Professional Documents
Culture Documents
According to petitioner, respondent’s products, namely Excellent Rust Corrosion, Connector Grease,
Electric Strength Protective Coating, and Anti-Seize Compound, are identical with its Anti-Friction Fluid,
Contact Grease, Thixohtropic Grease, and Dry Lubricant, respectively. Petitioner asseverated that had
respondent been forthright about the identical character of the products, it would not have purchased the
items complained of. Moreover, petitioner alleged that when the purported fraud was discovered, a
conference was held between petitioner and respondent on 13 January 2000, whereby the parties agreed
that respondent would return to petitioner the amount it previously paid. However, petitioner was surprised
when it received a letter from the respondent, demanding payment of the amount of ₱449,864.94, which
later became the subject of respondent’s Complaint for Collection of a Sum of Money against petitioner.
During the pendency of the trial, petitioner filed a Motion to Compel 10 respondent to give a detailed list of
the ingredients and chemical components of the following products, to wit: (a) Contact Grease and
Connector Grease; (b) Thixohtropic Grease and Di-Electric Strength Protective Coating; and (c) Dry
Lubricant and Anti-Seize Compound.11 It appears that petitioner had earlier requested the Philippine
Institute of Pure and Applied Chemistry (PIPAC) for the latter to conduct a comparison of respondent’s
goods.
On 15 March 2004, the RTC rendered an Order granting the petitioner’s motion. It disposed, thus:
The Court directs [herein respondent] Pennswell, Inc. to give [herein petitioner] Air Philippines
Corporation[,] a detailed list of the ingredients or chemical components of the following chemical products:
a. Contact Grease to be compared with Connector Grease;
b. Thixohtropic Grease to be compared with Di-Electric Strength Protective Coating; and
c. Dry Lubricant to be compared with Anti-Seize Compound[.]
[Respondent] Pennswell, Inc. is given fifteen (15) days from receipt of this Order to submit to [petitioner] Air
Philippines Corporation the chemical components of all the above-mentioned products for chemical
comparison/analysis.12
Respondent sought reconsideration of the foregoing Order, contending that it cannot be compelled to
disclose the chemical components sought because the matter is confidential. It argued that what petitioner
endeavored to inquire upon constituted a trade secret which respondent cannot be forced to divulge.
Respondent maintained that its products are specialized lubricants, and if their components were revealed,
its business competitors may easily imitate and market the same types of products, in violation of its
proprietary rights and to its serious damage and prejudice.
The RTC gave credence to respondent’s reasoning, and reversed itself. It issued an Order dated 30 June
2004, finding that the chemical components are respondent’s trade secrets and are privileged in character.
A priori, it rationalized:
The Supreme Court held in the case of Chavez vs. Presidential Commission on Good Government, 299
SCRA 744, p. 764, that "the drafters of the Constitution also unequivocally affirmed that aside from national
security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual
Property Code and other related laws) as well as banking transactions (pursuant to the Secrecy of Bank
Deposit Act) are also exempted from compulsory disclosure."
Trade secrets may not be the subject of compulsory disclosure. By reason of [their] confidential and
privileged character, ingredients or chemical components of the products ordered by this Court to be
disclosed constitute trade secrets lest [herein respondent] would eventually be exposed to unwarranted
business competition with others who may imitate and market the same kinds of products in violation of
[respondent’s] proprietary rights. Being privileged, the detailed list of ingredients or chemical components
may not be the subject of mode of discovery under Rule 27, Section 1 of the Rules of Court, which
expressly makes privileged information an exception from its coverage.13
Alleging grave abuse of discretion on the part of the RTC, petitioner filed a Petition for Certiorari under Rule
65 of the Rules of Court with the Court of Appeals, which denied the Petition and affirmed the Order dated
30 June 2004 of the RTC.
The Court of Appeals ruled that to compel respondent to reveal in detail the list of ingredients of its
lubricants is to disregard respondent’s rights over its trade secrets. It was categorical in declaring that the
chemical formulation of respondent’s products and their ingredients are embraced within the meaning of
"trade secrets." In disallowing the disclosure, the Court of Appeals expounded, thus:
The Supreme Court in Garcia v. Board of Investments (177 SCRA 374 [1989]) held that trade secrets and
confidential, commercial and financial information are exempt from public scrutiny. This is reiterated in
Chavez v. Presidential Commission on Good Government (299 SCRA 744 [1998]) where the Supreme
Court enumerated the kinds of information and transactions that are recognized as restrictions on or
privileges against compulsory disclosure. There, the Supreme Court explicitly stated that:
"The drafters of the Constitution also unequivocally affirmed that, aside from national security matters and
intelligence information, trade or industrial secrets (pursuant to the Intellectual Property Code and other
related laws) as well as banking transactions (pursuant to the Secrecy of Bank Deposits Act) re also
exempt from compulsory disclosure."
It is thus clear from the foregoing that a party cannot be compelled to produce, release or disclose
documents, papers, or any object which are considered trade secrets.
In the instant case, petitioner [Air Philippines Corporation] would have [respondent] Pennswell produce a
detailed list of ingredients or composition of the latter’s lubricant products so that a chemical comparison
and analysis thereof can be obtained. On this note, We believe and so hold that the ingredients or
composition of [respondent] Pennswell’s lubricants are trade secrets which it cannot be compelled to
disclose.
[Respondent] Pennswell has a proprietary or economic right over the ingredients or components of its
lubricant products. The formulation thereof is not known to the general public and is peculiar only to
[respondent] Pennswell. The legitimate and economic interests of business enterprises in protecting their
manufacturing and business secrets are well-recognized in our system.
[Respondent] Pennswell has a right to guard its trade secrets, manufacturing formulas, marketing
strategies and other confidential programs and information against the public. Otherwise, such information
can be illegally and unfairly utilized by business competitors who, through their access to [respondent]
Pennswell’s business secrets, may use the same for their own private gain and to the irreparable prejudice
of the latter.
xxxx
In the case before Us, the alleged trade secrets have a factual basis, i.e., it comprises of the ingredients
and formulation of [respondent] Pennswell’s lubricant products which are unknown to the public and
peculiar only to Pennswell.
All told, We find no grave abuse of discretion amounting to lack or excess of jurisdiction on the part of
public respondent Judge in finding that the detailed list of ingredients or composition of the subject lubricant
products which petitioner [Air Philippines Corporation] seeks to be disclosed are trade secrets of
[respondent] Pennswell; hence, privileged against compulsory disclosure.14
Petitioner’s Motion for Reconsideration was denied.
Unyielding, petitioner brought the instant Petition before us, on the sole issue of:
WHETHER THE COURT OF APPEALS RULED IN ACCORDANCE WITH PREVAILING LAWS AND
JURISPRUDENCE WHEN IT UPHELD THE RULING OF THE TRIAL COURT THAT THE CHEMICAL
COMPONENTS OR INGREDIENTS OF RESPONDENT’S PRODUCTS ARE TRADE SECRETS OR
INDUSTRIAL SECRETS THAT ARE NOT SUBJECT TO COMPULSORY DISCLOSURE.15
Petitioner seeks to convince this Court that it has a right to obtain the chemical composition and ingredients
of respondent’s products to conduct a comparative analysis of its products. Petitioner assails the
conclusion reached by the Court of Appeals that the matters are trade secrets which are protected by law
and beyond public scrutiny. Relying on Section 1, Rule 27 of the Rules of Court, petitioner argues that the
use of modes of discovery operates with desirable flexibility under the discretionary control of the trial court.
Furthermore, petitioner posits that its request is not done in bad faith or in any manner as to annoy,
embarrass, or oppress respondent.
A trade secret is defined as a plan or process, tool, mechanism or compound known only to its owner and
those of his employees to whom it is necessary to confide it.16 The definition also extends to a secret
formula or process not patented, but known only to certain individuals using it in compounding some article
of trade having a commercial value. 17 A trade secret may consist of any formula, pattern, device, or
compilation of information that: (1) is used in one's business; and (2) gives the employer an opportunity to
obtain an advantage over competitors who do not possess the information. 18 Generally, a trade secret is a
process or device intended for continuous use in the operation of the business, for example, a machine or
formula, but can be a price list or catalogue or specialized customer list. 19 It is indubitable that trade
secrets constitute proprietary rights. The inventor, discoverer, or possessor of a trade secret or similar
innovation has rights therein which may be treated as property, and ordinarily an injunction will be granted
to prevent the disclosure of the trade secret by one who obtained the information "in confidence" or through
a "confidential relationship."20 American jurisprudence has utilized the following factors21 to determine if an
information is a trade secret, to wit:
(1) the extent to which the information is known outside of the employer's business;
(2) the extent to which the information is known by employees and others involved in the business;
(3) the extent of measures taken by the employer to guard the secrecy of the information;
(4) the value of the information to the employer and to competitors;
(5) the amount of effort or money expended by the company in developing the information; and
(6) the extent to which the information could be easily or readily obtained through an independent
source.22
In Cocoland Development Corporation v. National Labor Relations Commission,23 the issue was the
legality of an employee’s termination on the ground of unauthorized disclosure of trade secrets. The Court
laid down the rule that any determination by management as to the confidential nature of technologies,
processes, formulae or other so-called trade secrets must have a substantial factual basis which can pass
judicial scrutiny. The Court rejected the employer’s naked contention that its own determination as to what
constitutes a trade secret should be binding and conclusive upon the NLRC. As a caveat, the Court said
that to rule otherwise would be to permit an employer to label almost anything a trade secret, and thereby
create a weapon with which he/it may arbitrarily dismiss an employee on the pretext that the latter
somehow disclosed a trade secret, even if in fact there be none at all to speak of.24 Hence, in Cocoland,
the parameters in the determination of trade secrets were set to be such substantial factual basis that can
withstand judicial scrutiny.
The chemical composition, formulation, and ingredients of respondent’s special lubricants are trade secrets
within the contemplation of the law. Respondent was established to engage in the business of general
manufacturing and selling of, and to deal in, distribute, sell or otherwise dispose of goods, wares,
merchandise, products, including but not limited to industrial chemicals, solvents, lubricants, acids, alkalies,
salts, paints, oils, varnishes, colors, pigments and similar preparations, among others. It is unmistakable to
our minds that the manufacture and production of respondent’s products proceed from a formulation of a
secret list of ingredients. In the creation of its lubricants, respondent expended efforts, skills, research, and
resources. What it had achieved by virtue of its investments may not be wrested from respondent on the
mere pretext that it is necessary for petitioner’s defense against a collection for a sum of money. By and
large, the value of the information to respondent is crystal clear. The ingredients constitute the very fabric of
respondent’s production and business. No doubt, the information is also valuable to respondent’s
competitors. To compel its disclosure is to cripple respondent’s business, and to place it at an undue
disadvantage. If the chemical composition of respondent’s lubricants are opened to public scrutiny, it will
stand to lose the backbone on which its business is founded. This would result in nothing less than the
probable demise of respondent’s business. Respondent’s proprietary interest over the ingredients which it
had developed and expended money and effort on is incontrovertible. Our conclusion is that the detailed
ingredients sought to be revealed have a commercial value to respondent. Not only do we acknowledge the
fact that the information grants it a competitive advantage; we also find that there is clearly a glaring intent
on the part of respondent to keep the information confidential and not available to the prying public.
We now take a look at Section 1, Rule 27 of the Rules of Court, which permits parties to inspect documents
or things upon a showing of good cause before the court in which an action is pending. Its entire provision
reads:
SECTION 1. Motion for production or inspection order. – Upon motion of any party showing good cause
therefore, the court in which an action is pending may (a) order any party to produce and permit the
inspection and copying or photographing, by or on behalf of the moving party, of any designated
documents, papers, books, accounts, letters, photographs, objects or tangible things, not privileged, which
constitute or contain evidence material to any matter involved in the action and which are in his possession,
custody or control; or (b) order any party to permit entry upon designated land or other property in his
possession or control for the purpose of inspecting, measuring, surveying, or photographing the property or
any designated relevant object or operation thereon. The order shall specify the time, place and manner of
making the inspection and taking copies and photographs, and may prescribe such terms and conditions
as are just.
A more than cursory glance at the above text would show that the production or inspection of documents or
things as a mode of discovery sanctioned by the Rules of Court may be availed of by any party upon a
showing of good cause therefor before the court in which an action is pending. The court may order any
party: a) to produce and permit the inspection and copying or photographing of any designated documents,
papers, books, accounts, letters, photographs, objects or tangible things, which are not privileged; 25 which
constitute or contain evidence material to any matter involved in the action; and which are in his
possession, custody or control; or b) to permit entry upon designated land or other property in his
possession or control for the purpose of inspecting, measuring, surveying, or photographing the property or
any designated relevant object or operation thereon.
Rule 27 sets an unequivocal proviso that the documents, papers, books, accounts, letters, photographs,
objects or tangible things that may be produced and inspected should not be privileged. 26 The documents
must not be privileged against disclosure.27 On the ground of public policy, the rules providing for
production and inspection of books and papers do not authorize the production or inspection of privileged
matter; that is, books and papers which, because of their confidential and privileged character, could not be
received in evidence.28 Such a condition is in addition to the requisite that the items be specifically
described, and must constitute or contain evidence material to any matter involved in the action and which
are in the party’s possession, custody or control.
Section 2429 of Rule 130 draws the types of disqualification by reason of privileged communication, to wit:
(a) communication between husband and wife; (b) communication between attorney and client; (c)
communication between physician and patient; (d) communication between priest and penitent; and (e)
public officers and public interest. There are, however, other privileged matters that are not mentioned by
Rule 130. Among them are the following: (a) editors may not be compelled to disclose the source of
published news; (b) voters may not be compelled to disclose for whom they voted; (c) trade secrets; (d)
information contained in tax census returns; and (d) bank deposits. 30
We, thus, rule against the petitioner. We affirm the ruling of the Court of Appeals which upheld the finding of
the RTC that there is substantial basis for respondent to seek protection of the law for its proprietary rights
over the detailed chemical composition of its products.
That trade secrets are of a privileged nature is beyond quibble. The protection that this jurisdiction affords
to trade secrets is evident in our laws. The Interim Rules of Procedure on Government Rehabilitation,
effective 15 December 2000, which applies to: (1) petitions for rehabilitation filed by corporations,
partnerships, and associations pursuant to Presidential Decree No. 902-A,31 as amended; and (2) cases
for rehabilitation transferred from the Securities and Exchange Commission to the RTCs pursuant to
Republic Act No. 8799, otherwise known as The Securities Regulation Code, expressly provides that the
court may issue an order to protect trade secrets or other confidential research, development, or
commercial information belonging to the debtor. 32 Moreover, the Securities Regulation Code is explicit that
the Securities and Exchange Commission is not required or authorized to require the revelation of trade
secrets or processes in any application, report or document filed with the Commission.33 This
confidentiality is made paramount as a limitation to the right of any member of the general public, upon
request, to have access to all information filed with the Commission.34
Furthermore, the Revised Penal Code endows a cloak of protection to trade secrets under the following
articles:
Art. 291. Revealing secrets with abuse of office. — The penalty of arresto mayor and a fine not exceeding
500 pesos shall be imposed upon any manager, employee or servant who, in such capacity, shall learn the
secrets of his principal or master and shall reveal such secrets.
Art. 292. Revelation of industrial secrets. — The penalty of prision correccional in its minimum and medium
periods and a fine not exceeding 500 pesos shall be imposed upon the person in charge, employee or
workman of any manufacturing or industrial establishment who, to the prejudice of the owner thereof, shall
reveal the secrets of the industry of
the latter.
Similarly, Republic Act No. 8424, otherwise known as the National Internal Revenue Code of 1997, has a
restrictive provision on trade secrets, penalizing the revelation thereof by internal revenue officers or
employees, to wit:
SECTION 278. Procuring Unlawful Divulgence of Trade Secrets. - Any person who causes or procures an
officer or employee of the Bureau of Internal Revenue to divulge any confidential information regarding the
business, income or inheritance of any taxpayer, knowledge of which was acquired by him in the discharge
of his official duties, and which it is unlawful for him to reveal, and any person who publishes or prints in
any manner whatever, not provided by law, any income, profit, loss or expenditure appearing in any income
tax return, shall be punished by a fine of not more than two thousand pesos (₱2,000), or suffer
imprisonment of not less than six (6) months nor more than five (5) years, or both.
Republic Act No. 6969, or the Toxic Substances and Hazardous and Nuclear Wastes Control Act of 1990,
enacted to implement the policy of the state to regulate, restrict or prohibit the importation, manufacture,
processing, sale, distribution, use and disposal of chemical substances and mixtures that present
unreasonable risk and/or injury to health or the environment, also contains a provision that limits the right
of the public to have access to records, reports or information concerning chemical substances
and mixtures including safety data submitted and data on emission or discharge into the
environment, if the matter is confidential such that it would divulge trade secrets, production or
sales figures; or methods, production or processes unique to such manufacturer, processor or
distributor; or would otherwise tend to affect adversely the competitive position of such
manufacturer, processor or distributor.35
Clearly, in accordance with our statutory laws, this Court has declared that intellectual and industrial
property rights cases are not simple property cases.36 Without limiting such industrial property rights to
trademarks and trade names, this Court has ruled that all agreements concerning intellectual property are
intimately connected with economic development.37 The protection of industrial property encourages
investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human
needs. It speeds up transfer of technology and industrialization, and thereby bring about social and
economic progress.38 Verily, the protection of industrial secrets is inextricably linked to the advancement of
our economy and fosters healthy competition in trade.
Jurisprudence has consistently acknowledged the private character of trade secrets. There is a privilege
1âwphi1
not to disclose one’s trade secrets.39 Foremost, this Court has declared that trade secrets and banking
transactions are among the recognized restrictions to the right of the people to information as embodied in
the Constitution.40 We said that the drafters of the Constitution also unequivocally affirmed that, aside from
national security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual
Property Code and other related laws) as well as banking transactions (pursuant to the Secrecy of Bank
Deposits Act), are also exempted from compulsory disclosure.41
Significantly, our cases on labor are replete with examples of a protectionist stance towards the trade
secrets of employers. For instance, this Court upheld the validity of the policy of a pharmaceutical company
prohibiting its employees from marrying employees of any competitor company, on the rationalization that
the company has a right to guard its trade secrets, manufacturing formulas, marketing strategies and other
confidential programs and information from competitors.42 Notably, it was in a labor-related case that this
Court made a stark ruling on the proper determination of trade secrets.
In the case at bar, petitioner cannot rely on Section 7743 of Republic Act 7394, or the Consumer Act of the
Philippines, in order to compel respondent to reveal the chemical components of its products. While it is
true that all consumer products domestically sold, whether manufactured locally or imported, shall indicate
their general make or active ingredients in their respective labels of packaging, the law does not apply to
respondent. Respondent’s specialized lubricants -- namely, Contact Grease, Connector Grease,
Thixohtropic Grease, Di-Electric Strength Protective Coating, Dry Lubricant and Anti-Seize Compound --
are not consumer products. "Consumer products," as it is defined in Article 4(q), 44 refers to goods, services
and credits, debts or obligations which are primarily for personal, family, household or agricultural
purposes, which shall include, but not be limited to, food, drugs, cosmetics, and devices. This is not the
nature of respondent’s products. Its products are not intended for personal, family, household or agricultural
purposes. Rather, they are for industrial use, specifically for the use of aircraft propellers and engines.
Petitioner’s argument that Republic Act No. 8203, or the Special Law on Counterfeit Drugs, requires the
disclosure of the active ingredients of a drug is also on faulty ground. 45 Respondent’s products are outside
the scope of the cited law. They do not come within the purview of a drug 46 which, as defined therein,
refers to any chemical compound or biological substance, other than food, that is intended for use in the
treatment, prevention or diagnosis of disease in man or animals. Again, such are not the characteristics of
respondent’s products.
What is clear from the factual findings of the RTC and the Court of Appeals is that the chemical formulation
of respondent’s products is not known to the general public and is unique only to it. Both courts uniformly
ruled that these ingredients are not within the knowledge of the public. Since such factual findings are
generally not reviewable by this Court, it is not duty-bound to analyze and weigh all over again the
evidence already considered in the proceedings below.47 We need not delve into the factual bases of such
findings as questions of fact are beyond the pale of Rule 45 of the Rules of Court. Factual findings of the
trial court when affirmed by the Court of Appeals, are binding and conclusive on the Supreme Court.48
We do not find merit or applicability in petitioner’s invocation of Section 12 49 of the Toxic Substances and
Hazardous and Nuclear Wastes Control Act of 1990, which grants the public access to records, reports or
information concerning chemical substances and mixtures, including safety data submitted, and data on
emission or discharge into the environment. To reiterate, Section 1250 of said Act deems as confidential
matters, which may not be made public, those that would divulge trade secrets, including production or
sales figures or methods; production or processes unique to such manufacturer, processor or distributor, or
would otherwise tend to affect adversely the competitive position of such manufacturer, processor or
distributor. It is true that under the same Act, the Department of Environment and Natural Resources may
release information; however, the clear import of the law is that said authority is limited by the right to
confidentiality of the manufacturer, processor or distributor, which information may be released only to a
medical research or scientific institution where the information is needed for the purpose of medical
diagnosis or treatment of a person exposed to the chemical substance or mixture. The right to
confidentiality is recognized by said Act as primordial. Petitioner has not made the slightest attempt to show
that these circumstances are availing in the case at bar.
Indeed, the privilege is not absolute; the trial court may compel disclosure where it is indispensable for
doing justice.51 We do not, however, find reason to except respondent’s trade secrets from the application
of the rule on privilege. The revelation of respondent’s trade secrets serves no better purpose to the
disposition of the main case pending with the RTC, which is on the collection of a sum of money. As can be
gleaned from the facts, petitioner received respondent’s goods in trade in the normal course of business.
To be sure, there are defenses under the laws of contracts and sales available to petitioner. On the other
hand, the greater interest of justice ought to favor respondent as the holder of trade secrets. If we were to
weigh the conflicting interests between the parties, we rule in favor of the greater interest of respondent.
Trade secrets should receive greater protection from discovery, because they derive economic value from
being generally unknown and not readily ascertainable by the public.52 To the mind of this Court, petitioner
was not able to show a compelling reason for us to lift the veil of confidentiality which shields respondent’s
trade secrets.
WHEREFORE, the Petition is DENIED. The Decision dated 16 February 2006, and the Resolution dated
25 May 2006, of the Court of Appeals in CA-G.R. SP No. 86329 are AFFIRMED. No costs.
SO ORDERED.
MINITA V. CHICO-NAZARIO
Associate Justice
Foot notes:
Sec. 24. Disqualification by reason of privileged communication. – The following persons cannot testify as
to matters learned in confidence in the following cases:
(a) The husband or the wife, during or after the marriage cannot be examined without the consent
of the other as to any communication received in confidence by one from the other during the
marriage except in a civil case by one against the other, or in a criminal case for a crime committed
by one against the other or the latter's direct descendants or ascendants;
(b) An attorney cannot, without the consent of his client, be examined as to any communication
made by the client to him, or his advice given thereon in the course of, or with a view to,
professional employment, nor can an attorney's secretary, stenographer, or clerk be examined,
without the consent of the client and his employer, concerning any fact the knowledge of which has
been acquired in such capacity;
(c) A person authorized to practice medicine, surgery or obstetrics cannot in a civil case, without the
consent of the patient, be examined as to any advice or treatment given by him or any information
which he may have acquired in attending such patient in a professional capacity, which information
was necessary to enable him to act in capacity, and which would blacken the reputation of the
patient;
(d) A minister or priest cannot, without the consent of the person making the confession, be
examined as to any confession made to or any advice given by him in his professional character in
the course of discipline enjoined by the church to which the minister or priest belongs;
(e) A public officer cannot be examined during his term of office or afterwards, as to
communications made to him in official confidence, when the court finds that the public interest
would suffer by the disclosure.
30 Francisco, Evidence (3rd ed., 1996), pp. 171-173.
33 Section 66.2 of the Securities Regulation Code of 2000 provides that, "66.2. Nothing in this Code shall
be construed to require, or to authorize the Commission to require, the revealing of trade secrets or
processes in any application, report, or document filed with the Commission.
34 SEC. 66. Revelation of Information Filed with the Commission. – 66.1. All information filed with the
Commission in compliance with the requirements of this Code shall be made available to any member of
the general public, upon request, in the premises and during regular office hours of the Commission,
except as set forth in this Section.
35 Section 12. - Public Access to Records, Reports or Notification. The public shall have access to records,
reports, or information concerning chemical substances and mixtures including safety data submitted, data
on emission or discharge into the environment, and such documents shall be available for inspection or
reproduction during normal business hours except that the Department of Environment and Natural
Resources may consider a record, report or information or particular portions thereof confidential and may
not be made public when such would divulge trade secrets, production or sales figures or methods,
production or processes unique to such manufacturer, processor or distributor, or would otherwise tend to
affect adversely the competitive position of such manufacturer, processor or distributor. The Department of
Environment and Natural Resources, however, may release information subject to claim of confidentiality to
a medical research or scientific institution where the information is needed for the purpose of medical
diagnosis or treatment of a person exposed to the chemical substance or mixture.
36 Mirpuri v. Court of Appeals, 376 Phil. 628 (1999).
37 Id.
38 Id. In Mirpuri (id. at 666), the Court acknowledges the Philippines’ respect for intellectual and industrial
property, and held:
The Intellectual Property Code of the Philippines declares that "an effective intellectual and
industrial property system is vital to the development of domestic and creative activity, facilitates
transfer of technology, it attracts foreign investments, and ensures market access for our products."
The Intellectual Property Code took effect on January 1, 1998 and by its express provision,
repealed the Trademark Law, the Patent Law, Articles 188 and 189 of the Revised Penal Code, the
Decree on Intellectual Property, and the Decree on Compulsory Reprinting of Foreign Textbooks.
The Code was enacted to strengthen the intellectual and industrial property system in the
Philippines as mandated by the country's accession to the Agreement Establishing the World Trade
Organization (WTO).
39 Id.
40 The pertinent Constitutional provisions on the right of the people to information are, to wit:
Sec. 7 [Article III]. The right of the people to information on matters of public concern shall be
recognized. Access to official records, and to documents, and papers pertaining to official acts,
transactions, or decisions, as well as to government research data used as basis for policy
development, shall be afforded the citizen, subject to such limitations as may be provided by law.
Sec. 28 [Article II]. Subject to reasonable conditions prescribed by law, the State adopts and
implements a policy of full public disclosure of all its transactions involving public interest.
41 Chavez v. Presidential Commission on Good Government and Magtanggol Gunigundo, 360 Phil. 133,
161 (1998).
42 Duncan Association of Detailman-PTGWO v. Glaxo Wellcome Philippines, Inc., G.R. No. 162994, 17
September 2004, 438 SCRA 343, 352; See also Star Paper Corporation v. Simbol, G.R. No. 164774, 12
April 2006, 487 SCRA 228, 242.
43 ARTICLE 77. Minimum Labeling Requirements for Consumer Products. All consumer products
domestically sold whether manufactured locally or imported shall indicate the following in their respective
labels of packaging:
a) its correct and registered trade name or brand name;
b) its duly registered trademark;
c) its duly registered business name;
d) the address of the manufacturer, importer, repacker of the consumer product in the Philippines;
e) its general make or active ingredients;
f) the net quantity of contents, in terms of weight, measure or numerical count rounded off to at
least the nearest tenths in the metric system;
g) country of manufacture, if imported; and
h) if a consumer product is manufactured, refilled or repacked under license from a principal, the
label shall so state the fact.
The following may be required by the concerned department in accordance with the rules and
regulations they will promulgate under authority of this Act:
a) whether it is flammable or inflammable;
b) directions for use, if necessary;
c) warning of toxicity;
d) wattage, voltage or amperage; or
e) process of manufacture used, if necessary.
Any word, statement or other information required by or under authority of the preceding paragraph
shall appear on the label or labeling with such conspicuousness as compared with other words,
statements, designs, or devices therein, and in such terms as to render it likely to be read and
understood by the ordinary individual under customary conditions of purchase or use.
The above requirements shall form an integral part of the label without danger of being erased or
detached under ordinary handling of the product.
44 ARTICLE 4. Definition of Terms. For purposes of this Act, the term:
xxxx
q) "Consumer products and services" means goods, services and credits, debts or obligations
which are primarily for personal, family, household or agricultural purposes, which shall include but
not limited to, food, drugs, cosmetics, and devices.
45 Petitioner cites the definition of a counterfeit drug/medicine in Republic Act 8203 or the Special Law on
Counterfeit Drugs to buttress its argument, specifically Section 3(b)(4) thereof, to wit:
a drug which contains no amount of, or a different active ingredient, or less than eighty percent
(80%) of the active ingredient it purports to possess, as distinguished from an adulterated drug
including reduction or loss or efficacy due to expiration.
46 SECTION 3. Definition of Terms – For purposes of this Act, the terms:
(a) Drugs shall refer to any chemical compound or biological substance, other than food, intended
for use in the treatment, prevention or diagnosis of disease in man or animals, including but not
limited to:
(1) any article recognized in the official United States Pharmacopoeia – National Formulary
(USP-NF), official Homeopathic Pharmacopoeia of the United States, Philippines National
Drug Formulary, British Pharmacopoeia, any National Compendium or any supplement to
any of them;
(2) any article intended for use in the diagnosis, cure mitigation, treatment, or prevention of
disease in man or animals;
(3) any article other than food intended to affect the structure or any function of the body of
man or animals;
(4) any article intended for use as a component of any articles specified in clauses (1), (2),
(3) not including devices or their components, parts, or accessories; and
(5) herbal and/or traditional drugs which are articles of plant or animal origin used in folk
medicine which are:
(a) recognized in the Philippine National Drug Formulary; (b) intended for use in the
treatment or cure or mitigation of disease symptoms, injury or body defect in man;
(c) other than food, intended to affect the structure or any function of the body of
man; (d) in finished or ready-to-use dosage form; and (e) intended for use as a
component of any of the articles specified in clauses (a), (b), (c) and (d).
47 Ceballos v. Intestate Estate of the Late Emigdio Mercado, G.R. No. 155856, 28 May 2004, 430 SCRA
323, 331.
48 Filinvest Land, Inc. v. Court of Appeals, G.R. No. 138980, 20 September 2005, 470 SCRA 260, 267-268.
49 Section 12. - Public Access to Records, Reports or Notification. The public shall have access to records,
reports or information concerning chemical substances and mixtures including safety data submitted, data
on emission or discharge into the environment, and such documents shall be available for inspection or
reproduction during normal business hours except that the Department of Environment and Natural
Resources may consider a record, report or information or particular portions thereof confidential and may
not be made public when such would divulge trade secrets, production or sales figures or methods,
production or processes unique to such manufacturer, processor or distributor, or would otherwise tend to
affect adversely the competitive position of such manufacturer, processor or distributor. The Department of
Environment and Natural Resources, however, may release information subject to claim of confidentiality to
a medical research or scientific institution where the information is needed for the purpose of medical
diagnosis or treatment of a person exposed to the chemical substance or mixture. (Republic Act No. 6969.)
50 Republic Act No. 6969.
WHETHER OR NOT RESPONDENT FPA HAS ACTED BEYOND THE SCOPE OF ITS
DELEGATED POWER WHEN IT GRANTED A SEVEN-YEAR PROPRIETARY PROTECTION
TO DATA SUBMITTED TO SUPPORT THE FIRST FULL OR CONDITIONAL REGISTRATION
OF A PESTICIDE INGREDIENT IN THE PHILIPPINES;
II
III
IV
WHETHER OR NOT THE REGIONAL TRIAL COURT OF QUEZON CITY, BRANCH 90,
COMMITTED A REVERSIBLE ERROR WHEN IT UPHELD THE VALIDITY OF SECTION 3.12
OF THE PESTICIDE REGULATORY POLICIES AND IMPLEMENTING GUIDELINES ISSUED
BY RESPONDENT FPA.
Respondents, on the other hand, maintain that the provision on the protection of proprietary data in the
FPA's Pesticide Regulatory Policies and Implementing Guidelines is valid and legal as it does not violate
the objectives of P.D. No. 1144; the proprietary data are a substantial asset which must be protected; the
protection for a limited number of years does not constitute unlawful restraint of free trade; and such
provision does not encroach upon the jurisdiction of the Intellectual Property Office.
Respondents expound that since under P.D. No. 1144, the FPA is mandated to regulate, control and
develop the pesticide industry, it was necessary to provide for such protection of proprietary data,
otherwise, pesticide handlers will proliferate to the the detriment of the industry and the public since the
inherent toxicity of pesticides are hazardous and are potential environmental contaminants.
They also pointed out that the protection under the assailed Pesticide Regulatory Policies and
Implementing Guidelines is warranted, considering that the development of proprietary data involves an
investment of many years and large sums of money, thus, the data generated by an applicant in support of
his application for registration are owned and proprietary to him. Moreover, since the protection accorded to
the proprietary data is limited in time, then such protection is reasonable and does not constitute unlawful
restraint of trade.
Lastly, respondents emphasize that the provision on protection of proprietary data does not usurp the
functions of the Intellectual Property Office (IPO) since a patent and data protection are two different
matters. A patent prohibits all unlicensed making, using and selling of a particular product, while data
protection accorded by the FPA merely prevents copying or unauthorized use of an applicant's data, but
any other party may independently generate and use his own data. It is further argued that under Republic
Act No. 8293 (R.A. No. 8293), the grant of power to the IPO to administer and implement State policies on
intellectual property is not exclusionary as the IPO is even allowed to coordinate with other government
agencies to formulate and implement plans and policies to strengthen the protection of intellectual property
rights.
The petition is devoid of merit.
The law being implemented by the assailed Pesticide Regulatory Policies and Implementing Guidelines is
P.D. No. 1144, entitled Creating the Fertilizer and Pesticide Authority and Abolishing the Fertilizer Industry
Authority. As stated in the Preamble of said decree, "there is an urgent need to create a technically-oriented
government authority equipped with the required expertise to regulate, control and develop both the
fertilizer and the pesticide industries." (Underscoring supplied) The decree further provided as follows:
Section 6. Powers and Functions. The FPA shall have jurisdiction, over all existing handlers of pesticides,
fertilizers and other agricultural chemical inputs. The FPA shall have the following powers and functions:
I. Common to Fertilizers, Pesticides and other Agricultural Chemicals
xxx
4. To promulgate rules and regulations for the registration and licensing of handlers of these products,
collect fees pertaining thereto, as well as the renewal, suspension, revocation, or cancellation of such
registration or licenses and such other rules and regulations as may be necessary to implement this
Decree;
xxx
Section 7. Power to Issue Rules and Regulations to Implement Decree. The FPA is hereby authorized to
issue or promulgate rules and regulations to implement, and carry out the purposes and provisions of this
Decree.
Did the FPA go beyond its delegated power and undermine the objectives of P.D. No. 1144 by issuing
regulations that provide for protection of proprietary data? The answer is in the negative.
Under P.D. No. 1144, the FPA is given the broad power to issue rules and regulations to implement and
carry out the purposes and provisions of said decree, i.e., to regulate, control and develop the pesticide
industry. In furtherance of such ends, the FPA sees the protection of proprietary data as one way of fulfilling
its mandate. InRepublic v. Sandiganbayan,4 the Court emphasized that:
x x x [t]he interpretation of an administrative government agency, which is tasked to implement a
statute is generally accorded great respect and ordinarily controls the construction of the
courts. The reason behind this rule was explained in Nestle Philippines, Inc. vs. Court of Appeals in this
wise:
The rationale for this rule relates not only to the emergence of the multifarious needs of a modern or
modernizing society and the establishment of diverse administrative agencies for addressing and satisfying
those needs; it also relates to the accumulation of experience and growth of specialized capabilities by the
administrative agency charged with implementing a particular statute. In Asturias Sugar Central, Inc. vs.
Commissioner of Customs, the Court stressed that executive officials are presumed to have
familiarized themselves with all the considerations pertinent to the meaning and purpose of the law,
and to have formed an independent, conscientious and competent expert opinion thereon. The
courts give much weight to the government agency officials charged with the implementation of the
law, their competence, expertness, experience and informed judgment, and the fact that they
frequently are the drafters of the law they interpret."
x x x.5 [Emphasis supplied]
Verily, in this case, the Court acknowledges the experience and expertise of FPA officials who are best
qualified to formulate ways and means of ensuring the quality and quantity of pesticides and handlers
thereof that should enter the Philippine market, such as giving limited protection to proprietary data
submitted by applicants for registration. The Court ascribes great value and will not disturb the FPA's
determination that one way of attaining the purposes of its charter is by granting such protection, specially
where there is nothing on record which shows that said administrative agency went beyond its delegated
powers.
Moreover, petitioner has not succeeded in convincing the Court that the provision in question has legal
infirmities.
1awphi1.net
There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise known as
theIntellectual Property Code of the Philippines. Section 5 thereof enumerates the functions of the IPO.
Nowhere in said provision does it state nor can it be inferred that the law intended the IPO to have the
exclusive authority to protect or promote intellectual property rights in the Philippines. On the contrary,
paragraph (g) of said Section even provides that the IPO shall "[c]oordinate with other government
agencies and the private sector efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country." Clearly, R.A. No. 8293 recognizes that efforts to fully
protect intellectual property rights cannot be undertaken by the IPO alone. Other agencies dealing with
intellectual property rights are, therefore, not precluded from issuing policies, guidelines and regulations to
give protection to such rights.
There is also no evidence whatsoever to support petitioner's allegation that the grant of protection to
proprietary data would result in restraining free trade. Petitioner did not adduce any reliable data to prove
its bare allegation that the protection of proprietary data would unduly restrict trade on pesticides.
Furthermore, as held inAssociation of Philippine Coconut Desiccators v. Philippine Coconut
Authority,6 despite the fact that "our present Constitution enshrines free enterprise as a policy, it
nonetheless reserves to the government the power to intervene whenever necessary to promote the
general welfare." There can be no question that the unregulated use or proliferation of pesticides would be
hazardous to our environment. Thus, in the aforecited case, the Court declared that "free enterprise does
not call for removal of ‘protective regulations’."7 More recently, in Coconut Oil Refiners Association, Inc. v.
Torres,8 the Court held that "[t]he mere fact that incentives and privileges are granted to certain enterprises
to the exclusion of others does not render the issuance unconstitutional for espousing unfair competition." It
must be clearly explained and proven by competent evidence just exactly how such protective regulation
would result in the restraint of trade.
In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and Implementing Guidelines
granting protection to proprietary data is well within the authority of the FPA to issue so as to carry out its
purpose of controlling, regulating and developing the pesticide industry.
WHEREFORE, the petition is DENIED. The Decision of the Regional Trial Court of Quezon City, Branch 90,
in SP. Civil Case No. Q-01-42790 is AFFIRMED.
SO ORDERED.
MA. ALICIA AUSTRIA-MARTINEZ
Associate Justice
WE CONCUR:
CONSUELO YNARES-SANTIAGO
Associate Justice
Chairperson
ROMEO J. CALLEJO, SR. MINITA V. CHICO-NAZARIO
Associate Justice Asscociate Justice
ANTONIO EDUARDO B. NACHURA
Associate Justice
ATTE S TATI O N
I attest that the conclusions in the above Decision had been reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.
CONSUELO YNARES-SANTIAGO
Associate Justice
Chairperson, Third Division
___________________________________________________________________________________
MENDOZA, J.:
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.
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 August 14, 1991.
Upon complaint of 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 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 private respondents never raised the same as a controverted issue.
2. The public respondent gravely abused his discretion amounting to lack of
jurisdiction when he arrogated unto himself the determination of what is
copyrightable — an issue which is exclusively within the jurisdiction of the
regional trial court to assess in a proper proceeding.
Both public and private respondents maintain 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 contend that
petitioner BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or
concepts of dating game shows are not covered by copyright protection under P.D. No. 49.
Non-Assignment of Error.
Petitioners claim that their failure to submit the 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 reverse the investigating prosecutor's finding of probable cause on
this ground.
A preliminary investigation falls 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 Justice. Thus, Rule 112, §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 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.
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 PD. 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 PD. No. 49.3 (Emphasis added.)
It is indeed true that the question whether the format or mechanics of petitioners television show is entitled
to copyright protection is a legal question for the court to make. This does not, however, preclude
respondent Secretary of Justice from making a preliminary determination of this question in resolving
whether there is probable cause for filing the case in court. In doing so in this case, he did not commit any
grave error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the
master videotape should have been predented in order to determine whether there was probable cause for
copyright infringement. They contend that 20th Century Fox Film Corporation v. Court of Appeals, 4 on
which respondent Secretary of Justice relied in reversing the resolution of the
investigating prosecutor, is inapplicable to the case at bar because in the
present case, the parties presented sufficient evidence which clearly establish
"linkage between the copyright show "Rhoda and Me" and the infringing TV
show "It's a Date." 5
The case of 20th Century Fox Film Corporation involved raids conducted on
various videotape outlets allegedlly 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 were necessarily reproduced 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 printed 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 show. The major concepts of
both shows is the same. Any difference appear mere variations of the major concepts.
That there is an infringement on the copyright of the show "RHODA AND ME" both in
content and in the execution of the video presentation are established because
respondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME"
because of substantial similarities as follows, to wit:
Set 1 Set 1
d. Selection is made by the use of compute (sic) d. Selection is based on the answer of the Searchees.
methods, or by the way questions are answered, or
similar methods.
Set 2 Set 2
Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the presentation of a point-by-point 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.
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 protection, to wit:
Sec. 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 newspapers;
(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 a 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;
(I) 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, 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
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
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.
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.25
By requesting the NBI to investigate and, if feasible, file an application for a search warrant for infringement
under R.A. No. 8293 against the respondents, the petitioner thereby authorized the RTC (in resolving the
application), to delve into and determine the validity of the copyright which he claimed he had over the
utility 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 without running afoul to the doctrine of estoppel.
To discharge his burden, the applicant may present the certificate of registration covering the work or, in its
absence, other evidence.26 A copyright certificate provides prima facie evidence of originality which is one
element of copyright validity. It constitutes prima facie evidence of both validity and ownership27 and the
validity of the facts stated in the certificate. 28 The presumption of validity to a certificate of copyright
registration merely orders the burden of proof. The applicant should not ordinarily be forced, in the first
instance, to prove all the multiple facts that underline the validity of the copyright unless the respondent,
effectively challenging them, shifts the burden of doing so to the applicant. 29 Indeed, Section 218.2 of R.A.
No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action
relates if the defendant does not put in issue the question whether copyright subsists in the work or
other subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the
owner of the copyright if he claims to be the owner of the copyright and the defendant does not put
in issue the question of his ownership.
A certificate of registration creates no rebuttable presumption of copyright validity where other evidence in
the record casts doubt on the question. In such a case, validity will not be presumed.30
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:
...
(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 objectives, these articles are useful articles which
are defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or 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 only if and only to the extent that such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently of the utilitarian
aspects of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the author’s
intellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a
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 or artistic features that cannot be identified
separately from the utilitarian aspects of the article.36 Functional components of useful articles, no matter
how artistically designed, have generally been denied copyright 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,
useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility model as
follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber.
These rubber bushings after a time, upon subjecting them to so much or intermittent pressure would
eventually wore (sic) out that would cause the wobbling of the leaf spring.
The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile that
is made up of plastic.
Another object of this utility model is to 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 of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings wherein like reference numerals designated same parts
throughout, there is shown a utility model for a leaf-spring eye bushing for automobile generally designated
as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 on
one of its ends and a cylindrical metal jacket 14 surrounding the peripheral 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), which
is also made of steel or cast steel. In effect, the bushing 10 will not be directly in contact with steel, but
rather the metal jacket, making the life of the bushing 10 longer than those without the metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil 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.
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.
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.40Essentially, 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
years43 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.
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.
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, inJoaquin, Jr. v. Drilon47 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 Appeals49 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. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.
The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein51 to
buttress his petition. In that case, the artifacts involved 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 used as bases for table lamps, with
electric wiring, sockets and lampshades attached. The issue raised was whether the statuettes were
copyright protected in the United States, considering that the copyright applicant intended primarily to use
them as lamp bases to be made and sold in quantity, and carried such intentions into effect. At that time,
the Copyright Office interpreted 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 and the interpretation of the copyright office, the US Supreme Court
declared that the statuettes were held copyrightable works of art or models or designs for works of art. The
High Court ruled that:
"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so far as
their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels,
glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and
sculpture. …"
So we have a contemporaneous and long-continued construction of the statutes by the agency charged to
administer them that would allow the registration of such a statuette as is in question here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and utility
but 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, (Chairman), Austria-Martinez, Tinga, and Chico-Nazario, JJ., concur.
PARAS, J.:
This is a petition for review on certiorari filed by United Feature Syndicate Inc., seeking to set aside the
Resolution of the Seventh Division of the Court of Appeals * dated September 16, 1986 dismissing the appeal of petitioner-
appellant for having been filed out of time and denying its Motion for Reconsideration for lack of merit in its Resolution dated October 14, 1986.
_____________________________________________________________________________
Feist publication
"Copyright does not prevent subsequent users from copying from a prior
author's work those constituent elements that are not original -- for
example . . . facts, or materials in the public domain -- as long as such use
does not unfairly appropriate the author's original contributions." 471 U.S., at
547-548 (citation omitted).
This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations
in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not
original and therefore may not be copyrighted. A factual compilation is eligible for
copyright if it features an original selection or arrangement of facts, but the copyright is
limited to [p*351] the particular selection or arrangement. In no event may copyright
extend to the facts themselves.
B
As we have explained, originality is a constitutionally mandated prerequisite for
copyright protection. The Court's decisions announcing this rule predate the Copyright
Act of 1909, but ambiguous language in the 1909 Act caused some lower courts
temporarily to lose sight of this requirement.
The 1909 Act embodied the originality requirement, but not as clearly as it might have.
See Nimmer § 2.01. The subject matter of copyright was set out in § 3 and § 4 of the
Act. Section 4 stated that copyright was available to "all the writings of an author." 35
Stat. 1076. By using the words "writings" and "author" -- the same words used in Article
I, § 8 of the Constitution and defined by the Court in The Trade-Mark
Cases and Burrow-Giles -- the statute necessarily incorporated the originality
requirement articulated in the Court's decisions. It did so implicitly, however, thereby
leaving room for error.
Section 3 was similarly ambiguous. It stated that the copyright in a work protected only
"the copyrightable component parts of the work." It thus stated an important copyright
principle, but failed to identify the specific characteristic -- originality -- that determined
which component parts of a work were copyrightable and which were not.
Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect
statutory language. They understood from this Court's decisions that there could be no
copyright without originality. See Patterson & Joyce 760-761. As explained in the
Nimmer treatise: "The 1909 Act neither defined originality, nor even expressly required
that a work be 'original' in order to command protection. However, the courts uniformly
inferred the requirement from the fact that copyright protection may only be claimed by
'authors' . . . . It was reasoned that since an author is 'the . . . [p*352] creator, originator'
it follows that a work is not the product of an author unless the work is original."
Nimmer § 2.01 (footnotes omitted) (citing cases).
But some courts misunderstood the statute. See, e. g., Leon v. Pacific Telephone &
Telegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler's Circular Publishing Co. v. Keystone
Publishing Co., 281 F. 83 (CA2 1922). These courts ignored § 3 and § 4, focusing their
attention instead on § 5 of the Act. Section 5, however, was purely technical in nature: it
provided that a person seeking to register a work should indicate on the application the
type of work, and it listed 14 categories under which the work might fall. One of these
categories was "books, including composite and cyclopedic works, directories,
gazetteers, and other compilations." § 5(a). Section 5 did not purport to say that all
compilations were automatically copyrightable. Indeed, it expressly disclaimed any such
function, pointing out that "the subject-matter of copyright is defined in section four."
Nevertheless, the fact that factual compilations were mentioned specifically in § 5 led
some courts to infer erroneously that directories and the like were copyrightable per se,
"without any further or precise showing of original -- personal -- authorship." Ginsburg
1895.
Making matters worse, these courts developed a new theory to justify the protection of
factual compilations. Known alternatively as "sweat of the brow" or "industrious
collection," the underlying notion was that copyright was a reward for the hard work that
went into compiling facts. The classic formulation of the doctrine appeared in Jeweler's
Circular Publishing Co., 281 F., at 88:
"The right to copyright a book upon which one has expended labor in its preparation
does not depend upon whether the materials which he has collected consist or not of
matters which are publici juris, or whether such materials show literary skill or
originality, either in thought or in language, or anything more than
industrious [p*353] collection. The man who goes through the streets of a town and puts
down the names of each of the inhabitants, with their occupations and their street
number, acquires material of which he is the author" (emphasis added).
The "sweat of the brow" doctrine had numerous flaws, the most glaring being that it
extended copyright protection in a compilation beyond selection and arrangement -- the
compiler's original contributions -- to the facts themselves. Under the doctrine, the only
defense to infringement was independent creation. A subsequent compiler was "not
entitled to take one word of information previously published," but rather had to
"independently work out the matter for himself, so as to arrive at the same result from
the same common sources of information." Id., at 88-89 (internal quotations omitted).
"Sweat of the brow" courts thereby eschewed the most fundamental axiom of copyright
law -- that no one may copyright facts or ideas. See Miller v. Universal City Studios,
Inc., 650 F. 2d, at 1372 (criticizing "sweat of the brow" courts because "ensuring that
later writers obtain the facts independently . . . is precisely the scope of protection
given . . . copyrighted matter, and the law is clear that facts are not entitled to such
protection").
Decisions of this Court applying the 1909 Act make clear that the statute did not permit
the "sweat of the brow" approach. The best example is International News
Service v. Associated Press, 248 U.S. 215 (1918). In that decision, the Court stated
unambiguously that the 1909 Act conferred copyright protection only on those elements
of a work that were original to the author. Associated Press had conceded taking news
reported by International News Service and publishing it in its own newspapers.
Recognizing that § 5 of the Act specifically mentioned "periodicals, including
newspapers," § 5(b), the Court acknowledged that news articles were copyrightable. Id.,
at 234. It flatly rejected, however, the notion that the copyright in an article extended
to [p*354] the factual information it contained: "The news element -- the information
respecting current events contained in the literary production -- is not the creation of the
writer, but is a report of matters that ordinarily are publici juris; it is the history of the
day."Ibid.[n *]
Without a doubt, the "sweat of the brow" doctrine flouted basic copyright principles.
Throughout history, copyright law has "recognized a greater need to disseminate factual
works than works of fiction or fantasy." Harper & Row, 471 U.S., at 563. Accord
Gorman, Fact or Fancy: The Implications for Copyright, 29 J. Copyright Soc. 560, 563
(1982). But "sweat of the brow" courts took a contrary view; they handed out
proprietary interests in facts and declared that authors are absolutely precluded from
saving time and effort by relying upon the facts contained in prior works. In truth, "it is
just such wasted effort that the proscription against the copyright of ideas and facts . . .
[is] designed to prevent." Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d
303, 310 (CA2 1966), cert. denied, 385 U.S. 1009 (1967). "Protection for the fruits of
such research . . . may in certain circumstances be available under a theory of unfair
competition. But to accord copyright protection on this basis alone distorts basic
copyright principles in that it creates a monopoly in public domain materials without the
necessary justification of protecting and encouraging the creation of 'writings' by
'authors.'" Nimmer § 3.04, p. 3-23 (footnote omitted).
C
"Sweat of the brow" decisions did not escape the attention of the Copyright Office.
When Congress decided to overhaul the copyright statute and asked the Copyright
Office to study existing problems, seeMills Music, Inc. v. Snyder, 469 U.S. 153, 159
(1985), the Copyright Office promptly recommended [p*355] that Congress clear up the
confusion in the lower courts as to the basic standards of copyrightability. The Register
of Copyrights explained in his first report to Congress that "originality" was a "basic
requisite" of copyright under the 1909 Act, but that "the absence of any reference to
[originality] in the statute seems to have led to misconceptions as to what is
copyrightable matter." Report of the Register of Copyrights on the General Revision of
the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961).
The Register suggested making the originality requirement explicit. Ibid.
Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress
dropped the reference to "all the writings of an author" and replaced it with the phrase
"original works of authorship." 17 U.S.C. § 102(a). In making explicit the originality
requirement, Congress announced that it was merely clarifying existing law: "The two
fundamental criteria of copyright protection [are] originality and fixation in tangible
form . . . . The phrase 'original works of authorship,' which is purposely left undefined,
is intended to incorporate without change the standard of originality established by the
courts under the present [1909] copyright statute." H. R. Rep. No. 94-1476, p. 51
(1976) (emphasis added) (hereinafter H. R. Rep.); S. Rep. No. 94-473, p. 50 (1975)
(emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the Copyright
Office: "Our intention here is to maintain the established standards of originality . . . ."
Supplementary Report of the Register of Copyrights on the General Revision of U.S.
Copyright Law, 89th Cong., 1st Sess., Part 6, p. 3 (H. Judiciary Comm. Print 1965)
(emphasis added).
To ensure that the mistakes of the "sweat of the brow" courts would not be repeated,
Congress took additional measures. For example, § 3 of the 1909 Act had stated that
copyright protected only the "copyrightable component parts" of a work, but had not
identified originality as the basis for distinguishing [p*356] those component parts that
were copyrightable from those that were not. The 1976 Act deleted this section and
replaced it with § 102(b), which identifies specifically those elements of a work for
which copyright is not available: "In no case does copyright protection for an original
work of authorship extend to any 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." § 102(b) is universally understood to
prohibit any copyright in facts. Harper & Row, supra, at 547, 556. Accord Nimmer §
2.03[E] (equating facts with "discoveries"). As with § 102(a), Congress emphasized that
§ 102(b) did not change the law, but merely clarified it: "Section 102(b) in no way
enlarges or contracts the scope of copyright protection under the present law. Its purpose
is to restate . . . that the basic dichotomy between expression and idea remains
unchanged." H. R. Rep., at 57; S. Rep., at 54.
Congress took another step to minimize confusion by deleting the specific mention of
"directories . . . and other compilations" in § 5 of the 1909 Act. As mentioned, this
section had led some courts to conclude that directories were copyrightable per se and
that every element of a directory was protected. In its place, Congress enacted two new
provisions. First, to make clear that compilations were not copyrightable per se,
Congress provided a definition of the term "compilation." Second, to make clear that the
copyright in a compilation did not extend to the facts themselves, Congress enacted 17
U.S.C. § 103.
The definition of "compilation" is found in § 101 of the 1976 Act. It defines a
"compilation" in the copyright sense as "a work formed by the collection and assembly
of preexisting materials or of data that are selected, coordinated, or arranged in such a
way that the resulting work as a whole constitutes an original work of authorship"
(emphasis added).
[p*357] The purpose of the statutory definition is to emphasize that collections of facts
are not copyrightable per se. It conveys this message through its tripartite structure, as
emphasized above by the italics. The statute identifies three distinct elements and
requires each to be met for a work to qualify as a copyrightable compilation: (1) the
collection and assembly of pre-existing material, facts, or data; (2) the selection,
coordination, or arrangement of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of an "original" work of authorship.
"This tripartite conjunctive structure is self-evident, and should be assumed to
'accurately express the legislative purpose.'" Patry 51, quoting Mills Music, 469 U.S., at
164.
At first glance, the first requirement does not seem to tell us much. It merely describes
what one normally thinks of as a compilation -- a collection of pre-existing material,
facts, or data. What makes it significant is that it is not the sole requirement. It is not
enough for copyright purposes that an author collects and assembles facts. To satisfy the
statutory definition, the work must get over two additional hurdles. In this way, the plain
language indicates that not every collection of facts receives copyright protection.
Otherwise, there would be a period after "data."
The third requirement is also illuminating. It emphasizes that a compilation, like any
other work, is copyrightable only if it satisfies the originality requirement
("an original work of authorship"). Although § 102 states plainly that the originality
requirement applies to all works, the point was emphasized with regard to compilations
to ensure that courts would not repeat the mistake of the "sweat of the brow" courts by
concluding that fact-based works are treated differently and measured by some other
standard. As Congress explained it, the goal was to "make plain that the criteria of
copyrightable subject matter stated in section 102 apply with full force to works . . .
containing preexisting material." H. R. Rep., at 57; S. Rep., at 55.
[p*358] The key to the statutory definition is the second requirement. It instructs courts
that, in determining whether a fact-based work is an original work of authorship, they
should focus on the manner in which the collected facts have been selected, coordinated,
and arranged. This is a straightforward application of the originality requirement. Facts
are never original, so the compilation author can claim originality, if at all, only in the
way the facts are presented. To that end, the statute dictates that the principal focus
should be on whether the selection, coordination, and arrangement are sufficiently
original to merit protection.
Not every selection, coordination, or arrangement will pass muster. This is plain from
the statute. It states that, to merit protection, the facts must be selected, coordinated, or
arranged "in such a way" as to render the work as a whole original. This implies that
some "ways" will trigger copyright, but that others will not. See Patry 57, and n. 76.
Otherwise, the phrase "in such a way" is meaningless and Congress should have defined
"compilation" simply as "a work formed by the collection and assembly of preexisting
materials or data that are selected, coordinated, or arranged." That Congress did not do
so is dispositive. In accordance with "the established principle that a court should give
effect, if possible, to every clause and word of a statute," Moskal v. United States, 498
U.S. 103, 109-110 (1990) (internal quotations omitted), we conclude that the statute
envisions that there will be some fact-based works in which the selection, coordination,
and arrangement are not sufficiently original to trigger copyright protection.
As discussed earlier, however, the originality requirement is not particularly stringent. A
compiler may settle upon a selection or arrangement that others have used; novelty is not
required. Originality requires only that the author make the selection or arrangement
independently (i. e., without copying that selection or arrangement from another work),
and that it display some minimal level of creativity. Presumably,[p*359] the vast
majority of compilations will pass this test, but not all will. There remains a narrow
category of works in which the creative spark is utterly lacking or so trivial as to be
virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188 U.S.
239, 251 (1903) (referring to "the narrowest and most obvious limits"). Such works are
incapable of sustaining a valid copyright. Nimmer § 2.01[B].
Even if a work qualifies as a copyrightable compilation, it receives only limited
protection. This is the point of § 103 of the Act. Section 103 explains that "the subject
matter of copyright . . . includes compilations," § 103(a), but that copyright protects only
the author's original contributions -- not the facts or information conveyed:
"The copyright in a compilation . . . extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the
work, and does not imply any exclusive right in the preexisting material." § 103(b).
As § 103 makes clear, copyright is not a tool by which a compilation author may keep
others from using the facts or data he or she has collected. "The most important point
here is one that is commonly misunderstood today: copyright . . . has no effect one way
or the other on the copyright or public domain status of the preexisting material." H. R.
Rep., at 57; S. Rep., at 55. The 1909 Act did not require, as "sweat of the brow" courts
mistakenly assumed, that each subsequent compiler must start from scratch and is
precluded from relying on research undertaken by another. See, e. g., Jeweler's Circular
Publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works may be
freely copied because copyright protects only the elements that owe their origin to the
compiler -- the selection, coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not
"sweat of the brow," is the [p*360] touchstone of copyright protection in directories and
other fact-based works. Nor is there any doubt that the same was true under the 1909
Act. The 1976 revisions were a direct response to the Copyright Office's concern that
many lower courts had misconstrued this basic principle, and Congress emphasized
repeatedly that the purpose of the revisions was to clarify, not change, existing law. The
revisions explain with painstaking clarity that copyright requires originality, § 102(a);
that facts are never original, § 102(b); that the copyright in a compilation does not
extend to the facts it contains, § 103(b); and that a compilation is copyrightable only to
the extent that it features an original selection, coordination, or arrangement, § 101.
The 1976 revisions have proven largely successful in steering courts in the right
direction. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 1369-
1370: "A copyright in a directory . . . is properly viewed as resting on the originality of
the selection and arrangement of the factual material, rather than on the industriousness
of the efforts to develop the information. Copyright protection does not extend to the
facts themselves, and the mere use of information contained in a directory without a
substantial copying of the format does not constitute infringement" (citation omitted).
Additionally, the Second Circuit, which almost 70 years ago issued the classic
formulation of the "sweat of the brow" doctrine in Jeweler's Circular Publishing Co.,
has now fully repudiated the reasoning of that decision. See, e. g.,Financial Information,
Inc. v. Moody's Investors Service, Inc., 808 F. 2d 204, 207 (CA2 1986), cert. denied, 484
U.S. 820 (1987); Financial Information, Inc. v. Moody's Investors Service, Inc.,751 F. 2d
501, 510 (CA2 1984) (Newman, J., concurring); Hoehling v. Universal City
Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those scholars who believe that
"industrious collection" should be rewarded seem to recognize that this is beyond the
scope of existing copyright law. See Denicola 516 ("the very vocabulary of
copyright [p*361] is ill suited to analyzing property rights in works of
nonfiction"); id., at 520-521, 525; Ginsburg 1867, 1870.
III
There is no doubt that Feist took from the white pages of Rural's directory a substantial
amount of factual information. At a minimum, Feist copied the names, towns, and
telephone numbers of 1,309 of Rural's subscribers. Not all copying, however, is
copyright infringement. To establish infringement, two elements must be proven: (1)
ownership of a valid copyright, and (2) copying of constituent elements of the work that
are original. See Harper & Row, 471 U.S., at 548. The first element is not at issue here;
Feist appears to concede that Rural's directory, considered as a whole, is subject to a
valid copyright because it contains some foreword text, as well as original material in its
yellow pages advertisements. See Brief for Petitioner 18; Pet. for Cert. 9.
The question is whether Rural has proved the second element. In other words, did Feist,
by taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy
anything that was "original" to Rural? Certainly, the raw data does not satisfy the
originality requirement. Rural may have been the first to discover and report the names,
towns, and telephone numbers of its subscribers, but this data does not "'owe its origin'"
to Rural. Burrow-Giles, 111 U.S., at 58. Rather, these bits of information are
uncopyrightable facts; they existed before Rural reported them and would have
continued to exist if Rural had never published a telephone directory. The originality
requirement "rules out protecting . . . names, addresses, and telephone numbers of which
the plaintiff by no stretch of the imagination could be called the author." Patterson &
Joyce 776.
Rural essentially concedes the point by referring to the names, towns, and telephone
numbers as "preexisting material." Brief for Respondent 17. Section 103(b) states
explicitly [p*362] that the copyright in a compilation does not extend to "the preexisting
material employed in the work."
The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an innovative or surprising way. It
is equally true, however, that the selection and arrangement of facts cannot be so
mechanical or routine as to require no creativity whatsoever. The standard of originality
is low, but it does exist. See Patterson & Joyce 760, n. 144 ("While this requirement is
sometimes characterized as modest, or a low threshold, it is not without effect") (internal
quotations omitted; citations omitted). As this Court has explained, the Constitution
mandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U.S., at
94; and an author who claims infringement must prove "the existence of . . . intellectual
production, of thought, and conception." Burrow-Giles, supra, at 59-60.
The selection, coordination, and arrangement of Rural's white pages do not satisfy the
minimum constitutional standards for copyright protection. As mentioned at the outset,
Rural's white pages are entirely typical. Persons desiring telephone service in Rural's
service area fill out an application and Rural issues them a telephone number. In
preparing its white pages, Rural simply takes the data provided by its subscribers and
lists it alphabetically by surname. The end product is a garden-variety white pages
directory, devoid of even the slightest trace of creativity.
Rural's selection of listings could not be more obvious: it publishes the most basic
information -- name, town, and telephone number -- about each person who applies to it
for telephone service. This is "selection" of a sort, but it lacks the modicum of creativity
necessary to transform mere selection into copyrightable expression. Rural expended
sufficient effort [p*363] to make the white pages directory useful, but insufficient
creativity to make it original.
We note in passing that the selection featured in Rural's white pages may also fail the
originality requirement for another reason. Feist points out that Rural did not truly
"select" to publish the names and telephone numbers of its subscribers; rather, it was
required to do so by the Kansas Corporation Commission as part of its monopoly
franchise. See 737 F. Supp., at 612. Accordingly, one could plausibly conclude that this
selection was dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrangement of facts. The white
pages do nothing more than list Rural's subscribers in alphabetical order. This
arrangement may, technically speaking, owe its origin to Rural; no one disputes that
Rural undertook the task of alphabetizing the names itself. But there is nothing remotely
creative about arranging names alphabetically in a white pages directory. It is an age-old
practice, firmly rooted in tradition and so commonplace that it has come to be expected
as a matter of course. See Brief for Information Industry Association et al. as Amici
Curiae 10 (alphabetical arrangement "is universally observed in directories published by
local exchange telephone companies"). It is not only unoriginal, it is practically
inevitable. This time-honored tradition does not possess the minimal creative spark
required by the Copyright Act and the Constitution.
We conclude that the names, towns, and telephone numbers copied by Feist were not
original to Rural and therefore were not protected by the copyright in Rural's combined
white and yellow pages directory. As a constitutional matter, copyright protects only
those constituent elements of a work that possess more than a de minimis quantum of
creativity. Rural's white pages, limited to basic subscriber information and arranged
alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not
afford protection [p*364] from copying to a collection of facts that are selected,
coordinated, and arranged in a way that utterly lacks originality. Given that some works
must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that
Rural's white pages pass muster, it is hard to believe that any collection of facts could
fail.
Because Rural's white pages lack the requisite originality, Feist's use of the listings
cannot constitute infringement. This decision should not be construed as demeaning
Rural's efforts in compiling its directory, but rather as making clear that copyright
rewards originality, not effort. As this Court noted more than a century ago, "'great
praise may be due to the plaintiffs for their industry and enterprise in publishing this
paper, yet the law does not contemplate their being rewarded in this way.'"
Baker v. Selden, 101 U.S., at 105. The judgment of the Court of Appeals is
I. Background
Lotus 1-2-3 is a spreadsheet program that enables users to perform accounting functions
electronically on a computer. Users manipulate and control the program via a series of
menu commands, such as "Copy," "Print," and "Quit." Users choose commands either by
highlighting them on the screen or by typing their first letter. In all, Lotus 1-2-3 has 469
commands arranged into more than 50 menus and submenus.
Lotus 1-2-3, like many computer programs, allows users to write what are called
"macros." By writing a macro, a user can designate a series of command choices with a
single macro keystroke. Then, to execute that series of commands in multiple parts of
the spreadsheet, rather than typing the whole series each time, the user only needs to
type the single pre-programmed macro keystroke, causing the program to recall and
perform the designated series of commands automatically. Thus, Lotus 1-2-3 macros
shorten the time needed to set up and operate the program.
Borland released its first Quattro program to the public in 1987, after Borland's
engineers had labored over its development for nearly three years. Borland's objective
was to develop a spreadsheet program far superior to existing programs, including Lotus
1-2-3. In Borland's words, "from the time of its initial release . . . Quattro included
enormous innovations over competing spreadsheet products."
The district court found, and Borland does not now contest, that Borland included in its
Quattro and Quattro Pro version 1.0 programs "a virtually identical copy of the entire 1-
2-3 menu tree." Borland III, 831 F. Supp. at 212 (emphasis in original). In so doing,
Borland did not copy any of Lotus's underlying computer code; it copied only the words
and structure of Lotus's menu command hierarchy. Borland included the Lotus menu
command hierarchy in its programs to make them compatible with Lotus 1-2-3 so that
spreadsheet users who were already familiar with Lotus 1-2-3 would be able to switch to
the Borland programs without having to learn new commands or rewrite their Lotus
macros.
In its Quattro and Quattro Pro version 1.0 programs, Borland achieved compatibility
with Lotus 1-2-3 by offering its users an alternate user interface, the "Lotus Emulation
Interface." By activating the Emulation Interface, Borland users would see the Lotus
menu commands on their screens and could interact with Quattro or Quattro Pro as if
using Lotus 1-2-3, albeit with a slightly different looking screen and with many Borland
options not available on Lotus 1-2-3. In effect, Borland allowed users to choose how
they wanted to communicate with Borland's spreadsheet programs: either by using menu
commands designed by Borland, or by using the commands and command structure
used in Lotus 1-2-3 augmented by Borland-added commands.
Lotus filed this action against Borland in the District of Massachusetts on July 2, 1990,
four days after a district court held that the Lotus 1-2-3 "menu structure, taken as a
whole -- including the choice of command terms [and] the structure and order of those
terms," was protected expression covered by Lotus's copyrights. Lotus Dev. Corp. v.
Paperback Software Int'l, 740 F. Supp. 37, 68, 70 (D. Mass. 1990)
("Paperback"). [1] Three days earlier, on the morning after the Paperback decision,
Borland had filed a declaratory judgment action against Lotus in the Northern District of
California, seeking a declaration of non-infringement. On September 10, 1990, the
district court in California dismissed Borland's declaratory judgment action in favor of
this action.
Lotus and Borland filed cross motions for summary judgment; the district court denied
both motions on March 20, 1992, concluding that "neither party's motion is supported by
the record." Borland I, 788 F. Supp. at 80. The district court invited the parties to file
renewed summary judgment motions that would "focus their arguments more precisely"
in light of rulings it had made in conjunction with its denial of their summary judgment
motions. Id. at 82. Both parties filed renewed motions for summary judgment on April
24, 1992. In its motion, Borland contended that the Lotus 1-2-3 menus were not
copyrightable as a matter of law and that no reasonable trier of fact could find that the
similarity between its products and Lotus 1-2-3 was sufficient to sustain a determination
of infringement. Lotus contended in its motion that Borland had copied Lotus 1-2-3's
entire user interface and had thereby infringed Lotus's copyrights.
On July 31, 1992, the district court denied Borland's motion and granted Lotus's motion
in part. The district court ruled that the Lotus menu command hierarchy was
copyrightable expression because
[a] very satisfactory spreadsheet menu tree can be constructed using different commands
and a different command structure from those of Lotus 1-2-3. In fact, Borland has
constructed just such an alternate tree for use in Quattro Pro's native mode. Even if one
holds the arrangement of menu commands constant, it is possible to generate literally
millions of satisfactory menu trees by varying the menu commands employed.
Borland II, 799 F. Supp. at 217. The district court demonstrated this by offering alternate
command words for the ten commands that appear in Lotus's main menu. Id. For
example, the district court stated that "the 'Quit' command could be named 'Exit' without
any other modifications," and that "the 'Copy' command could be called 'Clone,' 'Ditto,'
'Duplicate,' 'Imitate,' 'Mimic,' 'Replicate,' and 'Reproduce,' among others." Id. Because
so many variations were possible, the district court concluded that the Lotus developers'
choice and arrangement of command terms, reflected in the Lotus menu command
hierarchy, constituted copyrightable expression.
In granting partial summary judgment to Lotus, the district court held that Borland had
infringed Lotus's copyright in Lotus 1-2-3:
As a matter of law, Borland's Quattro products infringe the Lotus 1-2-3 copyright
because of (1) the extent of copying of the "menu commands" and "menu structure" that
is not genuinely disputed in this case, (2) the extent to which the copied elements of the
"menu commands" and "menu structure" contain expressive aspects separable from the
functions of the "menu commands" and "menu structure," and (3) the scope of those
copied expressive aspects as an integral part of Lotus 1-2-3.
Borland II, 799 F. Supp. at 223 (emphasis in original). The court nevertheless concluded
that while the Quattro and Quattro Pro programs infringed Lotus's copyright, Borland
had not copied the entire Lotus 1-2-3 user interface, as Lotus had contended.
Accordingly, the court concluded that a jury trial was necessary to determine the scope
of Borland's infringement, including whether Borland copied the long prompts [2] of
Lotus 1-2-3, whether the long prompts contained expressive elements, and to what
extent, if any, functional constraints limited the number of possible ways that the Lotus
menu command hierarchy could have been arranged at the time of its creation. See
Borland III, 831 F. Supp. at 207. Additionally, the district court granted Lotus summary
judgment on Borland's affirmative defense of waiver, but not on its affirmative defenses
of laches and estoppel. Borland II, 799 F. Supp. at 222-23.
Immediately following the district court's summary judgment decision, Borland
removed the Lotus Emulation Interface from its products. Thereafter, Borland's
spreadsheet programs no longer displayed the Lotus 1-2-3 menus to Borland users, and
as a result Borland users could no longer communicate with Borland's programs as if
they were using a more sophisticated version of Lotus 1-2-3. Nonetheless, Borland's
programs continued to be partially compatible with Lotus 1-2-3, for Borland retained
what it called the "Key Reader" in its Quattro Pro programs. Once turned on, the Key
Reader allowed Borland's programs to understand and perform some Lotus 1-2-3
macros. [3] With the Key Reader on, the Borland programs used Quattro Pro menus for
display, interaction, and macro execution, except when they encountered a slash ("/")
key in a macro (the starting key for any Lotus 1-2-3 macro), in which case they
interpreted the macro as having been written for Lotus 1-2-3. Accordingly, people who
wrote or purchased macros to shorten the time needed to perform an operation in Lotus
1-2-3 could still use those macros in Borland's programs. [4] The district court permitted
Lotus to file a supplemental complaint alleging that the Key Reader infringed its
copyright.
The parties agreed to try the remaining liability issues without a jury. The district court
held two trials, the Phase I trial covering all remaining issues raised in the original
complaint (relating to the Emulation Interface) and the Phase II trial covering all issues
raised in the supplemental complaint (relating to the Key Reader). At the Phase I trial,
there were no live witnesses, although considerable testimony was presented in the form
of affidavits and deposition excerpts. The district court ruled upon evidentiary objections
counsel interposed. At the Phase II trial, there were two live witnesses, each of whom
demonstrated the programs for the district court.
After the close of the Phase I trial, the district court permitted Borland to amend its
answer to include the affirmative defense of "fair use." Because Borland had presented
all of the evidence supporting its fair-use defense during the Phase I trial, but Lotus had
not presented any evidence on fair use (as the defense had not been raised before the
conclusion of the Phase I trial), the district court considered Lotus's motion for judgment
on partial findings of fact. See Fed. R. Civ. P. 52(c). The district court held that Borland
had failed to show that its use of the Lotus 1-2-3 menu command hierarchy in its
Emulation Interface was a fair use. See Borland III, 831 F. Supp. at 208.
In its Phase I-trial decision, the district court found that "each of the Borland emulation
interfaces contains a virtually identical copy of the 1-2-3 menu tree and that the 1-2-3
menu tree is capable of a wide variety of expression." Borland III, 831 F. Supp. at 218.
The district court also rejected Borland's affirmative defenses of laches and estoppel. Id.
at 218-23.
In its Phase II-trial decision, the district court found that Borland's Key Reader file
included "a virtually identical copy of the Lotus menu tree structure, but represented in a
different form and with first letters of menu command names in place of the full menu
command names." Borland IV, 831 F. Supp. at 228. In other words, Borland's programs
no longer included the Lotus command terms, but only their first letters. The district
court held that "the Lotus menu structure, organization, and first letters of the command
names . . . constitute part of the protectable expression found in [Lotus 1-2-3]." Id. at
233. Accordingly, the district court held that with its Key Reader, Borland had infringed
Lotus's copyright. Id. at 245. The district court also rejected Borland's affirmative
defenses of waiver, laches, estoppel, and fair use. Id. at 235-45. The district court then
entered a permanent injunction against Borland, id. at 245, from which Borland appeals.
This appeal concerns only Borland's copying of the Lotus menu command hierarchy into
its Quattro programs and Borland's affirmative defenses to such copying. Lotus has not
cross-appealed; in other words, Lotus does not contend on appeal that the district court
erred in finding that Borland had not copied other elements of Lotus 1-2-3, such as its
screen displays.
II. Discussion
On appeal, Borland does not dispute that it factually copied the words and arrangement
of the Lotus menu command hierarchy. Rather, Borland argues that it "lawfully copied
the unprotectable menus of Lotus 1-2-3." Borland contends that the Lotus menu
command hierarchy is not copyrightable because it is a system, method of operation,
process, or procedure foreclosed from protection by 17 U.S.C. @ 102(b). Borland also
raises a number of affirmative defenses.
To demonstrate that Baker v. Selden and this appeal both involve accounting systems,
Borland even supplied this court with a video that, with special effects, shows Selden's
paper forms "melting" into a computer screen and transforming into Lotus 1-2-3.
We do not think that Baker v. Selden is nearly as analogous to this appeal as Borland
claims. Of course, Lotus 1-2-3 is a computer spreadsheet, and as such its grid of
horizontal rows and vertical columns certainly resembles an accounting ledger or any
other paper spreadsheet. Those grids, however, are not at issue in this appeal for, unlike
Selden, Lotus does not claim to have a monopoly over its accounting system. Rather,
this appeal involves Lotus's monopoly over the commands it uses to operate the
computer. Accordingly, this appeal is not, as Borland contends, "identical" to Baker v.
Selden.
C. Altai
Before we analyze whether the Lotus menu command hierarchy is a system, method of
operation, process, or procedure, we first consider the applicability of the test the Second
Circuit set forth in Computer Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.
1992). [7] The Second Circuit designed its Altai test to deal with the fact that computer
programs, copyrighted as "literary works," can be infringed by what is known as
"nonliteral" copying, which is copying that is paraphrased or loosely paraphrased rather
than word for word. See id. at 701 (citing nonliteral-copying cases); see also 3 Melville
B. Nimmer & David Nimmer, Nimmer on Copyright @ 13.03[A][1] (1993). When faced
with nonliteral-copying cases, courts must determine whether similarities are due merely
to the fact that the two works share the same underlying idea or whether they instead
indicate that the second author copied the first author's expression. The Second Circuit
designed its Altai test to deal with this situation in the computer context, specifically
with whether one computer program copied nonliteral expression from another
program's code.
The Altai test involves three steps: abstraction, filtration, and comparison. The
abstraction step requires courts to "dissect the allegedly copied program's structure and
isolate each level of abstraction contained within it." Altai, 982 F.2d at 707. This step
enables courts to identify the appropriate framework within which to separate
protectable expression from unprotected ideas. Second, courts apply a "filtration" step in
which they examine "the structural components at each level of abstraction to determine
whether their particular inclusion at that level was 'idea' or was dictated by
considerations of efficiency, so as to be necessarily incidental to that idea; required by
factors external to the program itself; or taken from the public domain." Id. Finally,
courts compare the protected elements of the infringed work (i.e., those that survived the
filtration screening) to the corresponding elements of the allegedly infringing work to
determine whether there was sufficient copying of protected material to constitute
infringement. Id. at 710.
In the instant appeal, we are not confronted with alleged nonliteral copying of computer
code. Rather, we are faced with Borland's deliberate, literal copying of the Lotus menu
command hierarchy. Thus, we must determine not whether nonliteral copying occurred
in some amorphous sense, but rather whether the literal copying of the Lotus menu
command hierarchy constitutes copyright infringement.
While the Altai test may provide a useful framework for assessing the alleged nonliteral
copying of computer code, we find it to be of little help in assessing whether the literal
copying of a menu command hierarchy constitutes copyright infringement. In fact, we
think that the Altai test in this context may actually be misleading because, in instructing
courts to abstract the various levels, it seems to encourage them to find a base level that
includes copyrightable subject matter that, if literally copied, would make the copier
liable for copyright infringement.[8] While that base (or literal) level would not be at
issue in a nonliteral-copying case like Altai, it is precisely what is at issue in this appeal.
We think that abstracting menu command hierarchies down to their individual word and
menu levels and then filtering idea from expression at that stage, as both the Altai and
the district court tests require, obscures the more fundamental question of whether a
menu command hierarchy can be copyrighted at all. The initial inquiry should not be
whether individual components of a menu command hierarchy are expressive, but rather
whether the menu command hierarchy as a whole can be copyrighted. But see Gates
Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993) (endorsing Altai's
abstraction-filtration-comparison test as a way of determining whether "menus and
sorting criteria" are copyrightable).
Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command hierarchy so that
people could learn it and use it. Accordingly, it falls squarely within the prohibition on
copyright protection established in Baker v. Selden and codified by Congress in @
102(b).
In many ways, the Lotus menu command hierarchy is like the buttons used to control,
say, a video cassette recorder ("VCR"). A VCR is a machine that enables one to watch
and record video tapes. Users operate VCRs by pressing a series of buttons that are
typically labelled "Record, Play, Reverse, Fast Forward, Pause, Stop/Eject." That the
buttons are arranged and labeled does not make them a "literary work," nor does it make
them an "expression" of the abstract "method of operating" a VCR via a set of labeled
buttons. Instead, the buttons are themselves the "method of operating" the VCR.
When a Lotus 1-2-3 user chooses a command, either by highlighting it on the screen or
by typing its first letter, he or she effectively pushes a button. Highlighting the "Print"
command on the screen, or typing the letter "P," is analogous to pressing a VCR button
labeled "Play."
Just as one could not operate a buttonless VCR, it would be impossible to operate Lotus
1-2-3 without employing its menu command hierarchy. Thus the Lotus command terms
are not equivalent to the labels on the VCR's buttons, but are instead equivalent to the
buttons themselves. Unlike the labels on a VCR's buttons, which merely make operating
a VCR easier by indicating the buttons' functions, the Lotus menu commands are
essential to operating Lotus 1-2-3. Without the menu commands, there would be no way
to "push" the Lotus buttons, as one could push unlabeled VCR buttons. While Lotus
could probably have designed a user interface for which the command terms were mere
labels, it did not do so here. Lotus 1-2-3 depends for its operation on use of the precise
command terms that make up the Lotus menu command hierarchy.
One might argue that the buttons for operating a VCR are not analogous to the
commands for operating a computer program because VCRs are not copyrightable,
whereas computer programs are. VCRs may not be copyrighted because they do not fit
within any of the @ 102(a) categories of copyrightable works; the closest they come is
"sculptural work." Sculptural works, however, are subject to a "useful-article" exception
whereby "the design of a useful article . . . shall be considered a pictorial, graphic, or
sculptural work only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article." 17 U.S.C. @ 101. A
"useful article" is "an article having an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information." Id. Whatever expression
there may be in the arrangement of the parts of a VCR is not capable of existing
separately from the VCR itself, so an ordinary VCR would not be copyrightable.
Computer programs, unlike VCRs, are copyrightable as "literary works." 17 U.S.C. @
102(a). Accordingly, one might argue, the "buttons" used to operate a computer program
are not like the buttons used to operate a VCR, for they are not subject to a useful-article
exception. The response, of course, is that the arrangement of buttons on a VCR would
not be copyrightable even without a useful-article exception, because the buttons are an
uncopyrightable "method of operation." Similarly, the "buttons" of a computer program
are also an uncopyrightable "method of operation."
That the Lotus menu command hierarchy is a "method of operation" becomes clearer
when one considers program compatibility. Under Lotus's theory, if a user uses several
different programs, he or she must learn how to perform the same operation in a
different way for each program used. For example, if the user wanted the computer to
print material, then the user would have to learn not just one method of operating the
computer such that it prints, but many different methods. We find this absurd. The fact
that there may be many different ways to operate a computer program, or even many
different ways to operate a computer program using a set of hierarchically arranged
command terms, does not make the actual method of operation chosen copyrightable; it
still functions as a method for operating the computer and as such is uncopyrightable.
Consider also that users employ the Lotus menu command hierarchy in writing macros.
Under the district court's holding, if the user wrote a macro to shorten the time needed to
perform a certain operation in Lotus 1-2-3, the user would be unable to use that macro to
shorten the time needed to perform that same operation in another program. Rather, the
user would have to rewrite his or her macro using that other program's menu command
hierarchy. This is despite the fact that the macro is clearly the user's own work product.
We think that forcing the user to cause the computer to perform the same operation in a
different way ignores Congress's direction in @ 102(b) that "methods of operation" are
not copyrightable. That programs can offer users the ability to write macros in many
different ways does not change the fact that, once written, the macro allows the user to
perform an operation automatically. As the Lotus menu command hierarchy serves as
the basis for Lotus 1-2-3 macros, the Lotus menu command hierarchy is a "method of
operation."
In holding that expression that is part of a "method of operation" cannot be copyrighted,
we do not understand ourselves to go against the Supreme Court's holding in Feist. In
Feist, the Court explained:
The primary objective of copyright is not to reward the labor of authors, but to promote
the Progress of Science and useful Arts. To this end, copyright assures authors the right
to their original expression, but encourages others to build freely upon the ideas and
information conveyed by a work.
Feist, 499 U.S. at 349-50 (quotations and citations omitted). We do not think that the
Court's statement that "copyright assures authors the right to their original expression"
indicates that all expression is necessarily copyrightable; while original expression is
necessary for copyright protection, we do not think that it is alone sufficient. Courts
must still inquire whether original expression falls within one of the categories
foreclosed from copyright protection by @ 102(b), such as being a "method of
operation."
We also note that in most contexts, there is no need to "build" upon other people's
expression, for the ideas conveyed by that expression can be conveyed by someone else
without copying the first author's expression. Our holding that methods of operation are
not limited to abstractions goes against Autoskill, 994 F.2d at 1495 n.23, in which the
Tenth Circuit rejected the defendant's argument that the keying procedure used in a
computer program was an uncopyrightable "procedure" or "method of operation" under
@ 102(b). The program at issue, which was designed to test and train students with
reading deficiencies, id. at 1481, required students to select responses to the program's
queries "by pressing the 1, 2, or 3 keys." Id. at 1495 n.23. The Tenth Circuit held that,
"for purposes of the preliminary injunction, . . . the record showed that [this] keying
procedure reflected at least a minimal degree of creativity," as required by Feist for
copyright protection. Id. As an initial matter, we question whether a programmer's
decision to have users select a response by pressing the 1, 2, or 3 keys is original. More
importantly, however, we fail to see how "a student selecting a response by pressing the
1, 2, or 3 keys," id., can be anything but an unprotectable method of operation.[14]
III. Conclusion
Because we hold that the Lotus menu command hierarchy is uncopyrightable subject
matter, we further hold that Borland did not infringe Lotus's copyright by copying it.
Accordingly, we need not consider any of Borland's affirmative defenses. The judgment
of the district court is
Reversed.
Concurrence follows. BOUDIN, Circuit Judge, concurring. The importance of this case,
and a slightly different emphasis in my view of the underlying problem, prompt me to
add a few words to the majority's tightly focused discussion.
I.
Most of the law of copyright and the "tools" of analysis have developed in the context of
literary works such as novels, plays, and films. In this milieu, the principal problem--
simply stated, if difficult to resolve--is to stimulate creative expression without unduly
limiting access by others to the broader themes and concepts deployed by the author.
The middle of the spectrum presents close cases; but a "mistake" in providing too much
protection involves a small cost: subsequent authors treating the same themes must take
a few more steps away from the original expression.
The problem presented by computer programs is fundamentally different in one respect.
The computer program is a means for causing something to happen; it has a mechanical
utility, an instrumental role, in accomplishing the world's work. Granting protection, in
other words, can have some of the consequences of patent protection in limiting other
people's ability to perform a task in the most efficient manner. Utility does not bar
copyright (dictionaries may be copyrighted), but it alters the calculus.
Of course, the argument for protection is undiminished, perhaps even enhanced, by
utility: if we want more of an intellectual product, a temporary monopoly for the creator
provides incentives for others to create other, different items in this class. But the "cost"
side of the equation may be different where one places a very high value on public
access to a useful innovation that may be the most efficient means of performing a given
task. Thus, the argument for extending protection may be the same; but the stakes on the
other side are much higher.
It is no accident that patent protection has preconditions that copyright protection does
not--notably, the requirements of novelty and non-obviousness--and that patents are
granted for a shorter period than copyrights. This problem of utility has sometimes
manifested itself in copyright cases, such as Baker v. Selden, 101 U.S. 99 (1879), and
been dealt with through various formulations that limit copyright or create limited rights
to copy. But the case law and doctrine addressed to utility in copyright have been brief
detours in the general march of copyright law.
Requests for the protection of computer menus present the concern with fencing off
access to the commons in an acute form. A new menu may be a creative work, but over
time its importance may come to reside more in the investment that has been made by
users in learning the menu and in building their own mini-programs--macros--in reliance
upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY
keyboard dominates the market because that is what everyone has learned to use. See P.
David, CLIO and the Economics of QWERTY, 75 Am. Econ. Rev. 332 (1985). The
QWERTY keyboard is nothing other than a menu of letters.
Thus, to assume that computer programs are just one more new means of expression,
like a filmed play, may be quite wrong. The "form"--the written source code or the menu
structure depicted on the screen--look hauntingly like the familiar stuff of copyright; but
the "substance" probably has more to do with problems presented in patent law or, as
already noted, in those rare cases where copyright law has confronted industrially useful
expressions. Applying copyright law to computer programs is like assembling a jigsaw
puzzle whose pieces do not quite fit.
All of this would make no difference if Congress had squarely confronted the issue, and
given explicit directions as to what should be done. The Copyright Act of 1976 took a
different course. While Congress said that computer programs might be subject to
copyright protection, it said this in very general terms; and, especially in @ 102(b),
Congress adopted a string of exclusions that if taken literally might easily seem to
exclude most computer programs from protection. The only detailed prescriptions for
computers involve narrow issues (like back-up copies) of no relevance here.
Of course, one could still read the statute as a congressional command that the familiar
doctrines of copyright law be taken and applied to computer programs, in cookie cutter
fashion, as if the programs were novels or play scripts. Some of the cases involving
computer programs embody this approach. It seems to me mistaken on two different
grounds: the tradition of copyright law, and the likely intent of Congress.
The broad-brush conception of copyright protection, the time limits, and the formalities
have long been prescribed by statute. But the heart of copyright doctrine--what may be
protected and with what limitations and exceptions--has been developed by the courts
through experience with individual cases. B. Kaplan, An Unhurried View of Copyright
40 (1967). Occasionally Congress addresses a problem in detail. For the most part the
interstitial development of copyright through the courts is our tradition.
Nothing in the language or legislative history of the 1976 Act, or at least nothing brought
to our attention, suggests that Congress meant the courts to abandon this case-by-case
approach. Indeed, by setting up @ 102(b) as a counterpoint theme, Congress has
arguably recognized the tension and left it for the courts to resolve through the
development of case law. And case law development is adaptive: it allows new problems
to be solved with help of earlier doctrine, but it does not preclude new doctrines to meet
new situations.
II.
In this case, the raw facts are mostly, if not entirely, undisputed. Although the inferences
to be drawn may be more debatable, it is very hard to see that Borland has shown any
interest in the Lotus menu except as a fall-back option for those users already committed
to it by prior experience or in order to run their own macros using 1-2-3 commands. At
least for the amateur, accessing the Lotus menu in the Borland Quattro or Quattro Pro
program takes some effort.
Put differently, it is unlikely that users who value the Lotus menu for its own sake--
independent of any investment they have made themselves in learning Lotus' commands
or creating macros dependent upon them--would choose the Borland program in order to
secure access to the Lotus menu. Borland's success is due primarily to other features. Its
rationale for deploying the Lotus menu bears the ring of truth.
Now, any use of the Lotus menu by Borland is a commercial use and deprives Lotus of a
portion of its "reward," in the sense that an infringement claim if allowed would increase
Lotus' profits. But this is circular reasoning: broadly speaking, every limitation on
copyright or privileged use diminishes the reward of the original creator. Yet not every
writing is copyrightable or every use an infringement. The provision of reward is one
concern of copyright law, but it is not the only one. If it were, copyrights would be
perpetual and there would be no exceptions.
The present case is an unattractive one for copyright protection of the menu. The menu
commands (e.g., "print," "quit") are largely for standard procedures that Lotus did not
invent and are common words that Lotus cannot monopolize. What is left is the
particular combination and sub-grouping of commands in a pattern devised by Lotus.
This arrangement may have a more appealing logic and ease of use than some other
configurations; but there is a certain arbitrariness to many of the choices.
If Lotus is granted a monopoly on this pattern, users who have learned the command
structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a
typist who has learned the QWERTY keyboard would be the captive of anyone who had
a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3
has had such sway in the market that it has represented the de facto standard for
electronic spreadsheet commands. So long as Lotus is the superior spreadsheet--either in
quality or in price--there may be nothing wrong with this advantage.
But if a better spreadsheet comes along, it is hard to see why customers who have
learned the Lotus menu and devised macros for it should remain captives of Lotus
because of an investment in learning made by the users and not by Lotus. Lotus has
already reaped a substantial reward for being first; assuming that the Borland program is
now better, good reasons exist for freeing it to attract old Lotus customers: to enable the
old customers to take advantage of a new advance, and to reward Borland in turn for
making a better product. If Borland has not made a better product, then customers will
remain with Lotus anyway.
Thus, for me the question is not whether Borland should prevail but on what basis.
Various avenues might be traveled, but the main choices are between holding that the
menu is not protectable by copyright and devising a new doctrine that Borland's use is
privileged. No solution is perfect and no intermediate appellate court can make the final
choice.
To call the menu a "method of operation" is, in the common use of those words, a
defensible position. After all, the purpose of the menu is not to be admired as a work of
literary or pictorial art. It is to transmit directions from the user to the computer, i.e., to
operate the computer. The menu is also a "method" in the dictionary sense because it is a
"planned way of doing something," an "order or system," and (aptly here) an "orderly or
systematic arrangement, sequence or the like." Random House Webster's College
Dictionary 853 (1991).
A different approach would be to say that Borland's use is privileged because, in the
context already described, it is not seeking to appropriate the advances made by Lotus'
menu; rather, having provided an arguably more attractive menu of its own, Borland is
merely trying to give former Lotus users an option to exploit their own prior investment
in learning or in macros. The difference is that such a privileged use approach would not
automatically protect Borland if it had simply copied the Lotus menu (using different
codes), contributed nothing of its own, and resold Lotus under the Borland label.
The closest analogue in conventional copyright is the fair use doctrine. E.g., Harper &
Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985). Although invoked by
Borland, it has largely been brushed aside in this case because the Supreme Court has
said that it is "presumptively" unavailable where the use is a "commercial" one. See id.
at 562. In my view, this is something less than a definitive answer; "presumptively" does
not mean "always" and, in any event, the doctrine of fair use was created by the courts
and can be adapted to new purposes.
But a privileged use doctrine would certainly involve problems of its own. It might more
closely tailor the limits on copyright protection to the reasons for limiting that
protection; but it would entail a host of administrative problems that would cause cost
and delay, and would also reduce the ability of the industry to predict outcomes. Indeed,
to the extent that Lotus' menu is an important standard in the industry, it might be argued
that any use ought to be deemed privileged.
In sum, the majority's result persuades me and its formulation is as good, if not better,
than any other that occurs to me now as within the reach of courts. Some solutions (e.g.,
a very short copyright period for menus) are not options at all for courts but might be for
Congress. In all events, the choices are important ones of policy, not linguistics, and they
should be made with the underlying considerations in view.
Footnotes
1 Judge Keeton presided over both the Paperback litigation and this case.
2 Lotus 1-2-3 utilizes a two-line menu; the top line lists the commands from which the
user may choose, and the bottom line displays what Lotus calls its "long prompts." The
long prompts explain, as a sort of "help text," what the highlighted menu command will
do if entered. For example, the long prompt for the "Worksheet" command displays the
submenu that the "Worksheet" command calls up; it reads "Global, Insert, Delete,
Column, Erase, Titles, Window, Status, Page." The long prompt for the "Copy"
command explains what function the "Copy" command will perform: "Copy a cell or
range of cells." The long prompt for the "Quit" command reads, "End 1-2-3 session
(Have you saved your work?)."
Prior to trial, the parties agreed to exclude the copying of the long prompts from the
case; Lotus agreed not to contend that Borland had copied the long prompts, Borland
agreed not to argue that it had not copied the long prompts, and both sides agreed not to
argue that the issue of whether Borland had copied the long prompts was material to any
other issue in the case. See Borland III, 831 F. Supp. at 208.
3 Because Borland's programs could no longer display the Lotus menu command
hierarchy to users, the Key Reader did not allow debugging or modification of macros,
nor did it permit the execution of most interactive macros.
4 See Borland IV, 831 F. Supp. at 226-27, for a more detailed explanation of macros and
the Key Reader.
7 We consider the Altai test because both parties and many of the amici focus on it so
heavily. Borland, in particular, is highly critical of the district court for not employing
the Altai test. Borland does not, however, indicate how using that test would have been
dispositive in Borland's favor. Interestingly, Borland appears to contradict its own
reasoning at times by criticizing the applicability of the Altai test.
8 We recognize that Altai never states that every work contains a copyrightable "nugget"
of protectable expression. Nonetheless, the implication is that for literal copying, "it is
not necessary to determine the level of abstraction at which similarity ceases to consist
of an 'expression of ideas,' because literal similarity by definition is always a similarity
as to the expression of ideas." 3 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright @ 13.03[A](2) (1993).
9 As the Lotus long prompts are not before us on appeal, we take no position on their
copyrightability, although we do note that a strong argument could be made that the brief
explanations they provide "merge" with the underlying idea of explaining such
functions. See Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967)
(when the possible ways to express an idea are limited, the expression "merges" with the
idea and is therefore uncopyrightable; when merger occurs, identical copying is
permitted).
10 As they are not before us on appeal, we take no position on whether the Lotus 1-2-3
screen displays constitute original expression capable of being copyrighted.
11 Because the Lotus 1-2-3 code is not before us on appeal, we take no position on
whether it is copyrightable. We note, however, that original computer codes generally
are protected by copyright. See, e.g., Altai, 982 F.2d at 702 ("It is now well settled that
the literal elements of computer programs, i.e., their source and object codes, are the
subject of copyright protection.") (citing cases).
12 We think that the Altai test would contemplate this being the initial inquiry.
13 When there are a limited number of ways to express an idea, however, the expression
"merges" with the idea and becomes uncopyrightable. Morrissey, 379 F.2d at 678-79.
14 The Ninth Circuit has also indicated in dicta that "menus, and keystrokes" may be
copyrightable. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir.),
cert. denied, BB Asset Management, Inc. v. Symantec Corp., 113 S. Ct. 198 (1992). In
that case, however, the plaintiff did not show that the defendant had copied the plaintiff's
menus or keystrokes, so the court was not directly faced with whether the menus or
keystrokes constituted an unprotectable method of operation. Id.