SISON OLAÑO, et.

Al vs, LIM ENG CO,

Facts:

The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc.
(Metrotech). Lim Eng Co (respondent), on the other hand, is the Chairman of LEC Steel
Manufacturing Corporation (LEC), a company which specializes in architectural metal
manufacturing. LEC was invited by the architects of the Manansala Project (Project), a high-
end residential building in Rockwell Center, Makati City, to submit design/drawings and
specifications for interior and exterior hatch doors. LEC complied by submitting on July 16,
2002, shop plans/drawings, including the diskette therefor, embodying the designs and
specifications required for the metal hatch doors.
After a series of consultations and revisions, the final shop plans/drawings were submitted by
LEC on January 15, 2004 and thereafter copied and transferred to the title block of Ski-First
Balfour Joint Venture (SKI-FB), the Project's contractor, and then stamped approved for
construction. LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior
and exterior hatch doors for the 7th to 22nd floors of the Project based on the final shop
plans/drawings. Sometime thereafter, LEC learned that Metrotech was also subcontracted to
install interior and exterior hatch doors for the Project's 23rd to 41st floors.
LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech,
however, insisted that no copyright infringement was committed because the hatch doors it
manufactured were patterned in accordance with the drawings provided by SKI-FB.

Issue:

Whether or not petitioners are guilty of copyright infringement.

Ruling:

No. Petitioners are not guilty of copyright infringement.

A copyright refers to "the right granted by a statute to the proprietor of an intellectual
production to its exclusive use and enjoyment to the extent specified in the statute." 49 Under
Section 177 of R.A. No. 8293, the Copyright or Economic Rights consist of the exclusive right
to carry out, authorize or prevent the following acts:

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

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3 The first public distribution of the original and each copy of the work by
sale or other forms of transfer of ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic
work, a work embodied in a sound recording, a computer program, a
compilation of data and other materials or a musical work in graphic
form, irrespective of the ownership of the original or the copy which is
 the subject of the rental;
177.5 Public display of the original or a copy of the work;
177.6 Public performance of the work; and
177.7 Other communication to the public of the work.
Copyright infringement is thus committed by any person who shall use original literary or
artistic works, or derivative works, without the copyright owner's consent in such a manner as
to violate the foregoing copy and economic rights. For a claim of copyright infringement to
prevail, the evidence on record must demonstrate: (1) ownership of a validly copyrighted
material by the complainant;and (2) infringement of the copyright by the respondent.

While both elements subsist in the records, they did not simultaneously concur so as to
substantiate infringement of LEC's two sets of copyright registrations.

The respondent failed to substantiate the alleged reproduction of the drawings/sketches of

hatch doors. There is no proof that the respondents reprinted the copyrighted
sketches/drawings of LEC's hatch doors. The raid conducted by the NBI on Metrotech's
premises yielded no copies or reproduction of LEC's copyrighted sketches/drawings of hatch
doors. What were discovered instead were finished and unfinished hatch doors.

Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under
Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts
and three-dimensional works relative to geography, topography, architecture or
science."51 As such, LEC's copyright protection there under covered only the hatch
door sketches/drawings and not the actual hatch door they depict.

As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated:
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere
statutory grant, the rights are limited to what the statute confers. It may be obtained
and enjoyed only with respect to the subjects and by the persons, and on terms
and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description.

Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches,
charts and three-dimensional works relative to geography, topography, architecture or
science, to be properly classified as a copyrightable class "I" work, what was copyrighted
were their sketches/drawings only, and not the actual hatch doors themselves. To constitute
infringement, the usurper must have copied or appropriated the original work of an
author or copyright proprietor, absent copying, there can be no infringement of
copyright.

"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.

The respondent claimed that the petitioners committed copyright infringement when they
fabricated/manufactured hatch doors identical to those installed by LEC. The petitioners could
not have manufactured such hatch doors in substantial quantities had they not reproduced
the copyrighted plans/drawings submitted by LEC to SK1-FB. This insinuation, without more,
does not suffice to establish probable cause for infringement against the petitioners.
"[Although the determination of probable cause requires less than evidence which would
justify conviction, it should at least be more than mere suspicion."

Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds
that the ownership thereof was not established by the evidence on record because the
element of copyrightability is absent.

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

it is true that where the complainant presents a copyright certificate in support of the claim of
infringement, the validity and ownership of the copyright is presumed. This presumption,
however, is rebuttable and it cannot be sustained where other evidence in the record casts
doubt on the question of ownership, 59 as in the instant case.

Moreover, "[t]he presumption of validity to a certificate of copyright registration merely orders

the burden of proof. The applicant should not ordinarily be forced, in the first instance, to
prove all the multiple facts that underline the validity of the copyright unless the respondent,
effectively challenging them, shifts the burden of doing so to the applicant." 60

Here, evidence negating originality and copyrightability as elements of copyright ownership

was satisfactorily proffered against LEC's certificate of registration.

From the foregoing description, it is clear that the hatch doors were not artistic works within
the meaning of copyright laws. A copyrightable work refers to literary and artistic works
defined as original intellectual creations in the literary and artistic domain.

A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an
opening that resembles a window equipped with an escape for use in case of fire or
emergency.64 It is thus by nature, functional and utilitarian serving as egress access during
emergency. It is not primarily an artistic creation but rather an object of utility designed to
have aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for
copyright.

A "useful article" defined as an article "having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey information" is excluded from
copyright eligibility.
The only instance when a useful article may be the subject of copyright protection is when it
incorporates a design element that is physically or conceptually separable from the underlying
product. This means that the utilitarian article can function without the design element. In such
an instance, the design element is eligible for copyright protection. 66

The design of a useful article shall be considered a pictorial, graphic, or sculptural work only
if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article. 67

A belt, being an object utility with the function of preventing one's pants from falling down, is in
itself not copyrightable. However, an ornately designed belt buckle which is irrelevant to or did
not enhance the belt's function hence, conceptually separable from the belt, is eligible for
copyright. It is copyrightable as a sculptural work with independent aesthetic value, and not as
an integral element of the belt's functionality. 68

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

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

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

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

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

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

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