U.S.
Supreme Court The book or series of books of which the complainant claims the copyright consists
Baker v. Selden, 101 U.S. 99 (1879)
Baker v. Selden
101 U.S. 99
APPEAL FROM THE CIRCUIT COURT OF THE UNITED
STATES FOR THE SOUTHERN DISTRICT OF OHIO
Syllabus
1. A claim to the exclusive property in a peculiar system of bookkeeping cannot,
under the law of copyright, be maintained by the author of a treatise in which that
system is exhibited and explained.
2. The difference between a copyright and letters patent stated and illustrated.
The facts are stated in the opinion of the Court.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
Charles Selden, the testator of the complainant in this case, in the year 1859 took
the requisite steps for obtaining the copyright
Page 101 U. S. 100
of a book, entitled "Selden's Condensed Ledger, or Bookkeeping Simplified," the
object of which was to exhibit and explain a peculiar system of bookkeeping. In
1860 and 1861, he took the copyright of several other books, containing additions
to and improvements upon the said system. The bill of complaint was filed against
the defendant, Baker, for an alleged infringement of these copyrights. The latter, in
his answer, denied that Selden was the author or designer of the books, and
denied the infringement charged, and contends on the argument that the matter
alleged to be infringed is not a lawful subject of copyright.
The parties went into proofs, and the various books of the complainant, as well as
those sold and used by the defendant, were exhibited before the examiner, and
witnesses were examined to both sides. A decree was rendered for the
complainant, and the defendant appealed.
of an introductory essay explaining the system of bookkeeping referred to, to which
are annexed certain forms or banks, consisting of ruled lines, and headings,
illustrating the system and showing how it is to be used and carried out in practice.
This system effects the same results as bookkeeping by double entry, but, by a
peculiar arrangement of columns and headings, presents the entire operation, of a
day, a week, or a month on a single page or on two pages facing each other, in an
account book. The defendant uses a similar plan so far as results are concerned,
but makes a different arrangement of the columns, and uses different headings. If
the complainant's testator had the exclusive right to the use of the system
explained in his book, it would be difficult to contend that the defendant does not
infringe it, notwithstanding the difference in his form of arrangement; but if it be
assumed that the system is open to public use, it seems to be equally difficult to
contend that the books made and sold by the defendant are a violation of the
copyright of the complainant's book considered merely as a book explanatory of
the system. Where the truths of a science or the methods of an art are the
common property of the whole world, any author has the right to express the one,
or explain and use the other, in
Page 101 U. S. 101
his own way. As an author, Selden explained the system in a particular way. It may
be conceded that Baker makes and uses account books arranged on substantially
the same system, but the proof fails to show that he has violated the copyright of
Selden's book, regarding the latter merely as an explanatory work, or that he has
infringed Selden's right in any way, unless the latter became entitled to an
exclusive right in the system.
The evidence of the complainant is principally directed to the object of showing
that Baker uses the same system as that which is explained and illustrated in
Selden's books. It becomes important, therefore, to determine whether, in
obtaining the copyright of his books, he secured the exclusive right to the use of
the system or method of bookkeeping which the said books are intended to
illustrate and explain. It is contended that he has secured such exclusive right
because no one can use the system without using substantially the same ruled
lines and headings which he was appended to his books in illustration of it. In other
words, it is contended that the ruled lines and headings, given to illustrate the
system, are a part of the book, and as such are secured by the copyright, and that
no one can make or use similar ruled lines and headings, or ruled lines and
headings made and arranged on substantially the same system, without violating
the copyright. And this is really the question to be decided in this case. Stated in
another form, the question is whether the exclusive property in a system of
bookkeeping can be claimed under the law or copyright by means of a book in
which that system is explained? The complainant's bill, and the case made under
it, are based on the hypothesis that it can be.
It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of
the complainant's account book can be claimed under any special class of objects,
other than books, named in the law of copyright existing in 1859. The law then in
force was that of 1831, and specified only books, maps, charts, musical
compositions, prints, and engravings. An account book, consisting of ruled lines
and blank columns, cannot be called by any of these names unless by that of a
book.
There is no doubt that a work on the subject of bookkeeping,
Page 101 U. S. 102
though only explanatory of well known systems, may be the subject of a copyright,
but then it is claimed only as a book. Such a book may be explanatory either of old
systems or of an entirely new system, and, considered as a book, as the work of
an author, conveying information on the subject of bookkeeping, and containing
detailed explanations of the art, it may be a very valuable acquisition to the
practical knowledge of the community. But there is a clear distinction between the
book 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 subject matter. 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 a surprise and a fraud upon the
public. That is the province of letters patent, not of copyright. The claim to an
invention or discovery of an art or manufacture must be subjected to the
examination of the Patent Office before an exclusive right therein can be obtained,
and it can only be secured by a patent from the government.
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 great value 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 the manufacture and sale of the
medicine; he gives that to the
Page 101 U. S. 103
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. He may 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 without getting a patent for the art, the latter is given to the public. The
fact that the art described in the book by illustrations of lines and figures which are
reproduced in practice in the application of the art makes no difference. Those
illustrations are the mere language employed by the author to convey his ideas
more clearly. Had he used words of description instead of diagrams (which merely
stand in the place of words), there could not be the slightest doubt that others,
applying the art to practical use, might lawfully draw the lines and diagrams which
were in the author's mind, and which he thus described by words in his book.
The copyright of a work on mathematical science cannot give to the author an
exclusive right to the methods of operation which he propounds, or to the diagrams
which he employs to explain them, so as to prevent an engineer from using them
whenever occasion requires. The very object of publishing a book on science or
the useful arts is to communicate to the world the useful knowledge which it
contains. But this object would be frustrated if the knowledge could not be used
without incurring the guilt of piracy of the book. And where the art it teaches cannot
be used without employing the methods and diagrams used to illustrate the book,
or such as are similar to them, such methods and diagrams are to be considered
as necessary incidents to the art, and given therewith to the public -- not given for
the purpose of publication in other works explanatory of the art, but for the purpose
of practical application.
Of course these observations are not intended to apply to ornamental designs or
pictorial illustrations addressed to the taste. Of these it may be said that their form
is their essence,
Page 101 U. S. 104
and their object, the production of pleasure in their contemplation. This is their final
end. They are as much the product of genius and the result of composition as are
the lines of the poet or the historian's period. On the other hand, the teachings of
science and the rules and methods of useful art have their final end in application
and use, and this application and use are what the public derive from the
publication of a book which teaches them. But as embodied and taught in a literary
composition or book, their essence consists only in their statement. This alone is
what is secured by the copyright. The use by another of the same methods of
statement, whether in words or illustrations, in a book published for teaching the
art would undoubtedly be an infringement of the copyright.
Recurring to the case before us, we observe that Charles Selden, by his books,
explained and described a peculiar system of bookkeeping, and illustrated his
method by means of ruled lines and blank columns, with proper headings on a
page or on successive pages. 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 art might or might not have been patented is a
question which is not before us. It was 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 of
accounts must necessarily be used as incident to 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 happen to correspond more closely than
usual with the actual work performed by the operator who uses the art. Those
illustrations and diagrams consist of ruled lines and headings of accounts, and
Page 101 U. S. 105
it is similar ruled lines and headings of accounts which, in the application of the art,
the bookkeeper makes with his pen, or the stationer with his press, whilst in most
other cases the diagrams and illustrations can only be represented in concrete
forms of wood, metal, stone, or some other physical embodiment. But the principle
is the same in all. 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 letters
patent.
The remarks of Mr. Justice Thompson in the circuit court in Clayton v. Stone &
Hall, 2 Paine 392, in which copyright was claimed in a daily price-current, are
apposite and instructive. He says:
"In determining the true construction to be given to the act of Congress, it is proper
to look at the Constitution of the United States to aid us in ascertaining the nature
of the property intended to be protected. 'Congress shall have power to promote
the progress of science and useful arts, by securing for limited times to authors
and inventors the exclusive right to their writings and discoveries.' The act in
question was passed in execution of the power here given, and the object,
therefore, was the promotion of science; and it would certainly be a pretty
extraordinary view of the sciences to consider a daily or weekly publication of the
state of the market as falling within any class of them. They are of a more fixed,
permanent, and durable character. The term 'science' cannot with any propriety be
applied to a work of so fluctuating and fugitive a form as that of a newspaper or
price-current, the subject matter of which is daily changing, and is of mere
temporary use. Although great praise may be due to the plaintiffs for their industry
and enterprise in publishing this paper, yet the law does not contemplate their
being rewarded in this way; it must seek patronage and protection from its utility to
the public, and not a work of science. The title of the act of Congress is, 'for the
encouragement of learning,' and was not intended for the encouragement of mere
industry, unconnected with learning and the sciences. . . . We are accordingly of
opinion that the paper in question is not
Page 101 U. S. 106
a book the copyright to which can be secured under the act of Congress."
The case of Cobbett v. Woodward, Law Rep. 14 Eq. 407, was a claim to copyright
in a catalogue of furniture which the publisher had on sale in his establishment,
illustrated with many drawings of furniture and decorations. The defendants, being
dealers in the same business, published a similar book, and copied many of the
plaintiff's drawings, though it was shown that they had for sale the articles
represented thereby.
The court held that these drawings were not subjects of copyright. Lord Romilly,
M.R., said:
"This is a mere advertisement for the sale of particular articles which any one
might imitate, and any one might advertise for sale. If a man not being a vendor of
any of the articles in question were to publish a work for the purpose of informing
the public of what was the most convenient species of articles for household
furniture, or the most graceful species of decorations for articles of home furniture,
what they ought to cost, and where they might be bought, and were to illustrate his
work with designs of each article he described -- such a work as this could not be So ordered.
pirated with impunity, and the attempt to do so would be stopped by the injunction
of the Court of Chancery; yet if it were done with no such object, but solely for the
purpose of advertising particular articles for sale, and promoting the private trade
of the publisher by the sale of articles which any other person might sell as well as
the first advertiser, and if in fact it contained little more than an illustrated inventory
of the contents of a warehouse, I know of no law which, while it would not prevent
the second advertiser from selling the same articles, would prevent him from using
the same advertisement, provided he did not in such advertisement by any device
suggest that he was selling the works and designs of the first advertiser."

Another case, that of Page v. Wisden, 20 L.T.N.S. 435, which came before Vice-
Chancellor Malins in 1869, has some resemblance to the present. There, a
copyright was claimed in a cricket scoring sheet, and the Vice-Chancellor held that
it was not a fit subject for copyright, partly because it was not new, but also
because "to say that a particular

Page 101 U. S. 107

mode of ruling a book constituted an object for a copyright is absurd."

These cases, if not precisely in point, come near to the matter in hand, and, in our
view, corroborate the general proposition which we have laid down.

In Drury v. Ewing, 1 Bond, 540, which is much relied on by the complainant, a

copyright was claimed in a chart of patterns for cutting dresses and basques for
ladies, and coats, jackets, &c., for boys. It is obvious that such designs could only
be printed and published for information, and not for use in themselves. Their
practical use could only be exemplified in cloth on the tailor's board and under his
shears -- in other words, by the application of a mechanical operation to the cutting
of cloth in certain patterns and forms. Surely the exclusive right to this practical use
was not reserved to the publisher by his copyright of the chart. Without undertaking
to say whether we should or should not concur in the decision in that case, we
think it cannot control the present.

The conclusion to which we have come is that blank account books are not the
subject of copyright, and that the mere copyright of Selden's book did not confer
upon him the exclusive right to make and use account books, ruled and arranged
as designated by him and described and illustrated in said book.

The decree of the circuit court must be reversed and the cause remanded with
instructions to dismiss the complainant's bill, and it is
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners,
vs. FRANKLIN DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE
MEDINA, JR., and CASEY FRANCISCO, respondents.
[G.R. No. 108946. January 28, 1999]
DECISION
MENDOZA, J.:
This is a petition for certiorari. Petitioners seek to annul the resolution of the
Department of Justice, dated August 12, 1992, in Criminal Case No. Q-92-27854,
entitled Gabriel Zosa, et al. v. City Prosecutor of Quezon City and Francisco
Joaquin, Jr., and its resolution, dated December 3, 1992, denying petitioner
Joaquins motion for reconsideration.
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of
Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game
show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an
addendum to its certificate of copyright specifying the shows format and style of
presentation.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr.,
president of BJPI, saw on RPN Channel 9 an episode of Its a Date, which was
produced by IXL Productions, Inc. (IXL). On July 18, 1991, he wrote a letter to private
respondent Gabriel M. Zosa, president and general manager of IXL, informing Zosa
that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue
airing Its a Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to
petitioner Joaquin and requested a meeting to discuss a possible settlement. IXL,
however, continued airing Its a Date, prompting petitioner Joaquin to send a second
letter on July 25, 1991 in which he reiterated his demand and warned that, if IXL did
not comply, he would endorse the matter to his attorneys for proper legal action.
Meanwhile, private respondent Zosa sought to register IXLs copyright to the
first episode of Its a Date for which it was issued by the National Library a certificate
of copyright on August 14, 1991.
Upon complaint of petitioners, an information for violation of P.D. No. 49 was
filed against private respondent Zosa together with certain officers of RPN Channel
9, namely, William Esposo, Felipe Medina, and Casey Francisco, in the Regional
Trial Court of Quezon City where it was docketed as Criminal Case No. 92-27854
and assigned to Branch 104 thereof. However, private respondent Zosa sought a
review of the resolution of the Assistant City Prosecutor before the Department of
Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon
reversed the Assistant City Prosecutors findings and directed him to move for the
dismissal of the case against private respondents. [1]
Petitioner Joaquin filed a motion for reconsideration, but his motion was denied
by respondent Secretary of Justice on December 3, 1992. Hence, this petition.
Petitioners contend that:
1. The public respondent gravely abused his discretion amounting to lack
of jurisdiction when he invoked non-presentation of the master tape as
being fatal to the existence of probable cause to prove infringement,
despite the fact that private respondents never raised the same as a
controverted issue.
2. The public respondent gravely abused his discretion amounting to lack
of jurisdiction when he arrogated unto himself the determination of what
is copyrightable - an issue which is exclusively within the jurisdiction of
the regional trial court to assess in a proper proceeding.
Both public and private respondents maintain that petitioners failed to establish
the existence of probable cause due to their failure to present the copyrighted master
videotape of Rhoda and Me. They contend that petitioner BJPIs copyright covers
only a specific episode of Rhoda and Me and that the formats or concepts of dating
game shows are not covered by copyright protection under P. D. No. 49.
Non-Assignment of Error
Petitioners claim that their failure to submit the copyrighted master videotape
of the television show Rhoda and Me was not raised in issue by private respondents
during the preliminary investigation and, therefore, it was error for the Secretary of
Justice to reverse the investigating prosecutors finding of probable cause on this
ground.
A preliminary investigation falls under the authority of the state prosecutor who
is given by law the power to direct and control criminal actions. [2] He is, however,
subject to the control of the Secretary of Justice. Thus, Rule 112, 4 of the Revised
Rules of Criminal Procedure, provides:
SEC. 4. Duty of investigating fiscal. - If the investigating fiscal finds
cause to hold the respondent for trial, he shall prepare the resolution and
corresponding information. He shall certify under oath that he, or as shown
by the record, an authorized officer, has personally examined the
 complainant and his witnesses, that there is reasonable ground to believe
that a crime has been committed and that the accused is probably guilty
thereof, that the accused was informed of the complaint and of the
evidence submitted against him and that he was given an opportunity to
submit controverting evidence.Otherwise, he shall recommend dismissal
of the complaint.
In either case, he shall forward the records of the case to the
provincial or city fiscal or chief state prosecutor within five (5) days from
his resolution. The latter shall take appropriate action thereon within ten
(10) days from receipt thereof, immediately informing the parties of said
action.
No complaint or information may be filed or dismissed by an
investigating fiscal without the prior written authority or approval of the
provincial or city fiscal or chief state prosecutor.
Where the investigating assistant fiscal recommends the dismissal of
the case but his findings are reversed by the provincial or city fiscal or
chief state prosecutor on the ground that a probable cause exists, the
latter may, by himself, file the corresponding information against the
respondent or direct any other assistant fiscal or state prosecutor to do so,
without conducting another preliminary investigation.
If upon petition by a proper party, the Secretary of Justice reverses the
resolution of the provincial or city fiscal or chief state prosecutor, he shall
direct the fiscal concerned to file the corresponding information without
conducting another preliminary investigation or to dismiss or move for
dismissal of the complaint or information.
In reviewing resolutions of prosecutors, the Secretary of Justice is not
precluded from considering errors, although unassigned, for the purpose of
determining whether there is probable cause for filing cases in court. He must make
his own finding of probable cause and is not confined to the issues raised by the
parties during preliminary investigation. Moreover, his findings are not subject to
review unless shown to have been made with grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of the question whether
the format or mechanics of a show is entitled to copyright protection is for the court,
and not the Secretary of Justice, to make. They assail the following portion of the
resolution of the respondent Secretary of Justice:
[T]he essence of copyright infringement is the copying, in whole or in part, of
copyrightable materials as defined and enumerated in Section 2 of PD. No.
49. Apart from the manner in which it is actually expressed, however, the
idea of a dating game show is, in the opinion of this Office, a non-
copyrightable material. Ideas, concepts, formats, or schemes in their
abstract form clearly do not fall within the class of works or materials
susceptible of copyright registration as provided in PD. No. 49.[3] (Emphasis
added.)
It is indeed true that the question whether the format or mechanics of petitioners
television show is entitled to copyright protection is a legal question for the court to
make. This does not, however, preclude respondent Secretary of Justice from
making a preliminary determination of this question in resolving whether there is
probable cause for filing the case in court. In doing so in this case, he did not commit
any grave error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice gravely abused his
discretion in ruling that the master videotape should have been presented in order
to determine whether there was probable cause for copyright infringement. They
contend that 20th Century Fox Film Corporation v. Court of Appeals,[4] on which
respondent Secretary of Justice relied in reversing the resolution of the investigating
prosecutor, is inapplicable to the case at bar because in the present case, the parties
presented sufficient evidence which clearly establish linkages between the
copyrighted show Rhoda and Me and the infringing TV show Its a Date.[5]
The case of 20th Century Fox Film Corporation involved raids conducted on
various videotape outlets allegedly selling or renting out pirated videotapes. The trial
court found that the affidavits of NBI agents, given in support of the application for
the search warrant, were insufficient without the master tape. Accordingly, the trial
court lifted the search warrants it had previously issued against the defendants. On
petition for review, this Court sustained the action of the trial court and ruled: [6]
The presentation of the master tapes of the copyrighted films from which the
pirated films were allegedly copied, was necessary for the validity of search
warrants against those who have in their possession the pirated films. The
petitioners 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 respondents ITS A DATE is practically an exact copy of complainants RHODA
the issuance of the search warrants is not meritorious. The court cannot presume AND ME because of substantial similarities as follows, to wit:
that duplicate or copied tapes were necessarily reproduced from master tapes that
it owns. RHODA AND ME ITS A DATE

The application for search warrants was directed against video tape outlets which Set I Set I
allegedly were engaged in the unauthorized sale and renting out of copyrighted
films belonging to the petitioner pursuant to P.D. 49. a. Unmarried participant a. same

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

of one gender (searcher) appears on one side of a divider, while three (3)
similarity of the purported pirated works to the copyrighted work. Hence, the
unmarried participants of the other gender are on the other side of the
applicant must present to the court the copyrighted films to compare them with the divider. This arrangement is done to ensure that the searcher does not
purchased evidence of the video tapes allegedly pirated to determine whether the see the searchees.
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 b. Searcher asks a question b. same
cannot serve as basis for the issuance of a search warrant. to be answered by
each of the
This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of searchees. Th
Appeals[7] in which it was held: e purpose is
to determine
In fine, the supposed pronunciamento in said case regarding the necessity for the who
presentation of the master tapes of the copyrighted films for the validity of search among the
warrants should at most be understood to merely serve as a guidepost in searchees is
determining the existence of probable cause in copyright infringement cases where the most
there is doubt as to the true nexus between the master tape and the pirated compatible
copies. An objective and careful reading of the decision in said case could lead to with the
no other conclusion than that said directive was hardly intended to be a sweeping searcher.
and inflexible requirement in all or similar copyright infringement cases. . . .[8]
c. Searcher speculates on the c. same
In the case at bar, during the preliminary investigation, petitioners and private
respondents presented written descriptions of the formats of their respective match to the searchee.
televisions shows, on the basis of which the investigating prosecutor ruled:
d. Selection is made by the d. Selection is
As may [be] gleaned from the evidence on record, the substance of the television
productions complainants RHODA AND ME and Zosas ITS A DATE is that two use of compute (sic) methods, based on the
matches are made between a male and a female, both single, and the two couples or by the way questions are answer of the
are treated to a night or two of dining and/or dancing at the expense of the answered, or similar methods. Searchees.
show. The major concepts of both shows is the same. Any difference appear mere
variations of the major concepts.
Set 2 Set 2
That there is an infringement on the copyright of the show RHODA AND ME both
Same as above with the genders same
in content and in the execution of the video presentation are established because
 of the
searcher
and
searchees
interchang
ed.[9]
Petitioners assert that the format of Rhoda and Me is a product of ingenuity and
skill and is thus entitled to copyright protection. It is their position that the
presentation of a point-by-point comparison of the formats of the two shows clearly
demonstrates the nexus between the shows and hence establishes the existence of
probable cause for copyright infringement. Such being the case, they did not have
to produce the master tape.
To begin with, the format of a show is not copyrightable. Section 2 of P.D. No.
49,[10]
otherwise known as the DECREE ON INTELLECTUAL PROPERTY,
enumerates the classes of work entitled to copyright protection, to wit:
Section 2. The rights granted by this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories,
and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and
entertainments in dumb shows, the acting form of which is fixed in writing or
otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and
other works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture, whether or
not patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process analogous to
photography; lantern slides;
(M) Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements and
other alterations of literary, musical or artistic works or of works of the Philippine
government as herein defined, which shall be protected as provided in Section 8 of
this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in
Section 9 of this Decree which by reason of the selection and arrangement of their
contents constitute intellectual creations, the same to be protected as such in
accordance with Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as 172 of the INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES (R.A. No. 8293).[11] The format or
mechanics of a television show is not included in the list of protected works in 2 of
P.D. No. 49. For this reason, the protection afforded by the law cannot be extended
to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right
regulated by the statute. Being a statutory grant, the rights are only such as the
statute confers, and may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the statute. [12]
Since . . . copyright in published works is purely a statutory creation, a copyright
may be obtained only for a work falling within the statutory enumeration or
description.[13]
Regardless of the historical viewpoint, it is authoritatively settled in the United SO ORDERED.
States that there is no copyright except that which is both created and secured by
act of Congress . . . .[14]

P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished
works and not to concepts. The copyright does not extend to an idea, procedure,
process, system, method of operation, concept, principle, or discovery, regardless
of the form in which it is described, explained, illustrated, or embodied in such
work.[15] Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
provides:

Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections

172 and 173, no protection shall extend, under this law, to any idea, procedure,
system, method or operation, concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or embodied in a work; news of
the day and other miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal nature, as
well as any official translation thereof.

What then is the subject matter of petitioners copyright? This Court is of the
opinion that petitioner BJPIs copyright covers audio-visual recordings of each
episode of Rhoda and Me, as falling within the class of works mentioned in P.D. 49,
2(M), to wit:

Cinematographic works and works produced by a process analogous to

cinematography or any process for making audio-visual recordings;

The copyright does not extend to the general concept or format of its dating game
show. Accordingly, by the very nature of the subject of petitioner BJPIs copyright,
the investigating prosecutor should have the opportunity to compare the videotapes
of the two shows.
Mere description by words of the general format of the two dating game shows
is insufficient; the presentation of the master videotape in evidence was
indispensable to the determination of the existence of probable cause. As aptly
observed by respondent Secretary of Justice:

A television show includes more than mere words can describe because it
involves a whole spectrum of visuals and effects, video and audio, such that
no similarity or dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.[16]

WHEREFORE, the petition is hereby DISMISSED.

PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART,
INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED,respondents.
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
decision[1] of the Court of Appeals reversing the October 31, 1996 decision [2] of 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 of the Court of Appeals [3] contained a summary of
this 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
Copyright Registration 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 services of Metro 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 Edsa was 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 Deans General Manager, Rodolfo Vergara,
submitted for signature the contracts covering SM Cubao and SM Makati to SMIs
Advertising Promotions and Publicity Division Manager, Ramonlito Abano. 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 light boxes was not only for its SM Makati
branch, but also for SM Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMIs 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 of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company formerly contracted by
Pearl and Dean to fabricate its display units, offered to construct light boxes for
Shoemarts 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 exact copies 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
SMIs different branches. Pearl and Dean noted that NEMI is a sister company of
SMI.
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 SMIs establishments. It also demanded the
discontinued use of the trademark Poster Ads, and the payment to Pearl and Dean
of compensatory damages in the amount of Twenty Million Pesos
(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 SMIs stores. Claiming that both SMI and NEMI
failed to meet all its demands, Pearl and Dean filed this instant case for
infringement of trademark 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 Deans 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 cannot be appropriated as a trademark, and, as such,
registration of such 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 of action against it and that the suit was purely
intended to malign SMIs 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 Deans Certification of Copyright
Registration No. PD-R-2558 dated January 20, 1981 and Certificate of Trademark
Registration 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 SMIs
averments, admissions and denials and prayed for similar reliefs and
counterclaims as SMI.
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for
infringement of copyright 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 of RA
166, as amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - P16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiffs copyright
from 1991 to 1992
(b) moral damages - P1,000.000.00
(c) exemplary damages - P1,000,000.00
(d) attorneys fees - P1,000,000.00
plus
(e) costs of suit;
(2) to deliver, under oath, for impounding in the National Library, all light
boxes of SMI which were fabricated by Metro Industrial Services
and EYD Rainbow 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 copyright on plaintiffs light
boxes and its trademark Poster Ads.
Defendants counterclaims are hereby ordered dismissed for lack of
merit.
SO ORDERED.[4]
On appeal, however, the Court of Appeals reversed the 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 SMI
when it posited that what was copyrighted were the technical drawings only, and
not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over
the drawings like plaintiff-appellants will not extend to the actual object. It has so
been held under jurisprudence, of which 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 Seldens 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 Seldens 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 art when 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 of novelty.
The principle in Baker vs. Selden was 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 plaintiffs drawings. In this case it was 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 prevent one 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, it was held that there is no copyright
infringement when 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 Deans copyright over the
technical drawings of the latters advertising display units.
xxx xxx xxx
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 as the 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 registrants ownership of the mark or trade-name, and of the
registrants exclusive right to use the same in connection with the goods, business
or services specified 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 cards and
newsletters.
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 of
Section 20 when it stated, 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 arise whereby 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 not contemplated by our Trademark Law.
While we do not discount the striking similarity between Pearl and Deans
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 same words 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, it must stand by the consequence
of the registration which it had caused.
xxx xxx xxx
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 Deans exclusive right to the use
of Poster Ads is limited to what is written in its certificate of registration, namely,
stationeries.
Defendants-appellants cannot thus be held liable for infringement of the 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 lower court to Pearl and Dean
has no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed decision is REVERSED and
SET ASIDE, and another is rendered DISMISSING the complaint and
counterclaims in the above-entitled case for lack of merit.[5]
 Dissatisfied with the above decision, petitioner P & D filed the instant petition
assigning the following errors for the Courts consideration:
A. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT
NO COPYRIGHT INFRINGEMENT WAS COMMITTED BY
RESPONDENTS SM AND NEMI;
B. THE HONORABLE COURT OF APPEALS ERRED IN RULING THAT
NO INFRINGEMENT OF PEARL & DEANS TRADEMARK
POSTER ADS WAS COMMITTED BY RESPONDENTS SM AND
NEMI;
C. THE HONORABLE COURT OF APPEALS ERRED IN DISMISSING
THE AWARD OF THE TRIAL COURT, DESPITE THE LATTERS
FINDING, NOT DISPUTED BY THE HONORABLE COURT OF
APPEALS, THAT SM WAS GUILTY OF BAD FAITH IN ITS
NEGOTIATION OF ADVERTISING CONTRACTS WITH PEARL &
DEAN.
D. THE HONORABLE COURT OF APPEALS ERRED IN NOT
HOLDING RESPONDENTS SM AND NEMI LIABLE TO PEARL &
DEAN FOR ACTUAL, MORAL & EXEMPLARY DAMAGES,
ATTORNEYS FEES AND COSTS 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 infringement of any of
the 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 copyright of
the engineering drawings?
(3) can the owner of a registered trademark legally prevent others from
using such trademark if it is a mere abbreviation of a term descriptive of
his goods, services or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & Ds 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, petitioners 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 copyright was limited to
the drawings alone and not to the light box itself. We agree with the appellate court.
First, petitioners application for a copyright certificate as well as Copyright
Certificate No. PD-R2588 issued by the National Library on January 20, 1981 clearly
stated that it was 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 works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation,
subsist with respect to any of the following works:
xxxxxxxxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxxxxxxxx
Although petitioners copyright certificate was entitled Advertising Display Units
(which depicted the box-type electrical devices), its claim of copyright infringement
cannot be sustained.
Copyright, in the strict sense of the term, is purely a statutory right. Being a
mere statutory grant, the rights are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects and by the persons, and on
terms and conditions specified in the statute.[7] Accordingly, it can cover only the
works falling within the statutory enumeration or description.[8]
P & D secured its copyright under the classification class O work. This being
so, petitioners 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
application[9] of the laws 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 piece which 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
copyright certificate issued by the National Library as Advertising Display Units.
In fine, if SMI and NEMI reprinted P & Ds 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. SMIs and NEMIs 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 infringement of petitioners copyright
over the technical drawings? We do not think 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,[11] we 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 that
cannot be interchanged with one another. A trademark is any visible sign capable
of distinguishing the goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods. In relation thereto, a
trade name means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use
of the light boxes without license from petitioner, private respondents cannot be held
legally liable for infringement of P & Ds copyright over its technical 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. x x x (A)n inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his invention, but if he voluntarily
discloses it, such as by offering it for sale, the world is free to copy and use it with
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 petitioners advertising units were patentable inventions,
petitioner revealed them fully to the public by submitting the engineering drawings
thereof to 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 subject to appropriation without
significant restraint.[15]
On one side of the coin is the public which will benefit from new ideas; on the
other are the inventors who must be protected. As held in Bauer & Cie vs.
ODonnel,[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 between the 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
of years. 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 it and profit by 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 of the 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 must be fairly dealt with 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 of
tribute be laid on each slight technological advance in art. [19]
There is no such scrutiny in the case of copyrights 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 creation[20] and the copyright certificate is
issued upon registration with the National Library of a sworn ex-parte claim of
creation.
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 boxs 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 not have been the
intention of the law.
In the oft-cited case of Baker vs. Selden[21], 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 plaintiffs copyrighted book. The US Supreme Court ruled that:
There is no doubt that a work on the subject of book-keeping, though only
explanatory of well known systems, may be the subject of a copyright; but, then, it
is claimed only as a book. x x x. 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 subject matter. 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 a surprise
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; and a 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 great value 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 the manufacture and sale of the
medicine; 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. He may 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 without getting a patent for 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 art might or might not have been patented, is a
question, which is not before us. It was 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 of
accounts must necessarily be used as incident to 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 actual work performed by the operator who uses the art. x x x 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
letters patent. (underscoring supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark Poster Ads which
petitioners president said 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,[23] where 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 x x. 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 fact recently
reiterated in Canon Kabushiki Kaisha vs. Court of 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 infringement since registration
was an essential element thereof.
ON THE ISSUE OF UNFAIR COMPETITION
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
petitioners 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 cannot now revive its claim of unfair competition.
But even disregarding procedural issues, we nevertheless cannot hold
respondents guilty of unfair competition.
By the nature of things, there can 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 & Ds use of Poster Ads was distinctive or well-known. As noted by
the Court of Appeals, petitioners expert witnesses himself had testified that Poster
Ads was too generic a name. So it was difficult to identify it with any company,
honestly speaking.[28] This crucial admission by its own expert witness that Poster
Ads could not be associated with P & D showed that, in the mind of the public, the
goods and services carrying the trademark Poster Ads could not be distinguished
from the goods and services of other entities.
This fact also prevented the application of the doctrine of secondary 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 petitioners own expert witness that he
himself could not associate Poster Ads with petitioner P & D because it was too
generic definitely precluded the application of this exception.
Having discussed the most important and 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 Court of Makati City.
WHEREFORE, the petition is hereby DENIED and the decision of the Court of
Appeals dated May 22, 2001 is AFFIRMED in toto.
SO ORDERED.
JESSIE G. CHING, petitioner, c.) Undetermined quantity of Vehicle bearing cushion that is made up of
vs. polyvinyl chloride plastic;
WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L.
SALINAS, JENNIFER Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the
SALINAS, NOEL M. YABUT (Board of Directors and Officers of WILAWARE manufacture/fabrication of items a to d;
PRODUCT CORPORATION), respondents.
e.) Evidences of sale which include delivery receipts, invoices and official
G.R. No. 161295 June 29, 2005 receipts.6

DECISION The RTC granted the application and issued Search Warrant Nos. 01-2401 and
01-2402 for the seizure of the aforecited articles.7 In the inventory submitted by the
CALLEJO, SR., J.: NBI agent, it appears that the following articles/items were seized based on the
search warrants:
This petition for review on certiorari assails the Decision1 and Resolution2 of the
Court of Appeals (CA) in CA-G.R. SP No. 70411 affirming the January 3, 2002 and Leaf Spring eye bushing
February 14, 2002 Orders3 of the Regional Trial Court (RTC) of Manila, Branch 1,
which quashed and set aside Search Warrant Nos. 01-2401 and 01-2402 granted a) Plastic Polypropylene
in favor of petitioner Jessie G. Ching.
- C190 27 }
Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co.,
the maker and manufacturer of a Utility Model, described as "Leaf Spring Eye - C240 rear 40 }
Bushing for Automobile" made up of plastic.
- C240 front 41 } BAG 1
On September 4, 2001, Ching and Joseph Yu were issued by the National Library
Certificates of Copyright Registration and Deposit of the said work described
therein as "Leaf Spring Eye Bushing for Automobile."4 b) Polyvinyl Chloride Plastic

On September 20, 2001, Ching requested the National Bureau of Investigation - C190 13 }
(NBI) for police/investigative assistance for the apprehension and prosecution of
illegal manufacturers, producers and/or distributors of the works. 5 c) Vehicle bearing cushion

After due investigation, the NBI filed applications for search warrants in the RTC of - center bearing cushion 11 }
Manila against William Salinas, Sr. and the officers and members of the Board of
Directors of Wilaware Product Corporation. It was alleged that the respondents Budder for C190 mold 8 }
therein reproduced and distributed the said models penalized under Sections
177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought the Diesel Mold
seizure of the following:
a) Mold for spring eye bushing rear 1 set
a.) Undetermined quantity of Leaf spring eye bushing for automobile that
are made up of plastic polypropylene;
b) Mold for spring eye bushing front 1 set
b.) Undetermined quantity of Leaf spring eye bushing for automobile that
c) Mold for spring eye bushing for C190 1 set
are made up of polyvinyl chloride plastic;
 d) Mold for C240 rear 1 piece of the set
e) Mold for spring eye bushing for L300 2 sets
f) Mold for leaf spring eye bushing C190 with metal 1 set
g) Mold for vehicle bearing cushion 1 set8
The respondents filed a motion to quash the search warrants on the following
grounds:
2. The copyright registrations were issued in violation of the Intellectual Property
Code on the ground that:
a) the subject matter of the registrations are not artistic or literary;
b) the subject matter of the registrations are spare parts of automobiles
meaning there (sic) are original parts that they are designed to replace.
Hence, they are not original.9
The respondents averred that the works covered by the certificates issued by the
National Library are not artistic in nature; they are considered automotive spare
parts and pertain to technology. They aver that the models are not original, and as
such are the proper subject of a patent, not copyright.10
In opposing the motion, the petitioner averred that the court which issued the
search warrants was not the proper forum in which to articulate the issue of the
validity of the copyrights issued to him. Citing the ruling of the Court in Malaloan v.
Court of Appeals,11 the petitioner stated that a search warrant is merely a judicial
process designed by the Rules of Court in anticipation of a criminal case. Until his
copyright was nullified in a proper proceeding, he enjoys rights of a registered
owner/holder thereof.
On January 3, 2002, the trial court issued an Order12 granting the motion, and
quashed the search warrant on its finding that there was no probable cause for its
issuance. The court ruled that the work covered by the certificates issued to the
petitioner pertained to solutions to technical problems, not literary and artistic as
provided in Article 172 of the Intellectual Property Code.
His motion for reconsideration of the order having been denied by the trial courts
Order of February 14, 2002, the petitioner filed a petition for certiorari in the CA,
contending that the RTC had no jurisdiction to delve into and resolve the validity of
the copyright certificates issued to him by the National Library. He insisted that his
works are covered by Sections 172.1 and 172.2 of the Intellectual Property Code.
The petitioner averred that the copyright certificates are prima facie evidence of its
validity, citing the ruling of the United States Court of Appeals in Wildlife Express
Corporation v. Carol Wright Sales, Inc.13 The petitioner asserted that the
respondents failed to adduce evidence to support their motion to quash the search
warrants. The petitioner noted that respondent William Salinas, Jr. was not being
honest, as he was able to secure a similar copyright registration of a similar
product from the National Library on January 14, 2002.
On September 26, 2003, the CA rendered judgment dismissing the petition on its
finding that the RTC did not commit any grave abuse of its discretion in issuing the
assailed order, to wit:
It is settled that preliminarily, there must be a finding that a specific offense must
have been committed to justify the issuance of a search warrant. In a number of
cases decided by the Supreme Court, the same is explicitly provided, thus:
"The probable cause must be in connection with one specific offense, and the
judge must, before issuing the warrant, personally examine in the form of
searching questions and answers, in writing and under oath, the complainant and
any witness he may produce, on facts personally known to them and attach to the
record their sworn statements together with any affidavit submitted.
"In the determination of probable cause, the court must necessarily resolve
whether or not an offense exists to justify the issuance or quashal of the search
warrant."
In the instant case, the petitioner is praying for the reinstatement of the search
warrants issued, but subsequently quashed, for the offense of Violation of Class
Designation of Copyrightable Works under Section 177.1 in relation to Section
177.3 of Republic Act 8293, when the objects subject of the same, are patently not
copyrightable.
It is worthy to state that the works protected under the Law on Copyright are:
literary or artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf
Spring Eye Bushing and Vehicle Bearing Cushion fall on neither classification.
Accordingly, if, in the first place, the item subject of the petition is not entitled to be
protected by the law on copyright, how can there be any violation?14
The petitioners motion for reconsideration of the said decision suffered the same
fate. The petitioner forthwith filed the present petition for review on certiorari,
contending that the revocation of his copyright certificates should be raised in a
direct action and not in a search warrant proceeding.
The petitioner posits that even assuming ex argumenti that the trial court may
resolve the validity of his copyright in a proceeding to quash a search warrant for
allegedly infringing items, the RTC committed a grave abuse of its discretion when
it declared that his works are not copyrightable in the first place. He claims that
R.A. No. 8293, otherwise known as the Intellectual Property Code of the
Philippines, which took effect on January 1, 1998, provides in no uncertain terms
that copyright protection automatically attaches to a work by the sole fact of its
creation, irrespective of its mode or form of expression, as well as of its content,
quality or purpose.15 The law gives a non-inclusive definition of "work" as referring
to original intellectual creations in the literary and artistic domain protected from
the moment of their creation; and includes original ornamental designs or models
for articles of manufacture, whether or not registrable as an industrial design and
other works of applied art under Section 172.1(h) of R.A. No. 8293.lawphil.net
As such, the petitioner insists, notwithstanding the classification of the works as
either literary and/or artistic, the said law, likewise, encompasses works which may
have a bearing on the utility aspect to which the petitioners utility designs were
classified. Moreover, according to the petitioner, what the Copyright Law protects
is the authors intellectual creation, regardless of whether it is one with utilitarian
functions or incorporated in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not provide that the intended use or
use in industry of an article eligible for patent bars or invalidates its registration
under the Law on Copyright. The test of protection for the aesthetic is not beauty
and utility, but art for the copyright and invention of original and ornamental design
for design patents.16 In like manner, the fact that his utility designs or models for
articles of manufacture have been expressed in the field of automotive parts, or
based on something already in the public domain does not automatically remove
them from the protection of the Law on Copyright.17
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives
the same presumption to an affidavit executed by an author who claims copyright
ownership of his work.
The petitioner adds that a finding of probable cause to justify the issuance of a
search warrant means merely a reasonable suspicion of the commission of the
offense. It is not equivalent to absolute certainty or a finding of actual and positive
cause.18 He assists that the determination of probable cause does not concern the
issue of whether or not the alleged work is copyrightable. He maintains that to
justify a finding of probable cause in the issuance of a search warrant, it is enough
that there exists a reasonable suspicion of the commission of the offense.
The petitioner contends that he has in his favor the benefit of the presumption that
his copyright is valid; hence, the burden of overturning this presumption is on the
alleged infringers, the respondents herein. But this burden cannot be carried in a
hearing on a proceeding to quash the search warrants, as the issue therein is
whether there was probable cause for the issuance of the search warrant. The
petitioner concludes that the issue of probable cause should be resolved without
invalidating his copyright.
In their comment on the petition, the respondents aver that the work of the
petitioner is essentially a technical solution to the problem of wear and tear in
automobiles, the substitution of materials, i.e., from rubber to plastic matter of
polyvinyl chloride, an oil resistant soft texture plastic material strong enough to
endure pressure brought about by the vibration of the counter bearing and thus
brings bushings. Such work, the respondents assert, is the subject of copyright
under Section 172.1 of R.A. No. 8293. The respondents posit that a technical
solution in any field of human activity which is novel may be the subject of a
patent, and not of a copyright. They insist that the certificates issued by the
National Library are only certifications that, at a point in time, a certain work was
deposited in the said office. Furthermore, the registration of copyrights does not
provide for automatic protection. Citing Section 218.2(b) of R.A. No. 8293, the
respondents aver that no copyright is said to exist if a party categorically questions
its existence and legality. Moreover, under Section 2, Rule 7 of the Implementing
Rules of R.A. No. 8293, the registration and deposit of work is not conclusive as to
copyright outlay or the time of copyright or the right of the copyright owner. The
respondents maintain that a copyright exists only when the work is covered by the
protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the issue whether the
petitioners utility models are copyrightable and, if so, whether he is the owner of a
copyright over the said models. It bears stressing that upon the filing of the
application for search warrant, the RTC was duty-bound to determine whether
probable cause existed, in accordance with Section 4, Rule 126 of the Rules of
Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. A search warrant shall not issue
but upon probable cause in connection with one specific offense to be determined
personally by the judge after examination under oath or affirmation of the
complainant and the witnesses he may produce, and, particularly, describing the
place to be searched and the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court
held that in the determination of probable cause, the court must necessarily
resolve whether or not an offense exists to justify the issuance of a search warrant
or the quashal of one already issued by the court. Indeed, probable cause is
deemed to exist only where facts and circumstances exist which could lead a
reasonably cautious and prudent man to believe that an offense has been
committed or is being committed. Besides, in Section 3, Rule 126 of the Rules of
Criminal Procedure, a search warrant may be issued for the search and seizure of
personal property (a) subject of the offense; (b) stolen or embezzled and other
proceeds or fruits of the offense; or (c) used or intended to be used as the means
of committing an offense.
The RTC is mandated under the Constitution and Rules of Criminal Procedure to
determine probable cause. The court cannot abdicate its constitutional obligation
by refusing to determine whether an offense has been committed.20 The absence
of probable cause will cause the outright nullification of the search warrant.21
For the RTC to determine whether the crime for infringement under R.A. No. 8293
as alleged in an application is committed, the petitioner-applicant was burdened to
prove that (a) respondents Jessie Ching and Joseph Yu were the owners of
copyrighted material; and (b) the copyrighted material was being copied and
distributed by the respondents. Thus, the ownership of a valid copyright is
essential.22
Ownership of copyrighted material is shown by proof of originality and
copyrightability. By originality is meant that the material was not copied, and
evidences at least minimal creativity; that it was independently created by the
author and that it possesses at least same minimal degree of creativity. 23 Copying
is shown by proof of access to copyrighted material and substantial similarity
between the two works.24 The applicant must thus demonstrate the existence and
the validity of his copyright because in the absence of copyright protection, even
original creation may be freely copied.25
By requesting the NBI to investigate and, if feasible, file an application for a search
warrant for infringement under R.A. No. 8293 against the respondents, the
petitioner thereby authorized the RTC (in resolving the application), to delve into
and determine the validity of the copyright which he claimed he had over the utility
models. The petitioner cannot seek relief from the RTC based on his claim that he
was the copyright owner over the utility models and, at the same time, repudiate
the courts jurisdiction to ascertain the validity of his claim without running afoul to
the doctrine of estoppel.
To discharge his burden, the applicant may present the certificate of registration
covering the work or, in its absence, other evidence.26 A copyright certificate
provides prima facie evidence of originality which is one element of copyright
validity. It constitutes prima facie evidence of both validity and ownership27 and the
validity of the facts stated in the certificate.28 The presumption of validity to a
certificate of copyright registration merely orders the burden of proof. The applicant
should not ordinarily be forced, in the first instance, to prove all the multiple facts
that underline the validity of the copyright unless the respondent, effectively
challenging them, shifts the burden of doing so to the applicant. 29 Indeed, Section
218.2 of R.A. No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject
matter to which the action relates if the defendant does not put in issue the
question whether copyright subsists in the work or other subject matter;
and
(b) Where the subsistence of the copyright is established, the plaintiff shall
be presumed to be the owner of the copyright if he claims to be the owner
of the copyright and the defendant does not put in issue the question of his
ownership.
A certificate of registration creates no rebuttable presumption of copyright validity
where other evidence in the record casts doubt on the question. In such a case,
validity will not be presumed.30
To discharge his burden of probable cause for the issuance of a search warrant for
violation of R.A. No. 8293, the petitioner-applicant submitted to the RTC Certificate
of Copyright Registration Nos. 2001-197 and 2001-204 dated September 3, 2001
and September 4, 2001, respectively, issued by the National Library covering work
identified as Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion
both classified under Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. 172.1. Literary and artistic works,
hereinafter referred to as "works," are original intellectual creations in the literary
and artistic domain protected from the moment of their creation and shall include in
particular:
...
(h) Original ornamental designs or models for articles of manufacture, whether or
not registrable as an industrial design, and other works of applied art.
Related to the provision is Section 171.10, which provides that a "work of applied
art" is an artistic creation with utilitarian functions or incorporated in a useful article,
whether made by hand or produced on an industrial scale.
But, as gleaned from the specifications appended to the application for a copyright
certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile
is merely a utility model described as comprising a generally cylindrical body
having a co-axial bore that is centrally located and provided with a perpendicular
flange on one of its ends and a cylindrical metal jacket surrounding the peripheral
walls of said body, with the bushing made of plastic that is either polyvinyl chloride
or polypropylene.31 Likewise, the Vehicle Bearing Cushion is illustrated as a
bearing cushion comprising a generally semi-circular body having a central hole to
secure a conventional bearing and a plurality of ridges provided therefore, with
said cushion bearing being made of the same plastic materials.32 Plainly, these are
not literary or artistic works. They are not intellectual creations in the literary and
artistic domain, or works of applied art. They are certainly not ornamental designs
or one having decorative quality or value.
It bears stressing that the focus of copyright is the usefulness of the artistic design,
and not its marketability. The central inquiry is whether the article is a work of
art.33 Works for applied art include all original pictorials, graphics, and sculptural
works that are intended to be or have been embodied in useful article regardless of
factors such as mass production, commercial exploitation, and the potential
availability of design patent protection.34
As gleaned from the description of the models and their objectives, these articles
are useful articles which are defined as one having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey information.
Indeed, while works of applied art, original intellectual, literary and artistic works
are copyrightable, useful articles and works of industrial design are not. 35 A useful
article may be copyrightable only if and only to the extent that such design
incorporates pictorial, graphic, or sculptural features that can be identified
separately from, and are capable of existing independently of the utilitarian aspects
of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No.
8293), that the authors intellectual creation, regardless of whether it is a creation
with utilitarian functions or incorporated in a useful article produced on an industrial
scale, is protected by copyright law. However, the law refers to a "work of applied
art which is an artistic creation." It bears stressing that there is no copyright
protection for works of applied art or industrial design which have aesthetic or
artistic features that cannot be identified separately from the utilitarian aspects of
the article.36Functional components of useful articles, no matter how artistically
designed, have generally been denied copyright protection unless they are
separable from the useful article.37
In this case, the petitioners models are not works of applied art, nor artistic works.
They are utility models, useful articles, albeit with no artistic design or value. Thus,
the petitioner described the utility model as follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are
made of hard rubber. These rubber bushings after a time, upon subjecting them to
so much or intermittent pressure would eventually wore (sic) out that would cause
the wobbling of the leaf spring.
The primary object of this utility model, therefore, is to provide a leaf-spring eye
bushing for automobile that is made up of plastic.
Another object of this utility model is to provide a leaf-spring eye bushing for
automobiles made of polyvinyl chloride, an oil resistant soft texture plastic or
polypropylene, a hard plastic, yet both causes cushion to the leaf spring, yet strong
enough to endure pressure brought about by the up and down movement of said
leaf spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for
automobiles that has a much longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye bushing for
automobiles that has a very simple construction and can be made using simple
and ordinary molding equipment.
A further object of this utility model is to provide a leaf-spring eye bushing for
automobile that is supplied with a metal jacket to reinforce the plastic eye bushing
when in engaged with the steel material of the leaf spring.
These and other objects and advantages will come to view and be understood
upon a reading of the detailed description when taken in conjunction with the
accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the
present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings wherein like reference
numerals designated same parts throughout, there is shown a utility model for a
leaf-spring eye bushing for automobile generally designated as reference numeral
10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a
co-axial bore 12 centrally provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a
perpendicular flange 13 on one of its ends and a cylindrical metal jacket 14
surrounding the peripheral walls 15 of said body 11. When said leaf-spring bushing
10 is installed, the metal jacket 14 acts with the leaf-spring eye (not shown), which
is also made of steel or cast steel. In effect, the bushing 10 will not be directly in
contact with steel, but rather the metal jacket, making the life of the bushing 10
longer than those without the metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl
chloride, an oil resistant soft texture plastic or a hard polypropylene plastic, both
are capable to endure the pressure applied thereto, and, in effect, would lengthen
the life and replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said
bushing 10 is insertably provided with a steel tube 17 to reinforce the inner portion
thereof. This steel tube 17 accommodates or engages with the leaf-spring bolt (not
shown) connecting the leaf spring and the automobiles chassis.
Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is
elongated and cylindrical as to its construction. Said another embodiment is also
made of polypropylene or polyvinyl chloride plastic material. The steel tube 17 and
metal jacket 14 may also be applied to this embodiment as an option thereof.38
VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for vehicle propeller shafts
are made of hard rubber. These rubber bushings after a time, upon subjecting
them to so much or intermittent pressure would eventually be worn out that would
cause the wobbling of the center bearing.
The primary object of this utility model therefore is to provide a vehicle-bearing
cushion that is made up of plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of
polyvinyl chloride, an oil resistant soft texture plastic material which causes
cushion to the propellers center bearing, yet strong enough to endure pressure
brought about by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a
much longer life span than rubber bushings.
Still an object of this utility model is to provide a vehicle bearing cushion that has a
very simple construction and can be made using simple and ordinary molding
equipment.
These and other objects and advantages will come to view and be understood
upon a reading of the detailed description when taken in conjunction with the
accompanying drawings.
Figure 1 is a perspective view of the present utility model for a vehicle-bearing
cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing, wherein like reference numeral
designate same parts throughout, there is shown a utility model for a vehicle-
bearing cushion generally designated as reference numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular body 11, having
central hole 12 to house a conventional bearing (not shown). As shown in Figure 1,
said body 11 is provided with a plurality of ridges 13 which serves reinforcing
means thereof.
The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and
chemical resistant plastic material which is strong, durable and capable of
enduring severe pressure from the center bearing brought about by the rotating
movement of the propeller shaft of the vehicle.39
A utility model is a technical solution to a problem in any field of human activity
which is new and industrially applicable. It may be, or may relate to, a product, or
process, or an improvement of any of the aforesaid.40Essentially, a utility model
refers to an invention in the mechanical field. This is the reason why its object is
sometimes described as a device or useful object.41 A utility model varies from an
invention, for which a patent for invention is, likewise, available, on at least three
aspects: first, the requisite of "inventive step"42 in a patent for invention is not
required; second, the maximum term of protection is only seven years 43 compared
to a patent which is twenty years,44 both reckoned from the date of the application;
and third, the provisions on utility model dispense with its substantive
examination45 and prefer for a less complicated system.
Being plain automotive spare parts that must conform to the original structural
design of the components they seek to replace, the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion are not ornamental. They lack the decorative quality or
value that must characterize authentic works of applied art. They are not even
artistic creations with incidental utilitarian functions or works incorporated in a
useful article. In actuality, the personal properties described in the search warrants
are mechanical works, the principal function of which is utility sans any aesthetic
embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion as included in the catch-all phrase "other literary, scholarly, scientific and
artistic works" in Section 172.1(a) of R.A. No. 8293. Applying the principle
of ejusdem generis which states that "where a statute describes things of a
particular class or kind accompanied by words of a generic character, the generic
word will usually be limited to things of a similar nature with those particularly
enumerated, unless there be something in the context of the state which would
repel such inference,"46 the Leaf Spring Eye Bushing and Vehicle Bearing Cushion
are not copyrightable, being not of the same kind and nature as the works
enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite
the issuance of the certificates of copyright registration and the deposit of the Leaf
Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v.
Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,48 the
Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right
regulated by it. Being a statutory grant, the rights are only such as the statute
confers, and may be obtained and enjoyed only with respect to the subjects and by
the persons, and on terms and conditions specified in the statute. Accordingly, it
can cover only the works falling within the statutory enumeration or description.
That the works of the petitioner may be the proper subject of a patent does not
entitle him to the issuance of a search warrant for violation of copyright laws.
In Kho v. Court of Appeals49 and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,50 the Court ruled that "these copyright and patent rights are
completely distinct and separate from one another, and the protection afforded by
one cannot be used interchangeably to cover items or works
that exclusively pertain to the others." The Court expounded further, thus:
Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another. A trademark is any visible sign capable
of distinguishing the goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods. In relation thereto, a
trade name means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.
The petitioner cannot find solace in the ruling of the United States Supreme Court
in Mazer v. Stein51 to buttress his petition. In that case, the artifacts involved in that
case were statuettes of dancing male and female figures made of semi-vitreous
china. The controversy therein centered on the fact that although copyrighted as
"works of art," the statuettes were intended for use and used as bases for table
lamps, with electric wiring, sockets and lampshades attached. The issue raised
was whether the statuettes were copyright protected in the United States,
considering that the copyright applicant intended primarily to use them as lamp
bases to be made and sold in quantity, and carried such intentions into effect. At
that time, the Copyright Office interpreted the 1909 Copyright Act to cover works of
artistic craftsmanship insofar as their form, but not the utilitarian aspects, were
concerned. After reviewing the history and intent of the US Congress on its
copyright legislation and the interpretation of the copyright office, the US Supreme
Court declared that the statuettes were held copyrightable works of art or models
or designs for works of art. The High Court ruled that:
"Works of art (Class G) (a) In General. This class includes works of artistic
craftsmanship, in so far as their form but not their mechanical or utilitarian aspects
are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as
well as all works belonging to the fine arts, such as paintings, drawings and
sculpture. "
So we have a contemporaneous and long-continued construction of the statutes by
the agency charged to administer them that would allow the registration of such a
statuette as is in question here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic
is not beauty and utility but art for the copyright and the invention of original and
ornamental design for design patents." Significantly, the copyright office
promulgated a rule to implement Mazer to wit:

[I]f "the sole intrinsic function of an article is its utility, the fact that the work is
unique and attractively shaped will not qualify it as a work of art."

In this case, the bushing and cushion are not works of art. They are, as the
petitioner himself admitted, utility models which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for
lack of merit. The assailed Decision and Resolution of the Court of Appeals in CA-
G.R. SP No. 70411 are AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402
issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs against the
petitioner.

SO ORDERED.