WILSON ONG CHING KIAN CHUAN, petitioner, vs.
aside the order of the trial court finding that petitioner's
HON. COURT OF APPEALS and LORENZO TAN,
respondents.
Cyril A. Tagle for petitioner.
Estrella M. Briones for private respondent.
SYNOPSIS
Petitioner filed against private respondent a complaint
for infringement of copyright with damages and prayer
for temporary restraining order or writ of preliminary
injunction with the Regional Trial Court of Quezon City.
Petitioner alleged that he was the holder of a Certificate
of Copyright Registration over the cellophane wrapper
with the two-dragon design, and that private respondent
used an identical wrapper in his business. Petitioner
prayed that private respondent be restrained from using
the wrapper. Private respondent opposed the
petitioner's application for a writ of preliminary injunction
on the ground that petitioner was not entitled to an
injunction. Private respondent averred that petitioner
has no "clear right" over the use of the copyrighted
wrapper since the PAGODA trademark and label were
first adopted and used and have been duly registered by
Ceroilfood Shandong not only in China but in nearly 20
countries and regions worldwide. Petitioner allegedly
was not the original creator of the label, but merely
copied the design of Ceroilfood Shandong. The trial
court eventually issued the writ in favor of petitioner.
When his motion for reconsideration was denied by the
trial court, private respondent elevated the case before
the Court of Appeals contending that the trial court
committed grave abuse of discretion when it granted the
writ of preliminary injunction. The appellate court set
copyrighted wrapper is a copy of Ceroilfood Shandong.
Hence, petitioner elevated the matter before the
Supreme Court.
A person to be entitled to a copyright must be the original
creator of the work. He must have created it by his own
skill, labor and judgment without directly copying or
evasively imitating the work of another. The grant of
preliminary injunction in a case rests on the sound
discretion of the court with the caveat that it should be
made with extreme caution. Its grant depends chiefly on
the extent of doubt on the validity of the copyright,
existence of infringement, and the damages sustained
by such infringement. In the Court's view, the copies of
the certificates of copyright registered in the name of
Ceroilfood Shandong sufficiently raise reasonable
doubt. With such a doubt, the preliminary injunction is
unavailing. Hence, the Court denied petitioner's prayer
for a writ of preliminary injunction.
The Court, however, set aside the finding of the Court of
Appeals that the design of petitioner's wrapper is a copy
of the wrapper allegedly registered by Ceroilfood
Shandong for being premature. That matter remains for
decision after appropriate proceedings at the trial court.
SYLLABUS
1. REMEDIAL LAW; PROVISIONAL REMEDIES;
PRELIMINARY INJUNCTION; IMPROPERLY
GRANTED WHERE COMPLAINANT'S TITLE WAS
DISPUTED. — A person to be entitled to a copyright
must be the original creator of the work. He must have
created it by his own skill, labor and judgment without
directly copying or evasively imitating the work of
another. The grant of preliminary injunction in a case
rests on the sound discretion of the court with the caveat
that it should be made with extreme caution. Its grant
depends chiefly on the extent of doubt on the validity of
the copyright, existence of infringement, and the
damages sustained by such infringement. In our view,
the copies of the certificates of copyright registered in
the name of Ceroilfood Shandong sufficiently raise
reasonable doubt. With such a doubt, the preliminary
injunction is unavailing. In Medina vs. City Sheriff,
Manila, 276 SCRA 133, 139 (1997), where the
complainant's title was disputed, we held that injunction
was not proper.
2. ID.; ID.; ID.; GRANT OF THE WRIT WILL BE SET
ASIDE FOR HAVING BEEN ISSUED WITH GRAVE
ABUSE OF DISCRETION ABSENT PROOF OF A
LEGAL RIGHT AND THE INJURY SUFFERED BY THE
PLAINTIFF. — To be entitled to an injunctive writ,
petitioner must show, inter alia, the existence of a clear
and unmistakable right and an urgent and paramount
necessity for the writ to prevent serious damage. From
the above discussion, we find that petitioner's right has
not been clearly and unmistakably demonstrated. That
right is what is in dispute and has yet to be determined.
In Developers Group of Companies, Inc. vs. Court of
Appeals, 219 SCRA 715, 722-723 (1993), we held that
in the absence of proof of a legal right and the injury
sustained by the plaintiff, an order of the trial court
granting the issuance of an injunctive writ will be set
aside, for having been issued with grave abuse of
discretion. Conformably, there was no abuse of
discretion by the Court of Appeals when it issued its own
order to restrain the enforcement of the preliminary
injunction issued by the trial court.
3. ID.; ID.; ID.; JUDGMENT OF THE COURT OF
APPEALS WHICH TOUCH ON THE MERITS OF THE
INFRINGEMENT CASE CONSIDERED PREMATURE
WHERE ONLY ISSUE RAISED IS CORRECTNESS OF
THE GRANT THEREOF. — We note that the complaint
initially filed with the RTC was for infringement of
copyright. The trial court's resolution subject of Tan's
petition under Rule 65 before the CA concerns the
correctness of the grant of the writ of preliminary
injunction. The only issue brought before the CA
involved the grave abuse of discretion allegedly
committed by the trial court in granting the writ of
preliminary injunction. The Court of Appeals in declaring
that the wrapper of petitioner is a copy of Ceroilfood
Shandong's wrapper went beyond that issue and
touched on the merits of the infringement case, which
remains to be decided by the trial court. In our view, it
was premature for the Court of Appeals to declare that
the design of petitioner's wrapper is a copy of the
wrapper allegedly registered by Ceroilfood Shandong.
That matter remains for decision after appropriate
proceedings at the trial court.
DECISION
QUISUMBING, J p:
This petition for review 1 seeks to annul the decision 2
dated August 27, 1997 of the Court of Appeals which set
aside the resolutions 3 dated October 13 and December
15, 1993 as well as the order dated March 1, 1994 of the
Regional Trial Court of Quezon City, Branch 94. 4
Petitioner Wilson Ong Ching Kian Chuan ("Ong"),
imports vermicelli from China National Cereals Oils and
Foodstuffs Import and Export Corporation, based in
Beijing, China, under the firm name C.K.C. Trading. He
repacks it in cellophane wrappers with a design of two-
dragons and the TOWER trademark on the uppermost
portion. Ong acquired a Certificate of Copyright
Registration from the National Library on June 9, 1993
on the said design. HCITDc
Ong discovered that private respondent Lorenzo Tan
repacked his vermicelli he imports from the same
company but based in Qingdao, China in a "nearly"
identical wrapper. On September 16, 1993, Ong filed
against Tan a verified complaint for infringement of
copyright with damages and prayer for temporary
restraining order or writ of preliminary injunction with the
Regional Trial Court in Quezon City. Ong alleged that he
was the holder of a Certificate of Copyright Registration
over the cellophane wrapper with the two-dragon
design, and that Tan used an identical wrapper in his
business. In his prayer for a preliminary injunction in
addition to damages, he asked that Tan be restrained
from using the wrapper. He said he would post a bond
to guarantee the payment of damages resulting from the
issuance of the writ of preliminary injunction.
The trial court issued a temporary restraining order on
the same date the complaint was filed. Tan filed an
opposition to Ong's application for a writ of preliminary
injunction with counter-application for the issuance of a
similar writ against Ong. Tan alleged that Ong was not
entitled to an injunction. According to Tan, Ong did not
have a clear right over the use of the trademark Pagoda
and Lungkow vermicelli as these were registered in the
name of CHINA NATIONAL CEREALS OIL AND
FOODSTUFFS IMPORT AND EXPORT
CORPORATION, SHANDONG CEREALS AND OILS
BRANCH (hereafter Ceroilfood Shandong), based in
Qingdao, China. Further, Tan averred that he was the
exclusive distributor in the Philippines of the Pagoda and
Lungkow vermicelli and was solely authorized to use
said trademark. He added that Ong merely copied the
two-dragon design from Ceroilfood Shandong which had
the Certificates of Registration issued by different
countries. He concluded that Ong's Certificate of
Copyright Registration was not valid for lack of
originality.
On September 30, 1993, Ong countered Tan's
opposition to the issuance of the writ of preliminary
injunction.
On October 13, 1993, the court issued the writ in Ong's
favor upon his filing of a P100,000.00 bond. 5
Tan filed a motion to dissolve the writ of preliminary
injunction, but the trial court denied it on December 15,
1993. 6 The motion for reconsideration was also denied
on March 1, 1994.
Tan elevated the case to the Court of Appeals via a
special civil action for certiorari with a prayer for the
issuance of a TRO and/or writ of preliminary injunction.
Ong filed an opposition to Tan's prayer for an issuance
of TRO and/or writ of preliminary injunction on the
ground that the trial court did not commit a grave abuse
of discretion in issuing the writ in his favor.
After oral argument, the Court of Appeals rendered a discretion" is hereby deleted
decision on August 8, 1994, setting aside the trial court's in our resolution dated 08
order. It decreed: August 1994. In all other
WHEREFORE, the petition is GIVEN respects, said resolution must
DUE COURSE, and be maintained. cCSEaA
GRANTED. The order dated
October 13, 1993 and related
orders, as well as the writ of
preliminary injunction issued However, let a writ of preliminary
by the respondent court, are injunction be issued enjoining
SET ASIDE as issued with the herein respondents and
grave abuse of discretion. No any and all persons acting for
costs. and in their behalf from
enforcing and/or
implementing the Writ of
Preliminary Injunction issued
SO ORDERED. 7 on October 15, 1993 pursuant
to the Resolution dated
October 13, 1993 of the
PUBLIC RESPONDENT in
Ong filed a motion for reconsideration and on January 3, Civil Case No. Q-93-17628
1995, the Court of Appeals modified its August 8, 1994 entitled "WILSON ONG
order as follows: CHING KIAN CHUAN, ETC.
vs. LORENZO TAN, ETC."
WHEREFORE the phrase "the order upon petitioner's filing of a
dated October 13, 1993 and bond of P200,000.00.
related orders, as well as the
writ of preliminary injunction
issued by the respondent
court, are SET ASIDE as The Branch Clerk of Court of the RTC,
issued with grave abuse of Branch 94, Quezon City is
 directed to elevate the ASIDE and our injunction
records of Civil Case No. 293- heretofore issued made
17128 within TEN (10) DAYS permanent.
from notice.

IT IS SO ORDERED. 9
The parties are given THIRTY (30)
DAYS from notice to file their
memorandum or any
pertinent manifestation on the On October 17, 1997, Ong filed the instant petition for
matter, after which the case review, claiming that the Court of Appeals committed
shall be considered submitted grave and serious errors tantamount to acting with grave
for decision. abuse of discretion and/or acting without or in excess of
its jurisdiction:
I. . . . WHEN IT ISSUED A PERMANENT
PRELIMINARY INJUNCTION
SO ORDERED. 8 IN FAVOR OF THE PRIVATE
RESPONDENT WHEN THE
LATTER'S RIGHT TO SUCH
A RELIEF IS NOT CLEAR,
Pursuant to the Court of Appeals' resolution on January DOUBTFUL AND HAS NO
16, 1996, the parties submitted their memoranda. On LEGAL OR FACTUAL
August 27, 1997, the appellate court promulgated its BASIS.
decision, decreeing as follows:
WHEREFORE, the resolutions dated
October 13, 1993 and
December 15, 1993 as well A. CERTIFICATE OF COPYRIGHT
as the order dated March 1, REGISTRATION
1994 — all in Civil Case No. JUSTIFY
Q-93-17628 are hereby SET ISSUANCE OF
 WRIT OF II. . . . BY 'INTERFERING' WITH THE
PRELIMINARY JUDICIAL DISCRETION OF
INJUNCTION THE TRIAL COURT.
UNDER P.D. NO.
49.

A. RESPONDENT COURT OF
APPEALS'
B. ISSUANCE OF PRELIMINARY INTERFERENCE
INJUNCTION MUST WITH THE
BE BASED ON DISCRETION OF
CLEAR AND TRIAL COURT
UNMISTAKABLE CONSTITUTES
RIGHT WHICH GRAVE ABUSE OF
PETITIONER HAD DISCRETION.
AND WHICH RIGHT
WAS INVADED BY
THE PRIVATE
RESPONDENT. III. . . . BY ISSUING A WRIT OF
PRELIMINARY INJUNCTION
IN FAVOR OF THE PRIVATE
RESPONDENT AND
C. COURT OF APPEALS' DECISION DISREGARDING THE WRIT
OF AUGUST 8, 1994 OF PRELIMINARY
AND ITS INJUNCTION ISSUED BY
RESOLUTION OF THE TRIAL COURT WHOM
JANUARY 3, 1995 (SIC), UNDER THE
RESULTS IN JANUARY 13, 1995
CONFUSION. RESOLUTION OF
TACEDI RESPONDENT COURT OF
APPEALS, WAS
 JUDICIALLY HELD NOT TO A. COURT OF APPEALS PREJUDGED
HAVE COMMITTED ANY THE CASE
GRAVE ABUSE OF REMANDED TO
DISCRETION IN THE THE TRIAL COURT
ISSUANCE OF THE
OCTOBER 13, 1993 AND
'RELATED ORDERS'.
The issues for our determination are: Was the issuance
of the writ of preliminary injunction proper? Was there
grave abuse of discretion committed by the Court of
A. ISSUANCE OF WRIT OF Appeals when it set aside the order of the trial court, then
PRELIMINARY issued a judgment touching on the merits?
INJUNCTION Petitioner avers that the CA erred in issuing a
ADDRESSED TO preliminary injunction in private respondent's favor. He
THE SOUND says, firstly, that he is more entitled to it. He states that
DISCRETION OF as holder of the Certificate of Copyright Registration of
THE TRIAL COURT. the twin-dragon design, he has the protection of P.D. No.
49. 10 Said law allows an injunction in case of
infringement. Petitioner asserts that private respondent
has no registered copyright and merely relies on the
IV. . . . WHEN IT MADE ITS OWN trademark of his principal abroad, which insofar as
FINDINGS AND Philippine laws is concerned, cannot prevail over the
CONCLUSIONS, PRE- petitioner's copyright. IEAaST
EMPTING THE TRIAL Private respondent, for his part, avers that petitioner has
COURT AND PRE-JUDGING no "clear right" over the use of the copyrighted wrapper
THE CASE, THUS LEAVING since the PAGODA trademark and label were first
THE TRIAL COURT WITH adopted and used and have been duly registered by
NOTHING TO RULE UPON. Ceroilfood Shandong not only in China but in nearly 20
countries and regions worldwide. Petitioner was not the
original creator of the label, but merely copied the design
of Ceroilfood Shandong. Private respondent presented
copies of the certificates of copyright registration in the
name of Ceroilfood Shandong issued by at least twenty
countries and regions worldwide which although
unauthenticated are, according to him, sufficient to
provide a sampling of the evidence needed in the
determination of the grant of preliminary injunction. 11
Private respondent alleges, that the trademark
PAGODA BRAND was registered in China on October
31, 1979 12 while the trademark LUNGKOW
VERMICELLI WITH TWO-DRAGON DEVICE was
registered on August 15, 1985. 13
To resolve this controversy, we have to return to basics.
A person to be entitled to a copyright must be the original
creator of the work. He must have created it by his own
skill, labor and judgment without directly copying or
evasively imitating the work of another. 14 The grant of
preliminary injunction in a case rests on the sound
discretion of the court with the caveat that it should be
made with extreme caution. 15 Its grant depends chiefly
on the extent of doubt on the validity of the copyright,
existence of infringement, and the damages sustained
by such infringement. 16 In our view, the copies of the
certificates of copyright registered in the name of
Ceroilfood Shandong sufficiently raise reasonable
doubt. With such a doubt, the preliminary injunction is
unavailing. 17 In Medina vs. City Sheriff, Manila, 276
SCRA 133, 139 (1997), where the complainant's title
was disputed, we held that injunction was not proper.
Petitioner Ong argues that the Court of Appeals erred
and contradicted itself in its January 3, 1995 Resolution,
where it deleted the phrase "the order dated October 13,
1993 and related orders, as well as the writ of
preliminary injunction issued by the respondent court,
are SET ASIDE as issued with grave abuse of
discretion" in its August 8, 1994 decision, and at the
same time issued a writ of preliminary injunction in Tan's
favor.
Ong's claim (that the Court of Appeals in deleting the
aforequoted phrase in the August 8, 1994 decision
abandoned its earlier finding of grave abuse of discretion
on the part of the trial court), however, is without logical
basis. The appellate court merely restated in its own
words the issue raised in the petition: from a) whether
the RTC committed grave abuse of discretion, to b)
whether Tan was entitled to an injunctive relief. Then it
clarified that the relief sought is a prohibition against Ong
and his agents from enforcing the writ of preliminary
injunction. Properly understood, an order enjoining the
enforcement of a writ of preliminary injunction issued by
the RTC in a certiorari proceeding under Rule 65 of the
Rules of Court effectively sets aside the RTC order for
being issued with grave abuse of discretion. HDTSCc
To be entitled to an injunctive writ, petitioner must show,
inter alia, the existence of a clear and unmistakable right
and an urgent and paramount necessity for the writ to
prevent serious damage. 18 From the above discussion,
we find that petitioner's right has not been clearly and
unmistakably demonstrated. That right is what is in
dispute and has yet to be determined. In Developers
Group of Companies, Inc. vs. Court of Appeals, 219
SCRA 715, 722-723 (1993), we held that in the absence
of proof of a legal right and the injury sustained by the
plaintiff, an order of the trial court granting the issuance
of an injunctive writ will be set aside, for having been
issued with grave abuse of discretion. Conformably,
there was no abuse of discretion by the Court of Appeals SO ORDERED.
when it issued its own order to restrain the enforcement ||| (Ong Ching Kian Chuan v. Court of Appeals, G.R. No.
of the preliminary injunction issued by the trial court. 130360, [August 15, 2001], 415 PHIL 365-375)
Finally, we note that the complaint initially filed with the
RTC was for infringement of copyright. The trial court's
resolution subject of Tan's petition under Rule 65 before
the CA concerns the correctness of the grant of the writ
of preliminary injunction. The only issue brought before
the CA involved the grave abuse of discretion allegedly
committed by the trial court in granting the writ of
preliminary injunction. The Court of Appeals in declaring
that the wrapper of petitioner is a copy of Ceroilfood
Shandong's wrapper went beyond that issue and
touched on the merits of the infringement case, which
remains to be decided by the trial court. 19 In our view,
it was premature for the Court of Appeals to declare that
the design of petitioner's wrapper is a copy of the
wrapper allegedly registered by Ceroilfood Shandong.
That matter remains for decision after appropriate
proceedings at the trial court.
WHEREFORE, the instant petition is PARTIALLY
GRANTED. The prayer for a writ of preliminary injunction
to prohibit Tan from using the cellophane wrapper with
two-dragon device is denied, but the finding of the
respondent appellate court that Ong's copyrighted
wrapper is a copy of that of Ceroilfood Shandong is SET
ASIDE for being premature. The Regional Trial Court of
Quezon City, Branch 94, is directed to proceed with the
trial to determine the merits of Civil Case No. 33779
expeditiously. Let the records of this case be
REMANDED to said trial court promptly.
No pronouncement as to costs.

VENANCIO SAMBAR, doing business under the
name and style of CVS Garment Enterprise,
petitioner, vs. LEVI STRAUSS & CO., and LEVI
STRAUSS (PHIL.), INC., respondents.
Tan Acut & Lopez for petitioner.
Poblador Bautista & Reyes for respondents.
SYNOPSIS
Private respondents filed a complaint against petitioner
alleging that Levi Strauss and Co. (LS & Co.), an
internationally known clothing manufacturer, owns the
arcuate design trademark which was registered under
U.S. Trademark Registration and in the Principal
Register of trademarks with the Philippine Patent
Officer; that through a Trademark Technical Data and
Technical Assistance Agreement with Levi Strauss
(Phil.), Inc. (LSPI), LS & Co. granted LSPI a non-
exclusive license to use the arcuate trademark in its
manufacture and sale of Levi's pants, jackets and shirts
in the Philippines; that LS & Co also appointed LSPI as
its agent and attorney-in-fact to protect its trademark in
the Philippines; and that sometime in 1987, CVS
Garment and Industrial Company (CVSGIC) and
Venancio Sambar, without consent and authority of
private respondents and in infringement and unfair
competition, sold and advertised, and despite demands
to cease and desist, continued to manufacture, sell and
advertise denim pants under the brand name
"Europress" with back pockets bearing a design similar
to the arcuate trademark of private respondents, thereby
causing confusion on the buying public, prejudicial to
private respondent's goodwill and property right. The
trial court ruled in favor of private respondents, which
was affirmed by the Court of Appeals. Hence, this
petition.
The Supreme Court ruled that factual matters and
factual findings of the trial court, concurred in by the
Court of Appeals, are final and binding on this Court.
Both the courts below found that petitioner had a
copyright over Europress' arcuate design and that he
consented to the use of said design by CVSGIC. The
Supreme Court is bound by this finding, especially in the
absence of a showing that it was tainted with
arbitrariness or palpable error. It must be stressed that it
was immaterial whether or not petitioner was connected
with CVSGIC. What is relevant is that petitioner had a
copyright over the design and that he allowed the use of
the same by CVSGIC. The Supreme Court found no
reason to disturb the findings of the Court of Appeals that
Europress' use of the arcuate design was an
infringement of the Levi's design.
SYLLABUS
1. REMEDIAL LAW; APPEAL; PETITION FOR REVIEW
BEFORE THE SUPREME COURT; FACTUAL
QUESTIONS CANNOT BE RAISED THEREIN. — The
basic rule is that factual questions are beyond the
province of this Court in a petition for review. Although
there are exceptions to this rule, this case is not one of
them. Hence, we find no reason to disturb the findings of
the Court of Appeals that Europress' use of the arcuate
design was an infringement of the Levi's design.
2. ID.; EVIDENCE; CREDIBILITY; FACTUAL
FINDINGS OF TRIAL COURT, CONCURRED IN BY
THE COURT OF APPEALS, ARE FINAL AND BINDING
ON THE SUPREME COURT; CASE AT BAR. —
[F]actual findings of the trial court, concurred in by the
Court of Appeals, are final and binding on this Court.
Both the courts below found that petitioner had a
copyright over Europress' arcuate design and that he
consented to the use of said design by CVSGIC. We are
bound by this finding, especially in the absence of a
showing that it was tainted with arbitrariness or palpable
error. It must be stressed that it was immaterial whether
or not petitioner was connected with CVSGIC. What is
relevant is that petitioner had a copyright over the design
and that he allowed the use of the same by CVSGIC.
3. ID.; ID.; BURDEN OF PROOF IN CIVIL CASES;
RESTS ON DEFENDANT IF IN HIS ANSWER HE
ALLEGES AN AFFIRMATIVE DEFENSE; CASE AT
BAR. — Pertinent is Section 1, Rule 131 of the Rules of
Court which provides that the burden of proof is the duty
of a party to prove the truth of his claim or defense, or
any fact in issue by the amount of evidence required by
law. In civil cases, the burden of proof may be on either
the plaintiff or the defendant. It is on the latter, if in his
answer he alleges an affirmative defense, which is not a
denial of an essential ingredient in the plaintiff's cause of
action, but is one which, if established, will be a good
defense — i.e., an "avoidance" of the claim, which prima
facie, the plaintiff already has because of the
defendant's own admissions in the pleadings.
Petitioner's defense in this case was an affirmative
defense. He did not deny that private respondents
owned the arcuate trademark nor that CVSGIC used on
its products a similar arcuate design. What he averred
was that although he owned the copyright on the
Europress arcuate design, he did not allow CVSGIC to
use it. He also said he was not connected with CVSGIC.
These were not alleged by private respondents in their
pleadings, and petitioner therefore had the burden to
prove these.
DECISION
QUISUMBING, J p:
This petition for review on certiorari prays for the reversal
of the decision dated January 30, 1998, of the Court of
Appeals in CA-G.R. CV No. 51553. That decision
affirmed the decision in Civil Case No. 88-2220 of the
Regional Trial Court, Branch 66, Makati City, making
permanent the writ of preliminary injunction, ordering
CVS Garment and Industrial Company (CVSGIC) and
petitioner Venancio Sambar to pay private respondents
jointly and solidarily the sum of P50,000 as temperate
and nominal damages, P10,000 as exemplary damages,
and P25,000 as attorney's fees and litigation costs, and
ordering the Director of the National Library to cancel
Copyright Registration No. 1-1998 in the name of
Venancio Sambar.
The facts are as follows:
On September 28, 1987, private respondents, through a
letter from their legal officer, demanded that CVS
Garment Enterprises (CVSGE) desist from using their
stitched arcuate design on the Europress jeans which
CVSGE advertised in the Manila Bulletin.
Atty. Benjamin Gruba, counsel of CVSGE, replied that
the arcuate design on the back pockets of Europress
jeans was different from the design on the back pockets
of Levi's jeans. He further asserted that his client had a
copyright on the design it was using.
Thereafter, private respondents filed a complaint against
Sambar, doing business under the name and style of
CVSGE. Private respondents also impleaded the
Director of the National Library. Summons was sent to
Sambar in his business address at 161-B Iriga corner
Retiro, La Loma, Quezon City.
Atty. Gruba claimed that he erroneously received the
original summons as he mistook it as addressed to his
client, CVSGIC. He returned the summons and the
pleadings and manifested in court that CVSGE, which
was formerly doing business in the premises, already
stopped operation and CVSGIC took over CVSGE's
occupation of the premises. He also claimed he did not
know the whereabouts of Sambar, the alleged owner of
CVSGE.
Thereafter, private respondents amended their
complaint to include CVSGIC. When private
respondents learned the whereabouts of Sambar and
CVSGE, the case was revived.
Private respondents alleged in their complaint that Levi
Strauss and Co. (LS&Co.), an internationally known
clothing manufacturer, owns the arcuate design
trademark which was registered under U.S. Trademark
Registration No. 404, 248 on November 16, 1943, and
in the Principal Register of trademarks with the
Philippine Patent Office under Certificate of Registration
No. 20240 issued on October 8, 1973; that through a
Trademark Technical Data and Technical Assistance
Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972,
LS&Co. granted LSPI a non-exclusive license to use the
arcuate trademark in its manufacture and sale of Levi's
pants, jackets and shirts in the Philippines; that in 1983,
LS&Co. also appointed LSPI as its agent and attorney-
in-fact to protect its trademark in the Philippines; and that
sometime in 1987, CVSGIC and Venancio Sambar,
without the consent and authority of private respondents
and in infringement and unfair competition, sold and
advertised, and despite demands to cease and desist,
continued to manufacture, sell and advertise denim
pants under the brand name "Europress" with back
pockets bearing a design similar to the arcuate
trademark of private respondents, thereby causing
confusion on the buying public, prejudicial to private
respondents' goodwill and property right. DEcTCa
In its answer, CVSGIC admitted it manufactured, sold
and advertised and was still manufacturing and selling
denim pants under the brand name of "Europress,"
bearing a backpocket design of two double arcs meeting IN VIEW OF THE FOREGOING,
in the middle. However, it denied that there was judgment is hereby rendered:
infringement or unfair competition because the display
rooms of department stores where Levi's and Europress
jeans were sold, were distinctively segregated by
billboards and other modes of advertisement. CVSGIC a) making the writ of preliminary
avers that the public would not be confused on the injunction permanent;
ownership of such known trademark as Levi's, Jag,
Europress, etc. Also, CVSGIC claimed that it had its own
original arcuate design, as evidenced by Copyright
Registration No. 1-1998, which was very different and
distinct from Levi's design. CVSGIC prayed for actual, b) ordering the defendants CVS
moral and exemplary damages by way of counterclaim. Garment and Industrial
Petitioner Venancio Sambar filed a separate answer. He Company and Venancio
denied he was connected with CVSGIC. He admitted Sambar to pay the plaintiffs
that Copyright Registration No. 1-1998 was issued to jointly and solidarily the sum
him, but he denied using it. He also said he did not of P50,000.00 as temperate
authorize anyone to use the copyrighted design. He and nominal damages, the
counterclaimed for moral and exemplary damages and sum of P10,000.00 as
payment of attorney's fees. exemplary damages, and the
After hearing, the trial court issued a writ of preliminary sum of P25,000.00 as
injunction enjoining CVSGIC and petitioner from attorney's fees and litigation
manufacturing, advertising and selling pants with the expenses and to pay the
arcuate design on their back pockets. CVSGIC and costs.
petitioner did not appear during the October 13 and 27,
1993 hearings, when they were to present evidence.
Consequently, the trial court ruled that they waived their
right to present evidence. SO ORDERED. 1

On May 3, 1995, the trial court rendered its decision. The

dispositive portion reads:
Private respondents moved for a reconsideration c) ordering the Director of the National
praying for the cancellation of petitioner's copyright Library to cancel the
registration. The trial court granted reconsideration in its Copyright Registration No. 1-
July 14, 1995 order, thus: 1998 issued in the name of
IN VIEW OF THE FOREGOING, Venancio Sambar. 2
judgment is hereby rendered:

Petitioner appealed to the Court of Appeals which on

a) making the writ of preliminary January 30, 1998 decided in favor of private
injunction permanent; respondents as follows:
WHEREFORE, the judgment appealed
from is AFFIRMED in toto.

b) ordering the defendants CVS

Garment and Industrial
Company and Venancio SO ORDERED. 3
Sambar to pay the plaintiffs
jointly and solidarily the sum
of P50,000.00 as temperate
and nominal damages, the In this instant petition, petitioner avers that the Court of
sum of P10,000.00 as Appeals erred in:
exemplary damages, and the I. . . . RULING THAT THERE WAS AN
sum of P25,000.00 as INFRINGEMENT OF
attorney's fees and litigation RESPONDENT'S
expenses and to pay the ARCUATE MARK.
costs;

II. . . . RULING THAT PETITIONER IS

JOINTLY AND
 SOLIDARILY 2. Must we hold petitioner solidarily liable with CVS
LIABLE WITH CVS Garments Industrial Corporation?
GARMENTS 3. Are private respondents entitled to nominal,
INDUSTRIAL temperate and exemplary damages and cancellation of
CORPORATION petitioner's copyright?
FOR On the first issue, petitioner claims that he did not
INFRINGEMENT OF infringe on private respondents' arcuate design because
RESPONDENT'S there was no colorable imitation which deceived or
ARCUATE MARK. confused the public. He cites Emerald Garment
Manufacturing Corporation vs. Court of Appeals, G.R.
No. 100098, 251 SCRA 600 (1995), as authority. He
disagreed with the Court of Appeals that there were
III. . . . IN ORDERING, THERE BEING confusing similarities between Levi's and Europress'
NO arcuate designs, despite the trial court's observation of
INFRINGEMENT differences in them. Petitioner maintains that although
OR UNFAIR the backpocket designs had similarities, the public was
COMPETITION, not confused because Levi's jeans had other marks not
THE AWARD OF found in Europress jeans. Further, he says Levi's long
DAMAGES AND history and popularity made its trademark easily
CANCELLATION identifiable by the public. IDCHTE
OF COPYRIGHT In its comment, private respondents aver that the Court
REGISTRATION of Appeals did not err in ruling that there was
NO. 1-1998 ISSUED infringement in this case. The backpocket design of
IN THE NAME OF Europress jeans, a double arc intersecting in the middle
PETITIONER. 4 was the same as Levi's' mark, also a double arc
intersecting at the center. Although the trial court found
differences in the two designs, these differences were
not noticeable. Further, private respondents said,
infringement of trademark did not require exact
Briefly, we are asked to resolve the following issues: similarity. Colorable imitation enough to cause confusion
1. Did petitioner infringe on private respondents' arcuate among the public, was sufficient for a trademark to be
design? infringed. Private respondents explained that in a market
research they conducted with 600 respondents, the
result showed that the public was confused by
Europress trademark vis the Levi's trademark.
We find that the first issue raised by petitioner is factual.
The basic rule is that factual questions are beyond the
province of this Court in a petition for review. Although
there are exceptions to this rule, this case is not one of
them. 5 Hence, we find no reason to disturb the findings
of the Court of Appeals that Europress' use of the
arcuate design was an infringement of the Levi's design.
On the second issue, petitioner claims that private
respondents did not show that he was connected with
CVSGIC, nor did they prove his specific acts of
infringement to make him liable for damages. Again, this
is a factual matter and factual findings of the trial court,
concurred in by the Court of Appeals, are final and
binding on this Court. 6 Both the courts below found that
petitioner had a copyright over Europress' arcuate
design and that he consented to the use of said design
by CVSGIC. We are bound by this finding, especially in
the absence of a showing that it was tainted with
arbitrariness or palpable error. 7 It must be stressed that
it was immaterial whether or not petitioner was
connected with CVSGIC. What is relevant is that
petitioner had a copyright over the design and that he
allowed the use of the same by CVSGIC.
Petitioner also contends that the Court of Appeals erred
when it said that he had the burden to prove that he was
not connected with CVSGIC and that he did not
authorize anyone to use his copyrighted design.
According to petitioner, these are important elements of
private respondents' cause of action against him, hence,
private respondents had the ultimate burden of proof.
Pertinent is Section 1, Rule 131 of the Rules of Court 8
which provides that the burden of proof is the duty of a
party to prove the truth of his claim or defense, or any
fact in issue by the amount of evidence required by law.
In civil cases, the burden of proof may be on either the
plaintiff or the defendant. It is on the latter, if in his
answer he alleges an affirmative defense, which is not a
denial of an essential ingredient in the plaintiff's cause of
action, but is one which, if established, will be a good
defense — i.e., an "avoidance" of the claim, which prima
facie, the plaintiff already has because of the
defendant's own admissions in the pleadings. 9
Petitioner's defense in this case was an affirmative
defense. He did not deny that private respondents
owned the arcuate trademark nor that CVSGIC used on
its products a similar arcuate design. What he averred
was that although he owned the copyright on the
Europress arcuate design, he did not allow CVSGIC to
use it. He also said he was not connected with CVSGIC.
These were not alleged by private respondents in their
pleadings, and petitioner therefore had the burden to
prove these.
Lastly, are private respondents entitled to nominal,
temperate and exemplary damages and cancellation of
petitioner's copyright?
Petitioner insists that he had not infringed on the arcuate
trademark, hence, there was no basis for nominal and
temperate damages. Also, an award of nominal
damages precludes an award of temperate damages.
He cites Ventanilla vs. Centeno, G.R. No. L-14333, 1
SCRA 215 (1961) on this. Thus, he contends, assuming
arguendo that there was infringement, the Court of
Appeals still erred in awarding both nominal and
temperate damages.
Petitioner likewise said that the grant of exemplary
damages was inconsistent with the trial court's finding
that the design of Europress jeans was not similar to
Levi's design and that no pecuniary loss was suffered by
respondents to entitle them to such damages.
Lastly, petitioner maintains that as Europress' arcuate
design is not a copy of that of Levi's, citing the trial court's
findings that although there are similarities, there are
also differences in the two designs, cancellation of his
copyright was not justified.
On this matter, private respondents assert that the lower
courts found that there was infringement and Levi's was
entitled to damages based on Sections 22 and 23 of RA
No. 166 otherwise known as the Trade Mark Law, 10 as
amended, which was the law then governing. Said
sections define infringement and prescribe the remedies
therefor. Further, private respondents aver it was
misleading for petitioner to claim that the trial court ruled
that private respondents did not suffer pecuniary loss,
suggesting that the award of damages was improper.
According to the private respondents, the trial court did
not make any such ruling. It simply stated that there was
no evidence that Levi's had suffered decline in its sales
because of the use of the arcuate design by Europress
jeans. They offer that while there may be no direct proof
that they suffered a decline in sales, damages may still
be measured based on a reasonable percentage of the
gross sales of the respondents, pursuant to Section 23
of the Trademark law. 11 HSIADc
Finally, regarding the cancellation of petitioner's
copyright, private respondents deny that the trial court
ruled that the arcuate design of Europress jeans was not
the same as Levi's arcuate design jeans. On the
contrary, the trial court expressly ruled that there was
similarity. The cancellation of petitioner's copyright was
justified because petitioner's copyright can not prevail
over respondents' registration in the Principal Register
of Bureau of Patents, Trademarks, and Technology
Transfer. According to private respondents, the essence
of copyright registration is originality and a copied design
is inherently non-copyrightable. They insist that
registration does not confer originality upon a copycat
version of a prior design.
From the foregoing discussion, it is clear that the matters
raised by petitioner in relation to the last issue are purely
factual, except the matter of nominal and temperate
damages. Petitioner claims that damages are not due
private respondents and his copyright should not be
cancelled because he had not infringed on Levi's
trademark. Both the trial court and the Court of Appeals
found there was infringement. Thus, the award of
damages and cancellation of petitioner's copyright are
appropriate. 12 Award of damages is clearly provided in
Section 23, 13 while cancellation of petitioner's copyright
finds basis on the fact that the design was a mere copy
of that of private respondents' trademark. To be entitled
to copyright, the thing being copyrighted must be
original, created by the author through his own skill,
labor and judgment, without directly copying or evasively and Venancio
imitating the work of another. 14 Sambar are ordered
also to pay the
However, we agree with petitioner that it was error for plaintiffs jointly and
the Court of Appeals to affirm the award of nominal solidarily the sum of
damages combined with temperate damages 15 by the P10,000.00 as
Regional Trial Court of Makati. What respondents are exemplary damages,
entitled to is an award for temperate damages, not and the sum of
nominal damages. For although the exact amount of P25,000.00 as
damage or loss can not be determined with reasonable attorney's fees and
certainty, the fact that there was infringement means litigation expenses,
they suffered losses for which they are entitled to and to pay the costs;
moderate damages. 16 We find that the award of and
P50,000.00 as temperate damages fair and reasonable,
considering the circumstances herein as well as the
global coverage and reputation of private respondents
Levi Strauss & Company and Levi Strauss (Phil.), Inc. c. the Director of the National Library is
WHEREFORE, the decision dated January 30, 1998, of ordered to cancel the
the Court of Appeals, in CA-G.R. CV No. 51553 Copyright
AFFIRMING the judgment of the Regional Trial Court of Registration No. 1-
Makati, Branch 66, dated July 14, 1995, is hereby 1998 issued in the
MODIFIED so that nominal damages are deleted but the name of Venancio
amount of P50,000 is hereby awarded only as Sambar.
TEMPERATE DAMAGES. In all other respects, said
judgment is hereby AFFIRMED, to wit:
a) the writ of preliminary injunction is
made permanent;
SO ORDERED.
||| (Sambar v. Levi Strauss & Co., G.R. No. 132604,
[March 6, 2002], 428 PHIL 425-437)
b) the defendants CVS Garment and
Industrial Company
UNILEVER PHILIPPINES (PRC), INC.,
petitioner, vs. THE
HONORABLE COURT OF
APPEALS and PROCTER
AND GAMBLE
PHILIPPINES, INC.,
respondents.

DECISION
CORONA, J p:
In this petition for review under Rule 45 of the Rules of
Court, petitioner assails the February 24, 1995 decision
1 of the Court of Appeals (CA) in CA-G.R. SP No. 35242
entitled "Unilever 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 injunction against
it. The writ enjoined petitioner from using and airing, until the "double-
further orders of the court, certain television tug" or "tac-
commercials for its laundry products claimed to be tac"
identical or similar to its "double tug" or "tac-tac" key demonstrati
visual. 2 on shows
Petitioner alleges that the writ of preliminary injunction the fabric
was issued by the trial court (and affirmed by the CA) being held
without any evidence of private respondent's clear and by both
unmistakable right to the writ. Petitioner further contends hands and
that the preliminary injunction issued against it already stretched
disposed of the main case without trial, thus denying sideways.
petitioner of any opportunity to present evidence on its
behalf.
The antecedents show that on August 24, 1994, private
respondent Procter and Gamble Phils., Inc. filed a 1.6. The "tac-tac" was conceptualized for
complaint for injunction with damages and a prayer for P&G by the
temporary restraining order and/or writ of preliminary advertising
injunction against petitioner Unilever, alleging that: agency
1.5. As early as 1982, a P&G subsidiary Milano and
in Italy used Gray of Italy
a key visual in 1982. The
in the "tac-tac"
advertisem was used in
ent of its the same
laundry year in an
detergent advertisem
and ent entitled
bleaching "All aperto"
products. to
This key demonstrat
visual e the effect
known as on fabrics of
 one of 1.8. P&G has used the same distinctive
P&GP's "tac-tac"
products, a key visual to
liquid local
bleach consumers
called in the
"Ace." Philippines.
HCATEa

xxx xxx xxx

xxx xxx xxx
1.7. Since then, P&G has used the "tac-
tac" key 1.10. Substantially and materially
visual in the imitating the
advertisem aforesaid
ent of its "tac-tac"
products. In key visual of
fact, in P&GP and
1986, in in blatant
Italy, the disregard of
"tac-tac" P&GP's
key visual intellectual
was used in property
the rights,
television Unilever on
commercial 24 July
for "Ace" 1993
entitled started
"Kite." airing a 60
second
television
 commercial "Kite"
"TVC" of its television
"Breeze advertisem
Powerwhite ent it used
" laundry in Italy in
product 1986,
called merely
"Porky." dubbing the
The said Italian
TVC language
included a with Filipino
stretching for the same
visual produce
presentatio "Ace"
n and sound bleaching
effects liquid which
almost P&GP now
[identical] or markets in
substantiall the
y similar to Philippines.
P&GP's
"tac-tac"
key visual.
1.15. On August 1, 1994, Unilever filed a
Complaint
with the
xxx xxx xxx Advertising
Board of the
1.14. On July 15, 1994, P&GP aired in Philippines
the to prevent
Philippines, P&GP from
the same airing the
 "Kite" OF JURISDICTION AND
television WITH GRAVE ABUSE OF
advertisem DISCRETION AMOUNTING
ent. 3 TO LACK OF JURISDICTION
IN ISSUING THE WRIT OF
PRELIMINARY INJUNCTION
IN VIOLATION OF THE
On August 26, 1994, Judge Gorospe issued an order RULES ON EVIDENCE AND
granting a temporary restraining order and setting it for PROCEDURE,
hearing on September 2, 1994 for Unilever to show PARTICULARLY OF SEC. 3
cause why the writ of preliminary injunction should not (a), RULE 58 OF THE
issue. During the hearing on September 2, 1994, P&GP REVISED RULES OF
received Unilever's answer with opposition to COURT AND OF THE
preliminary injunction. P&GP filed its reply to Unilever's PREVAILING
opposition to a preliminary injunction on September 6, JURISPRUDENCE.
1994.
During the hearing on September 9, 1994, Judge
Gorospe ordered petitioner to submit a sur-rejoinder.
P&GP received Unilever's rejoinder to reply on PUBLIC RESPONDENT IN ISSUING
September 13, 1994. The following day, on September THE VOID ORDER DATED
14, 1994, P&GP filed its sur-reply to Unilever's rejoinder. SEPTEMBER 16, 1994, HAD,
On September 19, 1994, P&GP received a copy of the IN EFFECT, ALREADY
order dated September 16, 1994 ordering the issuance PREJUDGED THE MERITS
of a writ of preliminary injunction and fixing a bond of OF THE MAIN CASE.
P100,000. On the same date, P&GP filed the required
bond issued by Prudential Guarantee and Assurance,
Inc.
On September 21, 1994, petitioner appealed to the CA PUBLIC RESPONDENT HAD ISSUED
assigning the following errors allegedly committed by the THE VOID ORDER
court a quo, to wit: ACCORDING RELIEF TO A
PUBLIC RESPONDENT HAD ACTED NON-PARTY IN CIVIL CASE
WITHOUT OR IN EXCESS
 NO. 94-2434 WITHOUT P&GP's "double tug" or "tac-
JURISDICTION. THEDcS tac" key visual. However, it
submits that P&GP is not
entitled to the relief
demanded, which is to enjoin
PUBLIC RESPONDENT IN ISSUING petitioner from airing said TV
THE VOID ORDER HAD advertisements, for the
DEPRIVED PETITIONER OF reason that petitioner has
SUBSTANTIVE AND Certificates of Copyright
PROCEDURAL DUE Registration for which
PROCESS; PUBLIC advertisements while P&GP
RESPONDENT HAD has none with respect to its
FORECLOSED "double-tug" or "tac-tac" key
PETITIONER'S RIGHT AND visual. In other words, it is
THE OPPORTUNITY TO petitioner's contention that
CROSS-EXAMINE P&GP is not entitled to any
PROCTER'S WITNESSES protection because it has not
ABAD AND HERBOSA. 4 registered with the National
Library the very TV
commercials which it claims
have been infringed by
petitioner.
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 thus dismissed for lack of merit.
After a careful perusal of the records, we agree with the We disagree. Section 2 of PD 49
CA and affirm its decision in toto: stipulates that the copyright
Petitioner does not deny that the for a work or intellectual
questioned TV creation subsists from the
advertisements are moment of its creation.
substantially similar to Accordingly, the creator
acquires copyright for his
 work right upon its creation . .
. Contrary to petitioner's
contention, the intellectual
creator's exercise and
enjoyment of copyright for his
work and the protection given
by law to him is not contingent
or dependent on any formality
or registration. Therefore,
taking the material allegations
of paragraphs 1.3 to 1.5 of
P&GP's verified Complaint in
the context of PD 49, it cannot
be seriously doubted that at
least, for purposes of
determining whether
preliminary injunction should
issue during the pendency of
the case, P&GP is entitled to
the injunctive relief prayed for
in its Complaint. aDHScI
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
relief demanded, which
consists in whole or in part in
restraining the commission or
continuance of the acts
complained of. In view of such
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 to be directed
is violative of such right.
Certainly, the court's
determination as to the
propriety of issuing the writ
cannot be taken as a
prejudgment of the merits of
the case because it is
tentative in nature and the writ
may be dissolved during or
after the trial if the court finds
that plaintiff was not entitled
to it. . .
xxx xxx xxx
Obviously, the determination made by
the court a quo was only for
purposes of preliminary
injunction, without passing
upon the merits of the case,
 which cannot be done until
after a full-blown hearing is
conducted.
The third ground is patently
unmeritorious. As alleged in
the 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
that capacity, P&GP used the
said TV advertisement in the
Philippines to promote its
products. As such subsidiary,
P&GP is definitely within the
protective mantle of the
statute (Sec. 6, PD 49).
Finally, We find the procedure adopted
by the court a quo to be in
order. . .
The record clearly shows that
respondent Judge followed
the (procedure provided for in
Section 5, Rule 58, as
amended by BP 224, and
Paragraph A(8) of the Interim
Rules). In fact, the court a quo
set the incident for hearing on
September 2, 1994, at which
date petitioner was ordered to
show cause why the writ
should not be issued.
Petitioner filed an Opposition
to the application for
preliminary injunction. The
same incident was again set
for hearing on September 9,
1994, during which the parties
made some manifestations in
support of their respective
positions. Subsequent to
such hearing petitioner filed a
Reply to P&GP's Rejoinder to
its Opposition. Under the
foregoing circumstances, it is
absurd to even suggest that
petitioner was not given its
day in court in the matter of
the issuance of the
preliminary injunctive relief.
xxx xxx xxx
There was of course extreme urgency for
the court a quo to act on
plaintiff's application for
preliminary injunction. The
airing of TV commercials is
necessarily of limited duration
only. Without such temporary
relief, any permanent
injunction against the
infringing TV advertisements
of which P&GP may possibly
succeed in getting after the
main case is finally
adjudicated could be illusory if
by then such advertisements
are no longer used or aired by
petitioner. It is therefore not
difficult to perceive the
possible irreparable damage
which P&GP may suffer if
respondent Judge did not act
promptly on its application for
preliminary injunction. 5
Preliminary injunction is a provisional remedy intended
to provide protection to parties for the preservation of
their rights or interests during the pendency of the
principal action. 6 Thus, Section 1, Rule 58 of the Rules
of Court provides: TaHDAS
Section 1. Preliminary injunction defined;
classes. — A preliminary
injunction is an order granted
at any stage of an action or
proceeding prior to the
judgment or final order,
requiring a party or a court,
agency or a person to refrain
from a particular act or acts. It
may also require the
performance of a particular
act or acts, in which case it
shall be known as a
preliminary mandatory
injunction.
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 ruled by the CA, there was an extreme urgency
to grant the preliminary injunction prayed for by P&GP
considering that TV commercials are aired for a limited
period of time only. In fact, this 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, ||| (Unilever Phil. (PRC), Inc. v. Court of Appeals, G.R.
1994. No. 119280, [August 10, 2006], 530 PHIL 91-98)
The sole objective of a writ of preliminary injunction is to
preserve the status quo until the merits of the case can
be heard fully. 8 A writ of preliminary injunction is
generally based solely on initial and incomplete
evidence. 9 Thus, it was impossible for the court a quo
to fully 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. DISaEA
The issuance of a preliminary injunction rests entirely on
the discretion of the court 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 FRANCISCO G. JOAQUIN, JR., and BJ
where a party has not been deprived of its day in court PRODUCTIONS, INC., petitioners, vs. HONORABLE
as it was heard and it exhaustively presented all its FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM
arguments and defenses. ESPOSO, FELIPE MEDINA, JR., and CASEY
WHEREFORE, the petition is hereby DENIED. FRANCISCO, respondents.
Costs against petitioner. Medel Macam del Rosario Collado and Polines for
SO ORDERED. petitioners.
Puno, Sandoval-Gutierrez and Azcuna, JJ., concur. Angelo Medina for F. Medina, Jr.
Garcia, J., took no part. Atienza, Tabora, del Rosario & Salvador for W. Esposo.
Francisco L. Rosario, Jr. for Casey Francisco.
De Borja Medialdea Ata Bello Guevarra & Serapio for G.
Zosa.
SYNOPSIS
Petitioner BJ Productions, Inc. (BJPI) is the
holder/grantee of Certificate of Copyright No. M922
dated January 28, 1971 of Rhoda and Me, a dating
game show aired from 1970 to 1977. In 1973, petitioner
BJPI submitted to the National Library an addendum to
its certificate of copyright specifying the show's format
and style presentation. In 1991, petitioner Francisco
Joaquin, Jr., president of BJPI, saw on RPN 9 an
episode of It's a Date. He immediately protested the
airing of the show through a letter sent to Grabriel M.
Zosa, president and general manager of IXL
Productions, Inc., the producer of It's a Date. Petitioner
Joaquin informed respondent, Zosa of a copyright to
Rhoda and Me and demanded that IXL discontinue
airing It's a Date. Respondent Zosa apologized to
Joaquin, but continued airing the show. Zosa also
sought to register IXL's copyright to the first episode of
It's a Date for which a certificate of copyright was issued
by the National Library on August 14, 1991. With these
developments, petitioners herein filed a complaint
against Zosa and other RPN Channel 9 officers as a
result of which an information for violation of P.D. No. 49
was filed before the Regional Trial Court of Quezon City.
Zosa appealed to the Department of Justice. The
Secretary of Justice reversed the prosecutor's findings
and directed the dismissal of the case. Petitioner
Joaquin filed a motion for reconsideration, but it was
denied by the Secretary of Justice. Hence, this petition.
Both public and private respondents maintained that
petitioners failed to establish the existence of probable
cause due to their failure to present the copyrighted
master videotape of Rhoda and Me. They contended
that BJPl's copyright covers only a specific episode of
Rhosa and Me and that the formats or concepts of dating
game shows were not covered by the copyright
protection under P.D. No. 49.
The Supreme Court ruled that BJPI's copyright covered
audio-visual recordings of every episode of Rhoda and
Me, as falling within the class of works mentioned in P.D.
No. 49. The copyright, however, does not extend to the
general concept or format of its dating game show.
Accordingly, by the very nature of the subject of
petitioner BJPI's copyright, the investigating prosecutor
should have been given the opportunity to compare the
videotapes of the two shows. Mere description by words
of the general format of the two dating game shows is
insufficient; the presentation of the master videotape in
evidence was indispensable to the determination of the
existence of probable cause. The petition was therefore
dismissed. SEIDAC
SYLLABUS
1. REMEDIAL LAW; CRIMINAL PROCEDURE;
PRELIMINARY INVESTIGATION; AUTHORITY OF
THE STATE PROSECUTOR, SUBJECT TO THE
CONTROL OF THE SECRETARY OF JUSTICE. — A
preliminary investigation falls under the authority of the
state prosecutor who is given by law the power to direct
and control criminal actions. He is, however, subject to
the control of the Secretary of Justice. Thus, Rule 112,
Sec. 4 of the Revised Rules of Criminal Procedure,
provides: SEC. 4. Duty of investigating fiscal. — If the
investigating fiscal finds cause to hold the respondent for
trial, he shall prepare the resolution and corresponding
information. He shall certify under oath that he, or as
shown by the record, an authorized officer, has
personally examined the complainant and his witnesses,
that there is reasonable ground to believe that a crime
has been committed and that the accused is probably
guilty thereof, that the accused was informed of the
complaint and of the evidence submitted against him
and that he was given an opportunity to submit
controverting evidence. Otherwise, he shall recommend
dismissal of the complaint. In either case, he shall
forward the records of the case to the provincial or city
fiscal or chief state prosecutor within five (5) days from
his resolution. The latter shall take appropriate action
thereon within ten (10) days from receipt thereof,
immediately informing the parties of said action. No
complaint or information may be filed or dismissed by an
investigating fiscal without the prior written authority
approval of the provincial or city fiscal or chief state
prosecutor. Where the investigating assistant fiscal
recommends the dismissal of the case but his findings
are reversed by the provincial or city fiscal or chief state
prosecutor on the ground that a probable cause exists,
the latter may, by himself, file the corresponding
information against the respondent or direct any other
assistant fiscal or state prosecutor to do so, without
conducting another preliminary investigation. If upon
petition by a proper party, the Secretary of Justice
reverses the resolution of the provincial or city fiscal or
chief state prosecutor, he shall direct the fiscal
concerned to file the corresponding information without
conducting another preliminary investigation or to
dismiss or move for dismissal of the complaint or
information. In reviewing resolutions of prosecutors, the
Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of
determining whether there is probable cause for filing
cases in court. He must make his own finding of
probable cause and is not confined to the issues raised
by the parties during preliminary investigation.
Moreover, his findings are not subject to review unless
shown to have been made with grave abuse.
2. COMMERCIAL LAW; INTELLECTUAL PROPERTY
LAW; COPYRIGHT; CONSTRUED. — Copyright, in the
strict sense of the term, is purely a statutory right. It is a
new or independent right granted by the statute, and not
simply a pre-existing right regulated by the statute.
Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only
with respect to the subjects and by the persons, and on
terms and conditions specified in the statute. Since . . .
copyright in published works is purely a statutory
creation, a copyright may be obtained only for a work
falling within the statutory enumeration or description.
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. . . . P.D. No. 49, Section 2, in enumerating
what are subject to copyright, refers to finished works
and not to concepts. The copyright does not extend to
an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated,
or embodied in such work. Thus, the new
INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES provides: SEC. 175. Unprotected Subject
Matter. — Notwithstanding the provisions of Sections
172 and 173, no protection shall extend, under this law,
to any idea, procedure, system, method or operation,
concept, principle, discovery or mere data as such, even
if they are expressed, explained, illustrated or embodied
in a work; news of the day and other miscellaneous facts
having the character of mere items of press information;
or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof.
3. ID.; ID.; ID.; FORMAT OR MECHANICS OF A
TELEVISION SHOW IS NOT INCLUDED IN THE LIST
OF PROTECTED WORKS. — To begin with, the format
of a show is not copyrightable. Section 2 of P.D. No. 49,
otherwise known as the DECREE ON INTELLECTUAL
PROPERTY, enumerates the classes of work entitled to
copyright protection, to wit: Section 2. The rights granted
by this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of
works: (A) Books, including composite and cyclopedic
works, manuscripts, directories, and gazetteers; (B)
Periodicals, including pamphlets and newspaper. (C)
Lectures, sermons, addresses, dissertations prepared
for oral delivery; (D) Letters; (E) Dramatic or dramatico-
musical compositions; choreographic works and
entertainments in dumb shows, the acting form of which
is fixed in writing or otherwise; (F) Musical compositions,
with or without words; (G) Works of drawing, painting,
architecture, sculpture, engraving, lithography, and
other works of art; models or designs for works of art;
(H) Reproductions of work of art; (I) Original ornamental
designs or models for articles of manufacture, whether
or not patentable, and other works of applied art; (J)
Maps, plans, sketches, and charts; (K) Drawings or
plastic works of a scientific or technical character; (L)
Photographic works and works produced by a process
analogous to photography; lantern slides; (M)
Cinematographic works and works produced by a
process analogous to cinematography or any process
for making audio-visual recordings; (N) Computer
programs; (O) Prints, pictorial illustrations advertising
copies, labels, tags, and box wraps; (P) Dramatizations,
translations, adaptions, abridgements, arrangements
and other alterations of literary, musical or artistic works
or of works of the Philippine government as herein
defined, which shall be protected as provided in Section
8 of this Decree; (Q) Collections of literary, scholarly, or
artistic works or of works referred to in Section 9 of this
Decree which by reason of the selection and
arrangement of their contents constitute intellectual
creations, the same to be protected as such in
accordance with Section 8 of this Decree; (R) Other
literary, scholarly, scientific and artistic works. This
provision is substantially the same as Section 172 of the
INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES (R.A. No. 8293). The format or mechanics
of a television show is not included in the list of protected
works in Section 2 of P.D. No. 49. For this reason, the
protection afforded by the law cannot be extended to
cover them. ETDAaC
DECISION
MENDOZA, J p:
This is a petition for certiorari. Petitioners seek to annul
the resolution of the Department of Justice, dated
August 12, 1992, in Criminal Case No. Q-92-27854,
entitled "Gabriel Zosa, et al. v. City Prosecutor of
Quezon City and Francisco Joaquin, Jr.," and its
resolution, dated December 3, 1992, denying petitioner
Joaquin's motion for reconsideration. LLphil
Petitioner BJ Productions, Inc. (BJPI) is the
holder/grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating
game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the
National Library an addendum to its certificate of
copyright specifying the show's format and style of
presentation.
On July 14, 1991, while watching television, petitioner
Francisco Joaquin, Jr., president of BJPI, saw on RPN
Channel 9 an episode of It's a Date, which was produced
by IXL Productions, Inc. (IXL). On July 18, 1991, he
wrote a letter to private respondent Gabriel M. Zosa,
president and general manager of IXL, informing Zosa
that BJPI had a copyright to Rhoda and Me and
demanding that IXL discontinue airing It's a Date.
In a letter, dated July 19, 1991, private respondent Zosa
apologized to petitioner Joaquin and requested a
meeting to discuss a possible settlement. IXL, however,
continued airing It's a Date, prompting petitioner Joaquin
to send a second letter on July 25, 1991 in which he
reiterated his demand and warned that, if IXL did not
comply, he would endorse the matter to his attorneys for
proper legal action.
Meanwhile, private respondent Zosa sought to register
IXL's copyright to the first episode of It's a Date for which
it was issued by the National Library a certificate of
copyright on August 14, 1991.
Upon complaint by petitioners, an information for
violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN
Channel 9, namely, William Esposo, Felipe Medina, and
Casey Francisco, in the Regional Trial Court of Quezon
City where it was docketed as Criminal Case No. 92-
27854 and assigned to Branch 104 thereof. However,
private respondent Zosa sought a review of the
resolution of the Assistant City Prosecutor before the
Department of Justice.
On August 12, 1992, respondent Secretary of Justice
Franklin M. Drilon reversed the Assistant City
Prosecutor's findings and directed him to move for the
dismissal of the case against private respondents. 1
Petitioner Joaquin filed a motion for reconsideration, but
his motion was denied by respondent Secretary of
Justice on December 3, 1992. Hence, this petition.
Petitioners contend that:
1. The public respondent gravely abused
his discretion
amounting to lack of
jurisdiction when he
invoked non-
presentation of the
master tape as being
fatal to the existence
of probable cause to
prove infringement,
 despite the fact that dating game shows are not covered by copyright
private respondents protection under P. D. No. 49.
never raised the Non-Assignment of Error
same as a Petitioners claim that their failure to submit the
controverted issue. copyrighted master videotape of the television show
Rhoda and Me was not raised in issue by private
respondents during the preliminary investigation and,
therefore, it was error for the Secretary of Justice to
2. The public respondent gravely abused reverse the investigating prosecutor's finding of probable
his discretion cause on this ground.
amounting to lack of A preliminary investigation falls
jurisdiction when he under the authority of the state prosecutor
arrogated unto who is given by law the power to direct and
himself the control criminal actions. 2 He is, however,
determination of subject to the control of the Secretary of
what is copyrightable Justice. Thus, Rule 112, §4 of the Revised
— an issue which is Rules of Criminal Procedure, provides:
exclusively within the
SEC. 4. Duty of investigating fiscal. — If
jurisdiction of the
the investigating fiscal finds
regional trial court to
cause to hold the respondent
assess in a proper
for trial, he shall prepare the
proceeding.
resolution and corresponding
information. He shall certify
under oath that he, or as
shown by the record, an
Both public and private respondents maintain that authorized officer, has
petitioners failed to establish the existence of probable personally examined the
cause due to their failure to present the copyrighted complainant and his
master videotape of Rhoda and Me. They contend that witnesses, that there is
petitioner BJPI's copyright covers only a specific episode reasonable ground to believe
of Rhoda and Me and that the formats or concepts of that a crime has been
 committed and that the
accused is probably guilty
thereof, that the accused was
informed of the complaint and
of the evidence submitted
against him and that he was
given an opportunity to submit
controverting evidence.
Otherwise, he shall
recommend dismissal of the
complaint.
In either case, he shall forward the
records of the case to the
provincial or city fiscal or chief
state prosecutor within five (5)
days from his resolution. The
latter shall take appropriate
action thereon within ten (10)
days from receipt thereof,
immediately informing the
parties of said action.
No complaint or information may be filed
or dismissed by an
investigating fiscal without the
prior written authority or
approval of the provincial or
city fiscal or chief state
prosecutor.
Where the investigating assistant fiscal
recommends the dismissal of
the case but his findings are
reversed by the provincial or
city fiscal or chief state
prosecutor on the ground that
a probable cause exists, the
latter may, by himself, file the
corresponding information
against the respondent or
direct any other assistant
fiscal or state prosecutor to do
so, without conducting
another preliminary
investigation. cda
If upon petition by a proper party, the
Secretary of Justice reverses
the resolution of the provincial
or city fiscal or chief state
prosecutor, he shall direct the
fiscal concerned to file the
corresponding information
 without conducting another of a dating game show is, in
preliminary investigation or to the opinion of this Office, a
dismiss or move for dismissal non-copyrightable material.
of the complaint or Ideas, concepts, formats, or
information. schemes in their abstract
form clearly do not fall within
the class of works or materials
susceptible of copyright
In reviewing resolutions of prosecutors, the Secretary of registration as provided in
Justice is not precluded from considering errors, PD. No. 49. 3 (Emphasis
although unassigned, for the purpose of determining added.)
whether there is probable cause for filing cases in court.
He must make his own finding of probable cause and is
not confined to the issues raised by the parties during
preliminary investigation. Moreover, his findings are not It is indeed true that the question whether the format or
subject to review unless shown to have been made with mechanics of petitioners' television show is entitled to
grave abuse. copyright protection is a legal question for the court to
Opinion of the Secretary of Justice make. This does not, however, preclude respondent
Petitioners contend, however, that the determination of Secretary of Justice from making a preliminary
the question whether the format or mechanics of a show determination of this question in resolving whether there
is entitled to copyright protection is for the court, and not is probable cause for filing the case in court. In doing so
the Secretary of Justice, to make. They assail the in this case, he did not commit any grave error.
following portion of the resolution of the respondent Presentation of Master Tape
Secretary of Justice: Petitioners claim that respondent Secretary of Justice
[T]he essence of copyright infringement gravely abused his discretion in ruling that the master
is the copying, in whole or in videotape should have been presented in order to
part, of copyrightable determine whether there was probable cause for
materials as defined and copyright infringement. They contend that 20th Century
enumerated in Section 2 of Fox Film Corporation v. Court of Appeals, 4 on which
P.D. No. 49. Apart from the respondent Secretary of Justice relied in reversing the
manner in which it is actually resolution of the investigating prosecutor, is inapplicable
expressed, however, the idea to the case at bar because in the present case, the
parties presented sufficient evidence which clearly
establish "linkages between the copyrighted show
'Rhoda and Me' and the infringing TV show 'It's a Date.'"
5 were necessarily reproduced
The case of 20th Century Fox Film Corporation involved
raids conducted on various videotape outlets allegedly
selling or renting out "pirated" videotapes. The trial court
found that the affidavits of NBI agents, given in support
of the application for the search warrant, were
insufficient without the master tape. Accordingly, the trial
court lifted the search warrants it had previously issued
against the defendants. On petition for review, this Court
sustained the action of the trial court and ruled: 6
The presentation of the master tapes of
the copyrighted films from
which the pirated films were
allegedly copied, was
necessary for the validity of
search warrants against
those who have in their
possession the pirated films.
The petitioner's argument to
the effect that the
presentation of the master
tapes at the time of
application may not be
necessary as these would be
merely evidentiary in nature
and not determinative of
whether or not a probable
cause exists to justify the
issuance of the search
warrants is not meritorious.
The court cannot presume
that duplicate or copied tapes
from master tapes that it
owns.
The application for search warrants was
directed against video tape
outlets which allegedly were
engaged in the unauthorized
sale and renting out of
copyrighted films belonging to
the petitioner pursuant to P.D.
49.
The essence of a copyright infringement
is the similarity or at least
substantial similarity of the
purported pirated works to the
copyrighted work. Hence, the
applicant must present to the
court the copyrighted films to
 compare them with the
purchased evidence of the
video tapes allegedly pirated
to determine whether the
latter is an unauthorized
reproduction of the former.
This linkage of the
copyrighted films to the
pirated films must be
established to satisfy the
requirements of probable
cause. Mere allegations as to
the existence of the
copyrighted films cannot
serve as basis for the
issuance of a search warrant.
This ruling was qualified in the later case of
Columbia Pictures, Inc. v. Court of Appeals 7
in which it was held:
In fine, the supposed pronunciamento in
said case regarding the
necessity for the presentation
of the master tapes of the
copyrighted films for the
validity of search warrants
should at most be understood
to merely serve as a
guidepost in determining the
existence of probable cause
in copyright infringement
cases where there is doubt as
to the true nexus between the
master tape and the pirated
copies. An objective and
careful reading of the decision
in said case could lead to no
other conclusion than that
said directive was hardly
intended to be a sweeping
and inflexible requirement in
all or similar copyright
infringement cases. . . . 8
In the case at bar, during the preliminary investigation,
petitioners and private respondents presented written
descriptions of the formats of their respective televisions
shows, on the basis of which the investigating
prosecutor ruled:
As may [be] gleaned from the evidence
on record, the substance of
the television productions
complainant's "RHODA AND
ME" and Zosa's "IT'S A
DATE" is that two matches
are made between a male
and a female, both single, and
the two couples are treated to
a night or two of dining and/or
 dancing at the expense of the of one gender (searcher)
show. The major concepts of appears on one side of a
both shows is the same. Any divider, while three (3)
difference appear mere unmarried participants
variations of the major of the other gender are
concepts. on the other side of the
divider. This arrangement
is done to ensure
that the searcher does
That there is an infringement on the not see the searchees.
copyright of the show b. Searcher asks a question b. same
"RHODA AND ME" both in
content and in the execution
of the video presentation are
established because to be answered by each of
respondent's "IT'S A DATE" is the searchees. The purpose
practically an exact copy of is to determine who among
complainant's "RHODA AND the searchees is the most
ME" because of substantial compatible with the searcher.
similarities as follows, to wit: c. Searcher speculates on the c. same

"RHODA AND ME" "IT'S A DATE" match to the searchee.

d. Selection is made by the d. Selection
is

Set 1 Set 1
a. Unmarried participant a. same
use of compute (sic) methods, based on the
or by the way questions are answer of the
 answered, or similar methods. Searchees. (B) Periodicals, including pamphlets and
Set 2 Set 2 newspapers;
Same as above with the genders same
of the searcher and searchees
interchanged. 9
Petitioners assert that the format of Rhoda and Me is a (C) Lectures, sermons, addresses,
product of ingenuity and skill and is thus entitled to dissertations prepared for oral
copyright protection. It is their position that the delivery;
presentation of a point-by-point comparison of the
formats of the two shows clearly demonstrates the nexus
between the shows and hence establishes the existence
of probable cause for copyright infringement. Such being
the case, they did not have to produce the master tape. (D) Letters;
To begin with, the format of a show is not copyrightable.
Section 2 of P.D. No. 49, 10 otherwise known as the
DECREE ON INTELLECTUAL PROPERTY,
enumerates the classes of work entitled to copyright (E) Dramatic or dramatico-musical
protection, to wit: LLphil compositions; choreographic
Section 2. The rights granted by this works and entertainments in
Decree shall, from the dumb shows, the acting form
moment of creation, subsist of which is fixed in writing or
with respect to any of the otherwise;
following classes of works:

(F) Musical compositions, with or without

(A) Books, including composite and words;
cyclopedic works,
manuscripts, directories, and
gazetteers;
(G) Works of drawing, painting, (L) Photographic works and works
architecture, sculpture, produced by a process
engraving, lithography, and analogous to photography;
other works of art; models or lantern slides;
designs for works of art;

(M) Cinematographic works and works

(H) Reproductions of a work of art; produced by a process
analogous to cinematography
or any process for making
audio-visual recordings;
(I) Original ornamental designs or
models for articles of
manufacture, whether or not
patentable, and other works (N) Computer programs;
of applied art;

(O) Prints, pictorial illustrations

(J) Maps, plans, sketches, and charts; advertising copies, labels,
tags, and box wraps;

(K) Drawings or plastic works of a

scientific or technical (P) Dramatizations, translations,
character; adaptations, abridgements,
arrangements and other
alterations of literary, musical
or artistic works or of works of
the Philippine government as
 herein defined, which shall be this reason, the protection afforded by the law
protected as provided in cannot be extended to cover them.
Section 8 of this Decree.
Copyright, in the strict sense of the term,
is purely a statutory right. It is
a new or independent right
granted by the statute, and
(Q) Collections of literary, scholarly, or
not simply a pre-existing right
artistic works or of works
regulated by the statute.
referred to in Section 9 of this
Being a statutory grant, the
Decree which by reason of
rights are only such as the
the selection and
statute confers, and may be
arrangement of their contents
obtained and enjoyed only
constitute intellectual
with respect to the subjects
creations, the same to be
and by the persons, and on
protected as such in
terms and conditions
accordance with Section 8 of
specified in the statute. 12
this Decree.

Since . . . copyright in published works is

(R) Other literary, scholarly, scientific
purely a statutory creation, a
and artistic works.
copyright may be obtained
only for a work falling within
the statutory enumeration or
description. 13
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
Regardless of the historical viewpoint, it
of a television show is not included in the list
is authoritatively settled in the
of protected works in §2 of P.D. No. 49. For
United States that there is no
 copyright except that which is
both created and secured by
act of Congress . . . 14
P.D. No. 49, §2, in enumerating what are subject to
copyright, refers to finished works and not to concepts.
The copyright does not extend to an idea, procedure,
process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such
work. 15 Thus, the new INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES provides:
SEC. 175. Unprotected Subject Matter.
— Notwithstanding the
provisions of Sections 172
and 173, no protection shall
extend, under this law, to any
idea, procedure, system,
method or operation, concept,
principle, discovery or mere
data as such, even if they are
expressed, explained,
illustrated or embodied in a
work; news of the day and
other miscellaneous facts
having the character of mere
items of press information; or
any official text of a
legislative, administrative or
legal nature, as well as any
official translation thereof.
What then is the subject matter of petitioners' copyright?
This Court is of the opinion that petitioner BJPI's
copyright covers audio-visual recordings of each
episode of Rhoda and Me, as falling within the class of
works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works
produced by a process
analogous to cinematography
or any process for making
audio-visual recordings;
The copyright does not extend to the general
concept or format of its dating game show.
Accordingly, by the very nature of the subject
of petitioner BJPI's copyright, the
investigating prosecutor should have the
opportunity to compare the videotapes of the
two shows.
Mere description by words of the general format of the
two dating game shows is insufficient; the presentation
of the master videotape in evidence was indispensable
to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:
A television show includes more than
mere words can describe
because it involves a whole
spectrum of visuals and
effects, video and audio, such
that no similarity or
dissimilarity may be found by
merely describing the general
copyright/format of both
dating game shows. 16

WHEREFORE, the petition is hereby DISMISSED.

SO ORDERED.
Puno, Quisumbing and Buena, JJ., concur.
Bellosillo, J., took no part. Related to one of parties.

||| (Joaquin, Jr. v. Drilon, G.R. No. 108946, [January 28,

1999], 361 PHIL 900-916)

FRANCISCO G. JOAQUIN, JR., and BJ
PRODUCTIONS, INC., petitioners, vs. HONORABLE
FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM
ESPOSO, FELIPE MEDINA, JR., and CASEY
FRANCISCO, respondents.
Medel Macam del Rosario Collado and Polines for
petitioners.
Angelo Medina for F. Medina, Jr.
Atienza, Tabora, del Rosario & Salvador for W. Esposo.
Francisco L. Rosario, Jr. for Casey Francisco.
De Borja Medialdea Ata Bello Guevarra & Serapio for G.
Zosa.
SYNOPSIS
Petitioner BJ Productions, Inc. (BJPI) is the
holder/grantee of Certificate of Copyright No. M922
dated January 28, 1971 of Rhoda and Me, a dating
game show aired from 1970 to 1977. In 1973, petitioner
BJPI submitted to the National Library an addendum to
its certificate of copyright specifying the show's format
and style presentation. In 1991, petitioner Francisco
Joaquin, Jr., president of BJPI, saw on RPN 9 an
episode of It's a Date. He immediately protested the
airing of the show through a letter sent to Grabriel M.
Zosa, president and general manager of IXL
Productions, Inc., the producer of It's a Date. Petitioner
Joaquin informed respondent, Zosa of a copyright to
Rhoda and Me and demanded that IXL discontinue
airing It's a Date. Respondent Zosa apologized to
Joaquin, but continued airing the show. Zosa also
sought to register IXL's copyright to the first episode of
It's a Date for which a certificate of copyright was issued
by the National Library on August 14, 1991. With these
developments, petitioners herein filed a complaint
against Zosa and other RPN Channel 9 officers as a
result of which an information for violation of P.D. No. 49
was filed before the Regional Trial Court of Quezon City.
Zosa appealed to the Department of Justice. The
Secretary of Justice reversed the prosecutor's findings
and directed the dismissal of the case. Petitioner
Joaquin filed a motion for reconsideration, but it was
denied by the Secretary of Justice. Hence, this petition.
Both public and private respondents maintained that
petitioners failed to establish the existence of probable
cause due to their failure to present the copyrighted
master videotape of Rhoda and Me. They contended
that BJPl's copyright covers only a specific episode of
Rhosa and Me and that the formats or concepts of dating
game shows were not covered by the copyright
protection under P.D. No. 49.
The Supreme Court ruled that BJPI's copyright covered
audio-visual recordings of every episode of Rhoda and
Me, as falling within the class of works mentioned in P.D.
No. 49. The copyright, however, does not extend to the
general concept or format of its dating game show.
Accordingly, by the very nature of the subject of
petitioner BJPI's copyright, the investigating prosecutor
should have been given the opportunity to compare the
videotapes of the two shows. Mere description by words
of the general format of the two dating game shows is
insufficient; the presentation of the master videotape in
evidence was indispensable to the determination of the
existence of probable cause. The petition was therefore
dismissed. SEIDAC
SYLLABUS
1. REMEDIAL LAW; CRIMINAL PROCEDURE;
PRELIMINARY INVESTIGATION; AUTHORITY OF
THE STATE PROSECUTOR, SUBJECT TO THE
CONTROL OF THE SECRETARY OF JUSTICE. — A
preliminary investigation falls under the authority of the
state prosecutor who is given by law the power to direct
and control criminal actions. He is, however, subject to
the control of the Secretary of Justice. Thus, Rule 112,
Sec. 4 of the Revised Rules of Criminal Procedure,
provides: SEC. 4. Duty of investigating fiscal. — If the
investigating fiscal finds cause to hold the respondent for
trial, he shall prepare the resolution and corresponding
information. He shall certify under oath that he, or as
shown by the record, an authorized officer, has
personally examined the complainant and his witnesses,
that there is reasonable ground to believe that a crime
has been committed and that the accused is probably
guilty thereof, that the accused was informed of the
complaint and of the evidence submitted against him
and that he was given an opportunity to submit
controverting evidence. Otherwise, he shall recommend
dismissal of the complaint. In either case, he shall
forward the records of the case to the provincial or city
fiscal or chief state prosecutor within five (5) days from
his resolution. The latter shall take appropriate action
thereon within ten (10) days from receipt thereof,
immediately informing the parties of said action. No
complaint or information may be filed or dismissed by an
investigating fiscal without the prior written authority
approval of the provincial or city fiscal or chief state
prosecutor. Where the investigating assistant fiscal
recommends the dismissal of the case but his findings
are reversed by the provincial or city fiscal or chief state
prosecutor on the ground that a probable cause exists,
the latter may, by himself, file the corresponding
information against the respondent or direct any other
assistant fiscal or state prosecutor to do so, without
conducting another preliminary investigation. If upon
petition by a proper party, the Secretary of Justice
reverses the resolution of the provincial or city fiscal or
chief state prosecutor, he shall direct the fiscal
concerned to file the corresponding information without
conducting another preliminary investigation or to
dismiss or move for dismissal of the complaint or
information. In reviewing resolutions of prosecutors, the
Secretary of Justice is not precluded from considering
errors, although unassigned, for the purpose of
determining whether there is probable cause for filing
cases in court. He must make his own finding of
probable cause and is not confined to the issues raised
by the parties during preliminary investigation.
Moreover, his findings are not subject to review unless
shown to have been made with grave abuse.
2. COMMERCIAL LAW; INTELLECTUAL PROPERTY
LAW; COPYRIGHT; CONSTRUED. — Copyright, in the
strict sense of the term, is purely a statutory right. It is a
new or independent right granted by the statute, and not
simply a pre-existing right regulated by the statute.
Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only
with respect to the subjects and by the persons, and on
terms and conditions specified in the statute. Since . . .
copyright in published works is purely a statutory
creation, a copyright may be obtained only for a work
falling within the statutory enumeration or description.
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. . . . P.D. No. 49, Section 2, in enumerating
what are subject to copyright, refers to finished works
and not to concepts. The copyright does not extend to
an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated,
or embodied in such work. Thus, the new
INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES provides: SEC. 175. Unprotected Subject
Matter. — Notwithstanding the provisions of Sections
172 and 173, no protection shall extend, under this law,
to any idea, procedure, system, method or operation,
concept, principle, discovery or mere data as such, even
if they are expressed, explained, illustrated or embodied
in a work; news of the day and other miscellaneous facts
having the character of mere items of press information;
or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof.
3. ID.; ID.; ID.; FORMAT OR MECHANICS OF A
TELEVISION SHOW IS NOT INCLUDED IN THE LIST
OF PROTECTED WORKS. — To begin with, the format
of a show is not copyrightable. Section 2 of P.D. No. 49,
otherwise known as the DECREE ON INTELLECTUAL
PROPERTY, enumerates the classes of work entitled to
copyright protection, to wit: Section 2. The rights granted
by this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of
works: (A) Books, including composite and cyclopedic
works, manuscripts, directories, and gazetteers; (B)
Periodicals, including pamphlets and newspaper. (C)
Lectures, sermons, addresses, dissertations prepared
for oral delivery; (D) Letters; (E) Dramatic or dramatico-
musical compositions; choreographic works and
entertainments in dumb shows, the acting form of which
is fixed in writing or otherwise; (F) Musical compositions,
with or without words; (G) Works of drawing, painting,
architecture, sculpture, engraving, lithography, and
other works of art; models or designs for works of art;
(H) Reproductions of work of art; (I) Original ornamental
designs or models for articles of manufacture, whether
or not patentable, and other works of applied art; (J)
Maps, plans, sketches, and charts; (K) Drawings or
plastic works of a scientific or technical character; (L)
Photographic works and works produced by a process
analogous to photography; lantern slides; (M)
Cinematographic works and works produced by a
process analogous to cinematography or any process
for making audio-visual recordings; (N) Computer
programs; (O) Prints, pictorial illustrations advertising
copies, labels, tags, and box wraps; (P) Dramatizations,
translations, adaptions, abridgements, arrangements
and other alterations of literary, musical or artistic works
or of works of the Philippine government as herein
defined, which shall be protected as provided in Section
8 of this Decree; (Q) Collections of literary, scholarly, or
artistic works or of works referred to in Section 9 of this
Decree which by reason of the selection and
arrangement of their contents constitute intellectual
creations, the same to be protected as such in
accordance with Section 8 of this Decree; (R) Other
literary, scholarly, scientific and artistic works. This
provision is substantially the same as Section 172 of the
INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES (R.A. No. 8293). The format or mechanics
of a television show is not included in the list of protected
works in Section 2 of P.D. No. 49. For this reason, the
protection afforded by the law cannot be extended to
cover them. ETDAaC
DECISION
MENDOZA, J p:
This is a petition for certiorari. Petitioners seek to annul
the resolution of the Department of Justice, dated
August 12, 1992, in Criminal Case No. Q-92-27854,
entitled "Gabriel Zosa, et al. v. City Prosecutor of
Quezon City and Francisco Joaquin, Jr.," and its
resolution, dated December 3, 1992, denying petitioner
Joaquin's motion for reconsideration. LLphil
Petitioner BJ Productions, Inc. (BJPI) is the
holder/grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating
game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the
National Library an addendum to its certificate of
copyright specifying the show's format and style of
presentation.
On July 14, 1991, while watching television, petitioner
Francisco Joaquin, Jr., president of BJPI, saw on RPN
Channel 9 an episode of It's a Date, which was produced
by IXL Productions, Inc. (IXL). On July 18, 1991, he
wrote a letter to private respondent Gabriel M. Zosa,
president and general manager of IXL, informing Zosa
that BJPI had a copyright to Rhoda and Me and
demanding that IXL discontinue airing It's a Date.
In a letter, dated July 19, 1991, private respondent Zosa
apologized to petitioner Joaquin and requested a
meeting to discuss a possible settlement. IXL, however,
continued airing It's a Date, prompting petitioner Joaquin
to send a second letter on July 25, 1991 in which he
reiterated his demand and warned that, if IXL did not
comply, he would endorse the matter to his attorneys for
proper legal action.
Meanwhile, private respondent Zosa sought to register
IXL's copyright to the first episode of It's a Date for which
it was issued by the National Library a certificate of
copyright on August 14, 1991.
Upon complaint by petitioners, an information for
violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN 2. The public respondent gravely abused
Channel 9, namely, William Esposo, Felipe Medina, and his discretion
Casey Francisco, in the Regional Trial Court of Quezon amounting to lack of
City where it was docketed as Criminal Case No. 92- jurisdiction when he
27854 and assigned to Branch 104 thereof. However, arrogated unto
private respondent Zosa sought a review of the himself the
resolution of the Assistant City Prosecutor before the determination of
Department of Justice. what is copyrightable
On August 12, 1992, respondent Secretary of Justice — an issue which is
Franklin M. Drilon reversed the Assistant City exclusively within the
Prosecutor's findings and directed him to move for the jurisdiction of the
dismissal of the case against private respondents. 1 regional trial court to
Petitioner Joaquin filed a motion for reconsideration, but assess in a proper
his motion was denied by respondent Secretary of proceeding.
Justice on December 3, 1992. Hence, this petition.
Petitioners contend that:
1. The public respondent gravely abused
his discretion Both public and private respondents maintain that
amounting to lack of petitioners failed to establish the existence of probable
jurisdiction when he cause due to their failure to present the copyrighted
invoked non- master videotape of Rhoda and Me. They contend that
presentation of the petitioner BJPI's copyright covers only a specific episode
master tape as being of Rhoda and Me and that the formats or concepts of
fatal to the existence dating game shows are not covered by copyright
of probable cause to protection under P. D. No. 49.
prove infringement, Non-Assignment of Error
despite the fact that Petitioners claim that their failure to submit the
private respondents copyrighted master videotape of the television show
never raised the Rhoda and Me was not raised in issue by private
same as a respondents during the preliminary investigation and,
controverted issue. therefore, it was error for the Secretary of Justice to
reverse the investigating prosecutor's finding of probable Otherwise, he shall
cause on this ground. recommend dismissal of the
A preliminary investigation falls complaint.
under the authority of the state prosecutor
who is given by law the power to direct and
control criminal actions. 2 He is, however,
subject to the control of the Secretary of In either case, he shall forward the
Justice. Thus, Rule 112, §4 of the Revised records of the case to the
Rules of Criminal Procedure, provides: provincial or city fiscal or chief
state prosecutor within five (5)
SEC. 4. Duty of investigating fiscal. — If
days from his resolution. The
the investigating fiscal finds
latter shall take appropriate
cause to hold the respondent
action thereon within ten (10)
for trial, he shall prepare the
days from receipt thereof,
resolution and corresponding
immediately informing the
information. He shall certify
parties of said action.
under oath that he, or as
shown by the record, an
authorized officer, has
personally examined the
complainant and his No complaint or information may be filed
witnesses, that there is or dismissed by an
reasonable ground to believe investigating fiscal without the
that a crime has been prior written authority or
committed and that the approval of the provincial or
accused is probably guilty city fiscal or chief state
thereof, that the accused was prosecutor.
informed of the complaint and
of the evidence submitted
against him and that he was
given an opportunity to submit Where the investigating assistant fiscal
controverting evidence. recommends the dismissal of
 the case but his findings are
reversed by the provincial or
city fiscal or chief state
prosecutor on the ground that
a probable cause exists, the
latter may, by himself, file the
corresponding information
against the respondent or
direct any other assistant
fiscal or state prosecutor to do
so, without conducting
another preliminary
investigation. cda
If upon petition by a proper party, the
Secretary of Justice reverses
the resolution of the provincial
or city fiscal or chief state
prosecutor, he shall direct the
fiscal concerned to file the
corresponding information
without conducting another
preliminary investigation or to
dismiss or move for dismissal
of the complaint or
information.
In reviewing resolutions of prosecutors, the Secretary of
Justice is not precluded from considering errors,
although unassigned, for the purpose of determining
whether there is probable cause for filing cases in court.
He must make his own finding of probable cause and is
not confined to the issues raised by the parties during
preliminary investigation. Moreover, his findings are not
subject to review unless shown to have been made with
grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of
the question whether the format or mechanics of a show
is entitled to copyright protection is for the court, and not
the Secretary of Justice, to make. They assail the
following portion of the resolution of the respondent
Secretary of Justice:
[T]he essence of copyright infringement
is the copying, in whole or in
part, of copyrightable
materials as defined and
enumerated in Section 2 of
P.D. No. 49. Apart from the
manner in which it is actually
expressed, however, the idea
of a dating game show is, in
the opinion of this Office, a
non-copyrightable material.
Ideas, concepts, formats, or
schemes in their abstract
form clearly do not fall within
the class of works or materials
susceptible of copyright
 registration as provided in of the application for the search warrant, were
PD. No. 49. 3 (Emphasis insufficient without the master tape. Accordingly, the trial
added.) court lifted the search warrants it had previously issued
against the defendants. On petition for review, this Court
sustained the action of the trial court and ruled: 6
The presentation of the master tapes of
It is indeed true that the question whether the format or the copyrighted films from
mechanics of petitioners' television show is entitled to which the pirated films were
copyright protection is a legal question for the court to allegedly copied, was
make. This does not, however, preclude respondent necessary for the validity of
Secretary of Justice from making a preliminary search warrants against
determination of this question in resolving whether there those who have in their
is probable cause for filing the case in court. In doing so possession the pirated films.
in this case, he did not commit any grave error. The petitioner's argument to
Presentation of Master Tape the effect that the
Petitioners claim that respondent Secretary of Justice presentation of the master
gravely abused his discretion in ruling that the master tapes at the time of
videotape should have been presented in order to application may not be
determine whether there was probable cause for necessary as these would be
copyright infringement. They contend that 20th Century merely evidentiary in nature
Fox Film Corporation v. Court of Appeals, 4 on which and not determinative of
respondent Secretary of Justice relied in reversing the whether or not a probable
resolution of the investigating prosecutor, is inapplicable cause exists to justify the
to the case at bar because in the present case, the issuance of the search
parties presented sufficient evidence which clearly warrants is not meritorious.
establish "linkages between the copyrighted show The court cannot presume
'Rhoda and Me' and the infringing TV show 'It's a Date.'" that duplicate or copied tapes
5 were necessarily reproduced
The case of 20th Century Fox Film Corporation involved from master tapes that it
raids conducted on various videotape outlets allegedly owns.
selling or renting out "pirated" videotapes. The trial court
found that the affidavits of NBI agents, given in support
The application for search warrants was
directed against video tape
outlets which allegedly were
engaged in the unauthorized
sale and renting out of
copyrighted films belonging to
the petitioner pursuant to P.D.
49.
established to satisfy the
requirements of probable
cause. Mere allegations as to
the existence of the
copyrighted films cannot
serve as basis for the
issuance of a search warrant.

This ruling was qualified in the later case of

Columbia Pictures, Inc. v. Court of Appeals 7
in which it was held:

In fine, the supposed pronunciamento in

said case regarding the
The essence of a copyright infringement
necessity for the presentation
is the similarity or at least
of the master tapes of the
substantial similarity of the
copyrighted films for the
purported pirated works to the
validity of search warrants
copyrighted work. Hence, the
should at most be understood
applicant must present to the
to merely serve as a
court the copyrighted films to
guidepost in determining the
compare them with the
existence of probable cause
purchased evidence of the
in copyright infringement
video tapes allegedly pirated
cases where there is doubt as
to determine whether the
to the true nexus between the
latter is an unauthorized
master tape and the pirated
reproduction of the former.
copies. An objective and
This linkage of the
careful reading of the decision
copyrighted films to the
in said case could lead to no
pirated films must be
other conclusion than that
 said directive was hardly That there is an infringement on the
intended to be a sweeping copyright of the show
and inflexible requirement in "RHODA AND ME" both in
all or similar copyright content and in the execution
infringement cases. . . . 8 of the video presentation are
established because
respondent's "IT'S A DATE" is
practically an exact copy of
In the case at bar, during the preliminary investigation, complainant's "RHODA AND
petitioners and private respondents presented written ME" because of substantial
descriptions of the formats of their respective televisions similarities as follows, to wit:
shows, on the basis of which the investigating
prosecutor ruled:
As may [be] gleaned from the evidence
on record, the substance of "RHODA AND ME" "IT'S A DATE"
the television productions
complainant's "RHODA AND
ME" and Zosa's "IT'S A
DATE" is that two matches Set 1 Set 1
are made between a male a. Unmarried participant a. same
and a female, both single, and
the two couples are treated to
a night or two of dining and/or
dancing at the expense of the
show. The major concepts of of one gender (searcher)
both shows is the same. Any appears on one side of a
difference appear mere divider, while three (3)
variations of the major unmarried participants
concepts. of the other gender are
on the other side of the
divider. This arrangement
is done to ensure
 that the searcher does presentation of a point-by-point comparison of the
not see the searchees. formats of the two shows clearly demonstrates the nexus
b. Searcher asks a question b. same between the shows and hence establishes the existence
of probable cause for copyright infringement. Such being
the case, they did not have to produce the master tape.
To begin with, the format of a show is not copyrightable.
to be answered by each of Section 2 of P.D. No. 49, 10 otherwise known as the
the searchees. The purpose DECREE ON INTELLECTUAL PROPERTY,
is to determine who among enumerates the classes of work entitled to copyright
the searchees is the most protection, to wit: LLphil
compatible with the searcher. Section 2. The rights granted by this
c. Searcher speculates on the c. same Decree shall, from the
moment of creation, subsist
with respect to any of the
following classes of works:
match to the searchee.
d. Selection is made by the d. Selection
is
(A) Books, including composite and
cyclopedic works,
manuscripts, directories, and
gazetteers;
use of compute (sic) methods, based on the
or by the way questions are answer of the
answered, or similar methods. Searchees.
Set 2 Set 2
Same as above with the genders same (B) Periodicals, including pamphlets and
of the searcher and searchees newspapers;
interchanged. 9
Petitioners assert that the format of Rhoda and Me is a
product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the
(C) Lectures, sermons, addresses, (H) Reproductions of a work of art;
dissertations prepared for oral
delivery;

(I) Original ornamental designs or

models for articles of
(D) Letters; manufacture, whether or not
patentable, and other works
of applied art;

(E) Dramatic or dramatico-musical

compositions; choreographic
works and entertainments in (J) Maps, plans, sketches, and charts;
dumb shows, the acting form
of which is fixed in writing or
otherwise;
(K) Drawings or plastic works of a
scientific or technical
character;
(F) Musical compositions, with or without
words;

(L) Photographic works and works

produced by a process
(G) Works of drawing, painting, analogous to photography;
architecture, sculpture, lantern slides;
engraving, lithography, and
other works of art; models or
designs for works of art;
(M) Cinematographic works and works
produced by a process
analogous to cinematography
or any process for making
audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations
advertising copies, labels,
tags, and box wraps;
(P) Dramatizations, translations,
adaptations, abridgements,
arrangements and other
alterations of literary, musical
or artistic works or of works of
the Philippine government as
herein defined, which shall be
protected as provided in
Section 8 of this Decree.
(Q) Collections of literary, scholarly, or
artistic works or of works
referred to in Section 9 of this
Decree which by reason of
the selection and
arrangement of their contents
constitute intellectual
creations, the same to be
protected as such in
accordance with Section 8 of
this Decree.
(R) Other literary, scholarly, scientific
and artistic works.
This provision is substantially the
same as §172 of the INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES
(R.A. No. 8293). 11 The format or mechanics
of a television show is not included in the list
of protected works in §2 of P.D. No. 49. For
this reason, the protection afforded by the law
cannot be extended to cover them.
Copyright, in the strict sense of the term,
is purely a statutory right. It is
a new or independent right
granted by the statute, and
 not simply a pre-existing right
regulated by the statute.
Being a statutory grant, the
rights are only such as the
statute confers, and may be
obtained and enjoyed only
with respect to the subjects
and by the persons, and on
terms and conditions
specified in the statute. 12
Since . . . copyright in published works is
purely a statutory creation, a
copyright may be obtained
only for a work falling within
the statutory enumeration or
description. 13
Regardless of the historical viewpoint, it
is authoritatively settled in the
United States that there is no
copyright except that which is
both created and secured by
act of Congress . . . 14
P.D. No. 49, §2, in enumerating what are subject to
copyright, refers to finished works and not to concepts.
The copyright does not extend to an idea, procedure,
process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such
work. 15 Thus, the new INTELLECTUAL PROPERTY
CODE OF THE PHILIPPINES provides:
SEC. 175. Unprotected Subject Matter.
— Notwithstanding the
provisions of Sections 172
and 173, no protection shall
extend, under this law, to any
idea, procedure, system,
method or operation, concept,
principle, discovery or mere
data as such, even if they are
expressed, explained,
illustrated or embodied in a
work; news of the day and
other miscellaneous facts
having the character of mere
items of press information; or
any official text of a
legislative, administrative or
legal nature, as well as any
official translation thereof.
What then is the subject matter of petitioners' copyright?
This Court is of the opinion that petitioner BJPI's
copyright covers audio-visual recordings of each copyright/format of both
episode of Rhoda and Me, as falling within the class of dating game shows. 16
works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works
produced by a process
analogous to cinematography WHEREFORE, the petition is hereby DISMISSED.
or any process for making SO ORDERED.
audio-visual recordings; Puno, Quisumbing and Buena, JJ., concur.
Bellosillo, J., took no part. Related to one of parties.
||| (Joaquin, Jr. v. Drilon, G.R. No. 108946, [January 28,
1999], 361 PHIL 900-916)
The copyright does not extend to the general
concept or format of its dating game show.
Accordingly, by the very nature of the subject
of petitioner BJPI's copyright, the
investigating prosecutor should have the
opportunity to compare the videotapes of the
two shows.

Mere description by words of the general format of the

two dating game shows is insufficient; the presentation
of the master videotape in evidence was indispensable
to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:
A television show includes more than
mere words can describe
because it involves a whole
spectrum of visuals and
effects, video and audio, such
that no similarity or
dissimilarity may be found by
merely describing the general
JESSIE G. CHING, petitioner, vs. WILLIAM M.
SALINAS, SR., WILLIAM M. SALINAS, JR.,
JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS,
ALONTO SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (Board of Directors and
Officers of WILAWARE PRODUCT CORPORATION),
respondents.
DECISION
CALLEJO, SR., J p:
This petition for review on certiorari assails the Decision
1 and Resolution 2 of the Court of Appeals (CA) in CA-
G.R. SP No. 70411 affirming the January 3, 2002 and
February 14, 2002 Orders 3 of the Regional Trial Court
(RTC) of Manila, Branch 1, which quashed and set aside
Search Warrant Nos. 01-2401 and 01-2402 granted in
favor of petitioner Jessie G. Ching.
Jessie G. Ching is the owner and general manager of
Jeshicris Manufacturing Co., the maker and
manufacturer of a Utility Model, described as "Leaf
Spring Eye Bushing for Automobile" made up of plastic.
ICTaEH
On September 4, 2001, Ching and Joseph Yu were
issued by the National Library Certificates of Copyright
Registration and Deposit of the said work described
therein as "Leaf Spring Eye Bushing for Automobile." 4
On September 20, 2001, Ching requested the National is made up of
Bureau of Investigation (NBI) for police/investigative polyvinyl chloride
assistance for the apprehension and prosecution of plastic;
illegal manufacturers, producers and/or distributors of
the works. 5
After due investigation, the NBI filed applications for
search warrants in the RTC of Manila against William d.) Undetermined quantity of Dies and
Salinas, Sr. and the officers and members of the Board jigs, patterns and
of Directors of Wilaware Product Corporation. It was flasks used in the
alleged that the respondents therein reproduced and manufacture/fabricat
distributed the said models penalized under Sections ion of items a to d;
177.1 and 177.3 of Republic Act (R.A.) No. 8293. The SACHcD
applications sought the seizure of the following:
a.) Undetermined quantity of Leaf spring
eye bushing for
automobile that are
made up of plastic e.) Evidences of sale which include
polypropylene; delivery receipts,
invoices and official
receipts. 6

b.) Undetermined quantity of Leaf spring

eye bushing for
automobile that are The RTC granted the application and issued Search
made up of polyvinyl Warrant Nos. 01-2401 and 01-2402 for the seizure of the
chloride plastic; aforecited articles. 7 In the inventory submitted by the
NBI agent, it appears that the following articles/items
were seized based on the search warrants:
Leaf Spring eye bushing
c.) Undetermined quantity of Vehicle
bearing cushion that
a) Plastic Polypropylene c) Mold for spring eye bushing for
C190 1 set

C190 27}
C240 rear 40} d) Mold for C240 rear 1 piece
C240 front 41} BAG 1 of the set
b) Polyvinyl Chloride Plastic

e) Mold for spring eye bushing for L300 2

C190 13} sets
c) Vehicle bearing cushion

f) Mold for leaf spring eye bushing C190

center bearing cushion 11} with metal 1 set
Budder for C190 mold 8}

g) Mold for vehicle bearing cushion 1 set

Diesel Mold 8

a) Mold for spring eye bushing rear 1 set
b) Mold for spring eye bushing front 1 set
The respondents filed a motion to quash the search
warrants on the following grounds:
2. The copyright registrations were
issued in violation of the
 Intellectual Property Code on in nature; they are considered automotive spare parts
the ground that: and pertain to technology. They aver that the models are
not original, and as such are the proper subject of a
patent, not copyright. 10
In opposing the motion, the petitioner averred that the
a) the subject matter of the registrations court which issued the search warrants was not the
are not proper forum in which to articulate the issue of the
artistic or validity of the copyrights issued to him. Citing the ruling
literary; of the Court in Malaloan v. Court of Appeals, 11 the
petitioner stated that a search warrant is merely a judicial
process designed by the Rules of Court in anticipation of
a criminal case. Until his copyright was nullified in a
proper proceeding, he enjoys rights of a registered
b) the subject matter of the registrations owner/holder thereof.
are spare On January 3, 2002, the trial court issued an Order 12
parts of granting the motion, and quashed the search warrant on
automobiles its finding that there was no probable cause for its
meaning — issuance. The court ruled that the work covered by the
there (sic) certificates issued to the petitioner pertained to solutions
are original to technical problems, not literary and artistic as
parts that provided in Article 172 of the Intellectual Property Code.
they are His motion for reconsideration of the order having been
designed to denied by the trial court's Order of February 14, 2002,
replace. the petitioner filed a petition for certiorari in the CA,
Hence, they contending that the RTC had no jurisdiction to delve into
are not and resolve the validity of the copyright certificates
original. 9 issued to him by the National Library. He insisted that his
works are covered by Sections 172.1 and 172.2 of the
Intellectual Property Code. The petitioner averred that
the copyright certificates are prima facie evidence of its
The respondents averred that the works covered by the validity, citing the ruling of the United States Court of
certificates issued by the National Library are not artistic Appeals in Wildlife Express Corporation v. Carol Wright
Sales, Inc. 13 The petitioner asserted that the answers, in writing
respondents failed to adduce evidence to support their and under oath, the
motion to quash the search warrants. The petitioner complainant and any
noted that respondent William Salinas, Jr. was not being witness he may
honest, as he was able to secure a similar copyright produce, on facts
registration of a similar product from the National Library personally known to
on January 14, 2002. them and attach to
On September 26, 2003, the CA rendered judgment the record their
dismissing the petition on its finding that the RTC did not sworn statements
commit any grave abuse of its discretion in issuing the together with any
assailed order, to wit: affidavit submitted.
It is settled that preliminarily, there must TEDAHI
be a finding that a specific
offense must have been
committed to justify the
issuance of a search warrant. "In the determination of probable cause,
In a number of cases decided the court must
by the Supreme Court, the necessarily resolve
same is explicitly provided, whether or not an
thus: offense exists to
justify the issuance
or quashal of the
search warrant."
"The probable cause must be in
connection with one
specific offense, and
the judge must, In the instant case, the petitioner is
before issuing the praying for the reinstatement
warrant, personally of the search warrants issued,
examine in the form but subsequently quashed,
of searching for the offense of Violation of
questions and
 Class Designation of
Copyrightable Works under
Section 177.1 in relation to
Section 177.3 of Republic Act
8293, when the objects
subject of the same, are
patently not copyrightable.
It is worthy to state that the works
protected under the Law on
Copyright are: literary or
artistic works (Sec. 172) and
derivative works (Sec. 173).
The Leaf Spring Eye Bushing
and Vehicle Bearing Cushion
fall on neither classification.
Accordingly, if, in the first
place, the item subject of the
petition is not entitled to be
protected by the law on
copyright, how can there be
any violation? 14
The petitioner's motion for reconsideration of the said
decision suffered the same fate. The petitioner forthwith
filed the present petition for review on certiorari,
contending that the revocation of his copyright
certificates should be raised in a direct action and not in
a search warrant proceeding. HEISca
The petitioner posits that even assuming ex argumenti
that the trial court may resolve the validity of his
copyright in a proceeding to quash a search warrant for
allegedly infringing items, the RTC committed a grave
abuse of its discretion when it declared that his works
are not copyrightable in the first place. He claims that
R.A. No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, which took effect on
January 1, 1998, provides in no uncertain terms that
copyright protection automatically attaches to a work by
the sole fact of its creation, irrespective of its mode or
form of expression, as well as of its content, quality or
purpose. 15 The law gives a non-inclusive definition of
"work" as referring to original intellectual creations in the
literary and artistic domain protected from the moment
of their creation; and includes original ornamental
designs or models for articles of manufacture, whether
or not registrable as an industrial design and other works
of applied art under Section 172.1(h) of R.A. No. 8293.
As such, the petitioner insists, notwithstanding the
classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works
which may have a bearing on the utility aspect to which
the petitioner's utility designs were classified. Moreover,
according to the petitioner, what the Copyright Law
protects is the author's intellectual creation, regardless
of whether it is one with utilitarian functions or
incorporated in a useful article produced on an industrial
scale.
The petitioner also maintains that the law does not
provide that the intended use or use in industry of an
article eligible for patent bars or invalidates its
registration under the Law on Copyright. The test of
protection for the aesthetic is not beauty and utility, but
art for the copyright and invention of original and
ornamental design for design patents. 16 In like manner,
the fact that his utility designs or models for articles of
manufacture have been expressed in the field of
automotive parts, or based on something already in the
public domain does not automatically remove them from
the protection of the Law on Copyright. 17
The petitioner faults the CA for ignoring Section 218 of
R.A. No. 8293 which gives the same presumption to an
affidavit executed by an author who claims copyright
ownership of his work.
The petitioner adds that a finding of probable cause to
justify the issuance of a search warrant means merely a
reasonable suspicion of the commission of the offense.
It is not equivalent to absolute certainty or a finding of
actual and positive cause. 18 He assists that the
determination of probable cause does not concern the
issue of whether or not the alleged work is copyrightable.
He maintains that to justify a finding of probable cause
in the issuance of a search warrant, it is enough that
there exists a reasonable suspicion of the commission
of the offense. EDIaSH
The petitioner contends that he has in his favor the
benefit of the presumption that his copyright is valid;
hence, the burden of overturning this presumption is on
the alleged infringers, the respondents herein. But this
burden cannot be carried in a hearing on a proceeding
to quash the search warrants, as the issue therein is
whether there was probable cause for the issuance of
the search warrant. The petitioner concludes that the
issue of probable cause should be resolved without
invalidating his copyright.
In their comment on the petition, the respondents aver
that the work of the petitioner is essentially a technical
solution to the problem of wear and tear in automobiles,
the substitution of materials, i.e., from rubber to plastic
matter of polyvinyl chloride, an oil resistant soft texture
plastic material strong enough to endure pressure
brought about by the vibration of the counter bearing and
thus brings bushings. Such work, the respondents
assert, is the subject of copyright under Section 172.1 of
R.A. No. 8293. The respondents posit that a technical
solution in any field of human activity which is novel may
be the subject of a patent, and not of a copyright. They
insist that the certificates issued by the National Library
are only certifications that, at a point in time, a certain
work was deposited in the said office. Furthermore, the
registration of copyrights does not provide for automatic
protection. Citing Section 218.2(b) of R.A. No. 8293, the
respondents aver that no copyright is said to exist if a
party categorically questions its existence and legality.
Moreover, under Section 2, Rule 7 of the Implementing
Rules of R.A. No. 8293, the registration and deposit of
work is not conclusive as to copyright outlay or the time
of copyright or the right of the copyright owner. The
respondents maintain that a copyright exists only when
the work is covered by the protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the
issue whether the petitioner's utility models are
copyrightable and, if so, whether he is the owner of a
copyright over the said models. It bears stressing that
upon the filing of the application for search warrant, the
RTC was duty-bound to determine whether probable
cause existed, in accordance with Section 4, Rule 126
of the Rules of Criminal Procedure:
SEC. 4. Requisite for issuing search
warrant. — A search warrant
shall not issue but upon
probable cause in connection
with one specific offense to be
determined personally by the
judge after examination under
oath or affirmation of the
complainant and the
witnesses he may produce,
and, particularly, describing
the place to be searched and
the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC
QC, Br. 93, 19 the Court held that in the determination
of probable cause, the court must necessarily resolve
whether or not an offense exists to justify the issuance
of a search warrant or the quashal of one already issued
by the court. Indeed, probable cause is deemed to exist
only where facts and circumstances exist which could
lead a reasonably cautious and prudent man to believe
that an offense has been committed or is being
committed. Besides, in Section 3, Rule 126 of the Rules
of Criminal Procedure, a search warrant may be issued
for the search and seizure of personal property (a)
subject of the offense; (b) stolen or embezzled and other
proceeds or fruits of the offense; or (c) used or intended
to be used as the means of committing an offense.
The RTC is mandated under the Constitution and Rules
of Criminal Procedure to determine probable cause. The
court cannot abdicate its constitutional obligation by
refusing to determine whether an offense has been
committed. 20 The absence of probable cause will
cause the outright nullification of the search warrant. 21
For the RTC to determine whether the crime for
infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was
burdened to prove that (a) respondents Jessie Ching
and Joseph Yu were the owners of copyrighted material;
and (b) the copyrighted material was being copied and
distributed by the respondents. Thus, the ownership of a
valid copyright is essential. 22
Ownership of copyrighted material is shown by proof of
originality and copyrightability. By originality is meant
that the material was not copied, and evidences at least
minimal creativity; that it was independently created by
the author and that it possesses at least same minimal
degree of creativity. 23 Copying is shown by proof of
access to copyrighted material and substantial similarity
between the two works. 24 The applicant must thus
demonstrate the existence and the validity of his
copyright because in the absence of copyright
protection, even original creation may be freely copied. (a) Copyright shall be presumed to
25 subsist in the work or other
By requesting the NBI to investigate and, if feasible, file subject matter to which the
an application for a search warrant for infringement action relates if the defendant
under R.A. No. 8293 against the respondents, the does not put in issue the
petitioner thereby authorized the RTC (in resolving the question whether copyright
application), to delve into and determine the validity of subsists in the work or other
the copyright which he claimed he had over the utility subject matter; and cSCTID
models. The petitioner cannot seek relief from the RTC
based on his claim that he was the copyright owner over
the utility models and, at the same time, repudiate the
court's jurisdiction to ascertain the validity of his claim (b) Where the subsistence of the
without running afoul to the doctrine of estoppel. copyright is established, the
To discharge his burden, the applicant may present the plaintiff shall be presumed to
certificate of registration covering the work or, in its be the owner of the copyright
absence, other evidence. 26 A copyright certificate if he claims to be the owner of
provides prima facie evidence of originality which is one the copyright and the
element of copyright validity. It constitutes prima facie defendant does not put in
evidence of both validity and ownership 27 and the issue the question of his
validity of the facts stated in the certificate. 28 The ownership.
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, A certificate of registration creates no rebuttable
effectively challenging them, shifts the burden of doing presumption of copyright validity where other evidence
so to the applicant. 29 Indeed, Section 218.2 of R.A. No. in the record casts doubt on the question. In such a case,
8293 provides: validity will not be presumed. 30
218.2. In an action under this Chapter: To discharge his burden of probable cause for the
issuance of a search warrant for violation of R.A. No.
8293, the petitioner-applicant submitted to the RTC
Certificate of Copyright Registration Nos. 2001-197 and
2001-204 dated September 3, 2001 and September 4,
2001, respectively, issued by the National Library
covering work identified as Leaf Spring Eye Bushing for
Automobile and Vehicle Bearing Cushion both classified
under Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. —
172.1. Literary and artistic
works, hereinafter referred to
as "works," are original
intellectual creations in the
literary and artistic domain
protected from the moment of
their creation and shall
include in particular:
xxx xxx xxx
(h) Original ornamental designs or
models for articles of
manufacture, whether or not
registrable as an industrial
design, and other works of
applied art.
Related to the provision is Section 171.10, which
provides that a "work of applied art" is an artistic creation
with utilitarian functions or incorporated in a useful
article, whether made by hand or produced on an
industrial scale.
But, as gleaned from the specifications appended to the
application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for
Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial
bore that is centrally located and provided with a
perpendicular flange on one of its ends and a cylindrical
metal jacket surrounding the peripheral walls of said
body, with the bushing made of plastic that is either
polyvinyl chloride or polypropylene. 31 Likewise, the
Vehicle Bearing Cushion is illustrated as a bearing
cushion comprising a generally semi-circular body
having a central hole to secure a conventional bearing
and a plurality of ridges provided therefore, with said
cushion bearing being made of the same plastic
materials. 32 Plainly, these are not literary or artistic
works. They are not intellectual creations in the literary
and artistic domain, or works of applied art. They are
certainly not ornamental designs or one having
decorative quality or value.
It bears stressing that the focus of copyright is the
usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is
a work of art. 33 Works for applied art include all original
pictorials, graphics, and sculptural works that are
intended to be or have been embodied in useful article
regardless of factors such as mass production,
commercial exploitation, and the potential availability of
design patent protection. 34
As gleaned from the description of the models and their Thus, the petitioner described the utility model as
objectives, these articles are useful articles which are follows:
defined as one having an intrinsic utilitarian function that LEAF SPRING EYE BUSHING FOR
is not merely to portray the appearance of the article or AUTOMOBILE
to convey information. Indeed, while works of applied
art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial
design are not. 35 A useful article may be copyrightable Known bushings inserted to leaf-spring
only if and only to the extent that such design eye to hold leaf-springs of
incorporates pictorial, graphic, or sculptural features that automobile are made of hard
can be identified separately from, and are capable of rubber. These rubber
existing independently of the utilitarian aspects of the bushings after a time, upon
article. subjecting them to so much or
We agree with the contention of the petitioner (citing intermittent pressure would
Section 171.10 of R.A. No. 8293), that the author's eventually wore (sic) out that
intellectual creation, regardless of whether it is a would cause the wobbling of
creation with utilitarian functions or incorporated in a the leaf spring. IScaAE
useful article produced on an industrial scale, is
protected by copyright law. However, the law refers to a
"work of applied art which is an artistic creation." It bears
stressing that there is no copyright protection for works
of applied art or industrial design which have aesthetic The primary object of this utility model,
or artistic features that cannot be identified separately therefore, is to provide a leaf-
from the utilitarian aspects of the article. 36 Functional spring eye bushing for
components of useful articles, no matter how artistically automobile that is made up of
designed, have generally been denied copyright plastic.
protection unless they are separable from the useful
article. 37
In this case, the petitioner's models are not works of
applied art, nor artistic works. They are utility models, Another object of this utility model is to
useful articles, albeit with no artistic design or value. provide a leaf-spring eye
bushing for automobiles
 made of polyvinyl chloride, an
oil resistant soft texture
plastic or polypropylene, a
hard plastic, yet both causes
cushion to the leaf spring, yet
strong enough to endure
pressure brought about by the
up and down movement of
said leaf spring.
Yet, an object of this utility model is to
provide a leaf-spring eye
bushing for automobiles that
has a much longer life span
than the rubber bushings.
Still an object of this utility model is to
provide a leaf-spring eye
bushing for automobiles that
has a very simple
construction and can be
made using simple and
ordinary molding equipment.
A further object of this utility model is to
provide a leaf-spring eye
bushing for automobile that is
supplied with a metal jacket to
reinforce the plastic eye
bushing when in engaged
with the steel material of the
leaf spring.
These and other objects and advantages
will come to view and be
understood upon a reading of
the detailed description when
taken in conjunction with the
accompanying drawings.
Figure 1 is an exploded perspective of a
leaf-spring eye bushing
according to the present utility
model;
Figure 2 is a sectional view taken along
line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view co-axial bore 12 centrally
of another embodiment of this provided thereof.
utility model;

As shown in Figs. 1 and 2, said leaf-

Figure 4 is a perspective view of a third spring eye bushing 10 is
embodiment; and provided with a perpendicular
flange 13 on one of its ends
and a cylindrical metal jacket
14 surrounding the peripheral
Figure 5 is a sectional view thereof. walls 15 of said body 11.
When said leaf-spring
bushing 10 is installed, the
metal jacket 14 acts with the
leaf-spring eye (not shown),
Referring now to the several views of the which is also made of steel or
drawings wherein like cast steel. In effect, the
reference numerals bushing 10 will not be directly
designated same parts in contact with steel, but
throughout, there is shown a rather the metal jacket,
utility model for a leaf-spring making the life of the bushing
eye bushing for automobile 10 longer than those without
generally designated as the metal jacket.
reference numeral 10.

In Figure 2, the bushing 10 as shown is

Said leaf-spring eye bushing 10 made of plastic, preferably
comprises a generally polyvinyl chloride, an oil
cylindrical body 11 having a resistant soft texture plastic or
 a hard polypropylene plastic,
both are capable to endure
the pressure applied thereto,
and, in effect, would lengthen
the life and replacement
therefor.
Figure 3, on the other hand, shows the
walls 16 of the co-axial bore
12 of said bushing 10 is
insertably provided with a
steel tube 17 to reinforce the
inner portion thereof. This
steel tube 17 accommodates
or engages with the leaf-
spring bolt (not shown)
connecting the leaf spring and
the automobile's chassis.
Figures 4 and 5 show another
embodiment wherein the leaf
eye bushing 10 is elongated
and cylindrical as to its
construction. Said another
embodiment is also made of
polypropylene or polyvinyl
chloride plastic material. The
steel tube 17 and metal jacket
14 may also be applied to this
embodiment as an option
thereof. 38
VEHICLE BEARING CUSHION
Known bearing cushions inserted to
bearing housings for vehicle
propeller shafts are made of
hard rubber. These rubber
bushings after a time, upon
subjecting them to so much or
intermittent pressure would
eventually be worn out that
would cause the wobbling of
the center bearing.
The primary object of this utility model
therefore is to provide a
vehicle-bearing cushion that
is made up of plastic.
Another object of this utility model is to
provide a vehicle bearing
cushion made of polyvinyl
chloride, an oil resistant soft
texture plastic material which
causes cushion to the
propeller's center bearing, yet
strong enough to endure
pressure brought about by the
vibration of the center
bearing.
Yet, an object of this utility model is to
provide a vehicle-bearing
cushion that has a much
longer life span than rubber
bushings. ESCacI
Still an object of this utility model is to
provide a vehicle bearing
cushion that has a very simple
construction and can be
made using simple and
ordinary molding equipment.
These and other objects and advantages
will come to view and be
understood upon a reading of
the detailed description when
taken in conjunction with the
accompanying drawings.
Figure 1 is a perspective view of the
present utility model for a
vehicle-bearing cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the
drawing, wherein like
reference numeral designate
same parts throughout, there
is shown a utility model for a
vehicle-bearing cushion
generally designated as
reference numeral 10.
TAaHIE
Said bearing cushion 10 comprises of a
generally semi-circular body
11, having central hole 12 to
house a conventional bearing
(not shown). As shown in
Figure 1, said body 11 is
provided with a plurality of
ridges 13 which serves
reinforcing means thereof.
The subject bearing cushion 10 is made
of polyvinyl chloride, a soft
texture oil and chemical
resistant plastic material
which is strong, durable and
capable of enduring severe
pressure from the center
bearing brought about by the
rotating movement of the
propeller shaft of the vehicle.
39
A utility model is a technical solution to a problem in any
field of human activity which is new and industrially
applicable. It may be, or may relate to, a product, or
process, or an improvement of any of the aforesaid. 40
Essentially, a utility model refers to an invention in the
mechanical field. This is the reason why its object is
sometimes described as a device or useful object. 41 A
utility model varies from an invention, for which a patent
for invention is, likewise, available, on at least three
aspects: first, the requisite of "inventive step" 42 in a
patent for invention is not required; second, the
maximum term of protection is only seven years 43
compared to a patent which is twenty years, 44 both
reckoned from the date of the application; and third, the
provisions on utility model dispense with its substantive
examination 45 and prefer for a less complicated
system. HDCAaS
Being plain automotive spare parts that must conform to
the original structural design of the components they
seek to replace, the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion are not ornamental. They lack
the decorative quality or value that must characterize
authentic works of applied art. They are not even artistic
creations with incidental utilitarian functions or works
incorporated in a useful article. In actuality, the personal
properties described in the search warrants are
mechanical works, the principal function of which is utility
sans any aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing
and Vehicle Bearing Cushion as included in the catch-
all phrase "other literary, scholarly, scientific and artistic
works" in Section 172.1(a) of R.A. No. 8293. Applying
the principle of ejusdem generis which states that
"where a statute describes things of a particular class or
kind accompanied by words of a generic character, the
generic word will usually be limited to things of a similar
nature with those particularly enumerated, unless there
be something in the context of the state which would
repel such inference," 46 the Leaf Spring Eye Bushing
and Vehicle Bearing Cushion are not copyrightable,
being not of the same kind and nature as the works
enumerated in Section 172 of R.A. No. 8293. HCITDc
No copyright granted by law can be said to arise in favor
of the petitioner despite the issuance of the certificates
of copyright registration and the deposit of the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion.
Indeed, in Joaquin, Jr. v. Drilon 47 and Pearl & Dean
(Phil.), Incorporated v. Shoemart, Incorporated, 48 the
Court ruled that:
Copyright, in the strict sense of the term,
is purely a statutory right. It is
a new or independent right
granted by the statute, and
not simply a pre-existing right
regulated by it. Being a
statutory grant, the rights are
only such as the statute
confers, and may be obtained
and enjoyed only with respect
to the subjects and by the
persons, and on terms and
conditions specified in the
statute. Accordingly, it can
cover only the works falling
within the statutory
enumeration or description.
That the works of the petitioner may be the proper
subject of a patent does not entitle him to the issuance
of a search warrant for violation of copyright laws. In Kho
v. Court of Appeals 49 and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated, 50 the Court
ruled that "these copyright and patent rights are
completely distinct and separate from one another, and
the protection afforded by one cannot be used
interchangeably to cover items or works that exclusively
pertain to the others." The Court expounded further,
thus:
Trademark, copyright and patents are
different intellectual property
rights that cannot be
interchanged with one
another. A trademark is any
visible sign capable of
distinguishing the goods
(trademark) or services
(service mark) of an
enterprise and shall include a
stamped or marked container
of goods. In relation thereto, a
trade name means the name
or designation identifying or
distinguishing an enterprise.
Meanwhile, the scope of a
copyright is confined to
literary and artistic works
which are original intellectual
creations in the literary and
artistic domain protected from
 the moment of their creation. copyrightable works of art or models or designs for
Patentable inventions, on the works of art. The High Court ruled that:
other hand, refer to any "Works of art (Class G) — (a) — In
technical solution of a General. This class includes
problem in any field of human works of artistic
activity which is new, involves craftsmanship, in so far as
an inventive step and is their form but not their
industrially applicable. mechanical or utilitarian
EHSITc aspects are concerned, such
as artistic jewelry, enamels,
glassware, and tapestries, as
well as all works belonging to
The petitioner cannot find solace in the ruling of the the fine arts, such as
United States Supreme Court in Mazer v. Stein 51 to paintings, drawings and
buttress his petition. In that case, the artifacts involved sculpture. . . ."
in that case were statuettes of dancing male and female
figures made of semi-vitreous china. The controversy
therein centered on the fact that although copyrighted as
"works of art," the statuettes were intended for use and So we have a contemporaneous and
used as bases for table lamps, with electric wiring, long-continued construction
sockets and lampshades attached. The issue raised was of the statutes by the agency
whether the statuettes were copyright protected in the charged to administer them
United States, considering that the copyright applicant that would allow the
intended primarily to use them as lamp bases to be registration of such a
made and sold in quantity, and carried such intentions statuette as is in question
into effect. At that time, the Copyright Office interpreted here. 52
the 1909 Copyright Act to cover works of artistic
craftsmanship insofar as their form, but not the utilitarian
aspects, were concerned. After reviewing the history
and intent of the US Congress on its copyright legislation The High Court went on to state that "[t]he dichotomy of
and the interpretation of the copyright office, the US protection for the aesthetic is not beauty and utility but
Supreme Court declared that the statuettes were held
art for the copyright and the invention of original and
ornamental design for design patents." Significantly, the
copyright office promulgated a rule to implement Mazer
to wit:
. . . [I]f "the sole intrinsic function of an
article is its utility, the fact that
the work is unique and
attractively shaped will not
qualify it as a work of art."

In this case, the bushing and cushion are not works of

art. They are, as the petitioner himself admitted, utility
models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant
petition is hereby DENIED for lack of merit. The assailed
Decision and Resolution of the Court of Appeals in CA-
G.R. SP No. 70411 are AFFIRMED. Search Warrant
Nos. 01-2401 and 01-2402 issued on October 15, 2001
are ANNULLED AND SET ASIDE. Costs against the
petitioner.
SO ORDERED.
Puno, Austria-Martinez, Tinga and Chico-Nazario, JJ.,
concur.

||| (Ching v. Salinas Sr., G.R. No. 161295, [June 29,

2005], 500 PHIL 628-651)

FILIPINO SOCIETY OF COMPOSERS, AUTHORS
AND PUBLISHERS, INC., plaintiff-appellant, vs.
BENJAMIN TAN, defendant-appellee.
Lichauco, Picazo & Agcaoili Law Office for plaintiff-
appellant.
Ramon A. Nieves for defendant-appellee.
DECISION
PARAS, J p:
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. Benjamin Tan, Defendant-Appellee, from the decision
of the Court of First Instance of Manila, Branch VII in
Civil Case No. 71222 *** "Filipino Society of Composers,
Authors and Publishers, Inc., Plaintiff v. Benjamin Tan,
Defendant," which had dismissed plaintiffs' complaint
without special pronouncement as to costs. cdphil
The Court of Appeals, finding that the case involves pure
questions of law, certified the same to the Supreme
Court for final determination (Resolution, CA-G.R. No.
46373-R, Rollo, p. 36; Resolution of the Supreme Court
of February 16, 1973 in L-36402, Rollo, p. 38).
The undisputed facts of this case are as follows:
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 Exchange Commission. Said
association is the owner of certain musical compositions
among which are the songs entitled: "Dahil Sa Iyo,"
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao
Lamang" and "The Nearness Of You."
On the other hand, defendant-appellee is the operator of
a restaurant known as "Alex Soda Foundation and
Restaurant" where a combo with professional singers,
hired to play and sing musical compositions to entertain
and amuse customers therein, were playing and singing
the 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 license fee for the playing and
singing of aforesaid compositions but the demand was
ignored.
Hence, on November 7, 1967, appellant filed a
complaint with the lower court for infringement of
copyright against defendant-appellee for allowing the
playing in defendant-appellee's restaurant of said songs
copyrighted in the name of the former. LexLib
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
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 THE LOWER COURT ERRED IN
Copyright Law (Act 3134 of the Philippine Legislature). HOLDING THAT THE
The lower court, finding for the defendant, dismissed the MUSICAL COMPOSITIONS
complaint (Record on Appeal, p. 25). OF THE APPELLANT WERE
Plaintiff appealed to the Court of Appeals which as PLAYED AND SUNG IN THE
already stated certified the case to the Supreme Court SODA FOUNTAIN AND
for adjudication on the legal question involved. RESTAURANT OF THE
(Resolution, Court of Appeals, Rollo, p. 36; Resolution APPELLEE BY
of the Supreme Court of February 18, 1973, Rollo, p. INDEPENDENT
38). CONTRACTORS AND ONLY
In its brief in the Court of Appeals, appellant raised the UPON THE REQUEST OF
following Assignment of Errors: CUSTOMERS.
I

III

THE LOWER COURT ERRED IN

HOLDING THAT THE
MUSICAL COMPOSITIONS
OF THE APPELLANT WERE THE LOWER COURT ERRED IN
IN THE NATURE OF PUBLIC HOLDING THAT THE
PROPERTY WHEN THEY PLAYING AND SINGING OF
WERE COPYRIGHTED OR COPYRIGHTED MUSICAL
REGISTERED. COMPOSITIONS IN THE
SODA FOUNTAIN AND
RESTAURANT OF THE
APPELLEE ARE NOT
II PUBLIC PERFORMANCES
FOR PROFIT OF THE SAID
 COMPOSITIONS WITHIN Copyright Law of the Philippines; and assuming that
THE MEANING AND there were indeed public performances for profit,
CONTEMPLATION OF THE whether or not appellee can be held liable therefor.
COPYRIGHT LAW. Appellant anchors its claim on Section 3(c) of the
Copyright Law which provides:
"SEC. 3. The proprietor of a copyright or
his heirs or assigns shall have
IV the exclusive right:

xxx xxx xxx

THE LOWER COURT ERRED IN NOT

HOLDING THAT THE (c) To exhibit, perform, represent,
APPELLEE IS LIABLE TO produce, or reproduce the
THE APPELLANT FOR copyrighted work in any
FOUR (4) SEPARATE manner or by any method
INFRINGEMENTS. (Brief for whatever for profit or
Appellant, pp. A and B). otherwise; if not reproduced
in copies for sale, to sell any
manuscripts or any record
whatsoever thereof;
The petition is devoid of merit. Cdpr
The principal issues in this case are whether or not the
playing and signing of musical compositions which have
been copyrighted under the provisions of the Copyright xxx xxx xxx"
Law (Act 3134) inside the establishment of the
defendant-appellee constitute a public performance for
profit within the meaning and contemplation of the
 It maintains that playing or singing a of the orchestra, the music is furnished and used by the
musical composition is universally accepted orchestra for the purpose of inducing the public to
as performing the musical composition and patronize the establishment and pay for the
that playing and singing of copyrighted music entertainment in the purchase of food and drinks. The
in the soda fountain and restaurant of the defendant conducts his place of business for profit, and
appellee for the entertainment of the it is public; and the music is performed for profit (Ibid., p.
customers although the latter do not pay for 319). In a similar case, the Court ruled that "The
the music but only for the food and drink Performance in a restaurant or hotel dining room, by
constitute performance for profit under the persons employed by the proprietor, of a copyrighted
Copyright Law (Brief for the Appellant, pp. musical composition, for the entertainment of patrons,
1925). without charge for admission to hear it, infringes the
exclusive right of the owner of the copyright." (Herbert v.
We concede that indeed there were Shanley Co.; John Church Co. v. Hillard Hotel Co., et al.,
"public performances for profit." 242 U.S. 590-591). In delivering the opinion of the Court
in said two cases, Justice Holmes elaborated thus: prcd
The word 'perform' as used in the Act has been applied "If the rights under the copyright are
to "One who plays a musical composition on a piano, infringed only by a
thereby producing in the air sound waves which are performance where money is
heard as music . . . and if the instrument he plays on is taken at the door, they are
a piano plus a broadcasting apparatus, so that waves very imperfectly protected.
are thrown out, not only upon the air, but upon the other, Performances not different in
then also he is performing the musical composition." kind from those of the
(Buck, et al. v. Duncan, et al.; Same v. Jewell-La Salle defendants could be given
Realty Co., 32F. 2d. Series 367). that might compete with and
In relation thereto, it has been held that "The playing of even destroy the success of
music in dine and dance establishment which was paid the monopoly that the law
for by the public in purchases of food and drink intends the plaintiffs to have.
constituted 'performance for profit' within a Copyright It is enough to say that there
Law," (Buck, et al. v. Russon, No. 4489 25 F. Supp. 317). is no need to construe the
Thus, it has been explained that while it is possible in statute so narrowly. The
such establishments for the patrons to purchase their defendants' performances
food and drinks and at the same time dance to the music are not eleemosynary. They
 are part of a total for which the
public pays, and the fact that
the price of the whole is
attributed to a 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
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 meal. If music
did not pay, it would be given
up. If it pays, it pays out of the
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 food and drinks
and apparently not for listening to the music. As found
by the trial court, the 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 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
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-appellee's restaurant constituted
performance for profit contemplated by the Copyright
Law. (Act 3134 as amended by P.D. No. 49, as
amended).
Nevertheless, appellee cannot be said to have infringed
upon the Copyright Law. Appellee's 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 domain before applying for the corresponding
copyrights for the same (Brief for Defendant-Appellee,
pp. 14-15) is correct. llcd
The Supreme Court has ruled that "Paragraph 33 of
Patent Office Administrative Order No. 3 (as amended,
dated September 18, 1947) entitled 'Rules of Practice in
the Philippines Patent Office relating to the Registration
of Copyright Claims' promulgated pursuant to Republic
Act 165, provides among other things that an intellectual
creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within sixty (60) days if Fernan (Chairman), Gutierrez, Jr., Padilla, Bidin and
made elsewhere, failure of which renders such creation Cortes, JJ., concur.
public property." (Santos v. McCullough Printing Alampay, J., no part. On leave at time of deliberation.
Company, 12 SCRA 324-325 [1964]. Indeed, if the ||| (Filipino Society of Composers, Authors and
general public has made use of the object sought to be Publishers, Inc. v. Tan, G.R. No. L-36402, [March 16,
copyrighted for thirty (30) days prior to the copyright 1987], 232 PHIL 426-434)
application the law deems the object to have been
donated to the public domain and the same can no
longer be copyrighted.
A careful study of the records reveals that the song
"Dahil Sa Iyo" which was registered on April 20, 1956
(Brief for Appellant, p. 10) became popular in radios,
juke boxes, etc. long before 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 to
1968, (the year of the hearing) or from 1943 (TSN, May
28, 1968, p. 27) and the songs "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 before the
hearing in 1968. The testimonies of the witnesses at the
hearing of this case on this subject were unrebutted by
the appellant. (Ibid., pp. 28; 29 and 30).
Under the circumstances, it is clear that the musical
compositions in question had long become public
property, and are therefore beyond the protection of the
Copyright Law.
PREMISES CONSIDERED, the appealed decision of
the Court of First Instance of Manila in Civil Case No.
71222 is hereby AFFIRMED.
SO ORDERED.

PHILIPPINE EDUCATION COMPANY,
INC., plaintiff-appellee, vs.
VICENTE SOTTO and V. R.
ALINDADA, defendants. V.
R. ALINDADA, appellant.
Vicente Sotto, for appellant.
Gibbs & McDonough and Roman Ozaeta, for appellee.
SYLLABUS
1. COPYRIGHT LAW
CONSTRUED. — Under the second
paragraph of section 5, Act No. 3134, known
as the Copyright Law, where one periodical
purchases, pays for and publishes an article
with notice "that all rights thereto were
reserved" another periodical has no legal
right to again publish the article, without
giving "the source of reproduction" or citing
the original from which it was reproduced.
2. WHEN "NOTICE OF
COPYRIGHT NOT REQUIRED. — As to the
article in question, the provisions of that
section do not require "notice of copyright." It
is sufficient that the original article contains a
notice in substance "that their publication is
reserved."
3. TO WHAT EXCEPTION
CONFINED. — This exception i8 confined
and limited to "news items, editorial
paragraph, and articles in periodicals," and
does not apply to any other provisions of the
Copyright Law.
4. INTENT OF LEGISLATURE. —
The purpose and intent of the Legislature was
to protect an enterprising newspaper or
magazine that invests its money and pays for
the right to publish an original article.
Per STREET, J., dissenting:
5. UNCOPYRIGHTED MATTER;
DEDICATION TO PUBLIC; FREE RIGHT OF
REPRODUCTION. — Matter published
without the formalities prescribed by law for
the obtaining of copyright protection is
dedicated to the public and can be freely
reprinted by any one. The circumstance that
the first publisher gives notice that the right of
publication is reserved does not limit the free
right of reproduction of uncopyrighted matter.
STATEMENT
Plaintiff alleges that it is a domestic
corporation, with its principal office in the City
of Manila, of which the defendants are also
residents and of legal age; that it is the
proprietor and publisher of the monthly
magazine Philippine Education Magazine,
which ig published in the City of Manila and
of general circulation in the Philippine
Islands; that the defendant, Vicente Sotto, ig
the proprietor and publisher, and the
defendant, V R. Alindada, is the editor of a
weekly newspaper known as The
Independent, which is also published in the
City of Manila and also of such general
circulation; that in December, 1927, plaintiff
contracted with Austin Craig for the
preparation and publication of an original
article to be written by him concerning Mrs.
Jose Rizal, to be published exclusively in the
Philippine Education Magazine, and that by
virtue thereof, the said Craig prepared and
wrote an original article entitled "The True
Story of Mrs. Rizal," and delivered it to the
plaintiff which paid him for it, and thereby
became the exclusive owner of the article;
that it printed and published the article in its
issue of December, 1927, and that it was
placed on the market for sale in the early part
of that month; that as such owner the plaintiff
has the exclusive right to print and publish the
article in its magazine, and that it gave notice
in that issue "that all rights thereto were
reserved ;" that the defendants unlawfully
and without the knowledge or consent of the
plaintiff appropriated, copied and reproduced
and published the article in the weekly issues
of The Independent of December 24th and
December 31, 1927, without citing the source
of its reproduction, thereby pretending and
causing its readers and the public to believe
that the article was the property of the
defendants; that upon such discovery, the
plaintiff wrote the editor of The Independent,
calling his attention to the fact that the article
in question was published "without
permission or even the courtesy of an
ordinary credit line," and requested that in his
next issue that "you state in some prominent
place that this article was taken from our
magazine, and I request further that you
refrain from similar thefts in the future." Also
calling his attention to the fact that we have
stated plainly "on the title page of our
magazine that we reserve all rights, and you
infringe on them at your peril." In answer to
that letter, the editor protested against the
use of the word "thefts," and advised the
plaintiff in substance that it had not registered
such rights under the Copyright Law, and that
"any newspaper can reprint the article of
Professor Craig without permission from
anybody. Will you appreciate this free lesson
of law?" And the article as continued was
again published in the next issue of The
Independent. Plaintiff alleges that by reason
of defendants' acts, it was damaged in the
sum of P5,000; that the defendants threaten
to, and will, continue appropriating and
reproducing the article owned by the plaintiff,
in violation of its rights, unless restrained by
the court, and plaintiff prays for judgment
against the defendants for P5,000, and that
they be perpetually enjoined from the
publication of any further articles without the
knowledge or consent of the plaintiff, and for
such other and further relief as the court may
deem just and equitable.
To this complaint, the defendants
filed a general demurrer upon the ground that
it did not state facts sufficient to constitute a
cause of action, which was overruled. The
defendants then answered in which they
made a general and specific denial of all of
the material allegations of the complaint, and
as a special defense allege:
"(a) That the
defendant Vicente Sotto is not
the owner of the magazine
The Independent, nor has he
any intervention in the
publication of said magazine.
"(b) That the plaintiff
is not the owner of the article
entitled 'The True Story of
Mrs. Rizal,' because it is not
registered in its name in the
proper registry under Act No.
3134 and the regulation
concerning the registration of
intellectual property made by
the Chief of the Philippine
Library and Museum.
"(c) That the
defendant V. R. Alindada, as
the editor of The
Independent, published in
said magazine the article
entitled 'The True story of
Mrs. Rizal,' written by Austin
Craig, in good faith and in the
belief that such an interesting
historical passage of the
Philippines was published by
the magazine Philippine
Education Magazine for the
information and propaganda
of the ideas and patriotic
feelings of the wife of the
apostle of our country's
liberties, without any intention
to prejudice anybody in his
property rights.
 "Wherefore, the index, there may be read a
defendants pray the court that note 'All Rights Reserved.'
the complaint be dismissed
and the defendants absolved
therefrom, with costs against
the plaintiff." "(3) That the
Philippine Education Co.,
Inc., paid Mr. Austin Craig a
certain sum for the
The case was tried and submitted preparation of said article.
upon the following admitted facts:

"(1) That the

Philippine Education Co.,
"(4) That The
Inc., is the corporation that
Independent, which is edited
contracted with Austin Craig
under the management of Mr.
for the preparation of the
V. R. Alindada, published the
article 'The True Story of Mrs.
said article written by Austin
Rizal,' for its exclusive
Craig on December 24, 1927
publication in said magazine.
and December 31st of the
same year, making it appear
in the heading of the article
the name of the author, the
"(2) That said article first publication of which is
which was prepared by Mr. marked as Exhibit B.
Austin Craig and published in
the 'Philippine Education
Magazine' is not found
registered in the Copyright
"(5) That on
Office, although in the same
December 23d when The
magazine, under letter A, on
Independent published it, the
the third page containing the
editor of The Philippine
Education Magazine wrote to
Mr. V. R. Alindada, editor of
The Independent, the letter
marked with letter C.
"(6) That
notwithstanding the letter
Exhibit C, the publication of
the said article was continued
in the issue of The
Independent of December
31st, marked Exhibit E,
without citing the source of
the article but making it
appear therein the name of
the author.
"(7) That for the
purposes of the judgment that
may be rendered in this case,
in the event of adverse
judgment, Mr. V. R. Alindada,
one of the defendants, admits
to be solely responsible
civilly.
"(8) That in relation
to the admission just
mentioned, the document,
Exhibit F, is presented.
"Mr. SOTTO. Before
presenting our evidence, I
request that the defendant
Vicente Sotto be excluded
from the complaint.
"Mr. OZAETA.
Without objection.
"COURT. According
to the petition of the
defendant Mr. Vicente Sotto,
which is concurred in by
counsel for the plaintiff, the
case is dismissed with
respect to him, without costs."
 Upon such issues the lower court
rendered judgment against the defendant, V.
R. Alindada, for P500, without costs, from
which he appeals, contending, first, that the
lower court erred in overruling the demurrer
to the complaint, and second, in sentencing
him to pay P500 to the plaintiff.
DECISION
JOHNS, J p:
The question presented involves the
legal construction of Act No. 3134 of the
Philippine Legislature, which is entitled "An
Act to protect intellectual property," and
which is known as the Copyright Law of the
Philippine Islands.
Section 2 of the Act defines and
enumerates what may be copyrighted which,
among other things, includes books,
composite and cyclopedic works,
manuscripts, commentaries and critical
studies.
Section 4 provides:
"For the purpose of
this Act articles and other
writings published without the
names of the authors or under
pseudonyms are considered
as the property of the
publishers."
And section 5 says:
"Lines, passages, or
paragraphs in a book or other
copyrighted works may be
quoted or cited or reproduced
for comment, dissertation, or
criticism.
"News items,
editorial paragraphs, and
articles in periodicals may
also be reproduced unless
they contain a notice that their
publication is reserved or a
notice of copyright, but the
source of the reproduction or
original reproduced shall be
cited. In case of musical
works parts of little extent may
also be reproduced."
Hence, the real question involved is
the construction which should be placed upon
the second paragraph of section 5.
It is conceded that neither Professor
Craig nor the plaintiff applied for or obtained
a copyright of the article in question under the
terms and provisions of this Act. The
defendant contends that after the article was
once published without a copyright in
plaintiff's magazine, it then became public
property, and that he had a legal right to
publish it in his magazine, without giving "the
source of the reproduction."
It must be conceded that under the
Copyright Law of the United States, he would
have that legal right. That is the construction
which has been placed upon that law by
numerous decisions both state and federal of
that nation. Be that as it may, we have
carefully read and reread the Copyright Law
of the United States, and the provisions
contained in the second paragraph of section
5 of Act No. 3134 are nowhere to be found in
the Copyright Law of the United States.
Neither does it contain any similar provision,
and for want thereof, the decisions of those
courts are not in point on the question
involved here, and, as appellant says, the
legal question presented on this appeal is
one of first impression in this court, and the
case is submitted without the citation of the
decision of any court under the same or
similar statute.
Section 4 specifically provides:
"For the purpose of
this Act articles and other
writings published without the
names of the authors or under
pseudonyms are considered
as the property of the
publishers."
The first paragraph of section 5
says:
"Lines, passages, or
paragraphs in a book or other
copyrighted works may be
quoted or cited or reproduced
for comment, dissertation, or
criticism."
It is very apparent that this
paragraph is confined and limited to a book
or other copyrighted works, and, hence, that
it does not apply to the publication of the
article now in question. The second
paragraph of this section is confined to news
items, editorial paragraphs and articles in
periodicals, which may also be reproduced,
"unless they contain a notice that their
publication is reserved or a notice of
copyright, but the source of the reproduction
or original reproduced shall be cited." It is
admitted that the plaintiff notified the
defendant "that we reserve all rights, and you
infringe on them at your peril," and that after
receipt of the notice, the defendant ,published
the article in question, without giving the
source of the reproduction."
If it had been the purpose and intent
of the Legislature to limit the reproduction of
"news items, editorial paragraphs, and
articles in periodicals," to those which have a
notice of copyright only, it never would have
said if they contain a notice that their
publication is reserved."
Analyzing the language used, it
says, first, that such news items, editorial
paragraphs, and articles in periodicals may
be reproduced, unless they contain a notice
that their publication is reserved, or, second,
that they may also be reproduced unless they
contain a notice of copyright. But in either
event, the law specifically provides that "the
source of the reproduction or original
reproduced shall be cited," and is not
confined or limited to case in which there is
"a notice of copyright," and specifically says
that in either event "the source of the
reproduction or original reproduced shall be
cited." To give this section any other
construction would be to nullify, eliminate and
take from the paragraph the words "they
contain a notice that their publication is
reserved," and to say that the Legislature
never intended to say what it did say. This
court must construe the language found in
the act. The language is plain, clear, definite
and certain, and this court has no legal right
to say that the Legislature did not mean what
it said when it used those words, which is all
the more apparent by the use of the word "or"
after the word "reserved." In the instant case,
the plaintiff did not give notice of its copyright,
for the simple reason that it did not have a
copyright, but it did notify the defendant that
in the publication of the article "we reserve all
rights," which was legally equivalent to a
notice "that their publication is reserved." To
give that paragraph any other construction
would eliminate, take from it, and wipe out,
the words "that their publication is reserved,"
and this court has no legal right to do that. It
was contended that this construction would
nullify the use and value of the whole
Copyright Law, but it will be noted that this
exception is specifically confined and limited
to "news items, editorial paragraphs, and
articles in periodicals," and hence could not
be made to apply to any other provision of the
Copyright Law. It will also be noted that in the
instant case, the defendant had the legal right
to publish the article in question by giving "the
source of the reproduction." The plaintiff have been a very simple and an easy thing to
bought and paid for the article and published do.
it with a notice that "we reserve all rights," and
the defendant published the article in All things considered, we are clearly
question without citing "the source of the of the opinion that the judgment of the lower
reproduction," and for aught that appeared in court should be affirmed, with costs. So
his paper, the article was purchased and paid ordered.
for by the defendant.
Malcolm, Ostrand, Romualdez and Villa-Real, JJ.,
We are clearly of the opinion that the concur.
language in question in the Copyright Law of ||| (Philippine Education Co. v. Alindada, G.R. No.
the Philippine Islands, which is not found in 30774, [January 29, 1929], 52 PHIL 680-694)
the Copyright Law of the United States, was
inserted for a specific purpose, and that it was
intended to prohibit the doing of the very thing
which the defendant did in this case;
otherwise, the use of all of those words is a
nullity. This construction does not in the least
impair the Copyright Law, except as to "news
items, editorial para graphs, and articles in
periodicals," and it protects an enterprising
newspaper or magazine that invests its
money and pays for the right to publish an
original article, and that was the reason why
the Legislature saw fit to use the language in
question.

Above and beyond all this, it would

seem that upon the undisputed facts in this
case, common courtesy among newspaper
men would suggest that the defendant would
give "the source of the reproduction." It would
 December 11, 2006 Resolution 3 denying the
motion for reconsideration.

Petitioner ABS-CBN Broadcasting

Corporation (ABS-CBN) is licensed under the
laws of the Republic of the Philippines to
engage in television and radio broadcasting.
4 It broadcasts television programs by
wireless means to Metro Manila and nearby
ABS-CBN BROADCASTING provinces, and by satellite to provincial
CORPORATION, petitioner, stations through Channel 2 on Very High
vs. PHILIPPINE MULTI- Frequency (VHF) and Channel 23 on Ultra
MEDIA SYSTEM, INC., High Frequency (UHF). The programs aired
CESAR G. REYES, over Channels 2 and 23 are either produced
FRANCIS CHUA (ANG by ABS-CBN or purchased from or licensed
BIAO), MANUEL F. by other producers.
ABELLADA, RAUL B. DE
MESA, AND ALOYSIUS M. ABS-CBN also owns regional television stations which
COLAYCO, respondents. pattern their programming in accordance with perceived
demands of the region. Thus, television programs
shown in Metro Manila and nearby provinces are not
necessarily shown in other provinces. cDIHES
DECISION Respondent Philippine Multi-Media
YNARES-SANTIAGO, J p: System, Inc. (PMSI) is the operator of Dream
This petition for review on certiorari Broadcasting System. It delivers digital
1 assails the July 12, 2006 Decision 2 of the direct-to-home (DTH) television via satellite
Court of Appeals in CA-G.R. SP Nos. 88092 to its subscribers all over the Philippines.
and 90762, which affirmed the December 20, Herein individual respondents, Cesar G.
2004 Decision of the Director-General of the Reyes, Francis Chua, Manuel F. Abellada,
Intellectual Property Office (IPO) in Appeal Raul B. De Mesa, and Aloysius M. Colayco,
No. 10-2004-0002. Also assailed is the are members of PMSI's Board of Directors.
 PMSI was granted a legislative
franchise under Republic Act No. 8630 5 on
May 7, 1998 and was given a Provisional
Authority by the National
Telecommunications Commission (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
Channels 2 and 23, NBN, Channel 4, ABC
Channel 5, GMA Channel 7, RPN Channel 9,
and IBC Channel 13, together with other paid
premium program channels.
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 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 operators operating in a
community within Grade "A" or "B" contours
to carry the television signals of the
authorized television broadcast stations. 9
HDAaIc
Thereafter, negotiations ensued
between the parties in an effort to reach a
settlement; however, the negotiations were
terminated on April 4, 2002 by ABS-CBN
allegedly due to PMSI's inability to ensure the
prevention of illegal retransmission and
further rebroadcast of its signals, as well as
the adverse effect of the rebroadcasts on the
business operations of its regional television
stations. 10
On May 13, 2002, ABS-CBN filed
with the IPO a complaint for "Violation of
Laws Involving Property Rights, with Prayer
for the Issuance of a Temporary Restraining
Order and/or Writ of Preliminary Injunction",
which was docketed as IPV No. 10-2002-
0004. It alleged that PMSI's unauthorized
rebroadcasting of Channels 2 and 23
infringed on its broadcasting rights and
copyright. EACIcH
On July 2, 2002, the Bureau of Legal
Affairs (BLA) of the IPO granted ABS-CBN's
application for a temporary restraining order.
On July 12, 2002, PMSI suspended its
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.
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 December 20, 2002
 of then NTC Commissioner Armi Jane R. thereof through the
Borje to PMSI stating as follows: dissemination of social,
economic, educational
This refers to your letter dated December information and cultural
16, 2002 requesting for programs.
regulatory guidance from this
Commission in connection
with the application and
coverage of NTC
The DTH pay television services of PMSI
Memorandum Circular No. 4-
is equipped to provide
08-88, particularly Section 6
nationwide DTH satellite
thereof, on mandatory
services. Concededly, PMSI's
carriage of television
DTH pay television services
broadcast signals, to the
covers very much wider areas
direct-to-home (DTH) pay
in terms of carriage of
television services of
broadcast signals, including
Philippine Multi-Media
areas not reachable by cable
System, Inc. (PMSI). IcESaA
television services thereby
providing a better medium of
dissemination of information
to the public.
Preliminarily, both DTH pay television
and cable television services
are broadcast services, the
only difference being the
In view of the foregoing and the spirit and intent of
medium of delivering such
NTC memorandum Circular No. 4-08-88, particularly
services (i.e., the former by
section 6 thereof, on mandatory carriage of
satellite and the latter by
television broadcast signals, DTH pay television
cable). Both can carry
services should be deemed covered by such NTC
broadcast signals to the
Memorandum Circular. ACaTIc
remote areas, thus enriching
For your guidance. (Emphasis added) 11
the lives of the residents
 On August 26, 2003, PMSI filed
another Manifestation with the BLA that it
received a letter dated July 24, 2003 from the
NTC enjoining strict and immediate
compliance with the must-carry rule under
Memorandum Circular No. 04-08-88, to wit:
Dear Mr. Abellada:
Last July 22, 2003, the National
Telecommunications
Commission (NTC) received
a letter dated July 17, 2003
from President/COO Rene Q.
Bello of the International
Broadcasting Corporation
(IBC-Channel 13)
complaining that your
company, Dream
Broadcasting System, Inc.,
has cut-off, without any notice
or explanation whatsoever, to
air the programs of IBC-13, a
free-to-air television, to the
detriment of the public.
We were told that, until now, this has
been going on.
Please be advised that as a direct broadcast satellite
operator, operating a direct-to-home (DTH)
broadcasting system, with a provisional authority
(PA) from the NTC, your company, along with cable
television operators, are mandated to strictly
comply with the existing policy of NTC on
mandatory carriage of television broadcast signals
as provided under Memorandum Circular No. 04-08-
88, also known as the Revised Rules and
Regulations Governing Cable Television System in
the Philippines.
This mandatory coverage provision under Section
6.2 of said Memorandum Circular, requires all cable
television system operators, operating in a
community within the Grade "A" or "B" contours to
"must-carry" the television signals of the authorized
television broadcast stations, one of which is IBC-
13. Said directive equally applies to your company
as the circular was issued to give consumers and
the public a wider access to more sources of news,
information, entertainment and other
programs/contents.
This Commission, as the governing
agency vested by laws with
the jurisdiction, supervision
and control over all public
services, which includes
direct broadcast satellite
operators, and taking into
consideration the paramount
interest of the public in
general, hereby directs you to
 immediately restore the signal On whether Memorandum Circular
of IBC-13 in your network No. 10-10-2003 amended Memorandum
programs, pursuant to Circular No. 04-08-88, the NTC explained to
existing circulars and PMSI in a letter dated November 3, 2003 that:
regulations of the
Commission. CcSTHI To address your query on whether or not
the provisions of MC 10-10-
2003 would have the effect of
amending the provisions of
MC 4-08-88 on mandatory
For strict compliance. (Emphasis added)
carriage of television signals,
12
the answer is in the negative.
ATEHDc

Meanwhile, on October 10, 2003,

the NTC issued Memorandum Circular No.
xxx xxx xxx
10-10-2003, entitled "Implementing Rules
and Regulations Governing Community
Antenna/Cable Television (CATV) and Direct
Broadcast Satellite (DBS) Services to
Promote Competition in the Sector". Article 6, The Commission maintains that, MC 4-
Section 8 thereof states: 08-88 remains valid,
subsisting and enforceable.
As a general rule, the reception,
distribution and/or
transmission by any
CATV/DBS operator of any Please be advised, therefore, that as
television signals without any duly licensed direct-to-
agreement with or home satellite television
authorization from service provider authorized
program/content providers by this Commission, your
are prohibited.
 company continues to be a resolution dated February 17, 2005.
bound by the guidelines CITaSA
provided for under MC 04-
08-88, specifically your
obligation under its On December 20, 2004, the
mandatory carriage Director-General of the IPO rendered a
provisions, in addition to decision 15 in favor of PMSI, the dispositive
your obligations under MC portion of which states:
10-10-2003. (Emphasis
added) WHEREFORE, premises considered,
the instant appeal is hereby
GRANTED. Accordingly,
Decision No. 2003-01 dated
22 December 2003 of the
Please be guided accordingly. 13 Director of Bureau of Legal
Affairs is hereby REVERSED
and SET ASIDE.

On December 22, 2003, the BLA

rendered a decision 14 finding that PMSI
infringed the broadcasting rights and Let a copy of this Decision be furnished
copyright of ABS-CBN and ordering it to the Director of the Bureau of
permanently cease and desist from Legal Affairs for appropriate
rebroadcasting Channels 2 and 23. action, and the records be
returned to her for proper
On February 6, 2004, PMSI filed an
disposition. The
appeal with the Office of the Director-General
Documentation, Information
of the IPO which was docketed as Appeal No.
and Technology Transfer
10-2004-0002. On December 23, 2004, it
Bureau is also given a copy
also filed with the Court of Appeals a "Motion
for library and reference
to Withdraw Petition; Alternatively,
purposes.
Memorandum of the Petition for Certiorari " in
CA-G.R. SP No. 71597, which was granted in
SO ORDERED. 16
Thus, ABS-CBN filed a petition for
review with prayer for issuance of a
temporary restraining order and writ of
preliminary injunction with the Court of
Appeals, which was docketed as CA-G.R. SP
No. 88092.
On July 18, 2005, the Court of
Appeals issued a temporary restraining
order. Thereafter, ABS-CBN filed a petition
for contempt against PMSI for continuing to
rebroadcast Channels 2 and 23 despite the
restraining order. The case was docketed as
CA- G.R. SP No. 90762.
On November 14, 2005, the Court of
Appeals ordered the consolidation of CA-
G.R. SP Nos. 88092 and 90762.
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
ABS-CBN's motion for reconsideration was denied,
hence, this petition.
ABS-CBN contends that PMSI's unauthorized
rebroadcasting of Channels 2 and 23 is an infringement
of its broadcasting rights and copyright under the
Intellectual Property Code (IP 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 Constitution because it allows the
taking of property for public use without payment of just
compensation; that the Court of Appeals erred in
dismissing the petition for contempt docketed as CA-
G.R. SP No. 90762 without requiring respondents to file
comment.
Respondents, on the other hand,
argue that PMSI's rebroadcasting of
Channels 2 and 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
dismissed CA-G.R. SP No. 90762 since it
found no need to exercise its power of
contempt.
After a careful review of the facts
and records of this case, we affirm the
findings of the Director-General of the IPO
and the Court of Appeals.
There is no merit in ABS-CBN's
contention that PMSI violated its
 broadcaster's rights under Section 211 of the copyright or economic rights shall consist of
IP Code which provides in part: the exclusive right to carry out, authorize or
prevent the public performance of the work
Chapter XIV (Section 177.6), and other communication to
BROADCASTING the public of the work (Section 177.7). 20
ORGANIZATIONS
Section 202.7 of the IP Code defines
broadcasting as "the transmission by
wireless means for the public reception of
Sec. 211. Scope of Right. — Subject to sounds or of images or of representations
the provisions of Section 212, thereof; such transmission by satellite is
broadcasting organizations also 'broadcasting' where the means for
shall enjoy the exclusive right decrypting are provided to the public by
to carry out, authorize or the broadcasting organization or with its
prevent any of the following consent".
acts: AcIaST
On the other hand, rebroadcasting
as defined in Article 3 (g) of the International
Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting
211.1. The rebroadcasting of their Organizations, otherwise known as the 1961
broadcasts; Rome Convention, of which the Republic of
the Philippines is a signatory, 21 is "the
simultaneous broadcasting by one
broadcasting organization of the broadcast of
xxx xxx xxx another broadcasting organization".

The Director-General of the IPO

correctly found that PMSI is not engaged in
rebroadcasting and thus cannot be
Neither is PMSI guilty of considered to have infringed ABS-CBN's
infringement of ABS-CBN's copyright under broadcasting rights and copyright, thus:
Section 177 of the IP Code which states that
That the Appellant's [herein respondent its consent."
PMSI] subscribers are able to ETDAaC
view Appellee's [herein
petitioner ABS-CBN]
programs (Channels 2 and
23) at the same time that the Section 202.7 of the IP Code, thus,
latter is broadcasting the provides two instances
same is undisputed. The wherein there is
question however is, would broadcasting, to wit:
the Appellant in doing so be
considered engaged in
broadcasting. Section 202.7
of the IP Code states that
broadcasting means 1. The transmission by wireless means
for the public
reception of sounds
or of images or of
representations
"the transmission by wireless means for thereof; and
the public reception
of sounds or of
images or of
representations
thereof; such 2. The transmission by satellite for the
transmission by public reception of
satellite is also sounds or of images
'broadcasting' where or of representations
the means for thereof where the
decrypting are means for decrypting
provided to the are provided to the
public by the public by the
broadcasting broadcasting
organization or with
 organization or with 4. The means for decrypting are
its consent. provided to the
public by the
broadcasting
organization or with
It is under the second category that its consent.
Appellant's DTH satellite
television service must be
examined since it is satellite-
based. The elements of such It is only the presence of all the above
category are as follows: elements can a determination
HIETAc that the DTH is broadcasting
and consequently,
rebroadcasting Appellee's
signals in violation of Sections
1. There is transmission of sounds or 211 and 177 of the IP Code,
images or of may be arrived at.
representations
thereof;

Accordingly, this Office is of the view that

the transmission
2. The transmission is through satellite; contemplated under Section
202.7 of the IP Code
presupposes that the origin of
the signals is the broadcaster.
Hence, a program that is
3. The transmission is for public broadcasted is attributed to
reception; and the broadcaster. In the same
manner, the rebroadcasted
 program is attributed to the
rebroadcaster.
In the case at hand, Appellant is not the
origin nor does it claim to be
the origin of the programs
broadcasted by the Appellee.
Appellant did not make and
transmit on its own but merely
carried the existing signals of
the Appellee. When
Appellant's subscribers view
Appellee's programs in
Channels 2 and 23, they
know that the origin thereof
was the Appellee.
Aptly, it is imperative to discern the
nature of broadcasting. When
a broadcaster transmits, the
signals are scattered or
dispersed in the air. Anybody
may pick-up these signals.
There is no restriction as to its
number, type or class of
recipients. To receive the
signals, one is not required to
subscribe or to pay any fee.
One only has to have a
receiver, and in case of
television signals, a television
set, and to tune-in to the right
channel/frequency. The
definition of broadcasting,
wherein it is required that the
transmission is wireless, all
the more supports this
discussion. Apparently, the
undiscriminating dispersal of
signals in the air is possible
only through wireless means.
The use of wire in transmitting
signals, such as cable
television, limits the recipients
to those who are connected.
Unlike wireless
transmissions, in wire-based
transmissions, it is not
enough that one wants to be
connected and possesses the
equipment. The service
provider, such as cable
television companies may
choose its subscribers.
TcDIaA
The only limitation to such dispersal of
signals in the air is the
technical capacity of the
transmitters and other
equipment employed by the
broadcaster. While the
broadcaster may use a less
powerful transmitter to limit its
coverage, this is merely a
business strategy or decision
and not an inherent limitation
when transmission is through
cable.
Accordingly, the nature of broadcasting
is to scatter the signals in its
widest area of coverage as
possible. On this score, it may
be said that making public
means that accessibility is
undiscriminating as long as it
[is] within the range of the
transmitter and equipment of
the broadcaster. That the
medium through which the
Appellant carries the
Appellee's signal, that is via
satellite, does not diminish
the fact that it operates and
functions as a cable
television. It remains that the
Appellant's transmission of
signals via its DTH satellite
television service cannot be
considered within the purview
of broadcasting. . . .
xxx xxx xxx
This Office also finds no evidence on
record showing that the
Appellant has provided
decrypting means to the
public indiscriminately.
Considering the nature of this
case, which is punitive in fact,
the burden of proving the
existence of the elements
constituting the acts
punishable rests on the
shoulder of the complainant.
Accordingly, this Office finds that there is
no rebroadcasting on the part
of the Appellant of the
 Appellee's programs on are concerned, PMSI merely retransmits the same in
Channels 2 and 23, as accordance with Memorandum Circular 04-08-88. With
defined under the Rome regard to its premium channels, it buys the channels
Convention. 22 from content providers and transmits on an as-is basis
to its viewers. Clearly, PMSI does not perform the
functions of a broadcasting organization; thus, it cannot
be said that it is engaged in rebroadcasting Channels 2
Under the Rome Convention, and 23.
rebroadcasting is "the simultaneous The Director-General of the IPO and
broadcasting by one broadcasting the Court of Appeals also correctly found that
organization of the broadcast of another PMSI's services are similar to a cable
broadcasting organization." The Working television system because the services it
Paper 23 prepared by the Secretariat of the renders fall under cable "retransmission", as
Standing Committee on Copyright and described in the Working Paper, to wit:
Related Rights defines broadcasting cDIHES
organizations as "entities that take the
(G) Cable Retransmission
financial and editorial responsibility for the
selection and arrangement of, and
investment in, the transmitted content". 24
Evidently, PMSI would not qualify as a
broadcasting organization because it does 47. When a radio or television program is
not have the aforementioned responsibilities being broadcast, it can be
imposed upon broadcasting organizations, retransmitted to new
such as ABS-CBN. audiences by means of cable
or wire. In the early days of
cable television, it was mainly
ABS-CBN creates and transmits its own signals; PMSI used to improve signal
merely carries such signals which the viewers receive in reception, particularly in so-
its unaltered form. PMSI does not produce, select, or called "shadow zones", or to
determine the programs to be shown in Channels 2 and distribute the signals in large
23. Likewise, it does not pass itself off as the origin or buildings or building
author of such programs. Insofar as Channels 2 and 23 complexes. With
 improvements in technology,
cable operators now often
receive signals from satellites
before retransmitting them in
an unaltered form to their
subscribers through cable.
48. In principle, cable retransmission can
be either simultaneous with
the broadcast over-the-air or
delayed (deferred
transmission) on the basis of
a fixation or a reproduction of
a fixation. Furthermore, they
might be unaltered or altered,
for example through
replacement of commercials,
etc. In general, however, the
term "retransmission"
seems to be reserved for
such transmissions which
are both simultaneous and
unaltered.
49. The Rome Convention does not grant rights
against unauthorized cable retransmission. Without
such a right, cable operators can retransmit both
domestic and foreign over the air broadcasts
simultaneously to their subscribers without
permission from the broadcasting organizations or
other rightholders and without obligation to pay
remuneration. 25 (Emphasis added)
Thus, while the Rome Convention gives broadcasting
organizations the right to authorize or prohibit the
rebroadcasting of its broadcast, however, this protection
does not extend to cable retransmission. The
retransmission of ABS-CBN's signals by PMSI — which
functions essentially as a cable television — does not
therefore constitute rebroadcasting in violation of the
former's intellectual property rights under the IP Code.
ISAcHD
It must be emphasized that the law on copyright is not
absolute. The IP Code provides that:
Sec. 184. Limitations on Copyright. —
184.1. Notwithstanding the provisions of
Chapter V, the following acts
shall not constitute
infringement of copyright:
xxx xxx xxx
(h) The use made of a work by or under
the direction or control of the
Government, by the National
 Library or by educational, category of limitations on
scientific or professional copyright. This Office agrees
institutions where such use is with the Appellant [herein
in the public interest and is respondent PMSI] that the
compatible with fair use; "Must-Carry Rule" is in
consonance with the
principles and objectives
underlying Executive Order
The carriage of ABS-CBN's signals No. 436, 28 to wit:
by virtue of the must-carry rule in
Memorandum Circular No. 04-08-88 is under
the direction and control of the government
through the NTC which is vested with The Filipino people must be given wider
exclusive jurisdiction to supervise, regulate access to more
and control telecommunications and sources of news,
broadcast services/facilities in the information,
Philippines. 26 The imposition of the must- education, sports
carry rule is within the NTC's power to event and
promulgate rules and regulations, as public entertainment
safety and interest may require, to encourage programs other than
a larger and more effective use of those provided for by
communications, radio and television mass media and
broadcasting facilities, and to maintain afforded television
effective competition among private entities programs to attain a
in these activities whenever the Commission well informed, well-
finds it reasonably feasible. 27 As correctly versed and culturally
observed by the Director-General of the IPO: refined citizenry and
IHCacT enhance their socio-
economic growth:
Accordingly, the "Must-Carry Rule"
under NTC Circular No. 4-08-
88 falls under the foregoing
WHEREAS, cable television (CATV) and other TV station owners,
systems could shall provide at all times
support or sound and balanced
supplement the programming and assist in
services provided by the functions of public
television broadcast information and education.
facilities, local and AEHTIC
overseas, as the
national information
highway to the
countryside. 29 This is for the first time that we have a
structure that works to
accomplish explicit state
policy goals. 30
The Court of Appeals likewise
correctly observed that:

[T]he very intent and spirit of the NTC

Indeed, intellectual property
Circular will prevent a
protection is merely a means towards the end
situation whereby station
of making society benefit from the creation of
owners and a few networks
its men and women of talent and genius. This
would have unfettered power
is the essence of intellectual property laws,
to make time available only to
and it explains why certain products of
the highest bidders, to
ingenuity that are concealed from the public
communicate only their own
are outside the pale of protection afforded by
views on public issues,
the law. It also explains why the author or the
people, and to permit on the
creator enjoys no more rights than are
air only those with whom they
consistent with public welfare. 31
agreed — contrary to the
state policy that the Further, as correctly observed by the
(franchise) grantee like the Court of Appeals, the must-carry rule as well
petitioner, private respondent as the legislative franchises granted to both
 ABS-CBN and PMSI are in consonance with
state policies enshrined in the Constitution,
specifically Sections 9, 32 17, 33 and 24 34
of Article II on the Declaration of Principles
and State Policies. 35
a finite resource 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". TDcAIH

ABS-CBN was granted a legislative franchise under In Telecom. & Broadcast Attys. of
Republic Act No. 7966, Section 1 of which authorizes it the Phils., Inc. v. COMELEC, 36 the Court
"to construct, operate and maintain, for commercial held that a franchise is a mere privilege which
purposes and in the public interest, television and radio may be reasonably burdened with some form
broadcasting in and throughout the Philippines . . . ." of public service. Thus:
Section 4 thereof mandates that it "shall provide
adequate public service time to enable the government, All broadcasting, whether by radio or by
through the said broadcasting stations, to reach the television stations, is licensed
population on important public issues; provide at all by the government. Airwave
times sound and balanced programming; promote public frequencies have to be
participation such as in community programming; assist allocated as there are more
in the functions of public information and education . . . individuals who want to
." broadcast than there are
PMSI was likewise granted a frequencies to assign. A
legislative franchise under Republic Act No. franchise is thus a privilege
8630, Section 4 of which similarly states that subject, among other things,
it "shall provide adequate public service time to amendment by Congress in
to enable the government, through the said accordance with the
broadcasting stations, to reach the constitutional provision that
population on important public issues; "any such franchise or right
provide at all times sound and balanced granted . . . shall be subject to
programming; promote public participation amendment, alteration or
such as in community programming; assist in repeal by the Congress when
the functions of public information and the common good so
education . . . ." Section 5, paragraph 2 of the requires".
same law provides that "the radio spectrum is
xxx xxx xxx
Indeed, provisions for COMELEC Time
have been made by
amendment of the franchises
of radio and television
broadcast stations and, until
the present case was
brought, such provisions had
not been thought of as taking
property without just
compensation. Art. XII, §11 of
the Constitution authorizes
the amendment of franchises
for "the common good". What
better measure can be
conceived for the common
good than one for free air time
for the benefit not only of
candidates but even more of
the public, particularly the
voters, so that they will be
fully informed of the issues in
an election? "[I]t is the right of
the viewers and listeners, not
the right of the broadcasters,
which is paramount".
xxx xxx xxx
Nor indeed can there be any
constitutional objection to the
requirement that broadcast
stations give free air time.
Even in the United States,
there are responsible
scholars who believe that
government controls on
broadcast media can
constitutionally be instituted
to ensure diversity of views
and attention to public affairs
to further the system of free
expression. For this purpose,
broadcast stations may be
required to give free air time
to candidates in an election.
Thus, Professor Cass R.
Sunstein of the University of
Chicago Law School, in
urging reforms in regulations
affecting the broadcast
industry, writes: TAHcCI
In truth, radio and television
broadcasting companies,
which are given franchises,
do not own the airwaves and
frequencies through which
they transmit broadcast
signals and images. They are
merely given the temporary
privilege of using them. Since
a franchise is a mere
privilege, the exercise of the
privilege may reasonably be
burdened with the
performance by the grantee
of some form of public
service. . . . 37
There is likewise no merit to ABS-
CBN's claim that PMSI's carriage of its
signals is for a commercial purpose; that its
being the country's top broadcasting
company, the availability of its signals
allegedly enhances PMSI's attractiveness to
potential customers; 38 or that the
unauthorized carriage of its signals by PMSI
has created competition between its Metro
Manila and regional stations.
ABS-CBN presented no substantial evidence to prove
that PMSI carried its signals for profit; or that such
carriage adversely affected the business operations of
its regional stations. Except for the testimonies of its
witnesses, 39 no studies, statistical data or information
have been submitted in evidence.
Administrative charges cannot be
based on mere speculation or conjecture.
The complainant has the burden of proving
by substantial evidence the allegations in the
complaint. 40 Mere allegation is not
evidence, and is not equivalent to proof. 41
Anyone in the country who owns a
television set and antenna can receive ABS-
CBN's signals for free. Other broadcasting
organizations with free-to-air signals such as
GMA-7, RPN-9, ABC-5, and IBC-13 can
likewise be accessed for free. No payment is
required to view the said channels 42
because these broadcasting networks do not
generate revenue from subscription from
their viewers but from airtime revenue from
contracts with commercial advertisers and
producers, as well as from direct sales.
In contrast, cable and DTH
television earn revenues from viewer
subscription. In the case of PMSI, it offers its
customers premium paid channels from
content providers like Star Movies, Star
World, Jack TV, and AXN, among others,
thus allowing its customers to go beyond the
limits of "Free TV and Cable TV". 43 It does
not advertise itself as a local channel carrier
because these local channels can be viewed
with or without DTH television. CDTHSI
Relevantly, PMSI's carriage of
Channels 2 and 23 is material in arriving at
the ratings and audience share of ABS-CBN
and its programs. These ratings help
commercial advertisers and producers
decide whether to buy airtime from the
network. Thus, the must-carry rule is actually
advantageous to the broadcasting networks
because it provides them with increased
viewership which attracts commercial
advertisers and producers.
On the other hand, the carriage of
free-to-air signals imposes a burden to cable
and DTH television providers such as PMSI.
PMSI uses none of ABS-CBN's resources or
equipment and carries the signals and
shoulders the costs without any recourse of
charging. 44 Moreover, such carriage of
signals takes up channel space which can
otherwise be utilized for other premium paid
channels.
There is no merit to ABS-CBN's
argument that PMSI's carriage of Channels 2
and 23 resulted in competition between its
Metro Manila and regional stations. ABS-
CBN is free to decide to pattern its regional
programming in accordance with perceived
demands of the region; 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 organization,
one of ABS-CBN's 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 its regional stations undermines
public interest and deprives the viewers of
their right to access to information.
Indeed, television is a business;
however, the welfare of the people must not
be sacrificed in the pursuit of profit. The right
of the viewers and listeners to the most
diverse choice of programs available is
paramount. 45 The Director-General
correctly observed, thus:
The "Must-Carry Rule" favors both
broadcasting organizations
and the public. It prevents
cable television companies
from excluding broadcasting
organization especially in
those places not reached by
signal. Also, the rule prevents
cable television companies
from depriving 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 the
cable television companies.
The latter carries the
television signals and
shoulders the costs without
any recourse of charging. On
the other hand, the signals
that are carried by cable
television companies are
dispersed and scattered by
the television stations and
anybody with a television set
is free to pick them up.
HCDAac
With its enormous resources and
vaunted technological
capabilities, Appellee's
[herein petitioner ABS-CBN]
broadcast signals can reach
almost every corner of the
archipelago. That in spite of
such capacity, it chooses to
maintain regional stations, is
a business decision. That the
"Must-Carry Rule" adversely
affects the profitability of
maintaining such regional
stations since there will be
competition between them
and its Metro Manila station is
speculative and an attempt to
extrapolate the effects of the
rule. As discussed above,
Appellant's DTH satellite
television services is of
limited subscription. There
was not even a showing on
part of the Appellee the
number of Appellant's
subscribers in one region as
compared to non-subscribing
television owners. In any
event, if this Office is to
engage in conjecture, such
competition between the
regional stations and the
Metro Manila station will
benefit the public as such
competition will most likely
result in the production of
better television programs."
46
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-CBN's intellectual property Whereas, Cable Television Systems or
rights under the IP Code. The findings of facts Community Antenna
of administrative bodies charged with their Television (CATV) have
specific field of expertise, are afforded great shown their ability to offer
weight by the courts, and in the absence of additional programming and
substantial showing that such findings are to carry much improved
made from an erroneous estimation of the broadcast signals in the
evidence presented, they are conclusive, and remote areas, thereby
in the interest of stability of the governmental enriching the lives of the rest
structure, should not be disturbed. 47 of the population through the
dissemination of social,
Moreover, the factual findings of the economic, educational
Court of Appeals are conclusive on the information and cultural
parties and are not reviewable by the programs;
Supreme Court. They carry even more weight
when the Court of Appeals affirms the factual
findings of a lower fact-finding body, 48 as in
the instant case.
Whereas, the national government
There is likewise no merit to ABS- supports the promotes the
CBN's contention that the Memorandum orderly growth of the Cable
Circular excludes from its coverage DTH Television industry within the
television services such as those provided by framework of a regulated fee
PMSI. Section 6.2 of the Memorandum enterprise, which is a
Circular requires all cable television system hallmark of a democratic
operators operating in a community within society;
Grade "A" or "B" contours to carry the
television signals of the authorized television
broadcast stations. 49 The rationale behind
its issuance can be found in the whereas Whereas, public interest so requires that
clauses which state: EaCSTc monopolies in commercial
mass media shall be
 regulated or prohibited, Memorandum Circular. Notwithstanding the
hence, to achieve the same, different technologies employed, both DTH
the cable TV industry is made and cable television have the ability to carry
part of the broadcast media; improved signals and promote dissemination
of information because they operate and
function in the same way.

In its December 20, 2002 letter, 50

Whereas, pursuant to Act 3846 as
the NTC explained that both DTH and cable
amended and Executive
television services are of a similar nature, the
Order 205 granting the
only difference being the medium of
National Telecommunications
delivering such services. They can carry
Commission the authority to
broadcast signals to the remote areas and
set down rules and
possess the capability to enrich the lives of
regulations in order to protect
the residents thereof through the
the public and promote the
dissemination of social, economic,
general welfare, the National
educational information and cultural
Telecommunications
programs. Consequently, while the
Commission hereby
Memorandum Circular refers to cable
promulgates the following
television, it should be understood as to
rules and regulations on
include DTH television which provides
Cable Television Systems;
essentially the same services.
SaIEcA
In Eastern Telecommunications
Philippines, Inc. v. International
Communication Corporation, 51 we held:
The policy of the Memorandum
Circular is to carry improved signals in remote The NTC, being the government agency
areas for the good of the general public and entrusted with the regulation
to promote dissemination of information. In of activities coming under its
line with this policy, it is clear that DTH special and technical forte,
television should be deemed covered by the and possessing the
necessary rule-making power
 to implement its objectives, is
in the best position to interpret
its own rules, regulations and
guidelines. The Court has
consistently yielded and
accorded great respect to the
interpretation by
administrative agencies of
their own rules unless 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
SEcADa
With regard to the issue of the
constitutionality of the must-carry rule, the
Court finds that its resolution is not necessary
in the disposition of the instant case. One of
the essential requisites for a successful
judicial inquiry into constitutional questions is
that the resolution of the constitutional
question must be necessary in deciding the
case. 53 In Spouses Mirasol v. Court of
Appeals, 54 we held:
As a rule, the courts will not resolve the
constitutionality of a law, if the
controversy can be settled on
other grounds. The policy of
the courts is to avoid ruling on
constitutional questions and
to presume that the acts of the
political departments are
valid, absent a clear and
unmistakable 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 been carefully studied by
the legislative and executive
departments and found to be
in accord with the Constitution
before it was finally enacted
and approved. 55
The instant case was instituted for
violation of the IP Code and infringement of
ABS-CBN's broadcasting rights and
copyright, which can be resolved without
going into the constitutionality of
 Memorandum Circular No. 04-08-88. As held judicial review are not present
by the Court of Appeals, the only relevance herein. Specifically, the
of the circular in this case is whether or not question of
compliance therewith should be considered constitutionality will not be
manifestation of lack of intent to commit passed upon by the Court
infringement, and if it is, whether such lack of unless, at the first
intent is a valid defense against the complaint opportunity, it is properly
of petitioner. 56 raised and presented in an
appropriate case,
The records show that petitioner adequately argued, and is
assailed the constitutionality of Memorandum necessary to a
Circular No. 04-08-88 by way of a collateral determination of the case,
attack before the Court of Appeals. In particularly where the issue
Philippine National Bank v. Palma, 57 we of constitutionality is the
ruled that for reasons of public policy, the very lis mota presented. . . .
constitutionality of a law cannot be collaterally 61
attacked. A law is deemed valid unless
declared null and void by a competent court;
more so when the issue has not been duly
pleaded in the trial court. 58
Finally, we find that the dismissal of
As a general rule, the question of the petition for contempt filed by ABS-CBN is
constitutionality must be raised at the earliest in order.
opportunity so that if not raised in the
Indirect contempt may either be
pleadings, ordinarily it may not be raised in
initiated (1) motu proprio by the court by
the trial, and if not raised in the trial court, it
issuing an order or any other formal charge
will not be considered on appeal. 59 In
requiring the respondent to show cause why
Philippine Veterans Bank v. Court of Appeals,
he should not be punished for contempt or (2)
60 we held:
by the filing of a verified petition, complying
We decline to rule on the issue of with the requirements for filing initiatory
constitutionality as all the pleadings. 62
requisites for the exercise of
ABS-CBN filed a verified petition before the Court of of the same of no practical use or value. 64
Appeals, which was docketed CA G.R. SP No. 90762, aTcSID
for PMSI's alleged disobedience to the Resolution and
Temporary Restraining Order, both dated July 18, 2005, WHEREFORE, the petition is
issued in CA-G.R. SP No. 88092. However, after the DENIED. The July 12, 2006 Decision of the
cases were consolidated, the Court of Appeals did not Court of Appeals in CA-G.R. SP Nos. 88092
require PMSI to comment on the petition for contempt. It and 90762, sustaining the findings of the
ruled on the merits of CA-G.R. SP No. 88092 and Director-General of the Intellectual Property
ordered the dismissal of both petitions. Office and dismissing the petitions filed by
ABS-CBN argues that the Court of Appeals erred in ABS-CBN Broadcasting Corporation, and the
dismissing the petition for contempt without having December 11, 2006 Resolution denying the
ordered respondents to comment on the same. motion for reconsideration, are AFFIRMED.
Consequently, it would have us reinstate CA-G.R. No.
90762 and order respondents to show cause why they SO ORDERED.
should not be held in contempt. ||| (ABS-CBN Broadcasting Corp. v. Philippine Multi-
It bears stressing that the Media System, Inc., G.R. Nos. 175769-70, [January 19,
proceedings for punishment of indirect 2009], 596 PHIL 283-314)
contempt are criminal in nature. The modes
of procedure and rules of evidence adopted
in contempt proceedings are similar in nature
to those used in criminal prosecutions. 63
While it may be 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
already been disposed of in favor of PMSI
would be circuitous. Where the issues have
become moot, there is no justiciable
controversy, thereby rendering the resolution
ABS-CBN CORPORATION, petitioner, vs. FELIPE
GOZON, GILBERTO R. DUAVIT, JR., MARISSA L.
FLORES, JESSICA A. SOHO, GRACE DELA PEÑA-
REYES, JOHN OLIVER T. MANALASTAS, JOHN
DOES AND JANE DOES, respondents.
DECISION
LEONEN, J p:
The main issue in this case is
whether there is probable cause to charge
respondents with infringement under
Republic Act No. 8293, otherwise known as
the Intellectual Property Code. The resolution
of this issue requires clarification of the
concept of "copyrightable material" in relation
to material that is rebroadcast live as a news
story. We are also asked to rule on whether
criminal prosecution for infringement of
copyrightable material, such as live
rebroadcast, can be negated by good faith.

ABS-CBN Corporation (ABS-CBN)

filed the Petition for Review on Certiorari 1 to
assail the November 9, 2010 Decision 2 and
the March 3, 2011 Resolution 3 of the Court
of Appeals. The Court of Appeals reinstated
the Department of Justice Resolution dated
August 1, 2005 that ordered the withdrawal of
the Information finding probable cause for
respondents' violation of Sections 177 4 and
211 5 of the Intellectual Property Code. 6
Respondents are officers and employees of
GMA Network, Inc. (GMA-7). They are:
Felipe Gozon (Gozon), GMA-7 President;
Gilberto R. Duavit, Jr. (Duavit, Jr.), Executive
Vice-President; Marissa L. Flores (Flores),
Vice-President for News and Public Affairs;
Jessica A. Soho (Soho), Director for News;
Grace Dela Peña-Reyes (Dela Peña-Reyes),
Head of News and Public Affairs; John Oliver
Manalastas (Manalastas), Program
Manager; and others.
The controversy arose from GMA-
7's news coverage on the homecoming of
Filipino overseas worker and hostage victim
Angelo dela Cruz on July 22, 2004. As
summarized by the Court of Appeals:
Overseas Filipino
worker Angelo dela Cruz
was kidnapped by Iraqi
militants and as a condition
for his release, a demand
was made for the
withdrawal of Filipino troops
in Iraq. After negotiations,
he was released by his
captors and was scheduled
to return to the country in
the afternoon of 22 July
2004. Occasioned by said
homecoming and the public
interest it generated, both .
. . GMA Network, Inc. . . .
and [petitioner] made their
respective broadcasts and
coverage of the live event.
7
ABS-CBN "conducted live audio-
video coverage of and broadcasted the
arrival of Angelo dela Cruz at the Ninoy
Aquino International Airport (NAIA) and the
subsequent press conference." 8 ABS-CBN
allowed Reuters Television Service (Reuters)
to air the footages it had taken earlier under
a special embargo agreement. 9
ABS-CBN alleged that under the
special embargo agreement, any of the
footages it took would be for the "use of
Reuter's international subscribers only, and
shall be considered and treated by Reuters
under 'embargo' against use by other
subscribers in the Philippines. . . . [N]o other
Philippine subscriber of Reuters would be
allowed to use ABS-CBN footage without the
latter's consent." 10
GMA-7, to which Gozon, Duavit, Jr.,
Flores, Soho, Dela Peña-Reyes, and
Manalastas are connected, "assigned and That on or about
stationed news reporters and technical men the 22nd of July 2004, in
at the NAIA for its live broadcast and non-live Quezon City, Philippines,
news coverage of the arrival of dela Cruz." 11 the above-named accused,
GMA-7 subscribes to both Reuters and Cable conspiring together,
News Network (CNN). It received a live video confederating with and
feed of the coverage of Angelo dela Cruz's mutually helping each
arrival from Reuters. 12 other, being the Head of
News Operations and the
GMA-7 immediately carried the live Program Manager,
newsfeed in its program "Flash Report," respectively, for the News
together with its live broadcast. 13 Allegedly, and Public Affairs
GMA-7 did not receive any notice or was not Department of GMA
aware that Reuters was airing footages of Network, Inc., did then and
ABS-CBN. 14 GMA-7's news control room there, willfully, unlawfully
staff saw neither the "No Access Philippines" and feloniously use and
notice nor a notice that the video feed was broadcast the footage of
under embargo in favor of ABS-CBN. 15 the arrival of Angelo [d]ela
Cruz at the Ninoy Aquino
On August 13, 2004, ABS-CBN filed International Airport of
the Complaint for copyright infringement which ABS-CBN holds the
under Sections 177 16 and 211 17 of the exclusive ownership and
Intellectual Property Code. 18 copyright by then and there
using, airing, and
On December 3, 2004, Assistant
broadcasting the said
City Prosecutor Dindo Venturanza issued the
footage in its news program
Resolution 19 finding probable cause to indict
"FLASH REPORT" without
Dela Peña-Reyes and Manalastas. 20
first obtaining the consent
Consequently, the Information 21 for violation
or authority of said
of the Intellectual Property Code was filed on
copyright owner, to their
December 17, 2004. It reads:
damage and prejudice.
 Contrary to law. 22 Reyes and Manalastas. 27 The trial court
Order reads:

Perusing the
motion, the court finds that
On January 4, 2005, respondents a petition for review was
filed the Petition for Review before the filed with the Department of
Department of Justice. 23 In the Resolution Justice on January 5, 2005
(Gonzalez Resolution) dated August 1, 2005, as confirmed by the public
Department of Justice Secretary Raul M. prosecutor. Under Section
Gonzalez (Secretary Gonzalez) ruled in favor 11 (c), Rule 116 of the
of respondents and held that good faith may Rules of Criminal
be raised as a defense in the case. 24 The Procedure, once a petition
dispositive portion of the Resolution reads: for review is filed with the
aDSIHc Department of Justice, a
suspension of the criminal
WHEREFORE, THE PETITION FOR REVIEW FILED proceedings may be
BY GMA-7 in I.S. No. 04-10458 is considered allowed by the court.
meritorious and is hereby GRANTED. This case is
hereby Dismissed, the resolution of the City Prosecutor
of Quezon City is hereby reversed and the same is
ordered to withdraw the information if any and report
action taken to this office within ten (10) days. 25 Accordingly, to
(Emphasis in the original) allow the Department of
Both parties moved for Justice the opportunity to
reconsideration of the Gonzalez Resolution. act on said petition for
26 review, let the proceedings
on this case be suspended
Meanwhile, on January 19, 2005, for a period of sixty (60)
the trial court granted the Motion to Suspend days counted from January
Proceedings filed earlier by Dela Peña- 5, 2005, the date the
petition was filed with the
 Department of Justice. The same is a disputable
arraignment of the accused presumption that must be
on February 1, 2005 is proven in a full-blown trial.
accordingly cancelled. Let Disputable presumptions
the arraignment be may be contradicted and
rescheduled to March 8, overcome by other
2005 at 8:30 a.m. The evidence. Thus, a full-
accused through counsel blown trial is the proper
are notified in open court. venue where facts, issues
and laws are evaluated and
considered. The very
purpose of trial is to allow a
party to present evidence to
SO ORDERED. 28 overcome the disputable
presumptions involved. 31

On June 29, 2010, Department of

Justice Acting Secretary Alberto C. Agra The dispositive portion of the Agra
(Secretary Agra) issued the Resolution (Agra Resolution provides:
Resolution) that reversed the Gonzalez
Resolution and found probable cause to WHEREFORE, premises considered:
charge Dela Peña-Reyes and Manalastas for (a) The Motion for
violation of the Intellectual Property Code. 29 Reconsideration filed by
Secretary Agra also found probable cause to appellees ABS-CBN
indict Gozon, Duavit, Jr., Flores, and Soho for Broadcasting Corporation
the same violation. 30 He ruled that: (ABS-CBN) of our
Resolution promulgated on
[w]hile good faith August 1, 2005 (Resolution
may be a defense in No. 364, Series of 2005)
copyright infringement, the and the Petition for
 Review filed by
complainant-appellant
ABS-CBN in I.S. No. 04-
10458 on April 10, 2006,
are GRANTED and the City
Prosecutor of Quezon City
is hereby ordered to file the
necessary Information for
violation of Sections 177
and 211 of Republic Act No.
8293 against GMA-7.
Felipe L. Gozon, Gilberto R.
Duavit, Jr., Marisa L.
Flores, Jessica A. Soho,
Grace Dela Peña-Reyes,
John Oliver T.
Manalastas[.]
xxx xxx xxx
SO ORDERED. 32 (Emphasis in the original)
Respondents assailed the Agra
Resolution through the Petition for Certiorari
with prayer for issuance of a temporary
restraining order and/or Writ of Preliminary
Injunction on September 2, 2010 before the
Court of Appeals. In the Resolution dated
September 13, 2010, the Court of Appeals
granted the temporary restraining order
preventing the Department of Justice from
enforcing the Agra Resolution. 33
On November 9, 2010, the Court of
Appeals rendered the Decision granting the
Petition and reversing and setting aside the
Agra Resolution. 34 The Court of Appeals
held that Secretary Agra committed errors of
jurisdiction in issuing the assailed Resolution.
Resolving the issue of copyright
infringement, the Court of Appeals said:
Surely, private respondent has a
copyright of its news
coverage. Seemingly, for
airing said video feed,
petitioner GMA is liable
under the provisions of the
Intellectual Property Code,
which was enacted
purposely to protect
copyright owners from
infringement. However, it is
an admitted fact that
petitioner GMA had only
aired a five (5) second
footage of the disputed live
video feed that it had
received from Reuters and
CNN as a subscriber.
Indeed, petitioners had no
notice of the right of
ownership of private
respondent over the same.
Without notice of the "No
Access Philippines"
restriction of the live video
feed, petitioner cannot be
faulted for airing a live video
feed from Reuters and
CNN.
Verily, as aptly
opined by Secretary
Gonzalez in his earlier
Resolution, the act of
petitioners in airing the five
(5) second footage was
undeniably attended by
good faith and it thus
serves to exculpate them
from criminal liability under
the Code. While the
Intellectual Property Code
is a special law, and thus
generally categorized as
malum prohibitum, it
bears to stress that the
provisions of the Code itself
do not ipso facto penalize a
person or entity for
copyright infringement by
the mere fact that one had
used a copyrighted work or
material.
Certainly so, in the
exercise of one's moral and
economic or copyrights, the
very provisions of Part IV of
the Intellectual Property
Code provide for the scope
and limitations on copyright
protection under Section
184 and in fact permit fair
use of copyrighted work
under Section 185. With the
aforesaid statutory
limitations on one's
economic and copyrights
and the allowable instances
where the other persons
can legally use a
copyrighted work, criminal
culpability clearly attaches
only when the infringement
had been knowingly and
 intentionally committed. 35
(Emphasis supplied)
The dispositive portion of the
Decision reads:
WHEREFORE, the foregoing considered, the instant
petition is hereby GRANTED and the assailed
Resolution dated 29 June 2010 REVERSED and SET
ASIDE. Accordingly, the earlier Resolution dated 1
August 2005, which ordered the withdrawal of the
Information filed, if any, against the petitioners for
violation of Sections 177 and 211 of the Intellectual
Property Code, is hereby REINSTATED. No costs.
SO ORDERED. 36 (Emphasis in the original) ETHIDa
ABS-CBN's Motion for
Reconsideration was denied. 37 It then filed
its Petition for Review before this court
assailing the Decision and Resolution of the
Court of Appeals. 38
The issues for this court's
consideration are:
First, whether Secretary Agra
committed errors of jurisdiction in the
Resolution dated June 29, 2010 and,
therefore, whether a petition for certiorari was
the proper remedy in assailing that
Resolution;
Second, whether news footage is
copyrightable under the law;
Third, whether there was fair use of
the broadcast material;
Fourth, whether lack of knowledge
that a material is copyrighted is a defense
against copyright infringement;
Fifth, whether good faith is a defense
in a criminal prosecution for violation of the
Intellectual Property Code; and
Lastly, whether the Court of Appeals
was correct in overturning Secretary Agra's
finding of probable cause.
I
The trial court granted respondents'
Motion to Suspend Proceedings and deferred
respondents Dela Peña-Reyes and
Manalastas' arraignment for 60 days in view
of the Petition for Review filed before the
Department of Justice.
Rule 116, Section 11 (c) of the Rules
of Criminal Procedure allows the suspension
of the accused's arraignment in certain
circumstances only:
SEC. 11. Suspension of arraignment. counted from the filing of the petition with the reviewing
— Upon motion by the office. (12a) (Emphasis supplied)
proper party, the In Samson v. Daway, 39 this court
arraignment shall be acknowledged the applicability of Rule 116,
suspended in the following Section (c) in a criminal prosecution for
cases: (a) The accused infringement under the Intellectual Property
appears to be suffering Code. However, this court emphasized the
from an unsound mental limits of the order of deferment under the
condition which effectively Rule:
renders him unable to fully
understand the charge While the
against him and to plead pendency of a petition for
intelligently thereto. In such review is a ground for
case, the court shall order suspension of the
his mental examination arraignment, the . . .
and, if necessary, his provision limits the
confinement for such deferment of the
purpose; arraignment to a period of
60 days reckoned from the
filing of the petition with the
reviewing office. It follows,
therefore, that after the
(b) There exists a prejudicial question; expiration of said period,
and the trial court is bound to
arraign the accused or to
deny the motion to defer
arraignment. 40

(c) A petition for review of the resolution of the

prosecutor is pending at either the Department of
Justice, or the Office of the President; provided, that the
period of suspension shall not exceed sixty (60) days
 We clarify that the suspension of the
arraignment should always be within the
limits allowed by law. In Crespo v. Judge
Mogul, 41 this court outlined the effects of
filing an information before the trial court,
which includes initiating a criminal action and
giving this court "authority to hear and
determine the case": 42
The preliminary
investigation conducted by
the fiscal for the purpose of
determining whether a
prima facie case exists
warranting the prosecution
of the accused is
terminated upon the filing of
the information in the
proper court. In turn, as
above stated, the filing of
said information sets in
motion the criminal action
against the accused in
Court. Should the fiscal find
it proper to conduct a
reinvestigation of the case,
at such stage, the
permission of the Court
must be secured. After
such reinvestigation the
finding and
recommendations of the
fiscal should be submitted
to the Court for appropriate
action. While it is true that
the fiscal has the quasi
judicial discretion to
determine whether or not a
criminal case should be
filed in court or not, once
the case had already been
brought to Court whatever
disposition the fiscal may
feel should be proper in the
case thereafter should be
addressed for the
consideration of the Court,
the only qualification is that
the action of the Court must
not impair the substantial
rights of the accused or the
right of the People to due
process of law.
Whether the accused had been arraigned or not and
whether it was due to a reinvestigation by the fiscal or a
review by the Secretary of Justice whereby a motion to
dismiss was submitted to the Court, the Court in the
exercise of its discretion may grant the motion or deny it
and require that the trial on the merits proceed for the
proper determination of the case.
 However, one may
ask, if the trial court refuses
to grant the motion to
dismiss filed by the fiscal
upon the directive of the
Secretary of Justice will
there not be a vacuum in
the prosecution? A state
prosecutor to handle the
case cannot possibly be
designated by the
Secretary of Justice who
does not believe that there
is a basis for prosecution
nor can the fiscal be
expected to handle the
prosecution of the case
thereby defying the
superior order of the
Secretary of Justice.
The answer is
simple. The role of the fiscal
or prosecutor as We all
know is to see that justice is
done and not necessarily to
secure the conviction of the
person accused before the
Courts. Thus, in spite of his
opinion to the contrary, it is
the duty of the fiscal to
proceed with the
presentation of evidence of
the prosecution to the Court
to enable the Court to arrive
at its own independent
judgment as to whether the
accused should be
convicted or acquitted. The
fiscal should not shirk from
the responsibility of
appearing for the People of
the Philippines even under
such circumstances much
less should he abandon the
prosecution of the case
leaving it to the hands of a
private prosecutor for then
the entire proceedings will
be null and void. The least
that the fiscal should do is
to continue to appear for
the prosecution although he
may turn over the
presentation of the
evidence to the private
prosecutor but still under
his direction and control.
The rule therefore in this jurisdiction is that once a
complaint or information is filed in Court any disposition
of the case as to its dismissal or the conviction or
acquittal of the accused rests in the sound discretion of
the Court. Although the fiscal retains the direction and
control of the prosecution of criminal cases even while
the case is already in Court he cannot impose his
opinion on the trial court. The Court is the best and sole
judge on what to do with the case before it. The
determination of the case is within its exclusive
jurisdiction and competence. A motion to dismiss the
case filed by the fiscal should be addressed to the Court
who has the option to grant or deny the same. It does
not matter if this is done before or after the arraignment
of the accused or that the motion was filed after a
reinvestigation or upon instructions of the Secretary of
Justice who reviewed the records of the investigation. 43
(Emphasis supplied, citations omitted)
The doctrine in Crespo was
reiterated in Mayor Balindong v. Court of
Appeals, 44 where this court reminded the
Department of Justice Secretary to refrain
from entertaining petitions for review when
the case is already pending with this court:
[I]n order to avoid a situation where the
opinion of the Secretary of
Justice who reviewed the
action of the fiscal may be
disregarded by the trial
court, the Secretary of
Justice should, as far as
practicable, refrain from
entertaining a petition for
review or appeal from the
action of the fiscal, when
the complaint or information
has already been filed in
the Court. The matter
should be left entirely for
the determination of the
Court. 45
The trial court should have
proceeded with respondents Dela Peña-
Reyes and Manalastas' arraignment after the
60-day period from the filing of the Petition for
Review before the Department of Justice on
March 8, 2005. It was only on September 13,
2010 that the temporary restraining order was
issued by the Court of Appeals. The trial court
erred when it did not act on the criminal case
during the interim period. It had full control
and direction of the case. As Judge Mogul
reasoned in denying the motion to dismiss in
Crespo, failure to proceed with the
arraignment "disregards the requirements of
due process [and] erodes the Court's
independence and integrity." 46
II
 According to ABS-CBN, the Court of
Appeals erred in finding that: a motion for
reconsideration was not necessary before a
petition for certiorari could be filed; the
Department of Justice Secretary committed
errors of jurisdiction since the Agra
Resolution was issued within its authority and
in accordance with settled laws and
jurisprudence; and respondents were not
liable for copyright infringement.
In its assailed Decision, the Court of
Appeals found that respondents committed a
procedural error when they failed to file a
motion for reconsideration before filing the
Petition for Certiorari. However, the Court of
Appeals held that a motion for
reconsideration was unnecessary since the
Agra Resolution was a patent nullity and it
would have been useless under the
circumstances:
Given that a
reading of the assailed
Resolution and the instant
records readily reveals
errors of jurisdiction on the
part of respondent
Secretary, direct judicial
recourse is warranted
under the circumstances.
Aside from the fact that said
Resolution is a patent
nullity having been issued
in grave abuse of discretion
amounting to lack or excess
of jurisdiction, the filing of a
motion for reconsideration
is evidently useless on
account of the fact that the
issues and arguments
before this Court have
already been duly raised
and accordingly delved into
by respondent Secretary in
his disposition of the
petition a quo. 47
(Emphasis in the original)
In Elma v. Jacobi, 48 this court ruled
that a petition for certiorari under Rule 65 of
the Rules of Court is proper when assailing
adverse resolutions of the Department of
Justice stemming from the determination of
probable cause. 49 However, grave abuse of
discretion must be alleged. 50
In Sanrio Company Limited v. Lim,
51 this court stressed the prosecutor's role in
determining probable cause. Judicial review
will only lie when it is shown that the
 prosecutor acted with grave abuse of
discretion amounting to lack or excess of
jurisdiction:
A prosecutor alone determines the
sufficiency of evidence that
will establish probable
cause justifying the filing of
a criminal information
against the respondent. By
way of exception, however,
judicial review is allowed
where respondent has
clearly established that the
prosecutor committed
grave abuse of discretion.
Otherwise stated, such
review is appropriate only
when the prosecutor has
exercised his discretion in
an arbitrary, capricious,
whimsical or despotic
manner by reason of
passion or personal
hostility, patent and gross
enough to amount to an
evasion of a positive duty or
virtual refusal to perform a
duty enjoined by law. 52
(Citations omitted) AIDSTE
Grave abuse of discretion refers to:
such capricious and whimsical
exercise of judgment as is
equivalent to lack of
jurisdiction. The abuse of
discretion must be grave as
where the power is
exercised in an arbitrary or
despotic manner by reason
of passion or personal
hostility and must be so
patent and gross as to
amount to an evasion of
positive duty or to a virtual
refusal to perform the duty
enjoined by or to act at all in
contemplation of law. 53
Resorting to certiorari requires that
there be there be "no appeal, or any plain,
speedy, and adequate remedy in the ordinary
course of law[,]" 54 such as a motion for
reconsideration. Generally, "a motion for
reconsideration is a condition sine qua non
before a petition for certiorari may lie, its
purpose being to grant an opportunity for the
[tribunal or officer] to correct any error
 attributed to it by a re-examination of the legal (d) where, under the
and factual circumstances of the case." 55 circumstances, a
motion for
However, exceptions to the rule reconsideration
exist: would be useless; (e)
where petitioner was
(a) where the order is a patent nullity, as deprived of due
where the Court a process and there is
quo had no extreme urgency for
jurisdiction; (b) relief; (f) where, in a
where the questions criminal case, relief
raised in the from an order of
certiorari proceeding arrest is urgent and
have been duly the granting of such
raised and passed relief by the trial
upon by the lower Court is improbable;
court, or are the (g) where the
same as those proceedings in the
raised and passed lower court are a
upon in the lower nullity for lack of due
court; (c) where process; (h) where
there is an urgent the proceedings was
necessity for the ex parte or in which
resolution of the the petitioner had no
question and any opportunity to object;
further delay would and (i) where the
prejudice the issue raised is one
interests of the purely of law or
Government or of the where public interest
petitioner or the is involved. 56
subject matter of the (Emphasis in the
action is perishable;
 original, citations
omitted)
As argued by respondents, "[a]
second motion for reconsideration would
have been useless and futile since the
D[epartment] [of] J[ustice] had already
passed upon the same issues twice." 57
Equally pressing under the circumstances
was the need to resolve the matter, as the
Information's filing would lead to
respondents' imminent arrest. 58
Moreover, Department of Justice
Department Circular No. 70 dated July 3,
2000, or the 2000 NPS Rules on Appeal,
provides that no second motion for
reconsideration of the Department of Justice
Secretary's resolution shall be entertained:
SECTION
13. Motion for
reconsideration. — The
aggrieved party may file a
motion for reconsideration
within a non-extendible
period of ten (10) days from
receipt of the resolution on
appeal, furnishing the
adverse party and the
Prosecution Office
concerned with copies
thereof and submitting
proof of such service. No
second or further motion for
reconsideration shall be
entertained.
The Agra Resolution was the result
of respondents' Motion for Reconsideration
assailing the Gonzalez Resolution. To file a
motion for reconsideration of the Agra
Resolution would be superfluous.
Respondents were, therefore, correct in filing
the Petition for Certiorari of the Agra
Resolution before the Court of Appeals.
III
The Court of Appeals ruled that
Secretary Agra committed errors of
jurisdiction, which then required the grant of
the writ of certiorari:
So viewed, by
ordering the filing of
information without proof
that probable cause exists
to charge petitioners with a
crime, respondent
 Secretary clearly
committed an error of
jurisdiction thus warranting
the issuance of the writ of
certiorari. Surely, probable
cause cannot be had when
the very provisions of the
statute exculpates criminal
liability in cases classified
as fair use of copyrighted
materials. The fact that they
admittedly used the
Reuters live video feed is
not, as a matter of course,
tantamount to copyright
infringement that would
justify the filing of an
information against the
petitioners. 59
Error of jurisdiction must
distinguished from error of judgment:
A line must be
drawn between errors of
judgment and errors of
jurisdiction. An error of
judgment is one which the
court may commit in the
exercise of its jurisdiction.
An error of jurisdiction
renders an order or
judgment void or voidable.
Errors of jurisdiction are
reviewable on certiorari;
errors of judgment, only by
appeal. 60
In People v. Hon. Sandiganbayan:
61
An error of judgment is one which the
court may commit in the
exercise of its jurisdiction.
An error of jurisdiction is
one where the act
complained of was issued
by the court without or in
excess of jurisdiction, or
be with grave abuse of
discretion, which is
tantamount to lack or in
excess of jurisdiction and
which error is correctible
only by the extraordinary
writ of certiorari. Certiorari
will not be issued to cure
errors of the trial court in its
 appreciation of the
evidence of the parties, or
its conclusions anchored on
the said findings and its
conclusions of law. 62
(Emphasis supplied)
This court has adopted a deferential
attitude towards review of the executive's
finding of probable cause. 63 This is based
"not only upon the respect for the
investigatory and [prosecutorial] powers
granted by the Constitution to the executive
department but upon practicality as well." 64
Review of the Department of Justice
Secretary's decision or resolution will be
allowed only when grave abuse of discretion
is alleged:
The full discretionary authority to determine probable
cause in a preliminary investigation to ascertain
sufficient ground for the filing of information rests with
the executive branch. Hence, judicial review of the
resolution of the Secretary of Justice is limited to a
determination whether there has been a grave abuse of
discretion amounting to lack or excess of jurisdiction.
Courts cannot substitute the executive branch's
judgment.
xxx xxx xxx
It is only where the decision of the Justice Secretary is
tainted with grave abuse of discretion amounting to lack
or excess of jurisdiction that the Court of Appeals may
take cognizance of the case in a petition for certiorari
under Rule 65 of the Revised Rules of Civil Procedure.
The Court of Appeals decision may then be appealed to
this Court by way of a petition for review on certiorari. 65
(Emphasis supplied, citations omitted) AaCTcI
In this case, it must be shown that
Secretary Agra exceeded his authority when
he reversed the findings of Secretary
Gonzalez. This court must determine
whether there is probable cause to file an
information for copyright infringement under
the Intellectual Property Code.
IV
Probable cause pertains to "such
facts as are sufficient to engender a well-
founded belief that a crime has been
committed and that respondent is probably
guilty thereof." 66 Preliminary investigation is
the inquiry or proceeding to determine
whether there is probable cause. 67
In Webb v. De Leon, 68 this court
ruled that determination of probable cause
during preliminary investigation does not
require trial-like evaluation of evidence since
existence of probable cause does not equate
to guilt:
 It ought to be In Reyes v. Pearlbank Securities,
emphasized that in Inc., 70 finding probable cause is not
determining probable equivalent to finding with moral certainty that
cause, the average man the accused committed the crime:
weighs facts and
circumstances without A finding of probable cause needs only
resorting to the calibrations to rest on evidence showing
of our technical rules of that more likely than not a
evidence of which his crime has been committed
knowledge is nil. Rather, he by the suspects. It need not
relies on the calculus of be based on clear and
common sense of which all convincing evidence of
reasonable men have an guilt, not on evidence
abundance. establishing guilt beyond
reasonable doubt, and
definitely not on evidence
establishing absolute
certainty of guilt. In
xxx xxx xxx determining probable
cause, the average man
weighs facts and
circumstances without
resorting to the calibrations
of the rules of evidence of
. . . A finding of
which he has no technical
probable cause merely
knowledge. He relies on
binds over the suspect to
common sense. 71
stand trial. It is not a
pronouncement of guilt. 69
 During preliminary investigation, a borrowed the concept of
public prosecutor does not adjudicate on the probable cause, the
parties' rights, obligations, or liabilities. 72 prevailing definition of
probable cause is this:
In the recent case of Estrada v.
Office of the Ombudsman, et al., 73 we
reiterated Webb on the determination of
probable cause during preliminary
investigation and traced the history of I
probable cause as borrowed from American n dealing
jurisprudence: with
probable
The purpose in
cause,
determining probable
however,
cause is to make sure that
as the
the courts are not clogged
very
with weak cases that will
name
only be dismissed, as well
implies,
as to spare a person from
we deal
the travails of a needless
with
prosecution.
probabiliti
es. These
are not
technical;
they are
xxx xxx xxx the
factual
and
practical
considera
. . . In the United tions of
States, from where we everyday
life on cause "is
which a
reasonabl reasonabl
e and e ground
prudent for belief
men, not of guilt."
legal McCarthy
technicia v. De
ns, act. Armit, 99
The Pa. St.
standard 63, 69,
of proof is quoted
according with
ly approval
correlativ in the
e to what Carroll
must be opinion.
proved. 267 U. S.
at 161.
And this
"means
less than
evidence
which
would
justify
"
condemn
The
ation" or
substanc
conviction
e of all the
, as
definition
Marshall,
s" of
C. J., said
probable
for the e and of
Court which
more than they had
a century reasonabl
ago in y
Locke v. trustworth
United y
States, 7 informatio
Cranch n [are]
339, 348. sufficient
Since in
Marshall' themselv
s time, at es to
any rate, warrant a
it has man of
come to reasonabl
mean e caution
more than in the
bare belief
suspicion: that" an
Probable offense
cause has been
exists or is
where being
"the facts committe
and d. Carroll
circumsta v. United
nces States,
within 267 U. S.
their [the 132, 162.
officers']
knowledg
 T situations
hese which
long- confront
prevailing officers in
standards the
seek to course of
safeguard executing
citizens their
from rash duties are
and more or
unreason less
able ambiguou
interferen s, room
ces with must be
privacy allowed
and from for some
unfounde mistakes
d charges on their
of crime. part. But
They also the
seek to mistakes
give fair must be
leeway those of
for reasonabl
enforcing e men,
the law in acting on
the facts
communit leading
y's sensibly
protection to their
. Because conclusio
many ns of
probabilit to leave
y. The law-
rule of abiding
probable citizens at
cause is a the mercy
practical, of the
nontechni officers'
cal whim or
conceptio caprice.
n
affording
the best
compromi
se that
has been
found for
accommo
In the Philippines,
dating
there are four instances in
these
the Revised Rules of
often
Criminal Procedure where
opposing
probable cause is needed
interests.
to be established:
Requiring
more
would
unduly
hamper
law (1) In Sections 1 and 3 of Rule 112: By
enforcem the
ent. To investigatin
allow less g officer, to
would be determine
whether least four
there is years, two
sufficient months and
ground to one day
engender a without
well- regard to
founded the fine;
belief that a
crime has
been
committed (2) In Sections 6 and 9 of Rule 112: By
and the the judge, to
respondent determine
is probably whether a
guilty warrant of
thereof, and arrest or a
should be commitmen
held for trial. t order, if the
A accused
preliminary has already
investigatio been
n is required arrested,
before the shall be
filing of a issued and
complaint or that there is
information a necessity
for an of placing
offense the
where the respondent
penalty under
prescribed immediate
by law is at custody in
 order not to has
frustrate the committed
ends of it; and
justice;
EcTCAD

(4) In Section 4 of Rule 126: By the

judge, to
(3) In Section 5(b) of Rule 113: By a determine
peace whether a
officer or a search
private warrant
person shall be
making a issued, and
warrantless only upon
arrest when probable
an offense cause in
has just connection
been with one
committed, specific
and he has offense to
probable be
cause to determined
believe personally
based on by the judge
personal after
knowledge examination
of facts or under oath
circumstanc or
es that the affirmation
person to be of the
arrested complainant
 and the Estrada also highlighted that a "[p]reliminary
witnesses investigation is not part of the criminal action. It is merely
he may preparatory and may even be disposed of in certain
produce, situations." 75
and To determine whether there is
particularly probable cause that respondents committed
describing copyright infringement, a review of the
the place to elements of the crime, including the existing
be facts, is required.
searched
and the V
things to be ABS-CBN claims that news footage
seized is subject to copyright and prohibited use of
which may copyrighted material is punishable under the
be Intellectual Property Code. It argues that the
anywhere in new footage is not a "newsworthy event" but
the "merely an account of the arrival of Angelo
Philippines. dela Cruz in the Philippines — the latter being
the newsworthy event": 76

To be clear, it is
the event itself or the arrival
In all these of Angelo dela Cruz which
instances, the evidence is not copyrightable
necessary to establish because that is the
probable cause is based newsworthy event.
only on the likelihood, or However, any footage
probability, of guilt. 74 created from the event
itself, in this case the arrival
of Angelo dela Cruz, are
intellectual creations which
are copyrightable. Thus,
 the footage created by
ABS-CBN during the arrival
of Angelo dela Cruz, which
includes the statements of
Dindo Amparo, are
copyrightable and
protected by the laws on
copyright. 77
On the other hand, respondents
argue that ABS-CBN's news footage of
Angelo dela Cruz's arrival is not
copyrightable or subject to protection:
Certainly, the
arrival of Angelo [d]ela
Cruz, which aroused public
attention and the
consciousness of the
Filipino people with regard
to their countrymen, OFWs
working in foreign countries
and how the Philippine
government responds to
the issues concerning
them, is "news". There is
no ingenuity or
inventiveness added in the
said news footage. The
video footage of this "news"
is not copyrightable by any
legal standard as facts of
everyday life depicted in the
news and items of press
information is part of the
public domain. 78
(Emphasis in the original)
The news footage is copyrightable.
The Intellectual Property Code is
clear about the rights afforded to authors of
various kinds of work. Under the Code,
"works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality
and purpose." 79 These include
"[a]udiovisual works and cinematographic
works and works produced by a process
analogous to cinematography or any process
for making audio-visual recordings." 80
Contrary to the old copyright law, 81
the Intellectual Property Code does not
require registration of the work to fully recover
in an infringement suit. Nevertheless, both
copyright laws provide that copyright for a
work is acquired by an intellectual creator looks as patterns in forming
from the moment of creation. 82 the world. This was later
modified to the religious
It is true that under Section 175 of conception of ideas as the
the Intellectual Property Code, "news of the thoughts of God. "It is not a
day and other miscellaneous facts having the very long step to extend the
character of mere items of press information" term 'idea' to cover
are considered unprotected subject matter. patterns, blueprints, or
83 However, the Code does not state that plans in anyone's mind, not
expression of the news of the day, particularly only in God's." The word
when it underwent a creative process, is not entered the French and
entitled to protection. English vernacular in the
1600s and possessed two
An idea or event must be meanings. The first was the
distinguished from the expression of that idea Platonic meaning of a
or event. An idea has been likened to a ghost perfect exemplar or
in that it "must be spoken to a little before it paradigm. The second,
will explain itself." 84 It is a concept that has which probably has its
eluded exact legal definition. 85 To get a origin with Descartes, is of
better grasp of the idea/expression a mental concept or image
dichotomy, the etymology of the term "idea" or, more broadly, any object
is traced: of the mind when it is
active. Objects of thought
The word "idea" is
may exist independently.
derived from a Greek term,
The sun exists (probably)
meaning "a form, the look
before and after you think of
or appearance of a thing as
it. But it is also possible to
opposed to its reality, from
think of things that have
idein, to see." In the
never existed, such as a
Timaeus, Plato saw ideas
unicorn or Pegasus. John
as eternal paradigms,
Locke defined ideas very
independent objects to
comprehensively, to
which the divine demiurge
 include: all objects of the SEC. 175. Unprotected
mind. Language was a way Subject
of translating the invisible, Matter. —
hidden ideas that make up Notwithst
a person's thoughts into the anding
external, perceptible world the
of articulate sounds and provision
visible written symbols that s of
others can understand. 86 Sections
(Citations omitted) 172 and
173, no
protection
shall
extend,
There is no one legal definition of under this
"idea" in this jurisdiction. The term "idea" is law, to
mentioned only once in the Intellectual any idea,
Property Code. 87 In Joaquin, Jr. v. Drilon, 88 procedur
a television format (i.e., a dating show format) e,
is not copyrightable under Section 2 of system,
Presidential Decree No. 49; 89 it is a mere method or
concept: HSAcaE operation,
concept,
P.D. No. 49, §2, in enumerating what are subject to principle,
copyright, refers to finished works and not to concepts. discovery
The copyright does not extend to an idea, procedure, or mere
process, system, method of operation, concept, data as
principle, or discovery, regardless of the form in which it such,
is described, explained, illustrated, or embodied in such even if
work. Thus, the new INTELLECTUAL PROPERTY they are
CODE OF THE PHILIPPINES provides: expresse
d,
explained translatio
, n thereof.
illustrated
or
embodied
in a work;
news of
the day
and other
miscellan
What then is the
eous
subject matter of
facts
petitioners' copyright? This
having
Court is of the opinion that
the
petitioner BJPI's copyright
character
covers audio-visual
of mere
recordings of each episode
items of
of Rhoda and Me, as falling
press
within the class of works
informatio
mentioned in P.D. 49,
n; or any
§2(M), to wit:
official
text of a
legislative
,
administr
ative or C
legal inematogr
nature, as aphic
well as works
any and
official works
produced
 by a evidence was
process indispensable to the
analogou determination of the
s to existence of probable
cinemato cause. As aptly observed
graphy or by respondent Secretary of
any Justice:
process
for
making
audio-
visual A television show includes more than mere words can
recording describe because it involves a whole spectrum of visuals
s; and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the
general copyright/format of both dating game shows. 90
(Emphasis supplied, citations omitted)
Ideas can be either abstract or
concrete. 91 It is the concrete ideas that are
generally referred to as expression:

The words "abstract" and "concrete"

The copyright does not extend to the general concept or
arise in many cases dealing
format of its dating game show. Accordingly, by the very
with the idea/expression
nature of the subject of petitioner BJPI's copyright, the
distinction. The Nichols
investigating prosecutor should have the opportunity to
court, for example, found
compare the videotapes of the two shows.
that the defendant's film did
Mere description
not infringe the plaintiff's
by words of the general
play because it was "too
format of the two dating
generalized an abstraction
game shows is insufficient;
from what plaintiff wrote . . .
the presentation of the
only a part of her ideas." In
master videotape in
Eichel v. Marcin, the court than the literal expression
said that authors may contained within it, it is
exploit facts, experiences, difficult to determine what is
field of thought, and general meant by "concrete."
ideas found in another's Webster's New Twentieth
work, "provided they do not Century Dictionary of the
substantially copy a English Language provides
concrete form, in which the several meanings for the
circumstances and ideas word concrete. These
have been developed, include: "having a material,
arranged, and put into perceptible existence; of,
shape." Judge Hand, in belonging to, or
National Comics characterized by things or
Publications, Inc. v. events that can be
Fawcett Publications, Inc. perceived by the senses;
said that "no one infringes, real; actual;" and "referring
unless he descends so far to a particular; specific, not
into what is concrete as to general or abstract." 92
invade. . . 'expression.'"

In Pearl & Dean (Phil.), Incorporated

These cases seem v. Shoemart, Incorporated, 93 this court,
to be distinguishing citing the American case of Baker v. Selden,
"abstract" ideas from distinguished copyright from patents and
"concrete" tangible illustrated how an idea or concept is different
embodiments of these from the expression of that idea:
abstractions that may be
termed expression. In the oft-cited
However, if the concrete case of Baker vs. Selden,
form of a work means more the United States Supreme
Court held that only the explanato
expression of an idea is ry of well
protected by copyright, not known
the idea itself. In that case, systems,
the plaintiff held the may be
copyright of a book which the
expounded on a new subject of
accounting system he had a
developed. The publication copyright;
illustrated blank forms of but, then,
ledgers utilized in such a it is
system. The defendant claimed
reproduced forms similar to only as a
those illustrated in the book. . . .
plaintiff's copyrighted book. But there
The US Supreme Court is a clear
ruled that: distinction
between
the
books, as
such, and
" the art,
There is which it
no doubt is,
that a intended
work on to
the illustrate.
subject of The mere
book- statement
keeping, of the
though propositio
only n is so
 evident the
that it constructi
requires on and
hardly use of
any ploughs
argument or
to support watches
it. The or churns;
same or on the
distinction mixture
may be and
predicate applicatio
d of every n of
other art colors for
as well as painting
that of or dyeing;
bookkeep or on the
ing. mode of
drawing
lines to
produce
the effect
of
perspecti
ve, would
be the
A treatise on the composition
subject of
and use
copyright;
of
but no
medicine
one
s, be they
would
old or
contend
new; on
that the The
copyright novelty of
of the the art or
treatise thing
would described
give the or
exclusive explained
right to has
the art or nothing to
manufact do with
ure the
described validity of
therein. the
The copyright.
copyright To give to
of the the author
book, if of the
not book an
pirated exclusive
from property
other in the art
works, described
would be therein,
valid when no
without examinati
regard to on of its
the novelty
novelty or has ever
want of been
novelty of officially
its subject made,
matter. would be
a surprise can be
and a obtained;
fraud and a
upon the patent
public. from the
That is governme
the nt can
province only
of letters secure it.
patent, HESIcT
not of
copyright.
The claim
to an
invention
of
discovery
of an art
T
or
he
manufact
difference
ure must
between
be
the two
subjected
things,
to the
letters
examinati
patent
on of the
and
Patent
copyright,
Office
may be
before an
illustrated
exclusive
by
right
reference
therein
to the
subjects the
just manufact
enumerat ure and
ed. Take sale of
the case the
of medicine;
medicine he gives
s. Certain that to the
mixtures public. If
are found he
to be of desires to
great acquire
value in such
the exclusive
healing right, he
art. If the must
discovere obtain a
r writes patent for
and the
publishes mixture
a book on as a new
the art,
subject manufact
(as ure or
regular compositi
physician on of
s matter.
generally He may
do), he copyright
gains no his book,
exclusive if he
right to pleases;
but that how
only many
secures drawings
to him the and
exclusive illustratio
right of ns it may
printing contain,
and gives no
publishin exclusive
g his right to
book. So the
of all modes of
other drawing
invention described
s or , though
discoveri they may
es. never
have
been
known or
used
before.
By
publishin
g the
T
book
he
without
copyright
getting a
of a book
patent for
on
the art,
perspecti
the latter
ve, no
is given to
matter
 the T
public. he
plausibilit
y of the
claim put
forward
by the
complain
ant in this
case
xxx xxx xxx
arises
from a
confusion
of ideas
produced
by the
peculiar
nature of
Now, whilst no one has a right to print or publish his the art
book, or any material part thereof, as a book intended to described
convey instruction in the art, any person may practice in the
and use the art itself which he has described and books,
illustrated therein. The use of the art is a totally different which
thing from a publication of the book explaining it. The have
copyright of a book on bookkeeping cannot secure the been
exclusive right to make, sell and use account books made the
prepared upon the plan set forth in such book. Whether subject of
the art might or might not have been patented, is a copyright.
question, which is not before us. It was not patented, and In
is open and free to the use of the public. And, of course, describin
in using the art, the ruled lines and headings of accounts g the art,
must necessarily be used as incident to it. the
illustratio claim to
ns and the art
diagrams itself. The
employed object of
happened the one is
to explanati
correspon on; the
d more object of
closely the other
than is use.
usual with The
the actual former
work may be
performe secured
d by the by
operator copyright.
who uses The latter
the art. . . can only
. The be
descriptio secured,
n of the if it can be
art in a secured
book, at all, by
though letters
entitled to patent."
the 94
benefit of (Emphasi
copyright, s
lays no supplied)
foundatio
n for an
exclusive
 News or the event itself is not 1365, 1368 (5th Cir. 1981);
copyrightable. However, an event can be Wainwright Securities, Inc.
captured and presented in a specific medium. v. Wall Street Transcript
As recognized by this court in Joaquin, Corp., 558 F.2d 91, 95 (2d
television "involves a whole spectrum of Cir. 1977), cert. denied, 434
visuals and effects, video and audio." 95 U.S. 1014, 98 S.Ct. 730, 54
News coverage in television involves framing L.Ed.2d 759 (1978). But it
shots, using images, graphics, and sound is equally well-settled
effects. 96 It involves creative process and that copyright protection
originality. Television news footage is an does extend to the
expression of the news. reports themselves, as
distinguished from the
In the United States, a line of cases substance of the
dwelt on the possibility of television information contained in
newscasts to be copyrighted. 97 Most of the reports. Wainwright,
these cases focused on private individuals' 558 F.2d at 95;
sale or resale of tapes of news broadcasts. International News Service
Conflicting decisions were rendered by its v. Associated Press, 248
courts. Noteworthy, however, is the District U.S. 215, 39 S.Ct. 68, 63
Court's pronouncement in Pacific & Southern L.Ed. 211 (1918); see
Co. v. Duncan, 98 which involves a News Chicago Record-Herald
Monitoring Service's videotaping and sale of Co. v. Tribune Assn., 275 F.
WXIA-TV's news broadcasts: 797 (7th Cir. 1921); 1
Nimmer on Copyright §
It is axiomatic 2.11[B] (1983). Copyright
that copyright protection protects the manner of
does not extend to news expression of news
"events" or the facts or reports, "the particular
ideas which are the form or collocation of
subject of news reports. words in which the writer
Miller v. Universal City has communicated it."
Studios, Inc., 650 F.2d International News Service,
 248 U.S. at 234, 39 S.Ct. at
70. Such protection
extends to electronic news
reports as well as written
reports. See 17 U.S.C. §
102(a) (5), (6), and (7); see
also Iowa State University
Research Foundations, Inc.
v. American Broadcasting
Cos., 621 F.2d 57, 61 (2d
Cir. 1980). 99 (Emphasis
supplied)
The idea/expression dichotomy has
long been subject to debate in the field of
copyright law. Abolishing the dichotomy has
been proposed, in that non-protectibility of
ideas should be re-examined, if not stricken,
from decisions and the law:
If the underlying
purpose of the copyright
law is the dual one
expressed by Lord
Mansfield, the only excuse
for the continuance of the
idea-expression test as a
judicial standard for
determining protectibility
would be that it was or
could be a truly useful
method of determining the
proper balance between
the creator's right to profit
from his work and the
public's right that the
"progress of the arts not be
retarded."
. . . [A]s used in the
present-day context[,] the
dichotomy has little or no
relationship to the policy
which it should effectuate.
Indeed, all too often the
sweeping language of the
courts regarding the
nonprotectibility of ideas
gives the impression that
this is of itself a policy of the
law, instead of merely a
clumsy and outdated tool to
achieve a much more basic
end. 100
 The idea/expression dichotomy is a 177.1. Reproduction of the work or substantial portion of
complex matter if one is trying to determine the work;
whether a certain material is a copy of 177.2. Dramatization, translation,
another. 101 This dichotomy would be more adaptation,
relevant in determining, for instance, whether abridgment,
a stage play was an infringement of an arrangemen
author's book involving the same characters t or other
and setting. In this case, however, transformati
respondents admitted that the material under on of the
review — which is the subject of the work;
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 177.3. The first public distribution of the
transformation where there is a need to track original and
elements of the original. each copy
of the work
Having established the protectible
by sale or
nature of news footage, we now discuss the
other forms
concomitant rights accorded to authors. The
of transfer
authors of a work are granted several rights
of
in relation to it, including copyright or
ownership;
economic rights: caITAC

SECTION 177. Copyright or Economic

Rights. — Subject to the
provisions of Chapter VIII, 177.4. Rental of the original or a copy of
copyright or economic an
rights shall consist of the audiovisual
exclusive right to carry out, or
authorize or prevent the cinematogr
following acts: aphic work,
 a work 177.6. Public performance of the work;
embodied in and
a sound
recording, a
computer
program, a 177.7. Other communication to the public of the work.
compilation (Sec. 5, P. D. No. 49a) (Emphasis supplied)
of data and Under Section 211 of the Intellectual
other Property Code, broadcasting organizations
materials or are granted a more specific set of rights
a musical called related or neighboring rights:
work in
graphic SECTION 211. Scope of Right. —
form, Subject to the provisions of
irrespective Section 212, broadcasting
of the organizations shall enjoy
ownership the exclusive right to carry
of the out, authorize or prevent
original or any of the following acts:
the copy
which is the
subject of
the rental;
(n) 211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner,
including
the making
177.5. Public display of the original or a of films or
copy of the the use of
work; video tape,
of their
broadcasts
 for the Section 212. Limitations on Rights. —
purpose of Sections 203, 208 and 209
communicat shall not apply where the
ion to the acts referred to in those
public of Sections are related to:
television
broadcasts
of the same;
and
212.1. The use by a natural person
exclusively
for his own
211.3. The use of such records for fresh personal
transmissio purposes;
ns or for
fresh
recording.
(Sec. 52, 212.2. Using short excerpts for reporting
P.D. No. 49) current
(Emphasis events;
supplied)

212.3. Use solely for the purpose of

Section 212 of the Code provides: teaching or
for scientific
CHAPTER XV research;
LIMITATIONS ON and
PROTECTION
212.4. Fair use of the broadcast subject 202.8. "Broadcasting organization"
to the shall include a natural
conditions person or a juridical entity
under duly authorized to engage
Section in broadcasting[.]
185. (Sec.
44, P.D. No.
49a)

Developments in technology,
including the process of preserving once
The Code defines what ephemeral works and disseminating them,
broadcasting is and who broadcasting resulted in the need to provide a new kind of
organizations include: protection as distinguished from copyright.
102 The designation "neighboring rights" was
202.7. "Broadcasting" means the abbreviated from the phrase "rights
transmission by wireless neighboring to copyright." 103 Neighboring or
means for the public related rights are of equal importance with
reception of sounds or of copyright as established in the different
images or of conventions covering both kinds of rights.
representations thereof; 104
such transmission by
satellite is also Several treaties deal with
"broadcasting" where the neighboring or related rights of copyright. 105
means for decrypting are The most prominent of these is the
provided to the public by "International Convention for the Protection
the broadcasting of Performers, Producers of Phonograms
organization or with its and Broadcasting Organizations" (Rome
consent; Convention). 106

The Rome Convention protects the

rights of broadcasting organizations in
 relation to their broadcasts. Article XIII of the (i) of fixations, made without their
Rome Convention enumerates the minimum co
rights accorded to broadcasting ns
organizations: ent
, of
Article 13 the
Minimum Rights for ir
Broadcasting bro
Organizations ad
cas
ts;

Broadcasting organizations shall enjoy

the right to authorize or (ii) of fixations, made in accordance with
prohibit: the
pro
visi
on
s of
(a) the rebroadcasting of their Arti
broadcasts; cle
15,
of
the
(b) the fixation of their broadcasts; ir
bro
ad
cas
ts,
(c) the reproduction:
if
the
rep (d) the communication to the public of
rod their
ucti television
on broadcasts
is if such
ma communicat
de ion is made
for in places
pur accessible
po to the public
ses against
diff payment of
ere an entrance
nt fee; it shall
fro be a matter
m for the
tho domestic
se law of the
ref State where
err protection
ed of this right
to is claimed to
in determine
tho the
se conditions
pro under which
visi it may be
on exercised.
s;
 With regard to the neighboring rights Phonograms and
of a broadcasting organization in this Broadcasting
jurisdiction, this court has discussed the Organizations, otherwise
difference between broadcasting and known as the 1961 Rome
rebroadcasting: Convention, of which the
Republic of the Philippines
Section 202.7 of is a signatory, is "the
the IP Code defines simultaneous broadcasting
broadcasting as "the by one broadcasting
transmission by wireless organization of the
means for the public broadcast of another
reception of sounds or of broadcasting organization."
images or of
representations thereof;
such transmission by
satellite is also
'broadcasting' where the xxx xxx xxx
means for decrypting are
provided to the public by
the broadcasting
organization or with its
consent." ICHDca
Under the Rome
Convention,
rebroadcasting is "the
simultaneous broadcasting
by one broadcasting
On the other hand, organization of the
rebroadcasting as defined broadcast of another
in Article 3(g) of the broadcasting organization."
International Convention The Working Paper
for the Protection of prepared by the Secretariat
Performers, Producers of of the Standing Committee
 on Copyright and Related
Rights defines
broadcasting organizations
as "entities that take the
financial and editorial
responsibility for the
selection and arrangement
of, and investment in, the
transmitted content." 107
(Emphasis in the original,
citations omitted)
Broadcasting organizations are
entitled to several rights and to the protection
of these rights under the Intellectual Property
Code. Respondents' argument that the
subject news footage is not copyrightable is
erroneous. The Court of Appeals, in its
assailed Decision, correctly recognized the
existence of ABS-CBN's copyright over the
news footage:
Surely, private respondent has a
copyright of its news
coverage. Seemingly, for
airing said video feed,
petitioner GMA is liable
under the provisions of the
Intellectual Property Code,
which was enacted
purposely to protect
copyright owners from
infringement. 108
News as expressed in a video
footage is entitled to copyright protection.
Broadcasting organizations have not only
copyright on but also neighboring rights over
their broadcasts. Copyrightability of a work is
different from fair use of a work for purposes
of news reporting.
VI
ABS-CBN assails the Court of
Appeals' ruling that the footage shown by
GMA-7 falls under the scope of Section 212.2
and 212.4 of the Intellectual Property Code:
The evidence on
record, as well as the
discussions above, show
that the footage used by
[respondents] could hardly
be characterized as a short
excerpt, as it was aired over
one and a half minutes.
 Furthermore, the
footage used does not fall
under the contemplation of
Section 212.2 of the
Intellectual Property Code.
A plain reading of the
provision would reveal that
copyrighted material
referred to in Section 212
are short portions of an
artist's performance under
Section 203, or a used in relation to the
producer's sound
recordings under Sections
208 and 209. Section 212
does not refer to actual use
of video footage of another
as its own.
The Angelo dela
Cruz footage does not fall
under the rule on Section
212.4 of the Intellectual
Property Code on fair use
of the broadcast.
xxx xxx xxx
In determining fair
use, several factors are
considered, including the
nature of the copyrighted
work, and the amount and
substantiality of the person
copyrighted work as a
whole.
In the business of
television news reporting,
the nature of the
copyrighted work or the
video footages, are such
that, footage created, must
be a novelty to be a good
report. Thus, when the . . .
Angelo dela Cruz footage
was used by [respondents],
the novelty of the footage
was clearly affected.
 Moreover, given
that a substantial portion of
the Angelo dela Cruz
footage was utilized by
GMA-7 for its own, its use
can hardly be classified as
fair use.
Hence,
[respondents] could not be
considered as having used
the Angelo dela Cruz
[footage] following the
provisions on fair use.
It is also worthy to
note that the Honorable
Court of Appeals seem to
contradict itself when it
relied on the provisions of
fair use in its assailed
rulings considering that it
found that the Angelo dela
Cruz footage is not
copyrightable, given that
the fair use presupposes an
existing copyright. Thus, it
is apparent that the findings
of the Honorable Court of
Appeals are erroneous and
based on wrong
assumptions. 109
(Underscoring in the
original)
On the other hand, respondents
counter that GMA-7's use of ABS-CBN's
news footage falls under fair use as defined
in the Intellectual Property Code.
Respondents, citing the Court of Appeals
Decision, argue that a strong statutory
defense negates any finding of probable
cause under the same statute. 110 The
Intellectual Property Code provides that fair
use negates infringement.
Respondents point out that upon
seeing ABS-CBN's reporter Dindo Amparo
on the footage, GMA-7 immediately shut off
the broadcast. Only five (5) seconds passed
before the footage was cut. They argue that
this shows that GMA-7 had no prior
knowledge of ABS-CBN's ownership of the
footage or was notified of it. They claim that
the Angelo dela Cruz footage is considered a
 short excerpt of an event's "news" footage to be used in a manner
and is covered by fair use. 111 which does not conflict with
the normal exploitation of
Copyright protection is not absolute. the work and does not
112 The Intellectual Property Code provides unreasonably prejudice the
the limitations on copyright: right holder's legitimate
interests.
CHAPTER VIII
LIMITATIONS ON
COPYRIGHT

xxx xxx xxx

Section 184. Limitations on Copyright.

— 184.1. Notwithstanding
the provisions of Chapter V,
CHAPTER XVLIMITATIONS ON
the following acts shall not
PROTECTION
constitute infringement of
copyright:

Section 212. Limitations on Rights. —

Sections 203, 208 and 209
xxx xxx xxx
shall not apply where the
acts referred to in those
Sections are related to:

184.2. The provisions of this section

shall be interpreted in such
a way as to allow the work
xxx xxx xxx teaching including multiple
copies for classroom use,
scholarship, research, and
similar purposes is not an
infringement of copyright. . .
212.2. Using short excerpts for reporting . In determining whether the
current events; use made of a work in any
particular case is fair use,
the factors to be considered
shall include:
xxx xxx xxx

a. The purpose and character of the use,

212.4. Fair use of the broadcast subject to the conditions including
under Section 185. (Sec. 44, P.D. No. 49a) (Emphasis whether
supplied) such use is
The determination of what of a
constitutes fair use depends on several commercial
factors. Section 185 of the Intellectual nature or is
Property Code states: TCAScE for non-
profit
SECTION 185. Fair Use of a
educational
Copyrighted Work. —
purposes;

185.1. The fair use of a copyrighted b. The nature of the copyrighted work;
work for criticism,
comment, news reporting,
c. The amount and substantiality of the This court defined fair use as "a
portion privilege to use the copyrighted material in a
used in reasonable manner without the consent of
relation to the copyright owner or as copying the theme
the or ideas rather than their expression." 115
copyrighted Fair use is an exception to the copyright
work as a owner's monopoly of the use of the work to
whole; and avoid stifling "the very creativity which that
law is designed to foster." 116

Determining fair use requires

application of the four-factor test. Section 185
d. The effect of the use upon the
of the Intellectual Property Code lists four (4)
potential
factors to determine if there was fair use of a
market for
copyrighted work:
or value of
the a. The purpose and character of the use,
copyrighted including whether
work. such use is of a
commercial nature or
is for non-profit
educational
Respondents allege that the news purposes;
footage was only five (5) seconds long, thus
falling under fair use. ABS-CBN belies this
contention and argues that the footage aired
for two (2) minutes and 40 seconds. 113 b. The nature of the copyrighted work;
According to the Court of Appeals, the parties
admitted that only five (5) seconds of the
news footage was broadcasted by GMA-7.
114
c. The amount and substantiality of the
portion used in
 relation to the
copyrighted work as
a whole; and
d. The effect of the use upon the
potential market for
or value of the
copyrighted work.
First, the purpose and character of
the use of the copyrighted material must fall
under those listed in Section 185, thus:
"criticism, comment, news reporting, teaching
including multiple copies for classroom use,
scholarship, research, and similar purposes."
117 The purpose and character requirement
is important in view of copyright's goal to
promote creativity and encourage creation of
works. Hence, commercial use of the
copyrighted work can be weighed against fair
use.
The "transformative test" is
generally used in reviewing the purpose and
character of the usage of the copyrighted
work. 118 This court must look into whether
the copy of the work adds "new expression,
meaning or message" to transform it into
something else. 119 "Meta-use" can also
occur without necessarily transforming the
copyrighted work used. 120
Second, the nature of the
copyrighted work is significant in deciding
whether its use was fair. If the nature of the
work is more factual than creative, then fair
use will be weighed in favor of the user.
Third, the amount and substantiality
of the portion used is important to determine
whether usage falls under fair use. An exact
reproduction of a copyrighted work,
compared to a small portion of it, can result in
the conclusion that its use is not fair. There
may also be cases where, though the entirety
of the copyrighted work is used without
consent, its purpose determines that the
usage is still fair. 121 For example, a parody
using a substantial amount of copyrighted
work may be permissible as fair use as
opposed to a copy of a work produced purely
for economic gain.
Lastly, the effect of the use on the
copyrighted work's market is also weighed for
or against the user. If this court finds that the
use had or will have a negative impact on the
copyrighted work's market, then the use is
deemed unfair.
 The structure and nature of
broadcasting as a business requires
assigned values for each second of
broadcast or airtime. In most cases,
broadcasting organizations generate
revenue through sale of time or timeslots to
advertisers, which, in turn, is based on
market share: 122
Once a news
broadcast has been
transmitted, the broadcast
becomes relatively
worthless to the station. In
the case of the aerial
broadcasters, advertising
sales generate most of the
profits derived from news
reports. Advertising rates
are, in turn, governed by
market share. Market share
is determined by the
number of people watching
a show at any particular
time, relative to total
viewers at that time. News
is by nature time-limited,
and so re-broadcasts are
generally of little worth
because they draw few
viewers. Newscasts
compete for market share
by presenting their news in
an appealing format that
will capture a loyal
audience. Hence, the
primary reason for
copyrighting newscasts by
broadcasters would seem
to be to prevent competing
stations from
rebroadcasting current
news from the station with
the best coverage of a
particular news item, thus
misappropriating a portion
of the market share.
Of course, in the
real world there are
exceptions to this perfect
economic view. However,
there are also many
caveats with these
exceptions. A common
exception is that some
stations rebroadcast the
news of others. The caveat
is that generally, the two
stations are not competing
for market share. CNN, for
example, often makes
news stories available to
local broadcasters. First,
the local broadcaster is
often not affiliated with a
network (hence its need for
more comprehensive
programming), confining
any possible competition to
a small geographical area.
Second, the local
broadcaster is not in
competition with CNN.
Individuals who do not have
cable TV (or a satellite dish
with decoder) cannot
receive CNN; therefore
there is no competition. . . .
Third, CNN sells the right of
rebroadcast to the local
stations. Ted Turner, owner
of CNN, does not have First
Amendment freedom of
access argument foremost
on his mind. (Else he would
give everyone free cable
TV so everyone could get
CNN.) He is in the business
for a profit. Giving away
resources does not a profit
make. 123 (Emphasis
supplied)
The high value afforded to limited
time periods is also seen in other media. In
social media site Instagram, users are
allowed to post up to only 15 seconds of
video. 124 In short-video sharing website
Vine, 125 users are allowed a shorter period
of six (6) seconds per post. The mobile
application 1 Second Everyday takes it
further by capturing and stitching one (1)
second of video footage taken daily over a
span of a certain period. 126
Whether the alleged five-second
footage may be considered fair use is a
matter of defense. We emphasize that the
case involves determination of probable
cause at the preliminary investigation stage.
Raising the defense of fair use does not
automatically mean that no infringement was
committed. The investigating prosecutor has
full discretion to evaluate the facts,
allegations, and evidence during preliminary
investigation. Defenses raised during
preliminary investigation are subject to
further proof and evaluation before the trial
court. Given the insufficiency of available
evidence, determination of whether the
Angelo dela Cruz footage is subject to fair
use is better left to the trial court where the
proceedings are currently pending.
 GMA-7's rebroadcast of ABS-CBN's granted by the statute, and
news footage without the latter's consent is not simply a pre-existing
not an issue. The mere act of rebroadcasting right regulated by the
without authority from the owner of the statute. Being a statutory
broadcast gives rise to the probability that a grant, the rights are only
crime was committed under the Intellectual such as the statute confers,
Property Code. cTDaEH and may be obtained and
enjoyed only with respect to
VII the subjects and by the
Respondents cannot invoke the persons, and on terms and
defense of good faith to argue that no conditions specified in the
probable cause exists. statute. 128
Respondents argue that copyright
infringement is malum in se, in that "[c]opying
alone is not what is being prohibited, but its
injurious effect which consists in the lifting
The general rule is that acts
from the copyright owners' film or materials,
punished under a special law are malum
that were the result of the latter's creativity,
prohibitum. 129 "An act which is declared
work and productions and without authority,
malum prohibitum, malice or criminal intent is
reproduced, sold and circulated for
completely immaterial." 130
commercial use to the detriment of the latter."
127 In contrast, crimes mala in se
concern inherently immoral acts:
Infringement under the Intellectual
Property Code is malum prohibitum. The Not every criminal
Intellectual Property Code is a special law. act, however, involves
Copyright is a statutory creation: moral turpitude. It is for this
reason that "as to what
Copyright, in the
crime involves moral
strict sense of the term, is
turpitude, is for the
purely a statutory right. It is
Supreme Court to
a new or independent right
 determine". In resolving the exist by merely classifying a
foregoing question, the crime as malum in se or as
Court is guided by one of malum prohibitum. There
the general rules that are crimes which are mala
crimes mala in se involve in se and yet but rarely
moral turpitude, while involve moral turpitude and
crimes mala prohibita do there are crimes which
not, the rationale of which involve moral turpitude and
was set forth in "Zari v. are mala prohibita only. In
Flores," to wit: the final analysis, whether
or not a crime involves
moral turpitude is ultimately
a question of fact and
frequently depends on all
It (moral turpitude) implies something immoral in itself, the circumstances
regardless of the fact that it is punishable by law or not. surrounding the violation of
It must not be merely mala prohibita, but the act itself the statue. 131 (Emphasis
must be inherently immoral. The doing of the act itself, in the original)
and not its prohibition by statute fixes the moral
turpitude. Moral turpitude does not, however, include
such acts as are not of themselves immoral but whose
illegality lies in their being positively prohibited.
(Emphasis supplied) "Implicit in the concept of mala in se
[These] guidelines is that of mens rea." 132 Mens rea is defined
nonetheless proved short of as "the nonphysical element which,
providing a clear-cut combined with the act of the accused, makes
solution, for in International up the crime charged. Most frequently it is the
Rice Research Institute v. criminal intent, or the guilty mind[.]" 133
NLRC, the Court admitted
that it cannot always be Crimes mala in se presuppose that
ascertained whether moral the person who did the felonious act had
turpitude does or does not criminal intent to do so, while crimes mala
prohibita do not require knowledge or criminal
intent:
In the case of mala
in se it is necessary, to
constitute a punishable
offense, for the person
doing the act to have
knowledge of the nature of
his act and to have a
criminal intent; in the case
of mala prohibita, unless
such words as "knowingly"
and "willfully" are contained
in the statute, neither
knowledge nor criminal
intent is necessary. In other
words, a person morally
quite innocent and with
every intention of being a
law-abiding citizen
becomes a criminal, and
liable to criminal penalties,
if he does an act prohibited
by these statutes. 134
(Emphasis supplied)
Hence, "[i]ntent to commit the crime
and intent to perpetrate the act must be
distinguished. A person may not have
consciously intended to commit a crime; but
he did intend to commit an act, and that act
is, by the very nature of things, the crime
itself[.]" 135 When an act is prohibited by a
special law, it is considered injurious to public
welfare, and the performance of the
prohibited act is the crime itself. 136
Volition, or intent to commit the act,
is different from criminal intent. Volition or
voluntariness refers to knowledge of the act
being done. On the other hand, criminal intent
— which is different from motive, or the
moving power for the commission of the
crime 137 — refers to the state of mind
beyond voluntariness. It is this intent that is
being punished by crimes mala in se.
Unlike other jurisdictions that require
intent for a criminal prosecution of copyright
infringement, the Philippines does not
statutorily support good faith as a defense.
Other jurisdictions provide in their intellectual
property codes or relevant laws that mens
rea, whether express or implied, is an
element of criminal copyright infringement.
138
In Canada, criminal offenses are
categorized under three (3) kinds: "the full
mens rea offence, meaning the accused's
actual or subjective state of mind has to be
proved; strict liability offences where no mens
rea has to be proved but the accused can
avoid liability if he can prove he took all
reasonable steps to avoid the particular
event; [and] absolute liability offences where
Parliament has made it clear that guilt follows
proof of the prescribed act only." 139
Because of the use of the word "knowingly"
in Canada's Copyright Act, it has been held
that copyright infringement is a full mens rea
offense. 140
In the United States, willful intent is
required for criminal copyright infringement.
141 Before the passage of the No Electronic
Theft Act, "civil copyright infringements were
violations of criminal copyright laws only if a
defendant willfully infringed a copyright 'for
purposes of commercial advantage or private
financial gain.'" 142 However, the No
Electronic Theft Act now allows criminal
copyright infringement without the
requirement of commercial gain. The
infringing act may or may not be for profit. 143
There is a difference, however,
between the required liability in civil copyright
infringement and that in criminal copyright
infringement in the United States. Civil
copyright infringement does not require
culpability and employs a strict liability regime
144 where "lack of intention to infringe is not
a defense to an action for infringement." 145
In the Philippines, the Intellectual
Property Code, as amended, provides for the
prosecution of criminal actions for the
following violations of intellectual property
rights: Repetition of Infringement of Patent
(Section 84); Utility Model (Section 108);
Industrial Design (Section 119); Trademark
Infringement (Section 155 in relation to
Section 170); Unfair Competition (Section
168 in relation to Section 170); False
Designations of Origin, False Description or
Representation (Section 169.1 in relation to
Section 170); infringement of copyright,
moral rights, performers' rights, producers'
rights, and broadcasting rights (Section 177,
193, 203, 208 and 211 in relation to Section
217); and other violations of intellectual
property rights as may be defined by law.
The Intellectual Property Code
requires strict liability for copyright
infringement whether for a civil action or a
criminal prosecution; it does not require mens
rea or culpa: 146
SECTION 216. Remedies for Infringement. —
216.1. Any person infringing a right
protected under this law
shall be liable:
a. To an injunction restraining such actual
infringemen damages,
t. The court including
may also legal costs
order the and other
defendant expenses,
to desist as he may
from an have
infringemen incurred
t, among due to the
others, to infringemen
prevent the t as well as
entry into the profits
the the infringer
channels of may have
commerce made due to
of imported such
goods that infringemen
involve an t, and in
infringemen proving
t, profits the
immediately plaintiff
after shall be
customs required to
clearance of prove sales
such goods. only and the
defendant
shall be
required to
b. Pay to the copyright proprietor or his prove every
assigns or element of
heirs such cost which
 he claims, evidencing
or, in lieu of sales, all
actual articles and
damages their
and profits, packaging
such alleged to
damages infringe a
which to the copyright
court shall and
appear to implements
be just and for making
shall not be them.
regarded as
penalty.
cSaATC
d. Deliver under oath for destruction
without any
compensati
c. Deliver under oath, for impounding on all
during the infringing
pendency of copies or
the action, devices, as
upon such well as all
terms and plates,
conditions molds, or
as the court other
may means for
prescribe, making
sales such
invoices infringing
and other copies as
documents
 the court 216.2. In an infringement action, the
may order. court shall also have the
power to order the seizure
and impounding of any
article which may serve as
e. Such other terms and conditions, evidence in the court
including proceedings. (Sec. 28, P.D.
the No. 49a)
payment of
moral and
exemplary
damages,
which the SECTION 217. Criminal Penalties. —
court may 217.1. Any person infringing any right
deem secured by provisions of
proper, wise Part IV of this Act or aiding
and or abetting such
equitable infringement shall be guilty
and the of a crime punishable by:
destruction
of infringing
copies of
the work
even in the a. Imprisonment of one (1) year to three
event of (3) years
acquittal in plus a fine
a criminal ranging
case. from Fifty
thousand
pesos
(P50,000)
to One
 hundred c. Imprisonment of six (6) years and one
fifty (1) day to
thousand nine (9)
pesos years plus a
(P150,000) fine ranging
for the first from Five
offense. hundred
thousand
pesos
(P500,000)
b. Imprisonment of three (3) years and to One
one (1) day million five
to six (6) hundred
years plus a thousand
fine ranging pesos
from One (P1,500,00
hundred 0) for the
fifty third and
thousand subsequent
pesos offenses.
(P150,000)
to Five
hundred
thousand d. In all cases, subsidiary imprisonment
pesos in cases of
(P500,000) insolvency.
for the
second
offense.
217.2. In determining the number of
years of imprisonment and
 the amount of fine, the court b. Distributing the article for purpose of
shall consider the value of trade, or for
the infringing materials that any other
the defendant has purpose to
produced or manufactured an extent
and the damage that the that will
copyright owner has prejudice
suffered by reason of the the rights of
infringement. the
copyright
owner in the
work; or

217.3. Any person who at the time

when copyright subsists in
a work has in his c. Trade exhibit of the article in public,
possession an article which shall be
he knows, or ought to know, guilty of an
to be an infringing copy of offense and
the work for the purpose of: shall be
liable on
conviction
to
imprisonme
a. Selling, letting for hire, or by way of nt and fine
trade as above
offering or mentioned.
exposing for (Sec. 29,
sale, or hire, P.D. No.
the article; 49a)
(Emphasis
supplied)
 The law is clear. Inasmuch as there case of Columbia Pictures
is wisdom in prioritizing the flow and vs. Court of Appeals and
exchange of ideas as opposed to rewarding Habana, et al. vs. Robles
the creator, it is the plain reading of the law in (310 SCRA 511). However,
conjunction with the actions of the legislature these cases refer to film
to which we defer. We have continuously and literary work where
"recognized the power of the legislature . . . obviously there is "copying"
to forbid certain acts in a limited class of from an existing material so
cases and to make their commission criminal that the copier knew that he
without regard to the intent of the doer. Such is copying from an existing
legislative enactments are based on the material not owned by him.
experience that repressive measures which But, how could respondents
depend for their efficiency upon proof of the know that what they are
dealer's knowledge or of his intent are of little "copying was not [theirs]"
use and rarely accomplish their purposes." when they were not
147 copying but merely
receiving live video feed
Respondents argue that live from Reuters and CNN
broadcast of news requires a different which they aired? What
treatment in terms of good faith, intent, and they knew and what they
knowledge to commit infringement. To argue aired was the Reuters live
this point, they rely on the differences of the video feed and the CNN
media used in Habana, et al. v. Robles, feed which GMA-7 is
Columbia Pictures v. Court of Appeals, and authorized to carry in its
this case: news broadcast, it being a
subscriber of these
Petitioner ABS- companies[.]
CBN argues that lack of
notice that the Angelo dela
Cruz was under embargo is
not a defense in copyright
infringement and cites the
 It is apt to stress
that the subject of the
alleged copyright
infringement is not a film or
literary work but live
broadcast of news
footage. In a film or literary
work, the infringer is
confronted face to face with
the material he is allegedly
copying and therefore
knows, or is presumed to
know, that what he is
copying is owned by
another. Upon the other
hand, in live broadcast,
the alleged infringer is not
confronted with the fact that
the material he airs or re-
broadcasts is owned by
another, and therefore, he
cannot be charged of
knowledge of ownership of
the material by another.
This specially obtains in the
Angelo dela Cruz news
footage which GMA-7
received from Reuters and
CNN. Reuters and CNN
were beaming live videos
from the coverage which
GMA-7 received as a
subscriber and, in the
exercise of its rights as a
subscriber, GMA-7 picked
up the live video and
simultaneously re-
broadcast it. In
simultaneously
broadcasting the live video
footage of Reuters, GMA-7
did not copy the video
footage of petitioner ABS-
CBN[.] 148 (Emphasis in
the original)
Respondents' arguments must fail.
Respondents are involved and
experienced in the broadcasting business.
They knew that there would be
consequences in carrying ABS-CBN's
footage in their broadcast. That is why GMA-
7 allegedly cut the feed from Reuters upon
seeing ABS-CBN's logo and reporter. To
admit a different treatment for broadcasts
would mean abandonment of a broadcasting
organization's minimum rights, including
copyright on the broadcast material and the
right against unauthorized rebroadcast of
copyrighted material. The nature of
broadcast technology is precisely why related appropriate understanding
or neighboring rights were created and thereof. Infringement of a
developed. Carving out an exception for live copyright is a trespass on a
broadcasts would go against our private domain owned and
commitments under relevant international occupied by the owner of
treaties and agreements, which provide for the copyright, and,
the same minimum rights. 149 therefore, protected by law,
and infringement of
Contrary to respondents' assertion, copyright, or piracy, which
this court in Habana, 150 reiterating the ruling is a synonymous term in
in Columbia Pictures, 151 ruled that lack of this connection, consists in
knowledge of infringement is not a valid the doing by any person,
defense. Habana and Columbia Pictures may without the consent of the
have different factual scenarios from this owner of the copyright, of
case, but their rulings on copyright anything the sole right to do
infringement are analogous. In Habana, which is conferred by
petitioners were the authors and copyright statute on the owner of the
owners of English textbooks and workbooks. copyright.
The case was anchored on the protection of
literary and artistic creations such as books.
In Columbia Pictures, video tapes of
copyrighted films were the subject of the
copyright infringement suit. xxx xxx xxx
In Habana, knowledge of the
infringement is presumed when the infringer
commits the prohibited act:

The essence of A copy of a piracy is an infringement of the original, and

intellectual piracy should be it is no defense that the pirate, in such cases, did not
essayed in conceptual know whether or not he was infringing any copyright; he
terms in order to at least knew that what he was copying was not his, and
underscore its gravity by an he copied at his peril.
xxx xxx xxx law. Notice of fact of the embargo from Reuters or CNN
is not material to find probable cause that respondents
committed infringement. Knowledge of infringement is
only material when the person is charged of aiding and
abetting a copyright infringement under Section 217 of
In cases of the Intellectual Property Code. 153
infringement, copying alone We look at the purpose of copyright
is not what is prohibited. in relation to criminal prosecutions requiring
The copying must produce willfulness:
an "injurious effect". Here,
the injury consists in that Most importantly,
respondent Robles lifted in defining the contours of
from petitioners' book what it means to willfully
materials that were the infringe copyright for
result of the latter's purposes of criminal
research work and liability, the courts should
compilation and remember the ultimate aim
misrepresented them as of copyright. Copyright is
her own. She circulated the not primarily about
book DEP for commercial providing the strongest
use and did not possible protection for
acknowledge petitioners as copyright owners so that
her source. 152 (Emphasis they have the highest
supplied) possible incentive to create
more works. The control
given to copyright owners is
only a means to an end: the
promotion of knowledge
and learning. Achieving that
Habana and Columbia Pictures did not require
underlying goal of copyright
knowledge of the infringement to constitute a violation of
law also requires access to
the copyright. One does not need to know that he or she
copyrighted works and it
is copying a work without consent to violate copyright
 requires permitting certain
kinds of uses of copyrighted
works without the
permission of the copyright
owner. While a particular
defendant may appear to
be deserving of criminal
sanctions, the standard for
determining willfulness
should be set with
reference to the larger
goals of copyright
embodied in the
Constitution and the history
of copyright in this country.
154
In addition, "[t]he essence of
intellectual piracy should be essayed in
conceptual terms in order to underscore its
gravity by an appropriate understanding
thereof. Infringement of a copyright is a
trespass on a private domain owned and
occupied by the owner of the copyright, and,
therefore, protected by law, and infringement
of copyright, or piracy, which is a
synonymous term in this connection, consists
in the doing by any person, without the
consent of the owner of the copyright, of
anything the sole right to do which is
conferred by statute on the owner of the
copyright." 155
Intellectual property rights, such as
copyright and the neighboring right against
rebroadcasting, establish an artificial and
limited monopoly to reward creativity. Without
these legally enforceable rights, creators will
have extreme difficulty recovering their costs
and capturing the surplus or profit of their
works as reflected in their markets. This, in
turn, is based on the theory that the possibility
of gain due to creative work creates an
incentive which may improve efficiency or
simply enhance consumer welfare or utility.
More creativity redounds to the public good.
These, however, depend on the
certainty of enforcement. Creativity, by its
very nature, is vulnerable to the free rider
problem. It is easily replicated despite the
costs to and efforts of the original creator.
The more useful the creation is in the market,
the greater the propensity that it will be
copied. The most creative and inventive
individuals are usually those who are unable
to recover on their creations.
Arguments against strict liability
presuppose that the Philippines has a social,
historical, and economic climate similar to
those of Western jurisdictions. As it stands,
 there is a current need to strengthen
intellectual property protection.
Thus, unless clearly provided in the
law, offenses involving infringement of
copyright protections should be considered
malum prohibitum. It is the act of
infringement, not the intent, which causes the
damage. To require or assume the need to
prove intent defeats the purpose of
intellectual property protection.
Nevertheless, proof beyond
reasonable doubt is still the standard for
criminal prosecutions under the Intellectual
Property Code.
Section 217 of the Intellectual
Property Code states that "any person" may
be found guilty of infringement. It also
imposes the penalty of both imprisonment
and fine:
Section 217. Criminal Penalties. —
217.1. Any person
infringing any right secured
by provisions of Part IV of
this Act or aiding or abetting
such infringement shall be
guilty of a crime punishable
by:

VIII
Respondents argue that GMA-7's
(a) Imprisonment of one (1) year to three
officers and employees cannot be held liable
(3) years
for infringement under the Intellectual
plus a fine
Property Code since it does not expressly
ranging
provide direct liability of the corporate
from Fifty
officers. They explain that "(i) a corporation
thousand
may be charged and prosecuted for a crime
pesos
where the penalty is fine or both
(P50,000)
imprisonment and fine, and if found guilty,
to One
may be fined; or (ii) a corporation may
hundred
commit a crime but if the statute prescribes
fifty
the penalty therefore to be suffered by the
thousand
corporate officers, directors or employees or
pesos
other persons, the latter shall be responsible
(P150,000)
for the offense." 156 EATCcI
 for the first fine ranging
offense. from five
hundred
thousand
pesos
(b) Imprisonment of three (3) years and (P500,000)
one (1) day to One
to six (6) million five
years plus a hundred
fine ranging thousand
from One pesos
hundred (P1,500,00
fifty 0) for the
thousand third and
pesos subsequent
(P150,000) offenses.
to Five
hundred
thousand
pesos (d) In all cases, subsidiary imprisonment
(P500,000) in cases of
for the insolvency.
second (Emphasis
offense. supplied)

(c) Imprisonment of six (6) years and one Corporations have separate and
(1) day to distinct personalities from their officers or
nine (9) directors. 157 This court has ruled that
years plus a corporate officers and/or agents may be held
 individually liable for a crime committed under
the Intellectual Property Code: 158
Petitioners, being corporate officers
and/or directors, through
whose act, default or
omission the corporation
commits a crime, may
themselves be individually
held answerable for the
crime. . . . The existence of
the corporate entity does
not shield from prosecution
the corporate agent who
knowingly and intentionally
caused the corporation to
commit a crime. Thus,
petitioners cannot hide
behind the cloak of the
separate corporate
personality of the
corporation to escape
criminal liability. A Moreover, all parties active
corporate officer cannot
protect himself behind a
corporation where he is the
actual, present and efficient
actor. 159
However, the criminal liability of a
corporation's officers or employees stems
from their active participation in the
commission of the wrongful act:
The principle
applies whether or not the
crime requires the
consciousness of
wrongdoing. It applies to
those corporate agents who
themselves commit the
crime and to those, who, by
virtue of their managerial
positions or other similar
relation to the corporation,
could be deemed
responsible for its
commission, if by virtue of
their relationship to the
corporation, they had the
power to prevent the act.
in promoting a crime,
whether agents or not, are
principals. Whether such
officers or employees are
benefited by their delictual
acts is not a touchstone of
their criminal liability.
Benefit is not an operative
 fact. 160 (Emphasis Prosecutor's finding that only respondents
supplied) Dela Peña-Reyes and Manalastas are
responsible for the crime charged due to their
duties. 161 The Agra Resolution reads:

Thus, from the

An accused's participation in very nature of the offense
criminal acts involving violations of and the penalty involved, it
intellectual property rights is the subject of is necessary that GMA-7's
allegation and proof. The showing that the directors, officers,
accused did the acts or contributed in a employees or other officers
meaningful way in the commission of the thereof responsible for the
infringements is certainly different from the offense shall be charged
argument of lack of intent or good faith. Active and penalized for violation
participation requires a showing of overt of the Sections 177 and 211
physical acts or intention to commit such of Republic Act No. 8293. In
acts. Intent or good faith, on the other hand, their complaint for libel,
are inferences from acts proven to have been respondents Felipe L.
or not been committed. Gozon, Gilberto R. Duavit,
Jr., Marissa L. Flores,
We find that the Department of Jessica A. Soho, Grace
Justice committed grave abuse of discretion Dela Peña-Reyes, John
when it resolved to file the Information Oliver T. Manalastas felt
against respondents despite lack of proof of they were aggrieved
their actual participation in the alleged crime. because they were "in
charge of the management,
Ordering the inclusion of operations and production
respondents Gozon, GMA-7 President; of news and public affairs
Duavit, Jr., Executive Vice-President; Flores, programs of the network"
Vice-President for News and Public Affairs; (GMA-7). This is clearly an
and Soho, Director for News, as respondents, admission on respondents'
Secretary Agra overturned the City part. Of course,
 respondents may argue Soho should be held liable
they have no intention to for the said offense.
infringe the copyright of Complainant failed to
ABS-CBN; that they acted present clear and
in good faith; and that they convincing evidence that
did not directly cause the the said respondents
airing of the subject conspired with Reyes and
footage, but again this is Manalastas. No evidence
preliminary investigation was adduced to prove that
and what is required is these respondents had an
simply probable cause. active participation in the
Besides, these contentions actual commission of the
can best be addressed in copyright infringement or
the course of trial. 162 they exercised their moral
(Citation omitted) ascendancy over Reyes
and Manalastas in airing
the said footage. It must be
stressed that, conspiracy
must be established by
In contrast, the Office of the City positive and conclusive
Prosecutor, in the Resolution dated evidence. It must be shown
December 3, 2004, found that respondents to exist as clearly and
Gozon, Duavit, Jr., Flores, and Soho did not convincingly as the
have active participation in the commission of commission of the offense
the crime charged: itself. 163 (Emphasis
supplied, citations omitted)
This Office,
however, does not
subscribe to the view that
respondents Atty. Felipe
Gozon, Gilberto Duavit, The City Prosecutor found
Marissa Flores and Jessica respondents Dela Peña-Reyes and
Manalastas liable due to the nature of their room was under their direct
work and responsibilities. He found that: control and supervision.
Clearly, they must have
[t]his Office been aware that the said
however finds respondents footage coming from
Grace Dela Peña-Reyes Reuters or CNN has a "No
and John Oliver T. Access Philippines"
Manalastas liable for advisory or embargo thus
copyright infringement cannot be re-broadcast. We
penalized under Republic find no merit to the defense
Act No. 8293. It is of ignorance interposed by
undisputed that the respondents. It is simply
complainant ABS-CBN contrary to human
holds the exclusive experience and logic that
ownership and copyright experienced employees of
over the "Angelo [d]ela an established
Cruz news footage". broadcasting network
Hence, any airing and re- would be remiss in their
broadcast of the said duty in ascertaining if the
footage without any said footage has an
consent and authority from embargo. 164 (Emphasis
ABS-CBN will be held as an supplied)
infringement and violation
of the intellectual property
rights of the latter.
Respondents Grace Dela
Peña-Reyes as the Head of We agree with the findings as to
the News Operation and respondents Dela Peña-Reyes and
John Oliver T. Manalastas Manalastas. Both respondents committed
as the Program Manager acts that promoted infringement of ABS-
cannot escape liability CBN's footage. We note that embargoes are
since the news control common occurrences in and between news
 agencies and/or broadcast organizations.
165 Under its Operations Guide, Reuters has
two (2) types of embargoes: transmission
embargo and publication embargo. 166
Under ABS-CBN's service contract with
Reuters, Reuters will embargo any content
contributed by ABS-CBN from other
broadcast subscribers within the same
geographical location:
4a. Contributed Content
You agree to supply us at our request
with news and sports news
stories broadcast on the
Client Service of up to three
(3) minutes each for use in
our Services on a non-
exclusive basis and at a
cost of US$300.00 (Three
Hundred United States
Dollars) per story. In
respect of such items we
agree to embargo them
against use by other
broadcast subscribers in
the Territory and confirm
we will observe all other
conditions of usage
regarding Contributed
Content, as specified in
Section 2.5 of the Reuters
Business Principles for
Television Services. For the
purposes of clarification,
any geographical restriction
imposed by you on your
use of Contributed Content
will not prevent us or our
clients from including such
Contributed Content in
online transmission
services including the
Internet. We acknowledge
Contributed Content is your
copyright and we will not
acquire any intellectual
property rights in the
Contributed Content. 167
(Emphasis supplied)
DHITCc
Respondents Dela Peña-Reyes and
Manalastas merely denied receiving the
advisory sent by Reuters to its clients,
including GMA-7. As in the records, the
advisory reads:
ADVISORY - - +++ LIVE COVER TV AND WEB RESTRICTIONS: NO
PLANS +++ ACCESS PHILIPPINES.
PHILIPPINES: HOSTAGE 168
RETURN

There is probable cause that

** ATTENTION ALL CLIENTS ** respondents Dela Peña-Reyes and
Manalastas directly committed copyright
infringement of ABS-CBN's news footage to
warrant piercing of the corporate veil. They
are responsible in airing the embargoed
PLEASE BE ADVISED OF THE Angelo dela Cruz footage. They could have
FOLLOWING LIVE COVER prevented the act of infringement had they
PLANNED FOR been diligent in their functions as Head of
THURSDAY, JULY 22: News Operations and Program Manager.

Secretary Agra, however, committed

grave abuse of discretion when he ordered
the filing of the Information against all
respondents despite the erroneous piercing
xxx xxx xxx
of the corporate veil. Respondents Gozon,
Duavit, Jr., Flores, and Soho cannot be held
liable for the criminal liability of the
corporation.
SOURCE: ABS-CBN Mere membership in the Board or
being President per se does not mean
knowledge, approval, and participation in the
act alleged as criminal. There must be a
 showing of active participation, not simply a design. For conspiracy to
constructive one. exist, it is essential that
there must be a conscious
Under principles of criminal law, the design to commit an
principals of a crime are those "who take a offense. Conspiracy is the
direct part in the execution of the act; [t]hose product of intentionality on
who directly force or induce others to commit the part of the cohorts.
it; [or] [t]hose who cooperate in the
commission of the offense by another act
without which it would not have been
accomplished." 169 There is conspiracy
"when two or more persons come to an It is necessary that a conspirator should have performed
agreement concerning the commission of a some overt act as a direct or indirect contribution to the
felony and decide to commit it": 170 execution of the crime committed. The overt act may
consist of active participation in the actual commission
Conspiracy is not presumed. Like the
of the crime itself, or it may consist of moral assistance
physical acts constituting
to his co-conspirators by being present at the
the crime itself, the
commission of the crime or by exerting moral
elements of conspiracy
ascendancy over the other co-conspirators[.] 171
must be proven beyond
(Emphasis supplied, citations omitted)
reasonable doubt. While
In sum, the trial court erred in failing
conspiracy need not be
to resume the proceedings after the
established by direct
designated period. The Court of Appeals
evidence, for it may be
erred when it held that Secretary Agra
inferred from the conduct of
committed errors of jurisdiction despite its
the accused before, during
own pronouncement that ABS-CBN is the
and after the commission of
owner of the copyright on the news footage.
the crime, all taken
News should be differentiated from
together, however, the
expression of the news, particularly when the
evidence must be strong
issue involves rebroadcast of news footage.
enough to show the
The Court of Appeals also erroneously held
community of criminal
that good faith, as well as lack of knowledge
 of infringement, is a defense against criminal
prosecution for copyright and neighboring
rights infringement. In its current form, the
Intellectual Property Code is malum
prohibitum and prescribes a strict liability for
copyright infringement. Good faith, lack of
knowledge of the copyright, or lack of intent
to infringe is not a defense against copyright
infringement. Copyright, however, is subject
to the rules of fair use and will be judged on
a case-to-case basis. Finding probable cause
includes a determination of the defendant's
active participation, particularly when the
corporate veil is pierced in cases involving a
corporation's criminal liability.

WHEREFORE, the Petition is partially GRANTED. The

Department of Justice Resolution dated June 29, 2010
ordering the filing of the Information is hereby
REINSTATED as to respondents Grace Dela 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.
SO ORDERED.
Carpio, Brion, Del Castillo and Mendoza, JJ., concur.

||| (ABS-CBN Corp. v. Gozon, G.R. No. 195956 , [March

11, 2015])