F. 177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a) (Emphasis
797 (7th Cir.1921); 1 Nimmer on Copyright § 2.11[B] (1983). Copyright protects the manner of supplied)
expression of news reports, "the particular form or collocation of words in which the Under Section 211 of the Intellectual Property Code, broadcasting organizations are granted a
writer has communicated it" International News Service, 248 U.S. at 234, 39 S.Ct. at 70. Such more specific set of rights called related or neighboring rights:chanroblesvirtuallawlibrary
protection extends to electronic news reports as well as written reports. See 17 U.S.C. § 102(a) SECTION 211. Scope of Right. — Subject to the provisions of Section 212, broadcasting
(5), (6), and (7); see also Iowa State University Research Foundations, Inc. v. American organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the
Broadcasting Cos., 621 F.2d 57, 61 (2d Cir. 1980)." (Emphasis supplied) following acts:
The idea/expression dichotomy has long been subject to debate in the field of copyright law. 211.1. The rebroadcasting of their broadcasts;
Abolishing the dichotomy has been proposed, in that non-protectibility of ideas should be re-
examined, if not stricken, from decisions and the law:chanroblesvirtuallawlibrary 211.2. The recording in any manner, including the making of films or the use of video tape, of
If the underlying purpose of the copyright law is the dual one expressed by Lord Mansfield, the their broadcasts for the purpose of communication to the public of television broadcasts
only excuse for the continuance of the idea-expression test as a judicial standard for determining of the same; and
protectibility would be that it was or could be a truly useful method of determining the proper
balance between the creator's right to profit from his work and the public's right that the
"progress of the arts not be retarded." 211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No.
49) (Emphasis supplied)
. . . [A]s used in the present-day context[,] the dichotomy has little or no relationship to the policy Section 212 of the Code provides:
which it should effectuate. Indeed, all too often the sweeping language of the courts regarding
the nonprotectibility of ideas gives the impression that this is of itself a policy of the law, instead CHAPTER XV
of merely a clumsy and outdated tool to achieve a much more basic end.100 LIMITATIONS ON PROTECTION
The idea/expression dichotomy is a complex matter if one is trying to determine whether a
certain material is a copy of another.101 This dichotomy would be more relevant in determining, Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts
for instance, whether a stage play was an infringement of an author's book involving the same referred to in those Sections are related to:chanroblesvirtuallawlibrary
characters and setting. In this case, however, respondents admitted that the material under 212.1. The use by a natural person exclusively for his own personal purposes;
review — which is the subject of the controversy — is an exact copy of the original.
Respondents did not subject ABS-CBN's footage to any editing of their own. The news footage
did not undergo any transformation where there is a need to track elements of the original. 212.2. Using short excerpts for reporting current events;
Having established the protectible nature of news footage, we now discuss the concomitant 212.3. Use solely for the purpose of teaching or for scientific research; and

On the other hand, rebroadcasting as defined in Article 3(g) of the International Convention for
212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. the Protection of Performers, Producers of Phonograms and Broadcasting Organizations,
49a) otherwise known as the 1961 Rome Convention, of which the Republic of the Philippines is a
The Code defines what broadcasting is and who broadcasting organizations signatory, is "the simultaneous broadcasting by one broadcasting organization of the broadcast
include:chanroblesvirtuallawlibrary of another broadcasting organization."
202.7. "Broadcasting" means the transmission by wireless means for the public reception of
sounds or of images or of representations thereof; such transmission by satellite is also . . . .
"broadcasting" where the means for decrypting are provided to the public by the broadcasting
Under the Rome Convention, rebroadcasting is "the simultaneous broadcasting by one
organization or with its consent;
broadcasting organization of the broadcast of another broadcasting organization." The Working
202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly Paper prepared by the Secretariat of the Standing Committee on Copyright and Related Rights
defines broadcasting organizations as "entities that take the financial and editorial responsibility
authorized to engage in broadcasting[.]
Developments in technology, including the process of preserving once ephemeral works and for the selection and arrangement of, and investment in, the transmitted content." 107 (Emphasis
disseminating them, resulted in the need to provide a new kind of protection as distinguished in the original, citations omitted)
Broadcasting organizations are entitled to several rights and to the protection of these rights
from copyright.102 The designation "neighboring rights" was abbreviated from the phrase "rights
neighboring to copyright."103 Neighboring or related rights are of equal importance with copyright under the Intellectual Property Code. Respondents' argument that the subject news footage is
as established in the different conventions covering both kinds of rights. 104 not copyrightable is erroneous. The Court of Appeals, in its assailed Decision, correctly
recognized the existence of ABS-CBN's copyright over the news
Several treaties deal with neighboring or related rights of copyright. 105 The most prominent of footage:chanroblesvirtuallawlibrary
these is the "International Convention for the Protection of Performers, Producers of Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video
feed, petitioner GMA is liable under the provisions of the Intellectual Property Code, which was
Phonograms and Broadcasting Organizations" (Rome Convention). 106
enacted purposely to protect copyright owners from infringement. 108
The Rome Convention protects the rights of broadcasting organizations in relation to their News as expressed in a video footage is entitled to copyright protection. Broadcasting
organizations have not only copyright on but also neighboring rights over their
broadcasts. Article XIII of the Rome Convention enumerates the minimum rights accorded to
broadcasting organizations:chanroblesvirtuallawlibrary broadcasts. Copyrightability of a work is different from fair use of a work for purposes of news
Article 13 reporting.cralawlawlibrary
Minimum Rights for Broadcasting Organizations
VI
Broadcasting organisations shall enjoy the right to authorize or prohibit:
ABS-CBN assails the Court of Appeals' ruling that the footage shown by GMA-7 falls under the
(a) the rebroadcasting of their broadcasts; scope of Section 212.2 and 212.4 of the Intellectual Property Code:chanroblesvirtuallawlibrary
The evidence on record, as well as the discussions above, show that the footage used by
[respondents] could hardly be characterized as a short excerpt, as it was aired over one and a
(b) the fixation of their broadcasts;
half minutes.
(c) the reproduction:
Furthermore, the footage used does not fall under the contemplation of Section 212.2 of the
(i) of fixations, made without their consent, of their broadcasts; Intellectual Property Code. A plain reading of the provision would reveal that copyrighted
material referred to in Section 212 are short portions of an artist's performance under Section
203, or a producer's sound recordings under Sections 208 and 209. Section 212 does not refer
(ii) of fixations, made in accordance with the provisions of Article 15, of their broadcasts, if
the reproduction is made for purposes different from those referred to in those to actual use of video footage of another as its own.
provisions;
. . . .
(d) the communication to the public of their television broadcasts if such communication is
made in places accessible to the public against payment of an entrance fee; it shall be a The Angelo dela Cruz footage does not fall under the rule on Section 212.4 of the Intellectual
Property Code on fair use of the broadcast.
matter for the domestic law of the State where protection of this right is claimed to
determine the conditions under which it may be exercised.
With regard to the neighboring rights of a broadcasting organization in this jurisdiction, this court In determining fair use, several factors are considered, including the nature of the copyrighted
work, and the amount and substantiality of the person used in relation to the copyrighted work as
has discussed the difference between broadcasting and
rebroadcasting:chanroblesvirtuallawlibrary a whole.
Section 202.7 of the IP Code defines broadcasting as "the transmission by wireless means for
In the business of television news reporting, the nature of the copyrighted work or the video
the public reception of sounds or of images or of representations thereof; such transmission by
satellite is also 'broadcasting' where the means for decrypting are provided to the public by the footages, are such that, footage created, must be a novelty to be a good report. Thus, when the .
broadcasting organization or with its consent." . . Angelo dela Cruz footage was used by [respondents], the novelty of the footage was clearly
affected.

The determination of what constitutes fair use depends on several factors. Section 185 of the
Moreover, given that a substantial portion of the Angelo dela Cruz footage was utilized by GMA- Intellectual Property Code states:
7 for its own, its use can hardly be classified as fair use.
SECTION 185. Fair Use of a Copyrighted Work. —
Hence, [respondents] could not be considered as having used the Angelo dela Cruz [footage] 185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching
following the provisions on fair use. including multiple copies for classroom use, scholarship, research, and similar purposes is not
an infringement of copyright. ... In determining whether the use made of a work in any particular
It is also worthy to note that the Honorable Court of Appeals seem to contradict itself when it case is fair use, the factors to be considered shall include:chanroblesvirtuallawlibrary
relied on the provisions of fair use in its assailed rulings considering that it found that the Angelo
dela Cruz footage is not copyrightable, given that the fair use presupposes an existing copyright.
a. The purpose and character of the use, including whether such use is of a commercial
Thus, it is apparent that the findings of the Honorable Court of Appeals are erroneous and based
nature or is for non-profit educational purposes;
on wrong assumptions.109 (Underscoring in the original)
b. The nature of the copyrighted work;
On the other hand, respondents counter that GMA-7's use of ABS-CBN's news footage falls
c. The amount and substantiality of the portion used in relation to the copyrighted work
under fair use as defined in the Intellectual Property Code. Respondents, citing the Court of
as a whole; and
Appeals Decision, argue that a strong statutory defense negates any finding of probable cause
d. The effect of the use upon the potential market for or value of the copyrighted work.
under the same statute. The Intellectual Property Code provides that fair use negates
infringement.
Respondents allege that the news footage was only five (5) seconds long, thus falling under fair
Respondents point out that upon seeing ABS-CBN's reporter Dindo Amparo on the footage, use. ABS-CBN belies this contention and argues that the footage aired for two (2) minutes and
GMA-7 immediately shut off the broadcast. Only five (5) seconds passed before the footage was 40 seconds.113According to the Court of Appeals, the parties admitted that only five (5) seconds
cut. They argue that this shows that GMA-7 had no prior knowledge of ABS-CBN's ownership of of the news footage was broadcasted by GMA-7.114
the footage or was notified of it. They claim that the Angelo dela Cruz footage is considered a
short excerpt of an event's "news" footage and is covered by fair use. 111 This court defined fair use as "a privilege to use the copyrighted material in a reasonable
manner without the consent of the copyright owner or as copying the theme or ideas rather than
Copyright protection is not absolute.112 The Intellectual Property Code provides the limitations their expression."115Fair use is an exception to the copyright owner's monopoly of the use of the
on copyright: work to avoid stifling "the very creativity which that law is designed to foster." 116
CHAPTER VIII Determining fair use requires application of the four-factor test. Section 185 of the Intellectual
LIMITATIONS ON COPYRIGHT Property Code lists four (4) factors to determine if there was fair use of a copyrighted work:
Section 184. Limitations on Copyright. - 184.1. Notwithstanding the provisions of Chapter V, the a. The purpose and character of the use, including whether such use is of a commercial
following acts shall not constitute infringement of copyright: nature or is for non-profit educational purposes;
. . . .
b. The nature of the copyrighted work;
184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be
used in a manner which does not conflict with the normal exploitation of the work and does not c. The amount and substantiality of the portion used in relation to the copyrighted work
unreasonably prejudice the right holder's legitimate interests. as a whole; and
. . . .cralawlawlibrary d. The effect of the use upon the potential market for or value of the copyrighted work.
CHAPTER XV First, the purpose and character of the use of the copyrighted material must fall under those
LIMITATIONS ON PROTECTION listed in Section 185, thus: "criticism, comment, news reporting, teaching including multiple
copies for classroom use, scholarship, research, and similar purposes." 117 The purpose and
Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts character requirement is important in view of copyright's goal to promote creativity and
referred to in those Sections are related to: encourage creation of works. Hence, commercial use of the copyrighted work can be weighed
against fair use.
. . . .
The "transformative test" is generally used in reviewing the purpose and character of the usage
212.2. Using short excerpts for reporting current events; of the copyrighted work.118 This court must look into whether the copy of the work adds "new
expression, meaning or message" to transform it into something else. 119 "Meta-use" can also
212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. occur without necessarily transforming the copyrighted work used.120
49a) (Emphasis supplied)

Second, the nature of the copyrighted work is significant in deciding whether its use was fair. If the insufficiency of available evidence, determination of whether the Angelo dela Cruz footage is
the nature of the work is more factual than creative, then fair use will be weighed in favor of the subject to fair use is better left to the trial court where the proceedings are currently pending.
user.
GMA-7's rebroadcast of ABS-CBN's news footage without the latter's consent is not an issue.
Third, the amount and substantiality of the portion used is important to determine whether usage The mere act of rebroadcasting without authority from the owner of the broadcast gives rise to
falls under fair use. An exact reproduction of a copyrighted work, compared to a small portion of the probability that a crime was committed under the Intellectual Property Code.cralawlawlibrary
it, can result in the conclusion that its use is not fair. There may also be cases where, though the
entirety of the copyrighted work is used without consent, its purpose determines that the usage VII
is still fair.121 For example, a parody using a substantial amount of copyrighted work may be
permissible as fair use as opposed to a copy of a work produced purely for economic gain. Respondents cannot invoke the defense of good faith to argue that no probable cause exists.
Lastly, the effect of the use on the copyrighted work's market is also weighed for or against the Respondents argue that copyright infringement is malum in se, in that "[c]opying alone is not
user. If this court finds that the use had or will have a negative impact on the copyrighted work's what is being prohibited, but its injurious effect which consists in the lifting from the copyright
market, then the use is deemed unfair. owners' film or materials, that were the result of the latter's creativity, work and productions and
without authority, reproduced, sold and circulated for commercial use to the detriment of the
The structure and nature of broadcasting as a business requires assigned values for each latter."127
second of broadcast or airtime. In most cases, broadcasting organizations generate revenue
through sale of time or timeslots to advertisers, which, in turn, is based on market Infringement under the Intellectual Property Code is malum prohibitum. The Intellectual Property
share: 122ChanRoblesVirtualawlibrary Code is a special law. Copyright is a statutory creation:chanroblesvirtuallawlibrary
Once a news broadcast has been transmitted, the broadcast becomes relatively worthless to the Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent
station. In the case of the aerial broadcasters, advertising sales generate most of the profits right granted by the statute, and not simply a pre-existing right regulated by the statute. Being a
derived from news reports. Advertising rates are, in turn, governed by market share. Market statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed
share is determined by the number of people watching a show at any particular time, relative to only with respect to the subjects and by the persons, and on terms and conditions specified in
total viewers at that time. News is by nature time-limited, and so re-broadcasts are generally of the statute.128
little worth because they draw few viewers. Newscasts compete for market share by presenting The general rule is that acts punished under a special law are malum prohibitum. 129 "An act
their news in an appealing format that will capture a loyal audience. Hence, the primary reason which is declared malum prohibitum, malice or criminal intent is completely immaterial."130
for copyrighting newscasts by broadcasters would seem to be to prevent competing stations
from rebroadcasting current news from the station with the best coverage of a particular news In contrast, crimes mala in se concern inherently immoral acts:chanroblesvirtuallawlibrary
item, thus misappropriating a portion of the market share. Not every criminal act, however, involves moral turpitude. It is for this reason that "as to what
crime involves moral turpitude, is for the Supreme Court to determine". In resolving the foregoing
Of course, in the real world there are exceptions to this perfect economic view. However, there question, the Court is guided by one of the general rules that crimes mala in se involve moral
are also many caveats with these exceptions. A common exception is that some stations turpitude, while crimes mala prohibita do not, the rationale of which was set forth in "Zari v.
rebroadcast the news of others. The caveat is that generally, the two stations are not competing Flores" to wit:chanroblesvirtuallawlibrary
for market share. CNN, for example, often makes news stories available to local It (moral turpitude) implies something immoral in itself, regardless of the fact that it is punishable
broadcasters. First, the local broadcaster is often not affiliated with a network (hence its need for by law or not. It must not be merely mala prohibita, but the act itself must be inherently immoral.
more comprehensive programming), confining any possible competition to a small geographical The doing of the act itself, and not its prohibition by statute fixes the moral turpitude. Moral
area. Second, the local broadcaster is not in competition with CNN. Individuals who do not have turpitude does not, however, include such acts as are not of themselves immoral but whose
cable TV (or a satellite dish with decoder) cannot receive CNN; therefore there is no competition. illegality lies in their being positively prohibited. (Emphasis supplied)
. . . Third, CNN sells the right of rebroadcast to the local stations. Ted Turner, owner of CNN, [These] guidelines nonetheless proved short of providing a clear-cut solution, for in International
does not have First Amendment freedom of access argument foremost on his mind. (Else he Rice Research Institute v. NLRC, the Court admitted that it cannot always be ascertained
would give everyone free cable TV so everyone could get CNN.) He is in the business for a whether moral turpitude does or does not exist by merely classifying a crime as malum in se or
profit. Giving away resources does not a profit make.123 (Emphasis supplied) as malum prohibitum. There are crimes which are mala in se and yet but rarely involve moral
The high value afforded to limited time periods is also seen in other media. In social media turpitude and there are crimes which involve moral turpitude and are mala prohibita only. In the
site Instagram, users are allowed to post up to only 15 seconds of video. 124 In short-video final analysis, whether or not a crime involves moral turpitude is ultimately a question of fact and
sharing website Vine,125 users are allowed a shorter period of six (6) seconds per post. The frequently depends on all the circumstances surrounding the violation of the
mobile application 1 Second Everyday takes it further by capturing and stitching one (1) second statue.131 (Emphasis in the original)
of video footage taken daily over a span of a certain period. 126 "Implicit in the concept of mala in se is that of mens rea."132Mens rea is defined as "the
nonphysical element which, combined with the act of the accused, makes up the crime charged.
Whether the alleged five-second footage may be considered fair use is a matter of defense. We Most frequently it is the criminal intent, or the guilty mind[.]" 133
emphasize that the case involves determination of probable cause at the preliminary
investigation stage. Raising the defense of fair use does not automatically mean that no Crimes mala in se presuppose that the person who did the felonious act had criminal intent to do
infringement was committed. The investigating prosecutor has full discretion to evaluate the so, while crimes mala prohibita do not require knowledge or criminal
facts, allegations, and evidence during preliminary investigation. Defenses raised during intent:chanroblesvirtuallawlibrary
preliminary investigation are subject to further proof and evaluation before the trial court. Given

In the case of mala in se it is necessary, to constitute a punishable offense, for the person doing action or a criminal prosecution; it does not require mens
the act to have knowledge of the nature of his act and to have a criminal intent; in the case of rea or culpa:146ChanRoblesVirtualawlibrary
mala prohibita, unless such words as "knowingly" and "willfully" are contained in the statute, SECTION 216. Remedies for Infringement. —
neither knowledge nor criminal intent is necessary. In other words, a person morally quite
innocent and with every intention of being a law-abiding citizen becomes a criminal, and liable to 216.1. Any person infringing a right protected under this law shall be liable:
criminal penaltes, if he does an act prohibited by these statutes. 134(Emphasis supplied)
Hence, "[i]ntent to commit the crime and intent to perpetrate the act must be distinguished. A
a. To an injunction restraining such infringement. The court may also order the
person may not have consciously intended to commit a crime; but he did intend to commit an
defendant to desist from an infringement, among others, to prevent the entry into the
act, and that act is, by the very nature of things, the crime itself[.]" 135 When an act is prohibited
channels of commerce of imported goods that involve an infringement, immediately
by a special law, it is considered injurious to public welfare, and the performance of the
after customs clearance of such goods.
prohibited act is the crime itself.136
Volition, or intent to commit the act, is different from criminal intent. Volition or voluntariness b. Pay to the copyright proprietor or his assigns or heirs such actual damages, including
refers to knowledge of the act being done. On the other hand, criminal intent — which is different legal costs and other expenses, as he may have incurred due to the infringement as
from motive, or the moving power for the commission of the crime137 — refers to the state of well as the profits the infringer may have made due to such infringement, and in
mind beyond voluntariness. It is this intent that is being punished by crimes mala in se. proving profits the plaintiff shall be required to prove sales only and the defendant
shall be required to prove every element of cost which he claims, or, in lieu of actual
Unlike other jurisdictions that require intent for a criminal prosecution of copyright infringement, damages and profits, such damages which to the court shall appear to be just and
the Philippines does not statutorily support good faith as a defense. Other jurisdictions provide in shall not be regarded as penalty.
their intellectual property codes or relevant laws that mens rea, whether express or implied, is an
element of criminal copyright infringement.138 c. Deliver under oath, for impounding during the pendency of the action, upon such
terms and conditions as the court may prescribe, sales invoices and other
In Canada, criminal offenses are categorized under three (3) kinds: "the full mens rea documents evidencing sales, all articles and their packaging alleged to infringe a
offence, meaning the accused's actual or subjective state of mind has to be proved; strict liability copyright and implements for making them.
offences where no mens rea has to be proved but the accused can avoid liability if he can prove
he took all reasonable steps to avoid the particular event; [and] absolute liability offences where d. Deliver under oath for destruction without any compensation all infringing copies or
Parliament has made it clear that guilt follows proof of the prescribed act only." 139 Because of the
devices, as well as all plates, molds, or other means for making such infringing copies
use of the word "knowingly" in Canada's Copyright Act, it has been held that copyright as the court may order.
infringement is a full mens rea offense.140
In the United States, willful intent is required for criminal copyright infringement. 141 Before the e. Such other terms and conditions, including the payment of moral and exemplary
passage of the No Electronic Theft Act, "civil copyright infringements were violations of criminal damages, which the court may deem proper, wise and equitable and the destruction of
copyright laws only if a defendant willfully infringed a copyright 'for purposes of infringing copies of the work even in the event of acquittal in a criminal case.
commercial advantage or private financial gain.'"142 However, the No Electronic Theft Act now
allows criminal copyright infringement without the requirement of commercial gain. The infringing 216.2. In an infringement action, the court shall also have the power to order the seizure and
act may or may not be for profit.143 impounding of any article which may serve as evidence in the court proceedings. (Sec. 28. P.D.
No. 49a)
There is a difference, however, between the required liability in civil copyright infringement and
that in criminal copyright infringement in the United States. Civil copyright infringement does not SECTION 217, Criminal Penalties. —
require culpability and employs a strict liability regime144 where "lack of intention to infringe is not
a defense to an action for infringement."145 217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or
abetting such infringement shall be guilty of a crime punishable by:
In the Philippines, the Intellectual Property Code, as amended, provides for the prosecution of
criminal actions for the following violations of intellectual property rights: Repetition of
Infringement of Patent (Section 84); Utility Model (Section 108); Industrial Design (Section 119); a. Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand
Trademark Infringement (Section 155 in relation to Section 170); Unfair Competition (Section pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense.
168 in relation to Section 170); False Designations of Origin, False Description or
Representation (Section 169.1 in relation to Section 170); infringement of copyright, moral rights, b. Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging
performers' rights, producers' rights, and broadcasting rights (Section 177, 193, 203, 208 and from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos
211 in relation to Section 217); and other violations of intellectual property rights as may be (P500,000) for the second offense.
defined by law.
c. Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging
The Intellectual Property Code requires strict liability for copyright infringement whether for a civil from Five hundred thousand pesos (P500,000) to One million five hundred thousand
pesos (P1,500,000) for the third and subsequent offenses.

d. In all cases, subsidiary imprisonment in cases of insolvency. live video footage of Reuters, GMA-7 did not copy the video footage of petitioner ABS-
CBN[.]148 (Emphasis in the original)
Respondents' arguments must fail.
217.2. In determining the number of years of imprisonment and the amount of fine, the court
shall consider the value of the infringing materials that the defendant has produced or
Respondents are involved and experienced in the broadcasting business. They knew that there
manufactured and the damage that the copyright owner has suffered by reason of the
would be consequences in carrying A.BS-CBN's footage in their broadcast. That is why GMA-7
infringement.
allegedly cut the feed from Reuters upon seeing ABS-CBN's logo and reporter. To admit a
different treatment for broadcasts would mean abandonment of a broadcasting organization's
217.3. Any person who at the time when copyright subsists in a work has in his possession an
minimum rights, including copyright on the broadcast material and the right against unauthorized
article which he knows, or ought to know, to be an infringing copy of the work for the purpose of:
re broadcast of copyrighted material. The nature of broadcast technology is precisely why
related or neighboring rights were created and developed. Carving out an exception for live
a. Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the broadcasts would go against our commitments under relevant international treaties and
article; agreements, which provide for the same minimum rights.149
b. Distributing the article for purpose of trade, or for any other purpose to an extent that Contrary to respondents' assertion, this court in Habana,150 reiterating the ruling in Columbia
will prejudice the rights of the copyright owner in the work; or Pictures,151 ruled that lack of knowledge of infringement is not a valid
defense. Habana and Columbia Pictures may have different factual scenarios from this case, but
their rulings on copyright infringement are analogous. In Habana, petitioners were the authors
c. Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on and copyright owners of English textbooks and workbooks. The case was anchored on the
conviction to imprisonment and fine as above mentioned. (Sec. 29, P.D. No. 49a) protection of literary and artistic creations such as books. In Columbia Pictures, video tapes of
(Emphasis supplied) copyrighted films were the subject of the copyright infringement suit.
The law is clear. Inasmuch as there is wisdom in prioritizing the flow and exchange of ideas as In Habana, knowledge of the infringement is presumed when the infringer commits the
opposed to rewarding the creator, it is the plain reading of the law in conjunction with the actions prohibited act:chanroblesvirtuallawlibrary
of the legislature to which we defer. We have continuously "recognized the power of the The essence of intellectual piracy should be essayed in conceptual terms in order to underscore
legislature . . . to forbid certain acts in a limited class of cases and to make their commission its gravity by an appropriate understanding thereof. Infringement of a copyright is a trespass on
criminal without regard to the intent of the doer. Such legislative enactments are based on the a private domain owned and occupied by the owner of the copyright, and, therefore, protected
experience that repressive measures which depend for their efficiency upon proof of the dealer's by law, and infringement of copyright, or piracy, which is a synonymous term in this connection,
knowledge or of his intent are of little use and rarely accomplish their purposes." 147 consists in the doing by any person, without the consent of the owner of the copyright, of
anything the sole right to do which is conferred by statute on the owner of the copyright.
Respondents argue that live broadcast of news requires a different treatment in terms of good
faith, intent, and knowledge to commit infringement. To argue this point, they rely on the . . . .
differences of the media used in Habana et al. v. Robles, Columbia Pictures v. Court of
Appeals, and this case:chanroblesvirtuallawlibrary A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such
Petitioner ABS-CBN argues that lack of notice that the Angelo dela Cruz was under embargo is cases, did not know whether or not he was infringing any copyright; he at least knew that what
not a defense in copyright infringement and cites the case of Columbia Pictures vs. Court of he was copying was not his, and he copied at his peril.
Appeals and Habana et al. vs. Robles (310 SCRA 511). However, these cases refer to film and
literary work where obviously there is "copying" from an existing material so that the copier . . . .
knew that he is copying from an existing material not owned by him. But, how could respondents
know that what they are "copying was not [theirs]" when they were not copying but merely In cases of infringement, copying alone is not what is prohibited. The copying must produce an
receiving live video feed from Reuters and CNN which they aired? What they knew and what "injurious effect". Here, the injury consists in that respondent Robles lifted from petitioners' book
they aired was the Reuters live video feed and the CNN feed which GMA-7 is authorized to materials that were the result of the latter's research work and compilation and misrepresented
carry in its news broadcast, it being a subscriber of these companies[.] them as her own. She circulated the book DEP for commercial use and did not acknowledge
petitioners as her source.152 (Emphasis supplied)
It is apt to stress that the subject of the alleged copyright infringement is not a film or literary Habana and Columbia Pictures did not require knowledge of the infringement to constitute a
work but live broadcast of news footage. In a film or literary work, the infringer is confronted violation of the copyright. One does not need to know that he or she is copying a work without
face to face with the material he is allegedly copying and therefore knows, or is presumed to consent to violate copyright law. Notice of fact of the embargo from Reuters or CNN is not
know, that what he is copying is owned by another. Upon the other hand, in live broadcast, the material to find probable cause that respondents committed infringement. Knowledge of
alleged infringer is not confronted with the fact that the material he airs or re-broadcasts is infringement is only material when the person is charged of aiding and abetting a copyright
owned by another, and therefore, he cannot be charged of knowledge of ownership of the infringement under Section 217 of the Intellectual Property Code. 153
material by another. This specially obtains in the Angelo dela Cruz news footage which GMA-7
received from Reuters and CNN. Reuters and CNN were beaming live videos from the coverage We look at the purpose of copyright in relation to criminal prosecutions requiring
which GMA-7 received as a subscriber and, in the exercise of its rights as a subscriber, GMA-7 willfulness:chanroblesvirtuallawlibrary
picked up the live video and simultaneously re-broadcast it. In simultaneously broadcasting the

Most importantly, in defining the contours of what it means to willfully infringe copyright for infringement. It also imposes the penalty of both imprisonment and
purposes of criminal liability, the courts should remember the ultimate aim of copyright. fine:chanroblesvirtuallawlibrary
Copyright is not primarily about providing the strongest possible protection for copyright owners Section 217. Criminal Penalties. - 217.1. Any person infringing any right secured by provisions of
so that they have the highest possible incentive to create more works. The control given to Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by:
copyright owners is only a means to an end: the promotion of knowledge and learning. Achieving (a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand
that underlying goal of copyright law also requires access to copyrighted works and it requires pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense.
permitting certain kinds of uses of copyrighted works without the permission of the copyright
owner. While a particular defendant may appear to be deserving of criminal sanctions, the
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from
standard for determining willfulness should be set with reference to the larger goals of copyright
One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000)
embodied in the Constitution and the history of copyright in this country. 154
for the second offense.
In addition, "[t]he essence of intellectual piracy should be essayed in conceptual terms in order
to underscore its gravity by an appropriate understanding thereof. Infringement of a copyright is
a trespass on a private domain owned and occupied by the owner of the copyright, and, (c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from five
therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous hundred thousand pesos (P500,000) to One million five hundred thousand pesos
term in this connection, consists in the doing by any person, without the consent of the owner of (P1,500,000) for the third and subsequent offenses.
the copyright, of anything the sole right to do which is conferred by statute on the owner of the
copyright."155 (d) In all cases, subsidiary imprisonment in cases of insolvency. (Emphasis supplied)
Corporations have separate and distinct personalities from their officers or directors. 157 This
Intellectual property rights, such as copyright and the neighboring right against rebroadcasting,
court has ruled that corporate officers and/or agents may be held individually liable for a crime
establish an artificial and limited monopoly to reward creativity. Without these legally enforceable
committed under the Intellectual Property Code:158ChanRoblesVirtualawlibrary
rights, creators will have extreme difficulty recovering their costs and capturing the surplus or
Petitioners, being corporate officers and/or directors, through whose act, default or omission the
profit of their works as reflected in their markets. This, in turn, is based on the theory that the
corporation commits a crime, may themselves be individually held answerable for the crime. . . .
possibility of gain due to creative work creates an incentive which may improve efficiency or
The existence of the corporate entity does not shield from prosecution the corporate agent who
simply enhance consumer welfare or utility. More creativity redounds to the public good.
knowingly and intentionally caused the corporation to commit a crime. Thus, petitioners cannot
hide behind the cloak of the separate corporate personality of the corporation to escape criminal
These, however, depend on the certainty of enforcement. Creativity, by its very nature, is
liability. A corporate officer cannot protect himself behind a corporation where he is the actual,
vulnerable to the free rider problem. It is easily replicated despite the costs to and efforts of the
present and efficient actor.159
original creator. The more useful the creation is in the market, the greater the propensity that it
However, the criminal liability of a. corporation's officers or employees stems from their active
will be copied. The most creative and inventive individuals are usually those who are unable to
participation in the commission of the wrongful act:chanroblesvirtuallawlibrary
recover on their creations.
The principle applies whether or not the crime requires the consciousness of wrongdoing. It
applies to those corporate agents who themselves commit the crime and to those, who, by virtue
Arguments against strict liability presuppose that the Philippines has a social, historical, and
of their managerial positions or other similar relation to the corporation, could be deemed
economic climate similar to those of Western jurisdictions. As it stands, there is a current need to
responsible for its commission, if by virtue of their relationship to the corporation, they had the
strengthen intellectual property protection.
power to prevent the act. Moreover, all parties active in promoting a crime, whether agents or
not, are principals. Whether such officers or employees are benefited by their delictual acts is
Thus, unless clearly provided in the law, offenses involving infringement of copyright protections
not a touchstone of their criminal liability. Benefit is not an operative fact. 160 (Emphasis supplied)
should be considered malum prohibitum. It is the act of infringement, not the intent, which
An accused's participation in criminal acts involving violations of intellectual property rights is the
causes the damage. To require or assume the need to prove intent defeats the purpose of
subject of allegation and proof. The showing that the accused did the acts or contributed in a
intellectual property protection.
meaningful way in the commission of the infringements is certainly different from the argument of
lack of intent or good faith. Active participation requires a showing of overt physical acts or
Nevertheless, proof beyond reasonable doubt is still the standard for criminal prosecutions under
intention to commit such acts. Intent or good faith, on the other hand, are inferences from acts
the Intellectual Property Code.cralawlawlibrary
proven to have been or not been committed.
VIII We find that the Department of Justice committed grave abuse of discretion when it resolved to
file the Information against respondents despite lack of proof of their actual participation in the
Respondents argue that GMA-7's officers and employees cannot be held liable for infringement alleged crime.
under the Intellectual Property Code since it does not expressly provide direct liability of the
corporate officers. They explain that "(i) a corporation may be charged and prosecuted for a Ordering the inclusion of respondents Gozon, GMA-7 President; Duavit, Jr., Executive Vice-
crime where the penalty is fine or both imprisonment and fine, and if found guilty, may be fined; President; Flores, Vice-President for News and Public Affairs; and Soho, Director for News, as
or (ii) a corporation may commit a crime but if the statute prescribes the penalty therefore to be respondents, Secretary Agra overturned the City Prosecutor's finding that only respondents Dela
suffered by the corporate officers, directors or employees or other persons, the latter shall be Peña-Reyes and Manalastas are responsible for the crime charged due to their duties. 161 The
responsible for the offense."156 Agra Resolution reads:chanroblesvirtuallawlibrary
Thus, from the very nature of the offense and the penalty involved, it is necessary that GMA-7's
Section 217 of the Intellectual Property Code states that "any person" may be found guilty of directors, officers, employees or other officers thereof responsible for the offense shall be

charged and penalized for violation of the Sections 177 and 211 of Republic Act No. 8293. In will not acquire any intellectual property rights in the Contributed Content. 167 (Emphasis
their complaint for libel, respondents Felipe L Gozon, Gilberto R. Duavit, Jr., Marissa L. Flores, supplied)
Jessica A. Soho, Grace Dela Pena-Reyes, John Oliver T. Manalastas felt they were aggrieved Respondents Dela Peña-Reyes and Manalastas merely denied receiving the advisory sent by
because they were "in charge of the management, operations and production of news and public Reuters to its clients, including GMA-7. As in the records, the advisory
affairs programs of the network" (GMA-7). This is clearly an admission on respondents' part. Of reads:chanroblesvirtuallawlibrary
course, respondents may argue they have no intention to infringe the copyright of ABS-CBN; ADVISORY - - +++LIVE COVER PLANS+++
that they acted in good faith; and that they did not directly cause the airing of the subject PHILIPPINES: HOSTAGE RETURN
footage, but again this is preliminary investigation and what is required is simply probable cause.
Besides, these contentions can best be addressed in the course of trial. 162 (Citation omitted) * *ATTENTION ALL CLIENTS**
In contrast, the Office of the City Prosecutor, in the Resolution dated December 3, 2004, found
that respondents Gozon, Duavit, Jr., Flores, and Soho did not have active participation in the PLEASE BE ADVISED OF THE FOLLOWING LIVE COVER PLANNED FOR THURSDAY,
commission of the crime charged:chanroblesvirtuallawlibrary JULY 22:
This Office, however, does not subscribe to the view that respondents Atty. Felipe Gozon,
Gilberto Duavit, Marissa Flores and Jessica Soho should be held liable for the said . . . .
offense. Complainant failed to present clear and convincing evidence that the said respondents
conspired with Reyes and Manalastas. No evidence was adduced to prove that these SOURCE: ABS-CBN
respondents had an active participation in the actual commission of the copyright infringement or TV AND WEB RESTRICTIONS: NO ACCESS PHILIPPINES.168
they exercised their moral ascendancy over Reyes and Manalastas in airing the said footage. It There is probable cause that respondents Dela Peña-Reyes and Manalastas directly committed
must be stressed that, conspiracy must be established by positive and conclusive evidence. It copyright infringement of ABS-CBN's news footage to warrant piercing of the corporate veil.
must be shown to exist as clearly and convincingly as the commission of the offense They are responsible in airing the embargoed Angelo dela Cruz footage. They could have
itself.163 (Emphasis supplied, citations omitted) prevented the act of infringement had they been diligent in their functions as Head of News
The City Prosecutor found respondents Dela Peña-Reyes and Manalastas liable due to the Operations and Program Manager.
nature of their work and responsibilities. He found that:chanroblesvirtuallawlibrary
[t]his Office however finds respondents Grace Déla Peña-Reyes and John Oliver T. Manalastas Secretary Agra, however, committed grave abuse of discretion when he ordered the filing of the
liable for copyright infringement penalized under Republic Act No. 8293. It is undisputed that Information against all respondents despite the erroneous piercing of the corporate veil.
complainant ABS-CBN holds the exclusive ownership and copyright over the "Angelo [d]ela Cruz Respondents Gozon, Duavit, Jr., Flores, and Soho cannot be held liable for the criminal liability
news footage". Hence, any airing and re-broadcast of the said footage without any consent and of the corporation.
authority from ABS-CBN will be held as an infringement and violation of the intellectual property
rights of the latter. Respondents Grace Dela Peña-Reyes as the Head of the News Operation Mere membership in the Board or being President per se does not mean knowledge, approval,
and John Oliver T. Manalastas as the Program Manager cannot escape liability since the news and participation in the act alleged as criminal. There must be a showing of active participation,
control room was under their direct control and supervision. Clearly, they must have been aware not simply a constructive one.
that the said footage coming from Reuters or CNN has a "No Access Philippines" advisory or
embargo thus cannot be re-broadcast. We find no merit to the defense of ignorance interposed Under principles of criminal law, the principals of a crime are those "who take a direct part in the
by the respondents. It is simply contrary to human experience and logic that experienced execution of the act; [t]hose who directly force or induce others to commit it; [or] [t]hose who
employees of an established broadcasting network would be remiss in their duty in ascertaining cooperate in the commission of the offense by another act without which it would not have been
if the said footage has an embargo.164 (Emphasis supplied) accomplished."169There is conspiracy "when two or more persons come to an agreement
We agree with the findings as to respondents Dela Peña-Reyes and Manalastas. Both concerning the commission of a felony and decide to commit it": 170ChanRoblesVirtualawlibrary
respondents committed acts that promoted infringement of ABS-CBN's footage. We note that Conspiracy is not presumed. Like the physical acts constituting the crime itself, the elements of
embargoes are common occurrences in and between news agencies and/or broadcast conspiracy must be proven beyond reasonable doubt. While conspiracy need not be established
organizations.165 Under its Operations Guide, Reuters has two (2) types of embargoes: by direct evidence, for it may be inferred from the conduct of the accused before, during and
transmission embargo and publication embargo.166Under ABS-CBN's service contract with after the commission of the crime, all taken together, however, the evidence must be strong
Reuters, Reuters will embargo any content contributed by ABS-CBN from other broadcast enough to show the community of criminal design. For conspiracy to exist, it is essential that
subscribers within the same geographical location:chanroblesvirtuallawlibrary there must be a conscious design to commit an offense. Conspiracy is the product of
4a. Contributed Content intentionality on the part of the cohorts.
You agree to supply us at our request with news and sports news stones broadcast on the Client It is necessary that a conspirator should have performed some overt act as a direct or indirect
Service of up to three (3) minutes each for use in our Services on a non-exclusive basis and at a contribution to the execution of the crime committed. The overt act may consist of active
cost of US$300.00 (Three Hundred United States Dollars) per story. In respect of such items we participation in the actual commission of the crime itself or it may consist of moral assistance to
agree to embargo them against use by other broadcast subscribers in the Territory and confirm his co-conspirators by being present at the commission of the crime or by exerting moral
we will observe all other conditions of usage regarding Contributed Content, as specified in ascendancy over the other co-conspirators[.]171 (Emphasis supplied, citations omitted)
Section 2.5 of the Reuters Business Principles for Television Services. For the purposes of In sum, the trial court erred in failing to resume the proceedings after the designated period. The
clarification, any geographical restriction imposed by you on your use of Contributed Content will Court of Appeals erred when it held that Secretary Agra committed errors of jurisdiction despite
not prevent us or our clients from including such Contributed Content in online transmission its own pronouncement that ABS-CBN is the owner of the copyright on the news footage. News
services including the internet. We acknowledge Contributed Content is your copyright and we should be differentiated from expression of the news, particularly when the issue involves

rebroadcast of news footage. The Court of Appeals also erroneously held that good faith, as. Respondent Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream
well as lack of knowledge of infringement, is a defense against criminal prosecution for copyright Broadcasting System. It delivers digital direct-to-home (DTH) television via satellite to its
and neighboring rights infringement. In its current form, the Intellectual Property Code is malum subscribers all over the Philippines. Herein individual respondents, Cesar G. Reyes, Francis
prohibitum and prescribes a strict liability for copyright infringement. Good faith, lack of Chua, Manuel F. Abellada, Raul B. De Mesa, and Aloysius M. Colayco, are members of PMSIs
knowledge of the copyright, or lack of intent to infringe is not a defense against copyright Board of Directors.
infringement. Copyright, however, is subject to the rules of fair use and will be judged on a case-
to-case basis. Finding probable cause includes a determination of the defendant's active PMSI was granted a legislative franchise under Republic Act No. 8630 [5] on May 7,
participation, particularly when the corporate veil is pierced in cases involving a corporation's 1998 and was given a Provisional Authority by the National Telecommunications Commission
criminal liability.cralawred (NTC) on February 1, 2000 to install, operate and maintain a nationwide DTH satellite
service. When it commenced operations, it offered as part of its program line-up ABS-CBN
WHEREFORE, the Petition is partially GRANTED. The Department of Justice Resolution dated Channels 2 and 23, NBN, Channel 4, ABC Channel 5, GMA Channel 7, RPN Channel 9, and
June 29, 2010 ordering the filing of the Information is hereby REINSTATED as to respondents IBC Channel 13, together with other paid premium program channels.
Grace Dela Peña-Reyes and John Oliver T. Manalastas. Branch 93 of the Regional Trial Court
of Quezon City is directed to continue with the proceedings in Criminal Case No. Q-04-131533. However, on April 25, 2001,[6] ABS-CBN demanded for PMSI to cease and desist from
rebroadcasting Channels 2 and 23. On April 27, 2001,[7] PMSI replied that the rebroadcasting
SO ORDERED.chanroblesvirtuallawlibrary was in accordance with the authority granted it by NTC and its obligation under NTC
Memorandum Circular No. 4-08-88,[8]Section 6.2 of which requires all cable television system
ABS-CBN BROADCASTING G.R. Nos. 175769-70 operators operating in a community within Grade A or B contours to carry the television signals
CORPORATION, of the authorized television broadcast stations.[9]
Petitioner, Present:
Ynares-Santiago, J. (Chairperson), Thereafter, negotiations ensued between the parties in an effort to reach a settlement;
- versus - Austria-Martinez, however, the negotiations were terminated on April 4, 2002 by ABS-CBN allegedly due to PMSIs
Chico-Nazario, inability to ensure the prevention of illegal retransmission and further rebroadcast of its signals,
Nachura, and as well as the adverse effect of the rebroadcasts on the business operations of its regional
Leonardo-De Castro,* JJ. television stations.[10]
PHILIPPINE MULTI-MEDIA SYSTEM,
INC., CESAR G. REYES, FRANCIS On May 13, 2002, ABS-CBN filed with the IPO a complaint for Violation of Laws
CHUA (ANG BIAO), MANUEL F. Involving Property Rights, with Prayer for the Issuance of a Temporary Restraining Order and/or
ABELLADA, RAUL B. DE MESA, Promulgated: Writ of Preliminary Injunction, which was docketed as IPV No. 10-2002-0004. It alleged that
AND ALOYSIUS M. COLAYCO, PMSIs unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights
Respondents. January 19, 2009 and copyright.
x ---------------------------------------------------------------------------------------- x On July 2, 2002, the Bureau of Legal Affairs (BLA) of the IPO granted ABS-CBNs
application for a temporary restraining order. On July 12, 2002, PMSI suspended its
DECISION retransmission of Channels 2 and 23 and likewise filed a petition for certiorari with the Court of
Appeals, which was docketed as CA-G.R. SP No. 71597.
YNARES-SANTIAGO, J.:
Subsequently, PMSI filed with the BLA a Manifestation reiterating that it is subject to
the must-carry rule under Memorandum Circular No. 04-08-88. It also submitted a letter dated
This petition for review on certiorari[1] assails the July 12, 2006 Decision[2] of the Court of December 20, 2002 of then NTC Commissioner Armi Jane R. Borje to PMSI stating as follows:
Appeals in CA-G.R. SP Nos. 88092 and 90762, which affirmed the December 20, 2004 Decision
of the Director-General of the Intellectual Property Office (IPO) in Appeal No. 10-2004- This refers to your letter dated December 16, 2002 requesting for
0002. Also assailed is the December 11, 2006 Resolution[3] denying the motion for regulatory guidance from this Commission in connection with the application
reconsideration. and coverage of NTC Memorandum Circular No. 4-08-88, particularly
Petitioner ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed under the laws Section 6 thereof, on mandatory carriage of television broadcast signals, to
of the Republic of the Philippines to engage in television and radio broadcasting.[4] It broadcasts the direct-to-home (DTH) pay television services of Philippine Multi-Media
television programs by wireless means to Metro Manila and nearby provinces, and by satellite to System, Inc. (PMSI).
provincial stations through Channel 2 on Very High Frequency (VHF) and Channel 23 on Ultra
High Frequency (UHF). The programs aired over Channels 2 and 23 are either produced by Preliminarily, both DTH pay television and cable television
ABS-CBN or purchased from or licensed by other producers. services are broadcast services, the only difference being the medium of
ABS-CBN also owns regional television stations which pattern their programming in delivering such services (i.e. the former by satellite and the latter by
accordance with perceived demands of the region. Thus, television programs shown in Metro cable). Both can carry broadcast signals to the remote areas, thus enriching
Manila and nearby provinces are not necessarily shown in other provinces. the lives of the residents thereof through the dissemination of social,
economic, educational information and cultural programs.

The DTH pay television services of PMSI is equipped to provide For strict compliance. (Emphasis added)[12]
nationwide DTH satellite services. Concededly, PMSIs DTH pay television
services covers very much wider areas in terms of carriage of broadcast Meanwhile, on October 10, 2003, the NTC issued Memorandum Circular No. 10-10-
signals, including areas not reachable by cable television services thereby 2003, entitled Implementing Rules and Regulations Governing Community Antenna/Cable
providing a better medium of dissemination of information to the public. Television (CATV) and Direct Broadcast Satellite (DBS) Services to Promote Competition in the
Sector. Article 6, Section 8 thereof states:
In view of the foregoing and the spirit and intent of NTC
memorandum Circular No. 4-08-88, particularly section 6 thereof, on As a general rule, the reception, distribution and/or transmission
mandatory carriage of television broadcast signals, DTH pay television by any CATV/DBS operator of any television signals without any agreement
services should be deemed covered by such NTC Memorandum with or authorization from program/content providers are prohibited.
Circular.
On whether Memorandum Circular No. 10-10-2003 amended Memorandum Circular
For your guidance. (Emphasis added)[11] No. 04-08-88, the NTC explained to PMSI in a letter dated November 3, 2003 that:
On August 26, 2003, PMSI filed another Manifestation with the BLA that it received a To address your query on whether or not the provisions of MC 10-10-2003
letter dated July 24, 2003 from the NTC enjoining strict and immediate compliance with the would have the effect of amending the provisions of MC 4-08-88 on
must-carry rule under Memorandum Circular No. 04-08-88, to wit: mandatory carriage of television signals, the answer is in the negative.
Dear Mr. Abellada: xxxx
Last July 22, 2003, the National Telecommunications Commission (NTC) The Commission maintains that, MC 4-08-88 remains valid, subsisting and
received a letter dated July 17, 2003 from President/COO Rene Q. Bello of enforceable.
the International Broadcasting Corporation (IBC-Channel 13) complaining
that your company, Dream Broadcasting System, Inc., has cut-off, without Please be advised, therefore, that as duly licensed direct-to-home
any notice or explanation whatsoever, to air the programs of IBC-13, a free- satellite television service provider authorized by this Commission,
to-air television, to the detriment of the public. your company continues to be bound by the guidelines provided for
under MC 04-08-88, specifically your obligation under its mandatory
We were told that, until now, this has been going on. carriage provisions, in addition to your obligations under MC 10-10-
2003. (Emphasis added)
Please be advised that as a direct broadcast satellite operator,
operating a direct-to-home (DTH) broadcasting system, with a Please be guided accordingly.[13]
provisional authority (PA) from the NTC, your company, along with
cable television operators, are mandated to strictly comply with the On December 22, 2003, the BLA rendered a decision[14] finding that PMSI infringed
existing policy of NTC on mandatory carriage of television broadcast the broadcasting rights and copyright of ABS-CBN and ordering it to permanently cease and
signals as provided under Memorandum Circular No. 04-08-88, also desist from rebroadcasting Channels 2 and 23.
known as the Revised Rules and Regulations Governing Cable
Television System in the Philippines. On February 6, 2004, PMSI filed an appeal with the Office of the Director-General of
the IPO which was docketed as Appeal No. 10-2004-0002. On December 23, 2004, it also filed
This mandatory coverage provision under Section 6.2 of said with the Court of Appeals a Motion to Withdraw Petition; Alternatively, Memorandum of the
Memorandum Circular, requires all cable television system operators, Petition for Certiorari in CA-G.R. SP No. 71597, which was granted in a resolution dated
operating in a community within the Grade A or B contours to must- February 17, 2005.
carry the television signals of the authorized television broadcast
stations, one of which is IBC-13. Said directive equally applies to your On December 20, 2004, the Director-General of the IPO rendered a decision[15] in
company as the circular was issued to give consumers and the public favor of PMSI, the dispositive portion of which states:
a wider access to more sources of news, information, entertainment
and other programs/contents. WHEREFORE, premises considered, the instant appeal is hereby
GRANTED. Accordingly, Decision No. 2003-01 dated 22 December 2003 of
This Commission, as the governing agency vested by laws with the the Director of Bureau of Legal Affairs is hereby REVERSED and SET
jurisdiction, supervision and control over all public services, which includes ASIDE.
direct broadcast satellite operators, and taking into consideration the
paramount interest of the public in general, hereby directs you to Let a copy of this Decision be furnished the Director of the Bureau
immediately restore the signal of IBC-13 in your network programs, of Legal Affairs for appropriate action, and the records be returned to her for
pursuant to existing circulars and regulations of the Commission.

proper disposition. The Documentation, Information and Technology carry out, authorize or prevent the public performance of the work (Section 177.6), and other
Transfer Bureau is also given a copy for library and reference purposes. communication to the public of the work (Section 177.7).[20]
SO ORDERED.[16] Section 202.7 of the IP Code defines broadcasting as the transmission by wireless
means for the public reception of sounds or of images or of representations thereof; such
Thus, ABS-CBN filed a petition for review with prayer for issuance of a temporary transmission by satellite is also broadcasting where the means for decrypting are provided to the
restraining order and writ of preliminary injunction with the Court of Appeals, which was public by the broadcasting organization or with its consent.
docketed as CA-G.R. SP No. 88092.
On the other hand, rebroadcasting as defined in Article 3(g) of the International
On July 18, 2005, the Court of Appeals issued a temporary restraining Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
order. Thereafter, ABS-CBN filed a petition for contempt against PMSI for continuing to Organizations, otherwise known as the 1961 Rome Convention, of which the Republic of
rebroadcast Channels 2 and 23 despite the restraining order. The case was docketed as CA- the Philippines is a signatory, [21] is the simultaneous broadcasting by one broadcasting
G.R. SP No. 90762. organization of the broadcast of another broadcasting organization.
On November 14, 2005, the Court of Appeals ordered the consolidation of CA-G.R. The Director-General of the IPO correctly found that PMSI is not engaged in
SP Nos. 88092 and 90762. rebroadcasting and thus cannot be considered to have infringed ABS-CBNs broadcasting rights
and copyright, thus:
In the assailed Decision dated July 12, 2006, the Court of Appeals sustained the
findings of the Director-General of the IPO and dismissed both petitions filed by ABS-CBN.[17] That the Appellants [herein respondent PMSI] subscribers are
able to view Appellees [herein petitioner ABS-CBN] programs (Channels 2
ABS-CBNs motion for reconsideration was denied, hence, this petition. and 23) at the same time that the latter is broadcasting the same is
undisputed. The question however is, would the Appellant in doing so be
ABS-CBN contends that PMSIs unauthorized rebroadcasting of Channels 2 and 23 is considered engaged in broadcasting. Section 202.7 of the IP Code states
an infringement of its broadcasting rights and copyright under the Intellectual Property Code (IP that broadcasting means
Code);[18]that Memorandum Circular No. 04-08-88 excludes DTH satellite television operators;
that the Court of Appeals interpretation of the must-carry rule violates Section 9 of Article III[19] of the transmission by wireless means for the
the Constitution because it allows the taking of property for public use without payment of just public reception of sounds or of images or of
compensation; that the Court of Appeals erred in dismissing the petition for contempt docketed representations thereof; such transmission by satellite
as CA-G.R. SP No. 90762 without requiring respondents to file comment. is also broadcasting where the means for decrypting
are provided to the public by the broadcasting
Respondents, on the other hand, argue that PMSIs rebroadcasting of Channels 2 and organization or with its consent.
23 is sanctioned by Memorandum Circular No. 04-08-88; that the must-carry rule under the
Memorandum Circular is a valid exercise of police power; and that the Court of Appeals correctly Section 202.7 of the IP Code, thus, provides two instances
dismissed CA-G.R. SP No. 90762 since it found no need to exercise its power of contempt. wherein there is broadcasting, to wit:
After a careful review of the facts and records of this case, we affirm the findings of the 1. The transmission by wireless means for the public reception of
Director-General of the IPO and the Court of Appeals. sounds or of images or of representations thereof; and
There is no merit in ABS-CBNs contention that PMSI violated its broadcasters rights 2. The transmission by satellite for the public reception of sounds
under Section 211 of the IP Code which provides in part: or of images or of representations thereof where the means for
decrypting are provided to the public by the broadcasting
Chapter XIV organization or with its consent.
BROADCASTING ORGANIZATIONS
It is under the second category that Appellants DTH satellite
Sec. 211. Scope of Right. - Subject to the provisions of Section 212, television service must be examined since it is satellite-based. The
broadcasting organizations shall enjoy the exclusive right to carry out, elements of such category are as follows:
authorize or prevent any of the following acts:
1. There is transmission of sounds or images or of
211.1. The rebroadcasting of their broadcasts; representations thereof;
xxxx 2. The transmission is through satellite;
Neither is PMSI guilty of infringement of ABS-CBNs copyright under Section 177 of 3. The transmission is for public reception; and
the IP Code which states that copyright or economic rights shall consist of the exclusive right to

4. The means for decrypting are provided to the public by the This Office also finds no evidence on record showing that the
broadcasting organization or with its consent. Appellant has provided decrypting means to the public
indiscriminately. Considering the nature of this case, which is punitive in
It is only the presence of all the above elements can a fact, the burden of proving the existence of the elements constituting the
determination that the DTH is broadcasting and consequently, acts punishable rests on the shoulder of the complainant.
rebroadcasting Appellees signals in violation of Sections 211 and 177 of the
IP Code, may be arrived at. Accordingly, this Office finds that there is no rebroadcasting on
the part of the Appellant of the Appellees programs on Channels 2 and 23,
Accordingly, this Office is of the view that the transmission as defined under the Rome Convention.[22]
contemplated under Section 202.7 of the IP Code presupposes that the
origin of the signals is the broadcaster. Hence, a program that is Under the Rome Convention, rebroadcasting is the simultaneous broadcasting by one
broadcasted is attributed to the broadcaster. In the same manner, the broadcasting organization of the broadcast of another broadcasting organization. The Working
rebroadcasted program is attributed to the rebroadcaster. Paper[23] prepared by the Secretariat of the Standing Committee on Copyright and Related
Rights defines broadcasting organizations as entities that take the financial and editorial
In the case at hand, Appellant is not the origin nor does it claim to responsibility for the selection and arrangement of, and investment in, the transmitted
be the origin of the programs broadcasted by the Appellee. Appellant did not content.[24]Evidently, PMSI would not qualify as a broadcasting organization because it does not
make and transmit on its own but merely carried the existing signals of the have the aforementioned responsibilities imposed upon broadcasting organizations, such as
Appellee. When Appellants subscribers view Appellees programs in ABS-CBN.
Channels 2 and 23, they know that the origin thereof was the Appellee.
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
Aptly, it is imperative to discern the nature of broadcasting. When which the viewers receive in its unaltered form. PMSI does not produce, select, or determine the
a broadcaster transmits, the signals are scattered or dispersed in the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin or
air. Anybody may pick-up these signals. There is no restriction as to its author of such programs.Insofar as Channels 2 and 23 are concerned, PMSI merely retransmits
number, type or class of recipients. To receive the signals, one is not the same in accordance with Memorandum Circular 04-08-88. With regard to its premium
required to subscribe or to pay any fee. One only has to have a receiver, channels, it buys the channels from content providers and transmits on an as-is basis to its
and in case of television signals, a television set, and to tune-in to the right viewers. Clearly, PMSI does not perform the functions of a broadcasting organization; thus, it
channel/frequency. The definition of broadcasting, wherein it is required that cannot be said that it is engaged in rebroadcasting Channels 2 and 23.
the transmission is wireless, all the more supports this
discussion. Apparently, the undiscriminating dispersal of signals in the air is The Director-General of the IPO and the Court of Appeals also correctly found that
possible only through wireless means.The use of wire in transmitting PMSIs services are similar to a cable television system because the services it renders fall
signals, such as cable television, limits the recipients to those who are under cable retransmission, as described in the Working Paper, to wit:
connected. Unlike wireless transmissions, in wire-based transmissions, it is
not enough that one wants to be connected and possesses the (G) Cable Retransmission
equipment. The service provider, such as cable television companies may
choose its subscribers. 47. When a radio or television program is being broadcast, it can be
retransmitted to new audiences by means of cable or wire. In the early days
The only limitation to such dispersal of signals in the air is the of cable television, it was mainly used to improve signal reception,
technical capacity of the transmitters and other equipment employed by the particularly in so-called shadow zones, or to distribute the signals in large
broadcaster. While the broadcaster may use a less powerful transmitter to buildings or building complexes. With improvements in technology, cable
limit its coverage, this is merely a business strategy or decision and not an operators now often receive signals from satellites before retransmitting
inherent limitation when transmission is through cable. them in an unaltered form to their subscribers through cable.
Accordingly, the nature of broadcasting is to scatter the signals in 48. In principle, cable retransmission can be either simultaneous with the
its widest area of coverage as possible. On this score, it may be said that broadcast over-the-air or delayed (deferred transmission) on the basis of a
making public means that accessibility is undiscriminating as long as it [is] fixation or a reproduction of a fixation. Furthermore, they might be unaltered
within the range of the transmitter and equipment of the broadcaster. That or altered, for example through replacement of commercials, etc. In
the medium through which the Appellant carries the Appellees signal, that is general, however, the term retransmission seems to be reserved for
via satellite, does not diminish the fact that it operates and functions as a such transmissions which are both simultaneous and unaltered.
cable television. It remains that the Appellants transmission of signals via its
DTH satellite television service cannot be considered within the purview of 49. The Rome Convention does not grant rights against unauthorized
broadcasting. x x x cable retransmission. Without such a right, cable operators can
retransmit both domestic and foreign over the air broadcasts
xxxx simultaneously to their subscribers without permission from the

broadcasting organizations or other rightholders and without [T]he very intent and spirit of the NTC Circular will prevent a situation
obligation to pay remuneration.[25] (Emphasis added) whereby station owners and a few networks would have unfettered power to
make time available only to the highest bidders, to communicate only their
Thus, while the Rome Convention gives broadcasting organizations the right to own views on public issues, people, and to permit on the air only those with
authorize or prohibit the rebroadcasting of its broadcast, however, this protection does not whom they agreed contrary to the state policy that the (franchise) grantee
extend to cable retransmission. The retransmission of ABS-CBNs signals by PMSI which like the petitioner, private respondent and other TV station owners, shall
functions essentially as a cable television does not therefore constitute rebroadcasting in provide at all times sound and balanced programming and assist in the
violation of the formers intellectual property rights under the IP Code. functions of public information and education.
It must be emphasized that the law on copyright is not absolute. The IP Code provides This is for the first time that we have a structure that works to accomplish
that: explicit state policy goals.[30]
Sec. 184. Limitations on Copyright. - Indeed, intellectual property protection is merely a means towards the end of making
society benefit from the creation of its men and women of talent and genius. This is the essence
184.1. Notwithstanding the provisions of Chapter V, the following of intellectual property laws, and it explains why certain products of ingenuity that are concealed
acts shall not constitute infringement of copyright: from the public are outside the pale of protection afforded by the law. It also explains why the
author or the creator enjoys no more rights than are consistent with public welfare.[31]
xxxx
(h) The use made of a work by or under the direction or control of Further, as correctly observed by the Court of Appeals, the must-carry rule as well as
the Government, by the National Library or by educational, scientific or the legislative franchises granted to both ABS-CBN and PMSI are in consonance with state
professional institutions where such use is in the public interest and is policies enshrined in the Constitution, specifically Sections 9, [32] 17,[33] and 24[34] of Article II on
compatible with fair use; the Declaration of Principles and State Policies.[35]
The carriage of ABS-CBNs signals by virtue of the must-carry rule in Memorandum ABS-CBN was granted a legislative franchise under Republic Act No. 7966, Section 1
Circular No. 04-08-88 is under the direction and control of the government though the NTC of which authorizes it to construct, operate and maintain, for commercial purposes and in the
which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications public interest, television and radio broadcasting in and throughout the Philippines x x x. Section
and broadcast services/facilities in the Philippines.[26] The imposition of the must-carry rule is 4 thereof mandates that it shall provide adequate public service time to enable the government,
within the NTCs power to promulgate rules and regulations, as public safety and interest may through the said broadcasting stations, to reach the population on important public issues;
require, to encourage a larger and more effective use of communications, radio and television provide at all times sound and balanced programming; promote public participation such as in
broadcasting facilities, and to maintain effective competition among private entities in these community programming; assist in the functions of public information and education x x x.
activities whenever the Commission finds it reasonably feasible.[27] As correctly observed by the
Director-General of the IPO: PMSI was likewise granted a legislative franchise under Republic Act No. 8630,
Section 4 of which similarly states that it shall provide adequate public service time to enable the
Accordingly, the Must-Carry Rule under NTC Circular No. 4-08-88 falls government, through the said broadcasting stations, to reach the population on important public
under the foregoing category of limitations on copyright. This Office agrees issues; provide at all times sound and balanced programming; promote public participation such
with the Appellant [herein respondent PMSI] that the Must-Carry Rule is in as in community programming; assist in the functions of public information and education x x
consonance with the principles and objectives underlying Executive Order x. Section 5, paragraph 2 of the same law provides that the radio spectrum is a finite resource
No. 436,[28] to wit: that is a part of the national patrimony and the use thereof is a privilege conferred upon the
grantee by the State and may be withdrawn anytime, after due process.
The Filipino people must be given wider access to more
sources of news, information, education, sports event In Telecom. & Broadcast Attys. of the Phils., Inc. v. COMELEC,[36] the Court held that
and entertainment programs other than those provided a franchise is a mere privilege which may be reasonably burdened with some form of public
for by mass media and afforded television programs to service. Thus:
attain a well informed, well-versed and culturally refined
citizenry and enhance their socio-economic growth: All broadcasting, whether by radio or by television stations, is licensed by
the government. Airwave frequencies have to be allocated as there are
WHEREAS, cable television (CATV) systems more individuals who want to broadcast than there are frequencies to
could support or supplement the services provided by assign. A franchise is thus a privilege subject, among other things, to
television broadcast facilities, local and overseas, as amendment by Congress in accordance with the constitutional provision that
the national information highway to the countryside.[29] any such franchise or right granted . . . shall be subject to amendment,
alteration or repeal by the Congress when the common good so requires.
The Court of Appeals likewise correctly observed that:
xxxx

Indeed, provisions for COMELEC Time have been made by Movies, Star World, Jack TV, and AXN, among others, thus allowing its customers to go beyond
amendment of the franchises of radio and television broadcast stations and, the limits of Free TV and Cable TV.[43] It does not advertise itself as a local channel carrier
until the present case was brought, such provisions had not been thought of because these local channels can be viewed with or without DTH television.
as taking property without just compensation. Art. XII, 11 of the Constitution
authorizes the amendment of franchises for the common good. What better Relevantly, PMSIs carriage of Channels 2 and 23 is material in arriving at the ratings
measure can be conceived for the common good than one for free air time and audience share of ABS-CBN and its programs. These ratings help commercial advertisers
for the benefit not only of candidates but even more of the public, and producers decide whether to buy airtime from the network. Thus, the must-carry rule is
particularly the voters, so that they will be fully informed of the issues in an actually advantageous to the broadcasting networks because it provides them with increased
election? [I]t is the right of the viewers and listeners, not the right of the viewership which attracts commercial advertisers and producers.
broadcasters, which is paramount.
On the other hand, the carriage of free-to-air signals imposes a burden to cable and
Nor indeed can there be any constitutional objection to the DTH television providers such as PMSI. PMSI uses none of ABS-CBNs resources or equipment
requirement that broadcast stations give free air time. Even in the United and carries the signals and shoulders the costs without any recourse of charging. [44] Moreover,
States, there are responsible scholars who believe that government controls such carriage of signals takes up channel space which can otherwise be utilized for other
on broadcast media can constitutionally be instituted to ensure diversity of premium paid channels.
views and attention to public affairs to further the system of free
expression. For this purpose, broadcast stations may be required to give There is no merit to ABS-CBNs argument that PMSIs carriage of Channels 2 and 23
free air time to candidates in an election. Thus, Professor Cass R. Sunstein resulted in competition between its Metro Manila and regional stations. ABS-CBN is free to
of the University of Chicago Law School, in urging reforms in regulations decide to pattern its regional programming in accordance with perceived demands of the region;
affecting the broadcast industry, writes: however, it cannot impose this kind of programming on the regional viewers who are also
entitled to the free-to-air channels. It must be emphasized that, as a national broadcasting
xxxx organization, one of ABS-CBNs responsibilities is to scatter its signals to the widest area of
coverage as possible. That it should limit its signal reach for the sole purpose of gaining profit for
In truth, radio and television broadcasting companies, which are its regional stations undermines public interest and deprives the viewers of their right to access
given franchises, do not own the airwaves and frequencies through which to information.
they transmit broadcast signals and images. They are merely given the
temporary privilege of using them. Since a franchise is a mere privilege, the Indeed, television is a business; however, the welfare of the people must not be
exercise of the privilege may reasonably be burdened with the performance sacrificed in the pursuit of profit. The right of the viewers and listeners to the most diverse choice
by the grantee of some form of public service. x x x[37] of programs available is paramount.[45] The Director-General correctly observed, thus:
There is likewise no merit to ABS-CBNs claim that PMSIs carriage of its signals is for The Must-Carry Rule favors both broadcasting organizations and
a commercial purpose; that its being the countrys top broadcasting company, the availability of the public. It prevents cable television companies from excluding
its signals allegedly enhances PMSIs attractiveness to potential customers; [38] or that the broadcasting organization especially in those places not reached by
unauthorized carriage of its signals by PMSI has created competition between its Metro Manila signal. Also, the rule prevents cable television companies from depriving
and regional stations. viewers in far-flung areas the enjoyment of programs available to city
viewers. In fact, this Office finds the rule more burdensome on the part of
ABS-CBN presented no substantial evidence to prove that PMSI carried its signals for the cable television companies. The latter carries the television signals and
profit; or that such carriage adversely affected the business operations of its regional shoulders the costs without any recourse of charging. On the other hand,
stations. Except for the testimonies of its witnesses,[39] no studies, statistical data or information the signals that are carried by cable television companies are dispersed and
have been submitted in evidence. scattered by the television stations and anybody with a television set is free
to pick them up.
Administrative charges cannot be based on mere speculation or conjecture. The
complainant has the burden of proving by substantial evidence the allegations in the With its enormous resources and vaunted technological capabilities,
complaint.[40] Mere allegation is not evidence, and is not equivalent to proof.[41] Appellees [herein petitioner ABS-CBN] broadcast signals can reach almost
every corner of the archipelago. That in spite of such capacity, it chooses to
Anyone in the country who owns a television set and antenna can receive ABS-CBNs maintain regional stations, is a business decision. That the Must-Carry Rule
signals for free. Other broadcasting organizations with free-to-air signals such as GMA-7, RPN- adversely affects the profitability of maintaining such regional stations since
9, ABC-5, and IBC-13 can likewise be accessed for free. No payment is required to view the said there will be competition between them and its Metro Manila station is
channels[42] because these broadcasting networks do not generate revenue from subscription speculative and an attempt to extrapolate the effects of the rule. As
from their viewers but from airtime revenue from contracts with commercial advertisers and discussed above, Appellants DTH satellite television services is of limited
producers, as well as from direct sales. subscription. There was not even a showing on part of the Appellee the
number of Appellants subscribers in one region as compared to non-
In contrast, cable and DTH television earn revenues from viewer subscription. In the subscribing television owners. In any event, if this Office is to engage in
case of PMSI, it offers its customers premium paid channels from content providers like Star conjecture, such competition between the regional stations and the Metro

Manila station will benefit the public as such competition will most likely educational information and cultural programs. Consequently, while the Memorandum Circular
result in the production of better television programs.[46] refers to cable television, it should be understood as to include DTH television which provides
essentially the same services.
All told, we find that the Court of Appeals correctly upheld the decision of the IPO
Director-General that PMSI did not infringe on ABS-CBNs intellectual property rights under the In Eastern Telecommunications Philippines, Inc. v. International Communication
IP Code. The findings of facts of administrative bodies charged with their specific field of Corporation,[51] we held:
expertise, are afforded great weight by the courts, and in the absence of substantial showing
that such findings are made from an erroneous estimation of the evidence presented, they are The NTC, being the government agency entrusted with the
conclusive, and in the interest of stability of the governmental structure, should not be regulation of activities coming under its special and technical forte, and
disturbed.[47] possessing the necessary rule-making power to implement its objectives, is
in the best position to interpret its own rules, regulations and
Moreover, the factual findings of the Court of Appeals are conclusive on the parties guidelines. The Court has consistently yielded and accorded great respect
and are not reviewable by the Supreme Court. They carry even more weight when the Court of to the interpretation by administrative agencies of their own rules unless
Appeals affirms the factual findings of a lower fact-finding body,[48] as in the instant case. there is an error of law, abuse of power, lack of jurisdiction or grave abuse
of discretion clearly conflicting with the letter and spirit of the law. [52]
There is likewise no merit to ABS-CBNs contention that the Memorandum Circular
excludes from its coverage DTH television services such as those provided by PMSI. Section With regard to the issue of the constitutionality of the must-carry rule, the Court finds
6.2 of the Memorandum Circular requires all cable television system operators operating in a that its resolution is not necessary in the disposition of the instant case. One of the essential
community within Grade A or B contours to carry the television signals of the authorized requisites for a successful judicial inquiry into constitutional questions is that the resolution of the
television broadcast stations.[49] The rationale behind its issuance can be found in the whereas constitutional question must be necessary in deciding the case.[53] In Spouses Mirasol v. Court of
clauses which state: Appeals,[54] we held:
Whereas, Cable Television Systems or Community Antenna As a rule, the courts will not resolve the constitutionality of a law,
Television (CATV) have shown their ability to offer additional programming if the controversy can be settled on other grounds. The policy of the courts
and to carry much improved broadcast signals in the remote areas, thereby is to avoid ruling on constitutional questions and to presume that the acts of
enriching the lives of the rest of the population through the dissemination of the political departments are valid, absent a clear and unmistakable
social, economic, educational information and cultural programs; showing to the contrary. To doubt is to sustain.This presumption is based on
the doctrine of separation of powers. This means that the measure had first
Whereas, the national government supports the promotes the been carefully studied by the legislative and executive departments and
orderly growth of the Cable Television industry within the framework of a found to be in accord with the Constitution before it was finally enacted and
regulated fee enterprise, which is a hallmark of a democratic society; approved.[55]
Whereas, public interest so requires that monopolies in The instant case was instituted for violation of the IP Code and infringement of ABS-
commercial mass media shall be regulated or prohibited, hence, to achieve CBNs broadcasting rights and copyright, which can be resolved without going into the
the same, the cable TV industry is made part of the broadcast media; constitutionality of Memorandum Circular No. 04-08-88. As held by the Court of Appeals, the
only relevance of the circular in this case is whether or not compliance therewith should be
Whereas, pursuant to Act 3846 as amended and Executive Order considered manifestation of lack of intent to commit infringement, and if it is, whether such lack
205 granting the National Telecommunications Commission the authority to of intent is a valid defense against the complaint of petitioner.[56]
set down rules and regulations in order to protect the public and promote
the general welfare, the National Telecommunications Commission hereby The records show that petitioner assailed the constitutionality of Memorandum
promulgates the following rules and regulations on Cable Television Circular No. 04-08-88 by way of a collateral attack before the Court of Appeals. In Philippine
Systems; National Bank v. Palma,[57] we ruled that for reasons of public policy, the constitutionality of a law
cannot be collaterally attacked. A law is deemed valid unless declared null and void by a
The policy of the Memorandum Circular is to carry improved signals in remote areas competent court; more so when the issue has not been duly pleaded in the trial court.[58]
for the good of the general public and to promote dissemination of information. In line with this
policy, it is clear that DTH television should be deemed covered by the Memorandum As a general rule, the question of constitutionality must be raised at the earliest
Circular. Notwithstanding the different technologies employed, both DTH and cable television opportunity so that if not raised in the pleadings, ordinarily it may not be raised in the trial, and if
have the ability to carry improved signals and promote dissemination of information because not raised in the trial court, it will not be considered on appeal. [59] In Philippine Veterans Bank v.
they operate and function in the same way. Court of Appeals,[60] we held:
In its December 20, 2002 letter,[50] the NTC explained that both DTH and cable We decline to rule on the issue of constitutionality as all the
television services are of a similar nature, the only difference being the medium of delivering requisites for the exercise of judicial review are not present
such services. They can carry broadcast signals to the remote areas and possess the capability herein. Specifically, the question of constitutionality will not be passed
to enrich the lives of the residents thereof through the dissemination of social, economic, upon by the Court unless, at the first opportunity, it is properly raised

and presented in an appropriate case, adequately argued, and is Ramon A. Nieves for defendant-appellee.
necessary to a determination of the case, particularly where the issue
of constitutionality is the very lis mota presented. x x x[61]
Finally, we find that the dismissal of the petition for contempt filed by ABS-CBN is in
order. PARAS, J.:
Indirect contempt may either be initiated (1) motu proprio by the court by issuing an
order or any other formal charge requiring the respondent to show cause why he should not be An appeal was made to the Court of Appeals docketed as CA-G.R. No. 46373-
R * entitled Filipino Society of Composers, Authors, Publishers, Inc., Plaintiff-Appellant v.
punished for contempt or (2) by the filing of a verified petition, complying with the requirements
Benjamin Tan, Defendant-Appellee, from the decision of the Court of First Instance of Manila,
for filing initiatory pleadings.[62]
Branch VII in Civil Case No. 71222 ** "Filipino Society of Composers, Authors and Publishers,
ABS-CBN filed a verified petition before the Court of Appeals, which was docketed CA Inc., Plaintiff v. Benjamin Tan, Defendant," which had dismissed plaintiffs' complaint without
special pronouncement as to costs.
G.R. SP No. 90762, for PMSIs alleged disobedience to the Resolution and Temporary
Restraining Order, both dated July 18, 2005, issued in CA-G.R. SP No. 88092. However, after
the cases were consolidated, the Court of Appeals did not require PMSI to comment on the The Court of Appeals, finding that the case involves pure questions of law, certified the same to
petition for contempt. It ruled on the merits of CA-G.R. SP No. 88092 and ordered the dismissal the Supreme Court for final determination (Resolution, CA-G.R. No. 46373-R, Rollo, p. 36;
of both petitions. Resolution of the Supreme Court of February 16, 1973 in L-36402, Rollo, p. 38).
ABS-CBN argues that the Court of Appeals erred in dismissing the petition for
contempt without having ordered respondents to comment on the same.Consequently, it would The undisputed facts of this case are as follows:
have us reinstate CA-G.R. No. 90762 and order respondents to show cause why they should not
be held in contempt. Plaintiff-appellant is a non-profit association of authors, composers and publishers duly
organized under the Corporation Law of the Philippines and registered with the Securities and
It bears stressing that the proceedings for punishment of indirect contempt are Exchange Commission. Said association is the owner of certain musical compositions among
criminal in nature. The modes of procedure and rules of evidence adopted in contempt which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
proceedings are similar in nature to those used in criminal prosecutions. [63] While it may be Lamang" and "The Nearness Of You."
argued that the Court of Appeals should have ordered respondents to comment, the issue has
been rendered moot in light of our ruling on the merits. To order respondents to comment and
have the Court of Appeals conduct a hearing on the contempt charge when the main case has On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda
already been disposed of in favor of PMSI would be circuitous. Where the issues have become Foundation and Restaurant" where a combo with professional singers, hired to play and sing
moot, there is no justiciable controversy, thereby rendering the resolution of the same of no musical compositions to entertain and amuse customers therein, were playing and singing the
practical use or value.[64] above-mentioned compositions without any license or permission from the appellant to play or
sing the same. Accordingly, appellant demanded from the appellee payment of the necessary
WHEREFORE, the petition is DENIED. The July 12, 2006 Decision of the Court of license fee for the playing and singing of aforesaid compositions but the demand was ignored.
Appeals in CA-G.R. SP Nos. 88092 and 90762, sustaining the findings of the Director-General of
the Intellectual Property Office and dismissing the petitions filed by ABS-CBN Broadcasting Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement of
Corporation, and the December 11, 2006 Resolution denying the motion for reconsideration, copyright against defendant-appellee for allowing the playing in defendant-appellee's restaurant
are AFFIRMED. of said songs copyrighted in the name of the former.
SO ORDERED.
Defendant-appellee, in his answer, countered that the complaint states no cause of action. While
not denying the playing of said copyrighted compositions in his establishment, appellee
maintains that the mere singing and playing of songs and popular tunes even if they are
G.R. No. L-36402 March 16, 1987 copyrighted do not constitute an infringement (Record on Appeal, p. 11; Resolution, CA-G.R.
NO. 46373-R, Rollo, pp. 32-36) under the provisions of Section 3 of the Copyright Law (Act 3134
of the Philippine Legislature).
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiff-
appellant,
vs. The lower court, finding for the defendant, dismissed the complaint (Record on Appeal, p. 25).
BENJAMIN TAN, defendant-appellee.
Plaintiff appealed to the Court of Appeals which as already stated certified the case to the
Lichauco, Picazo & Agcaoili Law Office for plaintiff-appellant. Supreme Court for adjudication on the legal question involved. (Resolution, Court of Appeals,
Rollo, p. 36; Resolution of the Supreme Court of February 18, 1973, Rollo, p. 38).

In its brief in the Court of Appeals, appellant raised the following Assignment of Errors: reproduced in copies for sale, to sell any manuscripts or any record
whatsoever thereof;
I
xxx xxx xxx
THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THE
APPELLANT WERE IN THE NATURE OF PUBLIC PROPERTY WHEN THEY WERE It maintains that playing or singing a musical composition is universally accepted as performing
COPYRIGHTED OR REGISTERED. the musical composition and that playing and singing of copyrighted music in the soda fountain
and restaurant of the appellee for the entertainment of the customers although the latter do not
pay for the music but only for the food and drink constitute performance for profit under the
II
Copyright Law (Brief for the Appellant, pp. 19-25).
THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THE
We concede that indeed there were "public performances for profit. "
APPELLANT WERE PLAYED AND SUNG IN THE SODA FOUNTAIN AND RESTAURANT OF
THE APPELLEE BY INDEPENDENT CONTRACTORS AND ONLY UPON THE REQUEST OF
CUSTOMERS. The word "perform" as used in the Act has been applied to "One who plays a musical
composition on a piano, thereby producing in the air sound waves which are heard as music ...
and if the instrument he plays on is a piano plus a broadcasting apparatus, so that waves are
III
thrown out, not only upon the air, but upon the other, then also he is performing the musical
composition." (Buck, et al. v. Duncan, et al.; Same Jewell La Salle Realty Co., 32F. 2d. Series
THE LOWER COURT ERRED IN HOLDING THAT THE PLAYING AND SINGING OF 367).
COPYRIGHTED MUSICAL COMPOSITIONS IN THE SODA FOUNTAIN AND RESTAURANT
OF THE APPELLEE ARE NOT PUBLIC PERFORMANCES FOR PROFIT OF THE SAID
In relation thereto, it has been held that "The playing of music in dine and dance establishment
COMPOSITIONS WITHIN THE MEANING AND CONTEMPLATION OF THE COPYRIGHT
which was paid for by the public in purchases of food and drink constituted "performance for
LAW.
profit" within a Copyright Law." (Buck, et al. v. Russon No. 4489 25 F. Supp. 317). Thus, it has
been explained that while it is possible in such establishments for the patrons to purchase their
IV food and drinks and at the same time dance to the music of the orchestra, the music is furnished
and used by the orchestra for the purpose of inducing the public to patronize the establishment
and pay for the entertainment in the purchase of food and drinks. The defendant conducts his
THE LOWER COURT ERRED IN NOT HOLDING THAT THE APPELLEE IS LIABLE TO THE place of business for profit, and it is public; and the music is performed for profit (Ibid, p. 319). In
APPELLANT FOR FOUR (4) SEPARATE INFRINGEMENTS. (Brief for Appellant, pp. A and B).
a similar case, the Court ruled that "The Performance in a restaurant or hotel dining room, by
persons employed by the proprietor, of a copyrighted musical composition, for the entertainment
The petition is devoid of merit. of patrons, without charge for admission to hear it, infringes the exclusive right of the owner of
the copyright." (Herbert v. Shanley Co.; John Church Co. v. Hillard Hotel Co., et al., 242 U.S.
590-591). In delivering the opinion of the Court in said two cases, Justice Holmes elaborated
The principal issues in this case are whether or not the playing and signing of musical thus:
compositions which have been copyrighted under the provisions of the Copyright Law (Act 3134)
inside the establishment of the defendant-appellee constitute a public performance for profit
within the meaning and contemplation of the Copyright Law of the Philippines; and assuming If the rights under the copyright are infringed only by a performance where
that there were indeed public performances for profit, whether or not appellee can be held liable money is taken at the door, they are very imperfectly protected.
therefor. Performances not different in kind from those of the defendants could be
given that might compete with and even destroy the success of the
monopoly that the law intends the plaintiffs to have. It is enough to say that
Appellant anchors its claim on Section 3(c) of the Copyright Law which provides: there is no need to construe the statute so narrowly. The defendants'
performances are not eleemosynary. They are part of a total for which the
SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the public pays, and the fact that the price of the whole is attributed to a
exclusive right: particular item which those present are expected to order is not important. It
is true that the music is not the sole object, but neither is the food, which
probably could be got cheaper elsewhere. The object is a repast in
xxx xxx xxx surroundings that to people having limited power of conversation or disliking
the rival noise, give a luxurious pleasure not to be had from eating a silent
(c) To exhibit, perform, represent, produce, or reproduce the copyrighted meal. If music did not pay, it would be given up. If it pays, it pays out of the
work in any manner or by any method whatever for profit or otherwise; if not public's pocket. Whether it pays or not, the purpose of employing it is profit,
and that is enough. (Ibid., p. 594).

In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI, Petitioners, v. LIM
food and drinks and apparently not for listening to the music. As found by the trial court, the ENG CO, Respondent.
music provided is for the purpose of entertaining and amusing the customers in order to make
the establishment more attractive and desirable (Record on Appeal, p. 21). It will be noted that
DECISION
for the playing and singing the musical compositions involved, the combo was paid as
independent contractors by the appellant (Record on Appeal, p. 24). It is therefore obvious that
the expenses entailed thereby are added to the overhead of the restaurant which are either REYES, J.:
eventually charged in the price of the food and drinks or to the overall total of additional income
produced by the bigger volume of business which the entertainment was programmed to attract.
Consequently, it is beyond question that the playing and singing of the combo in defendant- This is a petition for review on certiorari1 under Rule 45 of the Rules of Court, assailing the
Decision2dated July 9, 2010 and Resolution3 dated February 24, 2011 of the Court of Appeals
appellee's restaurant constituted performance for profit contemplated by the Copyright Law. (Act
3134 amended by P.D. No. 49, as amended). (CA) in CA-G.R. SP No. 95471, which annulled the Resolutions dated March 10, 20064 and May
25, 20065 of the Department of Justice (DOJ) in I.S. No. 2004-925, finding no probable cause for
copyright infringement against Sison Olano, Sergio Ong, Marilyn Go and Jap Fuk Hai
Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's (petitioners) and directing the withdrawal of the criminal information filed against them.
allegation that the composers of the contested musical compositions waived their right in favor of
the general public when they allowed their intellectual creations to become property of the public The Antecedents
domain before applying for the corresponding copyrights for the same (Brief for Defendant-
Appellee, pp. 14-15) is correct. The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc.
(Metrotech).6 Lim Eng Co (respondent), on the other hand, is the Chairman of LEC Steel
The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as Manufacturing Corporation (LEC), a company which specializes in architectural metal
amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office manufacturing.7
relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165,
provides among other things that an intellectual creation should be copyrighted thirty (30) days Sometime in 2002, LEC was invited by the architects of the Manansala Project (Project), a high-
after its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which end residential building in Rockwell Center, Makati City, to submit design/drawings and
renders such creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324- specifications for interior and exterior hatch doors. LEC complied by submitting on July 16, 2002,
325 [1964]. Indeed, if the general public has made use of the object sought to be copyrighted for shop plans/drawings, including the diskette therefor, embodying the designs and specifications
thirty (30) days prior to the copyright application the law deems the object to have been donated required for the metal hatch doors.8
to the public domain and the same can no longer be copyrighted.
After a series of consultations and revisions, the final shop plans/drawings were submitted by
LEC on January 15, 2004 and thereafter copied and transferred to the title block of Ski-First
A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April Balfour Joint Venture (SKI-FB), the Project's contractor, and then stamped approved for
20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before construction on February 3, 2004.9
registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered
on January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years prior LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and exterior
to 1968, (the year of the hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs hatch doors for the 7th to 22nd floors of the Project based on the final shop plans/drawings. 10
"Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10,
1966, appear to have been known and sang by the witnesses as early as 1965 or three years Sometime thereafter, LEC learned that Metrotech was also subcontracted to install interior and
before the hearing in 1968. The testimonies of the witnesses at the hearing of this case on this exterior hatch doors for the Project's 23rd to 41st floors.11
subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30).
On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property
Under the circumstances, it is clear that the musical compositions in question had long become rights. Metrotech, however, insisted that no copyright infringement was committed because the
public property, and are therefore beyond the protection of the Copyright Law. hatch doors it manufactured were patterned in accordance with the drawings provided by SKI-
FB.12
PREMISES CONSIDERED, the appealed decision of the Court of First Instance of Manila in On July 2, 2004, LEC deposited with the National Library the final shop plans/drawings of the
Civil Case No. 71222 is hereby AFFIRMED. designs and specifications for the interior and exterior hatch doors of the Project. 13 On July 6,
2004, LEC was issued a Certificate of Copyright Registration and Deposit showing that it is the
SO ORDERED. registered owner of plans/drawings for interior and exterior hatch doors under Registration Nos.
1-2004-13 and 1-2004-14, respectively.14 This copyright pertains to class work "I" under Section
172 of Republic Act (R.A.) No. 8293, The Intellectual Property Code of the Philippines, which
G.R. No. 195835, March 14, 2016 covers "illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science."
On December 9, 2004, LEC was issued another Certificate of Copyright Registration and

Deposit showing that it is the registered owner of plans/drawings for interior and exterior hatch Accordingly, the DOJ Resolution26dated March 10, 2006 disposed as follows:
doors under Registration Nos. H-2004-566 and H-2004-56715 which is classified under Section chanRoblesvirtualLawlibrary
172(h) of R.A. No. 8293 as "original ornamental designs or models for articles of manufacture, WHEREFORE, finding cogent reason to reverse the assailed resolution, the motion for
whether or not registrable as an industrial design, and other works of applied art." reconsideration is GRANTED finding no probable cause against the [petitioners]. Consequently,
the City Prosecutor of Manila is hereby directed to cause the withdrawal of the information, if any
When Metrotech still refused to stop fabricating hatch doors based on LEC's shop has been filed in court, and to report the action taken thereon within TEN (10) DAYS from receipt
plans/drawings, the latter sought the assistance of the National Bureau of Investigation (NBI) hereof.
which in turn applied for a search warrant before the Regional Trial Court (RTC) of Quezon City,
Branch 24. The application was granted on August 13, 2004 thus resulting in the confiscation of SO ORDERED.27ChanRoblesVirtualawlibrary
finished and unfinished metal hatch doors as well as machines used in fabricating and The respondent thereafter filed a motion for reconsideration of the foregoing resolution but it was
manufacturing hatch doors from the premises of Metrotech. 16 denied28 on May 25, 2006. The respondent then sought recourse before the CA via a petition
for certiorari29 ascribing grave abuse of discretion on the part of the DOJ.
On August 13, 2004, the respondent filed a Complaint-Affidavit17 before the DOJ against the
petitioners for copyright infringement. In the meantime or on September 8, 2004, the RTC In its assailed Decision30 dated July 9, 2010, the CA granted the petition. The CA held that the
quashed the search warrant on the ground that copyright infringement was not established. 18 vacillating findings of the DOJ on the presence or lack of probable cause manifest capricious
and arbitrary exercise of discretion especially since its opposite findings were based on the
Traversing the complaint, the petitioners admitted manufacturing hatch doors for the Project. same factual evidence and arguments.
They denied, however, that they committed copyright infringement and averred that the hatch
doors they manufactured were functional inventions that are proper subjects of patents and that The CA then proceeded to make its own finding of probable cause and held that:
the records of the Intellectual Property Office reveal that there is no patent, industrial design or chanRoblesvirtualLawlibrary
utility model registration on LEC's hatch doors. Metrotech further argued that the manufacturing [F]or probable cause for copyright infringement to exist, essentially, it must be shown that the
of hatch doors per se is not copyright infringement because copyright protection does not extend violator reproduced the works without the consent of the owner of the copyright.
to the objects depicted in the illustrations and plans. Moreover, there is no artistic or ornamental
expression embodied in the subject hatch doors that would subject them to copyright In the present case before Us, [the petitioners] do not dispute that: (1) LEG was issued
protection.19 copyrights for the illustrations of the hatch doors under Section 171.i, and for the hatch doors
themselves as ornamental design or model for articles of manufacture pursuant to Section 171.h
Resolutions of the DOJ of R.A. [No.] 8293; and (2) they manufactured hatch doors based on drawings and design
furnished by SKI-FB, which consists of LEC works subject of copyrights. These two (2)
In a Resolution20 dated August 18, 2005, the investigating prosecutor dismissed the circumstances, taken together, are sufficient to excite the belief in a reasonable mind that [the
respondent's complaint based on inadequate evidence showing that: (1) the petitioners petitioners] are probably guilty of copyright infringement. First, LEC has indubitably established
committed the prohibited acts under Section 177 of R.A. No. 8293; and (2) the interior and that it is the owner of the copyright for both the illustrations of the hatch doors and [the] hatch
exterior hatch doors of the petitioners are among the classes of copyrightable work enumerated doors themselves, and second, [the petitioners] manufactured hatch doors based on LEC's
in Sections 172 and 173 of the same law.21 works, sans EEC's consent.
Adamant, the respondent filed a petition for review before the DOJ but it was also denied due x x x x
course in the Resolution22 dated November 16, 2005.
[T]he fact that LEC enjoys ownership of copyright not only on the illustrations of the hatch doors
Upon the respondent's motion for reconsideration, however, the Resolution 23 dated January 27, but on the hatch doors itself and that [the petitioners] manufactured the same is sufficient to
2006 of the DOJ reversed and set aside the Resolution dated August 18, 2005 and directed the warrant a finding of probable cause for copyright infringement. x x
Chief State Prosecutor to file the appropriate information for copyright infringement against the x.31ChanRoblesVirtualawlibrary
petitioners.24 The DOJ reasoned that the pieces of evidence adduced show that the subject The CA further ruled that any allegation on the non-existence of ornamental or artistic values on
hatch doors are artistic or ornamental with distinctive hinges, door and jamb, among others. The the hatch doors are matters of evidence which are best ventilated in a full-blown trial rather than
petitioners were not able to sufficiently rebut these allegations and merely insisted on the non- during the preliminary investigation stage. Accordingly, the CA disposed as follows:
artistic nature of the hatch doors. The DOJ further held that probable cause was established chanRoblesvirtualLawlibrary
insofar as the artistic nature of the hatch doors and based thereon the act of the petitioners in WHEREFORE, considering the foregoing premises, the present Petition is GRANTED, and
manufacturing or causing to manufacture hatch doors similar to those of the respondent can be accordingly, the assailed Resolutions dated 10 March 2006 and 25 May 2006 are ANNULLED
considered as unauthorized reproduction; hence, copyright infringement under Section 177.1 in and SET ASIDE. The Resolution of the Secretory of Justice dated 27 January 2006 finding
relation to Section 216 of R.A. No. 8293.25cralawred probable cause against [the petitioners], is REINSTATED.
Aggrieved, the petitioners moved for reconsideration. This time, the DOJ made a complete turn SO ORDERED.32ChanRoblesVirtualawlibrary
around by granting the motion, vacating its Resolution dated January 27, 2006 and declaring The CA reiterated the above ruling in its Resolution33 dated February 24, 2011 when it denied
that the evidence on record did not establish probable cause because the subject hatch doors the petitioners' motion for reconsideration. Hence, the present appeal, arguing that:
were plainly metal doors with functional components devoid of any aesthetic or artistic features.

I. There was no evidence of actual reproduction of the hatch doors during the
preliminary investigation that would lead the investigating prosecutor to declare the According to the CA, the DOJ's erratic findings on the presence or absence of probable cause
existence of probable cause;34 constitute grave abuse of discretion. The CA explained:
chanRoblesvirtualLawlibrary
II. Even assuming that the petitioners manufactured hatch doors based on the This, to Our minds, in itself creates a nagging, persistent doubt as to whether [the DOJ
illustrations and plans covered by the respondent's Certificate of Registration Nos. 1- Secretary] issued the said resolutions untainted with a whimsical and arbitrary use of his
2004-13 and 1-2004-14, the petitioners could not have committed copyright discretion. For one cannot rule that there is reason to overturn the investigating prosecutor's
infringement. Certificate of Registration Nos. 1-2004-13 and 1-2004-14 are classified findings at the first instance and then go on to rule that ample evidence exists showing that the
under Section 172(i) which pertains to "illustrations, maps, plans, sketches, charts and hatch doors possess artistic and ornamental elements at the second instance and proceed to
three-dimensional works relative to geography, topography, architecture or science." rule that no such artistry can be found on the purely utilitarian hatch doors at the last instance. x
Hence the original works that are copyrighted are the illustrations and plans of interior x x.41ChanRoblesVirtualawlibrary
hatch doors and exterior hatch doors. Thus, it is the reproduction of the illustrations The Court disagrees. It has been held that the issuance by the DOJ of several resolutions with
and plans covered by the copyright registration that amounts to copyright varying findings of fact and conclusions of law on the existence of probable cause, by itself, is
infringement. The petitioners did not reproduce the illustrations and plans covered not indicative of grave abuse of discretion.42
under Certificate of Registration Nos. 1-2004-13 and 1-2004-14.
Inconsistent findings and conclusions on the part of the DOJ will denote grave abuse of
The manufacturing of hatch doors per se does not fall within the purview of copyright discretion only if coupled with gross misapprehension of facts, 43 which, after a circumspect
infringement because copyright protection does not extend to the objects depicted in review of the records, is not attendant in the present case.
the illustrations and plans;35 and
The facts upon which the resolutions issued by the investigating prosecutor and the DOJ were
actually uniform, viz:
III. LEC's copyright registration certificates are not conclusive proofs that the items chanRoblesvirtualLawlibrary
covered thereby are copyrightable. The issuance of registration certificate and
acceptance of deposit by the National Library is ministerial in nature and does not
(a) LEC is the registered owner of plans/drawings for interior and exterior hatch doors under
involve a determination of whether the item deposited is copyrightable or not.
Certificate of Registration Nos. 1-2004-13 and 1-2004-14 classified under Section 172(i)
Certificates of registration and deposit serve merely as a notice of recording and
of R.A. No. 8293 as pertaining to "illustrations, maps, plans, sketches, charts and three-
registration of the work but do not confer any right or title upon the registered copyright
dimensional works relative to geography, topography, architecture or science";
owner or automatically put his work under the protective mantle of the copyright law. 36
Ruling of the Court

(b) LEC is also 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 and under Certificate of Registration Nos. H-2004-566 and H-2004-567 classified under
conclusions on the matter of probable cause. Courts are not empowered to substitute their Section 172(h) of R.A. No. 8293 as to "original ornamental designs or models for articles
judgment for that of the executive branch upon which full discretionary authority has been of manufacture, whether or not registrable as an industrial design, and other works of
delegated in the determination of probable cause during a preliminary investigation. Courts may, applied art";
however, look into whether the exercise of such discretionary authority was attended with grave
abuse of discretion.37
Otherwise speaking, "judicial review of the resolution of the Secretary of Justice is limited to a
(c) LEC as the subcontractor of SKI-FB in the Project first manufactured and installed the
determination of whether there has been a grave abuse of discretion amounting to lack or
interior and exterior hatch doors at the Manansala Tower in Rockwell Center, Makati City,
excess of jurisdiction."38
from the 7th to 22nd floors. The hatch doors were based on the plans/drawings submitted
by LEC to SKI-FB and subject of the above copyright registration numbers; and
The CA anchored its act of reversing the DOJ Resolution dated March 10, 2006 upon the
foregoing tenets. Thus, the Court's task in the present petition is only to determine if the CA
erred in concluding that the DOJ committed grave abuse of discretion in directing the withdrawal
of any criminal information filed against the petitioners.
(d) thereafter, Metrotech fabricated and installed hatch doors at the same building's 23 rd to
Grave abuse of discretion has been defined as "such capricious and whimsical exercise of 41st floor based on the drawings and specifications provided by SKI-FB.44
judgment as is equivalent to lack of jurisdiction. The abuse of discretion must be grave as where
the power is exercised in an arbitrary or despotic manner by reason of passion or personal The positions taken by the DOJ and the investigating prosecutor differed only in the issues
hostility and must be so patent and gross as to amount to an evasion of positive duty or to a tackled and the conclusions arrived at.
virtual refusal to perform the duty enjoined by or to act at all in contemplation of
law."39 "'Capricious,' usually used in tandem with the term 'arbitrary,' conveys the notion of willful It may be observed that in the Resolution dated August 18, 2005 issued by the investigating
and unreasoning action."40cralawred prosecutor, the primary issue was whether the hatch doors of LEC fall within copyrightable
works. This was resolved by ruling that hatch doors themselves are not covered by LEC's

Certificate of Registration Nos. 1-2004-13 and 1-2004-14 issued on the plans/drawing depicting
them. The DOJ reversed this ruling in its Resolution dated January 27, 2006 wherein the issue 177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work
was streamlined to whether the illustrations of the hatch doors under LEC's Certificate of embodied in a sound recording, a computer program, a compilation of data and other
Registration Nos. H-2004-566 and H-2004-567 bore artistic ornamental designs. materials or a musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental;
This situation does not amount to grave abuse of discretion but rather a mere manifestation of
the intricate issues involved in the case which thus resulted in varying conclusions of law.
Nevertheless, the DOJ ultimately pronounced its definite construal of copyright laws and their
application to the evidence on record through its Resolution dated March 10, 2006 when it 177.5 Public display of the original or a copy of the work;
granted the petitioners' motion for reconsideration. Such construal, no matter how erroneous to
the CA's estimation, did not amount to grave abuse of discretion. "[I]t is elementary that not
every erroneous conclusion of law or fact is an abuse of discretion."45
177.6 Public performance of the work; and
More importantly, the Court finds that no grave abuse of discretion was committed by the DOJ in
directing the withdrawal of the criminal information against the respondents because a finding of
probable cause contradicts the evidence on record, law, and jurisprudence.
"Probable cause has been defined as the existence of such facts and circumstances as would 177.7 Other communication to the public of the work.
excite the belief in a reasonable mind, acting on the facts within the knowledge of the
prosecutor, that the person charged was guilty of the crime for which he was prosecuted. It is a Copyright infringement is thus committed by any person who shall use original literary or artistic
reasonable ground of presumption that a matter is, or may be, well-founded on such a state of works, or derivative works, without the copyright owner's consent in such a manner as to violate
facts in the mind of the prosecutor as would lead a person of ordinary caution and prudence to the foregoing copy and economic rights. For a claim of copyright infringement to prevail, the
believe, or entertain an honest or strong suspicion, that a thing is so." 46 evidence on record must demonstrate: (1) ownership of a validly copyrighted material by the
complainant; and (2) infringement of the copyright by the respondent. 50
"The term does not mean actual and positive cause nor does it import absolute certainty. It is
merely based on opinion and reasonable belief. Thus, a finding of probable cause does not While both elements subsist in the records, they did not simultaneously concur so as to
require an inquiry into whether there is sufficient evidence to procure a conviction. It is enough substantiate infringement of LEC's two sets of copyright registrations.
that it is believed that the act or omission complained of constitutes the offense charged." 47
The respondent failed to substantiate the alleged reproduction of the drawings/sketches of hatch
"In order that probable cause to file a criminal case may be arrived at, or in order to engender doors copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14. There is no
the well-founded belief that a crime has been committed, the elements of the crime charged proof that the respondents reprinted the copyrighted sketches/drawings of LEC's hatch doors.
should be present. This is based on the principle that every crime is defined by its elements, The raid conducted by the NBI on Metrotech's premises yielded no copies or reproduction of
without which there should be - at the most - no criminal offense."48 LEC's copyrighted sketches/drawings of hatch doors. What were discovered instead were
finished and unfinished hatch doors.
A copyright refers to "the right granted by a statute to the proprietor of an intellectual production
to its exclusive use and enjoyment to the extent specified in the statute." 49 Under Section 177 of Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section
R.A. No. 8293, the Copyright or Economic Rights consist of the exclusive right to carry out, 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts and three-
authorize or prevent the following acts: dimensional works relative to geography, topography, architecture or science."51 As such, LEC's
chanRoblesvirtualLawlibrary copyright protection there under covered only the hatch door sketches/drawings and not the
actual hatch door they depict.52
177.1 Reproduction of the work or substantial portion of the work;
As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated:53
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant,
the rights are limited to what the statute confers. It may be obtained and enjoyed only with
respect to the subjects and by the persons, and on terms and conditions specified in the
177.2 Dramatization, translation, adaptation, abridgment, arrangement or other statute. Accordingly, it can cover only the works falling within the statutory enumeration or
transformation of the work; description.54 (Citations omitted and italics in the original)
Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts
and three-dimensional works relative to geography, topography, architecture or science, to be
properly classified as a copyrightable class "I" work, what was copyrighted were their
177.3 The first public distribution of the original and each copy of the work by sale or other sketches/drawings only, and not the actual hatch doors themselves. To constitute infringement,
forms of transfer of ownership; the usurper must have copied or appropriated the original work of an author or copyright
proprietor, absent copying, there can be no infringement of copyright. 55
"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only

to the expression of the idea — not the idea itself."56 A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an
opening that resembles a window equipped with an escape for use in case of fire or
The respondent claimed that the petitioners committed copyright infringement when they emergency.64 It is thus by nature, functional and utilitarian serving as egress access during
fabricated/manufactured hatch doors identical to those installed by LEC. The petitioners could emergency. It is not primarily an artistic creation but rather an object of utility designed to have
not have manufactured such hatch doors in substantial quantities had they not reproduced the aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for copyright.
copyrighted plans/drawings submitted by LEC to SK1-FB. This insinuation, without more, does
not suffice to establish probable cause for infringement against the petitioners. "[Although the A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to
determination of probable cause requires less than evidence which would justify conviction, it portray the appearance of the article or to convey information" is excluded from copyright
should at least be more than mere suspicion."57 eligibility.65
Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that The only instance when a useful article may be the subject of copyright protection is when it
the ownership thereof was not established by the evidence on record because the element of incorporates a design element that is physically or conceptually separable from the underlying
copyrightability is absent. product. This means that the utilitarian article can function without the design element. In such
an instance, the design element is eligible for copyright protection. 66
"Ownership of copyrighted material is shown by proof of originality and copyrightability."58 While
it is true that where the complainant presents a copyright certificate in support of the claim of The design of a useful article shall be considered a pictorial, graphic, or sculptural work only if,
infringement, the validity and ownership of the copyright is presumed. This presumption, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that
however, is rebuttable and it cannot be sustained where other evidence in the record casts can be identified separately from, and are capable of existing independently of, the utilitarian
doubt on the question of ownership,59 as in the instant case. aspects of the article.67
Moreover, "[t]he presumption of validity to a certificate of copyright registration merely orders the A belt, being an object utility with the function of preventing one's pants from falling down, is in
burden of proof. The applicant should not ordinarily be forced, in the first instance, to prove all itself not copyrightable. However, an ornately designed belt buckle which is irrelevant to or did
the multiple facts that underline the validity of the copyright unless the respondent, effectively not enhance the belt's function hence, conceptually separable from the belt, is eligible for
challenging them, shifts the burden of doing so to the applicant." 60 copyright. It is copyrightable as a sculptural work with independent aesthetic value, and not as
an integral element of the belt's functionality. 68
Here, evidence negating originality and copyrightability as elements of copyright ownership was
satisfactorily proffered against LEC's certificate of registration. 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
The following averments were not successfully rebuffed by LEC: because it contributes to the lamp's ability to illuminate the reaches of a room. But, a lamp base
chanRoblesvirtualLawlibrary in the form of a statue of male and female dancing figures made of semi vitreous china is
[T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. In fact, they are just copyrightable as a work of art because it is unrelated to the lamp's utilitarian function as a device
similar to hinges found in truck doors that had been in common use since the 1960's. The used to combat darkness.69
gaskets on LEC's "hatch doors", aside from not being ornamental or artistic, were merely
procured from a company named Pemko and are not original creations of LEC. The locking In the present case, LEC's hatch doors bore no design elements that are physically and
device in LEC's "hatch doors" are ordinary drawer locks commonly used in furniture and office conceptually separable, independent and distinguishable from the hatch door itself. The
desks.61ChanRoblesVirtualawlibrary allegedly distinct set of hinges and distinct jamb, were related and necessary hence, not
In defending the copyrightability of its hatch doors' design, LEC merely claimed: physically or conceptually separable from the hatch door's utilitarian function as an apparatus for
chanRoblesvirtualLawlibrary emergency egress. Without them, the hatch door will not function.
LEC's Hatch Doors were particularly designed to blend in with the floor of the units in which they
are installed and, therefore, appeal to the aesthetic sense of the owner of units or any visitors More importantly, they are already existing articles of manufacture sourced from different
thereto[;] 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
LEC's Hatch Doors have a distinct set of hinges, a distinct door a distinct jamb, all of which are creations of LEC; and (c) the locking device are ordinary drawer locks commonly used in
both functional or utilitarian and artistic or ornamental at the same time[;] and furniture and office desks.
Moreover, the Project is a high-end residential building located in the Rockwell Center, a very Being articles of manufacture already in existence, they cannot be deemed as original creations.
prime area in Metro Manila. As such, the owner of the Project is not expected to settle for Hatch As earlier stated, valid copyright ownership denotes originality of the copyrighted material.
Doors that simply live up to their function as such. The owner would require, as is the case for Originality means that the material was not copied, evidences at least minimal creativity and was
the Project, Hatch Doors that not only fulfill their utilitarian purposes but also appeal to the independently created by the author.70 It connotes production as a result of independent
artistic or ornamental sense of their beholders.62ChanRoblesVirtualawlibrary labor.71 LEC did not produce the door jambs and hinges; it bought or acquired them from
From the foregoing description, it is clear that the hatch doors were not artistic works within the suppliers and thereafter affixed them to the hatch doors. No independent original creation can be
meaning of copyright laws. A copyrightable work refers to literary and artistic works defined as deduced from such acts.
original intellectual creations in the literary and artistic domain. 63
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 surprised to see that the book was strikingly similar to the contents, scheme of presentation,
the panels indeed show that their color and pattern design were similar to the wooden floor illustrations and illustrative examples in their own book, CET.
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 After an itemized examination and comparison of the two books (CET and DEP),
of an already existing design. petitioners found that several pages of the respondents book are similar, if not all together a
copy of petitioners book, which is a case of plagiarism and copyright infringement.
Verily then, the CA erred in holding that a probable cause for copyright infringement is imputable
Petitioners then made demands for damages against respondents and also demanded
against the petitioners. Absent originality and copyrightability as elements of a valid copyright
ownership, no infringement can subsist.chanrobleslaw that they cease and desist from further selling and distributing to the general public the infringed
copies of respondent Robles works.
WHEREFORE, premises considered, the petition is hereby GRANTED. The Decision dated July However, respondents ignored the demands, hence, on July 7, 1988, petitioners filed with
9, 2010 and Resolution dated February 24, 2011 of the Court of Appeals in CA-G.R. SP No. the Regional Trial Court, Makati, a complaint for Infringement and/or unfair competition with
95471 are REVERSEDand SET ASIDE. The Resolutions dated March 10, 2006 and May 25, damages[4] against private respondents.[5]
2006 of the Department of Justice in I.S. No. 2004-925 dismissing the complaint for copyright
infringement are REINSTATED. In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles being
substantially familiar with the contents of petitioners works, and without securing their
SO ORDERED.cralawlawlibrary permission, lifted, copied, plagiarized and/or transposed certain portions of their book CET. The
textual contents and illustrations of CET were literally reproduced in the book DEP. The
plagiarism, incorporation and reproduction of particular portions of the book CET in the book
DEP, without the authority or consent of petitioners, and the misrepresentations of respondent
Robles that the same was her original work and concept adversely affected and substantially
diminished the sale of the petitioners book and caused them actual damages by way of
[G.R. No. 131522. July 19, 1999] unrealized income.
Despite the demands of the petitioners for respondents to desist from committing further
acts of infringement and for respondent to recall DEP from the market, respondents
refused.Petitioners asked the court to order the submission of all copies of the book DEP,
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners, together with the molds, plates and films and other materials used in its printing destroyed, and
vs. FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC., respondents. for respondents to render an accounting of the proceeds of all sales and profits since the time of
its publication and sale.
DECISION Respondent Robles was impleaded in the suit because she authored and directly
committed the acts of infringement complained of, while respondent Goodwill Trading Co., Inc.
PARDO, J.: was impleaded as the publisher and joint co-owner of the copyright certificates of registration
covering the two books authored and caused to be published by respondent Robles with
The case before us is a petition for review on certiorari[1] to set aside the (a) decision of the obvious connivance with one another.
Court of Appeals[2], and (b) the resolution denying petitioners motion for reconsideration,[3] in
On July 27, 1988, respondent Robles filed a motion for a bill of particulars [6] which the trial
which the appellate court affirmed the trial courts dismissal of the complaint for infringement
court approved on August 17, 1988. Petitioners complied with the desired particularization, and
and/or unfair competition and damages but deleted the award for attorneys fees.
furnished respondent Robles the specific portions, inclusive of pages and lines, of the published
The facts are as follows: and copyrighted books of the petitioners which were transposed, lifted, copied and plagiarized
and/or otherwise found their way into respondents book.
Petitioners are authors and copyright owners of duly issued certificates of copyright
registration covering their published works, produced through their combined resources and On August 1, 1988, respondent Goodwill Trading Co., Inc. filed its answer to the
efforts, entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and complaint[7] and alleged that petitioners had no cause of action against Goodwill Trading Co.,
WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1. Inc. since it was not privy to the misrepresentation, plagiarism, incorporation and reproduction of
the portions of the book of petitioners; that there was an agreement between Goodwill and the
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and respondent Robles that Robles guaranteed Goodwill that the materials utilized in the manuscript
distributor/seller of another published work entitled DEVELOPING ENGLISH PROFICIENCY were her own or that she had secured the necessary permission from contributors and sources;
(DEP for brevity), Books 1 and 2 (1985 edition) which book was covered by copyrights issued to that the author assumed sole responsibility and held the publisher without any liability.
them.
On November 28, 1988, respondent Robles filed her answer[8], and denied the allegations
In the course of revising their published works, petitioners scouted and looked around of plagiarism and copying that petitioners claimed. Respondent stressed that (1) the book DEP
various bookstores to check on other textbooks dealing with the same subject matter. By chance is the product of her independent researches, studies and experiences, and was not a copy of
they came upon the book of respondent Robles and upon perusal of said book they were any existing valid copyrighted book; (2) DEP followed the scope and sequence or syllabus which

are common to all English grammar writers as recommended by the Association of Philippine and her books but also in earlier books on College English, including foreign books, e.i. Edmund
Colleges of Arts and Sciences (APCAS), so any similarity between the respondents book and Burkes Speech on Conciliation, Boerigs Competence in English and Broughtons, Edmund
that of the petitioners was due to the orientation of the authors to both works and standards and Burkes Collection.
syllabus; and (3) the similarities may be due to the authors exercise of the right to fair use of
copyrigthed materials, as guides.
xxx
Respondent interposed a counterclaim for damages on the ground that bad faith and
malice attended the filing of the complaint, because petitioner Habana was professionally Appellants reliance on the last paragraph on Section 11 is misplaced. It must be emphasized
jealous and the book DEP replaced CET as the official textbook of the graduate studies that they failed to prove that their books were made sources by appellee. [15]
department of the Far Eastern University.[9]
During the pre-trial conference, the parties agreed to a stipulation of facts[10] and for the The Court of Appeals was of the view that the award of attorneys fees was not proper,
trial court to first resolve the issue of infringement before disposing of the claim for damages. since there was no bad faith on the part of petitioners Habana et al. in instituting the action
against respondents.
After the trial on the merits, on April 23, 1993, the trial court rendered its judgment finding
thus: On July 12, 1997, petitioners filed a motion for reconsideration, [16] however, the Court of
Appeals denied the same in a Resolution[17] dated November 25, 1997.
WHEREFORE, premises considered, the court hereby orders that the complaint filed against Hence, this petition.
defendants Felicidad Robles and Goodwill Trading Co., Inc. shall be DISMISSED; that said
plaintiffs solidarily reimburse defendant Robles for P20,000.00 attorneys fees and defendant In this appeal, petitioners submit that the appellate court erred in affirming the trial courts
Goodwill for P5,000.00 attorneys fees. Plaintiffs are liable for cost of suit. decision.
Petitioners raised the following issues: (1) whether or not, despite the apparent textual,
IT IS SO ORDERED. thematic and sequential similarity between DEP and CET, respondents committed no copyright
infringement; (2) whether or not there was animus furandi on the part of respondent when they
Done in the City of Manila this 23rd day of April, 1993. refused to withdraw the copies of CET from the market despite notice to withdraw the same; and
(3) whether or not respondent Robles abused a writers right to fair use, in violation of Section 11
of Presidential Decree No. 49.[18]
(s/t) MARVIE R. ABRAHAM SINGSON
Assisting Judge We find the petition impressed with merit.
S. C. Adm. Order No. 124-92[11]
The complaint for copyright infringement was filed at the time that Presidential Decree No.
[12]
49 was in force. At present, all laws dealing with the protection of intellectual property rights
On May 14, 1993, petitioners filed their notice of appeal with the trial court , and on July have been consolidated and as the law now stands, the protection of copyrights is governed by
19, 1993, the court directed its branch clerk of court to forward all the records of the case to the Republic Act No. 8293. Notwithstanding the change in the law, the same principles are reiterated
Court of Appeals.[13] in the new law under Section 177. It provides for the copy or economic rights of an owner of a
copyright as follows:
In the appeal, petitioners argued that the trial court completely disregarded their evidence
and fully subscribed to the arguments of respondent Robles that the books in issue were purely
the product of her researches and studies and that the copied portions were inspired by foreign Sec.177. Copy or Economic rights.Subject to the provisions of chapter VIII, copyright or
authors and as such not subject to copyright. Petitioners also assailed the findings of the trial economic rights shall consist of the exclusive right to carry out, authorize or prevent the following
court that they were animated by bad faith in instituting the complaint.[14] acts:
On June 27, 1997, the Court of Appeals rendered judgment in favor of respondents
Robles and Goodwill Trading Co., Inc. The relevant portions of the decision state: 177.1 Reproduction of the work or substantial portion of the work;
It must be noted, however, that similarity of the allegedly infringed work to the authors or 177.2 Dramatization, translation, adaptation, abridgement, arrangement or other transformation
proprietors copyrighted work does not of itself establish copyright infringement, especially if the of the work;
similarity results from the fact that both works deal with the same subject or have the same
common source, as in this case. 177.3 The first public distribution of the original and each copy of the work by sale or other forms
of transfer of ownership;
Appellee Robles has fully explained that the portion or material of the book claimed by
appellants to have been copied or lifted from foreign books. She has duly proven that most of 177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work
the topics or materials contained in her book, with particular reference to those matters claimed embodied in a sound recording, a computer program, a compilation of data and other materials
by appellants to have been plagiarized were topics or matters appearing not only in appellants

or a musical work in graphic form, irrespective of the ownership of the original or the copy which The proposition is peace. Not peace through the medium of war; not peace to be hunted
is the subject of the rental; (n) through the labyrinth of intricate and endless negotiations; not peace to arise out of
universal discord, fomented from principle, in all parts of the empire; not peace to depend
on the juridical determination of perplexing questions, or the precise marking of the
177.5 Public display of the original or copy of the work;
boundary of a complex government. It is simple peace; sought in its natural course, and in
its ordinary haunts. It is peace sought in the spirit of peace, and laid in principles purely
177.6 Public performance of the work; and pacific.
177.7 Other communication to the public of the work[19] --- Edmund Burke, Speech on Criticism.[24]
The law also provided for the limitations on copyright, thus: On page 100 of the book DEP[25], also in the topic of parallel structure and repetition, the
same example is found in toto. The only difference is that petitioners acknowledged the author
Edmund Burke, and respondents did not.
Sec. 184.1 Limitations on copyright.-- Notwithstanding the provisions of Chapter V, the following
acts shall not constitute infringement of copyright: In several other pages[26] the treatment and manner of presentation of the topics of DEP
are similar if not a rehash of that contained in CET.
(a) the recitation or performance of a work, once it has been lawfully made
We believe that respondent Robles act of lifting from the book of petitioners substantial
accessible to the public, if done privately and free of charge or if made strictly
portions of discussions and examples, and her failure to acknowledge the same in her book is
for a charitable or religious institution or society; [Sec. 10(1), P.D. No. 49]
an infringement of petitioners copyrights.
(b) The making of quotations from a published work if they are compatible with fair
When is there a substantial reproduction of a book? It does not necessarily require that
use and only to the extent justified for the purpose, including quotations from
the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the
newspaper articles and periodicals in the form of press summaries; Provided,
value of the original work is substantially diminished, there is an infringement of copyright and to
that the source and the name of the author, if appearing on the work are
an injurious extent, the work is appropriated.[27]
mentioned; (Sec. 11 third par. P.D.49)
In determining the question of infringement, the amount of matter copied from the
xxxxxxxxxxxx
copyrighted work is an important consideration. To constitute infringement, it is not necessary
(e) The inclusion of a work in a publication, broadcast, or other communication to that the whole or even a large portion of the work shall have been copied. If so much is taken
the public, sound recording of film, if such inclusion is made by way of that the value of the original is sensibly diminished, or the labors of the original author are
illustration for teaching purposes and is compatible with fair use: Provided, substantially and to an injurious extent appropriated by another, that is sufficient in point of law
That the source and the name of the author, if appearing in the work is to constitute piracy.[28]
mentioned;[20]
The essence of intellectual piracy should be essayed in conceptual terms in order to
In the above quoted provisions, work has reference to literary and artistic creations and underscore its gravity by an appropriate understanding thereof. Infringement of a copyright is a
this includes books and other literary, scholarly and scientific works.[21] trespass on a private domain owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a synonymous term in this
A perusal of the records yields several pages of the book DEP that are similar if not connection, consists in the doing by any person, without the consent of the owner of the
identical with the text of CET. copyright, of anything the sole right to do which is conferred by statute on the owner of the
copyright.[29]
On page 404 of petitioners Book 1 of College English for Today, the authors wrote:
The respondents claim that the copied portions of the book CET are also found in foreign
Items in dates and addresses: books and other grammar books, and that the similarity between her style and that of petitioners
can not be avoided since they come from the same background and orientation may be
He died on Monday, April 15, 1975. true. However, in this jurisdiction under Sec 184 of Republic Act 8293 it is provided that:
Miss Reyes lives in 214 Taft Avenue,
Manila[22] Limitations on Copyright. Notwithstanding the provisions of Chapter V, the following shall
not constitute infringement of copyright:
On page 73 of respondents Book 1 Developing English Today, they wrote:
xxxxxxxxxxxx
He died on Monday, April 25, 1975.
Miss Reyes address is 214 Taft Avenue Manila[23] (c) The making of quotations from a published work if they are compatible with fair
use and only to the extent justified for the purpose, including quotations from
On Page 250 of CET, there is this example on parallelism or repetition of sentence newspaper articles and periodicals in the form of press summaries: Provided,
structures, thus:

That the source and the name of the author, if appearing on the work, are court for further proceedings to receive evidence of the parties to ascertain the damages caused
mentioned. and sustained by petitioners and to render decision in accordance with the evidence submitted
to it.
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in
such cases, did not know whether or not he was infringing any copyright; he at least knew that SO ORDERED.
what he was copying was not his, and he copied at his peril.[30]
The next question to resolve is to what extent can copying be injurious to the author of the
book being copied. Is it enough that there are similarities in some sections of the books or large
segments of the books are the same? [G.R. No. 108946. January 28, 1999]
In the case at bar, there is no question that petitioners presented several pages of the
books CET and DEP that more or less had the same contents. It may be correct that the books
being grammar books may contain materials similar as to some technical contents with other
grammar books, such as the segment about the Author Card. However, the numerous pages
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. FRANKLIN
that the petitioners presented showing similarity in the style and the manner the books were
DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY
presented and the identical examples can not pass as similarities merely because of technical
FRANCISCO, respondents.
consideration.
The respondents claim that their similarity in style can be attributed to the fact that both of DECISION
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. MENDOZA, J.:
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 This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of
identical even in examples contained in their books. The similarities in examples and material Justice, dated August 12, 1992, in Criminal Case No. Q-92-27854, entitled Gabriel Zosa, et al. v.
contents are so obviously present in this case. How can similar/identical examples not be City Prosecutor of Quezon City and Francisco Joaquin, Jr., and its resolution, dated December
considered as a mark of copying? 3, 1992, denying petitioner Joaquins motion for reconsideration.
We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No.
out from Goodwill bookstores the book DEP upon learning of petitioners complaint while M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
pharisaically denying petitioners demand. It was further noted that when the book DEP was re-
issued as a revised version, all the pages cited by petitioners to contain portion of their book On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
College English for Today were eliminated. certificate of copyright specifying the shows format and style of presentation.
In cases of infringement, copying alone is not what is prohibited. The copying must On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of
produce an injurious effect. Here, the injury consists in that respondent Robles lifted from BJPI, saw on RPN Channel 9 an episode of Its a Date, which was produced by IXL Productions,
petitioners book materials that were the result of the latters research work and compilation and Inc. (IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel M. Zosa, president
misrepresented them as her own. She circulated the book DEP for commercial use and did not and general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and
acknowledge petitioners as her source. demanding that IXL discontinue airing Its a Date.
Hence, there is a clear case of appropriation of copyrighted work for her benefit that In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin
respondent Robles committed. Petitioners work as authors is the product of their long and and requested a meeting to discuss a possible settlement. IXL, however, continued airing Its a
assiduous research and for another to represent it as her own is injury enough. In copyrighting Date, prompting petitioner Joaquin to send a second letter on July 25, 1991 in which he
books the purpose is to give protection to the intellectual product of an author. This is precisely reiterated his demand and warned that, if IXL did not comply, he would endorse the matter to his
what the law on copyright protected, under Section 184.1 (b). Quotations from a published work attorneys for proper legal action.
if they are compatible with fair use and only to the extent justified by the purpose, including
Meanwhile, private respondent Zosa sought to register IXLs copyright to the first episode
quotations from newspaper articles and periodicals in the form of press summaries are allowed
of Its a Date for which it was issued by the National Library a certificate of copyright on August
provided that the source and the name of the author, if appearing on the work, are mentioned.
14, 1991.
In the case at bar, the least that respondent Robles could have done was to acknowledge
Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against
petitioners Habana et. al. as the source of the portions of DEP. The final product of an authors
private respondent Zosa together with certain officers of RPN Channel 9, namely,William
toil is her book. To allow another to copy the book without appropriate acknowledgment is injury
Esposo, Felipe Medina, and Casey Francisco, in the Regional Trial Court of Quezon City where
enough.
it was docketed as Criminal Case No. 92-27854 and assigned to Branch 104 thereof. However,
WHEREFORE, the petition is hereby GRANTED. The decision and resolution of the Court private respondent Zosa sought a review of the resolution of the Assistant City Prosecutor
of Appeals in CA-G. R. CV No. 44053 are SET ASIDE. The case is ordered remanded to the trial before the Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the No complaint or information may be filed or dismissed by an investigating fiscal
Assistant City Prosecutors findings and directed him to move for the dismissal of the case without the prior written authority or approval of the provincial or city fiscal or chief
against private respondents. [1] state prosecutor.
Petitioner Joaquin filed a motion for reconsideration, but his motion was denied by
respondent Secretary of Justice on December 3, 1992. Hence, this petition. Petitioners contend Where the investigating assistant fiscal recommends the dismissal of the case
that: but his findings are reversed by the provincial or city fiscal or chief state prosecutor on
the ground that a probable cause exists, the latter may, by himself, file the
1. The public respondent gravely abused his discretion amounting to lack of corresponding information against the respondent or direct any other assistant fiscal
jurisdiction when he invoked non-presentation of the master tape as being fatal or state prosecutor to do so, without conducting another preliminary investigation.
to the existence of probable cause to prove infringement, despite the fact that
private respondents never raised the same as a controverted issue.
If upon petition by a proper party, the Secretary of Justice reverses the resolution
2. The public respondent gravely abused his discretion amounting to lack of of the provincial or city fiscal or chief state prosecutor, he shall direct the fiscal
jurisdiction when he arrogated unto himself the determination of what is concerned to file the corresponding information without conducting another preliminary
copyrightable - an issue which is exclusively within the jurisdiction of the investigation or to dismiss or move for dismissal of the complaint or information.
regional trial court to assess in a proper proceeding.
In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from
Both public and private respondents maintain that petitioners failed to establish the
considering errors, although unassigned, for the purpose of determining whether there is
existence of probable cause due to their failure to present the copyrighted master videotape probable cause for filing cases in court. He must make his own finding of probable cause and is
of Rhoda and Me. They contend that petitioner BJPIs copyright covers only a specific episode not confined to the issues raised by the parties during preliminary investigation. Moreover, his
of Rhoda and Me and that the formats or concepts of dating game shows are not covered by
findings are not subject to review unless shown to have been made with grave abuse.
copyright protection under P. D. No. 49.
Opinion of the Secretary of Justice

Non-Assignment of Error
Petitioners contend, however, that the determination of the question whether the format or
Petitioners claim that their failure to submit the copyrighted master videotape of the
mechanics of a show is entitled to copyright protection is for the court, and not the Secretary of
television show Rhoda and Me was not raised in issue by private respondents during the Justice, to make. They assail the following portion of the resolution of the respondent Secretary
preliminary investigation and, therefore, it was error for the Secretary of Justice to reverse the of Justice:
investigating prosecutors finding of probable cause on this ground.
A preliminary investigation falls under the authority of the state prosecutor who is given by [T]he essence of copyright infringement is the copying, in whole or in part, of
law the power to direct and control criminal actions.[2] He is, however, subject to the control of copyrightable materials as defined and enumerated in Section 2 of PD. No. 49. Apart
the Secretary of Justice. Thus, Rule 112, 4 of the Revised Rules of Criminal Procedure, from the manner in which it is actually expressed, however, the idea of a dating game
provides: show is, in the opinion of this Office, a non-copyrightable material. Ideas, concepts,
formats, or schemes in their abstract form clearly do not fall within the class of works or
SEC. 4. Duty of investigating fiscal. - If the investigating fiscal finds cause to hold materials susceptible of copyright registration as provided in PD. No. 49.[3] (Emphasis
the respondent for trial, he shall prepare the resolution and corresponding added.)
information. He shall certify under oath that he, or as shown by the record, an
authorized officer, has personally examined the complainant and his witnesses, that It is indeed true that the question whether the format or mechanics of petitioners television
there is reasonable ground to believe that a crime has been committed and that the show is entitled to copyright protection is a legal question for the court to make. This does not,
accused is probably guilty thereof, that the accused was informed of the complaint and however, preclude respondent Secretary of Justice from making a preliminary determination of
of the evidence submitted against him and that he was given an opportunity to submit this question in resolving whether there is probable cause for filing the case in court.In doing so
controverting evidence. Otherwise, he shall recommend dismissal of the complaint. in this case, he did not commit any grave error.
In either case, he shall forward the records of the case to the provincial or city
fiscal or chief state prosecutor within five (5) days from his resolution. The latter shall
Presentation of Master Tape
take appropriate action thereon within ten (10) days from receipt thereof, immediately
informing the parties of said action.

Petitioners claim that respondent Secretary of Justice gravely abused his discretion in As may [be] gleaned from the evidence on record, the substance of the television productions
ruling that the master videotape should have been presented in order to determine whether complainants RHODA AND ME and Zosas ITS A DATE is that two matches are made between
there was probable cause for copyright infringement. They contend a male and a female, both single, and the two couples are treated to a night or two of dining
that 20th Century Fox Film Corporation v. Court of Appeals,[4] on which respondent Secretary of and/or dancing at the expense of the show. The major concepts of both shows is the same. Any
Justice relied in reversing the resolution of the investigating prosecutor, is inapplicable to the difference appear mere variations of the major concepts.
case at bar because in the present case, the parties presented sufficient evidence which clearly
establish linkages between the copyrighted show Rhoda and Me and the infringing TV show Its
That there is an infringement on the copyright of the show RHODA AND ME both in content and
a Date.[5]
in the execution of the video presentation are established because respondents ITS A DATE is
The case of 20th Century Fox Film Corporation involved raids conducted on various practically an exact copy of complainants RHODA AND ME because of substantial similarities as
videotape outlets allegedly selling or renting out pirated videotapes. The trial court found that the follows, to wit:
affidavits of NBI agents, given in support of the application for the search warrant,
were insufficient without the master tape. Accordingly, the trial court lifted the search warrants it RHODA AND ME ITS A DATE
had previously issued against the defendants. On petition for review, this Court sustained the
action of the trial court and ruled:[6]
Set I Set I
The presentation of the master tapes of the copyrighted films from which the pirated films were
allegedly copied, was necessary for the validity of search warrants against those who have in a. Unmarried participant a. same
their possession the pirated films. The petitioners argument to the effect that the presentation of
the master tapes at the time of application may not be necessary as these would be merely of one gender (searcher) appears on one side of a divider, while three (3) unmarried
evidentiary in nature and not determinative of whether or not a probable cause exists to justify participants of the other gender are on the other side of the divider. This
the issuance of the search warrants is not meritorious. The court cannot presume that duplicate arrangement is done to ensure that the searcher does not see the searchees.
or copied tapes were necessarily reproduced from master tapes that it owns.
b. Searcher asks a question b. same

The application for search warrants was directed against video tape outlets which allegedly were
engaged in the unauthorized sale and renting out of copyrighted films belonging to the petitioner to be answered by
pursuant to P.D. 49. each
of the
The essence of a copyright infringement is the similarity or at least substantial similarity of the searchees.
The
purported pirated works to the copyrighted work. Hence, the applicant must present to the court
the copyrighted films to compare them with the purchased evidence of the video tapes allegedly purpose is
pirated to determine whether the latter is an unauthorized reproduction of the former. This to
linkage of the copyrighted films to the pirated films must be established to satisfy the determine
requirements of probable cause. Mere allegations as to the existence of the copyrighted films who
cannot serve as basis for the issuance of a search warrant. among the
searchees
is the most
This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of Appeals[7] in compatible
which it was held: with the
searcher.
In fine, the supposed pronunciamento in said case regarding the necessity for the presentation
of the master tapes of the copyrighted films for the validity of search warrants should at most be c. Searcher speculates on the c. same
understood to merely serve as a guidepost in determining the existence of probable cause in
copyright infringement cases where there is doubt as to the true nexus between the master tape
match to the searchee.
and the pirated copies. An objective and careful reading of the decision in said case could lead
to no other conclusion than that said directive was hardly intended to be a sweeping and
inflexible requirement in all or similar copyright infringement cases. . . . [8] d. Selection is made by the d. Selection is
In the case at bar, during the preliminary investigation, petitioners and private respondents use of compute (sic) methods, based on the
presented written descriptions of the formats of their respective televisions shows, on the basis or by the way questions are answer of the
of which the investigating prosecutor ruled: answered, or similar methods. Searchees.

Set 2 Set 2 (K) Drawings or plastic works of a scientific or technical character;
Same as above with the genders same (L) Photographic works and works produced by a process analogous to photography; lantern
slides;
of the
search (M) Cinematographic works and works produced by a process analogous to cinematography or
er and any process for making audio-visual recordings;
search
ees
(N) Computer programs;
interch
anged.
[9]
(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;
Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and
is thus entitled to copyright protection. It is their position that the presentation of a point-by-point (P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations
comparison of the formats of the two shows clearly demonstrates the nexus between the shows of literary, musical or artistic works or of works of the Philippine government as herein defined,
and hence establishes the existence of probable cause for copyright infringement.Such being which shall be protected as provided in Section 8 of this Decree.
the case, they did not have to produce the master tape.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this
To begin with, the format of a show is not copyrightable. Section 2 of P.D. No.
[10] Decree which by reason of the selection and arrangement of their contents constitute intellectual
49, otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the
creations, the same to be protected as such in accordance with Section 8 of this Decree.
classes of work entitled to copyright protection, to wit:
(R) Other literary, scholarly, scientific and artistic works.

Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with
respect to any of the following classes of works:
This provision is substantially the same as 172 of the INTELLECTUAL PROPERTY CODE
OF THE PHILIPPINES (R.A. No. 8293).[11] The format or mechanics of a television show is not
(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers;
included in the list of protected works in 2 of P.D. No. 49. For this reason, the protection afforded
by the law cannot be extended to cover them.
(B) Periodicals, including pamphlets and newspapers;
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery; right granted by the statute, and not simply a pre-existing right regulated by the statute.Being a
statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed
only with respect to the subjects and by the persons, and on terms and conditions specified in
(D) Letters;
the statute.[12]
(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in

Since . . . copyright in published works is purely a statutory creation, a copyright may be
dumb shows, the acting form of which is fixed in writing or otherwise;
obtained only for a work falling within the statutory enumeration or description.[13]
(F) Musical compositions, with or without words;

Regardless of the historical viewpoint, it is authoritatively settled in the United States that there is
no copyright except that which is both created and secured by act of Congress . . . .[14]
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works
of art; models or designs for works of art;
P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished works and
not to concepts. The copyright does not extend to an idea, procedure, process, system, method
(H) Reproductions of a work of art; of operation, concept, principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work.[15] Thus, the new INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES provides:
(I) Original ornamental designs or models for articles of manufacture, whether or not patentable,
and other works of applied art;
Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173,
no protection shall extend, under this law, to any idea, procedure, system, method or operation,
(J) Maps, plans, sketches, and charts; concept, principle, discovery or mere data as such, even if they are expressed, explained,

illustrated or embodied in a work; news of the day and other miscellaneous facts having the The facts of the case are as follows:
character of mere items of press information; or any official text of a legislative, administrative or
legal nature, as well as any official translation thereof. On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and
damages with a prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case
No. Q-91-10926, against the respondents Summerville General Merchandising and Company
What then is the subject matter of petitioners copyright? This Court is of the opinion that (Summerville, for brevity) and Ang Tiam Chay.
petitioner BJPIs copyright covers audio-visual recordings of each episode of Rhoda and Me, as
falling within the class of works mentioned in P.D. 49, 2(M), to wit: The petitioners complaint alleges that petitioner, doing business under the name and style
of KEC Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval
Facial Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358
Cinematographic works and works produced by a process analogous to cinematography or any
and No. 0-3678; that she also has patent rights on Chin Chun Su & Device and Chin Chun
process for making audio-visual recordings;
Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner
thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980 under
The copyright does not extend to the general concept or format of its dating game show. Registration Certificate No. 4529; that respondent Summerville advertised and sold petitioners
Accordingly, by the very nature of the subject of petitioner BJPIs copyright, the investigating cream products under the brand name Chin Chun Su, in similar containers that petitioner uses,
prosecutor should have the opportunity to compare the videotapes of the two shows. thereby misleading the public, and resulting in the decline in the petitioners business sales and
income; and, that the respondents should be enjoined from allegedly infringing on the copyrights
Mere description by words of the general format of the two dating game shows is and patents of the petitioner.
insufficient; the presentation of the master videotape in evidence was indispensable to the
determination of the existence of probable cause. As aptly observed by respondent Secretary of The respondents, on the other hand, alleged as their defense that Summerville is the
Justice: exclusive and authorized importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company
authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the
A television show includes more than mere words can describe because it involves a
Philippine Patent Office and other appropriate governmental agencies; that KEC Cosmetics
whole spectrum of visuals and effects, video and audio, such that no similarity or
Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification;
dissimilarity may be found by merely describing the general copyright/format of both
and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to
dating game shows.[16]
distribute and market Chin Chun Su products in the Philippines had already been terminated by
the said Taiwanese Manufacturing Company.
WHEREFORE, the petition is hereby DISMISSED.
After due hearing on the application for preliminary injunction, the trial court granted the
SO ORDERED. same in an Order dated February 10, 1992, the dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business under the style of
KEC Cosmetic Laboratory, for preliminary injunction, is hereby granted. Consequentially, plaintiff
is required to file with the Court a bond executed to defendants in the amount of five hundred
thousand pesos (P500,000.00) to the effect that plaintiff will pay to defendants all damages
which defendants may sustain by reason of the injunction if the Court should finally decide that
[G.R. No. 115758. March 19, 2002]
plaintiff is not entitled thereto.
SO ORDERED.[3]
ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS
LABORATORY, petitioner, vs. HON. COURT OF APPEALS, SUMMERVILLE The respondents moved for reconsideration but their motion for reconsideration was denied by
GENERAL MERCHANDISING and COMPANY, and ANG TIAM the trial court in an Order dated March 19, 1992.[4]
CHAY, respondents.
On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals,
docketed as CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary
DECISION injunction issued by the trial court. After the respondents filed their reply and almost a month
after petitioner submitted her comment, or on August 14 1992, the latter moved to dismiss the
DE LEON, JR., J.: petition for violation of Supreme Court Circular No. 28-91, a circular prohibiting forum shopping.
According to the petitioner, the respondents did not state the docket number of the civil case in
the caption of their petition and, more significantly, they did not include therein a certificate of
Before us is a petition for review on certiorari of the Decision[1] dated May 24, 1993 of the
non-forum shopping. The respondents opposed the petition and submitted to the appellate court
Court of Appeals setting aside and declaring as null and void the Orders [2] dated February 10,
a certificate of non-forum shopping for their petition.
1992 and March 19, 1992 of the Regional Trial Court, Branch 90, of Quezon City granting the
issuance of a writ of preliminary injunction.

On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling beauty cream. The trial court did not award damages and costs to any of the parties but to their
in favor of the respondents, the dispositive portion of which reads: respective counsels were awarded Seventy-Five Thousand Pesos (P75,000.00) each as
attorneys fees. The petitioner duly appealed the said decision to the Court of Appeals.
WHEREFORE, the petition is hereby given due course and the orders of respondent court dated On June 3, 1994, the Court of Appeals promulgated a Resolution[8] denying the petitioners
February 10, 1992 and March 19, 1992 granting the writ of preliminary injunction and denying motions for reconsideration and for contempt of court in CA-G.R. SP No. 27803.
petitioners motion for reconsideration are hereby set aside and declared null and void.
Respondent court is directed to forthwith proceed with the trial of Civil Case No. Q-91-10926 and Hence, this petition anchored on the following assignment of errors:
resolve the issue raised by the parties on the merits.
I
SO ORDERED.[5]
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE
ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING
In granting the petition, the appellate court ruled that: TO RULE ON PETITIONERS MOTION TO DISMISS.
The registration of the trademark or brandname Chin Chun Su by KEC with the supplemental II
register of the Bureau of Patents, Trademarks and Technology Transfer cannot be equated with
registration in the principal register, which is duly protected by the Trademark Law.
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE
ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN
xxx xxx xxx REFUSING TO PROMPTLY RESOLVE PETITIONERS MOTION FOR
RECONSIDERATION.
As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, 393:
III
Registration in the Supplemental Register, therefore, serves as notice that the registrant is using
or has appropriated the trademark. By the very fact that the trademark cannot as yet be on IN DELAYING THE RESOLUTION OF PETITIONERS MOTION FOR
guard and there are certain defects, some obstacles which the use must still overcome before RECONSIDERATION, THE HONORABLE COURT OF APPEALS DENIED
he can claim legal ownership of the mark or ask the courts to vindicate his claims of an exclusive PETITIONERS RIGHT TO SEEK TIMELY APPELLATE RELIEF AND VIOLATED
right to the use of the same. It would be deceptive for a party with nothing more than a PETITIONERS RIGHT TO DUE PROCESS.
registration in the Supplemental Register to posture before courts of justice as if the registration
is in the Principal Register.
IV
The reliance of the private respondent on the last sentence of the Patent office action on
application Serial No. 30954 that registrants is presumed to be the owner of the mark until after RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE
the registration is declared cancelled is, therefore, misplaced and grounded on shaky ABUSE OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING
foundation. The supposed presumption not only runs counter to the precept embodied in Rule TO CITE THE PRIVATE RESPONDENTS IN CONTEMPT.[9]
124 of the Revised Rules of Practice before the Philippine Patent Office in Trademark Cases but
considering all the facts ventilated before us in the four interrelated petitions involving the The petitioner faults the appellate court for not dismissing the petition on the ground of
petitioner and the respondent, it is devoid of factual basis. As even in cases where presumption violation of Supreme Court Circular No. 28-91. Also, the petitioner contends that the appellate
and precept may factually be reconciled, we have held that the presumption is rebuttable, not court violated Section 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it
conclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30, 1958, Unreported). One may be failed to rule on her motion for reconsideration within ninety (90) days from the time it is
declared an unfair competitor even if his competing trademark is registered (Parke, Davis & Co. submitted for resolution. The appellate court ruled only after the lapse of three hundred fifty-four
v. Kiu Foo & Co., et al., 60 Phil 928; La Yebana Co. v. chua Seco & Co., 14 Phil 534). [6] (354) days, or on June 3, 1994. In delaying the resolution thereof, the appellate court denied the
petitioners right to seek the timely appellate relief. Finally, petitioner describes as arbitrary the
The petitioner filed a motion for reconsideration. This she followed with several motions to denial of her motions for contempt of court against the respondents.
declare respondents in contempt of court for publishing advertisements notifying the public of the
promulgation of the assailed decision of the appellate court and stating that genuine Chin Chun We rule in favor of the respondents.
Su products could be obtained only from Summerville General Merchandising and Co. Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the
In the meantime, the trial court went on to hear petitioners complaint for final injunction grounds for the issuance of a writ of preliminary injunction is a proof that the applicant is entitled
and damages. On October 22, 1993, the trial court rendered a Decision[7] barring the petitioner to the relief demanded, and the whole or part of such relief consists in restraining the
from using the trademark Chin Chun Su and upholding the right of the respondents to use the commission or continuance of the act or acts complained of, either for a limited period or
same, but recognizing the copyright of the petitioner over the oval shaped container of her perpetually. Thus, a preliminary injunction order may be granted only when the application for

the issuance of the same shows facts entitling the applicant to the relief demanded. [10]This is the La Vista categorically pronounced that the issuance of a final injunction renders any question on
reason why we have ruled that it must be shown that the invasion of the right sought to be the preliminary injunctive order moot and academic despite the fact that the decision granting a
protected is material and substantial, that the right of complainant is clear and unmistakable, final injunction is pending appeal. Conversely, a decision denying the applicant-plaintiffs right to
and, that there is an urgent and paramount necessity for the writ to prevent serious damage.[11] a final injunction, although appealed, renders moot and academic any objection to the prior
dissolution of a writ of preliminary injunction.
In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order
on the ground that she is entitled to the use of the trademark on Chin Chun Su and its container The petitioner argues that the appellate court erred in not dismissing the petition for
based on her copyright and patent over the same. We first find it appropriate to rule on whether certiorari for non-compliance with the rule on forum shopping. We disagree. First, the petitioner
the copyright and patent over the name and container of a beauty cream product would entitle improperly raised the technical objection of non-compliance with Supreme Court Circular No. 28-
the registrant to the use and ownership over the same to the exclusion of others. 91 by filing a motion to dismiss the petition for certiorari filed in the appellate court. This is
prohibited by Section 6, Rule 66 of the Revised Rules of Civil Procedure which provides that (I)n
Trademark, copyright and patents are different intellectual property rights that cannot be petitions for certiorari before the Supreme Court and the Court of Appeals, the provisions of
interchanged with one another. A trademark is any visible sign capable of distinguishing the Section 2, Rule 56, shall be observed. Before giving due course thereto, the court may require
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or the respondents to file their comment to, and not a motion to dismiss, the petition xxx (italics
marked container of goods.[12] In relation thereto, a trade name means the name or designation supplied). Secondly, the issue was raised one month after petitioner had filed her
identifying or distinguishing an enterprise.[13] Meanwhile, the scope of a copyright is confined to answer/comment and after private respondent had replied thereto. Under Section 1, Rule 16 of
literary and artistic works which are original intellectual creations in the literary and artistic the Revised Rules of Civil Procedure, a motion to dismiss shall be filed within the time for but
domain protected from the moment of their creation.[14] Patentable inventions, on the other hand, before filing the answer to the complaint or pleading asserting a claim. She therefore could no
refer to any technical solution of a problem in any field of human activity which is new, involves longer submit a motion to dismiss nor raise defenses and objections not included in the
an inventive step and is industrially applicable.[15] answer/comment she had earlier tendered. Thirdly, substantial justice and equity require this
Court not to revive a dissolved writ of injunction in favor of a party without any legal right thereto
Petitioner has no right to support her claim for the exclusive use of the subject trade name merely on a technical infirmity. The granting of an injunctive writ based on a technical ground
and its container. The name and container of a beauty cream product are proper subjects of a rather than compliance with the requisites for the issuance of the same is contrary to the primary
trademark inasmuch as the same falls squarely within its definition. In order to be entitled to
objective of legal procedure which is to serve as a means to dispense justice to the deserving
exclusively use the same in the sale of the beauty cream product, the user must sufficiently party.
prove that she registered or used it before anybody else did. The petitioners copyright and
patent registration of the name and container would not guarantee her the right to the exclusive The petitioner likewise contends that the appellate court unduly delayed the resolution of
use of the same for the reason that they are not appropriate subjects of the said intellectual her motion for reconsideration. But we find that petitioner contributed to this delay when she filed
rights. Consequently, a preliminary injunction order cannot be issued for the reason that the successive contentious motions in the same proceeding, the last of which was on October 27,
petitioner has not proven that she has a clear right over the said name and container to the 1993, necessitating counter-manifestations from private respondents with the last one being filed
exclusion of others, not having proven that she has registered a trademark thereto or used the on November 9, 1993. Nonetheless, it is well-settled that non-observance of the period for
same before anyone did. deciding cases or their incidents does not render such judgments ineffective or void.[17] With
respect to the purported damages she suffered due to the alleged delay in resolving her motion
We cannot likewise overlook the decision of the trial court in the case for final injunction for reconsideration, we find that the said issue has likewise been rendered moot and academic
and damages. The dispositive portion of said decision held that the petitioner does not have by our ruling that she has no right over the trademark and, consequently, to the issuance of a
trademark rights on the name and container of the beauty cream product. The said decision on
writ of preliminary injunction.
the merits of the trial court rendered the issuance of the writ of a preliminary injunction moot and
academic notwithstanding the fact that the same has been appealed in the Court of Appeals. Finally, we rule that the Court of Appeals correctly denied the petitioners several motions
This is supported by our ruling in La Vista Association, Inc. v. Court of Appeals[16], to wit: for contempt of court. There is nothing contemptuous about the advertisements complained of
which, as regards the proceedings in CA-G.R. SP No. 27803 merely announced in plain and
Considering that preliminary injunction is a provisional remedy which may be granted at any time straightforward language the promulgation of the assailed Decision of the appellate court.
after the commencement of the action and before judgment when it is established that the Moreover, pursuant to Section 4 of Rule 39 of the Revised Rules of Civil Procedure, the said
plaintiff is entitled to the relief demanded and only when his complaint shows facts entitling such decision nullifying the injunctive writ was immediately executory.
reliefs xxx and it appearing that the trial court had already granted the issuance of a final
WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of
injunction in favor of petitioner in its decision rendered after trial on the merits xxx the Court
Appeals dated May 24, 1993 and June 3, 1994, respectively, are hereby AFFIRMED. With costs
resolved to Dismiss the instant petition having been rendered moot and academic. An injunction
against the petitioner.
issued by the trial court after it has already made a clear pronouncement as to the plaintiffs right
thereto, that is, after the same issue has been decided on the merits, the trial court having SO ORDERED.
appreciated the evidence presented, is proper, notwithstanding the fact that the decision
rendered is not yet final xxx. Being an ancillary remedy, the proceedings for preliminary
injunction cannot stand separately or proceed independently of the decision rendered on the PEDRO SERRANO LAKTAW, Plaintiff-Appellant, v. MAMERTO PAGLINAWAN, Defendant-
merit of the main case for injunction. The merit of the main case having been already determined Appellee.
in favor of the applicant, the preliminary determination of its non-existence ceases to have any
force and effect. (italics supplied) Perfecto Gabriel for Appellant.

Felix Ferrer and Crossfield & O’Brien for Appellee.
The defendant in his answer denied generally each and every allegation of the complaint. After
SYLLABUS trial and the introduction of evidence by both parties, the court on August 20, 1915. rendered
judgment, absolving the defendant from the complaint, but without making any special any
1. INTELLECTUAL PROPERTY; DICTIONARIES; REPRODUCTION OF. — Where one in pronouncement as to costs. The plaintiff moved for a new trial on the ground that the judgment
publishing a Spanish-Tagalog dictionary has but copied the equivalents, definitions and different was against the law and the weight of the evidence. Said motion having been overruled, plaintiff
meanings given in another’s Spanish-Tagalog dictionary, although making some additions of his excepted to the order overruling it, and appealed the case to the Supreme Court upon a bill of
own and some unimportant changes in the examples to illustrate the meanings of the words, exceptions.
such as substituting "Tayabas" for "Bulacan" in the expression "Voy a Bulacan" (I am going to
Bulacan), it is evident that he merely reproduced the dictionary of the other author in violation of The ground of the decision appealed from is that a comparison of the plaintiff’s dictionary with
the Law of January 10, 1879, on Intellectual Property. that of the defendant does not show that the latter is an improper copy of the former, which has
been published and offered for sale by the plaintiff for about twenty-five years or more. For this
2. ID.; ID.; PROPERTY OF AUTHOR. — Dictionaries are not common property of the author, reason the court held that the plaintiff had no right of action and that the remedy sought by him
whose right thereto is recognized by article 7, in connection with article 2, of the Law of January could not be granted.
10, 1879, and nobody can reproduce them without the permission of the author.
The appellant contends that the court below erred in not declaring that the defendant had
3. ID.; LAW OF JANUARY 10, 1879; OPERATION OF. — The Law of January 10, 1879, on reproduced the plaintiff’s work that the defendant had violated article 7 of the Law of January 10,
Intellectual Property, was extended to the Philippine Islands by royal decree of May 5, 1887, and 1879, on Intellectual Property.
published in the "Gaceta de Manila," with the approval of the Governor-General, on June 15,
1887, and took effect in these Island six months after its promulgation or publication. And even Said article provides:jgc:chanrobles.com.ph
supposing that it ceased to operate in these Islands upon the change of sovereignty, yet the
author of a dictionary published in 1889, who had complied with its requirement, has vested right "Nobody may reproduce another person’s work without the owner’s consent, even merely to
to his work, which is recognized and protected by the Treaty of Paris of December 10, 1898, and annotate or add anything to it, or improve any edition thereof."cralaw virtua1aw library
must be respected.
Therefore, in order that said article may be violated, it is not necessary, as the court below
4. ID.; ID.; REPRODUCTION OF ANOTHER’S WORK; DAMAGES. — The author of a dictionary seems to have understood, that a work should be an improper copy of another work previously
published in 1889 having an exclusive right thereto, vested under the Law of January 10, 1879, published. It is enough that another’s work has been reproduced without the consent of the
and protected by the Treaty of Paris of December 10, 1898, every violator of said right will be owner, even though it be only to annotate, add something to it, or improve any edition thereof.
held responsible for the damages the said author may have sustained.
Upon making a careful and minute comparison of Exhibit A, the dictionary written and published
by the plaintiff, and Exhibit B, written and published by the defendant, and, taking into account
DECISION the memorandum (fols. 55 to 59) presented by the defendant, in which he enumerates the words
and terms which, according to him, are in his dictionary but not in that of the plaintiff, and vice
versa, and the equivalents or definitions given by the defendant which are not similar to those
ARAULLO, J. : given by the plaintiff, as well as the new Tagalog words which are in the dictionary of the
defendant but not in that on the plaintiff; and considering the notes, Exhibit C, first series,
presented by the plaintiff, in which the terms copied by the defendant from the plaintiff’s
In the complaint in the Court of First Instance of the City of Manila on February 20, 1915, it was dictionary are enumerated in detail and in relation to each letter of the alphabet and in which the
alleged:chanrob1es virtual 1aw library plaintiff’s own words and terms are set forth, with a summary, at the foot of each group of letters,
which shows the number of initial Spanish words that are his own and the fact that the remaining
(1) That the plaintiff was, according to the laws regulating literary properties, the registered ones are truly copied from the plaintiff’s dictionary — considering all of these facts, we come to a
owner and author of a literary work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog conclusion completely different and contrary to that of the trial court, for said evidence clearly
Dictionary) published in the City of Manila in 1889 by the printing establishment La Opinion, and shows:chanrob1es virtual 1aw library
a copy of which was attached to the complaint, as Exhibit A; (2) that the defendant, without the
consent of the plaintiff, reproduced said literary work, improperly copied the greater part thereof 1. That, of the Spanish words in the defendant’s dictionary, Exhibit B, which correspond to each
in the published by him entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), a letter of the alphabet, those that are enumerated below have been copied and reproduced from
copy of which was also attached to the complaint as Exhibit B; (3) that said act of the defendant, the plaintiff’s dictionary, with the exception of those that are stated to be the defendant’s own.
which is a violation of article 7 of the Law of January 10, 1879, on Intellectual Property, cause
irreparable injuries to the plaintiff, who was surprised when, on publishing his new work entitled Letter Words Defendant’s own
Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact, and (4) that
the damages occasioned to the plaintiff by the publication of defendant’s work amounted to "A" 1,184 231
$10,000. The plaintiff therefore prayed the court to order the defendant to withdraw from sale all
stock of the work herein identified as Exhibit B and to pay the plaintiff the sum of $10,000, with "B" 364 28
costs.

"C" 660 261 23,560 3,108
"CH" 76 10 Therefore, of the 23,560 Spanish words in the defendant’s dictionary, after deducting 17 words
corresponding to the letters K and X (for the plaintiff has no words corresponding to them), only
"D" 874 231 3,108 words are the defendant’s own, or, what is the same thing, the defendant has added only
this number of words to those that are in the plaintiff’s dictionary, he having reproduced or
"E" 880 301 copied the remaining 20,452 words.
"F" 383 152 2. That the defendant also literally reproduced and copied for the Spanish words in his
dictionary, the equivalents, definitions and different meanings in Tagalog, given in plaintiff’s
"G" 02 111 dictionary, having reproduced, as to some words, everything that appears in the plaintiff’s
dictionary for similar Spanish words, although as to some he made some additions of his own.
"H" 57 64 Said copies and reproductions are numerous as may be seen, by comparing both dictionaries
and using as a guide or index the defendant’s memorandum and notes, first series, Exhibit C, in
"I" 14 328 which, as to each word, the similarities and differences between them are set forth in detail.
"J" 1325cralaw:red 3. That the printer’s errors in the plaintiff’s dictionary as to the expression of some words in
Spanish as well as their equivalents in Tagalog are also reproduced, a fact which shows that the
"K" 11 11 defendant, in preparing his dictionary, literally copied those Spanish words and their meanings
and equivalents in Tagalog from the plaintiff’s dictionary.
"L" 502 94
The trial court has chosen at random, as is stated in the judgment appealed from, some words
"LL" 36 2 from said dictionaries in making the comparison on which its conclusion is based, and
consequently the conclusion is based, and consequently the conclusion reached by it must be in
"M" 994 225 accurate and not well founded, because said comparison was not complete.
"N" 259 53 In said judgment some words of the defendant’s dictionary are transcribed, the equivalents and
meanings of which in Tagalog are exactly the same as those that are given in the plaintiff’s
"N" 6 2 dictionary, with the exception, as to some of them, of only one acceptation, which is the
defendant’s own production. And with respect to the examples used by the defendant in his
"O" 317 67 dictionary, which, according to the judgment, are not copied from the plaintiff’s — the judgment
referring to the preposition a (to), in Tagalog sa — it must be noted that the defendant, in giving
"P" 803 358 in his dictionary an example of said preposition, uses the expression "voy a Tayabas" (I am
going to Tayabas) instead of "voy a Bulacan" (I am going to Bulacan), as the plaintiff does in his
"Q" 84 11 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 defendant of the
"R" 847 140 plaintiff’s work, but just the opposite, for he who intends to imitate the work of another, tries to
make it appear in some manner that there is some difference between the original and the
"S" 746 118 imitation; and in the example referred to, with respect to the preposition a (to), that dissimilarity
as to the province designated seems to effect the same purpose.
"T" 591 147
In the judgment appealed from, the court gives one to understand that the reproduction of
"U" 107 15 another’s dictionary without the owner’s consent does not constitute a violation of the Law of
Intellectual Property for the court’s idea of a dictionary is stated in the decision itself, as
"V" 342 96 follows:jgc:chanrobles.com.ph
"X" 6 6 "Dictionaries have to be made with the aid of others, and they improved by the increase of
words. What may be said of a pasture ground may be said also of a dictionary, i.e., that it should
"Y" 24 4 be common property for all who may desire to write a new dictionary, and the defendant has
come to this pasture ground and taken whatever he needed form it in the exercise of a perfect
"Z" 73 17 right."cralaw virtua1aw library
_____ ____ Such idea is very erroneous, especially in relation to the Law of Intellectual Property. Danvilla y
Collado, the author of the Law of January 10, 1879, on the Intellectual Property, which was

discussed and approved in the Spanish Cortes, in his work entitled La Propiedad Intellectual that the rights to literary, artistic, and industrial properties acquired by the subject of Spain in the
(page 362, 1st ed.) states with respect to dictionaries and in relation to article 7 of said Island of Cuba and in Porto Rico and the Philippines and other ceded territories, at the time of
law:jgc:chanrobles.com.ph the exchange of the ratifications of said Treaty, shall continue to be respected.
"The protection of the law cannot be denied to the author of a dictionary, for although words are In addition to what has been said, according to article 428 of the Civil Code, the author of a
not the property of anybody, their definitions, the examples that explain their sense, and the literally, scientific, or artistic work, has the right to exploit it and dispose thereof at will. In relation
manner of expressing their different meanings, may constitute a special work. On this point, the to this right, there exists the exclusive right of the author, who is the absolute owner of his own
correctional court of the Seine held, on August 16, 1864, that a dictionary constitutes property, work, to produce it, according to article 2 of the Law of January 10, 1879, and consequently,
although some of the words therein are explained by mere definitions expressed in a few lines nobody may reproduce it, without his permission, not even to annotate or adduce it, without his
and sanctioned by usage, provided that the greater part of the other words contain new permission, not even to annotate or add something to it, or to improve any edition thereof,
meanings; new meanings which evidently may only belong to the first person who published according to article 7 of said law. Manresa, in his commentaries on article 429 of the Civil Code
them."cralaw virtua1aw library 9 vol. 3, p. 633, 3d ed.) says that the concrete statement of the right to literary properties is
found in the legal doctrine according to which nobody may reproduce another person’s work,
Therefore, the plaintiff, Pedro Serrano, cannot be denied the legal protection which he seeks, without the consent of its owner, or even to annotate or add something to it or to improve any
and which is based on the fact that the dictionary published by him in 1889 is his property — edition thereof. And on page 616 of said volume, Manresa says the
said property right being recognized and having been granted by article 7, in connection with following:jgc:chanrobles.com.ph
article 2, of said law — and on the further fact that said work was reproduced by the defendant
without his permission. "He who writes a book, or carves a statue, or makes an invention, has the absolute right to
reproduce or sell it, just as the owner of land has the absolute right to sell it or its fruits. But while
This law was published in the Gaceta de Madrid on January 12, 1879. It took effect in these the owner of land, be selling it and its fruits, perhaps fully realizes all its economic value, by
Islands six months after its promulgation, as provided in article 56 thereof. The body of rules for receiving its benefits and utilities, which are represented, for example, by the price, on the other
the execution of said law having been approved by royal decree of September 3, 1880, and hand the author of a book, statue or invention, does not reap all the benefits and advantages of
published in the Gaceta de Madrid on September 6, 1880 and extended to the Philippine Islands his own property by disposing of it, for the most important form of realizing the economic
by royal decree of May 5, 1887, it was in turn published in the Gaceta de Manila, with the advantages of a book, statue or invention, consists in the right to reproduce it in similar or like
approval of the Governor-General of the Islands, on June 15, 1887. Said law of January 10, copies, everyone of which serves to give the person reproducing them all the conditions which
1879, and the rules for its application, were therefore in force in these Islands when the plaintiff’s the original requires in order to give the author the full enjoyment thereof. If the author of a book,
dictionary was edited and published in 1889. 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
It appears from the evidence that although the plaintiff did not introduce at the trial the certificate in the production of the book is in no way rewarded."cralaw virtua1aw library
of registration of his property rights to said work which, according to said rules, was kept in the
Central Government of these Islands, and was issued to him in 1890, the same having been lost Indeed the property right recognized and protected by the Law of January 10, 1879, on
during the revolution against Spain, and no trace relative to the issuance of said certificate being Intellectual Property, would be illusory if, by reason of the fact that said law is no longer in force
obtainable in the Division of Archives of the Executive Bureau on account of the loss of the as a consequence of the change of sovereignty in these Islands, the author of a work, who has
corresponding records, yet as in the first page of said dictionary the property right of the plaintiff the exclusive right to reproduce it, could not prevent another person from so doing without his
was reserved by means of the words "Es propeidad del auto" (All rights reserved), taken in consent, and could not enforce this right through the courts of justice in order to prosecute the
connection with the permission granted him by the Governor-General on November 24, 1889, to violator of this legal provision and the defrauder or usurper of his right, for he could not obtain
print and publish said dictionary, after an examination thereof by the permanent committee of the full enjoyment of the book or other work, and his property right thereto, which is recognized
censors, which examination was made, and the necessary license granted to him, these facts by law, would be reduced, as Manresa says, to an insignificant thing, if he should have no more
constitute sufficient proof, under the circumstances of the case, as they have not been overcome right than that of selling his work.
by any evidence on the part of the defendant, showing that said plaintiff did not comply with the
requirements of article 36 of said law, which was a prerequisite to the enjoyment of the benefits The reproduction by the defendant without the plaintiff’s consent of the Diccionario Hispano-
thereof according to the preceding articles, among which is article 7, which is alleged in the Tagalog (Spanish-Tagalog Dictionary), published and edited in the City of Manila in 1889, by the
complaint to have been violated by the defendant. 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
Even considering that said Law of January 10, 1879, ceased to operate in these Islands, upon attached to the complaint, has caused the plaintiff, according to the latter, damages in the sum
the termination of the Spanish sovereignty and the substitution thereof by that of the United of $10,000. It is true that it cannot be denied that the reproduction of the plaintiff’s book by the
States of America, the right of the plaintiff to invoke said law in support of the action instituted by defendant has caused damages to the former, but the amount thereof of the plaintiff as to the
him in the present case cannot be disputed. His property right to the work Diccionario Hispano- proceeds he would have realized if he had printed in 1913 the number of copies of his work
Tagalog (Spanish-Tagalog Dictionary), published by him and edited in 1889, is recognized and which he stated in his declaration — a fact which he did not do because the defendant had
sanctioned by said law, and by virtue thereof, he had acquired a right of which he cannot be reproduced it — was not corroborated in any way at the trial and is based upon mere
deprived merely because the law is not in force now or is of no actual application. This calculations made by the plaintiff himself; for which reason no pronouncement can be made in
conclusion is necessary to protect intellectual property rights vested after the sovereignty of this decision as to the indemnification for damages which the plaintiff seeks to recover.
Spain was suspended by that of the United States. It was so held in the Treaty of Paris of
December 10, 1898, between Spain and the United States, when it declared in article 13 thereof 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 On June 10, 2003, the trial court granted the motion to quash and declared Search
from sale all stock of his work Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), of Warrant No. 4044(03) null and void based on its finding that the copyrighted products of MANLY
which Exhibit B is a copy, and the suit instituted by said plaintiff being proper, we reverse the do not appear to be original creations and were being manufactured and distributed by different
judgment appealed form and order the defendant to withdraw from sale, as prayed for in the companies locally and abroad under various brands, and therefore unqualified for protection
complaint, all stock of his work above-mentioned, and to pay the costs of first instance. We under Section 172 of RA 8293. Moreover, MANLYs certificates of registrations were issued only
make no special pronouncement as to the costs of this instance. So ordered. in 2002, whereas there were certificates of registrations for the same sports articles which were
issued earlier than MANLYs, thus further negating the claim that its copyrighted products were
Arellano, C.J., Torres, and Street, JJ., concur. original creations.[8]
On August 11, 2003, the trial court denied[9] MANLYs motion for reconsideration.
MANLY SPORTWEAR G.R. No. 165306 Hence it filed a petition for certiorari[10] before the Court of Appeals which was denied for lack of
MANUFACTURING, INC., merit. The appellate court found that the trial court correctly granted the motion to quash and
Petitioner, Present: that its ruling in the ancillary proceeding did not preempt the findings of the intellectual property
Davide, Jr., C.J. (Chairman), court as it did not resolve with finality the status or character of the seized items.
- versus - Quisumbing,
Ynares-Santiago, After denial of its motion for reconsideration on September 15, 2004, MANLY filed the
Carpio, and instant petition for review on certiorari raising the sole issue of whether or not the Court of
Azcuna, JJ. Appeals erred in finding that the trial court did not gravely abuse its discretion in declaring in the
DADODETTE ENTERPRISES hearing for the quashal of the search warrant that the copyrighted products of MANLY are not
AND/OR HERMES SPORTS Promulgated: original creations subject to the protection of RA 8293.
CENTER,
Respondents. September 20, 2005 We deny the petition.
x ---------------------------------------------------------------------------------------- x The power to issue search warrants is exclusively vested with the trial judges in the
exercise of their judicial function.[11] As such, the power to quash the same also rests solely with
DECISION them. After the judge has issued a warrant, he is not precluded to subsequently quash the same,
if he finds upon reevaluation of the evidence that no probable cause exists.
YNARES-SANTIAGO, J.: Our ruling in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93[12] is instructive,
thus:
This petition for review on certiorari[1] under Rule 45 of the Revised Rules of Civil Inherent in the courts power to issue search warrants is the power
Procedure assails the July 13, 2004 decision[2] of the Court of Appeals[3] in CA-G.R. SP No. to quash warrants already issued. In this connection, this Court has ruled
79887 and its September 15, 2004 resolution[4] denying reconsideration thereof. that the motion to quash should be filed in the court that issued the warrant
unless a criminal case has already been instituted in another court, in which
The facts are as follows: case, the motion should be filed with the latter. The ruling has since been
incorporated in Rule 126 of the Revised Rules of Criminal Procedure[.]
On March 14, 2003, Special Investigator Eliezer P. Salcedo of the National Bureau of
Investigation (NBI) applied for a search warrant before the Regional Trial Court (RTC) of Quezon In the instant case, we find that the trial court did not abuse its discretion when it
City, based on the information that Dadodette Enterprises and/or Hermes Sports Center were in entertained the motion to quash considering that no criminal action has yet been instituted when
possession of goods, the copyright of which belonged to Manly Sportswear Mfg., Inc. it was filed. The trial court also properly quashed the search warrant it earlier issued after finding
(MANLY).[5] upon reevaluation of the evidence that no probable cause exists to justify its issuance in the first
place. As ruled by the trial court, the copyrighted products do not appear to be original creations
After finding reasonable grounds that a violation of Sections 172 and 217 of Republic of MANLY and are not among the classes of work enumerated under Section 172 of RA 8293.
Act (RA) No. 8293[6] has been committed, Judge Estrella T. Estrada of RTC-Quezon City, The trial court, thus, may not be faulted for overturning its initial assessment that there was
Branch 83, issued on March 17, 2003 Search Warrant No. 4044(03). [7] probable cause in view of its inherent power to issue search warrants and to quash the same.
No objection may be validly posed to an order quashing a warrant already issued as the court
Respondents thereafter moved to quash and annul the search warrant contending that must be provided with the opportunity to correct itself of an error unwittingly committed, or, with
the same is invalid since the requisites for its issuance have not been complied with. They like effect, to allow the aggrieved party the chance to convince the court that its ruling is
insisted that the sporting goods manufactured by and/or registered in the name of MANLY are erroneous.
ordinary and common hence, not among the classes of work protected under Section 172 of RA
8293. Moreover, the trial court was acting within bounds when it ruled, in an ancillary
proceeding, that the copyrighted products of petitioner are not original creations. This is because
in the determination of the existence of probable cause for the issuance or quashal of a warrant,

it is inevitable that the court may touch on issues properly threshed out in a regular proceeding. Further, the copyright certificates issued in favor of MANLY constitute merely prima
In so doing, it does not usurp the power of, much less preclude, the court from making a final facie evidence of validity and ownership. However, no presumption of validity is created where
judicial determination of the issues in a full-blown trial. Consequently, MANLYs assertion that the other evidence exist that may cast doubt on the copyright validity. Hence, where there is
trial courts order quashing the warrant preempted the finding of the intellectual property court sufficient proof that the copyrighted products are not original creations but are readily available
has no legal basis. in the market under various brands, as in this case, validity and originality will not be presumed
and the trial court may properly quash the issued warrant for lack of probable cause.
As pertinently held in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93:[13]
Besides, no copyright accrues in favor of MANLY despite issuance of the certificates
When the court, in determining probable cause for issuing or of registration and deposit[16] pursuant to Section 2, Rule 7 of the Copyrights Safeguards and
quashing a search warrant, finds that no offense has been committed, it Regulations[17] which states:
does not interfere with or encroach upon the proceedings in the preliminary
investigation. The court does not oblige the investigating officer not to file an Sec. 2 Effects of Registration and Deposit of Work. The
information for the courts ruling that no crime exists is only for purposes of registration and deposit of the work is purely for recording the date of
issuing or quashing the warrant. This does not, as petitioners would like to registration and deposit of the work and shall not be conclusive as to
believe, constitute a usurpation of the executive function. Indeed, to shirk copyright ownership or the term of the copyrights or the rights of the
from this duty would amount to an abdication of a constitutional obligation. copyright owner, including neighboring rights.
... At most, the certificates of registration and deposit issued by the National Library and
the Supreme Court Library serve merely as a notice of recording and registration of the work but
... The finding by the court that no crime exists does not preclude the do not confer any right or title upon the registered copyright owner or automatically put his work
authorized officer conducting the preliminary investigation from making his under the protective mantle of the copyright law. It is not a conclusive proof of copyright
own determination that a crime has been committed and that probable ownership. As it is, non-registration and deposit of the work within the prescribed period only
cause exists for purposes of filing the information. makes the copyright owner liable to pay a fine.[18]
As correctly observed by the Court of Appeals, the trial courts finding that the seized WHEREFORE, the petition is DENIED. The July 13, 2004 decision of the Court of
products are not copyrightable was merely preliminary as it did not finally and permanently Appeals in CA-G.R. SP No. 79887 and resolution dated September 15, 2004, are AFFIRMED.
adjudicate on the status and character of the seized items. MANLY could still file a separate
copyright infringement suit against the respondents because the order for the issuance or SO ORDERED.
quashal of a warrant is not res judicata.
Thus, in Vlasons Enterprises Corporation v. Court of Appeals[14] we held that: UNILEVER PHILIPPINES G.R. No. 119280
(PRC), INC.,
The proceeding for the seizure of property in virtue of a search Petitioner, Present:
warrant does not end with the actual taking of the property by the proper
officers and its delivery, usually constructive, to the court. The order for the PUNO, J., Chairperson,
issuance of the warrant is not a final one and cannot constitute res judicata. SANDOVAL-GUTIERREZ,
Such an order does not ascertain and adjudicate the permanent status or - v e r s u s - CORONA,
character of the seized property. By its very nature, it is provisional, AZCUNA and GARCIA,* JJ.
interlocutory. It is merely the first step in the process to determine the
character and title of the property. That determination is done in the criminal THE HONORABLE COURT
action involving the crime or crimes in connection with which the search OF APPEALS and PROCTER
warrant was issued. Hence, such a criminal action should be prosecuted, or AND GAMBLE PHILIPPINES,
commenced if not yet instituted, and prosecuted. The outcome of the INC.,
criminal action will dictate the disposition of the seized property Respondents. Promulgated:
We have also ruled in Ching v. Salinas, Sr., et al.[15] that: August 10, 2006
The RTC had jurisdiction to delve into and resolve the issue x-----------------------------------------x
whether the petitioners utility models are copyrightable and, if so, whether
he is the owner of a copyright over the said models. It bears stressing that
upon the filing of the application for search warrant, the RTC was duty- DECISION
bound to determine whether probable cause existed, in accordance with
Section 4, Rule 126 of the Rules of Criminal Procedure[.]
CORONA, J.:

1.14. On July 15, 1994, P&GP aired in the Philippines, the same Kite
television advertisement it used in Italy in 1986, merely dubbing
In this petition for review under Rule 45 of the Rules of Court, petitioner assails the February 24, the Italian language with Filipino for the same produce Ace
1995 decision[1] of the Court of Appeals (CA) in CA-G.R. SP No. 35242 entitled Unilever bleaching liquid which P&GP now markets in the Philippines.
Philippines (PRC), Inc. v. Honorable Fernando V. Gorospe, Jr. and Procter and Gamble
Philippines, Inc. (P&GP) which affirmed the issuance by the court a quo of a writ of preliminary 1.15. On August 1, 1994, Unilever filed a Complaint with the Advertising
injunction against it. The writ enjoined petitioner from using and airing, until further orders of the Board of the Philippines to prevent P&GP from airing the Kite
court, certain television commercials for its laundry products claimed to be identical or similar to television advertisement.[3]
its double tug or tac-tac key visual.[2]
On August 26, 1994, Judge Gorospe issued an order granting a temporary restraining
Petitioner alleges that the writ of preliminary injunction was issued by the trial court order and setting it for hearing on September 2, 1994 for Unilever to show cause why the writ of
(and affirmed by the CA) without any evidence of private respondents clear and unmistakable preliminary injunction should not issue. During the hearing on September 2, 1994, P&GP
right to the writ. Petitioner further contends that the preliminary injunction issued against it received Unilevers answer with opposition to preliminary injunction. P&GP filed its reply to
already disposed of the main case without trial, thus denying petitioner of any opportunity to Unilevers opposition to a preliminary injunction on September 6, 1994.
present evidence on its behalf.
During the hearing on September 9, 1994, Judge Gorospe ordered petitioner to submit
The antecedents show that on August 24, 1994, private respondent Procter and Gamble Phils., a sur-rejoinder. P&GP received Unilevers rejoinder to reply on September 13, 1994. The
Inc. filed a complaint for injunction with damages and a prayer for temporary restraining order following day, on September 14, 1994, P&GP filed its sur-reply to Unilevers rejoinder.
and/or writ of preliminary injunction against petitioner Unilever, alleging that:
On September 19, 1994, P&GP received a copy of the order dated September 16,
1.5. As early as 1982, a P&G subsidiary in Italy used a key visual in 1994 ordering the issuance of a writ of preliminary injunction and fixing a bond of P100,000. On
the advertisement of its laundry detergent and bleaching the same date, P&GP filed the required bond issued by Prudential Guarantee and Assurance,
products. This key visual known as the double-tug or tac- Inc.
tac demonstration shows the fabric being held by both hands and
stretched sideways. On September 21, 1994, petitioner appealed to the CA assigning the following errors
allegedly committed by the court a quo, to wit:
1.6. The tac-tac was conceptualized for P&G by the advertising
agency Milano and Gray of Italy in 1982. The tac-tac was used in PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS
the same year in an advertisement entitled All aperto to OF JURISDICTION AND WITH GRAVE ABUSE OF DISCRETION
demonstrate the effect on fabrics of one of P&GPs products, a AMOUNTING TO LACK OF JURISDICTION IN ISSUING THE WRIT OF
liquid bleach called Ace. PRELIMINARY INJUNCTION IN VIOLATION OF THE RULES ON
EVIDENCE AND PROCEDURE, PARTICULARLY OF SEC. 3 (a), RULE 58
xxxxxxxxx OF THE REVISED RULES OF COURT AND OF THE PREVAILING
JURISPRUDENCE.
1.7. Since then, P&G has used the tac-tac key visual in the
advertisement of its products. In fact, in 1986, in Italy, the tac- PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED
tac key visual was used in the television commercial for Ace SEPTEMBER 16, 1994, HAD, IN EFFECT, ALREADY PREJUDGED THE
entitled Kite. MERITS OF THE MAIN CASE.
1.8. P&G has used the same distinctive tac-tac key visual to local PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER
consumers in the Philippines. ACCORDING RELIEF TO A NON-PARTY IN CIVIL CASE NO. 94-2434
WITHOUT JURISDICTION.
xxxxxxxxx
PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD
1.10. Substantially and materially imitating the aforesaid tac- DEPRIVED PETITIONER OF SUBSTANTIVE AND PROCEDURAL DUE
tac key visual of P&GP and in blatant disregard PROCESS; PUBLIC RESPONDENT HAD FORECLOSED PETITIONERS
of P&GPs intellectual property rights, Unilever on 24 July 1993 RIGHT AND THE OPPORTUNITY TO CROSS-EXAMINE PROCTERS
started airing a 60 second television commercial TVC of its WITNESSES ABAD AND HERBOSA.[4]
Breeze Powerwhite laundry product called Porky. The said TVC
included a stretching visual presentation and sound effects almost
[identical] or substantially similar to P&GPs tac-tac key visual. On February 24, 1995, the CA rendered its decision finding that Judge Gorospe did
not act with grave abuse of discretion in issuing the disputed order. The petition for certiorari was
xxxxxxxxx thus dismissed for lack of merit.

After a careful perusal of the records, we agree with the CA and affirm its
decision in toto: The record clearly shows that respondent Judge followed the
(procedure provided for in Section 5, Rule 58, as amended by BP 224, and
Petitioner does not deny that the questioned TV advertisements Paragraph A(8) of the Interim Rules). In fact, the court a quo set the incident
are substantially similar to P&GPs double tug or tac-tac key for hearing on September 2, 1994, at which date petitioner was ordered to
visual. However, it submits that P&GP is not entitled to the relief demanded, show cause why the writ should not be issued. Petitioner filed an Opposition
which is to enjoin petitioner from airing said TV advertisements, for the to the application for preliminary injunction. The same incident was again
reason that petitioner has Certificates of Copyright Registration for which set for hearing on September 9, 1994, during which the parties made some
advertisements while P&GP has none with respect to its double-tug or tac- manifestations in support of their respective positions. Subsequent to such
tac key visual. In other words, it is petitioners contention that P&GP is not hearing petitioner filed a Reply to P&GPs Rejoinder to its Opposition. Under
entitled to any protection because it has not registered with the National the foregoing circumstances, it is absurd to even suggest that petitioner was
Library the very TV commercials which it claims have been infringed by not given its day in court in the matter of the issuance of the preliminary
petitioner. injunctive relief.
We disagree. Section 2 of PD 49 stipulates that the copyright for a xxxxxxxxx

work or intellectual creation subsists from the moment of its creation.
Accordingly, the creator acquires copyright for his work right upon its There was of course extreme urgency for the court a quo to act
creation. Contrary to petitioners contention, the intellectual creators exercise on plaintiffs application for preliminary injunction. The airing of TV
and enjoyment of copyright for his work and the protection given by law to commercials is necessarily of limited duration only. Without such temporary
him is not contingent or dependent on any formality or registration. relief, any permanent injunction against the infringing TV advertisements of
Therefore, taking the material allegations of paragraphs 1.3 to 1.5 which P&GP may possibly succeed in getting after the main case is finally
of P&GPs verified Complaint in the context of PD 49, it cannot be seriously adjudicated could be illusory if by then such advertisements are no longer
doubted that at least, for purposes of determining whether preliminary used or aired by petitioner. It is therefore not difficult to perceive the
injunction should issue during the pendency of the case, P&GP is entitled to possible irreparable damage which P&GP may suffer if respondent Judge
the injunctive relief prayed for in its Complaint. did not act promptly on its application for preliminary injunction.[5]
The second ground is likewise not well-taken. As adverted to

earlier, the provisional remedy of preliminary injunction will not issue unless
it is shown in the verified complaint that plaintiff is probably entitled to the Preliminary injunction is a provisional remedy intended to provide protection to parties
relief demanded, which consists in whole or in part in restraining the for the preservation of their rights or interests during the pendency of the principal action.[6] Thus,
commission or continuance of the acts complained of. In view of such Section1, Rule 58 of the Rules of Court provides:
requirement, the court has to make a tentative determination if the right
sought to be protected exists and whether the act against which the writ is Section 1. Preliminary injunction defined; classes. A preliminary
to be directed is violative of such right. Certainly, the courts determination injunction is an order granted at any stage of an action or proceeding prior
as to the propriety of issuing the writ cannot be taken as a prejudgment of to the judgment or final order, requiring a party or a court, agency or a
the merits of the case because it is tentative in nature and the writ may be person to refrain from a particular act or acts. It may also require the
dissolved during or after the trial if the court finds that plaintiff was not performance of a particular act or acts, in which case it shall be known as a
entitled to it. preliminary mandatory injunction.
xxxxxxxxx Injunction is resorted to only when there is a pressing necessity to avoid injurious
consequences which cannot be remedied under any standard compensation. [7] As correctly
Obviously, the determination made by the court a quo was only ruled by the CA, there was an extreme urgency to grant the preliminary injunction prayed for by
for purposes of preliminary injunction, without passing upon the merits of the P&GP considering that TV commercials are aired for a limited period of time only. In fact, this
case, which cannot be done until after a full-blown hearing is conducted. Court takes note of the fact that the TV commercial in issue ― the Kite TV advertisement ― is
no longer aired today, more than 10 years after the injunction was granted on September 16,
The third ground is patently unmeritorious. As alleged in the 1994.
Complaint P&GP is a subsidiary of Procter and Gamble Company (P&G) for
which the double tug or tac-tac key visual was conceptualized or created. In The sole objective of a writ of preliminary injunction is to preserve the status quo until
that capacity, P&GP used the said TV advertisement in the Philippines to the merits of the case can be heard fully.[8] A writ of preliminary injunction is generally based
promote its products. As such subsidiary, P&GP is definitely within the solely on initial and incomplete evidence.[9] Thus, it was impossible for the court a quo to fully
protective mantle of the statute (Sec. 6, PD 49). dispose of the case, as claimed by petitioner, without all the evidence needed for the full
resolution of the same. To date, the main case still has to be resolved by the trial court.
Finally, We find the procedure adopted by the court a quo to be in The issuance of a preliminary injunction rests entirely on the discretion of the court
order. and is generally not interfered with except in cases of manifest abuse. [10] There was no such

abuse in the case at bar, especially because petitioner was given all the opportunity to oppose
the application for injunction. The fact was, it failed to convince the court why the injunction
should not be issued. Thus, in Santos v. Court of Appeals,[11] we held that no grave abuse of
discretion can be attributed to a judge or body issuing a writ of preliminary injunction where a
party has not been deprived of its day in court as it was heard and it exhaustively presented all
its arguments and defenses.
WHEREFORE, the petition is hereby DENIED.
Costs against petitioner.
SO ORDERED.

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PATENTS: NOW, THEREFORE, by virtue of the powers vested in this Office by Republic Act

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(c) If, by reason of refusal of the patentee to grant a license or licenses

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Dear Mr. Abellada: xxxx

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xxxx 2. The transmission is through satellite;

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Ruling of the Court

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Opinion of the Secretary of Justice

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b. Searcher asks a question b. same

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(R) Other literary, scholarly, scientific and artistic works.

(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in

(F) Musical compositions, with or without words;

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