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G.R. No. 148222 August 15,2003
PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,
vs.
SHOEMART,INCORPORATED,andNORTH EDSA MARKETING,INCORPORATED, Respondents.
CORONA, J.:
In the instant petition for review on certiorari under Rule 45 of the Rules of Court, petitioner Pearl & Dean
(Phil.) Inc. (P & D) assails the May 22, 2001 decision1 of the Court of Appeals reversing the October 31, 1996
decision2of the Regional Trial Court of Makati, Branch 133, in Civil Case No. 92-516 which declared private
respondents Shoemart Inc. (SMI) and North Edsa Marketing Inc. (NEMI) liable for infringement of trademark
and copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision ofthe CourtofAppeals3 contained a summary ofthis dispute:
"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising
display units simply referred to as light boxes. These units utilize specially printed posters sandwiched
between plastic sheets and illuminated with back lights. Pearl and Dean was able to secure a Certificate of
CopyrightRegistration dated January 20, 1981 over these illuminated display units.The advertising light boxes
were marketed under the trademark "Poster Ads". The application for registration of the trademark was filed
with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983, but was approved only
on September 12, 1988, per Registration No. 41165. From 1981 to about 1988, Pearl and Dean employed the
servicesofMetro Industrial Services to manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM City North Edsa. Since SM City North Edsawas under construction at that
time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean agreed. On
September 11, 1985, Pearl and Dean’s General Manager, Rodolfo Vergara, submitted for signature the
contractscovering SM Cubao and SM Makati to SMI’s Advertising Promotions and Publicity Division Manager,
RamonlitoAbano. Only the contract for SM Makati, however, was returned signed. On October 4, 1985,
Vergara wrote Abano inquiring about the other contract and reminding him that their agreement for installation
of lightboxes was notonly for its SM Makati branch, butalso for SM Cubao. SMI did notbother to reply.
Instead, in a letter dated January 14, 1986, SMI’s house counsel informed Pearl and Dean that it was
rescinding the contract for SM Makati due to non-performance of the terms thereof. In his reply dated February
17, 1986, Vergara protested the unilateral action of SMI, saying it was without basis. In the same letter, he
pushed for the signing ofthe contractfor SM Cubao.
Twoyears later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to fabricate its
display units, offered to construct light boxes for Shoemart’s chain of stores. SMI approved the proposal and
ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its contract with Metro
Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising Corporation to make the
light boxes. Some 300 units were fabricated in 1991. These were delivered on a staggered basis and installed
at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exactcopies of its light boxes were installed at SM
City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that aside from
the two (2) reported SM branches, light boxes similar to those it manufactures were also installed in two (2)
other SM stores. It further discovered that defendant-appellant North Edsa Marketing Inc. (NEMI), through its
marketing arm, Prime Spots Marketing Services, was set up primarily to sell advertising space in lighted
display units located in SMI’sdifferentbranches.Pearl and Dean noted thatNEMIis a sister company ofSMI.
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI
enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments. It
also demanded the discontinued use of the trademark "Poster Ads," and the payment to Pearl and Dean of
compensatory damagesin the amountofTwenty MillionPesos(P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the leasing of two hundred twenty-four (224) light boxes
and NEMI took down its advertisements for "Poster Ads" from the lighted display units in SMI’s stores.
Claiming that both SMI and NEMI failed to meet all its demands, Pearl and Dean filed this instant case for
infringementoftrademark and copyright, unfair competition and damages.
In denying the charges hurled against it, SMI maintained that it independently developed its poster panels
using commonly known techniques and available technology, without notice of or reference to Pearl and
Dean’s copyright. SMI noted that the registration of the mark "Poster Ads" was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word "Poster Ads" is a generic term which

2. cannot be appropriated as a trademark, and, as such, registration ofsuch mark is invalid. It also stressed that
Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its advertising display units
contained no copyright notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl and Dean had no
cause ofaction against it and that the suitwas purely intended to malign SMI’s good name. On this basis, SMI,
aside from praying for the dismissal of the case, also counterclaimed for moral, actual and exemplary
damages and for the cancellation of Pearl and Dean’s Certification ofCopyright Registration No. PD-R-2558
dated January 20, 1981 and Certificate ofTrademarkRegistration No.4165 dated September 12, 1988.
NEMI, for its part, denied having manufactured, installed or used any advertising display units, nor having
engaged in the business of advertising. It repleaded SMI’s averments, admissions and denials and prayed for
similar reliefs and counterclaims asSMI."
The RTC ofMakati City decided in favor ofP & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement ofcopyright under
Section 2 of PD 49, as amended, and infringement of trademark under Section 22 of RA No. 166, as
amended, and are hereby penalized under Section 28 of PD 49, as amended, and Sections 23 and 24 ofRA
166, as amended. Accordingly,defendants are hereby directed:
(1) to pay plaintiffthe following damages:
(a) actual damages - P16,600,000.00, representing profits derived by defendants as a result of infringement of
plaintiff’s copyrightfrom 1991 to 1992
(b) moral damages - P1,000.000.00
(c) exemplary damages- P1,000,000.00
(d) attorney’s fees - P1,000,000.00
(e) costs ofsuit;
(2) to deliver, under oath, for impounding in the National Library, all light boxes of SMIwhich were fabricated
by Metro Industrial Servicesand EYDRainbow Advertising Corporation;
(3) to deliver, under oath, to the National Library, all filler-posters using the trademark "Poster Ads", for
destruction; and
(4) to permanently refrain from infringing the copyrighton plaintiff’s lightboxes and its trademark "Poster Ads".
Defendants’ counterclaims are hereby ordered dismissed for lack ofmerit.
SO ORDERED.4
On appeal, however, the CourtofAppeals reversedthe trial court:
Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable class
"O" work, we have to agree with SMIwhen it posited that whatwas copyrighted were the technical drawings
only, and notthe lightboxes themselves,thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over the drawings like plaintiff-
appellant’s will not extend to the actual object. It has so been held under jurisprudence, ofwhich the leading
case is Baker vs. Selden (101 U.S. 841 (1879). In that case, Selden had obtained a copyright protection for a
book entitled "Selden’s Condensed Ledger or Bookkeeping Simplified" which purported to explain a new
system of bookkeeping. Included as part of the book were blank forms and illustrations consisting of ruled lines
and headings, specially designed for use in connection with the system explained in the work. These forms
showed the entire operation of a day or a week or a month on a single page, or on two pages following each
other. The defendant Baker then produced forms which were similar to the forms illustrated in Selden’s
copyrighted books. The Court held that exclusivity to the actual forms is not extended by a copyright. The
reason was that "to grant a monopoly in the underlying artwhen no examination of its novelty has ever been
made would be a surprise and a fraud upon the public; that is the province of letters patent, not of copyright."
And that is precisely the point. No doubt aware that its alleged original design would never pass the rigorous
examination of a patent application, plaintiff-appellant fought to foist a fraudulent monopoly on the public by
conveniently resorting to a copyright registration which merely employs a recordal system without the benefit
of an in-depth examination ofnovelty.
The principle in Baker vs. Seldenwas likewise applied in Muller vs. Triborough Bridge Authority [43 F. Supp.
298 (S.D.N.Y. 1942)]. In this case, Muller had obtained a copyright over an unpublished drawing entitled
"Bridge Approach – the drawing showed a novel bridge approach to unsnarl traffic congestion". The defendant
constructed a bridge approach which was alleged to be an infringement of the new design illustrated in
plaintiff’s drawings. In this case itwas held that protection of the drawing does not extend to the unauthorized
duplication of the object drawn because copyright extends only to the description or expression of the object
and not to the object itself. It does not preventone from using the drawings to construct the object portrayed in
the drawing.
In two other cases, Imperial Homes Corp. v. Lamont, 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379
F. 2d 84, itwas held that there is no copyright infringementwhen one who, without being authorized, uses a
copyrighted architectural plan to construct a structure. This is because the copyright does not extend to the
structures themselves.
In fine, we cannot find SMI liable for infringing Pearl and Dean’s copyright over the technical drawings of the
latter’s advertising display units.
xxxxxxxxx
The Supreme Court trenchantly held in Faberge, Incorporated vs. Intermediate Appellate Court that the
protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the
certificate of registration, following the clear mandate conveyed by Section 20 of Republic Act 166, as
amended, otherwise known asthe Trademark Law,which reads:
SEC. 20.Certification of registration prima facie evidence of validity.- A certificate of registration of a mark or
trade-name shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the
mark or trade-name, and of the registrant’s exclusive right to use the same in connection with the goods,
business or servicesspecified in the certificate, subject to any conditions and limitations stated therein."
(underscoring supplied)
The records show that on June 20, 1983, Pearl and Dean applied for the registration of the trademark "Poster
Ads" with the Bureau of Patents, Trademarks, and Technology Transfer. Said trademark was recorded in the
Principal Register on September 12, 1988 under Registration No. 41165 covering the following products:
stationeries such as letterheads, envelopes and calling cardsand newsletters.

3. With this as factual backdrop, we see no legal basis to the finding of liability on the part of the defendants-
appellants for their use of the words "Poster Ads", in the advertising display units in suit. Jurisprudence has
interpreted Section 20 of the Trademark Law as "an implicit permission to a manufacturer to venture into the
production of goods and allow that producer to appropriate the brand name of the senior registrant on goods
other than those stated in the certificate of registration." The Supreme Court further emphasized the restrictive
meaning ofSection 20 when itstated, through Justice Conrado V.Sanchez,that:
Really, if the certificate of registration were to be deemed as including goods not specified therein, then a
situation may arisewhereby an applicant may be tempted to register a trademark on any and all goods which
his mind may conceive even if he had never intended to use the trademark for the said goods. We believe that
such omnibus registration is notcontemplated by our Trademark Law.
While we do not discount the striking similarity between Pearl and Dean’s registered trademark and
defendants-appellants’ "Poster Ads" design, as well as the parallel use by which said words were used in the
parties’ respective advertising copies, we cannot find defendants-appellants liable for infringement of
trademark. "Poster Ads" was registered by Pearl and Dean for specific use in its stationeries, in contrast to
defendants-appellants who used the samewords in their advertising display units. Why Pearl and Dean limited
the use of its trademark to stationeries is simply beyond us. But, having already done so, itmuststand by the
consequence ofthe registration which ithad caused.
xxxxxxxxx
We are constrained to adopt the view of defendants-appellants that the words "Poster Ads" are a simple
contraction of the generic term poster advertising. In the absence of any convincing proof that "Poster Ads"
has acquired a secondary meaning in this jurisdiction,we find that Pearl and Dean’s exclusive right to the use
of "Poster Ads" is limited to whatis written in its certificate ofregistration, namely,stationeries.
Defendants-appellants cannotthus be held liable for infringementofthe trademark "Poster Ads".
There being no finding of either copyright or trademark infringement on the part of SMI and NEMI, the
monetary award granted by the lowercourtto Pearl and Dean has no leg to stand on.
xxxxxxxxx
WHEREFORE, premises considered, the assailed decision is REVERSED and SET ASIDE, and another is
rendered DISMISSING the complaintand counterclaimsin the above-entitled case for lack ofmerit.5
Dissatisfiedwith the above decision, petitioner P & D filed the instant petition assigning the following errors for
the Court’s consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO COPYRIGHT
INFRINGEMENT WAS COMMITTEDBY RESPONDENTS SMANDNEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT NO INFRINGEMENT
OF PEARL & DEAN’S TRADEMARK "POSTER ADS" WAS COMMITTED BY RESPONDENTS
SM ANDNEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING THE AWARD OF THE
TRIAL COURT, DESPITE THE LATTER’S FINDING, NOT DISPUTED BY THE HONORABLE
COURT OF APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS NEGOTIATION OF
ADVERTISING CONTRACTS WITHPEARL & DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT HOLDING RESPONDENTS SM
AND NEMI LIABLE TO PEARL & DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES,
ATTORNEY’SFEES ANDCOSTS OF SUIT.6
ISSUES
In resolving this very interesting case, we are challenged once again to put into proper perspective four main
concerns of intellectual property law — patents, copyrights, trademarks and unfair competition arising from
infringementofany ofthe first three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising display unit (light box) are granted
copyright protection (copyright certificate of registration) by the National Library, is the light box
depicted in such engineering drawings ipso facto also protected by such copyright?
(2) or should the light box be registered separately and protected by a patent issued by the
Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Office) — in
addition to the copyrightofthe engineering drawings?
(3) can the owner of a registered trademark legally prevent others from using such trademark if it
is a mere abbreviation ofa term descriptive ofhis goods,servicesor business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI had the
units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioner’s
position was premised on its belief that its copyright over the engineering drawings extended ipso facto to the
light boxes depicted or illustrated in said drawings. In ruling that there was no copyright infringement, the Court
of Appeals held that the copyrightwas limited to the drawings alone and not to the light box itself. We agree
with the appellate court.
First, petitioner’s application for a copyright certificate — aswell as CopyrightCertificate No. PD-R2588 issued
by the National Library on January 20, 1981 — clearly stated that itwas for a class "O" work under Section 2
(O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. Said Section 2
expressly enumerated the workssubjectto copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of
the following works:
xxx x xx x xx
(O) Prints, pictorial illustrations, advertising copies,labels, tags,and box wraps;
xxx x xx x xx
Although petitioner’s copyright certificate was entitled "Advertising Display Units" (which depicted the box -type
electrical devices),its claimofcopyrightinfringementcannotbe sustained.
Copyright, in the strictsense of the term, is purely a statutory right. Being a mere statutory grant, the rights are
limited to what the statute confers. Itmay be obtained and enjoyed only with respect to the subjects and by the

4. persons, and on terms and conditions specified in the statute.7 Accordingly, it can cover only the works falling
within the statutoryenumeration or description.8
P & D secured its copyright under the classification class "O" work. This being so, petitioner’s copyright
protection extended only to the technical drawings and not to the light box itself because the latter was not at
all in the category of "prints, pictorial illustrations, advertising copies, labels, tags and box wraps." Stated
otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only to
the technical drawings within the category of "pictorial illustrations." It could not have possibly stretched out to
include the underlying light box. The strict application9 of the law’s enumeration in Section 2 prevents us from
giving petitioner even a little leeway, that is, even if its copyright certificate was entitled "Advertising Display
Units." What the law does not include, it excludes, and for the good reason: the light box was not a literary or
artistic piecewhich could be copyrighted under the copyright law. And no less clearly, neither could the lack of
statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the
copyrightcertificate issued by the National Library as "Advertising Display Units."
In fine, if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from P & D,
then no doubt they would have been guilty of copyright infringement. But this was not the case. SMI’s and
NEMI’s acts complained of by P & D were to have units similar or identical to the light box illustrated in the
technical drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out to different
advertisers.Was this an infringementofpetitioner’s copyrightover the technicaldrawings? We do notthink so.
During the trial, the president of P & D himself admitted that the light box was neither a literary not an artistic
work but an "engineering or marketing invention."10 Obviously, there appeared to be some confusion regarding
what ought or ought not to be the proper subjects of copyrights, patents and trademarks. In the leading case
of Kho vs. Court of Appeals,11we ruled that these three legal 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:
Trademark, copyright and patents are different intellectual property rights thatcannotbe 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.
ON THE ISSUE OF PATENTINFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of the light boxeswithout
license from petitioner, private respondents cannot be held legally liable for infringement of P & D’s copyright
over itstechnical drawings of the said light boxes, should they be liable instead for infringement of patent? We
do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired no
patent rights which could have protected its invention, if in fact it really was. And because it had no patent,
petitioner could not legally prevent anyone from manufacturing or commercially using the contraption.
In Creser Precision Systems, Inc. vs. Court of Appeals,12 we held that "there can be no infringement of a
patent until a patent has been issued, since whatever right one has to the invention covered by the patent
arises alone from the grant of patent. xxx (A)n inventor has no common law right to a monopoly of his
invention. He has the right to make use of andvend his invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use itwith impunity. A patent, however, gives the inventor the
right to exclude all others. As a patentee, he has the exclusive right of making, selling or using the
invention.13 On the assumption that petitioner’s advertising units were patentable inventions, petitioner
revealed them fully to the public by submitting the engineering drawingsthereofto the National Library.
To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs
and technologies into the public domain through disclosure.14 Ideas, once disclosed to the public without the
protection of a valid patent, are subjectto appropriation withoutsignificantrestraint.15
On one side ofthe coin is the publicwhichwill benefit from new ideas; on the other are the inventors who must
be protected. As held in Bauer &Cie vs. O’Donnel,16 "The act secured to the inventor the exclusive right to
make use, and vend the thing patented, and consequently to prevent others from exercising like privileges
without the consent of the patentee. It was passed for the purpose of encouraging useful invention and
promoting new and useful inventions by the protection and stimulation given to inventive genius, and was
intended to secure to the public, after the lapse of the exclusive privileges granted the benefit of such
inventions and improvements."
The law attempts to strike an ideal balance betweenthe two interests:
"(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of
new useful and non-obvious advances in technology and design, in return for the exclusive right to practice the
invention for a number ofyears. The inventor may keep his invention secret and reap its fruits indefinitely. In
consideration of its disclosure and the consequent benefit to the community, the patent is granted. An
exclusive enjoyment is guaranteed him for 17 years, but upon the expiration of that period, the knowledge of
the invention inures to the people, who are thus enabled to practice itand profitby its use."17
The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention; second, it
promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the
invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free use ofthe public."18
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-depth
investigation is required because "in rewarding a useful invention, the rights and welfare of the community
mustbe fairly dealtwith and effectively guarded. To that end, the prerequisites to obtaining a patent are strictly
observed and when a patent is issued, the limitations on its exercise are equally strictly enforced. To begin
with, a genuine invention or discovery must be demonstrated lest in the constant demand for new appliances,
the heavy hand oftribute be laid on each slighttechnological advance in art."19
There is no such scrutiny in the case ofcopyrights nor any notice published before its grant to the effect that a
person is claiming the creation of a work. The law confers the copyright from the moment of creation20 and the
copyrightcertificate is issued upon registration with the National Library ofa sworn ex-parte claimofcreation.
Therefore, not having gone through the arduous examination for patents, the petitioner cannot exclude others
from the manufacture, sale or commercial use of the light boxes on the sole basis of its copyright certificate
over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the patent office (IPO) to
scrutinize the light box’s eligibility as a patentable invention. The irony here is that, had petitioner secured a
patent instead, its exclusivity would have been for 17 years only. But through the simplified procedure of
copyright-registration with the National Library —without undergoing the rigor of defending the patentability of
its invention before the IPO and the public — the petitioner would be protected for 50 years. This situation
could nothave been the intention ofthe law.

5. In the oft-cited case of Baker vs. Selden21, the United States Supreme Court held that only the expression of
an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the copyright of a book
which expounded on a new accounting system he had developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant reproduced forms similar to those illustrated in the plaintiff’s
copyrighted book.The US Supreme Courtruled that:
"There is no doubt that awork on the subject of book-keeping, though only explanatory ofwell known systems,
may be the subject of a copyright; but, then, it is claimed only as a book. xxx. But there is a clear distinction
between the books, as such, and the art, which it is, intended to illustrate. The mere statement of the
proposition is so evident that it requires hardly any argument to support it. The same distinction may be
predicated of every other art as well as that of bookkeeping. A treatise on the composition and use of
medicines, be they old or new; on the construction and use of ploughs or watches or churns; or on the mixture
and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of
perspective, would be the subject of copyright; but no one would contend that the copyright of the treatise
would give the exclusive right to the art or manufacture described therein. The copyright of the book, if not
pirated from other works, would be valid without regard to the novelty or want of novelty of its subjectmatter.
The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To
give to the author of the book an exclusive property in the art described therein, when no examination
of its novelty has ever been officially made, would be asurprise and a fraud upon the public. That is
the province of letters patent, not of copyright. The claim to an invention of discovery of an art or
manufacture must be subjected to the examination of the Patent Office before an exclusive right
therein can be obtained; anda patent from the government can only secure it.
The difference between the two things, letters patent and copyright, may be illustrated by reference to the
subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of greatvalue in the
healing art. If the discoverer writes and publishes a book on the subject (as regular physicians
generally do), he gains no exclusive right to themanufacture and sale of themedicine; he gives that to
the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a
new art, manufacture or composition of matter. Hemay copyright his book, if he pleases; but that only
secures to him the exclusive right of printing and publishing his book. So of all other inventions or
discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives
no exclusive right to the modes of drawing described, though they may never have been known or used
before. By publishing the book withoutgetting a patentfor the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to
convey instruction in the art, any person may practice and use the art itself which he has described and
illustrated therein. The use of the art is a totally different thing from a publication of the book explaining
it. The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell and use account
books prepared upon the plan set forth in such book. Whether the artmight or might not have been patented,
is a question,which is not before us. Itwas not patented, and is open and free to the use of the public. And, of
course, in using the art, the ruled lines and headings ofaccounts mustnecessarily be used as incidentto it.
The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in the books, which have been made the subject of
copyright. In describing the art, the illustrations and diagrams employed happened to correspond more closely
than usual with the actualwork performed by the operatorwho uses the art. xxx The description of the art in
a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art
itself. The object of the one is explanation; the object of the other is use. The former may be secured
by copyright. The latter can only be secured, if it can be secured at all, by letterspatent." (underscoring
supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark "Poster Ads" which petitioner’s presidentsaid was a
contraction of "poster advertising." P & D was able to secure a trademark certificate for it, but one where the
goods specified were "stationeries such as letterheads, envelopes, calling cards and newsletters."22 Petitioner
admitted it did not commercially engage in or market these goods. On the contrary, it dealt in electrically
operated backlit advertising units and the sale of advertising spaces thereon, which, however, were not at all
specified in the trademark certificate.
Under the circumstances, the Court of Appeals correctly cited Faberge Inc. vs. Intermediate Appellate
Court,23where we, invoking Section 20 of the old Trademark Law, ruled that "the certificate of registration
issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only to
those goods specified in the certificate, subject to any conditions and limitations specified in the certificate x
xx. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others for products which are of a different description."24 Faberge, Inc. was correct and
was in factrecently reiterated in Canon Kabushiki Kaisha vs.Courtof Appeals.25
Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of P & D to secure a
trademark registration for specific use on the light boxes meant that there could not have been any trademark
infringementsince registration was an essential elementthereof.1âwphi1
ON THE ISSUE OF UNFAIRCOMPETITION
If at all, the cause of action should have been for unfair competition, a situation which was possible even if P &
D had no registration.26 However, while the petitioner’s complaint in the RTC also cited unfair competition, the
trial court did not find private respondents liable therefor. Petitioner did not appeal this particular point; hence,
it cannotnow revive its claimofunfair competition.
But even disregarding procedural issues, we nevertheless cannot hold respondents guilty of unfair
competition.
By the nature of things, therecan be no unfair competition under the law on copyrights although it is applicable
to disputes over the use of trademarks. Even a name or phrase incapable of appropriation as a trademark or
tradename may, by long and exclusive use by a business (such that the name or phrase becomes associated
with the business or product in the mind of the purchasing public), be entitled to protection against unfair
competition.27 In this case, there was no evidence that P & D’s use of "Poster Ads" was distinctive or well-
known. As noted by the Court of Appeals, petitioner’s expertwitnesses himself had testified that " ‘Poster Ads’
was too generic a name. So it was difficult to identify itwith any company, honestly speaking."28 This crucial
admission by its own expertwitness that "Poster Ads" could not be associated with P & Dshowed that, in the
mind of the public, the goods and services carrying the trademark "Poster Ads" could not be distinguished
from the goods and servicesofother entities.
This fact also prevented the application of the doctrine ofsecondary meaning. "Poster Ads" was generic and
incapable of being used as a trademark because it was used in the field of poster advertising, the very
business engaged in by petitioner. "Secondary meaning" means that a word or phrase originally incapable of
exclusive appropriation with reference to an article in the market (because it is geographically or otherwise
descriptive) might nevertheless have been used for so long and so exclusively by one producer with reference
to his article that, in the trade and to that branch of the purchasing public, the word or phrase has come to
mean that the article was his property.29 The admission by petitioner’s own expert witness that he himself
could not associate "Poster Ads" with petitioner P & D because it was "too generic" definitely precluded the
application ofthis exception.

6. Having discussed the mostimportantand critical issues,we see no need to belabor the rest.
All told, the Court finds no reversible error committed by the Court of Appeals when it reversed the Regional
Trial CourtofMakati City.
WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated May 22, 2001 is
AFFIRMEDin toto.
SO ORDERED.
G.R. No. 131522 July 19, 1999
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO, petitioners,
vs.
FELICIDAD C. ROBLES and GOODWILLTRADING CO.,INC., respondents.
The case before us is a petition for review oncertiorari 1 to setaside the (a) decision or the Court of Appeals 2,
and (b) the resolution denying petitioners' motion for reconsideration, 3 in which the appellate court affirmed
the trial court's dismissal of the complaint for infringement and/or unfair competition and damages but deleted
the award for attorney'sfees.1âwphi1.nêt
The facts are as follows:
Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering their
published works, produced through their combined resources and efforts, entitled COLLEGE ENGLISH FOR
TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series
1.
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of
another published work entitled "DEVELOPING ENGLISH PROFICIENCY" (DEP for brevity), Books 1 and 2
(1985 edition) which book was covered by copyrights issued to them.
In the course of revising their published works, petitioners scouted and looked around various bookstores to
check on other textbooks dealing with the same subject matter. By chance they came upon the book of
respondent Robles and upon perusal of said book they were surprised to see that the book was strikingly
similar to the contents, scheme ofpresentation,illustrations and illustrative examplesin their own book, CET.
After an itemized examination and comparison of the two books (CET and DEP), petitioners found thatseveral
pages of the respondent's book are similar, if not all together a copy of petitioners' book, which is a case of
plagiarism and copyrightinfringement.
Petitioners then made demands for damages against respondents and also demanded that they cease and
desist from further selling and distributing to the general public the infringed copies of respondent Robles'
works.
However, respondents ignored the demands, hence, on July 7, 1988; petitioners filed with the Regional Trial
Court, Makati, a complaint for "Infringement and/or unfair competition with damages" 4 against private
respondents.5
In the complaint, petitioners alleged that in 1985, respondent Felicidad C. Robles being substantially familiar
with the contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or
transposed certain portions of their book CET. The textual contents and illustrations of CET were literally
reproduced in the book DEP. The plagiarism, incorporation and reproduction of particular portions of the book
CET in the book DEP, without the authority or consent of petitioners, and the misrepresentations of
respondent Robles that the same was her original work and concept adversely affected and substantially
diminished the sale ofthe petitioners' book and caused them actual damagesby way ofunrealized income.
Despite the demands of the petitioners for respondents to desist from committing further acts of infringement
and for respondent to recall DEP from the market, respondents refused. Petitioners asked the court to order
the submission of all copies of the book DEP, together with the molds, plates and films and other materials
used in its printing destroyed, and for respondents to render an accounting of the proceeds of all sales and
profits since the time ofits publication and sale.
Respondent Robles was impleaded in the suit because she authored and directly committed the acts of
infringementcomplained of,while respondent Goodwill Trading Co., Inc. was impleaded as the publisher and
joint co-owner of the copyright certificates of registration covering the two books authored and caused to be
published by respondentRobleswith obvious connivance with one another.
On July 27, 1988, respondent Robles filed a motion for a bill of particulars 6which the trial court approved on
August 17, 1988. Petitioners complied with the desired particularization, and furnished respondentRobles the
specific portions, inclusive of pages and lines, of the published and copyrighted books of the petitioners which
were transposed,lifted, copied and plagiarizedand/or otherwise found their way into respondent'sbook.
On August 1, 1988, respondent Goodwill Trading Co., Inc. filed its answer to the complaint 7 and alleged that
petitioners had no cause of action against Goodwill Trading Co., Inc. since it was not privy to the
misrepresentation, plagiarism, incorporation and reproduction of the portions of the book of petitioners; that
there was an agreement between Goodwill and the respondent Robles that Robles guaranteed Goodwill that
the materials utilized in the manuscriptwere her own or that she had secured the necessary permission from
contributors and sources; that the author assumed sole responsibility and held the publisher without any
liability.
On November 28, 1988, respondent Robles filed her answer 8, and denied the allegations of plagiarism and
copying that petitioners claimed. Respondent stressed that (1) the book DEP is the product of her independent
researches, studies and experiences, and was not a copy of any existing valid copyrighted book; (2) DEP

7. followed the scope and sequence or syllabus which are common to all English grammar writers as
recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS), so any similarity
between the respondents book and that of the petitioners was due to the orientation of the authors to both
works and standards and syllabus; and (3) the similarities may be due to the authors' exercise of the "right to
fair use ofcopyrigthed materials,as guides."
Respondent interposed a counterclaim for damages on the ground that bad faith andmalice attended the filing
of the complaint, because petitioner Habana was professionally jealous and the book DEP replaced CET as
the official textbook ofthe graduate studies departmentofthe Far Eastern University. 9
During the pre-trial conference, the parties agreed to a stipulation of
facts 10 and for the trial court to first resolve the issue of infringement before disposing of the claim for
damages.
After the trial on the merits, on April 23, 1993, the trial courtrendered its judgmentfinding thus:
WHEREFORE, premises considered, the court hereby orders that the complaint filed against defendants
Felicidad Robles and Goodwill Trading Co., Inc. shall be DISMISSED; that said plaintiffs solidarily reimburse
defendant Robles for P20,000.00 attorney's fees and defendant Goodwill for P5,000.00 attorney's fees.
Plaintiffs are liable for costofsuit.
IT IS SO ORDERED.
Done in the City ofManila this 23rd day ofApril, 1993.
(s/t) MARVIE R. ABRAHAM SINGSON
Assisting Judge
S. C. Adm. Order No.124-92 11
On May 14, 1993, petitioners filed their notice of appeal with the trial court 12, and on July 19, 1993, the court
directed its branch clerk ofcourtto forward all the records ofthe case to the CourtofAppeals. 13
In the appeal, petitioners argued that the trial courtcompletely disregarded their evidence and fully subscribed
to the arguments of respondentRobles that the books in issue were purely the product of her researches and
studies and that the copied portions were inspired by foreign authors and as such not subject to copyright.
Petitioners also assailed the findings of the trial court that they were animated by bad faith in instituting the
complaint. 14
On June 27, 1997, the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill
Trading Co., Inc. The relevantportions ofthe decision state:
It must be noted, howev er, that similarity of the allegedly infringed work to the author's or proprietor's
copyrighted work does not of itself establish copyright infringement, especially if the similarity results from the
fact that both works deal with the same subjector have the same common source, asin this case.
Appellee Robles has fully explained that the portion or material of the bookclaimed by appellants to have been
copied or lifted from foreign books. She has duly proven thatmost of the topics or materials contained in her
book, with particular reference to those matters claimed by appellants to have been plagiarized were topics or
matters appearing not only in appellants and her books but also in earlier books on College English, including
foreign books, e.i. Edmund Burke's "Speech on Conciliation", Boerigs' "Competence in English" and
Broughton's, "Edmund Burke'sCollection."
xxxxxxxxx
Appellant's reliance on the last paragraph on Section II is misplaced. Itmust be emphasized that they failed to
prove thattheir books were made sourcesby appellee. 15
The Courtof Appealswas of the view that the award of attorneys' feeswas not proper, since therewas no bad
faith on the partof petitioners Habana et al. in instituting the action againstrespondents.
On July 12, 1997, petitioners filed a motion for reconsideration, 16 however, the Court of Appeals denied the
same in a Resolution 17 dated November 25, 1997.
Hence, this petition.
In this appeal, petitioners submitthatthe appellate courterred in affirming the trial court's decision.
Petitioners raised the following issues: (1) whether or not, despite the apparent textual, thematic and
sequential similarity between DEP and CET, respondents committed no copyright infringement; (2) whether or
not there wasanimusfurandi on the part of respondentwhen they refused to withdraw the copies of CET from
the market despite notice to withdraw the same; and (3) whether or not respondent Robles abused a writer's
rightto fair use, in violation ofSection 11 ofPresidential Decree No.49. 18
We find the petition impressed with merit.
The complaint for copyright infringementwas filed at the time that Presidential Decree No. 49was in force. At
present, all laws dealing with the protection of intellectual property rights have been consolidated and as the
law now stands, the protection of copyrights is governed by Republic Act No. 8293. Notwithstanding the
change in the law, the same principles are reiterated in the new law under Section 177. It provides for the copy
or economic rights ofan owner ofa copyrightas follows:
Sec. 177. Copy or Economic rights. — Subject to the provisions of chapter VIII, copyright or economic rights
shall consistofthe exclusiverightto carry out, authorize or preventthe following acts:
177.1 Reproduction ofthe work or substanlial portion ofthe work;
177.2 Dramatization, translation, adaptation, abridgement, arrangementor other transformation ofthe work;
177.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of
ownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound
recording, a computer program, a compilation of data and other materials or a musical work in graphic form,
irrespective ofthe ownershipofthe original or the copy which is the subjectofthe rental; (n)
177.5 Public display ofthe original or copy ofthe work;

8. 177.6 Public performance ofthe work;and
177.7 Other communication to the public ofthe work 19
The law also provided for the limitations on copyright, thus:
Sec. 184.1 Limitations on copyright. — Notwithstanding the provisions of Chapter V, the following acts shall
not constitute infringementofcopyright:
(a) the recitation or performance of a work, once it has been lawfully made accessible to the public, if done
privately and free of charge or if made strictly for a charitable or religious institution or society; [Sec. 10(1),
P.D. No. 49]
(b) The making of quotations from a published work if they are compatible with fair use and only to the extent
justified for the purpose, including quotations from newspaper articles and periodicals in the form of press
summaries; Provided, that the source and the name of the author, if appearing on the work are mentioned;
(Sec. 11 third par. P.D. 49)
xxxxxxxxx
(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording
of film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair
use: Provided, That thesource and the name of theauthor,if appearing in the workis mentioned; 20
In the above quoted provisions, "work" has reference to literary and artistic creations and this includes books
and other literary, scholarly and scientific works. 21
A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of
CET.
On page 404 of petitioners' Book 1 ofCollege English for Today,the authors wrote:
Items in datesand addresses:
He died on Monday,April 15, 1975.
Miss Reyeslivesin 214 TaftAvenue,
Manila 22
On page 73 of respondents Book 1 Developing English Today,they wrote:
He died on Monday,April 25, 1975.
Miss Reyesaddress is 214 TaftAvenue Manila23
On Page 250 of CET, there is this exampleon parallelismor repetition ofsentence structures,thus:
The proposition is peace. Not peace through the medium ofwar; not peace to be hunted through the labyrinth
of intricate and endless negotiations; not peace to arise outof universal discord, fomented from principle, in all
parts of the empire; not peace to depend on the juridical determination of perplexing questions, or the precise
marking of the boundary of a complex government. It is simple peace; sought in its natural course, and in its
ordinary haunts. Itis peace soughtin the spiritofpeace, and laid in principles purely pacific.
— Edmund Burke, "Speech on Criticism." 24
On page 100 of the book DEP 25, also in the topic of parallel structure and repetition, the same example is
found in toto. The only difference is that petitioners acknowledged the author Edmund Burke, and respondents
did not.
In several other pages 26 the treatment and manner of presentation of the topics of DEP are similar if not a
rehash ofthat contained in CET.
We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of
discussions and examples, and her failure to acknowledge the same in her book is an infringement of
petitioners' copyrights.
When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted
work, or even a large portion of it, be copied. If so much is taken that the value of the original work is
substantially diminished, there is an infringement of copyright and to an injurious extent, the work is
appropriated. 27
In determining the question of infringement, the amount of matter copied from the copyrighted work is an
importantconsideration. To constitute infringement, it is notnecessary that the whole or even a large portion of
the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the
labors of the original author are substantially and to an injurious extent appropriated by another, that is
sufficientin point oflaw to constitute piracy. 28
The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by
an appropriate understanding thereof. Infringement of a copyright is a trespass on a private domain owned
and occupied by the owner of the copyright, and, therefore, protected by law, and infringement ofcopyright, or
piracy, which is a synonymous term in this connection, consists in the doing by any person, without the
consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the
owner ofthe copyright.29
The respondents' claim that the copied portions of the book CET are also found in foreign books and other
grammar books, and that the similarity between her style and that of petitioners can not be avoided since they
come from the same background and orientation may be true. However, in this jurisdiction under Sec 184 of
Republic Act8293 itis provided that:
Limitations on Copyright. Notwithstanding the provisions of Chapter V, the following shall not constitute
infringementofcopyright:
xxxxxxxxx
(c) The making of quotations from a published work if they are compatiblewith fair use and only to the extent
justified for the purpose, including quotations from newspaper articles and periodicals in the form of press
summaries:Provided, Thatthe source and the name ofthe author, ifappearing on the work,are mentioned.

9. A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not
know whether or not he was infringing any copyright; he at least knew thatwhat he was copying was not his,
and he copied athis peril. 30
The next question to resolve is to what extentcan copying be injurious to the author of the book being copied.
Is it enough that there are similarities in some sections of the books or large segments of the books are the
same?
In the case at bar, there is no question that petitioners presented several pages of the books CET and DEP
that more or less had the same contents. It may be correct that the books being grammar books may contain
materials similar as to some technical contents with other grammar books, such as the segment about the
"Author Card". However, the numerous pages that the petitioners presented showing similarity in the style and
the manner the books were presented and the identical examples can not pass as similarities merely because
of technical consideration.
The respondents claim that their similarity in style can be attributed to the fact that both of them were exposed
to the APCAS syllabus and their respective academic experience, teaching approach and methodology are
almostidentical because they were ofthe same background.
However, we believe that even if petitioners and respondent Robleswere of the same background in terms of
teaching experience and orientation, it is not an excuse for them to be identical even in examples contained in
their books. The similarities in examples and material contents are so obviously present in this case. How can
similar/identical examples notbe considered asa mark ofcopying?
We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwill
bookstores the book DEP upon learning of petitioners' complaint while pharisaically denying petitioners'
demand. Itwas further noted thatwhen the book DEP was re-issued as a revised version, all the pages cited
by petitioners to contain portion oftheir book College English for Today were eliminated.
In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious
effect". Here, the injury consists in that respondent Robles lifted from petitioners' book materials thatwere the
result of the latter's research work and compilation and misrepresented them as her own. She circulated the
book DEP for commercial use did notacknowledged petitioners asher source.
Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles
committed. Petitioners'work as authors is the product of their long and assiduous research and for another to
represent it as her own is injury enough. In copyrighting books the purpose is to give protection to the
intellectual productof an author.This is precisely what the law oncopyright protected, under Section 184.1 (b).
Quotations from a published work if they are compatible with fair use and only to the extent justified by the
purpose, including quotations from newspaper articles and periodicals in the form of press summaries are
allowed provided thatthe source and the name ofthe author, ifappearing on the work,are mentioned.
In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners
Habana et.al. as the source of the portions of DEP. The final product of an author's toil is her book. To allow
another to copy the book withoutappropriate acknowledgmentis injury enough.
WHEREFORE, the petition is hereby GRANTED. The decision and resolution of the Court ofAppeals in CA-G.
R. CV No. 44053 are SET ASIDE. The case is ordered remanded to the trial court for further proceedings to
receive evidence of the parties to ascertain the damages caused and sustained by petitioners and to render
decision in accordance with the evidence submitted to it.
SO ORDERED.
Kapunan and Ynares-Santiago,JJ.,concur.
Davide, Jr.,C.J., I dissent,pleasesee dissenting opinion.
Melo, J., no part,personal reason.
Separate Opinions
DAVIDE,JR., C.J.,dissenting opinion:
I am unable to join the majority view.
From the following factual and procedural antecedents, I find no alternative but to sustain both the trial court
and the CourtofAppeals.
On 12 July 1988, HABANA, et al. filed with the trial court a complaint for infringement and unfair competition,
with damages against private respondent Felicidad C. Robles (hereafter ROBLES) and her publisher and
distributor, Goodwill Trading Co., Inc. (hereafter GOODWILL). The case was docketed as Civil Case No. 88-
1317.
HABANA, et al. averred in their complaint that they were the co-authors and joint copyright owners of their
published works College English for Today, Books 1 and 2 (hereafter CET) and Workbook for College
Freshman English, Series 1 1; they discovered that ROBLES' own published works, Developing English
Proficiency, Books 1 and 2, (hereafter DEP), published and distributed in 1985, exhibited an uncanny
resemblance, if not outright physical similarity, to CET as to content, scheme, sequence of topics and ideas,
manner of presentation and illustrative examples; the plagiarism, incorporation and reproduction of particular
portions of CET into DEP could not be gainsaid since ROBLES was substantially familiar with CET and the
textual asportation was accomplished without their authority and/or consent; ROBLES and GOODWILL jointly
misrepresented DEP (over which they shared copyright ownership) "as the former's original published works
and concept;" and "notwithstanding formal demands made . . . to cease and desist from the sale and
distribution of DEP, [ROBLES and GOODWILL] persistently failed and refused to comply therewith."
HABANA et al. then prayed for the court to: (1) order the submission and thereafter the destruction of all
copies of DEP, together with the molds, plates, films and other materials used in the printing thereof; (2)
require ROBLES and GOODWILL to render an accounting of the sales of the "infringing works from the time of
its (sic) inceptive publication up to the time of judgment, as well as the amount of sales and profits . . .
derived;" and (3) to enjoin ROBLES and GOODWILL to solidarily pay actual, moral and exemplary damages,
as well as attorney's fees and expensesoflitigation.
In its Answer, GOODWILL denied culpability since "it had no knowledge or information sufficient to form a
belief as to the allegations of plagiarism, incorporation and reproduction" and hence "could not be privy to the
same, if (there were) any;" and that in an Agreement with co-defendant ROBLES, the latter would be solely
responsible for acts of plagiarism or violations ofcopyright or any other law, to the extent of answering for any
and all damages GOODWILL may suffer. GOODWILL also interposed a compulsory counterclaim against
PACITA, et al. and a crossclaim againstits co-defendantanchored on the aforementioned Agreement.
In her answer, ROBLES asserted that: (1) DEP was the exclusive product of her independent research,
studies and experience; (2) DEP, particularly the segmentswhere the alleged literal similitude appeared,were
admittedly influenced or inspired by earlier treatises, mostly by foreign authors; but that "influences and/or
inspirations from other writers" like the methodology and techniques as to presentation, teaching concept and
design, research and orientation which she employed, fell within the ambit of general information, ideas,
principles of general or universal knowledge which were commonly and customarily understood as incapable
of private and exclusive use, appropriation or copyright; and (3) herworks were the result of the legitimate and

10. reasonable exercise of an author's "right to fair use of even copyrighted materials as [a] guide." She further
claimed that her various national and regional professional activities in general education, language and
literature, as well as her teaching experience in graduate and post graduate education would obviate the
remotestpossibility ofplagiarism.
ROBLES likewise suggested that any similarity between DEP and CET as regards scope and sequence could
be attributed to "the orientation of the authors to the scope and sequence or syllabus — which incorporates
standards known among English grammar bookwriters — of the subject-matter for Basic Communication Arts
recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS)." While the syllabus
was admittedly adopted in DEP, she claimed to have treated quite differently in DEP the very ideas,
techniques or principles expressed in CET such that neither textbookcould be considered a copy or plagiarism
of the other.
At the pre-trial conference, the parties agreed to a stipulation of facts 2 and for the court to first resolve the
issue of infringement before disposing of the claims for damages. After trial on the merits, the trial court
rendered its decision in favor ofdefendants, the dispositive portion ofwhichreads:
WHEREFORE, premises considered, the Court hereby orders that the complaint filed
against defendants Felicidad Robles and Goodwill Trading Co., Inc. shall be
DISMISSED: that said plaintiffs solidarily reimburse defendant Robles for P20,000.00
attorney's fees and defendant Goodwill for P5,000.00 attorney's fees. Plaintiffs are
liable for costs ofsuit.
IT IS SO ORDERED. 3
Noting that the law applicable to the case was Presidential Decree No. 49, 4 the trial court found that
HABANA, et al. failed to discharge their onus of proving that ROBLES and GOODWILL committed acts
constituting copyright infringement. Moreover, the trial court found that "the cause ofaction or acts complained
of [were] not covered by said decree" as Section 10 thereof barred authors of works already lawfully made
accessible to the public from prohibiting the reproductions, translations, adaptations, recitation and
performance of the same,while Section 11 allowed the utilization of reproductions, quotations and excerpts of
such works. The trial court thus agreed with ROBLES that "the complained acts [were] of general and
universal knowledge and use which plaintiffs cannotclaim originality or seek redress to the law for protection"
and observed that DEP and CET had the same sources, consisting chiefly of earlier works, mostly foreign
books. GOODWILL's crossclaim against ROBLES, counterclaim against HABANA, et al. as well as ROBLES'
compulsory counterclaimagainstGOODWILL wereall dismissed for lack offactual and legal bases.
HABANA, et al. appealed to the Court of Appeals. The case was docketed as CA-G.R. CV No. 44053. Before
said court HABANA, et al., in the main, argued that the trial court totally disregarded their evidence and merely
subscribed to ROBLES' arguments. The Court of Appeals, however, likewise disposed of the controversy in
favor ofROBLES and GOODWILL. 5
However, the Court of Appeals modified the trial court's decision by reversing the award for attorney's fees. It
held that the good faith and sincerity of HABANA, et al. in commencing the action negated the basis therefor.
Their motion for reconsideration having been denied for want of cogent reasons, HABANA, et al., instituted
this petition. They claim that the Court of Appeals committed reversible error in failing to appreciate: (1) the
insuperable evidence and facts admitted and proved demonstrating plagiarism or piracy and instead afforded
full weight and credit to ROBLES' matrix of general, hypothetical and sweeping statements and/or defenses;
(2) ROBLES' and GOODWILL's animofurandi or intent to appropriate or copy CET with the non-removal of the
damaging copies of DEP from the bookstores despite notice to withdraw the same; and (3) the fact that
ROBLES abused a writer's right to fair use, in violation of Section 11 of P.D. No. 49. 6 They
invoke Laktaw v. Paglinawan 7 which, they theorize is on all fours with the case at bar. ROBLES contends that
appeal by certiorari does not lie in this case for the challenged decision and the trial court's judgment were
amply supported by evidence, pertinent laws and jurisprudence. Hence, her counterclaim for moral damages
should, therefore, be granted or for us to order the remand of the case to the trial court for reception of
evidence on damages. GOODWILL, on its part, stood pat on its disclaimer, with the assertion that no proof
was ever introduced. that it co-authored DEP or that it singly or in cabal with ROBLES committed any act
constituting copyrightinfringement.
The core issue then is whether or not the Court of Appeals erred in affirming the trial court's judgment that
despite the apparent textual, thematic and sequential similarity between DEP and CET, no copyright was
committed by ROBLES and GOODWILL.
While the complaint, in Civil Case No. 88-1317 was filed during the effectivity of P.D. No. 49, the provisions of
the new intellectual property law, R.A. No. 8293, 8 nevertheless bears significance here. It took effect on 1
January 1998, but its Section 239.3 clearly states that its provisions shall apply to works in which copyright
protection obtained prior to the effectivity of the Actsubsists, provided, however, that the application of the Act
shall not result in the diminution of such protection. Also, the philosophy behind both statutes as well as the
essential principles of copyright protection and copyright infringement have, to a certain extent, remained the
same.
A copyright may be accurately defined as the right granted by statute to the proprietor of an intellectual
production to its exclusive use and enjoyment to the extent specified in the statute. 9 Under Section 177 of
R.A. No. 8293, 10 the copy or economic right (copyright and economic right are used interchangeably in the
statute) consists ofthe exclusive rightto carry out, authorize or preventthe followingacts:
177.1 Reproduction ofthe work or substantial portion ofthe work;
177.2 Dramatization, translation, adaptation, abridgment, arrangement or other
transformation ofthe work;
177.3 The first public distribution of the original and each copy of the work by sale or
other forms oftransfer ofownership;
177.4 Rental of the original or a copy of an audiovisual or cinematographic work, a
work embodied in a sound recording, a computer program, a compilation of data and
other materials or a musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subjectofthe rental;
177.5 Public display ofthe original or a copy ofthe work;
177.6 Public performance ofthe work;and
177.7 Other communication to the public ofthe work.
"The work," as repeatedly mentioned, refers to the literary and artistic works defined as original intellectual
creations in the literary and artistic domain protected from the moment of their creation and enumerated in
Section 172.1, which includesbooksand other literary, scholarly,scientific and artistic works. 11
Stripped in the meantime of its indisputable social and beneficial functions, 12 the use of intellectual property
or creations should basically promote the creator or author's personal and economic gain. Hence, the
copyright protection extended to the creator should ensure his attainment of some form of personal
satisfaction and economic reward from the work he produced. Without conceding the suitability of Laktaw as
precedent, the Courtthere quoted Manresa and explained:

11. He who writes a book, or carves a statute, or makes an invention, has the absolute
right to reproduce or sell it, just as the owner of the land has the absolute right to sell
it or its fruits. Butwhile the owner of the land, by selling it and its fruits, perhaps fully
realizes all its economic value, by receiving its benefits and utilities, which are
represented for example, by the price, on the other hand the author of a book, statue
or invention does not reap all the benefits and advantages of his own property by
disposing of it, for the most important form of realizing the economic advantages of a
book, statue or invention, consists in the right to reproduce it in similar or like copies,
everyone of which serves to give to the person reproducing them all the conditions
which the original requires in order to give the author the full enjoyment thereof. If the
author of a book, after its publication, cannot prevent its reproduction by any person
who may want to reproduce it, then the property right granted him is reduced to a
very insignificant thing and the effort made in the production of the book is in noway
rewarded. 13
The execution, therefore, of any one or more of the exclusive rights conferred by law on a copyright owner,
without his consent, constitutes copyright infringement. In essence, copyright infringement, known in general
as "piracy," is a trespass on a domain owned and occupied by a copyright owner; it is violation of a private
right protected by law. 14 With the invasion of his property rights, a copyright owner is naturally entitled to seek
redress, enforce and hold accountable the defrauder or usurper ofsaid economic rights.
Now, did ROBLES and GOODWILL infringe upon the copyright of HABANA et al. by publishing DEP, which
the latter alleged to be a reproduction, or in the least, a substantial reproduction of CET? Both the trial court
and respondentcourtfound in the negative. Isubmitthey were correct.
To constitute infringement, the usurper must have copied or appropriated the "original" work of an author or
copyright proprietor; 15 absent copying, there can be no infringement of copyright. 16 In turn, a work is deemed
by law an original if the author created it by his own skill, labor and judgment. 17 On its part, a copy is that
which comes so near to the original so as to give to every person seeing it the idea created by the original. It
has been held that the test of copyright infringement is whether an ordinary observer comparing the workscan
readily see that one has been copied from the other.18 A visual comparison of the portions of
CET 19 juxtaposed against certain pages of DEP, 20would inescapably lead to a conclusion that there is a
discernible similarity between the two; however, as correctly assessed by respondent court and the lower
court, no conclusion,can be drawn thatDEP, in legal contemplation, isa copy ofCET.
Was DEP a substantial reproduction of CET? To constitutes a substantial reproduction, it is not necessary that
the entire copyrighted work, or even a large portion of it, be copied, if so much is taken that the value of the
original is substantially diminished, or if the labors of the original author are substantially, and to an injurious
extent, appropriated. 21 But the similarity of the books here does not amount to an appropriation of a
substantial portion of CET. If the existence of substantial similarities does not of itself establish
infringement, 22 mere similarities (not substantial similarities) in some sections of the books in question
decisively militate against a claim for infringementwhere the similarities had been convincingly established as
proceeding from a number ofreasons and/or factors.
1. As both books are grammar books, they inevitably deal with the same subjects typically and ordinarily
treated by writers of such genre, 23 e.g., system of book classification, the different kinds of card catalogs and
their entries, use of punctuation marks, paragraphs, the characteristics of an effective paragraph, language
structure, different parts of a book, etc. These standard subjects fall within the domain of ideas, concepts,
universal and general knowledge that have, as admitted by the protagonists here, been in existence for quite a
long time. 24 As such, HABANA, et al. cannot demand monopoly, by way of example, in the use of the
recognized library classification systems (Dewey Decimal System and the Library of Congress System), or
how a book can be divided into parts (frontispiece, title page, copyright page, preface, table of contents, etc.)
or to the different headings used in a card catalogue (title card, author card and subject card), since these are
of common or general knowledge. Even in this jurisdiction, no protection can be extended to such an idea,
procedure, system method or operation, concept, principle, discovery or mere data, even if expressed,
explained, illustrated or embodied in a work. 25
2. As found by respondentcourt, CET and DEP had common sources and materials, 26 such that the particular
portions claimed to have been lifted and literally reproduced also appeared in earlier works, mostly by foreign
authors. This is clear from the testimony ofpetitioner Dr. Pacita Habana:
Q Let's clarify your position Dra. Habana. When defendants test (sic) showed 10 words similar to yours, you
so concluded it was (sic) copied from yours butwhen I pointed out to you same (sic) words contained in the
earlier book of Wills then you earlier in your test in your book (sic) you refused to admit that itwas copied from
Wills.
A Yes, sir. We have never — all 35 wordswere copied from there.
Q Butwhat I am asking how could you conclude that by just similarity of 10 words of defendants words that
wascopied fromyours [sic] andwhen Ipoint out toyou the similarity of thatsame words from the words earlier
than yours (sic) yourefused to admitthatyou copied?
A I would like to change the final statement now that in the case of defendant Robles you pointed out her
source very clear.She copied itfrom thatbook by Wills.
Q So, she did notcopy itfrom yours?
A Alright, maybe she did notcopy itbutdefinitely itis a pattern ofplagerism [sic]. 27
3. Similarity in orientation and style can likewise be attributed to the exposure of the authors to the APCAS
syllabus and their respective academic experience, teaching approaches and methodology. It is not farfetched
that they could have even influenced each other as textbook writers. ROBLES and Dr. Pacita Habana were
faculty members of the Institute of English of the Far Eastern University from 1964 to 1974. 28 Both were
ardent students, researchers, lecturers, textbook writers and teachers of English and grammar. They even
used to be on friendly terms with each other, to the extent that Dr. Habana admitted that ROBLES assisted the
former in the preparation of her doctoral dissertation. Given their near-identical academic and professional
background, it is natural they would use many expressions and definitions peculiar to teaching English
grammar. It comes therefore with no surprise that there are similarities in some parts of the rival books.
Indeed, it is difficult to conceive how writers on the same subject matter can very well avoid resorting to
common sources of information and materials and employing similar expressions and terms peculiar to the
subjectthey are treating. 29
To illustrate, an excerptfrom page 21 ofCET reads:
Author Card
The author card is the main entry card.Itcontains
1. the author's complete name on the first line, surname first, which may be followed by the date of his birth
and death if he is no longer living;
2. the title of the book, and the subtitle, ifthere is one;
3. the edition, if it is notthe first;

12. 4. the translator or illustrator, if there is any;
5. the imprintwhich includesthe publisher, the place and date ofpublication;
6. the collation composed ofthe number ofpages, volume,illustrations, and the sizeofthe book;
7. the subjects with which the book deals [sic];
8. the call number on the upper left-hand corner.
Names beginning with Mc, or M are filed in the card catalog as though spelled out as MAC, for example
McGraw — MacGraw.The sameis true ofSt. and Saint.
While a portion of DEP found on page 18 which discusses the author card provides:
The author card is the main entry card containing:
1. the author's complete name on the first line, surname first, which may be followed by the date of his birth
and death if he is no longer living;
2. the title of the book, and the subtitle ifthere is one;
3. the edition, if it is notthe first;
4. the translator or illustrator, if any;
5. the imprintwhich includesthe publisher, the place and date ofpublication;
6. the collation, composed ofthe number ofpages, volume, illustrations,and the size ofthe book;
7. the subjectwith which the book deals; and
8. the call number on the upper-lefthand corner.
Names beginning with MC, or M are filed in the card catalog considered spelled out as MAC, for example:
Mcleod-Macleod. This istrue also ofSt. and Saint.
The entries found in an author card, having been developed over quite sometime, are expectedly uniform.
Hence, HABANA et al. and ROBLES would have no choice but to articulate the terms particular to the entries
in an identical manner.
I thus find that the ruling of the respondentcourt is totally supported by the evidence on record. Of doctrinal
persuasion is the principle that factual determinations of the Court ofAppeals and the trial court are conclusive
and binding upon this Court, and the latter will not, as a rule, disturb these findings unless compelling and
cogent reasons necessitate a reexamination, if not a reversal, of the same. 30 Tested against this
jurisprudential canon, to subject the challenged decision of the Court of Appeals to further scrutiny would be
superfluous, ifnot, improvident.
I am not persuaded by the claim of HABANA, et al. that Laktaw is on all fourswith and hence applicable to the
case at bar. There, this Court disposed that defendant, without the consent ofand causing irreparable damage
to Laktaw, reproduced the latter's literary work DiccionarioHisapano-Tagalog, and improperly copied the
greater part thereof in the work DiccionariongKastila-Tagalog published by defendant, in violation of Article 7
of the Law of 10 January 1879 on Intellectual Property. This Court anchored its decision on the following
observations:
(1) [O] the 23,560 Spanish words in the defendant's
dictionary . . . only 3,108 words are the defendant's own, or, what is the same thing, the defendant has added
only this number of words to those that are in the plaintiff's dictionary, he having reproduced or copied the
remaining 20,452 words;
(2) [T]he defendant also literally reproduced and copied for the Spanish words in his dictionary, the
equivalents, definitions and different meanings in Tagalog, given in plaintiffs dictionary, having reproduced, as
to some words, everything that appears in the plaintiff's dictionary for similar Spanish words, although as to
some he made some additionsofhis own.Said copiesand reproductions are numerous. ..;
(3) [T]he printer's errors in the plaintiff's dictionary as to the expression of some words in Spanish as well as
their equivalents in Tagalog are also reproduced, a fact which shows that the defendant, in preparing his
dictionary, literally copied those Spanish words and their meanings and equivalents in Tagalog from the
plaintiff's dictionary. 31
Plainly, the rationale in Laktaw does not apply in this case. First, aside from an isolated accounting of the
number ofwords supposedly usurped in a segment of DEP from CET, 32 the records do not disclose that all
the words allegedly copied were tallied and that the words thus tallied were numerous enough to support a
finding ofcopying. Second, as already conceded, while there is an identity in the manner by which some of the
ideas and concepts were articulated, this prescinded from various factors already elucidated. Besides,
ROBLES' testimony that she made an independent investigation or research of the original works or authors
she consulted was unrebutted; 33 for germane here is the question ofwhether the alleged infringer could have
obtained the same information by going to the same source by her own independent research. 34 ROBLES
convinced the trial courtand the Courtof Appeals on this; thus,we are bound by this factual determination, as
likewise explained earlier. Third, reproduction of the printer's errors or the author's blunders and inaccuracies
in the infringing copy does not ipso facto constitute copying or plagiarism or infringement, but it is conceded
that they are telltale signs that infringement might have been committed. 35 However, the records do not
reveal this to be the case. Fourth, the law on intellectual property violated in Laktaw was a world and time
apart from R.A. No. 8293 or even P.D. No. 49. Thus, under Article 7 of the Law of 10 January 1879, the Court
ruled that nobody could reproduce another person's work without the owner's consent, even merely to
annotate or add anything to it, or improve any edition thereof. The more recent laws on intellectual property,
however, recognize recent advancements in technology transfer and information dissemination. They thus
allow the use ofcopyrighted materials if compatible with fair use and to the extent justified for the purpose. In
particular, the new laws sanction the fair use of copyrighted work for criticism, comment, news reporting,
teaching including multiple copies for classroom use, scholarship, research and similar purposes. 36 Further,
the limitations of the exclusive use of copyrighted materials under Sections 10 and 11 of P.D. No. 49 in
consonance with the principle of fair use have been reproduced and incorporated in the new law. 37 All told,
Laktaw is inapplicable.1âwphi1.nêt
Fair use has been defined as a privilege to use the copyrighted material in a reasonable manner without the
consent of the copyrightowner or as copying the theme or ideas rather than their expression. 38 No question of
fair or unfair use arises however, if no copying is proved to begin with. This is in consonance with the principle
that there can be no infringement if there was no copying. 39 It is only where some form of copy ing has been
shown that it becomes necessary to determine whether it has been carried to an "unfair," that is, illegal,
extent. 40 Consequently, there is no reason to address the issue ofwhether ROBLES abused awriter's right to
fair use with the ascertainmentthatDEP was nota copy or a substantial copy ofCET.

13. WHEREFORE, I vote to DENY the petition and to AFFIRM the challenged decision of 27 June 1997 of the
Courtof Appeals.
G.R. Nos.76649-51 August 19, 1988
20TH CENTURY FOX FILMCORPORATION, petitioner,
vs.
COURTOF APPEALS, EDUARDO M. BARRETO, RAUL SAGULLO and FORTUNE
LEDESMA, respondents.
The petitioner questions the application of the constitutional provision against illegal searches and seizures to
raids conducted in connection with the government's anti-film piracy campaign. The main issue hinges on
whether or not the judge properly lifted the search warrants he issued earlier upon the application of the
National Bureau ofInvestigation on the basis ofthe complaintfiled by the petitioner.
In a letter-complaint dated August 26, 1985, petitioner 20th Century Fox Film Corporation through counsel
sought the National Bureau of Investigation's (NBI) assistance in the conduct of searches and seizures in
connection with the latter's anti-film piracy campaign. Specifically, the letter-complaint alleged that certain
videotape outlets all over Metro Manila are engaged in the unauthorized sale and renting out of copyrighted
films in videotape form which constitute a flagrantviolation of Presidential Decree No. 49 (otherwise known as
the Decree on the Protection of Intellectual Property).
Acting on the letter-complaint, the NBI conducted surveillance and investigation of the outlets pinpointed by
the petitioner and subsequently filed three (3) applications for searchwarrants against the video outlets owned
by the private respondents. The applications were consolidated and heard by the Regional Trial Court of
Makati, Branch 132.
On September 4, 1985, the lower courtissued the desired search warrants.
Armed with the search warrants, the NBI accompanied by the petitioner's agents, raided thevideo outlets and
seized the items described therein. An inventory of the items seized was made and left with the private
respondents.
Acting on a motion to lift search warrants and release seized properties filed by the private respondents, the
lower court issued an order dated October 8, 1985, lifting the three (3) search warrants issued earlier against
the private respondentsby the court. The dispositive portion ofthe order reads:
WHEREFORE, the Court hereby orders that Search Warrants Nos. SW- 85-024; issued against Eduardo M.
Barreto of the Junction Video, etc., Paranaque, Metro Manila; SWNo. 85-025, issued againstRaul M. Sagullo
of South Video Bug Center, Inc., etc., also ofNo. 5355 Pres. Avenue BF Homes, Parañaque, Metro Manila;
and SW No. 85-026, issued against Fortune A. Ledesma of Sonix Video Services of San Antonio Plaza,
Forbes Park, Makati, Metro Manila,be lifted.
Consequently, the articles listed in the returns of the three search warrants which could not be a basis of any
criminal prosecution, now in the possession of the National Bureau of Investigation which under the law must
be delivered to this Court, but which the NBI failed to do, are hereby ordered to be returned to their owners
through their lawyer, Atty. Benito Salazar or his agents or representatives, against proper receipt, to be
forwarded to this Court for record purposes, as proof that said properties have been returned to the
possession ofthe rightful owners." (p. 34,Rollo)
The lower courtdenied a motion for reconsideration filed by the petitioner in its order dated January 2, 1986.
The petitioner filed a petition for certiorariwith the Court of Appeals to annul the October 8, 1985 and January
2, 1986 orders ofthe lower court. The petition was dismissed.
Hence, this petition.
The main issue hinges on the meaning of "probable cause" within the context of the constitutional provision
against illegal searches and seizures (Section 3, Article IV, 1973 Constitution, now, Section 2, Article Ill, 1987
Constitution.
The petitioner maintains that the lower court issued the questioned search warrants after finding the existence
of a probable cause justifying their issuance. According to the petitioner, the lower court arrived at this
conclusion on the basis of the depositions of applicant NBI's two witnesses which were taken through
searching questions and answersby the lower court.
Section 2, Article III of the present Constitution whichsubstantially reproduces Section 3, Article IV of the 1973
Constitution on illegal searches and seizuresprovides:
The right of the people to be secure in their persons, houses, papers, and effects against unreasonable
searches and seizures of whatever nature and for any purpose shall be inviolable, and no search warrant or
warrant of arrest shall issue except upon probable cause 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 personsor things to be seized.
This constitutional right protects a citizen againstwanton and unreasonable invasion of his privacy and liberty
as to his person, papers and effects. We have explained in the case ofPeople v. Burgos (144 SCRA 1)
citingVillanueva v. Querubin(48 SCRA 345) why the rightis so important:
It is deference to one's personality that lies at the core of this right, but it could be also looked upon as a
recognition of a constitutionally protected area, primarily one's home, but not necessarily thereto confined. (Cf.
Hoffa v. United States, 385 US 293 119661) What is sought to be guarded is a man's prerogative to choose
who is allowed entry to his residence. In that haven of refuge, his individuality can assert itself not only in the
choice of who shall be welcome but likewise in the kind of objects he wants around him. There the state,

14. however powerful, does not as such have access except under the circumstances above noted, for in the
traditional formulation, his house, however humble, is his castle. Thus is outlawed any unwarranted intrusion
by government, which is called upon to refrain from any invasion of his dwelling and to respect the privacies of
his life. (CfSchmerber v. California, 384 US 757 [1966], Brennan, J. and Boyd v. United States, 116 630
[1886]). In the same vein, Landynski in his authoritative work (Search and Seizure and the Supreme Court
[1966]), could fitly characterize constitutional right as the embodiment of a "spiritual concept: the belief that to
value the privacy of home and person and to afford its constitutional protection against the long reach of
government is no less than to value human dignity, and that his privacy must not be disturbed except in case
of overriding social need,and then only under stringentprocedural safeguards."(ibid,p. 74).
The government's right to issue search warrants against a citizen's papers and effects is circumscribed by the
requirements mandated in the searchesand seizuresprovision ofthe Constitution.
In the case of Burgos, Sr. v. Chief of Staff, AFP (133 SCRA 800),we defined probable cause for a validsearch
"as such facts and circumstances which would lead a reasonably discreet and prudent man to believe that an
offense has been committed and that the objectssought in connection with the offense are in the place sought
to be searched." This constitutional provision also demands "no less than personal knowledge by the
complainant or his witnesses of the facts upon which the issuance of a search warrant may be justified" in
order to convince the judge, not the individual making the affidavit and seeking the issuance of the warrant, of
the existence of a probable cause. (Alvarezv. Court ofFirst Instance, 64 Phil. 33; Burgos, Sr.v. Chief of Staff,
AFP, supra).
In the instantcase, the lower court lifted the three questioned searchwarrants against the private respondents
on the ground that itacted on the application for the issuance of the said search warrants and granted it on the
misrepresentations of applicantNBI and itswitnesses that infringement of copyright or a piracy of a particular
film have been committed. Thusthe lower courtstated in its questioned order dated January 2,1986:
According to the movant, all three witnesses during the proceedings in the application for the three search
warrants testified of their own personal knowledge. Yet, Atty. Albino Reyes of the NBI stated that the counsel
or representative of the Twentieth Century Fox Corporationwill testify on the video cassettes thatwere pirated,
so that he did not have personal knowledge of the alleged piracy. The witness Bacani also said that the video
cassettes were pirated without stating the manner it was pirated and that it was Atty. Domingo that has
knowledge ofthatfact.
On the part of Atty. Domingo, he said that the re-taping of the allegedly pirated tapes was from master tapes
allegedly belonging to the Twentieth Century Fox,because,according to him,itis ofhis personal knowledge.
At the hearing of the Motion for Reconsideration, Senior NBI Agent Atty. Albino Reyes testified that when the
complaint for infringementwas brought to the NBI, the master tapes of the allegedly pirated tapeswere shown
to him and he made comparisons of the tapes with those purchased by their man Bacani. Why the master
tapes or at least the film reels of the allegedly pirated tapeswere notshown to the Court during the application
gives some misgivings asto the truth of that bare statementof the NBIagenton the witness stand."
Again as the application and search proceedings is a prelude to the filing of criminal cases under PD 49, the
copyright infringement law, and although what is required for the issuance thereof is merely the presence of
probable cause, that probable cause must be satisfactory to the Court, for it is a time- honored precept that
proceedings to put a man to task as an offender under our laws should be interpreted
in strictissimijuris againstthe governmentand liberally in favor ofthe alleged offender.
xxxxxxxxx
This doctrine has never been overturned, and as a matter of fact it had been enshrined in the Bill ofRights in
our 1973 Constitution.
So that lacking in persuasive effect, the allegation that master tapes were viewed by the NBI and were
compared to the purchased and seized video tapes from the respondents' establishments, it should be
dismissed as not supported by competent evidence and for that matter the probable cause hovers in that grey
debatable twilightzone between blackand white resolvable in favor ofrespondents herein.
But the glaring fact is that 'Cocoon,' the first video tape mentioned in the search warrant, was not even duly
registered or copyrighted in the Philippines. (Annex C of Opposition p. 152 record). So, that lacking in the
requisite presentation to the Court of an alleged master tape for purposes ofcomparison with the purchased
evidence of the video tapes allegedly pirated and those seized from respondents, there was no way to
determine whether there really was piracy, or copying of the film of the complainant Twentieth Century Fox."
(pp. 37-39, Rollo)
xxxxxxxxx
The lower court, therefore, lifted the three (3) questioned search warrants in the absence of probable cause
that the private respondents violated P.D. 49. As found out by the court, the NBI agents who acted as
witnesses did not have personal knowledge of the subject matter of their testimony which was the alleged
commission of the offense by the private respondents. Only the petitioner's counsel who was also a witness
during the application for the issuance of the search warrants stated that he had personal knowledge that the
confiscated tapes owned by the private respondents were pirated tapes taken from master tapes belonging to
the petitioner. However, the lower court did not give much credence to his testimony in view of the fact that the
master tapes ofthe allegedly pirated tapes were notshown to the courtduring the application.
All these factors were taken into consideration by the lower court when it lifted the three questioned search
warrants. There is no truth, therefore, to the petitioner's allegation that the lower court based its January 2,
1986 order only "on the fact that the original or master copies of the copyrighted films were not presented
during the application for search warrants, thus leading it to conclude that it had been "misled by the applicant
and his witnesses." (p.17, Rollo)
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 againstvideo tape outlets which allegedly were engaged in
the unauthorized sale and renting outofcopyrighted filmsbelonging to the petitioner pursuantto 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 themwith the purchased evidence ofthe 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 cannotserve as basis for the issuance ofa search warrant.
Furthermore, we note thatthe search warrants described the articles soughtto be seized as follows: