University of the Philippines College of Law | Intellectual Property Law | LAW 134 A

Topic Copyright
Case Name 20TH CENTURY FOX FILM CORPORATION VS. COURT OF APPEALS
Case No. & G.R. Nos. 76649-51; August 19, 1988
Date
Ponente Guiterrez, Jr., J.

Summary (recit- 20th Century Fox Film Corp sought NBI assistance to conduct search and seizure for pirated tapes of
friendly) their films in videotape outlets in Metro Manila. The lower court issued the warrants but subsequently
lifted them on the basis that the NBI agent who acted on the warrants did not have personal
knowledge of the alleged piracy and during the application for the warrants, there was no
presentation of the original films and the alleged copies which would have proved that the subject of
the warrants were in fact unauthorized reproductions. They also found that the warrants were in the
nature of general warrants as the items described therein were items normally found in videotape
outlets. The SC affirmed this decision— there was no probable cause to issue the warrants.
Doctrine/s The essence of a copyright infringement is the similarity or at least substantial similarity of the
purported pirated works to the copyrighted work. Hence, the applicant must present to the court the
copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated
to determine whether the latter is an unauthorized reproduction of the former. This linkage of the
copyrighted films to the pirated films must be established to satisfy the requirements of probable
cause. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the
issuance of a search warrant.

Television sets, video cassette recorders, reminders and tape cleaners are articles which can be
found in a video tape store engaged in the legitimate business of lending or renting out betamax
tapes. In short, these articles and appliances are generally connected with, or related to a legitimate
business not necessarily involving piracy of intellectual property or infringement of copyright laws.
Hence, including these articles without specification and/or particularity that they were really
instruments in violating an Anti- Piracy law makes The search warrant too general which could result
in the confiscation of all items found in any video store.

RELEVANT FACTS

 Petitioner 20th Century Fox Film Corporation sought the National Bureau of Investigation's (NBI) assistance in the
conduct of searches and seizures in connection with the NBI’s anti-film piracy campaign.
o The letter-complaint alleged that certain videotape outlets all over Metro Manila are engaged in the
unauthorized sale and renting out of copyrighted films in videotape form which constitute violation of
Presidential Decree No. 49 (Decree on the Protection of Intellectual Property).
 The NBI conducted surveillance and investigation of the outlets pinpointed by the petitioner
o Filed 3 applications for search warrants against the video outlets owned by the private respondents. The
applications were consolidated and heard by the RTC Makati.
 On September 4, 1985, the lower court issued the desired search warrants.

 NBI accompanied by the petitioner's agents, raided the video outlets and seized the items described therein.

 Respondents filed a motion to lift search warrants and release seized properties
o The lower court then issued an order dated October 8, 1985, lifting the 3 search warrants

 The lower court denied a motion for reconsideration. CA affirmed the lifting.

ISSUE AND RATIO DECIDENDI

Issue Ratio
W/N the search warrants  The main issue hinges on the meaning of "probable cause" within the context of the
were properly lifted? YES. constitutional provision against illegal searches and seizures (Section 3, Article IV,
1973 Constitution, now, Section 2, Article Ill, 1987 Constitution.

 The petitioner maintains that the lower court issued the search warrants after proper
finding of probable cause justifying their issuance.
University of the Philippines College of Law | Intellectual Property Law | LAW 134 A
o According to the petitioner, the lower court arrived at this conclusion on the
basis of the depositions of applicant NBI's 2 witnesses which were taken
through searching questions and answers by the lower court.

(see notes below for discussion on the right against illegal search & seizure)

1) NO PERSONAL KNOWLEDGE:
 In this case, the lower court lifted the search warrants on the ground that they were
granted on the misrepresentations of applicant NBI and its witnesses that infringement
of copyright or a piracy of a particular film have been committed.

 As found out by the lower court, the NBI agents who acted as witnesses did not
have personal knowledge of the subject matter of their testimony which was the
alleged commission of the offense by the private respondents:

 Atty. Albino Reyes of the NBI stated that Atty. Domingo (petitioner’s
counsel) will testify on the video cassettes that were pirated, so Reyes
himself did not have personal knowledge of the alleged piracy.
 Meanwhile, witness Bacani also said that the video cassettes were pirated
without stating the manner it was pirated and that it was Atty. Domingo
that has knowledge of that fact.
o Only Atty. Domingo had personal knowledge. He said that the re-taping of the
allegedly pirated tapes was from master tapes allegedly belonging to 20 th Century
Fox.

2) TAPES WERE NOT SHOWN IN COURT:

 At the hearing of the Motion for Reconsideration, Atty. Albino Reyes testified that when
the complaint was brought to the NBI, the master tapes of the allegedly pirated tapes
were shown to him and he made comparisons of the tapes with those purchased by
their man Bacani.

 BUUUT, the lower court did not give much credence to his testimony in view of the fact
that the master tapes or at least the film reels of the allegedly pirated tapes were
not shown to the Court during the application. This gives some misgivings as to the
truth of that bare statement of the NBI agent on the witness stand.

 As the application and search proceedings is a prelude to the filing of criminal cases
under PD 49 (the copyright infringement law), and although what is required for the
issuance thereof is merely the presence of probable cause, that probable cause
must be satisfactory to the Court.

 Lacking in persuasive effect, the allegation that master tapes were viewed by the NBI
and were compared to the purchased and seized video tapes from the respondents'
establishments, it should be dismissed as not supported by competent evidence
and for that matter the probable cause hovers in that grey debatable twilight
zone between black and white resolvable in favor of respondents herein.

o MOREOVER, glaring is the fact that 'Cocoon,' the first video tape mentioned in
the search warrant, was not even duly registered or copyrighted in the
Philippines.

 LOWER COURT RULED THEREFORE, lacking the requisite presentation to the

Court of an alleged master tape for purposes of comparison with the purchased
evidence of the video tapes allegedly pirated, there was no way to determine
whether there really was piracy, or copying of the films.

SC AGREES WITH LOWER COURT (discussion on the concept of copyright and proving
infringement):
 University of the Philippines College of Law | Intellectual Property Law | LAW 134 A
 There is no truth, therefore, to the petitioner's allegation that the lower court based its
January 2, 1986 order only "on the fact that the original or master copies of the
copyrighted films were not presented during the application for search warrants, thus
leading it to conclude that it had been "misled by the applicant and his witnesses."

 The presentation of the master tapes of the copyrighted films from which the
pirated films were allegedly copied, was necessary for the validity of search
warrants against those who have in their possession the pirated films.
o The court cannot presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns.

 The essence of a copyright infringement is the similarity or at least substantial

similarity of the purported pirated works to the copyrighted work.

 Hence, the applicant must present to the court the copyrighted films to compare
them with the purchased evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized reproduction of the former.
o This linkage of the copyrighted films to the pirated films must be established to
satisfy the requirements of probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for the issuance
of a search warrant.

3) THE WARRANTS WERE GENERAL WARRANTS (see notes for discussion on general
warrants)

 The search warrants described the articles sought to be seized as follows:

“c) Television sets, Video Cassettes Recorders, rewinders, tape head cleaners,
accessories, equipments and other machines used or intended to be used in the
unlawful reproduction, sale, rental/lease distribution of the above-mentioned video
tapes which she is keeping and concealing in the premises above-described.” (p.
26, Rollo)

 Television sets, video cassette recorders, reminders and tape cleaners are articles
which can be found in a video tape store engaged in the legitimate business of lending
or renting out betamax tapes. In short, these articles and appliances are generally
connected with, or related to a legitimate business not necessarily involving
piracy of intellectual property or infringement of copyright laws.
 Including these articles without specification and/or particularity that they were really
instruments in violating an Anti-Piracy law makes the search warrant too general which
could result in the confiscation of all items found in any video store. In fact, this
actually happened in the instant case.

(Some concluding words):

 A careful review of the record of the case shows that the respondent Court did not
commit a grave abuse of discretion when it issued the questioned orders.
o Far from being despotic or arbitrary, the assailed orders were motivated by
a noble desire of rectifying an error, much so when the erroneous
findings collided with the constitutional rights of the private
respondents.

 The proliferation of pirated tapes of films not only deprives the government of much
needed revenues but is also an indication of the widespread breakdown of national
order and discipline. Courts should not impose any unnecessary roadblocks in the way
of the anti-film piracy campaign. However, the campaign cannot ignore or violate
constitutional safeguards. To say that the problem of pirated films can be solved
only by the use of unconstitutional shortcuts is to denigrate the long history and
experience behind the searches and seizures clause of the Bill of Rights. The trial
court did not commit reversible error.
RULING
 University of the Philippines College of Law | Intellectual Property Law | LAW 134 A
WHEREFORE, the instant petition is DISMISSED. The questioned decision and resolution of the Court of Appeals are
AFFIRMED.

Notes: (Alvarez v. Court of First Instance, 64 Phil. 33; Burgos,

Sr. v. Chief of Staff, AFP, supra).
Section 2, Article III of the Constitution:
On general warrants: In the case of Burgos v. Chief of
The right of the people to be secure in their persons, Staff, AFP supra, we stated: Another factor which makes
houses, papers, and effects against unreasonable the search warrants under consideration constitutionally
searches and seizures of whatever nature and for any objectionable is that they are in the nature of general
purpose shall be inviolable, and no search warrant or warrants.
warrant of arrest shall issue except upon probable cause
to be determined personally by the judge after In Stanford v. State of Texas (379 U.S. 476,13 L ed 2nd
examination under oath or affirmation of the complainant 431), the search warrant which authorized the search for
and the witnesses he may produce, and particularly 'books, records, pamphlets, cards, receipts, lists,
describing the place to be searched and the persons or memoranda, pictures, recordings and other written
things to be seized. instruments concerning the Communist Parties of Texas,
and the operations of the Community Party in Texas,"
On the importance of the right: This constitutional right was declared void by the U.S. Supreme Court for being
against illegal search and seizure protects a citizen too general. In like manner, directions to "seize any
against wanton and unreasonable invasion of his privacy evidence in connection with the violation of SDC 13-
and liberty as to his person, papers and effects. We 3703 or otherwise' have been held too general, and that
have explained in the case of People v. Burgos (144 portion of a search warrant which authorized the seizure
SCRA 1) citing Villanueva v. Querubin (48 SCRA 345) of any "paraphernalia which could be used to violate
why the right is so important: “It is deference to one's Sec. 54-197 of the Connecticut General Statutes [the
personality that lies at the core of this right, but it could statute dealing with the crime of conspiracy]"' was held
be also looked upon as a recognition of a constitutionally to be a general warrant, and therefore invalid (68 Am.
protected area, primarily one's home, but not necessarily Jur. 2d., pp. 736-737). The description of the articles
thereto confined. (Cf. Hoffa v. United States, 385 US 293 sought to be seized under the search warrants in
119661) What is sought to be guarded is a man's question cannot be characterized differently. (at pp. 814-
prerogative to choose who is allowed entry to his 815)
residence. In that haven of refuge, his individuality can
assert itself not only in the choice of who shall be Undoubtedly, a similar conclusion can be deduced from
welcome but likewise in the kind of objects he wants the description of the articles sought to be confiscated
around him. There the state, however powerful, does not under the questioned search warrants
as such have access except under the circumstances
above noted, for in the traditional formulation, his house,
however humble, is his castle … [The] constitutional
right as the embodiment of a "spiritual concept: the belief
that to value the privacy of home and person and to
afford its constitutional protection against the long reach
of government is no less than to value human dignity,
and that his privacy must not be disturbed except in case
of overriding social need, and then only under stringent
procedural safeguards."(ibid, p. 74).”

On the definition of probable cause: Burgos, Sr. v. Chief

of Staff, AFP (133 SCRA 800): defined probable cause
for a valid search "as such facts and circumstances
which would lead a reasonably discreet and prudent
man to believe that an offense has been committed and
that the objects sought in connection with the offense
are in the place sought to be searched."

This constitutional provision also demands "no less than

personal knowledge by the complainant or his witnesses
of the facts upon which the issuance of a search warrant
may be justified" in order to convince the judge, not the
individual making the affidavit and seeking the issuance
of the warrant, of the existence of a probable cause.