EN BANC

[G.R. No. 118295. May 2, 1997]

OCAMPO, in his capacity as Secretary of

Finance; ROBERTO ROMULO, in his
capacity as Secretary of Foreign Affairs;
and TEOFISTO T. GUINGONA, in his
capacity
as
Executive
Secretary, respondents.
DECISION

WIGBERTO
E.
TAADA
and
ANNA
DOMINIQUE COSETENG, as members
of the Philippine Senate and as taxpayers;
GREGORIO ANDOLANA and JOKER
ARROYO as members of the House of
Representatives and as taxpayers;
NICANOR P. PERLAS and HORACIO
R. MORALES, both as taxpayers; CIVIL
LIBERTIES
UNION,
NATIONAL
ECONOMIC
PROTECTIONISM
ASSOCIATION,
CENTER
FOR
ALTERNATIVE
DEVELOPMENT
INITIATIVES,
LIKAS-KAYANG
KAUNLARAN FOUNDATION, INC.,
PHILIPPINE
RURAL
RECONSTRUCTION
MOVEMENT,
DEMOKRATIKONG KILUSAN NG
MAGBUBUKID NG PILIPINAS, INC.,
and
PHILIPPINE
PEASANT
INSTITUTE, in representation of various
taxpayers and as non-governmental
organizations, petitioners, vs. EDGARDO
ANGARA,
ALBERTO
ROMULO,
LETICIA
RAMOS-SHAHANI,
HEHERSON ALVAREZ, AGAPITO
AQUINO,
RODOLFO
BIAZON,
NEPTALI
GONZALES, ERNESTO
HERRERA, JOSE LINA, GLORIA
MACAPAGAL-ARROYO, ORLANDO
MERCADO, BLAS OPLE, JOHN
OSMEA,
SANTANINA
RASUL,
RAMON REVILLA, RAUL ROCO,
FRANCISCO TATAD and FREDDIE
WEBB, in their respective capacities as
members of the Philippine Senate who
concurred in the ratification by the
President of the Philippines of the
Agreement Establishing the World Trade
Organization; SALVADOR ENRIQUEZ,
in his capacity as Secretary of Budget and
Management;
CARIDAD
VALDEHUESA, in her capacity as
National
Treasurer;
RIZALINO
NAVARRO, in his capacity as Secretary
of Trade and Industry; ROBERTO
SEBASTIAN, in his capacity as Secretary
of
Agriculture;
ROBERTO
DE

PANGANIBAN, J.:
The emergence on January 1, 1995 of the
World Trade Organization, abetted by the
membership thereto of the vast majority of
countries has revolutionized international business
and economic relations amongst states. It has
irreversibly propelled the world towards trade
liberalization
and
economic
globalization. Liberalization,
globalization,
deregulation and privatization, the third-millennium
buzz words, are ushering in a new borderless world
of business by sweeping away as mere historical
relics the heretofore traditional modes of promoting
and protecting national economies like tariffs,
export subsidies, import quotas, quantitative
restrictions, tax
exemptions
and
currency
controls. Finding market niches and becoming the
best in specific industries in a market-driven and
export-oriented global scenario are replacing ageold beggar-thy-neighbor policies that unilaterally
protect weak and inefficient domestic producers of
goods and services. In the words of Peter Drucker,
the well-known management guru, Increased
participation in the world economy has become the
key to domestic economic growth and prosperity.
Brief Historical Background
To hasten worldwide recovery from the
devastation wrought by the Second World War,
plans for the establishment of three multilateral
institutions -- inspired by that grand political body,
the United Nations -- were discussed at Dumbarton
Oaks and Bretton Woods. The first was the World
Bank (WB) which was to address the rehabilitation
and reconstruction of war-ravaged and later
developing countries; the second, the International
Monetary Fund (IMF) which was to deal with
currency problems; and the third, the International
Trade Organization (ITO), which was to foster
order and predictability in world trade and to
minimize unilateral protectionist policies that invite
challenge,
even
retaliation,
from
other
states. However, for a variety of reasons, including

its non-ratification by the United States, the ITO,

unlike the IMF and WB, never took off. What
remained was only GATT -- the General Agreement
on Tariffs and Trade. GATT was a collection of
treaties governing access to the economies of treaty
adherents with no institutionalized body
administering the agreements or dependable system
of dispute settlement.
After half a century and several dizzying
rounds of negotiations, principally the Kennedy
Round, the Tokyo Round and the Uruguay Round,
the world finally gave birth to that administering
body -- the World Trade Organization -- with the
signing of the Final Act in Marrakesh, Morocco and
the ratification of the WTO Agreement by its
members.[1]
Like many other developing countries, the
Philippines joined WTO as a founding member
with the goal, as articulated by President Fidel V.
Ramos in two letters to the Senate (infra), of
improving Philippine access to foreign markets,
especially its major trading partners, through the
reduction of tariffs on its exports, particularly
agricultural
and
industrial
products. The
President also saw in the WTO the opening of new
opportunities for the services sector x x x, (the
reduction of) costs and uncertainty associated with
exporting x x x, and (the attraction of) more
investments into the country. Although the Chief
Executive did not expressly mention it in his letter,
the Philippines - - and this is of special interest to
the legal profession - - will benefit from the WTO
system of dispute settlement by judicial
adjudication through the independent WTO
settlement bodies called (1) Dispute Settlement
Panels and (2) Appellate Tribunal. Heretofore, trade
disputes were settled mainly through negotiations
where solutions were arrived at frequently on the
basis of relative bargaining strengths, and where
naturally, weak and underdeveloped countries were
at a disadvantage.
The Petition in Brief
Arguing mainly (1) that the WTO requires the
Philippines to place nationals and products of
member-countries on the same footing as Filipinos
and local products and (2) that the WTO intrudes,
limits and/or impairs the constitutional powers of
both Congress and the Supreme Court, the instant
petition before this Court assails the WTO
Agreement for violating the mandate of the 1987
Constitution to develop a self-reliant and

independent
national
economy
effectively
controlled by Filipinos x x x (to) give preference to
qualified Filipinos (and to) promote the preferential
use of Filipino labor, domestic materials and locally
produced goods.
Simply stated, does the Philippine Constitution
prohibit Philippine participation in worldwide trade
liberalization and economic globalization? Does it
prescribe Philippine integration into a global
economy that is liberalized, deregulated and
privatized? These are the main questions raised in
this
petition
for certiorari,
prohibition
and mandamus under Rule 65 of the Rules of Court
praying (1) for the nullification, on constitutional
grounds, of the concurrence of the Philippine
Senate in the ratification by the President of the
Philippines of the Agreement Establishing the
World Trade Organization (WTO Agreement, for
brevity) and (2) for the prohibition of its
implementation and enforcement through the
release and utilization of public funds, the
assignment of public officials and employees, as
well as the use of government properties and
resources by respondent-heads of various executive
offices concerned therewith. This concurrence is
embodied in Senate Resolution No. 97, dated
December 14, 1994.
The Facts
On April 15, 1994, Respondent Rizalino
Navarro,
then
Secretary
of
the Department of Trade and Industry
(Secretary
Navarro, for brevity), representing the Government
of the Republic of the Philippines, signed in
Marrakesh, Morocco, the Final Act Embodying the
Results of the Uruguay Round of Multilateral
Negotiations (Final Act, for brevity).
By signing the Final Act,[2] Secretary Navarro
on behalf of the Republic of the Philippines, agreed:
(a) to submit, as appropriate, the WTO Agreement
for the consideration of their respective competent
authorities, with a view to seeking approval of the
Agreement in accordance with their procedures;
and
(b) to adopt the Ministerial Declarations and
Decisions.
On August 12, 1994, the members of the
Philippine Senate received a letter dated August 11,
1994 from the President of the Philippines, [3] stating

among others that the Uruguay Round Final Act is

hereby submitted to the Senate for its concurrence
pursuant to Section 21, Article VII of the
Constitution.

Agreement
on Technical
Barriers to Trade
Agreement on Trade-Related
Investment Measures

On August 13, 1994, the members of the

Philippine Senate received another letter from the
President of the Philippines[4] likewise dated August
11, 1994, which stated among others that the
Uruguay Round Final Act, the Agreement
Establishing the World Trade Organization, the
Ministerial Declarations and Decisions, and the
Understanding on Commitments in Financial
Services are hereby submitted to the Senate for its
concurrence pursuant to Section 21, Article VII of
the Constitution.

Agreement on Implementation
of
Article
VI
of
the General Agreement
on Tariffs and Trade
1994
Agreement on Implementation
of Article VII of the
General on Tariffs and
Trade 1994

On December 9, 1994, the President of the

Philippines certified the necessity of the immediate
adoption of P.S. 1083, a resolution entitled
Concurring in the Ratification of the Agreement
Establishing the World Trade Organization.[5]
On December 14, 1994, the Philippine Senate
adopted Resolution No. 97 which Resolved, as it is
hereby resolved, that the Senate concur, as it hereby
concurs, in the ratification by the President of the
Philippines of the Agreement Establishing the
World Trade Organization.[6] The text of the WTO
Agreement is written on pages 137 et seq. of
Volume I of the 36-volume Uruguay Round of
Multilateral Trade Negotiations and includes
various agreements and associated legal instruments
(identified in the said Agreement as Annexes 1, 2
and 3 thereto and collectively referred to as
Multilateral Trade Agreements, for brevity) as
follows:

Agreement on Pre-Shipment
Inspection
Agreement on Rules of Origin
Agreement
on
Imports
Licensing Procedures
Agreement on Subsidies and
Coordinating Measures
Agreement on Safeguards
Annex 1B: General Agreement on Trade in Services
and Annexes
Annex 1C: Agreement on Trade-Related Aspects of
Intellectual Property Rights
ANNEX 2

ANNEX 1

Understanding on Rules and

Procedures Governing the
Settlement of Disputes

Annex 1A: Multilateral Agreement on Trade in

Goods
General Agreement on Tariffs
and Trade 1994
Agreement on Agriculture
Agreement on the Application
of Sanitary and
Phytosanitary Measures
Agreement on Textiles and
Clothing

ANNEX 3
Trade Policy Review Mechanism
On December 16, 1994, the President of the
Philippines signed[7] the Instrument of Ratification,
declaring:
NOW THEREFORE, be it known that I, FIDEL V.
RAMOS, President of the Republic of the
Philippines, after having seen and considered the
aforementioned Agreement Establishing the World
Trade Organization and the agreements and

associated legal instruments included in Annexes

one (1), two (2) and three (3) of that Agreement
which are integral parts thereof, signed at
Marrakesh, Morocco on 15 April 1994, do hereby
ratify and confirm the same and every Article and
Clause thereof.
To emphasize, the WTO Agreement ratified by
the President of the Philippines is composed of the
Agreement Proper and the associated legal
instruments included in Annexes one (1), two (2)
and three (3) of that Agreement which are integral
parts thereof.
On the other hand, the Final Act signed by
Secretary Navarro embodies not only the WTO
Agreement
(and
its
integral
annexes
aforementioned) but also (1) the Ministerial
Declarations and Decisions and (2) the
Understanding on Commitments in Financial
Services. In his Memorandum dated May 13, 1996,
[8]
the Solicitor General describes these two latter
documents as follows:
The Ministerial Decisions and Declarations are
twenty-five declarations and decisions on a wide
range of matters, such as measures in favor of least
developed countries, notification procedures,
relationship of WTO with the International
Monetary Fund (IMF), and agreements on technical
barriers to trade and on dispute settlement.
The Understanding on Commitments in Financial
Services dwell on, among other things, standstill or
limitations and qualifications of commitments to
existing non-conforming measures, market access,
national treatment, and definitions of non-resident
supplier of financial services, commercial presence
and new financial service.
On December 29, 1994, the present petition
was filed. After careful deliberation on respondents
comment and petitioners reply thereto, the Court
resolved on December 12, 1995, to give due course
to the petition, and the parties thereafter filed their
respective memoranda. The Court also requested
the Honorable Lilia R. Bautista, the Philippine
Ambassador to the United Nations stationed in
Geneva, Switzerland, to submit a paper, hereafter
referred to as Bautista Paper,[9] for brevity, (1)
providing a historical background of and (2)
summarizing the said agreements.
During the Oral Argument held on August 27,
1996, the Court directed:

(a) the petitioners to submit the (1) Senate

Committee Report on the matter in controversy and
(2) the transcript of proceedings/hearings in the
Senate; and
(b) the Solicitor General, as counsel for
respondents, to file (1) a list of Philippine treaties
signed prior to the Philippine adherence to the
WTO Agreement, which derogate from Philippine
sovereignty and (2) copies of the multi-volume
WTO Agreement and other documents mentioned
in the Final Act, as soon as possible.
After receipt of the foregoing documents, the
Court said it would consider the case submitted for
resolution. In a Compliance dated September 16,
1996, the Solicitor General submitted a printed
copy of the 36-volume Uruguay Round of
Multilateral Trade Negotiations, and in another
Compliance dated October 24, 1996, he listed the
various bilateral or multilateral treaties or
international instruments involving derogation of
Philippine sovereignty. Petitioners, on the other
hand, submitted their Compliance dated January 28,
1997, on January 30, 1997.
The Issues
In their Memorandum dated March 11, 1996,
petitioners summarized the issues as follows:
A. Whether the petition presents a political question
or is otherwise not justiciable.
B. Whether the petitioner members of the
Senate who participated in the deliberations
and voting leading to the concurrence are
estopped from impugning the validity of
the Agreement Establishing the World
Trade Organization or of the validity of the
concurrence.
C. Whether the provisions of the Agreement
Establishing the World Trade Organization
contravene the provisions of Sec. 19,
Article II, and Secs. 10 and 12, Article XII,
all of the 1987 Philippine Constitution.
D. Whether provisions of the Agreement
Establishing the World Trade Organization
unduly limit, restrict and impair Philippine
sovereignty specifically the legislative
power which, under Sec. 2, Article VI,

1987 Philippine Constitution is vested in

the Congress of the Philippines;
E. Whether provisions of the Agreement
Establishing the World Trade Organization
interfere with the exercise of judicial
power.
F. Whether the respondent members of the
Senate acted in grave abuse of discretion
amounting to lack or excess of jurisdiction
when they voted for concurrence in the
ratification of the constitutionally-infirm
Agreement Establishing the World Trade
Organization.
G. Whether the respondent members of the
Senate acted in grave abuse of discretion
amounting to lack or excess of jurisdiction
when they concurred only in the
ratification of the Agreement Establishing
the World Trade Organization, and not with
the Presidential submission which included
the Final Act, Ministerial Declaration and
Decisions, and the Understanding on
Commitments in Financial Services.
On the other hand, the Solicitor General as
counsel for respondents synthesized the several
issues raised by petitioners into the following:[10]
1. Whether or not the provisions of the Agreement
Establishing the World Trade Organization and the
Agreements and Associated Legal Instruments
included in Annexes one (1), two (2) and three (3)
of that agreement cited by petitioners directly
contravene or undermine the letter, spirit and intent
of Section 19, Article II and Sections 10 and 12,
Article XII of the 1987 Constitution.
2. Whether or not certain provisions of the
Agreement unduly limit, restrict or impair the
exercise of legislative power by Congress.
3. Whether or not certain provisions of the
Agreement impair the exercise of judicial power by
this Honorable Court in promulgating the rules of
evidence.
4. Whether or not the concurrence of the Senate in
the ratification by the President of the Philippines
of the Agreement establishing the World Trade
Organization implied rejection of the treaty
embodied in the Final Act.

By raising and arguing only four issues against

the seven presented by petitioners, the Solicitor
General has effectively ignored three, namely: (1)
whether the petition presents a political question or
is otherwise not justiciable; (2) whether petitionermembers of the Senate (Wigberto E. Taada and
Anna Dominique Coseteng) are estopped from
joining this suit; and (3) whether the respondentmembers of the Senate acted in grave abuse of
discretion when they voted for concurrence in the
ratification of the WTO Agreement. The foregoing
notwithstanding, this Court resolved to deal with
these three issues thus:
(1) The political question issue -- being very
fundamental and vital, and being a matter that
probes into the very jurisdiction of this Court to
hear and decide this case -- was deliberated upon by
the Court and will thus be ruled upon as the first
issue;
(2) The matter of estoppel will not be taken up
because this defense is waivable and the
respondents have effectively waived it by not
pursuing it in any of their pleadings; in any event,
this issue, even if ruled in respondents favor, will
not cause the petitions dismissal as there are
petitioners other than the two senators, who are not
vulnerable to the defense of estoppel; and
(3) The issue of alleged grave abuse of discretion
on the part of the respondent senators will be taken
up as an integral part of the disposition of the four
issues raised by the Solicitor General.
During its deliberations on the case, the Court
noted that the respondents did not question
the locus standi of petitioners. Hence, they are also
deemed to have waived the benefit of such
issue. They probably realized that grave
constitutional issues, expenditures of public funds
and serious international commitments of the nation
are involved here, and that transcendental public
interest requires that the substantive issues be met
head on and decided on the merits, rather than
skirted or deflected by procedural matters.[11]
To recapitulate, the issues that will be ruled
upon shortly are:
(1) DOES THE PETITION PRESENT A
JUSTICIABLE
CONTROVERSY? OTHERWISE
STATED, DOES THE PETITION
INVOLVE
A
POLITICAL

QUESTION OVER WHICH THIS

COURT HAS NO JURISDICTION?
(2) DO THE PROVISIONS OF THE
WTO AGREEMENT AND ITS
THREE ANNEXES CONTRAVENE
SEC. 19, ARTICLE II, AND SECS.
10 AND 12, ARTICLE XII, OF THE
PHILIPPINE CONSTITUTION?
(3) DO THE PROVISIONS OF SAID
AGREEMENT AND ITS ANNEXES
LIMIT, RESTRICT, OR IMPAIR
THE EXERCISE OF LEGISLATIVE
POWER BY CONGRESS?
(4) DO SAID PROVISIONS UNDULY
IMPAIR OR INTERFERE WITH
THE EXERCISE OF JUDICIAL
POWER BY THIS COURT IN
PROMULGATING RULES ON
EVIDENCE?
(5) WAS THE CONCURRENCE OF THE
SENATE
IN
THE
WTO
AGREEMENT AND ITS ANNEXES
SUFFICIENT AND/OR VALID,
CONSIDERING THAT IT DID NOT
INCLUDE THE FINAL ACT,
MINISTERIAL DECLARATIONS
AND DECISIONS, AND THE
UNDERSTANDING
ON
COMMITMENTS IN FINANCIAL
SERVICES?
The First Issue: Does the Court Have Jurisdiction
Over the Controversy?
In seeking to nullify an act of the Philippine
Senate on the ground that it contravenes the
Constitution, the petition no doubt raises a
justiciable controversy. Where an action of the
legislative branch is seriously alleged to have
infringed the Constitution, it becomes not only the
right but in fact the duty of the judiciary to settle the
dispute. The question thus posed is judicial rather
than political. The duty (to adjudicate) remains to
assure that the supremacy of the Constitution is
upheld.[12] Once a controversy as to the application
or interpretation of a constitutional provision is
raised before this Court (as in the instant case), it
becomes a legal issue which the Court is bound by
constitutional mandate to decide.[13]

The jurisdiction of this Court to adjudicate the

matters[14] raised in the petition is clearly set out in
the 1987 Constitution,[15] as follows:
Judicial power includes the duty of the courts of
justice to settle actual controversies involving rights
which are legally demandable and enforceable, and
to determine whether or not there has been a grave
abuse of discretion amounting to lack or excess of
jurisdiction on the part of any branch or
instrumentality of the government.
The foregoing text emphasizes the judicial
departments duty and power to strike down grave
abuse of discretion on the part of any branch or
instrumentality
of
government
including
Congress. It is an innovation in our political law.
[16]
As explained by former Chief Justice Roberto
Concepcion,[17] the judiciary is the final arbiter on
the question of whether or not a branch of
government or any of its officials has acted without
jurisdiction or in excess of jurisdiction or so
capriciously as to constitute an abuse of discretion
amounting to excess of jurisdiction. This is not only
a judicial power but a duty to pass judgment on
matters of this nature.
As this Court has repeatedly and firmly
emphasized in many cases,[18] it will not shirk,
digress from or abandon its sacred duty and
authority to uphold the Constitution in matters that
involve grave abuse of discretion brought before it
in appropriate cases, committed by any officer,
agency, instrumentality or department of the
government.
As the petition alleges grave abuse of
discretion and as there is no other plain, speedy or
adequate remedy in the ordinary course of law, we
have no hesitation at all in holding that this petition
should be given due course and the vital questions
raised therein ruled upon under Rule 65 of the
Rules of Court. Indeed, certiorari, prohibition
and mandamus are appropriate remedies to raise
constitutional issues and to review and/or
prohibit/nullify, when proper, acts of legislative and
executive officials. On this, we have no
equivocation.
We should stress that, in deciding to take
jurisdiction over this petition, this Court will not
review the wisdom of the decision of the President
and the Senate in enlisting the country into the
WTO, or pass upon the merits of trade liberalization
as a policy espoused by said international
body. Neither will it rule on the propriety of the
governments
economic
policy
of

reducing/removing tariffs, taxes, subsidies,

quantitative restrictions, and other import/trade
barriers. Rather, it will only exercise its
constitutional duty to determine whether or not
there had been a grave abuse of discretion
amounting to lack or excess of jurisdiction on the
part of the Senate in ratifying the WTO Agreement
and its three annexes.
Second Issue: The WTO
Economic Nationalism

Agreement

and

This is the lis mota, the main issue, raised by

the petition.
Petitioners vigorously argue that the letter,
spirit and intent of the Constitution mandating
economic nationalism are violated by the so-called
parity provisions and national treatment clauses
scattered in various parts not only of the WTO
Agreement and its annexes but also in the
Ministerial Decisions and Declarations and in the
Understanding on Commitments in Financial
Services.

In the grant of rights, privileges, and concessions

covering the national economy and patrimony, the
State shall give preference to qualified Filipinos.
xx xx xx xx
Sec. 12. The State shall promote the preferential use
of Filipino labor, domestic materials and locally
produced goods, and adopt measures that help make
them competitive.
Petitioners aver that these sacred constitutional
principles are desecrated by the following WTO
provisions quoted in their memorandum:[19]
a) In the area of investment measures related to
trade in goods (TRIMS, for brevity):
Article 2
National Treatment and Quantitative Restrictions.
1. Without prejudice to other rights and
obligations under GATT 1994. no
Member shall apply any TRIM that is
inconsistent with the provisions of
Article III or Article XI of GATT 1994.

Specifically, the flagship constitutional

provisions referred to are Sec. 19, Article II, and
Secs. 10 and 12, Article XII, of the Constitution,
which are worded as follows:

2. An Illustrative list of TRIMS that are

inconsistent with the obligations of
general elimination of quantitative
restrictions provided for in paragraph I
of Article XI of GATT 1994 is contained
in
the
Annex
to
this
Agreement. (Agreement
on
TradeRelated Investment Measures, Vol. 27,
Uruguay Round, Legal Instruments,
p.22121, emphasis supplied).

Article II
DECLARATION OF PRINCIPLES AND STATE
POLICIES
xx xx xx xx
Sec. 19. The State shall develop a self-reliant and
independent
national
economy
effectively
controlled by Filipinos.
xx xx xx xx
Article XII
NATIONAL ECONOMY AND PATRIMONY
xx xx xx xx
Sec. 10. x x x. The Congress shall enact measures
that will encourage the formation and operation of
enterprises whose capital is wholly owned by
Filipinos.

The Annex referred to reads as follows:

ANNEX
Illustrative List
1. TRIMS that are inconsistent with the
obligation of national treatment provided
for in paragraph 4 of Article III of GATT
1994 include those which are mandatory
or enforceable under domestic law or
under
administrative
rulings,
or
compliance with which is necessary to
obtain an advantage, and which require:

(a) the purchase or use by an enterprise of

products of domestic origin or from
any domestic
source,
whether
specified in terms of particular
products, in terms of volume or value
of products, or in terms of proportion
of volume or value of its local
production; or
(b) that an enterprises purchases or use of
imported products be limited to an
amount related to the volume or value
of local products that it exports.
2. TRIMS that are inconsistent with the
obligations of general elimination of
quantitative restrictions provided for in
paragraph 1 of Article XI of GATT 1994
include those which are mandatory or
enforceable under domestic laws or under
administrative rulings, or compliance with
which is necessary to obtain an advantage,
and which restrict:
(a) the importation by an enterprise of
products used in or related to the local
production that it exports;

distribution or use. the provisions of this paragraph

shall not prevent the application of differential
internal transportation charges which are based
exclusively on the economic operation of the means
of transport and not on the nationality of the
product. (Article III, GATT 1947, as amended by
the Protocol Modifying Part II, and Article XXVI of
GATT, 14 September 1948, 62 UMTS 82-84 in
relation to paragraph 1(a) of the General Agreement
on Tariffs and Trade 1994, Vol. 1, Uruguay Round,
Legal Instruments p.177, emphasis supplied).
b) In the area of trade related aspects of
intellectual property rights (TRIPS, for brevity):
Each Member shall accord to the nationals of
other Members treatment no less favourable
than that it accords to its own nationals with
regard to the protection of intellectual
property... (par. 1, Article 3, Agreement on TradeRelated Aspect of Intellectual Property rights, Vol.
31, Uruguay Round, Legal Instruments, p.25432
(emphasis supplied)
(c) In the area of the General Agreement on
Trade in Services:
National Treatment

(b) the importation by an enterprise of

products used in or related to its local
production by restricting its access to
foreign exchange inflows attributable to
the enterprise; or
(c) the exportation or sale for export
specified in terms of particular
products, in terms of volume or value
of products, or in terms of a preparation
of volume or value of its local
production. (Annex to the Agreement
on Trade-Related Investment Measures,
Vol. 27, Uruguay Round Legal
Documents,
p.22125,
emphasis
supplied).
The paragraph 4 of Article III of GATT 1994
referred to is quoted as follows:
The products of the territory of any contracting
party imported into the territory of any other
contracting party shall be accorded treatment no
less favorable than that accorded to like
products of national origin in respect of laws,
regulations and requirements affecting their internal
sale, offering for sale, purchase, transportation,

1. In the sectors inscribed in its schedule,

and subject to any conditions and
qualifications set out therein, each
Member shall accord to services and
service suppliers of any other Member,
in respect of all measures affecting the
supply of services, treatment no less
favourable than it accords to its own
like services and service suppliers.
2. A Member may meet the requirement of
paragraph I by according to services and
service suppliers of any other Member,
either formally identical treatment or
formally different treatment to that it
accords to its own like services and
service suppliers.
3. Formally identical or formally different
treatment shall be considered to be less
favourable if it modifies the conditions
of completion in favour of services or
service suppliers of the Member
compared to like services or service
suppliers of any other Member. (Article
XVII, General Agreement on Trade in

Services, Vol. 28, Uruguay Round Legal

Instruments,
p.22610
emphasis
supplied).
It is petitioners position that the foregoing
national treatment and parity provisions of the
WTO Agreement place nationals and products of
member countries on the same footing as Filipinos
and local products, in contravention of the Filipino
First policy of the Constitution. They allegedly
render meaningless the phrase effectively controlled
by Filipinos. The constitutional conflict becomes
more manifest when viewed in the context of the
clear duty imposed on the Philippines as a WTO
member to ensure the conformity of its laws,
regulations and administrative procedures with its
obligations as provided in the annexed agreements.
[20]
Petitioners further argue that these provisions
contravene constitutional limitations on the role
exports play in national development and negate the
preferential treatment accorded to Filipino labor,
domestic materials and locally produced goods.
On the other hand, respondents through the
Solicitor General counter (1) that such
Charter provisions are not self-executing and
merely set out general policies; (2) that these
nationalistic portions of the Constitution invoked by
petitioners should not be read in isolation but
should be related to other relevant provisions of Art.
XII, particularly Secs. 1 and 13 thereof; (3) that
read properly, the cited WTO clauses do not conflict
with the Constitution; and (4) that the WTO
Agreement contains sufficient provisions to protect
developing countries like the Philippines from the
harshness of sudden trade liberalization.
We shall now discuss and rule on these
arguments.
Declaration of Principles Not Self-Executing
By its very title, Article II of the Constitution is
a declaration of principles and state policies. The
counterpart of this article in the 1935
Constitution[21] is called the basic political creed of
the nation by Dean Vicente Sinco.[22] These
principles in Article II are not intended to be selfexecuting principles ready for enforcement through
the courts.[23] They are used by the judiciary as aids
or as guides in the exercise of its power of judicial
review, and by the legislature in its enactment of
laws. As held in the leading case of Kilosbayan,
Incorporated vs. Morato,[24] the principles and state
policies enumerated in Article II and some sections

of Article XII are not self-executing provisions, the

disregard of which can give rise to a cause of action
in the courts. They do not embody judicially
enforceable constitutional rights but guidelines for
legislation.
In the same light, we held in Basco vs.
Pagcor[25] that broad constitutional principles need
legislative enactments to implement them, thus:
On petitioners allegation that P.D. 1869 violates
Sections 11 (Personal Dignity) 12 (Family) and 13
(Role of Youth) of Article II; Section 13 (Social
Justice) of Article XIII and Section 2 (Educational
Values) of Article XIV of the 1987 Constitution,
suffice it to state also that these are merely
statements of principles and policies. As such, they
are basically not self-executing, meaning a law
should be passed by Congress to clearly define and
effectuate such principles.
In general, therefore, the 1935 provisions were not
intended to be self-executing principles ready for
enforcement through the courts. They were rather
directives addressed to the executive and to the
legislature. If the executive and the legislature
failed to heed the directives of the article, the
available remedy was not judicial but political. The
electorate could express their displeasure with the
failure of the executive and the legislature through
the language of the ballot. (Bernas, Vol. II, p. 2).
The reasons for denying a cause of action to an
alleged infringement of broad constitutional
principles are sourced from basic considerations of
due process and the lack of judicial authority to
wade into the uncharted ocean of social and
economic policy making. Mr. Justice Florentino P.
Feliciano in his concurring opinion in Oposa vs.
Factoran, Jr.,[26] explained these reasons as follows:
My suggestion is simply that petitioners must,
before the trial court, show a more specific legal
right -- a right cast in language of a significantly
lower order of generality than Article II (15) of the
Constitution -- that is or may be violated by the
actions, or failures to act, imputed to the public
respondent by petitioners so that the trial court can
validly render judgment granting all or part of the
relief prayed for. To my mind, the court should be
understood as simply saying that such a more
specific legal right or rights may well exist in our
corpus of law, considering the general policy
principles found in the Constitution and the
existence of the Philippine Environment Code, and
that the trial court should have given petitioners an

effective opportunity so to demonstrate, instead of

aborting the proceedings on a motion to dismiss.
It seems to me important that the legal right which
is an essential component of a cause of action be a
specific, operable legal right, rather than a
constitutional or statutory policy, for at least two (2)
reasons. One is that unless the legal right claimed to
have been violated or disregarded is given
specification in operational terms, defendants may
well be unable to defend themselves intelligently
and effectively; in other words, there are due
process dimensions to this matter.
The second is a broader-gauge consideration -where a specific violation of law or applicable
regulation is not alleged or proved, petitioners can
be expected to fall back on the expanded
conception of judicial power in the second
paragraph of Section 1 of Article VIII of the
Constitution which reads:
Section 1. x x x
Judicial power includes the duty of the courts of
justice to settle actual controversies involving rights
which are legally demandable and enforceable, and
to determine whether or not there has been a grave
abuse of discretion amounting to lack or excess of
jurisdiction on the part of any branch or
instrumentality of the Government. (Emphases
supplied)
When substantive standards as general as the right
to a balanced and healthy ecology and the right to
health are combined with remedial standards as
broad ranging as a grave abuse of discretion
amounting to lack or excess of jurisdiction, the
result will be, it is respectfully submitted, to propel
courts into the uncharted ocean of social and
economic policy making. At least in respect of the
vast area of environmental protection and
management, our courts have no claim to special
technical competence and experience and
professional qualification. Where no specific,
operable norms and standards are shown to exist,
then the policy making departments -- the
legislative and executive departments -- must be
given a real and effective opportunity to fashion
and promulgate those norms and standards, and to
implement them before the courts should intervene.

Economic Nationalism Should Be Read with

Other Constitutional Mandates to Attain
Balanced Development of Economy
On the other hand, Secs. 10 and 12 of Article
XII, apart from merely laying down general
principles relating to the national economy and
patrimony, should be read and understood in
relation to the other sections in said article,
especially Secs. 1 and 13 thereof which read:
Section 1. The goals of the national economy are a
more equitable distribution of opportunities,
income, and wealth; a sustained increase in the
amount of goods and services produced by the
nation for the benefit of the people; and an
expanding productivity as the key to raising the
quality of life for all, especially the underprivileged.
The State shall promote industrialization and full
employment based on sound agricultural
development and agrarian reform, through
industries that make full and efficient use of human
and natural resources, and which are competitive in
both domestic and foreign markets. However, the
State shall protect Filipino enterprises against unfair
foreign competition and trade practices.
In the pursuit of these goals, all sectors of the
economy and all regions of the country shall be
given optimum opportunity to develop. x x x
xxxxxxxxx
Sec. 13. The State shall pursue a trade policy that
serves the general welfare and utilizes all forms and
arrangements of exchange on the basis of equality
and reciprocity.
As pointed out by the Solicitor General, Sec. 1
lays down the basic goals of national economic
development, as follows:
1. A
more
equitable
distribution
opportunities, income and wealth;

of

2. A sustained increase in the amount of goods

and services provided by the nation for the benefit
of the people; and
3. An expanding productivity as the key to
raising the quality of life for all especially the
underprivileged.
With these goals in context, the Constitution
then ordains the ideals of economic nationalism (1)
by expressing preference in favor of qualified

Filipinos in the grant of rights, privileges and

concessions covering the national economy and
patrimony[27] and in the use of Filipino labor,
domestic materials and locally-produced goods; (2)
by mandating the State to adopt measures that help
make them competitive;[28] and (3) by requiring the
State to develop a self-reliant and independent
national economy effectively controlled by
Filipinos.[29] In similar language, the Constitution
takes into account the realities of the outside world
as it requires the pursuit of a trade policy that serves
the general welfare and utilizes all forms and
arrangements of exchange on the basis of equality
and reciprocity;[30] and speaks of industries which
are competitive in both domestic and foreign
markets as well as of the protection of Filipino
enterprises against unfair foreign competition and
trade practices.
It is true that in the recent case of Manila
Prince Hotel vs. Government Service Insurance
System, et al.,[31] this Court held that Sec. 10, second
par., Art. XII of the 1987 Constitution is a
mandatory, positive command which is complete in
itself and which needs no further guidelines or
implementing
laws
or
rules
for
its
enforcement. From its very words the provision
does not require any legislation to put it in
operation. It
is per
se judicially
enforceable. However, as the constitutional
provision itself states, it is enforceable only in
regard to the grants of rights, privileges and
concessions covering national economy and
patrimony and not to every aspect of trade and
commerce. It refers to exceptions rather than the
rule. The issue here is not whether this paragraph of
Sec. 10 of Art. XII is self-executing or not. Rather,
the issue is whether, as a rule, there are enough
balancing provisions in the Constitution to allow
the Senate to ratify the Philippine concurrence in
the WTO Agreement. And we hold that there are.
All told, while the Constitution indeed
mandates a bias in favor of Filipino goods, services,
labor and enterprises, at the same time, it
recognizes the need for business exchange with the
rest of the world on the bases of equality and
reciprocity and limits protection of Filipino
enterprises only against foreign competition and
trade practices that are unfair.[32] In other words, the
Constitution did not intend to pursue an isolationist
policy. It did not shut out foreign investments,
goods and services in the development of the
Philippine economy. While the Constitution does
not encourage the unlimited entry of foreign goods,
services and investments into the country, it does

not prohibit them either. In fact, it allows an

exchange on the basis of equality and reciprocity,
frowning only on foreign competition that is unfair.
WTO Recognizes
Economies

Need

to

Protect

Weak

Upon the other hand, respondents maintain that

the WTO itself has some built-in advantages to
protect weak and developing economies, which
comprise the vast majority of its members. Unlike
in the UN where major states have permanent seats
and veto powers in the Security Council, in the
WTO, decisions are made on the basis of sovereign
equality, with each members vote equal in weight to
that of any other. There is no WTO equivalent of
the UN Security Council.
WTO decides by consensus whenever possible,
otherwise, decisions of the Ministerial Conference
and the General Council shall be taken by the
majority of the votes cast, except in cases of
interpretation of the Agreement or waiver of the
obligation of a member which would require three
fourths vote. Amendments would require two thirds
vote in general. Amendments to MFN provisions
and the Amendments provision will require assent
of all members. Any member may withdraw from
the Agreement upon the expiration of six months
from the date of notice of withdrawals.[33]
Hence, poor countries can protect their
common interests more effectively through the
WTO than through one-on-one negotiations with
developed countries. Within the WTO, developing
countries can form powerful blocs to push their
economic agenda more decisively than outside the
Organization. This is not merely a matter of
practical alliances but a negotiating strategy rooted
in law. Thus, the basic principles underlying the
WTO Agreement recognize the need of developing
countries like the Philippines to share in the growth
in international trade commensurate with the needs
of their economic development. These basic
principles are found in the preamble[34] of the WTO
Agreement as follows:
The Parties to this Agreement,
Recognizing that their relations in the field of trade
and economic endeavour should be conducted with
a view to raising standards of living, ensuring full
employment and a large and steadily growing
volume of real income and effective demand, and

expanding the production of and trade in goods and

services, while allowing for the optimal use of the
worlds resources in accordance with the objective
of sustainable development, seeking both to protect
and preserve the environment and to enhance the
means for doing so in a manner consistent with
their respective needs and concerns at different
levels of economic development,
Recognizing further that there is need for positive
efforts designed to ensure that developing countries,
and especially the least developed among them,
secure a share in the growth in international trade
commensurate with the needs of their economic
development,
Being desirous of contributing to these objectives
by entering into reciprocal and mutually
advantageous arrangements directed to the
substantial reduction of tariffs and other barriers to
trade and to the elimination of discriminatory
treatment in international trade relations,
Resolved, therefore, to develop an integrated, more
viable and durable multilateral trading system
encompassing the General Agreement on Tariffs
and Trade, the results of past trade liberalization
efforts, and all of the results of the Uruguay Round
of Multilateral Trade Negotiations,
Determined to preserve the basic principles and to
further the objectives underlying this multilateral
trading system, x x x. (underscoring supplied.)
Specific WTO Provisos Protect Developing
Countries
So too, the Solicitor General points out that
pursuant to and consistent with the foregoing basic
principles, the WTO Agreement grants developing
countries a more lenient treatment, giving their
domestic industries some protection from the rush
of foreign competition. Thus, with respect to tariffs
in general, preferential treatment is given to
developing countries in terms of the amount of
tariff reduction and the period within which the
reduction is to be spread out. Specifically, GATT
requires an average tariff reduction rate of 36% for
developed countries to be effected within a period
of six (6) years while developing countries -including the Philippines -- are required to effect an
average tariff reduction of only 24% within ten (10)
years.

In
respect
to domestic subsidy,
GATT
requires developed countries to reduce domestic
support to agricultural products by 20% over six (6)
years, as compared to only 13% for developing
countries to be effected within ten (10) years.
In regard to export subsidy for agricultural
products, GATT requires developed countries to
reduce their budgetary outlays for export subsidy by
36% and export volumes receiving export subsidy
by 21% within a period of six (6) years. For
developing countries, however, the reduction rate is
only two-thirds of that prescribed for developed
countries and a longer period of ten (10)
years within which to effect such reduction.
Moreover, GATT itself has provided built-in
protection from unfair foreign competition and
trade practices including anti-dumping measures,
countervailing measures and safeguards against
import surges.Where local businesses are
jeopardized by unfair foreign competition, the
Philippines can avail of these measures. There is
hardly therefore any basis for the statement that
under the WTO, local industries and enterprises will
all be wiped out and that Filipinos will be deprived
of control of the economy. Quite the contrary, the
weaker situations of developing nations like the
Philippines have been taken into account; thus,
there would be no basis to say that in joining the
WTO, the respondents have gravely abused their
discretion. True, they have made a bold decision to
steer the ship of state into the yet uncharted sea of
economic liberalization. But such decision cannot
be set aside on the ground of grave abuse of
discretion, simply because we disagree with it or
simply because we believe only in other economic
policies. As earlier stated, the Court in taking
jurisdiction of this case will not pass upon the
advantages and disadvantages of trade liberalization
as an economic policy. It will only perform its
constitutional duty of determining whether the
Senate committed grave abuse of discretion.
Constitution
Competition

Does

Not Rule

Out Foreign

Furthermore, the constitutional policy of a selfreliant and independent national economy[35] does
not necessarily rule out the entry of foreign
investments, goods and services. It contemplates
neither economic seclusion nor mendicancy in the
international
community. As
explained
by
Constitutional Commissioner Bernardo Villegas,
sponsor of this constitutional policy:

Economic self-reliance is a primary objective of a

developing country that is keenly aware of
overdependence on external assistance for even its
most basic needs. It does not mean autarky or
economic seclusion; rather, it means avoiding
mendicancy
in
the
international
community. Independence refers to the freedom
from undue foreign control of the national
economy, especially in such strategic industries as
in the development of natural resources and public
utilities.[36]

Will it bring more prosperity, employment,

purchasing power and quality products at the most
reasonable rates to the Filipino public?

The WTO reliance on most favored nation,

national treatment, and trade without discrimination
cannot be struck down as unconstitutional as in fact
they are rules of equality and reciprocity that apply
to all WTO members. Aside from envisioning a
trade policy based on equality and reciprocity,[37] the
fundamental law encourages industries that are
competitive in both domestic and foreign markets,
thereby demonstrating a clear policy against a
sheltered domestic trade environment, but one in
favor of the gradual development of robust
industries that can compete with the best in the
foreign markets. Indeed, Filipino managers and
Filipino enterprises have shown capability and
tenacity to compete internationally. And given a
free trade environment, Filipino entrepreneurs and
managers in Hongkong havedemonstrated the
Filipino capacity to grow and to prosper against the
best offered under a policy of laissez faire.

Constitution Designed to Meet Future Events

and Contingencies

Constitution Favors Consumers, Not Industries

or Enterprises
The Constitution has not really shown any
unbalanced bias in favor of any business or
enterprise, nor does it contain any specific
pronouncement that Filipino companies should be
pampered
with
a
total
proscription of foreign competition. On the other ha
nd, respondents claim that WTO/GATT aims to
make available to the Filipino consumer the best
goods and services obtainable anywhere in the
world at the most reasonable prices. Consequently,
the question boils down to whether WTO/GATT
will favor the general welfare of the public at large.
Will adherence to the WTO treaty bring this
ideal (of favoring the general welfare) to reality?
Will WTO/GATT succeed in promoting the
Filipinos general welfare because it will -- as
promised by its promoters -- expand the countrys
exports and generate more employment?

The responses to these questions involve

judgment calls by our policy makers, for which they
are answerable to our people during appropriate
electoral exercises. Such questions and the answers
thereto are not subject to judicial pronouncements
based on grave abuse of discretion.

No doubt, the WTO Agreement was not yet in

existence when the Constitution was drafted and
ratified in 1987. That does not mean however that
the Charter is necessarily flawed in the sense that its
framers might not have anticipated the advent of a
borderless world of business. By the same
token, the United Nations was not yet in existence
when the 1935 Constitution became effective. Did
that necessarily mean that the then Constitution
might not have contemplated a diminution of the
absoluteness of sovereignty when the Philippines
signed the UN Charter, thereby effectively
surrendering part of its control over its foreign
relations to the decisions of various UN organs like
the Security Council?
It is not difficult to answer this
question. Constitutions are designed to meet not
only the vagaries of contemporary events. They
should be interpreted to cover even future and
unknown circumstances. It is to the credit of its
drafters that a Constitution can withstand the
assaults of bigots and infidels but at the same time
bend with the refreshing winds of change
necessitated by unfolding events. As one eminent
political law writer and respected jurist[38] explains:
The Constitution must be quintessential rather than
superficial, the root and not the blossom, the base
and framework only of the edifice that is yet to
rise. It is but the core of the dream that must take
shape, not in a twinkling by mandate of our
delegates, but slowly in the crucible of Filipino
minds and hearts, where it will in time develop its
sinews and gradually gather its strength and finally
achieve its substance. In fine, the Constitution
cannot, like the goddess Athena, rise full-grown
from the brow of the Constitutional Convention,
nor can it conjure by mere fiat an instant Utopia. It
must grow with the society it seeks to re-structure
and march apace with the progress of the race,

drawing from the vicissitudes of history the

dynamism and vitality that will keep it, far from
becoming a petrified rule, a pulsing, living law
attuned to the heartbeat of the nation.
Third Issue: The WTO Agreement and Legislative
Power
The WTO Agreement provides that (e)ach
Member shall ensure the conformity of its laws,
regulations and administrative procedures with its
obligations as provided in the annexed Agreements.
[39]
Petitioners maintain that this undertaking unduly
limits, restricts and impairs Philippine sovereignty,
specifically the legislative power which under Sec.
2, Article VI of the 1987 Philippine Constitution is
vested in the Congress of the Philippines. It is an
assault on the sovereign powers of the Philippines
because this means that Congress could not pass
legislation that will be good for our national interest
and general welfare if such legislation will not
conform with the WTO Agreement, which not only
relates to the trade in goods x x x but also to the
flow of investments and money x x x as well as to a
whole slew of agreements on socio-cultural matters
x x x.[40]
More specifically, petitioners claim that said
WTO proviso derogates from the power to tax,
which is lodged in the Congress. [41] And while the
Constitution allows Congress to authorize the
President to fix tariff rates, import and export
quotas, tonnage and wharfage dues, and other duties
or imposts, such authority is subject to specified
limits and x x x such limitations and restrictions as
Congress may provide,[42] as in fact it did under Sec.
401 of the Tariff and Customs Code.
Sovereignty Limited by International Law and
Treaties
This Court notes and appreciates the ferocity
and passion by which petitioners stressed their
arguments on this issue. However, while
sovereignty has traditionally been deemed absolute
and all-encompassing on the domestic level, it is
however subject to restrictions and limitations
voluntarily agreed to by the Philippines, expressly
or impliedly, as a member of the family of
nations. Unquestionably, the Constitution did not
envision a hermit-type isolation of the country from
the rest of the world. In its Declaration of Principles

and State Policies, the Constitution adopts the

generally accepted principles of international law as
part of the law of the land, and adheres to the policy
of peace, equality, justice, freedom, cooperation and
amity, with all nations."[43] By the doctrine of
incorporation, the country is bound by generally
accepted principles of international law, which are
considered to be automatically part of our own
laws.[44] One of the oldest and most fundamental
rules in international law is pacta sunt servanda -international agreements must be performed in
good faith. A treaty engagement is not a mere moral
obligation but creates a legally binding obligation
on the parties x x x. A state which has contracted
valid international obligations is bound to make in
its legislations such modifications as may be
necessary to ensure the fulfillment of the
obligations undertaken.[45]
By their inherent nature, treaties really limit or
restrict the absoluteness of sovereignty. By their
voluntary act, nations may surrender some aspects
of their state power in exchange for greater benefits
granted by or derived from a convention or
pact. After all, states, like individuals, live with
coequals, and in pursuit of mutually covenanted
objectives and benefits, they also commonly agree
to limit the exercise of their otherwise absolute
rights. Thus, treaties have been used to record
agreements between States concerning such widely
diverse matters as, for example, the lease of naval
bases, the sale or cession of territory, the
termination of war, the regulation of conduct of
hostilities, the formation of alliances, the regulation
of commercial relations, the settling of claims, the
laying down of rules governing conduct in peace
and the establishment of international organizations.
[46]
The sovereignty of a state therefore cannot in
fact and in reality be considered absolute. Certain
restrictions enter into the picture: (1) limitations
imposed by the very nature of membership in the
family of nations and (2) limitations imposed by
treaty stipulations. As aptly put by John F.
Kennedy, Today, no nation can build its destiny
alone. The age of self-sufficient nationalism is
over. The age of interdependence is here.[47]
UN Charter
Sovereignty

and

Other

Treaties

Limit

Thus, when the Philippines joined the United

Nations as one of its 51 charter members, it
consented to restrict its sovereign rights under the
concept of sovereignty as auto-limitation.47-A Under

Article 2 of the UN Charter, (a)ll members shall

give the United Nations every assistance in any
action it takes in accordance with the present
Charter, and shall refrain from giving assistance to
any state against which the United Nations is taking
preventive or enforcement action. Such assistance
includes payment of its corresponding share not
merely in administrative expenses but also in
expenditures for the peace-keeping operations of
the organization. In its advisory opinion of July 20,
1961, the International Court of Justice held that
money used by the United Nations Emergency
Force in the Middle East and in the Congo were
expenses of the United Nations under Article 17,
paragraph 2, of the UN Charter. Hence, all its
members must bear their corresponding share in
such expenses. In this sense, the Philippine
Congress is restricted in its power to appropriate. It
is compelled to appropriate funds whether it agrees
with such peace-keeping expenses or not. So too,
under Article 105 of the said Charter, the UN and
its representatives enjoy diplomatic privileges and
immunities, thereby limiting again the exercise of
sovereignty of members within their own
territory. Another example: although sovereign
equality and domestic jurisdiction of all members
are set forth as underlying principles in the UN
Charter, such provisos are however subject to
enforcement measures decided by the Security
Council for the maintenance of international peace
and security under Chapter VII of the Charter. A
final example: under Article 103, (i)n the event of a
conflict between the obligations of the Members of
the United Nations under the present Charter and
their obligations under any other international
agreement, their obligation under the present
charter shall prevail, thus unquestionably denying
the Philippines -- as a member -- the sovereign
power to make a choice as to which of conflicting
obligations, if any, to honor.
Apart from the UN Treaty, the Philippines has
entered into many other international pacts -- both
bilateral and multilateral -- that involve limitations
on Philippine sovereignty. These are enumerated by
the Solicitor General in his Compliance dated
October 24, 1996, as follows:
(a) Bilateral convention with the United States
regarding taxes on income, where the
Philippines agreed, among others, to
exempt from tax, income received in the
Philippines by, among others, the Federal
Reserve Bank of the United States, the
Export/Import Bank of the United States,
the
Overseas
Private
Investment

Corporation
of
the
United
States. Likewise, in said convention,
wages, salaries and similar remunerations
paid by the United States to its citizens for
labor and personal services performed by
them as employees or officials of the
United States are exempt from income tax
by the Philippines.
(b) Bilateral
agreement
with
Belgium,
providing, among others, for the
avoidance of double taxation with respect
to taxes on income.
(c) Bilateral convention with the Kingdom of
Sweden for the avoidance of double
taxation.
(d) Bilateral convention with the French
Republic for the avoidance of double
taxation.
(e) Bilateral air transport agreement with Korea
where the Philippines agreed to exempt
from all customs duties, inspection fees and
other duties or taxes aircrafts of South
Korea and the regular equipment, spare
parts and supplies arriving with said
aircrafts.
(f) Bilateral air service agreement with Japan,
where the Philippines agreed to exempt
from customs duties, excise taxes,
inspection fees and other similar duties,
taxes or charges fuel, lubricating oils, spare
parts, regular equipment, stores on board
Japanese aircrafts while on Philippine soil.
(g) Bilateral air service agreement with
Belgium where the Philippines granted
Belgian air carriers the same privileges as
those granted to Japanese and Korean air
carriers under separate air service
agreements.
(h) Bilateral notes with Israel for the abolition
of transit and visitor visas where the
Philippines exempted Israeli nationals from
the requirement of obtaining transit or
visitor visas for a sojourn in the Philippines
not exceeding 59 days.
(I) Bilateral agreement with France exempting
French nationals from the requirement of

obtaining transit and visitor visa for a

sojourn not exceeding 59 days.
(j) Multilateral
Convention
on
Special
Missions, where the Philippines agreed that
premises of Special Missions in the
Philippines are inviolable and its agents
can not enter said premises without consent
of the Head of Mission concerned. Special
Missions are also exempted from customs
duties, taxes and related charges.
(k) Multilateral Convention on the Law of
Treaties. In this convention, the Philippines
agreed to be governed by the Vienna
Convention on the Law of Treaties.
(l) Declaration of the President of the
Philippines
accepting
compulsory
jurisdiction of the International Court of
Justice. The International Court of Justice
has jurisdiction in all legal disputes
concerning the interpretation of a treaty,
any question of international law, the
existence of any fact which, if established,
would constitute a breach of international
obligation.
In the foregoing treaties, the Philippines has
effectively agreed to limit the exercise of its
sovereign powers of taxation, eminent domain and
police power. The underlying consideration in this
partial surrender of sovereignty is the reciprocal
commitment of the other contracting states in
granting the same privilege and immunities to the
Philippines, its officials and its citizens. The same
reciprocity
characterizes
the
Philippine
commitments under WTO-GATT.
International treaties, whether relating to nuclear
disarmament, human rights, the environment, the
law of the sea, or trade, constrain domestic political
sovereignty through the assumption of external
obligations. But unless anarchy in international
relations is preferred as an alternative, in most cases
we accept that the benefits of the reciprocal
obligations involved outweigh the costs associated
with any loss of political sovereignty. (T)rade
treaties that structure relations by reference to
durable, well-defined substantive norms and
objective dispute resolution procedures reduce the
risks of larger countries exploiting raw economic
power to bully smaller countries, by subjecting
power relations to some form of legal ordering. In
addition, smaller countries typically stand to gain

disproportionately from trade liberalization. This is

due to the simple fact that liberalization will
provide access to a larger set of potential new
trading relationship than in case of the larger
country gaining enhanced success to the smaller
countrys market.[48]
The point is that, as shown by the foregoing
treaties, a portion of sovereignty may be waived
without violating the Constitution, based on the
rationale that the Philippines adopts the generally
accepted principles of international law as part of
the law of the land and adheres to the policy of x x
x cooperation and amity with all nations.
Fourth Issue: The WTO Agreement and Judicial
Power
Petitioners aver that paragraph 1, Article 34 of
the General Provisions and Basic Principles of the
Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS)[49] intrudes on the power of
the Supreme Court to promulgate rules concerning
pleading, practice and procedures.[50]
To understand the scope and meaning of Article
34, TRIPS,[51] it will be fruitful to restate its full text
as follows:
Article 34
Process Patents: Burden of Proof
1. For the purposes of civil proceedings in
respect of the infringement of the rights of the
owner referred to in paragraph 1(b) of Article
28, if the subject matter of a patent is a process
for obtaining a product, the judicial authorities
shall have the authority to order the defendant
to prove that the process to obtain an identical
product is different from the patented
process. Therefore, Members shall provide, in
at least one of the following circumstances,
that any identical product when produced
without the consent of the patent owner shall,
in the absence of proof to the contrary, be
deemed to have been obtained by the patented
process:
(a) if the product obtained by the patented process
is new;
(b) if there is a substantial likelihood that
the identical product was made by the

process and the owner of the patent

has been unable through reasonable
efforts to determine the process
actually used.
2. Any Member shall be free to provide that the
burden of proof indicated in paragraph 1 shall
be on the alleged infringer only if the condition
referred to in subparagraph (a) is fulfilled or
only if the condition referred to in
subparagraph (b) is fulfilled.
3. In the adduction of proof to the contrary, the
legitimate interests of defendants in protecting
their manufacturing and business secrets shall
be taken into account.
From the above, a WTO Member is required to
provide a rule of disputable (note the words in the
absence of proof to the contrary) presumption that a
product shown to be identical to one produced with
the use of a patented process shall be deemed to
have been obtained by the (illegal) use of the said
patented process, (1) where such product obtained
by the patented product is new, or (2) where there is
substantial likelihood that the identical product was
made with the use of the said patented process but
the owner of the patent could not determine the
exact process used in obtaining such identical
product.Hence, the burden of proof contemplated
by Article 34 should actually be understood as the
duty of the alleged patent infringer to overthrow
such
presumption. Such
burden,
properly
understood, actually refers to the burden of
evidence (burden of going forward) placed on the
producer of the identical (or fake) product to show
that his product was produced without the use of the
patented process.
The foregoing notwithstanding, the patent
owner still has the burden of proof since, regardless
of the presumption provided under paragraph 1 of
Article 34, such owner still has to introduce
evidence of the existence of the alleged identical
product, the fact that it is identical to the genuine
one produced by the patented process and the fact
of newness of the genuine product or the fact of
substantial likelihood that the identical product was
made by the patented process.
The foregoing should really present no problem
in changing the rules of evidence as the present law
on the subject, Republic Act No. 165, as amended,
otherwise known as the Patent Law, provides a
similar presumption in cases of infringement of
patented design or utility model, thus:

SEC. 60. Infringement. - Infringement of a design

patent or of a patent for utility model shall consist
in unauthorized copying of the patented design or
utility model for the purpose of trade or industry in
the article or product and in the making, using or
selling of the article or product copying the
patented design or utility model. Identity or
substantial identity with the patented design or
utility model shall constitute evidence of copying.
(underscoring supplied)
Moreover, it should be noted that the
requirement of Article 34 to provide a disputable
presumption applies only if (1) the product obtained
by the patented process is NEW or (2) there is a
substantial likelihood that the identical product was
made by the process and the process owner has not
been able through reasonable effort to determine the
process
used. Where
either
of
these
two provisos does not obtain, members shall be free
to determine the appropriate method of
implementing the provisions of TRIPS within their
own internal systems and processes.
By and large, the arguments adduced in
connection with our disposition of the third issue -derogation of legislative power - will apply to this
fourth issue also. Suffice it to say that the
reciprocity clause more than justifies such intrusion,
if any actually exists. Besides, Article 34 does not
contain an unreasonable burden, consistent as it is
with due process and the concept of adversarial
dispute settlement inherent in our judicial system.
So too, since the Philippine is a signatory to
most international conventions on patents,
trademarks and copyrights, the adjustment in
legislation and rules of procedure will not be
substantial.[52]
Fifth Issue: Concurrence Only in the WTO
Agreement and Not in Other Documents
Contained in the Final Act
Petitioners allege that the Senate concurrence
in the WTO Agreement and its annexes -- but not in
the other documents referred to in the Final Act,
namely the Ministerial Declaration and Decisions
and the Understanding on Commitments in
Financial Services -- is defective and insufficient
and thus constitutes abuse of discretion. They
submit that such concurrence in the WTO
Agreement alone is flawed because it is in effect a
rejection of the Final Act, which in turn was the
document signed by Secretary Navarro, in

representation of the Republic upon authority of the

President. They contend that the second letter of the
President to the Senate[53] which enumerated what
constitutes the Final Act should have been the
subject of concurrence of the Senate.
A final act, sometimes called protocol de
clture, is an instrument which records the winding
up of the proceedings of a diplomatic conference
and usually includes a reproduction of the texts of
treaties, conventions, recommendations and other
acts agreed upon and signed by the plenipotentiaries
attending the conference.[54] It is not the treaty
itself. It is rather a summary of the proceedings of a
protracted conference which may have taken place
over several years. The text of the Final Act
Embodying the Results of the Uruguay Round of
Multilateral Trade Negotiations is contained in just
one
page[55] in
Vol.
I
of
the
36volume Uruguay Round of Multilateral Trade
Negotiations. By signing said Final Act, Secretary
Navarro as representative of the Republic of the
Philippines undertook:
"(a) to submit, as appropriate, the WTO
Agreement for the consideration of their
respective competent authorities with a
view to seeking approval of the Agreement
in accordance with their procedures; and
(b) to adopt the Ministerial Declarations and
Decisions."
The assailed Senate Resolution No. 97
expressed concurrence in exactly what the Final Act
required from its signatories, namely, concurrence
of the Senate in the WTO Agreement.
The Ministerial Declarations and Decisions
were deemed adopted without need for
ratification. They were approved by the ministers
by virtue of Article XXV: 1 of GATT which
provides that representatives of the members can
meet to give effect to those provisions of this
Agreement which invoke joint action, and generally
with a view to facilitating the operation and
furthering the objectives of this Agreement.[56]
The Understanding on Commitments in
Financial Services also approved in Marrakesh does
not apply to the Philippines. It applies only to those
27 Members which have indicated in their
respective schedules of commitments on standstill,
elimination of monopoly, expansion of operation of
existing financial service suppliers, temporary entry
of personnel, free transfer and processing of
information, and national treatment with respect to

access to payment, clearing systems and refinancing

available in the normal course of business.[57]
On the other hand, the WTO Agreement itself
expresses what multilateral agreements are deemed
included as its integral parts,[58] as follows:
Article II
Scope of the WTO
1. The WTO shall provide the common
institutional framework for the conduct of trade
relations among its Members in matters to the
agreements and associated legal instruments
included in the Annexes to this Agreement.
2. The Agreements and associated legal
instruments included in Annexes 1, 2, and 3
(hereinafter referred to as Multilateral
Agreements) are integral parts of this
Agreement, binding on all Members.
3. The Agreements and associated legal
instruments included in Annex 4 (hereinafter
referred to as Plurilateral Trade Agreements)
are also part of this Agreement for those
Members that have accepted them, and are
binding on those Members. The Plurilateral
Trade Agreements do not create either
obligation or rights for Members that have not
accepted them.
4. The General Agreement on Tariffs and Trade
1994 as specified in annex 1A (hereinafter
referred to as GATT 1994) is legally distinct
from the General Agreement on Tariffs and
Trade, dated 30 October 1947, annexed to the
Final Act adopted at the conclusion of the
Second Session of the Preparatory Committee
of the United Nations Conference on Trade and
Employment, as subsequently rectified,
amended or modified (hereinafter referred to as
GATT 1947).
It should be added that the Senate was wellaware of what it was concurring in as shown by the
members deliberation on August 25, 1994. After
reading the letter of President Ramos dated August
11, 1994,[59] the senators of the Republic minutely
dissected what the Senate was concurring in, as
follows: [60]
THE CHAIRMAN: Yes. Now, the question of the
validity of the submission came up in the first day
hearing of this Committee yesterday. Was the

observation made by Senator Taada that what was

submitted to the Senate was not the agreement on
establishing the World Trade Organization by the
final act of the Uruguay Round which is not the
same as the agreement establishing the World Trade
Organization? And on that basis, Senator Tolentino
raised a point of order which, however, he agreed to
withdraw upon understanding that his suggestion
for an alternative solution at that time was
acceptable. That suggestion was to treat the
proceedings of the Committee as being in the nature
of briefings for Senators until the question of the
submission could be clarified.
And so, Secretary Romulo, in effect, is the
President submitting a new... is he making a new
submission which improves on the clarity of the
first submission?
MR. ROMULO: Mr. Chairman, to make sure that it
is clear cut and there should be no
misunderstanding, it was his intention to clarify all
matters by giving this letter.
THE CHAIRMAN: Thank you.
Can this Committee hear from Senator Taada and
later on Senator Tolentino since they were the ones
that raised this question yesterday?
Senator Taada, please.
SEN. TAADA: Thank you, Mr. Chairman.
Based on what Secretary Romulo has read, it would
now clearly appear that what is being submitted to
the Senate for ratification is not the Final Act of the
Uruguay Round, but rather the Agreement on the
World Trade Organization as well as the Ministerial
Declarations and Decisions, and the Understanding
and Commitments in Financial Services.
I am now satisfied with the wording of the new
submission of President Ramos.
SEN. TAADA. . . . of President Ramos, Mr.
Chairman.
THE CHAIRMAN. Thank you, Senator Taada. Can
we hear from Senator Tolentino? And after him
Senator Neptali Gonzales and Senator Lina.
SEN TOLENTINO, Mr. Chairman, I have not seen
the new submission actually transmitted to us but I
saw the draft of his earlier, and I think it now

complies with the provisions of the Constitution,

and with the Final Act itself. The Constitution does
not require us to ratify the Final Act. It requires us
to ratify the Agreement which is now being
submitted. The Final Act itself specifies what is
going to be submitted to with the governments of
the participants.
In paragraph 2 of the Final Act, we read and I
quote:
By signing the present Final Act, the representatives
agree: (a) to submit as appropriate the WTO
Agreement for the consideration of the respective
competent authorities with a view to seeking
approval of the Agreement in accordance with their
procedures.
In other words, it is not the Final Act that was
agreed to be submitted to the governments for
ratification or acceptance as whatever their
constitutional procedures may provide but it is the
World Trade Organization Agreement. And if that is
the one that is being submitted now, I think it
satisfies both the Constitution and the Final Act
itself.
Thank you, Mr. Chairman.
THE
CHAIRMAN. Thank
you,
Senator
Tolentino, May I call on Senator Gonzales.
SEN. GONZALES. Mr. Chairman, my views on
this matter are already a matter of record. And they
had been adequately reflected in the journal of
yesterdays session and I dont see any need for
repeating the same.
Now, I would consider the new submission as an
act ex abudante cautela.
THE
CHAIRMAN. Thank
you,
Senator
Gonzales. Senator Lina, do you want to make any
comment on this?
SEN. LINA. Mr. President, I agree with the
observation just made by Senator Gonzales out of
the abundance of question. Then the new
submission is, I believe, stating the obvious and
therefore I have no further comment to make.
Epilogue

In praying for the nullification of the Philippine

ratification of the WTO Agreement, petitioners are
invoking this Courts constitutionally imposed duty
to determine whether or not there has been grave
abuse of discretion amounting to lack or excess of
jurisdiction on the part of the Senate in giving its
concurrence therein via Senate Resolution No.
97. Procedurally, a writ of certiorari grounded on
grave abuse of discretion may be issued by the
Court under Rule 65 of the Rules of Court when it
is amply shown that petitioners have no other plain,
speedy and adequate remedy in the ordinary course
of law.
By grave abuse of discretion is meant such
capricious and whimsical exercise of judgment as is
equivalent to lack of jurisdiction.[61] Mere abuse of
discretion is not enough. It must be grave abuse of
discretion as when the power is exercised in an
arbitrary or despotic manner by reason of passion or
personal hostility, and must be so patent and so
gross as to amount to an evasion of a positive duty
or to a virtual refusal to perform the duty enjoined
or to act at all in contemplation of law.[62] Failure on
the part of the petitioner to show grave abuse of
discretion will result in the dismissal of the petition.
[63]

In rendering this Decision, this Court never

forgets that the Senate, whose act is under review, is
one of two sovereign houses of Congress and is
thus entitled to great respect in its actions. It is itself
a constitutional body independent and coordinate,
and thus its actions are presumed regular and done
in good faith. Unless convincing proof and
persuasive arguments are presented to overthrow
such presumptions, this Court will resolve every
doubt in its favor. Using the foregoing wellaccepted definition of grave abuse of discretion and
the presumption of regularity in the Senates
processes, this Court cannot find any cogent reason
to impute grave abuse of discretion to the Senates
exercise of its power of concurrence in the WTO
Agreement granted it by Sec. 21 of Article VII of
the Constitution.[64]
It is true, as alleged by petitioners, that broad
constitutional principles require the State to develop
an independent national economy effectively
controlled by Filipinos; and to protect and/or prefer
Filipino labor, products, domestic materials and
locally produced goods. But it is equally true that
such principles -- while serving as judicial and
legislative guides -- are not in themselves sources
of causes of action.Moreover, there are other
equally fundamental constitutional principles relied
upon by the Senate which mandate the pursuit of a

trade policy that serves the general welfare and

utilizes all forms and arrangements of exchange on
the basis of equality and reciprocity and the
promotion of industries which are competitive in
both domestic and foreign markets, thereby
justifying its acceptance of said treaty. So too, the
alleged impairment of sovereignty in the exercise of
legislative and judicial powers is balanced by the
adoption of the generally accepted principles of
international law as part of the law of the land and
the adherence of the Constitution to the policy of
cooperation and amity with all nations.
That the Senate, after deliberation and voting,
voluntarily and overwhelmingly gave its consent to
the WTO Agreement thereby making it a part of the
law of the land is a legitimate exercise of its
sovereign duty and power. We find no patent and
gross arbitrariness or despotism by reason of
passion or personal hostility in such exercise. It is
not impossible to surmise that this Court, or at least
some of its members, may even agree with
petitioners that it is more advantageous to the
national interest to strike down Senate Resolution
No. 97. But that is not a legal reason to attribute
grave abuse of discretion to the Senate and to
nullify its decision. To do so would constitute grave
abuse in the exercise of our own judicial power and
duty. Ineludably, what the Senate did was a valid
exercise of its authority. As to whether such
exercise was wise, beneficial or viable is outside the
realm of judicial inquiry and review. That is a
matter between the elected policy makers and the
people. As to whether the nation should join the
worldwide march toward trade liberalization and
economic globalization is a matter that our people
should determine in electing their policy
makers. After all, the WTO Agreement allows
withdrawal of membership, should this be the
political desire of a member.
The eminent futurist John Naisbitt, author of
the best seller Megatrends, predicts an Asian
Renaissance[65] where the East will become the
dominant region of the world economically,
politically and culturally in the next century. He
refers to the free market espoused by WTO as the
catalyst in this coming Asian ascendancy. There are
at present about 31 countries including China,
Russia and Saudi Arabia negotiating for
membership
in
the
WTO. Notwithstanding
objections against possible limitations on national
sovereignty, the WTO remains as the only viable
structure for multilateral trading and the veritable
forum for the development of international trade
law. The alternative to WTO is isolation, stagnation,

if
not
economic
self-destruction. Duly
enriched with original membership, keenly aware of
the advantages and disadvantages of globalization
with its on-line experience, and endowed with a
vision of the future, the Philippines now straddles
the crossroads of an international strategy for
economic prosperity and stability in the new
millennium. Let the people, through their duly
authorized elected officers, make their free choice.

laws of New York, U.S.A.,

application. It claimed that:

WHEREFORE,
the
is DISMISSED for lack of merit.

That the respondent-applicant's use of the said mark BARBIZON

which resembles the trademark used and owned by opposer,
constitutes an unlawful appropriation of a mark previously used in
the Philippines and not abandoned and therefore a statutory violation
[1]
of Section 4 (d) of Republic Act No. 166, as amended."

petition

SO ORDERED.
Narvasa, C.J., Regalado, Davide, Jr., Romero,
Bellosillo, Melo, Puno, Kapunan, Mendoza,
Francisco, Hermosisima, Jr., and Torres, Jr.,
JJ., concur.
Padilla, and Vitug, JJ., in the result.
FIRST DIVISION

[G.R. No. 114508. November 19, 1999]

opposed

the

"The mark BARBIZON of respondent-applicant is confusingly

similar to the trademark BARBIZON which opposer owns and has
not abandoned.
That opposer will be damaged by the registration of the mark
BARBIZON and its business reputation and goodwill will suffer
great and irreparable injury.

This was docketed as Inter Partes Case No.

686 (IPC No. 686). After filing of the pleadings,
the parties submitted the case for decision.
On June 18, 1974, the Director of Patents
rendered judgment dismissing the opposition and
giving due course to Escobar's application, thus:
"WHEREFORE, the opposition should be, as it is hereby,
DISMISSED. Accordingly, Application Serial No. 19010 for the
registration of the trademark BARBIZON, of respondent Lolita R.
Escobar, is given due course.
[2]

PRIBHDAS J. MIRPURI, petitioner, vs. COURT

OF
APPEALS,
DIRECTOR
OF
PATENTS
and
the
BARBIZON
CORPORATION, respondents.
DECISION
PUNO, J.:
The Convention of Paris for the Protection of
Industrial Property is a multi-lateral treaty which
the Philippines bound itself to honor and enforce in
this country. As to whether or not the treaty affords
protection to a foreign corporation against a
Philippine applicant for the registration of a similar
trademark is the principal issue in this case.
On June 15, 1970, one Lolita Escobar, the
predecessor-in-interest of petitioner Pribhdas J.
Mirpuri, filed an application with the Bureau of
Patents for the registration of the trademark
"Barbizon" for use in brassieres and ladies
undergarments. Escobar alleged that she had been
manufacturing and selling these products under the
firm name "L & BM Commercial" since March 3,
1970.
Private respondent Barbizon Corporation, a
corporation organized and doing business under the

IT IS SO ORDERED."

This decision became final and on September

11, 1974, Lolita Escobar was issued a certificate of
registration for the trademark "Barbizon." The
trademark was "for use in "brassieres and lady's
underwear garments like panties."[3]
Escobar later assigned all her rights and
interest over the trademark to petitioner Pribhdas J.
Mirpuri who, under his firm name then, the "Bonito
Enterprises," was the sole and exclusive distributor
of Escobar's "Barbizon" products.
In 1979, however, Escobar failed to file with
the Bureau of Patents the Affidavit of Use of the
trademark required under Section 12 of Republic
Act (R.A.) No. 166, the Philippine Trademark
Law. Due to this failure, the Bureau of Patents
cancelled Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for
registration of the cancelled trademark. Mirpuri
filed his own application for registration of
Escobar's trademark. Escobar later assigned her
application to herein petitioner and this application
was opposed by private respondent. The case was
docketed as Inter Partes Case No. 2049 (IPC No.
2049).

In its opposition, private respondent alleged

that:
"(a) The Opposer has adopted the trademark BARBIZON (word),
sometime in June 1933 and has then used it on various kinds of
wearing apparel. On August 14, 1934, Opposer obtained from the
United States Patent Office a more recent registration of the said
mark under Certificate of Registration No. 316,161. On March 1,
1949, Opposer obtained from the United States Patent Office a more
recent registration for the said trademark under Certificate of
Registration No. 507,214, a copy of which is herewith attached as
Annex `A.' Said Certificate of Registration covers the following
goods-- wearing apparel: robes, pajamas, lingerie, nightgowns and
slips;
(b) Sometime in March 1976, Opposer further adopted the trademark
BARBIZON and Bee design and used the said mark in various kinds
of wearing apparel. On March 15, 1977, Opposer secured from the
United States Patent Office a registration of the said mark under
Certificate of Registration No. 1,061,277, a copy of which is herein
enclosed as Annex `B.' The said Certificate of Registration covers the
following goods: robes, pajamas, lingerie, nightgowns and slips;
(c) Still further, sometime in 1961, Opposer adopted the trademark
BARBIZON and a Representation of a Woman and thereafter used
the said trademark on various kinds of wearing apparel. Opposer
obtained from the United States Patent Office registration of the said
mark on April 5, 1983 under Certificate of Registration No.
1,233,666 for the following goods: wearing apparel: robes, pajamas,
nightgowns and lingerie. A copy of the said certificate of registration
is herewith enclosed as Annex `C.'
(d) All the above registrations are subsisting and in force and
Opposer has not abandoned the use of the said trademarks. In fact,
Opposer, through a wholly-owned Philippine subsidiary, the
Philippine Lingerie Corporation, has been manufacturing the goods
covered by said registrations and selling them to various countries,
thereby earning valuable foreign exchange for the country. As a
result of respondent-applicant's misappropriation of Opposer's
BARBIZON trademark, Philippine Lingerie Corporation is prevented
from selling its goods in the local market, to the damage and
prejudice of Opposer and its wholly-owned subsidiary.
(e) The Opposer's goods bearing the trademark BARBIZON have
been used in many countries, including the Philippines, for at least 40
years and has enjoyed international reputation and good will for their
quality. To protect its registrations in countries where the goods
covered by the registrations are being sold, Opposer has procured the
registration of the trademark BARBIZON in the following
countries: Australia, Austria, Abu Dhabi, Argentina, Belgium,
Bolivia, Bahrain, Canada, Chile, Colombia, Denmark, Ecuador,
France, West Germany, Greece, Guatemala, Hongkong, Honduras,
Italy, Japan, Jordan, Lebanon, Mexico, Morocco, Panama, New
Zealand, Norway, Sweden, Switzerland, Syria, El Salvador, South
Africa, Zambia, Egypt, and Iran, among others;
(f) To enhance its international reputation for quality goods and to
further promote goodwill over its name, marks and products,
Opposer has extensively advertised its products, trademarks and
name in various publications which are circulated in the United
States and many countries around the world, including the
Philippines;
(g) The trademark BARBIZON was fraudulently registered in the
Philippines by one Lolita R. Escobar under Registration No. 21920,
issued on September 11, 1974, in violation of Article 189 (3) of the
Revised Penal Code and Section 4 (d) of the Trademark Law. Herein
respondent applicant acquired by assignment the `rights' to the said
mark previously registered by Lolita Escobar, hence respondentapplicant's title is vitiated by the same fraud and criminal

act. Besides, Certificate of Registration No. 21920 has been

cancelled for failure of either Lolita Escobar or herein respondentapplicant, to seasonably file the statutory affidavit of use. By
applying for a re-registration of the mark BARBIZON subject of this
opposition, respondent-applicant seeks to perpetuate the fraud and
criminal act committed by Lolita Escobar.
(h) Opposer's BARBIZON as well as its BARBIZON and Bee
Design and BARBIZON and Representation of a Woman trademarks
qualify as well-known trademarks entitled to protection under
Article 6bis of the Convention of Paris for the Protection of
Industrial Property and further amplified by the Memorandum of the
Minister of Trade to the Honorable Director of Patents dated October
[4]
25, 1983 [sic], Executive Order No. 913 dated October 7, 1963 and
the Memorandum of the Minister of Trade and Industry to the
Honorable Director of Patents dated October 25, 1983.
(i) The trademark applied for by respondent applicant is identical to
Opposer's BARBIZON trademark and constitutes the dominant part
of Opposer's two other marks namely, BARBIZON and Bee design
and BARBIZON and a Representation of a Woman. The continued
use by respondent-applicant of Opposer's trademark BARBIZON on
goods belonging to Class 25 constitutes a clear case of commercial
and criminal piracy and if allowed registration will violate not only
the Trademark Law but also Article 189 of the Revised Penal Code
[5]
and the commitment of the Philippines to an international treaty."

Replying to private respondent's opposition,

petitioner raised the defense of res judicata.
On March 2, 1982, Escobar assigned to
petitioner the use of the business name "Barbizon
International." Petitioner registered the name with
the Department of Trade and Industry (DTI) for
which a certificate of registration was issued in
1987.
Forthwith, private respondent filed before the
Office of Legal Affairs of the DTI a petition for
cancellation of petitioner's business name.
On November 26, 1991, the DTI, Office of
Legal Affairs, cancelled petitioner's certificate of
registration, and declared private respondent the
owner and prior user of the business name
"Barbizon International." Thus:
"WHEREFORE, the petition is hereby GRANTED and petitioner is
declared the owner and prior user of the business name "BARBIZON
INTERNATIONAL" under Certificate of Registration No. 87-09000
dated March 10, 1987 and issued in the name of respondent, is [sic]
[6]
hereby ordered revoked and cancelled. x x x."

Meanwhile, in IPC No. 2049, the evidence of

both parties were received by the Director of
Patents. On June 18, 1992, the Director rendered a
decision declaring private respondent's opposition
barred by res judicata and giving due course to
petitioner's application for registration, to wit:
"WHEREFORE, the present Opposition in Inter Partes Case No.
2049 is hereby DECLARED BARRED by res judicata and is hereby
DISMISSED. Accordingly, Application Serial No. 45011 for

trademark BARBIZON filed by Pribhdas J. Mirpuri is GIVEN DUE

COURSE.
[7]

SO ORDERED."

Private respondent questioned this decision

before the Court of Appeals in CA-G.R. SP No.
28415. On April 30, 1993, the Court of Appeals
reversed the Director of Patents finding that IPC
No. 686 was not barred by judgment in IPC No.
2049 and ordered that the case be remanded to the
Bureau of Patents for further proceedings, viz:
"WHEREFORE, the appealed Decision No. 92-13 dated June 18,
1992 of the Director of Patents in Inter Partes Case No. 2049 is
hereby SET ASIDE; and the case is hereby remanded to the Bureau
of Patents for further proceedings, in accordance with this
[8]
pronouncement. No costs."

In a Resolution dated March 16, 1994, the

Court of Appeals denied reconsideration of its
decision.[9] Hence, this recourse.
Before us, petitioner raises the following
issues:
"1. WHETHER OR NOT THE DECISION OF THE DIRECTOR OF
PATENTS IN INTER PARTES CASE NO. 686 RENDERED ON
JUNE 18, 1974, ANNEX C HEREOF, CONSTITUTED RES
JUDICATA IN SO FAR AS THE CASE BEFORE THE DIRECTOR
OF PATENTS IS CONCERNED;
2. WHETHER OR NOT THE DIRECTOR OF PATENTS
CORRECTLY APPLIED THE PRINCIPLE OF RES JUDICATA IN
DISMISSING
PRIVATE
RESPONDENT
BARBIZON'S
OPPOSITION TO PETITIONER'S APPLICATION FOR
REGISTRATION FOR THE TRADEMARK BARBIZON, WHICH
HAS SINCE RIPENED TO CERTIFICATE OF REGISTRATION
NO. 53920 ON NOVEMBER 16, 1992;
3. WHETHER OR NOT THE REQUISITE THAT A 'JUDGMENT
ON THE MERITS' REQUIRED A 'HEARING WHERE BOTH
PARTIES ARE SUPPOSED TO ADDUCE EVIDENCE' AND
WHETHER THE JOINT SUBMISSION OF THE PARTIES TO A
CASE ON THE BASIS OF THEIR RESPECTIVE PLEADINGS
WITHOUT PRESENTING TESTIMONIAL OR DOCUMENTARY
EVIDENCE FALLS WITHIN THE MEANING OF 'JUDGMENT
ON THE MERITS' AS ONE OF THE REQUISITES TO
CONSTITUTE RES JUDICATA;
4. WHETHER A DECISION OF THE DEPARTMENT OF TRADE
AND INDUSTRY CANCELLING PETITIONER'S FIRM NAME
'BARBIZON INTERNATIONAL' AND WHICH DECISION IS
STILL PENDING RECONSIDERATION NEVER OFFERED IN
EVIDENCE BEFORE THE DIRECTOR OF PATENTS IN INTER
PARTES CASE NO. 2049 HAS THE RIGHT TO DECIDE SUCH
CANCELLATION NOT ON THE BASIS OF THE BUSINESS
NAME LAW (AS IMPLEMENTED BY THE BUREAU OF
DOMESTIC TRADE) BUT ON THE BASIS OF THE PARIS
CONVENTION AND THE TRADEMARK LAW (R.A. 166)
WHICH IS WITHIN THE ORIGINAL AND EXCLUSIVE
[10]
JURISDICTION OF THE DIRECTOR OF PATENTS."

Before ruling on the issues of the case, there is

need for a brief background on the function and

historical development of trademarks and trademark

law.
A "trademark" is defined under R.A. 166, the
Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination
thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them
from those manufactured, sold or dealt in by
others."[11] This definition has been simplified in
R.A. No. 8293, the Intellectual Property Code of
the Philippines, which defines a "trademark" as
"any visible sign capable of distinguishing
goods."[12] In Philippine jurisprudence, the function
of a trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to
secure to him, who has been instrumental in
bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to
assure the public that they are procuring the
genuine article; to prevent fraud and imposition;
and to protect the manufacturer against substitution
and sale of an inferior and different article as his
product.[13]
Modern authorities on trademark law view
trademarks
as
performing
three
distinct
functions: (1) they indicate origin or ownership of
the articles to which they are attached; (2) they
guarantee that those articles come up to a certain
standard of quality; and (3) they advertise the
articles they symbolize.[14]
Symbols have been used to identify the
ownership or origin of articles for several centuries.
[15]
As early as 5,000 B.C., markings on pottery
have been found by archaeologists. Cave drawings
in southwestern Europe show bison with symbols
on their flanks.[16] Archaeological discoveries of
ancient Greek and Roman inscriptions on sculptural
works, paintings, vases, precious stones,
glassworks, bricks, etc. reveal some features which
are thought to be marks or symbols. These marks
were affixed by the creator or maker of the article,
or by public authorities as indicators for the
payment of tax, for disclosing state monopoly, or
devices for the settlement of accounts between an
entrepreneur and his workmen.[17]
In the Middle Ages, the use of many kinds of
marks
on
a
variety
of
goods
was
commonplace. Fifteenth century England saw the
compulsory use of identifying marks in certain
trades. There were the baker's mark on bread,
bottlemaker's marks, smith's marks, tanner's marks,
watermarks on paper, etc.[18] Every guild had its
own mark and every master belonging to it had a

special mark of his own. The marks were not

trademarks but police marks compulsorily imposed
by the sovereign to let the public know that the
goods were not "foreign" goods smuggled into an
area where the guild had a monopoly, as well as to
aid in tracing defective work or poor craftsmanship
to the artisan.[19] For a similar reason, merchants
also used merchants' marks. Merchants dealt in
goods acquired from many sources and the marks
enabled them to identify and reclaim their goods
upon recovery after shipwreck or piracy.[20]
With constant use, the mark acquired
popularity and became voluntarily adopted. It was
not intended to create or continue monopoly but to
give the customer an index or guarantee of quality.
[21]
It was in the late 18th century when the
industrial revolution gave rise to mass production
and distribution of consumer goods that the mark
became an important instrumentality of trade and
commerce.[22] By this time, trademarks did not
merely identify the goods; they also indicated the
goods to be of satisfactory quality, and thereby
stimulated further purchases by the consuming
public.[23] Eventually, they came to symbolize the
goodwill and business reputation of the owner of
the product and became a property right protected
by law.[24] The common law developed the doctrine
of trademarks and tradenames "to prevent a person
from palming off his goods as another's, from
getting another's business or injuring his reputation
by unfair means, and, from defrauding the
public."[25] Subsequently, England and the United
States enacted national legislation on trademarks as
part of the law regulating unfair trade. [26] It became
the right of the trademark owner to exclude others
from the use of his mark, or of a confusingly similar
mark where confusion resulted in diversion of trade
or financial injury. At the same time, the trademark
served as a warning against the imitation or faking
of products to prevent the imposition of fraud upon
the public.[27]
Today, the trademark is not merely a symbol of
origin and goodwill; it is often the most effective
agent for the actual creation and protection of
goodwill. It imprints upon the public mind an
anonymous and impersonal guaranty of satisfaction,
creating a desire for further satisfaction. In other
words, the mark actually sells the goods.[28] The
mark has become the "silent salesman," the conduit
through which direct contact between the trademark
owner and the consumer is assured. It has invaded
popular culture in ways never anticipated that it has
become a more convincing selling point than even
the quality of the article to which it refers. [29] In the

last half century, the unparalleled growth of

industry and the rapid development of
communications
technology
have
enabled
trademarks, tradenames and other distinctive signs
of a product to penetrate regions where the owner
does not actually manufacture or sell the product
itself. Goodwill is no longer confined to the
territory of actual market penetration; it extends to
zones where the marked article has been fixed in
the public mind through advertising.[30] Whether in
the print, broadcast or electronic communications
medium, particularly on the Internet,[31] advertising
has paved the way for growth and expansion of the
product by creating and earning a reputation that
crosses over borders, virtually turning the whole
world into one vast marketplace.
This is the mise-en-scene of the present
controversy. Petitioner brings this action claiming
that "Barbizon" products have been sold in the
Philippines since 1970. Petitioner developed this
market by working long hours and spending
considerable sums of money on advertisements and
promotion of the trademark and its products. Now,
almost thirty years later, private respondent, a
foreign corporation, "swaggers into the country like
a conquering hero," usurps the trademark and
invades petitioner's market.[32] Justice and fairness
dictate that private respondent be prevented from
appropriating what is not its own. Legally, at the
same time, private respondent is barred from
questioning petitioner's ownership of the trademark
because of res judicata.[33]
Literally, res judicata means a matter adjudged,
a thing judicially acted upon or decided; a thing or
matter settled by judgment.[34] In res judicata, the
judgment in the first action is considered conclusive
as to every matter offered and received therein, as
to any other admissible matter which might have
been offered for that purpose, and all other matters
that could have been adjudged therein.[35] Res
judicata is an absolute bar to a subsequent action
for the same cause; and its requisites are: (a) the
former judgment or order must be final; (b) the
judgment or order must be one on the merits; (c) it
must have been rendered by a court having
jurisdiction over the subject matter and parties; (d)
there must be between the first and second actions,
identity of parties, of subject matter and of causes
of action.[36]
The Solicitor General, on behalf of respondent
Director of Patents, has joined cause with
petitioner. Both claim that all the four elements
of res judicata have been complied with: that the
judgment in IPC No. 686 was final and was

rendered by the Director of Patents who had

jurisdiction over the subject matter and parties; that
the judgment in IPC No. 686 was on the merits; and
that the lack of a hearing was immaterial because
substantial issues were raised by the parties and
passed upon by the Director of Patents.[37]
The decision in IPC No. 686 reads as follows:
"x x x.
Neither party took testimony nor adduced documentary
evidence. They submitted the case for decision based on the
pleadings which, together with the pertinent records, have all been
carefully considered.
Accordingly, the only issue for my disposition is whether or not the
herein opposer would probably be damaged by the registration of the
trademark BARBIZON sought by the respondent-applicant on the
ground that it so resembles the trademark BARBIZON allegedly
used and owned by the former to be `likely to cause confusion,
mistake or to deceive purchasers.'
On record, there can be no doubt that respondent-applicant's soughtto-be-registered trademark BARBIZON is similar, in fact obviously
identical, to opposer's alleged trademark BARBIZON, in spelling
and pronunciation. The only appreciable but very negligible
difference lies in their respective appearances or manner of
presentation. Respondent-applicant's trademark is in bold letters (set
against a black background), while that of the opposer is offered in
stylish script letters.
It is opposer's assertion that its trademark BARBIZON has been used
in trade or commerce in the Philippines prior to the date of
application for the registration of the identical mark BARBIZON by
the respondent-applicant.However, the allegation of facts in opposer's
verified notice of opposition is devoid of such material
information. In fact, a reading of the text of said verified opposition
reveals an apparent, if not deliberate, omission of the date (or year)
when opposer's alleged trademark BARBIZON was first used in
trade in the Philippines (see par. No. 1, p. 2, Verified Notice of
Opposition, Rec.). Thus, it cannot here and now be ascertained
whether opposer's alleged use of the trademark BARBIZON could be
prior to the use of the identical mark by the herein respondentapplicant, since the opposer attempted neither to substantiate its
claim of use in local commerce with any proof or evidence. Instead,
the opposer submitted the case for decision based merely on the
pleadings.
On the other hand, respondent-applicant asserted in her amended
application for registration that she first used the trademark
BARBIZON for brassiere (or 'brasseire') and ladies underwear
garments and panties as early as March 3, 1970. Be that as it may,
there being no testimony taken as to said date of first use,
respondent-applicant will be limited to the filing date, June 15, 1970,
of her application as the date of first use (Rule 173, Rules of Practice
in Trademark Cases).
From the foregoing, I conclude that the opposer has not made out a
case of probable damage by the registration of the respondentapplicant's mark BARBIZON.
WHEREFORE, the opposition should be, as it is hereby,
DISMISSED. Accordingly, Application Serial No. 19010, for the
registration of the trademark BARBIZON of respondent Lolita R.
[38]
Escobar, is given due course."

The decision in IPC No. 686 was a judgment

on the merits and it was error for the Court of
Appeals to rule that it was not. A judgment is on the
merits when it determines the rights and liabilities
of the parties based on the disclosed facts,
irrespective of formal, technical or dilatory
objections.[39] It is not necessary that a trial should
have been conducted. If the court's judgment is
general, and not based on any technical defect or
objection, and the parties had a full legal
opportunity to be heard on their respective claims
and contentions, it is on the merits although there
was no actual hearing or arguments on the facts of
the case.[40] In the case at bar, the Director of Patents
did not dismiss private respondent's opposition on a
sheer technicality. Although no hearing was
conducted, both parties filed their respective
pleadings and were given opportunity to present
evidence. They, however, waived their right to do
so and submitted the case for decision based on
their pleadings. The lack of evidence did not deter
the Director of Patents from ruling on the case,
particularly on the issue of prior use, which goes
into the very substance of the relief sought by the
parties. Since private respondent failed to prove
prior use of its trademark, Escobar's claim of first
use was upheld.
The judgment in IPC No. 686 being on the
merits, petitioner and the Solicitor General allege
that IPC No. 686 and IPC No. 2049 also comply
with the fourth requisite of res judicata, i.e., they
involve the same parties and the same subject
matter, and have identical causes of action.
Undisputedly, IPC No. 686 and IPC No. 2049
involve the same parties and the same subject
matter. Petitioner herein is the assignee of Escobar
while private respondent is the same American
corporation in the first case. The subject matter of
both cases is the trademark "Barbizon." Private
respondent counter-argues, however, that the two
cases do not have identical causes of action. New
causes of action were allegedly introduced in IPC
No. 2049, such as the prior use and registration of
the trademark in the United States and other
countries worldwide, prior use in the Philippines,
and the fraudulent registration of the mark in
violation of Article 189 of the Revised Penal
Code. Private respondent also cited protection of
the trademark under the Convention of Paris for the
Protection of Industrial Property, specifically
Article 6bis thereof, and the implementation of
Article 6bis by two Memoranda dated November
20, 1980 and October 25, 1983 of the Minister of

Trade and Industry to the Director of Patents, as

well as Executive Order (E.O.) No. 913.
The Convention of Paris for the Protection of
Industrial Property, otherwise known as the Paris
Convention, is a multilateral treaty that seeks to
protect industrial property consisting of patents,
utility models, industrial designs, trademarks,
service marks, trade names and indications
of source or appellations of origin, and at the same
time aims to repress unfair competition.[41] The
Convention is essentially a compact among various
countries which, as members of the Union, have
pledged to accord to citizens of the other member
countries trademark and other rights comparable to
those accorded their own citizens by their domestic
laws for an effective protection against unfair
competition.[42] In short, foreign nationals are to be
given the same treatment in each of the member
countries as that country makes available to its own
citizens.[43] Nationals of the various member nations
are thus assured of a certain minimum of
international protection of their industrial property.
[44]

The Convention was first signed by eleven

countries in Paris on March 20, 1883.[45] It
underwent several revisions-- at Brussels in 1900,
at Washington in 1911, at The Hague in 1925, at
London in 1934, at Lisbon in 1958,[46]and at
Stockholm in 1967. Both the Philippines and the
United States of America, herein private
respondent's country, are signatories to the
Convention. The United States acceded on May 30,
1887 while the Philippines, through its Senate,
concurred on May 10, 1965.[47] The Philippines'
adhesion became effective on September 27, 1965,
[48]
and from this date, the country obligated itself to
honor and enforce the provisions of the Convention.
[49]

In the case at bar, private respondent anchors

its cause of action on the first paragraph of Article
6bis of the Paris Convention which reads as
follows:
"Article 6bis
(1) The countries of the Union undertake, either administratively
if their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration and to prohibit the
use, of a trademark which constitutes a reproduction, an
imitation, or a translation, liable to create confusion, of a mark
considered by the competent authority of the country of
registration or use to be well-known in that country as being
already the mark of a person entitled to the benefits of this
Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall
be allowed for seeking the cancellation of such a mark. The countries
of the Union may provide for a period within which the prohibition
of use must be sought.

(3) No time limit shall be fixed for seeking the

cancellation or the prohibition of the use of marks
registered or used in bad faith."[50]
This Article governs protection of wellknown trademarks. Under the first paragraph,
each country of the Union bound itself to undertake
to refuse or cancel the registration, and prohibit the
use of a trademark which is a reproduction,
imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable
to create confusion, of a mark considered by the
competent authority of the country where protection
is sought, to be well-known in the country as being
already the mark of a person entitled to the benefits
of the Convention, and used for identical or similar
goods.
Article 6bis was first introduced at The Hague
in 1925 and amended in Lisbon in 1952. [51] It is a
self-executing provision and does not require
legislative enactment to give it effect in the member
country.[52] It may be applied directly by the
tribunals and officials of each member country by
the mere publication or proclamation of the
Convention, after its ratification according to the
public law of each state and the order for its
execution.[53]
The essential requirement under Article 6bis is
that the trademark to be protected must be "wellknown" in the country where protection is
sought. The power to determine whether a
trademark is well-known lies in the "competent
authority of the country of registration or use." This
competent authority would be either the registering
authority if it has the power to decide this, or the
courts of the country in question if the issue comes
before a court.[54]
Pursuant to Article 6bis, on November 20,
1980, then Minister Luis Villafuerte of the Ministry
of Trade issued a Memorandum to the Director of
Patents. The Minister ordered the Director that:
"Pursuant to the Paris Convention for the Protection of Industrial
Property to which the Philippines is a signatory, you are hereby
directed to reject all pending applications for Philippine registration
of signature and other world-famous trademarks by applicants other
than its original owners or users.
The conflicting claims over internationally known trademarks
involve such name brands as Lacoste, Jordache, Vanderbilt, Sasson,
Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la Renta, Calvin
Klein, Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and Ted
Lapidus.

It is further directed that, in cases where warranted, Philippine

registrants of such trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for damages and
other legal action by the trademarks' foreign or local owners or
original users.
You are also required to submit to the undersigned a progress report
on the matter.
For immediate compliance."

other similar devices used for identification and recognition by

consumers.
3. The Philippine Patent Office shall refuse all applications for, or
cancel the registration of, trademarks which constitute a
reproduction, translation or imitation of a trademark owned by a
person, natural or corporate, who is a citizen of a country signatory to
the PARIS CONVENTION FOR THE PROTECTION OF
INDUSTRIAL PROPERTY.

[55]

Three years later, on October 25, 1983, then

Minister Roberto Ongpin issued another
Memorandum to the Director of Patents, viz:
"Pursuant to Executive Order No. 913 dated 7 October 1983 which
strengthens the rule-making and adjudicatory powers of the Minister
of Trade and Industry and provides inter alia, that `such rule-making
and adjudicatory powers should be revitalized in order that the
Minister of Trade and Industry can x x x apply more swift and
effective solutions and remedies to old and new problems x x x such
as infringement of internationally-known tradenames and trademarks
x x x' and in view of the decision of the Intermediate Appellate Court
in the case of LA CHEMISE LACOSTE, S.A., versus RAM
[56]
SADWHANI [AC-G.R. SP NO. 13359 (17) June 1983]
which
affirms the validity of the MEMORANDUM of then Minister Luis
R. Villafuerte dated 20 November 1980 confirming our obligations
under the PARIS CONVENTION FOR THE PROTECTION OF
INDUSTRIAL PROPERTY to which the Republic of the Philippines
is a signatory, you are hereby directed to implement measures
necessary to effect compliance with our obligations under said
Convention in general, and, more specifically, to honor our
[57]
commitment under Section 6bis
thereof, as follows:
1. Whether the trademark under consideration is well-known in the
Philippines or is a mark already belonging to a person entitled to the
benefits of the CONVENTION, this should be established, pursuant
to Philippine Patent Office procedures in inter partes and ex parte
cases, according to any of the following criteria or any combination
thereof:
(a) a declaration by the Minister of Trade and Industry that the
trademark being considered is already well-known in the Philippines
such that permission for its use by other than its original owner will
constitute a reproduction, imitation, translation or other infringement;
(b) that the trademark is used in commerce internationally, supported
by proof that goods bearing the trademark are sold on an
international scale, advertisements, the establishment of factories,
sales offices, distributorships, and the like, in different countries,
including volume or other measure of international trade and
commerce;
(c) that the trademark is duly registered in the industrial property
office(s) of another country or countries, taking into consideration
the date of such registration;
(d) that the trademark has long been established and obtained
goodwill and international consumer recognition as belonging to one
owner or source;
(e) that the trademark actually belongs to a party claiming ownership
and has the right to registration under the provisions of the
aforestated PARIS CONVENTION.
2. The word trademark, as used in this MEMORANDUM, shall
include tradenames, service marks, logos, signs, emblems, insignia or

4. The Philippine Patent Office shall give due course to the

Opposition in cases already or hereafter filed against the registration
of trademarks entitled to protection of Section 6 bis of said PARIS
CONVENTION as outlined above, by remanding applications filed
by one not entitled to such protection for final disallowance by the
Examination Division.
5. All pending applications for Philippine registration of signature
and other world-famous trademarks filed by applicants other than
their original owners or users shall be rejected forthwith. Where such
applicants have already obtained registration contrary to the
abovementioned PARIS CONVENTION and/or Philippine Law, they
shall be directed to surrender their Certificates of Registration to the
Philippine Patent Office for immediate cancellation proceedings.
x x x."

[58]

In the Villafuerte Memorandum, the Minister

of Trade instructed the Director of Patents to reject
all pending applications for Philippine registration
of signature and other world-famous trademarks by
applicants other than their original owners or
users. The
Minister
enumerated
several
internationally-known trademarks and ordered the
Director of Patents to require Philippine registrants
of such marks to surrender their certificates of
registration.
In the Ongpin Memorandum, the Minister of
Trade and Industry did not enumerate well-known
trademarks but laid down guidelines for the
Director of Patents to observe in determining
whether a trademark is entitled to protection as a
well-known mark in the Philippines under Article
6bis of the Paris Convention. This was to be
established through Philippine Patent Office
procedures in inter partes and ex parte cases
pursuant to the criteria enumerated therein. The
Philippine Patent Office was ordered to refuse
applications for, or cancel the registration of,
trademarks which constitute a reproduction,
translation or imitation of a trademark owned by a
person who is a citizen of a member of the
Union. All pending applications for registration of
world-famous trademarks by persons other than
their original owners were to be rejected
forthwith. The Ongpin Memorandum was issued
pursuant to Executive Order No. 913 dated October
7, 1983 of then President Marcos which
strengthened the rule-making and adjudicatory
powers of the Minister of Trade and Industry for the

effective protection of consumers and the

application of swift solutions to problems in trade
and industry.[59]
Both the Villafuerte and Ongpin Memoranda
were sustained by the Supreme Court in the 1984
landmark case of La Chemise Lacoste, S.A. v.
Fernandez.[60] This court ruled therein that under the
provisions of Article 6bis of the Paris Convention,
the Minister of Trade and Industry was the
"competent authority" to determine whether a
trademark is well-known in this country.[61]
The Villafuerte Memorandum was issued in
1980, i.e., fifteen (15) years after the adoption of
the Paris Convention in 1965. In the case at bar, the
first inter partes case, IPC No. 686, was filed in
1970, before the Villafuerte Memorandum but five
(5) years after the effectivity of the Paris
Convention. Article 6bis was already in effect five
years before the first case was instituted. Private
respondent, however, did not cite the protection of
Article 6bis, neither did it mention the Paris
Convention at all. It was only in 1981 when IPC
No. 2049 was instituted that the Paris Convention
and the Villafuerte Memorandum, and, during the
pendency of the case, the 1983 Ongpin
Memorandum were invoked by private respondent.
The Solicitor General argues that the issue of
whether the protection of Article 6bis of the
Convention and the two Memoranda is barred
by res judicata has already been answered
in Wolverine Worldwide, Inc. v. Court of Appeals.
[62]
In this case, petitioner Wolverine, a foreign
corporation, filed with the Philippine Patent Office
a petition for cancellation of the registration
certificate of private respondent, a Filipino citizen,
for the trademark "Hush Puppies" and "Dog
Device." Petitioner alleged that it was the registrant
of the internationally-known trademark in the
United States and other countries, and cited
protection under the Paris Convention and the
Ongpin Memorandum.The petition was dismissed
by the Patent Office on the ground of res
judicata. It was found that in 1973 petitioner's
predecessor-in-interest filed two petitions for
cancellation of the same trademark against
respondent's predecessor-in-interest. The Patent
Office dismissed the petitions, ordered the
cancellation of registration of petitioner's
trademark, and gave due course to respondent's
application for registration. This decision was
sustained by the Court of Appeals, which decision
was not elevated to us and became final and
executory.[63]

Wolverine claimed that while its previous

petitions were filed under R.A. No. 166, the
Trademark Law, its subsequent petition was based
on a new cause of action, i.e., the Ongpin
Memorandum and E.O. No. 913 issued in 1983,
after finality of the previous decision. We held that
the said Memorandum and E.O. did not grant a new
cause of action because it did "not amend the
Trademark Law," x x x "nor did it indicate a new
policy with respect to the registration in the
Philippines of world-famous trademarks."[64] This
conclusion was based on the finding that
Wolverine's two previous petitions and subsequent
petition dealt with the same issue of ownership of
the trademark.[65]In other words, since the first and
second cases involved the same issue of ownership,
then the first case was a bar to the second case.
In the instant case, the issue of ownership of
the trademark "Barbizon" was not raised in IPC No.
686. Private respondent's opposition therein was
merely anchored on:
(a) "confusing similarity" of its trademark with that of Escobar's;
(b) that the registration of Escobar's similar trademark will cause
damage to private respondent's business reputation and goodwill; and
(c) that Escobar's use of the trademark amounts to an unlawful
appropriation of a mark previously used in the Philippines which act
is penalized under Section 4 (d) of the Trademark Law.

In IPC No. 2049, private respondent's

opposition set forth several issues summarized as
follows:
(a) as early as 1933, it adopted the word "BARBIZON" as trademark
on its products such as robes, pajamas, lingerie, nightgowns and
slips;
(b) that the trademark "BARBIZON" was registered with the United
States Patent Office in 1934 and 1949; and that variations of the
same trademark, i.e., "BARBIZON" with Bee design and
"BARBIZON" with the representation of a woman were also
registered with the U.S. Patent Office in 1961 and 1976;
(c) that these marks have been in use in the Philippines and in many
countries all over the world for over forty years. "Barbizon" products
have been advertised in international publications and the marks
registered in 36 countries worldwide;
(d) Escobar's registration of the similar trademark "BARBIZON" in
1974 was based on fraud; and this fraudulent registration was
cancelled in 1979, stripping Escobar of whatsoever right she had to
the said mark;
(e) Private respondent's trademark is entitled to protection as a wellknown mark under Article 6bis of the Paris Convention, Executive
Order No. 913, and the two Memoranda dated November 20, 1980
and October 25, 1983 of the Minister of Trade and Industry to the
Director of Patents;

(f) Escobar's trademark is identical to private respondent's and its use

on the same class of goods as the latter's amounts to a violation of the
Trademark Law and Article 189 of the Revised Penal Code.

IPC No. 2049 raised the issue of ownership of the

trademark, the first registration and use of the
trademark in the United States and other countries,
and the international recognition and reputation of
the trademark established by extensive use and
advertisement of private respondent's products for
over forty years here and abroad. These are
different from the issues of confusing similarity and
damage in IPC No. 686. The issue of prior use may
have been raised in IPC No. 686 but this claim was
limited to prior use in the Philippines only. Prior
use in IPC No. 2049 stems from private
respondent's claim as originator of the word and
symbol "Barbizon,"[66] as the first and registered
user of the mark attached to its products which have
been sold and advertised worldwide for a
considerable number of years prior to petitioner's
first application for registration of her trademark in
the Philippines. Indeed, these are substantial
allegations that raised new issues and necessarily
gave private respondent a new cause of action. Res
judicata does not apply to rights, claims or
demands, although growing out of the same subject
matter, which constitute separate or distinct causes
of action and were not put in issue in the former
action.[67]
Respondent corporation also introduced in the
second case a fact that did not exist at the time the
first case was filed and terminated. The cancellation
of petitioner's certificate of registration for failure
to file the affidavit of use arose only after IPC No.
686. It did not and could not have occurred in the
first case, and this gave respondent another cause to
oppose the second application. Res judicata extends
only to facts and conditions as they existed at the
time judgment was rendered and to the legal rights
and relations of the parties fixed by the facts so
determined.[68] When new facts or conditions
intervene before the second suit, furnishing a new
basis for the claims and defenses of the parties, the
issues are no longer the same, and the former
judgment cannot be pleaded as a bar to the
subsequent action.[69]
It is also noted that the oppositions in the first
and second cases are based on different laws. The
opposition in IPC No. 686 was based on specific
provisions of the Trademark Law, i.e., Section 4 (d)
[70]
on confusing similarity of trademarks and
Section 8[71] on the requisite damage to file an
opposition to a petition for registration. The
opposition in IPC No. 2049 invoked the Paris

Convention, particularly Article 6bis thereof, E.O.

No. 913 and the two Memoranda of the Minister of
Trade and Industry. This opposition also invoked
Article 189 of the Revised Penal Code which is a
statute totally different from the Trademark Law.
[72]
Causes of action which are distinct and
independent from each other, although arising out
of the same contract, transaction, or state of facts,
may be sued on separately, recovery on one being
no bar to subsequent actions on others.[73] The mere
fact that the same relief is sought in the subsequent
action will not render the judgment in the prior
action operative as res judicata, such as where the
two actions are based on different statutes.[74] Res
judicata therefore does not apply to the instant case
and respondent Court of Appeals did not err in so
ruling.
Intellectual and industrial property rights cases
are not simple property cases. Trademarks deal with
the psychological function of symbols and the
effect of these symbols on the public at large.
[75]
Trademarks play a significant role in
communication, commerce and trade, and serve
valuable and interrelated business functions, both
nationally and internationally. For this reason, all
agreements concerning industrial property, like
those on trademarks and tradenames, are intimately
connected
with
economic
development.
[76]
Industrial property encourages investments in
new ideas and inventions and stimulates creative
efforts for the satisfaction of human needs. They
speed
up
transfer
of
technology
and
industrialization, and thereby bring about social and
economic progress.[77] These advantages have been
acknowledged by the Philippine government
itself. The Intellectual Property Code of the
Philippines declares that "an effective intellectual
and industrial property system is vital to the
development of domestic and creative activity,
facilitates transfer of technology, it attracts foreign
investments, and ensures market access for our
products."[78] The Intellectual Property Code took
effect on January 1, 1998 and by its express
provision,[79] repealed the Trademark Law,[80] the
Patent Law,[81] Articles 188 and 189 of the Revised
Penal Code, the Decree on Intellectual Property,
[82]
and the Decree on Compulsory Reprinting of
Foreign Textbooks.[83] The Code was enacted to
strengthen the intellectual and industrial property
system in the Philippines as mandated by the
country's accession to the Agreement Establishing
the World Trade Organization (WTO).[84]
The WTO is a common institutional framework
for the conduct of trade relations among its

members in matters related to the multilateral and

plurilateral trade agreements annexed to the WTO
Agreement.[85] The WTO framework ensures a
"single undertaking approach" to the administration
and operation of all agreements and arrangements
attached to the WTO Agreement. Among those
annexed is the Agreement on Trade-Related Aspects
of Intellectual Property Rights or TRIPs.
[86]
Members to this Agreement "desire to reduce
distortions and impediments to international trade,
taking into account the need to promote effective
and adequate protection of intellectual property
rights, and to ensure that measures and procedures
to enforce intellectual property rights do not
themselves become barriers to legitimate trade." To
fulfill these objectives, the members have agreed to
adhere to minimum standards of protection set by
several Conventions.[87] These Conventions are: the
Berne Convention for the Protection of Literary and
Artistic Works (1971), the Rome Convention or the
International Convention for the Protection of
Performers, Producers of Phonograms and
Broadcasting Organisations, the Treaty on
Intellectual Property in Respect of Integrated
Circuits, and the Paris Convention (1967), as
revised in Stockholm on July 14, 1967.[88]
A major proportion of international trade
depends on the protection of intellectual property
rights.[89] Since the late 1970's, the unauthorized
counterfeiting of industrial property and
trademarked products has had a considerable
adverse impact on domestic and international trade
revenues.[90] The TRIPs Agreement seeks to grant
adequate protection of intellectual property rights
by creating a favorable economic environment to
encourage the inflow of foreign investments, and
strengthening the multi-lateral trading system to
bring about economic, cultural and technological
independence.[91] The Philippines and the United
States of America have acceded to the WTO
Agreement.This Agreement has revolutionized
international business and economic relations
among states, and has propelled the world towards
trade liberalization and economic globalization.
[92]
Protectionism and isolationism belong to the
past. Trade is no longer confined to a bilateral
system. There is now "a new era of global
economic cooperation, reflecting the widespread
desire to operate in a fairer and more open
multilateral trading system."[93] Conformably, the
State must reaffirm its commitment to the global
community and take part in evolving a new
international economic order at the dawn of the new
millenium.

IN VIEW WHEREOF, the petition is denied

and the Decision and Resolution of the Court of
Appeals in CA-G.R. SP No. 28415 are affirmed.
SO ORDERED.
Davide, Jr., C.J., (Chairman), Kapunan,
Pardo, and Ynares-Santiago, JJ., concur.

THIRD DIVISION

[G.R. No. 148222. August 15, 2003]

PEARL
&
DEAN
(PHIL.), INCORPORATED, petitioner, vs
. SHOEMART, INCORPORATED, and
NORTH
EDSA
MARKETING, INCORPORATED, respo
ndents.
DECISION
CORONA, J.:
In the instant petition for review
on certiorari under Rule 45 of the Rules of Court,
petitioner Pearl & Dean (Phil.) Inc. (P & D) assails
the May 22, 2001 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 nonperformance 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 defendantappellant 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.

Defendants counterclaims are hereby

ordered dismissed for lack of merit.

The RTC of Makati City decided in favor of P

& D:

On appeal, however, the Court of Appeals

reversed the trial court:

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:

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:

(1) to pay plaintiff the following damages:

(a) actual damages - P16,600,000.00,
representing profits
derived
by
defendants
as a result of
infringement 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.

SO ORDERED.[4]

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 defendantsappellants 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
INFRINGEMENT

OF

COPYRIGHT

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. PDR2588 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
INFRINGEMENT

OF

PATENT

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 indepth 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
INFRINGEMENT

OF

TRADEMARK

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.
Puno, (Chairman), Panganiban, SandovalGutierrez, and Carpio-Morales, JJ., concur.

SECOND DIVISION

[G.R. No. 115758. March 19, 2002]

ELIDAD C. KHO, doing business under the

name and style of KEC COSMETICS
LABORATORY, petitioner, vs.
HON.
COURT
OF
APPEALS,
SUMMERVILLE
GENERAL
MERCHANDISING and COMPANY,
and ANG TIAM CHAY, respondents.
DECISION
DE LEON, JR., J.:
Before us is a petition for review
on certiorari of the Decision[1] dated May 24, 1993
of the Court of Appeals setting aside and declaring
as null and void the Orders[2] dated February 10,
1992 and March 19, 1992 of the Regional Trial
Court, Branch 90, of Quezon City granting the
issuance of a writ of preliminary injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C.
Kho filed a complaint for injunction and damages
with a prayer for the issuance of a writ of
preliminary injunction, docketed as Civil Case No.
Q-91-10926, against the respondents Summerville
General
Merchandising
and
Company
(Summerville, for brevity) and Ang Tiam Chay.
The petitioners complaint alleges that
petitioner, doing business under the name and style
of KEC Cosmetics Laboratory, is the registered
owner of the copyrights Chin Chun Su and Oval
Facial Cream Container/Case, as shown by
Certificates of Copyright Registration No. 0-1358
and No. 0-3678; that she also has patent rights
on Chin Chun Su & Device and Chin Chun Su for
medicated cream after purchasing the same from
Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent
Office on February 7, 1980 under Registration
Certificate No. 4529; that respondent Summerville
advertised and sold petitioners cream products
under the brand name Chin Chun Su, in similar
containers that petitioner uses, thereby misleading
the public, and resulting in the decline in the
petitioners business sales and income; and, that the
respondents should be enjoined from allegedly

infringing on the copyrights and patents of the

petitioner.
The respondents, on the other hand, alleged as
their defense that Summerville is the exclusive and
authorized importer, re-packer and distributor
of Chin Chun Su products manufactured by Shun Yi
Factory of Taiwan; that the said Taiwanese
manufacturing company authorized Summerville to
register its trade name Chin Chun Su Medicated
Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC
Cosmetics Laboratory of the petitioner obtained the
copyrights
through
misrepresentation
and
falsification; and, that the authority of Quintin
Cheng, assignee of the patent registration
certificate, to distribute and market Chin Chun
Su products in the Philippines had already been
terminated by the said Taiwanese Manufacturing
Company.
After due hearing on the application for
preliminary injunction, the trial court granted the
same in an Order dated February 10, 1992, the
dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad
C. Kho, doing business under the style of KEC
Cosmetic Laboratory, for preliminary injunction, is
hereby granted. Consequentially, plaintiff is
required to file with the Court a bond executed to
defendants in the amount of five hundred thousand
pesos (P500,000.00) to the effect that plaintiff will
pay to defendants all damages which defendants
may sustain by reason of the injunction if the Court
should finally decide that plaintiff is not entitled
thereto.
SO ORDERED.[3]
The respondents moved for reconsideration but
their motion for reconsideration was denied by the
trial court in an Order dated March 19, 1992.[4]
On April 24, 1992, the respondents filed a
petition for certiorari with the Court of Appeals,
docketed as CA-G.R. SP No. 27803, praying for the
nullification of the said writ of preliminary
injunction issued by the trial court. After the
respondents filed their reply and almost a month
after petitioner submitted her comment, or on
August 14 1992, the latter moved to dismiss the
petition for violation of Supreme Court Circular
No. 28-91, a circular prohibiting forum shopping.
According to the petitioner, the respondents did not
state the docket number of the civil case in the
caption of their petition and, more significantly,

they did not include therein a certificate of nonforum shopping. The respondents opposed the
petition and submitted to the appellate court a
certificate of non-forum shopping for their petition.
On May 24, 1993, the appellate court rendered
a Decision in CA-G.R. SP No. 27803 ruling in
favor of the respondents, the dispositive portion of
which reads:
WHEREFORE, the petition is hereby given due
course and the orders of respondent court dated
February 10, 1992 and March 19, 1992 granting the
writ of preliminary injunction and denying
petitioners motion for reconsideration are hereby
set aside and declared null and void. Respondent
court is directed to forthwith proceed with the trial
of Civil Case No. Q-91-10926 and resolve the issue
raised by the parties on the merits.
SO ORDERED.[5]
In granting the petition, the appellate court ruled
that:
The registration of the trademark or brandname
Chin Chun Su by KEC with the supplemental
register of the Bureau of Patents, Trademarks and
Technology Transfer cannot be equated with
registration in the principal register, which is duly
protected by the Trademark Law.
xxx xxx xxx
As ratiocinated in La Chemise Lacoste, S.S. vs.
Fernandez, 129 SCRA 373, 393:
Registration in the Supplemental Register,
therefore, serves as notice that the registrant is
using or has appropriated the trademark. By the
very fact that the trademark cannot as yet be on
guard and there are certain defects, some obstacles
which the use must still overcome before he can
claim legal ownership of the mark or ask the courts
to vindicate his claims of an exclusive right to the
use of the same. It would be deceptive for a party
with nothing more than a registration in the
Supplemental Register to posture before courts of
justice as if the registration is in the Principal
Register.
The reliance of the private respondent on the last
sentence of the Patent office action on application
Serial No. 30954 that registrants is presumed to be
the owner of the mark until after the registration is
declared cancelled is, therefore, misplaced and

grounded on shaky foundation. The supposed

presumption not only runs counter to the precept
embodied in Rule 124 of the Revised Rules of
Practice before the Philippine Patent Office in
Trademark Cases but considering all the facts
ventilated before us in the four interrelated petitions
involving the petitioner and the respondent, it is
devoid of factual basis. As even in cases where
presumption and precept may factually be
reconciled, we have held that the presumption is
rebuttable, not conclusive, (People v. Lim Hoa,
G.R. No. L-10612, May 30, 1958, Unreported).
One may be declared an unfair competitor even if
his competing trademark is registered (Parke, Davis
& Co. v. Kiu Foo & Co., et al., 60 Phil 928; La
Yebana Co. v. chua Seco & Co., 14 Phil 534).[6]
The petitioner filed a motion for
reconsideration. This she followed with several
motions to declare respondents in contempt of court
for publishing advertisements notifying the public
of the promulgation of the assailed decision of the
appellate court and stating that genuine Chin Chun
Su products could be obtained only from
Summerville General Merchandising and Co.
In the meantime, the trial court went on to hear
petitioners complaint for final injunction and
damages. On October 22, 1993, the trial court
rendered a Decision[7] barring the petitioner from
using the trademark Chin Chun Su and upholding
the right of the respondents to use the same, but
recognizing the copyright of the petitioner over the
oval shaped container of her beauty cream. The trial
court did not award damages and costs to any of the
parties but to their respective counsels were
awarded
Seventy-Five
Thousand
Pesos
(P75,000.00) each as attorneys fees. The petitioner
duly appealed the said decision to the Court of
Appeals.
On June 3, 1994, the Court of Appeals
promulgated a Resolution[8] denying the petitioners
motions for reconsideration and for contempt of
court in CA-G.R. SP No. 27803.
Hence, this petition anchored on the following
assignment of errors:
I
RESPONDENT HONORABLE COURT
OF APPEALS COMMITTED GRAVE
ABUSE
OF
DISCRETION
AMOUNTING
TO
LACK
OF
JURISDICTION IN FAILING TO RULE

ON PETITIONERS
DISMISS.

MOTION

TO

II
RESPONDENT HONORABLE COURT
OF APPEALS COMMITTED GRAVE
ABUSE
OF
DISCRETION
AMOUNTING
TO
LACK
OF
JURISDICTION IN REFUSING TO
PROMPTLY RESOLVE PETITIONERS
MOTION FOR RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF
PETITIONERS
MOTION
FOR
RECONSIDERATION,
THE
HONORABLE COURT OF APPEALS
DENIED PETITIONERS RIGHT TO
SEEK TIMELY APPELLATE RELIEF
AND
VIOLATED
PETITIONERS
RIGHT TO DUE PROCESS.
IV
RESPONDENT HONORABLE COURT
OF APPEALS COMMITTED GRAVE
ABUSE
OF
DISCRETION
AMOUNTING
TO
LACK
OF
JURISDICTION IN FAILING TO CITE
THE PRIVATE RESPONDENTS IN
CONTEMPT.[9]
The petitioner faults the appellate court for not
dismissing the petition on the ground of violation of
Supreme Court Circular No. 28-91. Also, the
petitioner contends that the appellate court violated
Section 6, Rule 9 of the Revised Internal Rules of
the Court of Appeals when it failed to rule on her
motion for reconsideration within ninety (90) days
from the time it is submitted for resolution. The
appellate court ruled only after the lapse of three
hundred fifty-four (354) days, or on June 3, 1994.
In delaying the resolution thereof, the appellate
court denied the petitioners right to seek the timely
appellate relief. Finally, petitioner describes as
arbitrary the denial of her motions for contempt of
court against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised
Rules of Civil Procedure, one of the grounds for the
issuance of a writ of preliminary injunction is a
proof that the applicant is entitled to the relief

demanded, and the whole or part of such relief

consists in restraining the commission or
continuance of the act or acts complained of, either
for a limited period or perpetually. Thus, a
preliminary injunction order may be granted only
when the application for the issuance of the same
shows facts entitling the applicant to the relief
demanded.[10] This is the reason why we have ruled
that it must be shown that the invasion of the right
sought to be protected is material and substantial,
that the right of complainant is clear and
unmistakable, and, that there is an urgent and
paramount necessity for the writ to prevent serious
damage.[11]
In the case at bar, the petitioner applied for the
issuance of a preliminary injunctive order on the
ground that she is entitled to the use of the
trademark on Chin Chun Su and its container based
on her copyright and patent over the same. We first
find it appropriate to rule on whether the copyright
and patent over the name and container of a beauty
cream product would entitle the registrant to the use
and ownership over the same to the exclusion of
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.[12] In relation thereto, a trade
name means the name or designation identifying or
distinguishing an enterprise.[13] 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.
[14]
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.[15]
Petitioner has no right to support her claim for
the exclusive use of the subject trade name and its
container. The name and container of a beauty
cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its
definition. In order to be entitled to exclusively use
the same in the sale of the beauty cream product,
the user must sufficiently prove that she registered
or used it before anybody else did. The petitioners
copyright and patent registration of the name and
container would not guarantee her the right to the
exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual

rights. Consequently, a preliminary injunction order

cannot be issued for the reason that the petitioner
has not proven that she has a clear right over the
said name and container to the exclusion of others,
not having proven that she has registered a
trademark thereto or used the same before anyone
did.
We cannot likewise overlook the decision of
the trial court in the case for final injunction and
damages. The dispositive portion of said decision
held that the petitioner does not have trademark
rights on the name and container of the beauty
cream product. The said decision on the merits of
the trial court rendered the issuance of the writ of a
preliminary injunction moot and academic
notwithstanding the fact that the same has been
appealed in the Court of Appeals. This is supported
by our ruling in La Vista Association, Inc. v. Court
of Appeals[16], to wit:
Considering that preliminary injunction is a
provisional remedy which may be granted at any
time after the commencement of the action and
before judgment when it is established that the
plaintiff is entitled to the relief demanded and only
when his complaint shows facts entitling such
reliefs xxx and it appearing that the trial court had
already granted the issuance of a final injunction in
favor of petitioner in its decision rendered after
trial on the merits xxx the Court resolved to
Dismiss the instant petition having been rendered
moot and academic. An injunction issued by the
trial court after it has already made a clear
pronouncement as to the plaintiffs right thereto,
that is, after the same issue has been decided on the
merits, the trial court having appreciated the
evidence presented, is proper, notwithstanding the
fact that the decision rendered is not yet final xxx.
Being an ancillary remedy, the proceedings for
preliminary injunction cannot stand separately or
proceed independently of the decision rendered on
the merit of the main case for injunction. The merit
of the main case having been already determined in
favor of the applicant, the preliminary
determination of its non-existence ceases to have
any force and effect. (italics supplied)
La Vista categorically pronounced that the issuance
of a final injunction renders any question on the
preliminary injunctive order moot and academic
despite the fact that the decision granting a final
injunction is pending appeal. Conversely, a decision
denying the applicant-plaintiffs right to a final
injunction, although appealed, renders moot and

academic any objection to the prior dissolution of a

writ of preliminary injunction.
The petitioner argues that the appellate court
erred in not dismissing the petition for certiorari for
non-compliance with the rule on forum shopping.
We disagree. First, the petitioner improperly raised
the technical objection of non-compliance with
Supreme Court Circular No. 28-91 by filing a
motion to dismiss the petition for certiorari filed in
the appellate court. This is prohibited by Section 6,
Rule 66 of the Revised Rules of Civil Procedure
which
provides
that
(I)n
petitions
for certiorari before the Supreme Court and the
Court of Appeals, the provisions of Section 2, Rule
56, shall be observed. Before giving due course
thereto, the court may require the respondents to
file their comment to, and not a motion to dismiss,
the petition xxx (italics supplied). Secondly, the
issue was raised one month after petitioner had filed
her answer/comment and after private respondent
had replied thereto. Under Section 1, Rule 16 of the
Revised Rules of Civil Procedure, a motion to
dismiss shall be filed within the time for but before
filing the answer to the complaint or pleading
asserting a claim. She therefore could no longer
submit a motion to dismiss nor raise defenses and
objections not included in the answer/comment she
had earlier tendered. Thirdly, substantial justice and
equity require this Court not to revive a dissolved
writ of injunction in favor of a party without any
legal right thereto merely on a technical infirmity.
The granting of an injunctive writ based on a
technical ground rather than compliance with the
requisites for the issuance of the same is contrary to
the primary objective of legal procedure which is to
serve as a means to dispense justice to the deserving
party.
The petitioner likewise contends that the
appellate court unduly delayed the resolution of her
motion for reconsideration. But we find that
petitioner contributed to this delay when she filed
successive contentious motions in the same
proceeding, the last of which was on October 27,
1993, necessitating counter-manifestations from
private respondents with the last one being filed on
November 9, 1993. Nonetheless, it is well-settled
that non-observance of the period for deciding cases
or their incidents does not render such judgments
ineffective or void.[17] With respect to the purported
damages she suffered due to the alleged delay in
resolving her motion for reconsideration, we find
that the said issue has likewise been rendered moot
and academic by our ruling that she has no right

over the trademark and, consequently, to the

issuance of a writ of preliminary injunction.
Finally, we rule that the Court of Appeals
correctly denied the petitioners several motions for
contempt of court. There is nothing contemptuous
about the advertisements complained of which, as
regards the proceedings in CA-G.R. SP No. 27803
merely announced in plain and straightforward
language the promulgation of the assailed Decision
of the appellate court. Moreover, pursuant to
Section 4 of Rule 39 of the Revised Rules of Civil
Procedure, the said decision nullifying the
injunctive writ was immediately executory.
WHEREFORE, the petition is DENIED. The
Decision and Resolution of the Court of Appeals
dated May 24, 1993 and June 3, 1994, respectively,
are hereby AFFIRMED. With costs against the
petitioner.
SO ORDERED.
Bellosillo,
(Chairman),
Quisumbing, and Buena, JJ., concur.

Mendoza,

inionAnnotation
Syllabus |
Case

U.S. Supreme Court

Feist Pubs., Inc. v. Rural Tel.
Svc. Co., Inc., 499 U.S. 340
(1991)
Feist Publications, Inc. v. Rural Telephone
Service Company, Inc.
No. 89-1909

addresses to obtain telephone service. Petitioner

Feist Publications, Inc., is a publishing company
that specializes in area-wide telephone directories
covering a much larger geographic range than
directories such as Rural's. When Rural refused to
license its white pages listings to Feist for a
directory covering 11 different telephone service
areas, Feist extracted the listings it needed from
Rural's directory without Rural's consent. Although
Feist altered many of Rural's listings, several were
identical to listings in Rural's white pages. The
District Court granted summary judgment to Rural
in its copyright infringement suit, holding that
telephone directories are copyrightable. The Court
of Appeals affirmed.
Held: Rural's white pages are not entitled to
copyright, and therefore Feist's use of them does not
constitute infringement. Pp. 499 U. S. 344-364.
(a) Article I, 8, cl. 8, of the Constitution mandates
originality as a prerequisite for copyright
protection.
The
constitutional
requirement
necessitates independent creation plus a modicum
of creativity. Since facts do not owe their origin to
an act of authorship, they are not original, and thus
are not copyrightable. Although a compilation of
facts may possess the requisite originality because
the author typically chooses which facts to include,
in what order to place them, and how to arrange the
data so that readers may use them effectively,
copyright protection extends only to those
components of the work that are original to the
author, not to the facts themselves. This
fact/expression dichotomy severely limits the scope
of protection in fact-based works. Pp. 499 U. S.
344-351.

499 U.S. 340

(b) The Copyright Act of 1976 and its predecessor,

the Copyright Act of 1909, leave no doubt that
originality is the touchstone of copyright protection
in directories and other fact-based works. The 1976
Act explains that copyright extends to "original
works of authorship," 17 U.S.C. 102(a), and that
there can be no copyright in facts, 102(b).

Syllabus

Page 499 U. S. 341

Respondent Rural Telephone Service Company is a

certified public utility providing telephone service
to several communities in Kansas. Pursuant to state
regulation, Rural publishes a typical telephone
directory, consisting of white pages and yellow
pages. It obtains data for the directory from
subscribers, who must provide their names and

A compilation is not copyrightable per se, but is

copyrightable only if its facts have been "selected,
coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original
work of authorship." 101 (emphasis added). Thus,
the statute envisions that some ways of selecting,
coordinating, and arranging data are not sufficiently

Argued Jan. 9, 1991

Decided March 27, 1991

original to trigger copyright protection. Even a

compilation that is copyrightable receives only
limited protection, for the copyright does not extend
to facts contained in the compilation. 103(b).
Lower courts that adopted a "sweat of the brow" or
"industrious collection" test -- which extended a
compilation's copyright protection beyond selection
and arrangement to the facts themselves -misconstrued the 1909 Act and eschewed the
fundamental axiom of copyright law that no one
may copyright facts or ideas. Pp. 499 U. S. 351361.
(c) Rural's white pages do not meet the
constitutional or statutory requirements for
copyright protection. While Rural has a valid
copyright in the directory as a whole because it
contains some forward text and some original
material in the yellow pages, there is nothing
original in Rural's white pages. The raw data are
uncopyrightable facts, and the way in which Rural
selected, coordinated, and arranged those facts is
not original in any way. Rural's selection of listings
-- subscribers' names, towns, and telephone
numbers -- could not be more obvious, and lacks
the modicum of creativity necessary to transform
mere selection into copyrightable expression. In
fact, it is plausible to conclude that Rural did not
truly "select" to publish its subscribers' names and
telephone numbers, since it was required to do so
by state law. Moreover, there is nothing remotely
creative about arranging names alphabetically in a
white pages directory. It is an age-old practice,
firmly rooted in tradition and so commonplace that
it has come to be expected as a matter of course.
Pp. 499 U. S. 361-364.
916 F.2d 718 (CA 10 1990), reversed.
O'CONNOR J., delivered the opinion of the Court,
in which REHNQUIST, C.J., and WHITE,
MARSHALL, STEVENS, SCALIA, KENNEDY,
and SOUTER, JJ., joined. BLACKMUN, J.,
concurred in the judgment.
Page 499 U. S. 342

U.S. Supreme Court

Feist Pubs., Inc. v. Rural Tel.
Svc. Co., Inc., 499 U.S. 340
(1991)
Feist Publications, Inc. v. Rural Telephone
Service Company, Inc.

No. 89-1909
Argued Jan. 9, 1991
Decided March 27, 1991
499 U.S. 340
CERTIORARI TO THE
COURT OF APPEALS

UNITED

STATES

FOR THE TENTH CIRCUIT

Syllabus
Respondent Rural Telephone Service Company is a
certified public utility providing telephone service
to several communities in Kansas. Pursuant to state
regulation, Rural publishes a typical telephone
directory, consisting of white pages and yellow
pages. It obtains data for the directory from
subscribers, who must provide their names and
addresses to obtain telephone service. Petitioner
Feist Publications, Inc., is a publishing company
that specializes in area-wide telephone directories
covering a much larger geographic range than
directories such as Rural's. When Rural refused to
license its white pages listings to Feist for a
directory covering 11 different telephone service
areas, Feist extracted the listings it needed from
Rural's directory without Rural's consent. Although
Feist altered many of Rural's listings, several were
identical to listings in Rural's white pages. The
District Court granted summary judgment to Rural
in its copyright infringement suit, holding that
telephone directories are copyrightable. The Court
of Appeals affirmed.
Held: Rural's white pages are not entitled to
copyright, and therefore Feist's use of them does not
constitute infringement. Pp. 499 U. S. 344-364.
(a) Article I, 8, cl. 8, of the Constitution mandates
originality as a prerequisite for copyright
protection.
The
constitutional
requirement
necessitates independent creation plus a modicum
of creativity. Since facts do not owe their origin to
an act of authorship, they are not original, and thus
are not copyrightable. Although a compilation of
facts may possess the requisite originality because
the author typically chooses which facts to include,
in what order to place them, and how to arrange the
data so that readers may use them effectively,
copyright protection extends only to those
components of the work that are original to the
author, not to the facts themselves. This
fact/expression dichotomy severely limits the scope
of protection in fact-based works. Pp. 499 U. S.
344-351.

(b) The Copyright Act of 1976 and its predecessor,

the Copyright Act of 1909, leave no doubt that
originality is the touchstone of copyright protection
in directories and other fact-based works. The 1976
Act explains that copyright extends to "original
works of authorship," 17 U.S.C. 102(a), and that
there can be no copyright in facts, 102(b).

MARSHALL, STEVENS, SCALIA, KENNEDY,

and SOUTER, JJ., joined. BLACKMUN, J.,
concurred in the judgment.

Page 499 U. S. 341

This case requires us to clarify the extent of

copyright protection available to telephone
directory white pages.

A compilation is not copyrightable per se, but is

copyrightable only if its facts have been "selected,
coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original
work of authorship." 101 (emphasis added). Thus,
the statute envisions that some ways of selecting,
coordinating, and arranging data are not sufficiently
original to trigger copyright protection. Even a
compilation that is copyrightable receives only
limited protection, for the copyright does not extend
to facts contained in the compilation. 103(b).
Lower courts that adopted a "sweat of the brow" or
"industrious collection" test -- which extended a
compilation's copyright protection beyond selection
and arrangement to the facts themselves -misconstrued the 1909 Act and eschewed the
fundamental axiom of copyright law that no one
may copyright facts or ideas. Pp. 499 U. S. 351361.
(c) Rural's white pages do not meet the
constitutional or statutory requirements for
copyright protection. While Rural has a valid
copyright in the directory as a whole because it
contains some forward text and some original
material in the yellow pages, there is nothing
original in Rural's white pages. The raw data are
uncopyrightable facts, and the way in which Rural
selected, coordinated, and arranged those facts is
not original in any way. Rural's selection of listings
-- subscribers' names, towns, and telephone
numbers -- could not be more obvious, and lacks
the modicum of creativity necessary to transform
mere selection into copyrightable expression. In
fact, it is plausible to conclude that Rural did not
truly "select" to publish its subscribers' names and
telephone numbers, since it was required to do so
by state law. Moreover, there is nothing remotely
creative about arranging names alphabetically in a
white pages directory. It is an age-old practice,
firmly rooted in tradition and so commonplace that
it has come to be expected as a matter of course.
Pp. 499 U. S. 361-364.
916 F.2d 718 (CA 10 1990), reversed.
O'CONNOR J., delivered the opinion of the Court,
in which REHNQUIST, C.J., and WHITE,

Page 499 U. S. 342

JUSTICE O'CONNOR delivered the opinion of the
Court.

I
Rural Telephone Service Company is a certified
public utility that provides telephone service to
several communities in northwest Kansas. It is
subject to a state regulation that requires all
telephone companies operating in Kansas to issue
annually an updated telephone directory.
Accordingly, as a condition of its monopoly
franchise, Rural publishes a typical
Page 499 U. S. 343
telephone directory, consisting of white pages and
yellow pages. The white pages list in alphabetical
order the names of Rural's subscribers, together
with their towns and telephone numbers. The
yellow pages list Rural's business subscribers
alphabetically by category, and feature classified
advertisements of various sizes. Rural distributes its
directory free of charge to its subscribers, but earns
revenue by selling yellow pages advertisements.
Feist Publications, Inc., is a publishing company
that specializes in area-wide telephone directories.
Unlike a typical directory, which covers only a
particular calling area, Feist's area-wide directories
cover a much larger geographical range, reducing
the need to call directory assistance or consult
multiple directories. The Feist directory that is the
subject of this litigation covers 11 different
telephone service areas in 15 counties and contains
46,878 white pages listings -- compared to Rural's
approximately 7,700 listings. Like Rural's directory,
Feist's is distributed free of charge and includes
both white pages and yellow pages. Feist and Rural
compete vigorously for yellow pages advertising.
As the sole provider of telephone service in its
service area, Rural obtains subscriber information
quite easily. Persons desiring telephone service
must apply to Rural and provide their names and
addresses; Rural then assigns them a telephone
number. Feist is not a telephone company, let alone
one with monopoly status, and therefore lacks
independent access to any subscriber information.

To obtain white pages listings for its area-wide

directory, Feist approached each of the 11 telephone
companies operating in northwest Kansas and
offered to pay for the right to use its white pages
listings.
Of the 11 telephone companies, only Rural refused
to license its listings to Feist. Rural's refusal created
a problem for Feist, as omitting these listings would
have left a gaping hole in its area-wide directory,
rendering it less attractive to potential yellow pages
advertisers. In a decision subsequent to that which
we review here, the District Court determined that
this was precisely the reason Rural refused to
license its listings. The refusal was motivated by an
unlawful purpose "to extend its monopoly in
telephone service to a monopoly in yellow pages
advertising." Rural Telephone Service Co. v. Feist
Publications, Inc., 737 F.Supp. 610, 622
(Kan.1990).
Unable to license Rural's white pages listings, Feist
used them without Rural's consent. Feist began by
removing several thousand listings that fell outside
the geographic range of its area-wide directory, then
hired personnel to investigate the 4,935 that
remained. These employees verified
Page 499 U. S. 344
the data reported by Rural and sought to obtain
additional information. As a result, a typical Feist
listing includes the individual's street address; most
of Rural's listings do not. Notwithstanding these
additions, however, 1,309 of the 46,878 listings in
Feist's 1983 directory were identical to listings in
Rural's 1982-1983 white pages. App. 54 (15-16),
57. Four of these were fictitious listings that Rural
had inserted into its directory to detect copying.
Rural sued for copyright infringement in the
District Court for the District of Kansas, taking the
position that Feist, in compiling its own directory,
could not use the information contained in Rural's
white pages. Rural asserted that Feist's employees
were obliged to travel door-to-door or conduct a
telephone survey to discover the same information
for themselves. Feist responded that such efforts
were economically impractical and, in any event,
unnecessary, because the information copied was
beyond the scope of copyright protection. The
District Court granted summary judgment to Rural,
explaining that "[c]ourts have consistently held that
telephone directories are copyrightable" and citing a
string of lower court decisions. 663 F.Supp. 214,
218 (1987). In an unpublished opinion, the Court of
Appeals for the Tenth Circuit affirmed "for
substantially the reasons given by the district

court." App. to Pet. for Cert. 4a, judgt. order

reported at 916 F.2d 718 (1990). We granted
certiorari, 498 U.S. 808 (1990), to determine
whether the copyright in Rural's directory protects
the names, towns, and telephone numbers copied by
Feist.

II
A
This case concerns the interaction of two wellestablished propositions. The first is that facts are
not copyrightable; the other, that compilations of
facts generally are. Each of these propositions
possesses an impeccable pedigree. That there can be
no valid copyright in facts is universally
understood. The most fundamental axiom of
copyright law is that
Page 499 U. S. 345
"[n]o author may copyright his ideas or the facts he
narrates." Harper & Row, Publishers, Inc. v. Nation
Enterprises, 471 U. S. 539, 471 U. S. 556 (1985).
Rural wisely concedes this point, noting in its brief
that "[f]acts and discoveries, of course, are not
themselves subject to copyright protection." Brief
for Respondent 24. At the same time, however, it is
beyond dispute that compilations of facts are within
the subject matter of copyright. Compilations were
expressly mentioned in the Copyright Act of 1909,
and again in the Copyright Act of 1976.
There is an undeniable tension between these two
propositions. Many compilations consist of nothing
but raw data -- i.e.,wholly factual information not
accompanied by any original written expression. On
what basis may one claim a copyright in such a
work? Common sense tells us that 100
uncopyrightable facts do not magically change their
status when gathered together in one place. Yet
copyright law seems to contemplate that
compilations that consist exclusively of facts are
potentially within its scope.
The key to resolving the tension lies in
understanding why facts are not copyrightable.
The sine qua non of copyright is originality. To
qualify for copyright protection, a work must be
original to the author. See Harper Row,
supra, at 471 U. S. 547-549. Original, as the term is
used in copyright, means only that the work was
independently created by the author (as opposed to
copied from other works), and that it possesses at
least some minimal degree of creativity. 1 M.
Nimmer & D. Nimmer, Copyright 2.01[A], [B]
(1990) (hereinafter Nimmer). To be sure, the

requisite level of creativity is extremely low; even a

slight amount will suffice. The vast majority of
works make the grade quite easily, as they possess
some creative spark, "no matter how crude, humble
or obvious" it might be. Id. 1.08[C][1].
Originality does not signify novelty; a work may be
original even though it closely resembles other
works, so long as the similarity is fortuitous, not the
result of copying. To illustrate,
Page 499 U. S. 346
assume that two poets, each ignorant of the other,
compose identical poems. Neither work is novel,
yet both are original and, hence, copyrightable. See
Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d
49, 54 (CA2 1936).
Originality is a constitutional requirement. The
source of Congress' power to enact copyright laws
is Article I, 8, cl. 8, of the Constitution, which
authorizes Congress to "secur[e] for limited Times
to Authors . . . the exclusive Right to their
respective Writings." In two decisions from the late
19th Century -- The Trade-Mark Cases, 100 U. S.
82 (1879); and Burrow-Giles Lithographic Co. v.
Sarony, 111 U. S. 53 (1884) -- this Court defined
the crucial terms "authors" and "writings." In so
doing, the Court made it unmistakably clear that
these terms presuppose a degree of originality.
In The Trade-Mark Cases, the Court addressed the
constitutional scope of "writings." For a particular
work to be classified "under the head of writings of
authors," the Court determined, "originality is
required." 100 U.S. at 100 U. S. 94. The Court
explained that originality requires independent
creation plus a modicum of creativity:
"[W]hile the word writings may be liberally
construed, as it has been, to include original designs
for engraving, prints, &c., it is only such as
are original, and are founded in the creative powers
of the mind. The writings which are to be protected
are the fruits of intellectual labor, embodied in the
form of books, prints, engravings, and the like."
Ibid. (emphasis in original).
In Burrow-Giles, the Court distilled the same
requirement from the Constitution's use of the word
"authors." The Court defined "author," in a
constitutional sense, to mean "he to whom anything
owes its origin; originator; maker." 111 U.S. at111
U. S. 58 (internal quotations omitted). As in The
Trade-Mark Cases, the Court emphasized the
creative component of originality. It described
copyright as being limited to "original intellectual

conceptions of the author," ibid., and stressed the

importance of requiring an author who accuses
another of infringement to prove "the existence
Page 499 U. S. 347
of those facts of originality, of intellectual
production, of thought, and conception." Id. 111
U.S. at 111 U. S. 590.
The originality requirement articulated in The
Trade-Mark Cases and Burrow-Giles remains the
touchstone of copyright protection today. See
Goldstein v. California, 412 U. S. 546, 412 U. S.
561-562 (1973). It is the very "premise of copyright
law." Miller v. Universal City Studios, Inc., 650
F.2d 1365, 1368 (CA5 1981). Leading scholars
agree on this point. As one pair of commentators
succinctly puts it: "The originality requirement
is constitutionally mandated for all works."
Patterson & Joyce, Monopolizing the Law: The
Scope of Copyright Protection for Law Reports and
Statutory Compilations, 36 UCLA L.Rev. 719, 763,
n. 155 (1989) (emphasis in original) (hereinafter
Patterson & Joyce). Accord, id. at 759-760, and n.
140; Nimmer 1.06[A] ("originality is a statutory
as well as a constitutional requirement"); id.
1.08[C][1] ("a modicum of intellectual labor . . .
clearly constitutes an essential constitutional
element").
It is this bedrock principle of copyright that
mandates the law's seemingly disparate treatment of
facts and factual compilations. "No one may claim
originality as to facts." Id. 2.11[A], p. 2-157. This
is because facts do not owe their origin to an act of
authorship. The distinction is one between creation
and discovery: the first person to find and report a
particular fact has not created the fact; he or she has
merely discovered its existence. To borrow
from Burrow-Giles, one who discovers a fact is not
its "maker" or "originator." 111 U.S. at 111 U. S.
58. "The discoverer merely finds and records."
Nimmer 2.03[E]. Census-takers, for example, do
not "create" the population figures that emerge from
their efforts; in a sense, they copy these figures
from the world around them. Denicola, Copyright
in Collections of Facts: A Theory for the Protection
of Nonfiction Literary Works, 81 Colum.L.Rev.
516, 525 (1981) (hereinafter Denicola). Census data
therefore do not trigger copyright, because these
data are not "original" in the constitutional sense.
Nimmer
Page 499 U. S. 348
2.03[E]. The same is true of all facts -- scientific,
historical, biographical, and news of the day.

"[T]hey may not be copyrighted, and are part of the

public domain available to every person."
Miller, supra, at 1369.
Factual compilations, on the other hand, may
possess the requisite originality. The compilation
author typically chooses which facts to include, in
what order to place them, and how to arrange the
collected data so that they may be used effectively
by readers. These choices as to selection and
arrangement, so long as they are made
independently by the compiler and entail a minimal
degree of creativity, are sufficiently original that
Congress may protect such compilations through
the copyright laws. Nimmer 2.11[D], 3.03;
Denicola 523, n. 38. Thus, even a directory that
contains absolutely no protectible written
expression, only facts, meets the constitutional
minimum for copyright protection if it features an
original selection or arrangement. See Harper &
Row, 471 U.S. at 471 U. S. 547. Accord, Nimmer
3.03.
This protection is subject to an important limitation.
The mere fact that a work is copyrighted does not
mean that every element of the work may be
protected. Originality remains the sine qua non of
copyright; accordingly, copyright protection may
extend only to those components of a work that are
original to the author. Patterson & Joyce 800-802;
Ginsburg, Creation and Commercial Value:
Copyright Protection of Works of Information, 90
Colum.L.Rev. 1865, 1868, and n. 12 (1990)
(hereinafter Ginsburg). Thus, if the compilation
author clothes facts with an original collocation of
words, he or she may be able to claim a copyright
in this written expression. Others may copy the
underlying facts from the publication, but not the
precise words used to present them. In Harper &
Row, for example, we explained that President Ford
could not prevent others from copying bare
historical facts from his autobiography, see 471
U.S. at 471 U. S. 556-557, but that he could prevent
others from copying his "subjective descriptions
and portraits of public figures."
Page 499 U. S. 349
Id. at 471 U. S. 563. Where the compilation author
adds no written expression, but rather lets the facts
speak for themselves, the expressive element is
more elusive. The only conceivable expression is
the manner in which the compiler has selected and
arranged the facts. Thus, if the selection and
arrangement are original, these elements of the
work
are
eligible
for
copyright
protection. See Patry, Copyright in Compilations of

Facts (or Why the "White Pages" Are Not

Copyrightable), 12 Com. & Law 37, 64 (Dec.1990)
(hereinafter Patry). No matter how original the
format, however, the facts themselves do not
become original through association. See Patterson
& Joyce 776.
This inevitably means that the copyright in a factual
compilation is thin. Notwithstanding a valid
copyright, a subsequent compiler remains free to
use the facts contained in another's publication to
aid in preparing a competing work, so long as the
competing work does not feature the same selection
and arrangement. As one commentator explains it:
"[N]o matter how much original authorship the
work displays, the facts and ideas it exposes are
free for the taking. . . . [T]he very same facts and
ideas may be divorced from the context imposed by
the author, and restated or reshuffled by second
comers, even if the author was the first to discover
the facts or to propose the ideas."
Ginsburg 1868.
It may seem unfair that much of the fruit of the
compiler's labor may be used by others without
compensation. As Justice Brennan has correctly
observed, however, this is not "some unforeseen
byproduct of a statutory scheme." Harper &
Row,471 U.S. at 471 U. S. 589 (dissenting opinion).
It is, rather, "the essence of copyright," ibid. and a
constitutional requirement. The primary objective
of copyright is not to reward the labor of authors,
but "[t]o promote the Progress of Science and
useful Arts." Art. I, 8, cl. 8. Accord, Twentieth
Century Music Corp. v. Aiken, 422 U. S. 151, 422
U. S. 156 (1975). To this end, copyright assures
authors the right to their original
Page 499 U. S. 350
expression, but encourages others to build freely
upon the ideas and information conveyed by a
work. Harper & Row, supra, 471 U.S. at 471 U. S.
556-557. This principle, known as the
idea/expression or fact/expression dichotomy,
applies to all works of authorship. As applied to a
factual compilation, assuming the absence of
original written expression, only the compiler's
selection and arrangement may be protected; the
raw facts may be copied at will. This result is
neither unfair nor unfortunate. It is the means by
which copyright advances the progress of science
and art.
This Court has long recognized that the
fact/expression dichotomy limits severely the scope

of protection in fact-based works. More than a

century ago, the Court observed:
"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."
Baker v. Selden, 101 U. S. 99, 101 U. S.
103 (1880). We reiterated this point in Harper &
Row:
"[N]o author may copyright facts or ideas. The
copyright is limited to those aspects of the work -termed 'expression' -- that display the stamp of the
author's originality."
"[C]opyright does not prevent subsequent users
from copying from a prior author's work those
constituent elements that are not original -- for
example . . . facts, or materials in the public domain
-- as long as such use does not unfairly appropriate.
the author's original contributions."
471 U.S. at 471 U. S. 547-548 (citation omitted).
This, then, resolves the doctrinal tension: Copyright
treats facts and factual compilations in a wholly
consistent manner. Facts, whether alone or as part
of a compilation, are not original, and therefore
may not be copyrighted. A factual compilation is
eligible for copyright if it features an original
selection or arrangement of facts, but the copyright
is limited to
Page 499 U. S. 351
the particular selection or arrangement. In no event
may copyright extend to the facts themselves.
B
As we have explained, originality is a
constitutionally mandated prerequisite for copyright
protection. The Court's decisions announcing this
rule predate the Copyright Act of 1909, but
ambiguous language in the 1909 Act caused some
lower courts temporarily to lose sight of this
requirement.
The 1909 Act embodied the originality requirement,
but not as clearly as it might have. See Nimmer
2.01. The subject matter of copyright was set out in
3 and 4 of the Act. Section 4 stated that
copyright was available to "all the writings of an
author." 35 Stat. 1076. By using the words
"writings" and "author" -- the same words used in
Article I, 8 of the Constitution and defined by the

Court in The Trade-Mark Cases and BurrowGiles -- the statute necessarily incorporated the
originality requirement articulated in the Court's
decisions. It did so implicitly, however, thereby
leaving room for error.
Section 3 was similarly ambiguous. It stated that the
copyright in a work protected only "the
copyrightable component parts of the work." It thus
stated an important copyright principle, but failed to
identify the specific characteristic -- originality -that determined which component parts of a work
were copyrightable and which were not.
Most courts construed the 1909 Act correctly,
notwithstanding the less-than-perfect statutory
language. They understood from this Court's
decisions that there could be no copyright without
originality. See Patterson & Joyce 760-761. As
explained in the Nimmer treatise:
"The 1909 Act neither defined originality nor even
expressly required that a work be 'original' in order
to command protection. However, the courts
uniformly inferred the requirement from the fact
that copyright protection may only be claimed by
'authors.' . . . It was reasoned that, since an author is
'the . . .
Page 499 U. S. 352
creator, originator,' it follows that a work is not the
product of an author unless the work is original."
Nimmer 2.01 (footnotes omitted) (citing cases).
But some courts misunderstood the statute. See,
e.g., Leon v. Pacific Telephone & Telegraph Co., 91
F.2d 484 (CA9 1937); Jeweler's Circular Publishing
Co. v. Keystone Publishing Co., 281 F. 83 (CA2
1922). These courts ignored 3 and 4, focusing
their attention instead on 5 of the Act. Section 5,
however, was purely technical in nature: it provided
that a person seeking to register a work should
indicate on the application the type of work, and it
listed 14 categories under which the work might
fall. One of these categories was "[b]ooks,
including composite and cyclopoedic works,
directories, gazetteers, and other compilations."
5(a). Section 5 did not purport to say that all
compilations were automatically copyrightable.
Indeed, it expressly disclaimed any such function,
pointing out that "the subject matter of copyright
[i]s defined in section four." Nevertheless, the fact
that factual compilations were mentioned
specifically in 5 led some courts to infer
erroneously that directories and the like were
copyrightable per se, "without any further or precise

showing of original -- personal -- authorship."

Ginsburg 1895.
Making matters worse, these courts developed a
new theory to justify the protection of factual
compilations. Known alternatively as "sweat of the
brow" or "industrious collection," the underlying
notion was that copyright was a reward for the hard
work that went into compiling facts. The classic
formulation of the doctrine appeared in Jeweler's
Circular Publishing Co., 281 F. at 88:
"The right to copyright a book upon which one has
expended labor in its preparation does not depend
upon whether the materials which he has collected
consist or not of matters which are publici juris, or
whether such materials show literary skill or
originality, either in thought or in language, or
anything more than industrious
Page 499 U. S. 353
collection. The man who goes through the streets of
a town and puts down the names of each of the
inhabitants, with their occupations and their street
number acquires material of which he is the
author."
(Emphasis added).
The "sweat of the brow" doctrine had numerous
flaws, the most glaring being that it extended
copyright protection in a compilation beyond
selection and arrangement -- the compiler's original
contributions -- to the facts themselves. Under the
doctrine, the only defense to infringement was
independent creation. A subsequent compiler was
"not entitled to take one word of information
previously published," but rather had to
"independently wor[k] out the matter for himself, so
as to arrive at the same result from the same
common sources of information." Id. at 88-89
(internal quotations omitted). "Sweat of the brow"
courts thereby eschewed the most fundamental
axiom of copyright law -- that no one may
copyright facts or ideas. See Miller v. Universal
City Studios, Inc., 650 F.2d at 1372 (criticizing
"sweat of the brow" courts because "ensur[ing] that
later writers obtain the facts independently . . . is
precisely the scope of protection given . . .
copyrighted matter, and the law is clear that facts
are not entitled to such protection").
Decisions of this Court applying the 1909 Act make
clear that the statute did not permit the "sweat of the
brow" approach. The best example is International
News Service v. Associated Press, 248 U. S.
215 (1918). In that decision, the Court stated

unambiguously that the 1909 Act conferred

copyright protection only on those elements of a
work that were original to the author. International
News Service had conceded taking news reported
by Associated Press and publishing it in its own
newspapers. Recognizing that 5 of the Act
specifically mentioned "[p]eriodicals, including
newspapers," 5(b), the Court acknowledged that
news articles were copyrightable. Id. at 248 U. S.
234. It flatly rejected, however, the notion that the
copyright in an article extended to
Page 499 U. S. 354
the factual information it contained:
"[T]he news element -- the information respecting
current events contained in the literary production -is not the creation of the writer, but is a report of
matters that ordinarily are publici juris; it is the
history of the day."
Ibid. *
Without a doubt, the "sweat of the brow" doctrine
flouted basic copyright principles. Throughout
history, copyright law has "recognize[d] a greater
need to disseminate factual works than works of
fiction or fantasy." Harper & Row, 471 U.S. at471
U. S. 563. Accord, Gorman, Fact or Fancy: The
Implications for Copyright, 29 J.Copyright Soc.
560, 563 (1982). But "sweat of the brow" courts
took a contrary view; they handed out proprietary
interests in facts and declared that authors are
absolutely precluded from saving time and effort by
relying upon the facts contained in prior works. In
truth, "[i]t is just such wasted effort that the
proscription against the copyright of ideas and facts
. . . [is] designed to prevent."Rosemont Enterprises,
Inc. v. Random House, Inc., 366 F.2d 303, 310
(CA2 1966), cert. denied 385 U.S. 1009 (1967).
"Protection for the fruits of such research . . . may,
in certain circumstances, be available under a
theory of unfair competition. But to accord
copyright protection on this basis alone distorts
basic copyright principles in that it creates a
monopoly in public domain materials without the
necessary justification of protecting and
encouraging the creation of 'writings' by 'authors.'"
Nimmer 3.04, p. 3-23 (footnote omitted).
C
"Sweat of the brow" decisions did not escape the
attention of the Copyright Office. When Congress
decided to overhaul the copyright statute and asked
the Copyright Office to study existing problems, see

Mills Music, Inc. v. Snyder, 469 U. S. 153, 469 U.

S. 159 (1985), the Copyright Office promptly
recommended
Page 499 U. S. 355
that Congress clear up the confusion in the lower
courts as to the basic standards of copyrightability.
The Register of Copyrights explained in his first
report to Congress that "originality" was a "basic
requisit[e]" of copyright under the 1909 Act, but
that "the absence of any reference to [originality] in
the statute seems to have led to misconceptions as
to what is copyrightable matter." Report of the
Register of Copyrights on the General Revision of
the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9
(H. Judiciary Comm. Print 1961). The Register
suggested making the originality requirement
explicit. Ibid.
Congress took the Register's advice. In enacting the
Copyright Act of 1976, Congress dropped the
reference to "all the writings of an author" and
replaced it with the phrase "original works of
authorship." 17 U.S.C. 102(a). In making explicit
the originality requirement, Congress announced
that it was merely clarifying existing law:
"The two fundamental criteria of copyright
protection [are] originality and fixation in tangible
form. . . . The phrase 'original works of authorship,'
which is purposely left undefined, is intended to
incorporate without change the standard of
originality established by the courts under the
present [1909] copyright statute."
H.R.Rep. No. 94-1476, p. 51 (1976) (emphasis
added) (hereinafter H.R.Rep.); S.Rep. No. 94-473,
p. 50 (1975), U.S.Code Cong. & Admin.News
1976, pp. 5659, 5664 (emphasis added) (hereinafter
S.Rep.). This sentiment was echoed by the
Copyright Office: "Our intention here is to maintain
the established standards of originality. . . ."
Supplementary Report of the Register of
Copyrights on the General Revision of U.S.
Copyright Law, 89th Cong., 1st Sess., Part 6, p. 3
(H. Judiciary Comm. Print 1965) (emphasis added).
To ensure that the mistakes of the "sweat of the
brow" courts would not be repeated, Congress took
additional measures. For example, 3 of the 1909
Act had stated that copyright protected only the
"copyrightable component parts" of a work, but had
not identified originality as the basis for
distinguishing
Page 499 U. S. 356

those component parts that were copyrightable from

those that were not. The 1976 Act deleted this
section and replaced it with 102(b), which
identifies specifically those elements of a work for
which copyright is not available:
"In no case does copyright protection for an original
work of authorship extend to any idea, procedure,
process, system, method of operation, concept,
principle, or discovery, regardless of the form in
which it is described, explained, illustrated, or
embodied in such work."
102(b) is universally understood to prohibit any
copyright in facts. Harper Row, supra, at 471 U. S.
547, 471 U. S. 556.Accord, Nimmer 2.03[E]
(equating facts with "discoveries"). As with
102(a), Congress emphasized that 102(b) did not
change the law, but merely clarified it:
"Section 102(b) in no way enlarges or contracts the
scope of copyright protection under the present law.
Its purpose is to restate . . . that the basic dichotomy
between expression and idea remains unchanged."
H.R.Rep. at 57; S.Rep. at 54, U.S.Code Cong. &
Admin.News 1976, p. 5670.
Congress took another step to minimize confusion
by deleting the specific mention of "directories . . .
and other compilations" in 5 of the 1909 Act. As
mentioned, this section had led some courts to
conclude that directories were copyrightable per
se, and that every element of a directory was
protected. In its place, Congress enacted two new
provisions. First, to make clear that compilations
were not copyrightable per se, Congress provided a
definition of the term "compilation." Second, to
make clear that the copyright in a compilation did
not extend to the facts themselves, Congress
enacted 17 U.S.C. 103.
The definition of "compilation" is found in 101 of
the 1976 Act. It defines a "compilation" in the
copyright sense as
"a work formed by the collection and assembly of
preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the
resulting work, as a whole, constitutes an original
work of authorship."
(Emphasis added.)
Page 499 U. S. 357
The purpose of the statutory definition is to
emphasize that collections of facts are not
copyrightable per se. It conveys this message
through its tripartite structure, as emphasized above

by the italics. The statute identifies three distinct

elements, and requires each to be met for a work to
qualify as a copyrightable compilation: (1) the
collection and assembly of preexisting material,
facts, or data; (2) the selection, coordination, or
arrangement of those materials; and (3) the
creation, by virtue of the particular selection,
coordination, or arrangement, of an "original" work
of authorship. "[T]his tripartite conjunctive
structure is self-evident, and should be assumed
to accurately express the legislative purpose.'" Patry
51, quoting Mills Music, 469 U.S. at 469 U. S. 164.
At first glance, the first requirement does not seem
to tell us much. It merely describes what one
normally thinks of as a compilation -- a collection
of preexisting material, facts, or data. What makes
it significant is that it is not the solerequirement. It
is not enough for copyright purposes that an author
collects and assembles facts. To satisfy the statutory
definition, the work must get over two additional
hurdles. In this way, the plain language indicates
that not every collection of facts receives copyright
protection. Otherwise, there would be a period after
"data."
The third requirement is also illuminating. It
emphasizes that a compilation, like any other work,
is copyrightable only if it satisfies the originality
requirement ("an original work of authorship").
Although 102 states plainly that the originality
requirement applies to all works, the point was
emphasized with regard to compilations to ensure
that courts would not repeat the mistake of the
"sweat of the brow" courts by concluding that factbased works are treated differently and measured by
some other standard. As Congress explained it, the
goal was to
"make plain that the criteria of copyrightable
subject matter stated in section 102 apply with full
force to works . . . containing preexisting material."
H.R.Rep. at 57; S.Rep. at 55.
Page 499 U. S. 358
The key to the statutory definition is the second
requirement. It instructs courts that, in determining
whether a fact-based work is an original work of
authorship, they should focus on the manner in
which the collected facts have been selected,
coordinated, and arranged. This is a straightforward
application of the originality requirement. Facts are
never original, so the compilation author can claim
originality, if at all, only in the way the facts are
presented. To that end, the statute dictates that the
principal focus should be on whether the selection,

coordination, and arrangement are sufficiently

original to merit protection.
Not every selection, coordination, or arrangement
will pass muster. This is plain from the statute. It
states that, to merit protection, the facts must be
selected, coordinated, or arranged "in such a way"
as to render the work as a whole original. This
implies that some "ways" will trigger copyright, but
that others will not. See Patry 57, and n. 76.
Otherwise, the phrase "in such a way" is
meaningless, and Congress should have defined
"compilation" simply as "a work formed by the
collection and assembly of preexisting materials or
data that are selected, coordinated, or arranged."
That Congress did not do so is dispositive. In
accordance with "the established principle that a
court should give effect, if possible, to every clause
and word of a statute," Moskal v. United States, 498
U. S. 103, 498 U. S. 109-110 (1990) (internal
quotations omitted), we conclude that the statute
envisions that there will be some fact-based works
in which the selection, coordination, and
arrangement are not sufficiently original to trigger
copyright protection.
As discussed earlier, however, the originality
requirement is not particularly stringent. A compiler
may settle upon a selection or arrangement that
others have used; novelty is not required.
Originality requires only that the author make the
selection
or
arrangement
independently
(i.e., without copying that selection or arrangement
from another work), and that it display some
minimal level of creativity. Presumably,
Page 499 U. S. 359
the vast majority of compilations will pass this test,
but not all will. There remains a narrow category of
works in which the creative spark is utterly lacking
or so trivial as to be virtually nonexistent. See
generally Bleistein v. Donaldson Lithographing
Co., 188 U. S. 239, 188 U. S. 251 (1903) (referring
to "the narrowest and most obvious limits"). Such
works are incapable of sustaining a valid copyright.
Nimmer 2.01[B].
Even if a work qualifies as a copyrightable
compilation, it receives only limited protection.
This is the point of 103 of the Act. Section 103
explains that "[t]he subject matter of copyright . . .
includes compilations," 103(a), but that copyright
protects only the author's original contributions -not the facts or information conveyed:
"The copyright in a compilation . . . extends only to
the material contributed by the author of such work,

as distinguished from the preexisting material

employed in the work, and does not imply any
exclusive right in the preexisting material."
103(b).
As 103 makes clear, copyright is not a tool by
which a compilation author may keep others from
using the facts or data he or she has collected.
"The most important point here is one that is
commonly misunderstood today: copyright . . . has
no effect one way or the other on the copyright or
public domain status of the preexisting material."
H.R.Rep. at 57; S.Rep. at 55, U.S.Code Cong. &
Admin.News 1976, p. 5670. The 1909 Act did not
require, as "sweat of the brow" courts mistakenly
assumed, that each subsequent compiler must start
from scratch, and is precluded from relying on
research undertaken by another. See, e.g., Jeweler's
Circular publishing Co., 281 F., at 88-89. Rather,
the facts contained in existing works may be freely
copied, because copyright protects only the
elements that owe their origin to the compiler -- the
selection, coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright
Act leave no doubt that originality, not "sweat of
the brow," is the
Page 499 U. S. 360
touchstone of copyright protection in directories
and other fact-based works. Nor is there any doubt
that the same was true under the 1909 Act. The
1976 revisions were a direct response to the
Copyright Office's concern that many lower courts
had misconstrued this basic principle, and Congress
emphasized repeatedly that the purpose of the
revisions was to clarify, not change, existing law.
The revisions explain with painstaking clarity that
copyright requires originality, 102(a); that facts
are never original, 102(b); that the copyright in a
compilation does not extend to the facts it contains,
103(b); and that a compilation is copyrightable
only to the extent that it features an original
selection, coordination, or arrangement, 101.
The 1976 revisions have proven largely successful
in steering courts in the right direction. A good
example is Miller v. Universal City Studios,
Inc., 650 F.2d at 1369-1370:
"A copyright in a directory . . . is properly viewed
as resting on the originality of the selection and
arrangement of the factual material, rather than on
the industriousness of the efforts to develop the
information. Copyright protection does not extend

to the facts themselves, and the mere use of

information contained in a directory without a
substantial copying of the format does not
constitute infringement."
(Citation omitted.) Additionally, the Second Circuit,
which almost 70 years ago issued the classic
formulation of the "sweat of the brow" doctrine
in Jeweler's Circular Publishing Co., has now fully
repudiated the reasoning of that decision. See, e.g.,
Financial Information, Inc. v. Moody's Investors
Service, Inc., 808 F.2d 204, 207 (CA2 1986), cert.
denied, 484 U.S. 820 (1987); Financial Information,
Inc. v. Moody's Investors Service, Inc., 751 F.2d
501,
510
(CA2
1984)
(Newman,
J.,
concurring); Hoehling v. Universal City Studios,
Inc., 618 F.2d 972, 979 (CA2 1980). Even those
scholars who believe that "industrious collection"
should be rewarded seem to recognize that this is
beyond the scope of existing copyright
law. See Denicola 516 ("the very vocabulary of
copyright is ill-suited
Page 499 U. S. 361
to analyzing property rights in works of
nonfiction"); id. at 520-521, 525; Ginsburg 1867,
1870.

III
There is no doubt that Feist took from the white
pages of Rural's directory a substantial amount of
factual information. At a minimum, Feist copied the
names, towns, and telephone numbers of 1,309 of
Rural's subscribers. Not all copying, however, is
copyright infringement. To establish infringement,
two elements must be proven: (1) ownership of a
valid copyright, and (2) copying of constituent
elements of the work that are original. See Harper
& Row, 471 U.S. at 471 U. S. 548. The first
element is not at issue here; Feist appears to
concede that Rural's directory, considered as a
whole, is subject to a valid copyright because it
contains some foreword text, as well as original
material
in
its
yellow
pages
advertisements. See Brief for Petitioner 18; Pet. for
Cert. 9.
The question is whether Rural has proved the
second element. In other words, did Feist, by taking
1,309 names, towns, and telephone numbers from
Rural's white pages, copy anything that was
"original" to Rural? Certainly, the raw data does not
satisfy the originality requirement. Rural may have
been the first to discover and report the names,
towns, and telephone numbers of its subscribers,
but this data does not "ow[e] its origin'" to

Rural. Burrow-Giles, 111 U.S. at 111 U. S. 58.

Rather,
these
bits
of
information
are
uncopyrightable facts; they existed before Rural
reported them, and would have continued to exist if
Rural had never published a telephone directory.
The originality requirement
"rule[s] out protecting . . . names, addresses, and
telephone numbers of which the plaintiff, by no
stretch of the imagination, could be called the
author."
Patterson & Joyce 776.
Rural essentially concedes the point by referring to
the names, towns, and telephone numbers as
"preexisting material." Brief for Respondent 17.
Section 103(b) states explicitly
Page 499 U. S. 362
that the copyright in a compilation does not extend
to "the preexisting material employed in the work."
The question that remains is whether Rural
selected,
coordinated,
or
arranged
these
uncopyrightable facts in an original way. As
mentioned, originality is not a stringent standard; it
does not require that facts be presented in an
innovative or surprising way. It is equally true,
however, that the selection and arrangement of facts
cannot be so mechanical or routine as to require no
creativity whatsoever. The standard of originality is
low, but it does exist. See Patterson & Joyce 760, n.
144 ("While this requirement is sometimes
characterized as modest, or a low threshold, it is not
without effect") (internal quotations omitted;
citations omitted). As this Court has explained, the
Constitution mandates some minimal degree of
creativity, see The Trade-Mark Cases, 100 U.S.
at 100 U. S. 94, and an author who claims
infringement must prove "the existence of . . .
intellectual
production,
of
thought,
and
conception." Burrow-Giles, supra, 111 U.S. at 111
U. S. 59-60.
The selection, coordination, and arrangement of
Rural's white pages do not satisfy the minimum
constitutional standards for copyright protection. As
mentioned at the outset, Rural's white pages are
entirely typical. Persons desiring telephone service
in Rural's service area fill out an application, and
Rural issues them a telephone number. In preparing
its white pages, Rural simply takes the data
provided by its subscribers and lists it
alphabetically by surname. The end product is a
garden-variety white pages directory, devoid of
even the slightest trace of creativity.

Rural's selection of listings could not be more

obvious: it publishes the most basic information -name, town, and telephone number -- about each
person who applies to it for telephone service. This
is "selection" of a sort, but it lacks the modicum of
creativity necessary to transform mere selection
into copyrightable expression. Rural expended
sufficient effort
Page 499 U. S. 363
to make the white pages directory useful, but
insufficient creativity to make it original.
We note in passing that the selection featured in
Rural's white pages may also fail the originality
requirement for another reason. Feist points out that
Rural did not truly "select" to publish the names
and telephone numbers of its subscribers; rather, it
was required to do so by the Kansas Corporation
Commission
as
part
of
its
monopoly
franchise. See 737 F.Supp. at 612. Accordingly, one
could plausibly conclude that this selection was
dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination
and arrangement of facts. The white pages do
nothing more than list Rural's subscribers in
alphabetical order. This arrangement may,
technically speaking, owe its origin to Rural; no one
disputes that Rural undertook the task of
alphabetizing the names itself. But there is nothing
remotely creative about arranging names
alphabetically in a white pages directory. It is an
age-old practice, firmly rooted in tradition and so
commonplace that it has come to be expected as a
matter of course. See Brief for Information Industry
Association et al.as Amici Curiae 10 (alphabetical
arrangement "is universally observed in directories
published
by
local
exchange
telephone
companies"). It is not only unoriginal, it is
practically inevitable. This time-honored tradition
does not possess the minimal creative spark
required by the Copyright Act and the Constitution.
We conclude that the names, towns, and telephone
numbers copied by Feist were not original to Rural,
and therefore were not protected by the copyright in
Rural's combined white and yellow pages directory.
As a constitutional matter, copyright protects only
those constituent elements of a work that possess
more than a de minimis quantum of creativity.
Rural's white pages, limited to basic subscriber
information and arranged alphabetically, fall short
of the mark. As a statutory matter, 17 U.S.C. 101
does not afford protection
Page 499 U. S. 364

from copying to a collection of facts that are

selected, coordinated, and arranged in a way that
utterly lacks originality. Given that some works
must fail, we cannot imagine a more likely
candidate. Indeed, were we to hold that Rural's
white pages pass muster, it is hard to believe that
any collection of facts could fail.
Because Rural's white pages lack the requisite
originality, Feist's use of the listings cannot
constitute infringement. This decision should not be
construed as demeaning Rural's efforts in compiling
its directory, but rather as making clear that
copyright rewards originality, not effort. As this
Court noted more than a century ago,
"'great praise may be due to the plaintiffs for their
industry and enterprise in publishing this paper, yet
the law does not contemplate their being rewarded
in this way.'"
Baker v. Selden, 101 U.S. at 101 U. S. 105.
The judgment of the Court of Appeals is
Reversed.
JUSTICE BLACKMUN concurs in the judgment.
* The Court ultimately rendered judgment for
Associated Press on noncopyright grounds that are
not relevant here. See248 U.S. at 248 U. S.
235, 248 U. S. 241-242.
SECOND DIVISION

[G.R. No. 108946. January 28, 1999]

FRANCISCO G. JOAQUIN, JR., and BJ

PRODUCTIONS,
INC., petitioners,
vs. FRANKLIN DRILON GABRIEL
ZOSA, WILLIAM ESPOSO, FELIPE
MEDINA,
JR.,
and
CASEY
FRANCISCO, respondents.
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-9227854, entitled Gabriel Zosa, et al. v. City
Prosecutor of Quezon City and Francisco Joaquin,
Jr., and its resolution, dated December 3, 1992,

denying
petitioner
reconsideration.

Joaquins

motion

for

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 nonpresentation 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 the issuance of the
search warrants is not meritorious. The court cannot
presume that duplicate or copied tapes were
necessarily reproduced from master tapes that it
owns.
The application for search warrants was directed
against video tape outlets which allegedly were
engaged in the unauthorized sale and renting out of
copyrighted films belonging to the petitioner
pursuant to P.D. 49.
The essence of a copyright infringement is the
similarity or at least substantial similarity of the
purported pirated works to the copyrighted
work. Hence, the applicant must present to the court
the copyrighted films to compare them with the
purchased evidence of the video tapes allegedly
pirated to determine whether the latter is an
unauthorized reproduction of the former. This
linkage of the copyrighted films to the pirated films
must be established to satisfy the requirements of
probable cause. Mere allegations as to the existence
of the copyrighted films cannot serve as basis for
the issuance of a search warrant.
This ruling was qualified in the later case
of Columbia Pictures, Inc. v. Court of Appeals [7] in
which it was held:
In fine, the supposed pronunciamento in said case
regarding the necessity for the presentation of the
master tapes of the copyrighted films for the
validity of search warrants should at most be

understood to merely serve as a guidepost in

determining the existence of probable cause in
copyright infringement cases where there is doubt
as to the true nexus between the master tape and
the pirated copies. An objective and careful reading
of the decision in said case could lead to no other
conclusion than that said directive was hardly
intended to be a sweeping and inflexible
requirement in all or similar copyright infringement
cases. . . .[8]
In the case at bar, during the preliminary
investigation, petitioners and private respondents
presented written descriptions of the formats of
their respective televisions shows, on the basis of
which the investigating prosecutor ruled:
As may [be] gleaned from the evidence on record,
the substance of the television productions
complainants RHODA AND ME and Zosas ITS A
DATE is that two matches are made between a male
and a female, both single, and the two couples are
treated to a night or two of dining and/or dancing at
the expense of the show. The major concepts of
both shows is the same. Any difference appear mere
variations of the major concepts.
That there is an infringement on the copyright of
the show RHODA AND ME both in content and in
the execution of the video presentation are
established because respondents ITS A DATE is
practically an exact copy of complainants RHODA
AND ME because of substantial similarities as
follows, to wit:
RHODA AND ME ITS A DATE
Set I Set I
a. Unmarried participant a. same
of one gender (searcher) appears on one side of
a divider, while three (3) unmarried
participants of the other gender are on the
other side of the divider. This arrangement
is done to ensure that the searcher does not
see the searchees.
b. Searcher asks a question b. same
to

be
a
n
s
w
e

r
e
d
b
y
e
a
c
h
o
f
t
h
e
s
e
a
r
c
h
e
e
s
.
T
h
e
p
u
r
p
o
s
e
i
s
t
o
d
e
t
e
r
m
i

n
e
w
h
o
a
m
o
n
g
t
h
e

t
h
e
s
e
a
r
c
h
e
r
.
c. Searcher speculates on the c. same
match to the searchee.

s
e
a
r
c
h
e
e
s
i
s
t
h
e
m
o
s
t
c
o
m
p
a
t
i
b
l
e
w
i
t
h

d. Selection is made by the d. Selection is

use of compute (sic) methods, based on the
or by the way questions are answer of the
answered, or similar methods. Searchees.
Set 2 Set 2
Same as above with the genders same
of
t
h
e
s
e
a
r
c
h
e
r
a
n
d
s
e
a
r
c
h
e
e
s

(G) Works of drawing, painting, architecture,

sculpture, engraving, lithography, and other works
of art; models or designs for works of art;

i
n
t
e
r
c
h
a
n
g
e
d
.

(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;

[
9

(L) Photographic works and works produced by a

process analogous to photography; lantern slides;

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.

(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;

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:

(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.

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;

(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.

(B) Periodicals,
newspapers;

and

(R) Other literary, scholarly, scientific and artistic

works.

(C) Lectures, sermons, addresses, dissertations

prepared for oral delivery;

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.

including

pamphlets

(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;

Copyright, in the strict sense of the term, is purely a

statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing

right regulated by the statute. Being a statutory

grant, the rights are only such as the statute confers,
and may be obtained and enjoyed only with respect
to the subjects and by the persons, and on terms and
conditions specified in the statute.[12]
Since . . . copyright in published works is purely a
statutory creation, a copyright may be obtained only
for a work falling within the statutory enumeration
or description.[13]
Regardless of the historical viewpoint, it is
authoritatively settled in the United States that there
is
no
copyright
except that which is both created and secured by act
of Congress . . . .[14]
P.D. No. 49, 2, in enumerating what are subject
to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea,
procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the
form in which it is described, explained, illustrated,
or embodied in such work.[15] Thus, the new
INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES provides:
Sec.
175. Unprotected
Subject
Matter.
Notwithstanding the provisions of Sections 172 and
173, no protection shall extend, under this law, to
any idea, procedure, system, method or operation,
concept, principle, discovery or mere data as such,
even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other
miscellaneous facts having the character of mere
items of press information; or any official text of a
legislative, administrative or legal nature, as well as
any official translation thereof.
What then is the subject matter of petitioners
copyright? This Court is of the opinion that
petitioner 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,
DISMISSED.

the

petition

is

hereby

SO ORDERED.
Puno, Quisumbing, and Buena, JJ., concur.
Bellosillo, J., (Chairman), no part due to
relation to one of the parties.

Republic of the Philippines

SUPREME COURT
Manila
EN BANC
G.R. No. L-19439

October 31, 1964

MAURO
MALANG
SANTOS, plaintiffappellant,
vs.
MCCULLOUGH
PRINTING
COMPANY, defendant-appellee.
Taada Teehankee & Carreon for plaintiffappellant.
Esposo & Usison for defendant-appellee.
PAREDES, J.:
This is an action for damages based on the
provisions of Articles 721 and 722 of the Civil
Code of the Philippines, allegedly on the
unauthorized use, adoption and appropriation by the
defendant company of plaintiff's intellectual
creation or artistic design for a Christmas Card. The
design depicts "a Philippine rural Christmas time
scene consisting of a woman and a child in a nipa

hut adorned with a star-shaped lantern and a man

astride a carabao, beside a tree, underneath which
appears the plaintiff's pen name, Malang."
The complaint alleges that plaintiff Mauro Malang
Santos designed for former Ambassador Felino
Neri, for his personal Christmas Card greetings for
the year 1959, the artistic motif in question. The
following year the defendant McCullough Printing
Company, without the knowledge and authority of
plaintiff, displayed the very design in its album of
Christmas cards and offered it for sale, for a price.
For such unauthorized act of defendant, plaintiff
suffered moral damages to the tune of P16,000.00,
because it has placed plaintiff's professional
integrity and ethics under serious question and
caused him grave embarrassment before
Ambassador Neri. He further prayed for the
additional sum of P3,000.00 by way of attorney's
fee.

4. That former Ambassador Neri had 800 such cards

... printed by the defendant company in 1959, ...
which he distributed to his friends in December,
1959;
5. That defendant company utilized plaintiff's
design in the year 1960 in its album of Christmas
card samples displayed to its customers ... .
6. That the Sampaguita Pictures, Inc., placed an
order with defendant company for 700 of said cards
... while Raul Urra & Co. ordered 200 ..., which
cards were sent out by them to their respective
correspondent, clients and friends during the
Christmas season of 1960;
7. That defendant company's use of plaintiff's
design was without knowledge, authority or consent
of plaintiff;
8. That said design has not been copyrighted;

Defendant in answer to the complaint, after some

denials and admissions, moved for a dismissal of
the action claiming that

9. That plaintiff is an artist of established name,

good-will and reputation. ... .

(1) The design claimed does not contain a clear

notice that it belonged to him and that he prohibited
its use by others;

Upon the basis of the facts stipulated, the lower

court rendered judgment on December 1, 1961, the
pertinent portions of which are recited below:

(2) The design in question has been published but

does not contain a notice of copyright, as in fact it
had never been copyrighted by the plaintiff, for
which reason this action is barred by the Copyright
Law;

As a general proposition, there can be no dispute

that the artist acquires ownership of the product of
his art. At the time of its creation, he has the
absolute dominion over it. To help the author
protect his rights the copyright law was enacted.

(3) The complaint does not state a cause of action.

In intellectual creations, a distinction must be made

between two classes of property rights; the fact of
authorship and the right to publish and/or distribute
copies of the creation. With regard to the first, i.e.
the fact of authorship, the artist cannot be divested
of the same. In other words, he may sell the right to
print hundred of his work yet the purchaser of said
right can never be the author of the creation.

The documentary evidence submitted were the

Christmas cards, as originally designed by plaintiff,
the design as printed for Ambassador Neri, and the
subsequent reprints ordered by other parties. The
case was submitted an a "Stipulation of Fact" the
pertinent portions of which are hereunder
reproduced:
1. That the plaintiff was the artist who created the
design shown in Exhibit A, ...
2. That the design carries the pen name of plaintiff,
MALANG, on its face ... and indicated in Exhibit
A, ...
3. That said design was created by plaintiff in the
latter part of 1959 for the personal use of former
Ambassador Felino Neri; ...

It is the second right, i.e., the right to publish,

republish, multiply and/or distribute copies of the
intellectual creation which the state, through the
enactment of the copyright law, seeks to protect.
The author or his assigns or heirs may have the
work copyrighted and once this is legally
accomplished any infringement of the copyright
will render the infringer liable to the owner of the
copyright.
xxx

xxx

xxx

The plaintiff in this case did not choose to protect

his intellectual creation by a copyright. The fact that
the design was used in the Christmas card of
Ambassador Neri who distributed eight hundred
copies thereof among his friends during the
Christmas season of 1959, shows that the, same was
published.
Unless satisfactorily explained a delay in applying
for a copyright, of more than thirty days from the
date of its publication, converts the property to one
of public domain.
Since the name of the author appears in each of the
alleged infringing copies of the intellectual creation,
the defendant may not be said to have pirated the
work nor guilty of plagiarism Consequently, the
complaint does not state a cause of action against
the defendant.
xxx

xxx

;xxx

WHEREFORE, the Court dismisses the complaint

without pronouncement as to costs.
In his appeal to this Court, plaintiff-appellant
pointed five (5) errors allegedly committed by the
trial court, all of which bring to the fore, the
following propositions: (1) whether plaintiff is
entitled to protection, notwithstanding the, fact that
he has not copyrighted his design; (2) whether the
publication is limited, so as to prohibit its use by
others, or it is general publication, and (3) whether
the provisions of the Civil Code or the Copyright
Law should apply in the case. We will undertake a
collective discussion of these propositions.
Under the established facts, We find that plaintiff is
not entitled to a protection, the provision of the
Civil Code, notwithstanding. Paragraph 33 of
Patent Office Administrative Order No. 3 (as
amended dated September 18, 1947) entitled "Rules
of Practice in the Philippines Patent Office relating
to the Registration of Copyright Claims"
promulgated pursuant to Republic Act 165,
provides, among others, that an intellectual creation
should be copyrighted thirty (30) days after its
publication, if made in Manila, or within sixty (60)
day's if made elsewhere, failure of which renders
such creation public property. In the case at bar,
even as of this moment, there is no copyright for the
design in question. We are not also prepared to
accept the contention of appellant that the
publication of the design was a limited one, or that
there was an understanding that only Ambassador

Neri should, have absolute right to use the same. In

the first place, if such were the condition then
Ambassador Neri would be the aggrieved party, and
not the appellant. In the second place, if there was
such a limited publication or prohibition, the same
was not shown on the face of the design. When the
purpose is a limited publication, but the effect is
general publication, irrevocable rights thereupon
become vested in the public, in consequence of
which enforcement of the restriction becomes
impossible (Nutt vs. National Institute, 31 F [2d]
236). It has been held that the effect of offering for
sale a dress, for example manufactured in
accordance with an original design which is not
protected by either a copyright or a patent, is to
divest the owner of his common law rights therein
by virtue of the publication of a 'copy' and
thereafter anyone is free to copy the design or the
dress (Fashion Originators Guild of America v.
Federal Trade Commission, 114 F [2d] 80). When
Ambassador Neri distributed 800 copies of the
design in controversy, the plaintiff lost control of
his design and the necessary implication was that
there had been a general publication, there having
been no showing of a clear indication that a limited
publication was intended. The author of a literary
composition has a light to the first publication
thereof. He has a right to determine whether it shall
be published at all, and if published, when, where,
by whom, and in what form. This exclusive right is
confined to the first publication. When once
published, it is dedicated to the public, and the
author loses the exclusive right to control
subsequent publication by others, unless the work is
placed under the protection of the copyright law.
(See II Tolentino's Comments on the Civil Code, p.
433, citing Wright v. Eisle 83 N.Y. Supp. 887.)
CONFORMABLY
WITH
ALL
THE
FOREGOING, We find that the errors assigned
have not been committed by the lower court. The
decision appealed from, therefore, should be, as it is
hereby affirmed. Costs taxed against plaintiffappellant.
Bengzon, C.J., Bautista Angelo, Concepcion, Reyes,
J.B.L., Barrera, Dizon, Makalintal, Bengzon, J. P.,
and Zaldivar JJ., concur.
Regala, J., took no part.

Republic of the Philippines

SUPREME COURT
Manila

G.R. No. L-36402 March 16, 1987

FILIPINO SOCIETY OF COMPOSERS,
AUTHORS AND PUBLISHERS, INC., plaintiffappellant,
vs.
BENJAMIN TAN, defendant-appellee.
Lichauco, Picazo & Agcaoili Law Office for
plaintiff-appellant.

permission from the appellant to play or sing the

same. Accordingly, appellant demanded from the
appellee payment of the necessary license fee for
the playing and singing of aforesaid compositions
but the demand was ignored.
Hence, on November 7, 1967, appellant filed a
complaint with the lower court for infringement of
copyright against defendant-appellee for allowing
the playing in defendant-appellee's restaurant of
said songs copyrighted in the name of the former.

Ramon A. Nieves for defendant-appellee.

PARAS, J.:
An appeal was made to the Court of Appeals
docketed
as
CA-G.R.
No.
46373R * entitled Filipino Society of Composers,
Authors, Publishers, Inc., Plaintiff-Appellant v.
Benjamin Tan, Defendant-Appellee, from the
decision of the Court of First Instance of Manila,
Branch VII in Civil Case No. 71222 ** "Filipino
Society of Composers, Authors and Publishers,
Inc., Plaintiff v. Benjamin Tan, Defendant," which
had dismissed plaintiffs' complaint without special
pronouncement as to costs.
The Court of Appeals, finding that the case involves
pure questions of law, certified the same to the
Supreme Court for final determination (Resolution,
CA-G.R. No. 46373-R, Rollo, p. 36; Resolution of
the Supreme Court of February 16, 1973 in L36402, Rollo, p. 38).

Defendant-appellee, in his answer, countered that

the complaint states no cause of action. While not
denying the playing of said copyrighted
compositions in his establishment, appellee
maintains that the mere singing and playing of
songs and popular tunes even if they are
copyrighted do not constitute an infringement
(Record on Appeal, p. 11; Resolution, CA-G.R.
NO. 46373-R, Rollo, pp. 32-36) under the
provisions of Section 3 of the Copyright Law (Act
3134 of the Philippine Legislature).
The lower court, finding for the defendant,
dismissed the complaint (Record on Appeal, p. 25).
Plaintiff appealed to the Court of Appeals which as
already stated certified the case to the Supreme
Court for adjudication on the legal question
involved. (Resolution, Court of Appeals, Rollo, p.
36; Resolution of the Supreme Court of February
18, 1973, Rollo, p. 38).
In its brief in the Court of Appeals, appellant raised
the following Assignment of Errors:

The undisputed facts of this case are as follows:

I
Plaintiff-appellant is a non-profit association of
authors, composers and publishers duly organized
under the Corporation Law of the Philippines and
registered with the Securities and Exchange
Commission. Said association is the owner of
certain musical compositions among which are the
songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay
Akin," "Sapagkat Kami Ay Tao Lamang" and "The
Nearness Of You."
On the other hand, defendant-appellee is the
operator of a restaurant known as "Alex Soda
Foundation and Restaurant" where a combo with
professional singers, hired to play and sing musical
compositions to entertain and amuse customers
therein, were playing and singing the abovementioned compositions without any license or

THE LOWER COURT ERRED IN HOLDING

THAT THE MUSICAL COMPOSITIONS OF THE
APPELLANT WERE IN THE NATURE OF
PUBLIC PROPERTY WHEN THEY WERE
COPYRIGHTED OR REGISTERED.
II
THE LOWER COURT ERRED IN HOLDING
THAT THE MUSICAL COMPOSITIONS OF THE
APPELLANT WERE PLAYED AND SUNG IN
THE SODA FOUNTAIN AND RESTAURANT OF
THE
APPELLEE
BY
INDEPENDENT
CONTRACTORS AND ONLY UPON THE
REQUEST OF CUSTOMERS.

III
THE LOWER COURT ERRED IN HOLDING
THAT THE PLAYING AND SINGING OF
COPYRIGHTED MUSICAL COMPOSITIONS IN
THE SODA FOUNTAIN AND RESTAURANT OF
THE
APPELLEE
ARE
NOT
PUBLIC
PERFORMANCES FOR PROFIT OF THE SAID
COMPOSITIONS WITHIN THE MEANING AND
CONTEMPLATION OF THE COPYRIGHT LAW.
IV
THE LOWER COURT ERRED IN NOT
HOLDING THAT THE APPELLEE IS LIABLE
TO THE APPELLANT FOR FOUR (4)
SEPARATE INFRINGEMENTS. (Brief for
Appellant, pp. A and B).
The petition is devoid of merit.
The principal issues in this case are whether or not
the playing and signing of musical compositions
which have been copyrighted under the provisions
of the Copyright Law (Act 3134) inside the
establishment of the defendant-appellee constitute a
public performance for profit within the meaning
and contemplation of the Copyright Law of the
Philippines; and assuming that there were indeed
public performances for profit, whether or not
appellee can be held liable therefor.
Appellant anchors its claim on Section 3(c) of the
Copyright Law which provides:
SEC. 3. The proprietor of a copyright or his heirs or
assigns shall have the exclusive right:
xxx xxx xxx
(c) To exhibit, perform, represent, produce, or
reproduce the copyrighted work in any manner or
by any method whatever for profit or otherwise; if
not reproduced in copies for sale, to sell any
manuscripts or any record whatsoever thereof;
xxx xxx xxx
It maintains that playing or singing a musical
composition is universally accepted as performing
the musical composition and that playing and
singing of copyrighted music in the soda fountain
and restaurant of the appellee for the entertainment
of the customers although the latter do not pay for
the music but only for the food and drink constitute

performance for profit under the Copyright Law

(Brief for the Appellant, pp. 19-25).
We concede that indeed there were "public
performances for profit. "
The word "perform" as used in the Act has been
applied to "One who plays a musical composition
on a piano, thereby producing in the air sound
waves which are heard as music ... and if the
instrument he plays on is a piano plus a
broadcasting apparatus, so that waves are thrown
out, not only upon the air, but upon the other, then
also he is performing the musical composition."
(Buck, et al. v. Duncan, et al.; Same Jewell La Salle
Realty Co., 32F. 2d. Series 367).
In relation thereto, it has been held that "The
playing of music in dine and dance establishment
which was paid for by the public in purchases of
food and drink constituted "performance for profit"
within a Copyright Law." (Buck, et al. v. Russon
No. 4489 25 F. Supp. 317). Thus, it has been
explained that while it is possible in such
establishments for the patrons to purchase their
food and drinks and at the same time dance to the
music of the orchestra, the music is furnished and
used by the orchestra for the purpose of inducing
the public to patronize the establishment and pay
for the entertainment in the purchase of food and
drinks. The defendant conducts his place of
business for profit, and it is public; and the music is
performed for profit (Ibid, p. 319). In a similar case,
the Court ruled that "The Performance in a
restaurant or hotel dining room, by persons
employed by the proprietor, of a copyrighted
musical composition, for the entertainment of
patrons, without charge for admission to hear it,
infringes the exclusive right of the owner of the
copyright." (Herbert v. Shanley Co.; John Church
Co. v. Hillard Hotel Co., et al., 242 U.S. 590-591).
In delivering the opinion of the Court in said two
cases, Justice Holmes elaborated thus:
If the rights under the copyright are infringed only
by a performance where money is taken at the door,
they are very imperfectly protected. Performances
not different in kind from those of the defendants
could be given that might compete with and even
destroy the success of the monopoly that the law
intends the plaintiffs to have. It is enough to say
that there is no need to construe the statute so
narrowly. The defendants' performances are not
eleemosynary. They are part of a total for which the
public pays, and the fact that the price of the whole

is attributed to a particular item which those present

are expected to order is not important. It is true that
the music is not the sole object, but neither is the
food, which probably could be got cheaper
elsewhere. The object is a repast in surroundings
that to people having limited power of conversation
or disliking the rival noise, give a luxurious
pleasure not to be had from eating a silent meal. If
music did not pay, it would be given up. If it pays, it
pays out of the public's pocket. Whether it pays or
not, the purpose of employing it is profit, and that is
enough. (Ibid., p. 594).
In the case at bar, it is admitted that the patrons of
the restaurant in question pay only for the food and
drinks and apparently not for listening to the music.
As found by the trial court, the music provided is
for the purpose of entertaining and amusing the
customers in order to make the establishment more
attractive and desirable (Record on Appeal, p. 21).
It will be noted that for the playing and singing the
musical compositions involved, the combo was paid
as independent contractors by the appellant (Record
on Appeal, p. 24). It is therefore obvious that the
expenses entailed thereby are added to the overhead
of the restaurant which are either eventually
charged in the price of the food and drinks or to the
overall total of additional income produced by the
bigger volume of business which the entertainment
was programmed to attract. Consequently, it is
beyond question that the playing and singing of the
combo
in
defendant-appellee's
restaurant
constituted performance for profit contemplated by
the Copyright Law. (Act 3134 amended by P.D. No.
49, as amended).

days if made elsewhere, failure of which renders

such creation public property." (Santos v.
McCullough Printing Company, 12 SCRA 324-325
[1964]. Indeed, if the general public has made use
of the object sought to be copyrighted for thirty (30)
days prior to the copyright application the law
deems the object to have been donated to the public
domain and the same can no longer be copyrighted.
A careful study of the records reveals that the song
"Dahil Sa Iyo" which was registered on April 20,
1956 (Brief for Appellant, p. 10) became popular in
radios, juke boxes, etc. long before registration
(TSN, May 28, 1968, pp. 3-5; 25) while the song
"The Nearness Of You" registered on January 14,
1955 (Brief for Appellant, p. 10) had become
popular twenty five (25) years prior to 1968, (the
year of the hearing) or from 1943 (TSN, May 28,
1968, p. 27) and the songs "Sapagkat Ikaw Ay
Akin" and "Sapagkat Kami Ay Tao Lamang" both
registered on July 10, 1966, appear to have been
known and sang by the witnesses as early as 1965
or three years before the hearing in 1968. The
testimonies of the witnesses at the hearing of this
case on this subject were unrebutted by the
appellant. (Ibid, pp. 28; 29 and 30).
Under the circumstances, it is clear that the musical
compositions in question had long become public
property, and are therefore beyond the protection of
the Copyright Law.
PREMISES CONSIDERED, the appealed decision
of the Court of First Instance of Manila in Civil
Case No. 71222 is hereby AFFIRMED.

Nevertheless, appellee cannot be said to have

infringed upon the Copyright Law. Appellee's
allegation that the composers of the contested
musical compositions waived their right in favor of
the general public when they allowed their
intellectual creations to become property of the
public domain before applying for the
corresponding copyrights for the same (Brief for
Defendant-Appellee, pp. 14-15) is correct.

SO ORDERED.

The Supreme Court has ruled that "Paragraph 33 of

Patent Office Administrative Order No. 3 (as
amended, dated September 18, 1947) entitled 'Rules
of Practice in the Philippines Patent Office relating
to the Registration of Copyright Claims'
promulgated pursuant to Republic Act 165,
provides among other things that an intellectual
creation should be copyrighted thirty (30) days after
its publication, if made in Manila, or within the (60)

SECOND DIVISION

Fernan (Chairman), Gutierrez, Jr., Padilla, Bidin

and Cortes, JJ., concur.
Alampay, J., took no part.

[G.R. No. 161295. June 29, 2005]

JESSIE G. CHING, petitioner, vs. WILLIAM M.

SALINAS, SR., WILLIAM M. SALINAS,

JR.,
JOSEPHINE
L.
SALINAS,
JENNIFER Y. SALINAS, ALONTO
SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (Board of
Directors and Officers of WILAWARE
PRODUCT
CORPORATION), respondents.
DECISION
CALLEJO, SR., J.:
This petition for review on certiorari assails
the Decision[1] and Resolution[2] of the Court of
Appeals (CA) in CA-G.R. SP No. 70411 affirming
the January 3, 2002 and February 14, 2002
Orders[3] of the Regional Trial Court (RTC) of
Manila, Branch 1, which quashed and set aside
Search Warrant Nos. 01-2401 and 01-2402 granted
in favor of petitioner Jessie G. Ching.
Jessie G. Ching is the owner and general
manager of Jeshicris Manufacturing Co., the maker
and manufacturer of a Utility Model, described as
Leaf Spring Eye Bushing for Automobile made up
of plastic.
On September 4, 2001, Ching and Joseph Yu
were issued by the National Library Certificates of
Copyright Registration and Deposit of the said
work described therein as Leaf Spring Eye Bushing
for Automobile.[4]
On September 20, 2001, Ching requested the
National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension
and prosecution of illegal manufacturers, producers
and/or distributors of the works.[5]
After due investigation, the NBI filed
applications for search warrants in the RTC of
Manila against William Salinas, Sr. and the officers
and members of the Board of Directors of Wilaware
Product Corporation. It was alleged that the
respondents 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 seizure of the following:
a.) Undetermined quantity of Leaf spring
eye bushing for automobile that are
made up of plastic polypropylene;
b.) Undetermined quantity of Leaf spring
eye bushing for automobile that are
made up of polyvinyl chloride
plastic;

c.) Undetermined quantity of Vehicle

bearing cushion that is made up of
polyvinyl chloride plastic;
d.) Undetermined quantity of Dies and
jigs, patterns and flasks used in the
manufacture/fabrication of items a to
d;
e.) Evidences of sale which include
delivery receipts, invoices and
official receipts.[6]
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 NBI agent, it appears that the
following articles/items were seized based on the
search warrants:
Leaf Spring eye bushing
a) Plastic Polypropylene
- C190 27 }
- C240 rear 40 }
- C240 front 41 } BAG 1
b) Polyvinyl Chloride Plastic
- C190 13 }
c) Vehicle bearing cushion
- center bearing cushion 11 }
Budder for C190 mold 8 }
Diesel Mold
a) Mold for spring eye bushing rear
1 set
b) Mold for spring eye bushing
front 1 set
c) Mold for spring eye bushing for
C190 1 set
d) Mold for C240 rear 1 piece of
the
s
et
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 set[8]
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
Order[12] 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 noninclusive definition of work as referring to original
intellectual creations in the literary and artistic
domain protected from the moment of their
creation; and includes original ornamental designs
or models for articles of manufacture, whether or
not registrable as an industrial design and other
works of applied art under Section 172.1(h) of R.A.
No. 8293.
As such, the petitioner insists, notwithstanding
the classification of the works as either literary
and/or artistic, the said law, likewise, encompasses
works which may have a bearing on the utility
aspect to which the 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 dutybound 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 ownership[27] 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 semicircular 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.
[36]
Functional components of useful articles, no
matter how artistically designed, have generally
been denied copyright protection unless they are
separable from the useful article.[37]
In this case, the 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
AUTOMOBILE

EYE

BUSHING

FOR

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.[40] Essentially, a utility
model refers to an invention in the mechanical field.
This is the reason why its object is sometimes
described as a device or useful object. [41] A utility
model varies from an invention, for which a patent
for invention is, likewise, available, on at least three
aspects: first, the requisite of inventive step[42] in a
patent for invention is not required; second, the

maximum term of protection is only seven

years[43] compared to a patent which is twenty years,
[44]
both reckoned from the date of the application;
and third, the provisions on utility model dispense
with its substantive examination[45] and prefer for a
less complicated system.
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.
Drilon[47] and Pearl & Dean (Phil.), Incorporated v.
Shoemart, Incorporated,[48] the Court ruled that:
Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right
granted by the statute, and not simply a pre-existing
right regulated by it. Being a statutory grant, the
rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the
subjects and by the persons, and on terms and
conditions specified in the statute. Accordingly, it
can cover only the works falling within the
statutory enumeration or description.

That the works of the petitioner may be the

proper subject of a patent does not entitle him to the
issuance of a search warrant for violation of
copyright
laws.
In Kho
v.
Court
of
Appeals[49] and Pearl & Dean (Phil.), Incorporated
v. Shoemart, Incorporated,[50] the Court ruled that
these copyright and patent rights are completely
distinct and separate from one another, and the
protection afforded by one cannot be used
interchangeably to cover items or works
that exclusively pertain to the others. The Court
expounded further, thus:

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.

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 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:

The petitioner cannot find solace in the ruling

of the United States Supreme Court in Mazer v.
Stein[51] to buttress his petition. In that case, the
artifacts involved in that case were statuettes of
dancing male and female figures made of semivitreous 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:

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]

[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 012402 issued on October 15, 2001 are ANNULLED
AND SET ASIDE. Costs against the petitioner.
SO ORDERED.
Puno,
(Chairman),
Austria-Martinez,
Tinga, and Chico-Nazario, JJ., concur.

FIRST DIVISION
MANLY SPORTWEAR G.R. No. 165306
MANUFACTURING, INC.,
Petitioner, Present:
Davide, Jr., C.J. (Chairman),
- versus - Quisumbing,
Ynares-Santiago,

C
a
r
p
i
o
,
a
n
d
A
zcuna,
JJ.
DADODETTE ENTERPRISES
AND/OR HERMES SPORTS Promulgated:
CENTER,
Respondents. September 20, 2005

issued on March 17, 2003 Search Warrant No.

4044(03).[7]
Respondents thereafter moved to quash
and annul the search warrant contending that the
same is invalid since the requisites for its
issuance have not been complied with. They
insisted that the sporting goods manufactured by
and/or registered in the name of MANLY are
ordinary and common hence, not among the
classes of work protected under Section 172 of

x
--------------------------------------------------------------------------------------- x

DECISION

RA 8293.
On June 10, 2003, the trial court granted
the motion to quash and declared Search Warrant
No. 4044(03) null and void based on its finding

YNARES-SANTIAGO, J.:

that the copyrighted products of MANLY do not

appear to be original creations and were being

This

petition

for

review

on

manufactured

and

distributed

by

different

certiorari[1] under Rule 45 of the Revised Rules of

companies locally and abroad under various

Civil

2004

brands, and therefore unqualified for protection

decision[2] of the Court of Appeals[3] in CA-G.R. SP

under Section 172 of RA 8293. Moreover, MANLYs

No.

certificates of registrations were issued only in

Procedure
79887

and

assails
its

the

July

September

13,
15,

2004

resolution[4] denying reconsideration thereof.

2002,

whereas

there

were

certificates

of

registrations for the same sports articles which

The facts are as follows:

were issued earlier than MANLYs, thus further

negating the claim that its copyrighted products

On March 14, 2003, Special Investigator

were original creations.[8]

Eliezer P. Salcedo of the National Bureau of

On August 11, 2003, the trial court

Investigation (NBI) applied for a search warrant

[9]

before the Regional Trial Court (RTC) of Quezon

denied

MANLYs

motion

for

reconsideration.

City, based on the information that Dadodette

Hence it filed a petition for certiorari[10] before the

Enterprises and/or Hermes Sports Center were in

Court of Appeals which was denied for lack of

possession of goods, the copyright of which

merit. The appellate court found that the trial

belonged to Manly Sportswear Mfg., Inc. (MANLY).

court correctly granted the motion to quash and

that its ruling in the ancillary proceeding did not

[5]

preempt the findings of the intellectual property

After finding reasonable grounds that a
violation of Sections 172 and 217 of Republic Act

court as it did not resolve with finality the status

or character of the seized items.

(RA) No. 8293[6] has been committed, Judge

Estrella T. Estrada of RTC-Quezon City, Branch 83,

After

denial

of

its

motion

for

reconsideration on September 15, 2004, MANLY

filed the instant petition for review on certiorari

original creations of MANLY and are not among

raising the sole issue of whether or not the Court

the classes of work enumerated under Section

of Appeals erred in finding that the trial court did

172 of RA 8293. The trial court, thus, may not be

not gravely abuse its discretion in declaring in

faulted for overturning its initial assessment that

the hearing for the quashal of the search

there was probable cause in view of its inherent

warrant that the copyrighted products of MANLY

power to issue search warrants and to quash the

are

same. No objection may be validly posed to an

not

original

creations

subject

to

the

protection of RA 8293.

order quashing a warrant already issued as the

court must be provided with the opportunity to

We deny the petition.

correct itself of an error unwittingly committed,

or, with like effect, to allow the aggrieved party

The power to issue search warrants is

exclusively vested with the trial judges in the

the chance to convince the court that its ruling is

erroneous.

exercise of their judicial function. [11] As such, the

power to quash the same also rests solely with

Moreover, the trial court was acting within

them. After the judge has issued a warrant, he is

bounds when it ruled, in an ancillary proceeding,

not precluded to subsequently quash the same, if

that the copyrighted products of petitioner are

he finds upon reevaluation of the evidence that

not original creations. This is because in the

no probable cause exists.

determination of the existence of probable cause

for the issuance or quashal of a warrant, it is

Our ruling in Solid Triangle Sales Corp. v.

Sheriff, RTC, Q.C.,Br. 93[12] is instructive, thus:

less preclude, the court from making a final

judicial determination of the issues in a full-blown
trial. Consequently, MANLYs assertion that the
trial

was filed. The trial court also properly quashed

the search warrant it earlier issued after finding
upon reevaluation of the evidence that no
probable cause exists to justify its issuance in the
the

trial

the

warrant

Corp. v. Sheriff, RTC, Q.C.,Br. 93:[13]

no criminal action has yet been instituted when it

by

quashing

As pertinently held in Solid Triangle Sales

entertained the motion to quash considering that

ruled

order

court has no legal basis.

court did not abuse its discretion when it

As

courts

preempted the finding of the intellectual property

In the instant case, we find that the trial

place.

properly threshed out in a regular proceeding. In

so doing, it does not usurp the power of, much

Inherent in the courts power

to issue search warrants is the
power to quash warrants already
issued. In this connection, this
Court has ruled that the motion to
quash should be filed in the court
that issued the warrant unless a
criminal case has already been
instituted in another court, in
which case, the motion should be
filed with the latter. The ruling has
since been incorporated in Rule
126 of the Revised Rules of
Criminal Procedure[.]

first

inevitable that the court may touch on issues

court,

the copyrighted products do not appear to be

When
the
court,
in
determining probable cause for
issuing or quashing a search
warrant, finds that no offense has
been committed, it does not
interfere with or encroach upon the
proceedings in the preliminary
investigation. The court does not
oblige the investigating officer not
to file an information for the courts
ruling that no crime exists is only
for purposes of issuing or quashing
the warrant. This does not, as
petitioners would like to believe,
constitute a usurpation of the
executive function. Indeed, to shirk

from this duty would amount to an

abdication of a constitutional
obligation.

We have also ruled in Ching v. Salinas,

Sr., et al.[15] that:

...

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[.]

... The finding by the court that no

crime exists does not preclude the
authorized officer conducting the
preliminary
investigation
from
making his own determination that
a crime has been committed and
that probable cause exists for
purposes of filing the information.
As correctly observed by the Court of
Appeals, the trial courts finding that the seized
products

are

not

copyrightable

was

merely

preliminary as it did not finally and permanently

adjudicate on the status and character of the
seized items. MANLY could still file a separate
copyright

infringement

suit

against

the

respondents because the order for the issuance

or quashal of a warrant is not res judicata.

Further, the copyright certificates issued

in

favor

of

MANLY

facie evidence

of

constitute
validity

and

merely prima
ownership.

However, no presumption of validity is created

where other evidence exist that may cast doubt
on the copyright validity. Hence, where there is
sufficient proof that the copyrighted products are
not original creations but are readily available in

Thus, in Vlasons Enterprises Corporation

v. Court of Appeals[14] we held that:
The proceeding for the
seizure of property in virtue of a
search warrant does not end with
the actual taking of the property by
the proper officers and its delivery,
usually constructive, to the court.
The order for the issuance of the
warrant is not a final one and
cannot
constitute res
judicata.
Such an order does not ascertain
and adjudicate the permanent
status or character of the seized
property. By its very nature, it is
provisional, interlocutory. It is
merely the first step in the process
to determine the character and
title
of
the
property.
That
determination is done in the
criminal action involving the crime
or crimes in connection with which
the search warrant was issued.
Hence, such a criminal action
should
be
prosecuted,
or
commenced if not yet instituted,
and prosecuted. The outcome of
the criminal action will dictate the
disposition of the seized property

the market under various brands, as in this case,

validity and originality will not be presumed and
the trial court may properly quash the issued
warrant for lack of probable cause.
Besides, no copyright accrues in favor of
MANLY despite issuance of the certificates of
registration and deposit[16] pursuant to Section 2,
Rule

of

the

Copyrights

Safeguards

and

Regulations[17] which states:

Sec.
2
Effects
of
Registration and Deposit of Work.
The registration and deposit of the
work is purely for recording the
date of registration and deposit of
the work and shall not be
conclusive
as
to
copyright
ownership or the term of the
copyrights or the rights of the
copyright
owner,
including
neighboring rights.
At most, the certificates of registration
and deposit issued by the National Library and
the Supreme Court Library serve merely as a

notice of recording and registration of the work

but do not confer any right or title upon the

Thomas G. Gee, Martin L. McGregor, Richard S.

Siluk, Baker & Botts, Houston, Tex., for plaintiffsappellants.

registered copyright owner or automatically put

his work under the protective mantle of the
copyright law. It is not a conclusive proof of
copyright ownership. As it is, non-registration and

David B. Wolf, Walter, Conston, Alexander &

Green, New York City, amicus curiae for Rand
McNally & Co.

deposit of the work within the prescribed period

only makes the copyright owner liable to pay a
fine.[18]
WHEREFORE, the petition is DENIED.
The July 13, 2004 decision of the Court of
Appeals in CA-G.R. SP No. 79887 and resolution
dated September 15, 2004, are AFFIRMED.
SO ORDERED.

Jerry Sadler, Houston, Tex., amici curiae for Key

Maps, Thomas Bros. Map Co. and Mapsco.
Lionel M. Schooler, Gilpin, Paxson & Bersch,
Houston, Tex., for Landata, Inc. of Houston.
James B. Gambrell, Marc L. Delflache, Eugene R.
Montalvo, Pravel, Gambrell, Hewitt, Kimball &
Krieger, Houston, Tex., for Montgomery Data &
Conroe Title.
Appeals from the United States District Court for
the Southern District of Texas.

Hodge E. Mason and

Hodge
Mason
Maps,
Inc.,
Plaintiffsappellants,
v.
Montgomery
Data,
Inc.,
et
al.,
Defendantsappellees, 967 F.2d
135 (5th Cir. 1992)
Annotate this Case
U.S. Court of Appeals for the Fifth Circuit 967 F.2d 135 (5th Cir. 1992)

July 28, 1992

Before SNEED1 , REAVLEY and BARKSDALE,

Circuit Judges.
REAVLEY, Circuit Judge:

Hodge E. Mason, Hodge Mason Maps, Inc., and

Hodge Mason Engineers, Inc. (collectively Mason)
sued Montgomery Data, Inc. (MDI), Landata, Inc.
of Houston (Landata), and Conroe Title & Abstract
Co. (Conroe Title), claiming that the defendants
infringed Mason's copyrights on 233 real estate
ownership maps of Montgomery County, Texas.
The district court initially held that Mason cannot
recover statutory damages or attorney's fees for any
infringement of 232 of the copyrights. The court
later held that Mason's maps are not copyrightable
under the idea/expression merger doctrine, and
granted summary judgment for the defendants. We
agree with Mason
that the maps are copyrightable, so we reverse the
district court's judgment and remand the case. But
we agree with the district court that, if Mason
proves that the defendants infringed his
copyrights,2 he can only recover statutory damages

and attorney's fees for the infringements of one of

the 233 maps.
Between August 1967 and July 1969, Mason
created and published 118 real estate ownership
maps that, together, cover all of Montgomery
County. The maps, which display copyright notices,
pictorially portray the location, size, and shape of
surveys, land grants, tracts, and various
topographical features within the county. Numbers
and words on the maps identify deeds, abstract
numbers, acreage, and the owners of the various
tracts. Mason obtained the information that he
included on the maps from a variety of sources.3
Relying on these sources, Mason initially
determined the location and dimensions of each
survey in the county, and then drew the corners and
lines of the surveys onto topographical maps of the
county that were published by the United States
Geological Survey (USGS).4 He then determined
the location of the property lines of the real estate
tracts within each survey and drew them on the
USGS maps. Finally, Mason traced the survey and
tract lines onto transparent overlays, enlarged clean
USGS maps and the overlays, added names and
other information to the overlays, and combined the
maps and overlays to print the final maps. Mason
testified that he used substantial judgment and
discretion to reconcile inconsistencies among the
various sources, to select which features to include
in the final map sheets, and to portray the
information in a manner that would be useful to the
public. From 1970 to 1980, Mason revised the
original maps and eventually published 115 new
maps with copyright notices, for a total of 233
maps. Mason sold copies of his maps individually
and in sets.
Mason's infringement claims are based on the
defendants' use of his maps as part of a
geographical indexing system that Landata created
to continuously organize and store ever-changing
title information on each tract in Montgomery
County. To create this sytem, Landata purchased a
set of Mason's maps and reorganized them by
cutting and pasting them into 72 map sheets.
Landata then attached a transparent overlay to each
of the 72 sheets, and depicted on these overlays
numerous updates and corrections to the
information on Mason's maps. Landata arbitrarily
assigned identification numbers ("arb numbers") to
tracts or areas within the county, and added these
numbers to the overlays. Using this process,
Landata created an inked mylar "master overlay"
for each of the 72 reorganized map sheets. Landata
then made sepia copies of the master overlays, and
began registering ownership and other changes on

the sepia copies from the hundreds of land grants

that are recorded in the county each day. Using this
system, the defendants are able to retrieve current
ownership and other information on any tract by
locating its arb number on the appropriate overlay
and entering that number into a computer database
that contains data on each tract.
In 1985, several title companies, including Conroe
Title, incorporated MDI as a joint title plant. MDI
and Landata then entered into a series of
agreements under which Conroe Title and MDI's
other shareholders can use Landata's system when
they issue title insurance policies. On September
17, 1985, Landata asked Mason for permission to
use his maps as part of its system, but Mason
denied the request because Landata refused to pay a
licensing fee. Landata then provided its products to
MDI without Mason's permission. Each of MDI's
shareholders purchased an original set of Mason's
maps, and either MDI or the shareholders
reorganized the maps from 118 to 72 map sheets
according to Landata's specifications. Landata
provided MDI with a set of sepia copies of the
master overlays for each set of reorganized maps
and with access to its computer database. Annually
from 1982 through 1986, and again in 1989,
Landata or MDI produced new, updated editions of
the master overlays.
Mason registered the copyright for one of the
original 118 maps in October 1968. After learning
of Landata's use of his maps, Mason registered the
copyrights for the remaining 117 original maps and
the 115 revised maps between October and
December 1987. Mason filed this suit in September
1988, claiming infringement of his 233 copyrights
under 17 U.S.C. 106, and seeking statutory
damages and attorney's fees under 17 U.S.C.
504-05. In December 1989, the defendants sought a
partial summary judgment that, even if Mason
proves copyright infringement, 17 U.S.C. 412
precludes an award of statutory damages or
attorney's fees for any infringement of the 232 maps
that Mason registered in 1987. The district court
granted this motion on June 1, 1990. Mason v.
Montgomery
Data,
Inc., 741
F.
Supp.
1282, 1287 (S.D. Tex. 1990). In September 1990,
Mason filed a motion for partial summary judgment
that the defendants had infringed his copyrights.
The defendants countered with motions for
summary judgment in which they asserted that
Mason's maps are not copyrightable and, even if
they are, the defendants' use of the maps does not
constitute infringement. The district court granted
the defendants' motions after holding that Mason's
maps are not copyrightable because the idea

embodied in the maps is inseparable from the maps'

expression of that idea. Mason v. Montgomery
Data, Inc., 765 F. Supp. 353, 356 (S.D. Tex. 1991).
The court dismissed Mason's claims with prejudice
and awarded the defendants costs and attorney's
fees.II. DISCUSSION
The Copyright Act extends copyright protection to
"original works of authorship fixed in any tangible
medium of expression." 17 U.S.C.A. 102(a) (West
Supp.1992). The scope of that protection, however,
is not unlimited. "In no case does copyright
protection for an original work of authorship extend
to any idea, ... regardless of the form in which it is
described, explained, illustrated, or embodied in
such work." Id. 102(b) (emphasis added). Thus,
while a copyright bars others from copying an
author's original expression of an idea, it does not
bar them from using the idea itself. "Others are free
to utilize the 'idea' so long as they do not plagiarize
its 'expression.' " Herbert Rosenthal Jewelry Corp.
v. Kalpakian, 446 F.2d 738, 741 (9th Cir. 1971). In
some cases, however, it is so difficult to distinguish
between an idea and its expression that the two are
said to merge. Thus, when there is essentially only
one way to express an idea, "copying the
'expression' will not be barred, since protecting the
'expression' in such circumstances would confer a
monopoly of the 'idea' upon the copyright owner
free of the conditions and limitations imposed by
the patent law." Id. at 742. By denying protection to
an expression that is merged with its underlying
idea, we "prevent an author from monopolizing an
idea merely by copyrighting a few expressions of
it." Toro Co. v. R & R Products Co., 787 F.2d 1208,
1212 (8th Cir. 1986).5
The district court applied these principles to the
present case and concluded that "the problem with
the Hodge Mason maps is ... that [they] express the
only pictorial presentation which could result from
a correct interpretation of the legal description and
other factual information relied upon by the
plaintiffs in producing the maps." Mason, 765 F.
Supp. at 355. The court believed that,
[t]o extend copyright protection to the Hodge
Mason maps, which resulted from facts essentially
in the public domain, would give the plaintiffs a
monopoly over the facts. In other words, anyone
who has the desire and ability to correctly interpret
the legal descriptions and toil through the factual
information relied upon by the plaintiffs in creating
their maps, would create a pictorial presentation so
substantially similar to the plaintiffs ['] that they
could be accused of copyright infringement. This

result would clearly upset Congress' intent to

balance the "competing concerns of providing
incentive to authors to create and of fostering
competition in such creativity."
Id. at 356 (quoting Apple Computer, Inc. v. Franklin
Computer Corp., 714 F.2d 1240, 1253 (3rd Cir.
1983), cert. dismissed, 464 U.S. 1033, 104 S. Ct.
690, 79 L. Ed. 2d 158 (1984)). The court thus
concluded that "the plaintiffs' idea to create the
maps, based on legal and factual public
information, is inseparable from its expression
embodied within the maps, and hence not subject to
copyright protection." Id.
We agree with Mason that the district court erred in
applying the merger doctrine in this case. To
determine whether the doctrine is applicable in any
case, the court must "focus on whether the idea is
capable of various modes of expression." Apple
Computer, 714 F.2d at 1253. Thus, the court must
first identify the idea that the work expresses, and
then attempt to distinguish that idea from the
author's expression of it. If the court concludes that
the idea and its expression are inseparable, then the
merger doctrine applies and the expression will not
be protected. Conversely, if the court can
distinguish the idea from its expression, then the
expression will be protected because the fact that
one author has copyrighted one expression of that
idea will not prevent other authors from creating
and copyrighting their own expressions of the same
idea. In all cases, " [t]he guiding consideration in
drawing the line is the preservation of the balance
between competition and protection reflected in the
patent and copyright laws." Herbert Rosenthal
Jewelry, 446 F.2d at 742.
The district court determined that Mason's idea,
"which includes drawing the abstract and tract
boundaries, indicating the ownership name, the
tract size, and the other factual information" on a
map of Montgomery County, was "to create the
maps, based on legal and factual public
information." Mason, 765 F. Supp. at 356. Mason
argues that the court clearly erred in finding that
this idea can be expressed in only one or a limited
number of ways. We agree. The record in this case
contains copies of maps created by Mason's
competitors that prove beyond dispute that the idea
embodied in Mason's maps is capable of a variety
of expressions. Although the competitors' maps and
Mason's maps embody the same idea, they differ in
the placement, size, and dimensions of numerous
surveys, tracts, and other features. The record also
contains affidavits in which licensed surveyors and
experienced mapmakers explain that the differences

between Mason's maps and those of his competitors

are the natural result of each mapmaker's selection
of sources, interpretation of those sources,
discretion in reconciling inconsistencies among the
sources, and skill and judgment in depicting the
information.6
MDI argues that this evidence is irrelevant because
there is no proof that Mason and his competitors
obtained their information from the same sources.
But the fact that different mapmakers with the same
idea could reach different conclusions by relying on
different sources only supports our result. Whether
Mason and his competitors relied on different
sources, or interpreted the same sources and
resolved inconsistencies among them differently, or
made different judgments as to how to best depict
the information from those sources, the differences
in their maps confirm the fact that the idea
embodied in Mason's maps can be expressed in a
variety of ways. By selecting different sources, or
by resolving inconsistencies among the same
sources differently, or by coordinating, arranging,
or even drawing the information differently, other
mapmakers may create--and indeed have created-expressions of Mason's idea that differ from those
that Mason created.7
Finally, the defendants contend that this court's
decision in Kern River Gas Transmission Co. v.
Coastal Corp., 899 F.2d at 1458, requires
application of the merger doctrine in this case. Kern
River concerned the copyrightability of maps on
which Kern River Gas Transmission Company
(Kern River) depicted the location that it proposed
for construction of a gas pipeline. The idea at issue
in Kern River was simply the placing on a map of
Kern River's certain "proposed location for a
prospective pipeline." Id. at 1464. This court
concluded that that idea merged with Kern River's
expression because there was only one way to
effectively express that idea. Id.
The defendants argue that the merger doctrine
applies in this case because drawing lines on a
public map is the only way to depict the locations
of surveys and boundary lines in Montgomery
County, just as it was the only way to depict the
location of a pipeline in Kern River. But the
distinction between Kern River and this case is not
in the methods available for depicting an object's
location on a map, but in the ideas that the maps in
the two cases embody. We cannot determine
whether an idea is capable of a variety of
expressions until we first identify what that idea is.
A court's decision whether to apply the merger
doctrine often depends on how it defines the

author's idea. For this reason, in defining the idea

the court should be guided by "the balance between
competition and protection reflected in the patent
and copyright laws." Herbert Rosenthal Jewelry,
446 F.2d at 742.8
We focus in this case on an earlier point in the
mapping process, a point prior to the selection of
information and decisions where to locate tract
lines. The idea here was to bring together the
available information on boundaries, landmarks,
and ownership, and to choose locations and an
effective pictorial expression of those locations.
That idea and its final expression are separated by
Mason's efforts and creativity that are entitled to
protection from competitors. The evidence in this
case demonstrates that a mapmaker who desires to
express the idea of depicting the location and
ownership of property in Montgomery County in
map form must select information from numerous
sources, reconcile inconsistencies among those
sources, and depict the information according to the
mapmaker's skill and judgment. Although Mason
sought to depict the information accurately, the
conflicts among the sources and the limitations
inherent in the process of representing reality in
pictorial map form required him to make choices
that resulted in independent expression. Extending
protection to that expression will not grant Mason a
monopoly over the idea, because other mapmakers
can express the same idea differently. The
protection that each map receives extends only to
its original expression, and neither the facts nor the
idea embodied in the maps is protected. " [T]he
facts and ideas ... are free for the taking.... " [T]he
very same facts and ideas may be divorced from the
context imposed by the author, and restated or
reshuffled by second comers, even if the author was
the first to discover the facts or to propose the
ideas." Feist, 111 S. Ct. at 1289 (quoting Jane C.
Ginsburg, Creation and Commercial Value:
Copyright Protection of Works of Information, 90
Colum. L. Rev. 1865, 1868 (1990)).
For these reasons, we conclude that the district
court erred by applying the merger doctrine in this
case. Because the idea embodied in Mason's maps
can be expressed in a variety of ways, the merger
doctrine does not render Mason's expression of that
idea uncopyrightable.
Landata contends that, even if the merger doctrine
does not apply, Mason's maps are uncopyrightable
because they are not "original" under Feist.
Although the district court applied the merger
doctrine to hold that Mason's maps are not
copyrightable, it found that "the problem with the

Hodge Mason maps is not a lack of originality."

Mason, 765 F. Supp. at 355. We agree that Mason's
maps are original. Originality does not require
"novelty, ingenuity, or aesthetic merit." H.R.REP.
No. 1476, 94th Cong., 2d Sess. 51 (1976), reprinted
in 1976 U.S.C.C.A.N. 5659, 5664; see also Feist,
111 S. Ct. at 1287. Instead, originality "means only
that the work was independently created by the
author (as opposed to copied from other works),
and that it possesses at least some minimal degree
of creativity." Feist, 111 S. Ct. at 1287 (citing 1 M.
Nimmer & D. Nimmer, COPYRIGHT 2.01 [A][B] (1990)). The parties do not dispute Mason's
claim that he independently created his maps, but
Landata contends that they do not possess the
degree of creativity necessary to qualify them as
original under Feist.
Mason's maps pass muster under Feist because
Masons' selection, coordination, and arrangement
of the information that he depicted are sufficiently
creative to qualify his maps as original
"compilations" of facts.9 Under the originality
standard, bare facts are never copyrightable
"because facts do not owe their origin to an act of
authorship." Id. at 1288. A compilation of facts,
however, may be copyrightable if the author made
choices as to "which facts to include, in what order
to place them, and how to arrange the collected data
so that they may be used effectively by readers." Id.
at 1289. The author's selection, coordination, and
arrangement of facts, however, are protected only if
they were "made independently ... and entail a
minimal degree of creativity." Id.

created his maps. In his deposition and affidavit,

Mason explained the choices that he independently
made to select information from numerous and
sometimes conflicting sources, and to depict that
information on his maps.10 Mason's compilation of
the information on his maps involved creativity that
far exceeds the required minimum level.
Mason's maps also possess sufficient creativity to
merit copyright protection as pictorial and graphic
works of authorship. Historically, most courts have
treated maps solely as compilations of facts. See
Wolf, supra note 4, at 227. The Copyright Act,
however, categorizes maps not as factual
compilations but as "pictorial, graphic, and
sculptural works"--a category that includes
photographs and architectural plans. 17 U.S.C.A.
101 (West Supp.1992). Some courts have
recognized that maps, unlike telephone directories
and other factual compilations, have an inherent
pictorial or photographic nature that merits
copyright protection. See, e.g., Rockford Map
Publishers, Inc. v. Directory Service Co., 768 F.2d
145, 149 (7th Cir. 1985) ("Teasing pictures from the
debris left by conveyancers is a substantial change
in the form of the information. The result is
copyrightable...."), cert. denied, 474 U.S. 1061, 106
S. Ct. 806, 88 L. Ed. 2d 781 (1986); United States
v. Hamilton, 583 F.2d 448, 451 (9th Cir. 1978)
("Expression in cartography is not so different from
other artistic forms seeking to touch upon external
realities that unique rules are needed to judge
whether the authorship is original."). We agree with
these courts. As Wolf explains in his article:

In Feist, the Court held that the defendant, who

copied a list of names, towns, and telephone
numbers from the white pages of the plaintiff's
telephone directory, did not copy anything that was
"original" to the plaintiff. Id. at 1296. The Court
explained that the plaintiff's selection of facts to
publish--the name, town, and telephone number of
each person who applied for telephone
service--"lacks the modicum of creativity necessary
to transform mere selection into copyrightable
expression." Id. And the plaintiff's arrangement of
these facts, which involved "nothing more than list
[ing] ... [the] subscribers in alphabetical order," is
"not only unoriginal, it is practically inevitable." Id.
at 1297. Because the plaintiff "simply [took] the
data provided by its subscribers and list [ed] it
alphabetically by surname ..., [t]he end product is a
garden-variety white pages directory, devoid of
even the slightest trace of creativity." Id. at 1296.

It is true that maps are factual compilations insofar

as their subject matter is concerned. Admittedly,
most maps present information about geographic
relationships, and the "accuracy" of this
presentation, with its utilitarian aspects, is the
reason most maps are made and sold. Unlike most
other factual compilations, however, maps translate
this subject-matter into pictorial or graphic form....
Since it is this pictorial or graphic form, and not the
map's subject matter, that is relevant to copyright
protection, maps must be distinguished from nonpictorial fact compilations.... A map does not
present objective reality; just as a photograph's
pictorial form is central to its nature, so a map
transforms reality into a unique pictorial form
central to its nature.

But the evidence in this case demonstrates that

Mason exercised sufficient creativity when he

The level of creativity required to make a work of

authorship original "is extremely low; even a slight
amount will suffice." Feist, 111 S. Ct. at 1287. We

Wolf, supra note 4, at 239-40.

think that the process by which Mason, using his

own skill and judgment, pictorially portrayed his
understanding of the reality in Montgomery County
by drawing lines and symbols in particular relation
to one another easily exceeds that level.
Because Mason's maps possess sufficient creativity
in both the selection, coordination, and arrangement
of the facts that they depict, and as in the pictorial,
graphic nature of the way that they do so, we find
no error in the district court's determination that
Mason's maps are original.
Mason sought statutory damages rather than actual
damages. The district court held that section 412 of
the Copyright Act precludes an award of statutory
damages (and attorney's fees) for any alleged
infringement of all but one of Mason's maps. See
Mason, 741 F. Supp. at 1285-87. Mason calls that
holding error, but we agree with the district court.
Section 412 provides that:
no award of statutory damages or of attorney's fees,
as provided by sections 504 and 505, shall be made
for ... (2) any infringement of copyright
commenced after first publication of the work and
before the effective date of its registration, unless
such registration is made within three months after
the first publication of the work.
17 U.S.C.A. 412 (West Supp.1992). Mason
argues that Congress' use of the phrase "for any
infringement" in this section reveals its intent that
courts treat each of a defendant's infringing acts
separately and deny statutory damages only for
those specific infringing acts that commenced prior
to registration. Thus, Mason argues, section 412
allows him to recover statutory damages and
attorney's fees for any infringement that the
defendants commenced after he registered the
copyrights, even though they commenced other,
separate infringements of the same work prior to
registration. The district court rejected this
argument because it interpreted the term
"infringement" to mean all of a defendant's acts of
infringement of any one work. Thus, the court
interpreted "the words 'commencement of
infringement' to mean the first act of infringement
in a series of on-going separate infringements." 741
F. Supp. at 1286.
We find section 412 to be ambiguous and open to
either interpretation. But we find support for the
district court's interpretation in the legislative
history of section 412. The House Report explains
that "clause (2) [of section 412] would generally
deny an award of [statutory damages and attorney's

fees] where infringement takes place before

registration." H.R.REP. No. 1476 at 158, reprinted
in 1976 U.S.C.C.A.N. at 5659, 5774 (emphasis
added). In contrast to the "for any infringement"
language of section 412, this language reveals
Congress' intent that statutory damages be denied
not only for the particular infringement that a
defendant commenced before registration, but for
all of that defendant's infringements of a work if
one of those infringements commenced prior to
registration.
In addition to the legislative history of section 412,
we find support for the district court's interpretation
in 17 U.S.C. 504. We look to section 504 for
assistance in understanding section 412 because
section 412 bars an award of statutory damages "as
provided by section 504." Section 504 provides
that:
the copyright owner may elect, at any time before
final judgment is rendered, to recover, instead of
actual damages and profits, an award of statutory
damages for all infringements involved in the action
with respect to any one work, for which any one
infringer is liable individually, or for which any two
or more infringers are liable jointly and severally, in
a sum of not less than $500 or more than $20,000 as
the court considers just.
17 U.S.C.A. 504(c) (1) (West Supp.1992)
(emphasis added). Under this section, the total
number of "awards" of statutory damages (each
ranging from $500 to $20,000) that a plaintiff may
recover in any given action depends on the number
of works that are infringed and the number of
individually liable infringers, regardless of the
number of infringements of those works.11 So if a
plaintiff proves that one defendant committed five
separate infringements of one copyrighted work,
that plaintiff is entitled to only one award of
statutory damages ranging from $500 to $20,000.
And if a plaintiff proves that two different
defendants each committed five separate
infringements of five different works, the plaintiff is
entitled to ten awards, not fifty. It would be
inconsistent to read section 504 to include all of one
defendant's infringements of one work within "an
award of statutory damages," and then read section
412 to treat each infringement separately for
purposes of barring that award.
Moreover, section 504 provides that the plaintiff
may elect to recover an award of statutory damages
for all of one defendant's infringements of any one
work "instead of actual damages and profits." Thus,
if all of one defendant's infringements commenced

after registration, the plaintiff may not elect to

recover statutory damages for some of those
infringements and actual damages for the rest. See
H.R.REP. No. 1476 at 161, reprinted in 1976
U.S.C.C.A.N. at 5659, 5777 ("Recovery of actual
damages and profits under section 504(b) or of
statutory damages under section 504(c) is
alternative."). Under Mason's argument, a plaintiff
could recover actual damages for infringements that
a defendant commenced before registration, and
still recover statutory damages for infringements of
the same work that the same defendant commenced
after registration. This argument must fail because
"an award of statutory damages"--which section
504 giveth and section 412 taketh away-encompasses all of one defendant's infringements of
one work.
Finally, our conclusion accords with the purpose of
section 412. Congress included section 412 in the
Copyright Act of 1976 because " [c]opyright
registration for published works, which is useful
and important to users and the public at large,
would no longer be compulsory [under the 1976
Act], and should therefore be induced in some
practical way." H.R.REP. No. 1476 at 158, reprinted
in 1976 U.S.C.C.A.N. at 5659, 5774. Denying an
"award of the special or 'extraordinary' remedies of
statutory damages or attorney's fees where ...
infringement commenced after publication and
before registration" encourages early registration of
copyrights. Id. As one court has noted, " [t]he threat
of such a denial would hardly provide a significant
motivation to register early if the owner of the work
could obtain those remedies for acts of infringement
taking place after a belated registration." Singh v.
Famous Overseas, Inc., 680 F. Supp. 533, 536
(E.D.N.Y. 1988).
We thus conclude that a plaintiff may not recover
an award of statutory damages and attorney's fees
for infringements that commenced after registration
if the same defendant commenced an infringement
of the same work prior to registration. Mason
published his 233 maps between 1967 and 1980,
and registered the copyright in one map in October
1968. By the time he registered the remaining 232
copyrights in 1987, the defendants had reorganized
Mason's maps and created and used the overlays
and computer database. As to each work and each
defendant, the alleged acts of infringement that
could give rise to an award of statutory damages
had commenced prior to registration of 232 of the
works. We thus uphold this ruling of the district
court. If Mason proves infringement, he may elect
to recover statutory damages and attorney's fees

only for the infringements of the map that he

registered in 1968.
Because we reverse the district court's final
judgment, the defendants are not presently entitled
to costs and attorney's fees as "prevailing parties."
See 17 U.S.C. 505. We thus reverse the court's
amended final judgment of June 5, 1991 that
awarded costs and attorney's fees to the defendants.
We REVERSE the court's judgments dismissing
plaintiff's action and awarding the defendants costs
and attorney's fees, and we REMAND the case for
further proceedings consistent with this opinion.
REVERSED and REMANDED.
1

Senior Circuit Judge of the Ninth Circuit, sitting by

designation
2

In addition to arguing that Mason's maps are not

copyrightable, the defendants argued in their
motions for summary judgment that their actions
did not constitute actionable infringement of those
copyrights. Although the district court did not
address these arguments when it granted summary
judgment, Landata asks us to affirm the summary
judgment in the defendants' favor on these grounds.
We decline this invitation, and remand the case for
the district court to address these issues
3

These sources included tax, deed, and survey

records from Montgomery County; data provided
by the San Jacinto River Authority; survey records,
maps, and abstracts of land titles from the Texas
General Land Office; title data and subdivision
information provided by Conroe Title; a map from
the City of Conroe, Texas; and maps from the
United States Coast and Geodetic Survey
4

The USGS has mapped much of the United States,

including Montgomery County. Most private
mapmakers, like Mason, use USGS topographical
maps as starting points for their own maps. See
David B. Wolf, Is There any Copyright Protection

for Maps after Feist?, 39 J. COPYRIGHT SOC'Y

USA 224, 226 (1992)
5

Mason argues that application of the merger

doctrine does not render a work uncopyrightable,
but rather prevents a finding of infringement of an
otherwise copyrightable work. See Kregos v.
Associated Press, 937 F.2d 700, 705 (2d Cir. 1991)
(Second Circuit "has considered this so-called
'merger' doctrine in determining whether actionable
infringement has occurred, rather than whether a
copyright is valid"). But this court has applied the
merger doctrine to the question of copyrightability.
See Kern River Gas Transmission Co. v. Coastal
Corp., 899 F.2d 1458, 1460 (5th Cir.) (because the
idea and its expression embodied in plaintiff's maps
are inseparable, "the maps at issue are not
copyrightable"), cert. denied, --- U.S. ----, 111 S.
Ct. 374, 112 L. Ed. 2d 336 (1990). In any event,
because we find the merger doctrine inapplicable in
this case, the effect of its application is irrelevant

Gale Aff. at 2-4. Another mapmaker, Milton R.

Hanks, stated:
In compiling a map as detailed and complex as the
Mason maps of Montgomery County, the
mapmaker will necessarily make many individual
judgments in placing various features from various
sets of records onto a single map.
....
... When the Mason map is overlaid with the Tobin
map at the same scale ..., many differences in
placement of various features and surveys are
readily observed. The differences between the two
maps are exactly the sort of differences that I would
expect to observe between two independently
produced maps based on the same ancient records.
The reason for the differences is that a large number
of independent judgments must be made in any
large-scale mapping project of this type.
Hanks Aff. at 2, 5.

6
7

One of the experts, Pliny M. Gale, examined

Mason's maps and the competitors' maps and
concluded that:
the assembly, graphic representation, and
positioning of various records and features involves
considerable skill, judgment and originality.
... The differences I note between the Mason maps
and the other maps which I have examined are to be
expected because of the numerous interpretations of
records, individual judgments, and map base
selection which must be taken into account when
producing an ownership map based on a large
number of instruments spanning over 100 years of
development.
....
In my inspection of the maps, I found that the
Mason map includes many features which are
unique to the graphic representations selected by
Mason, and which do not appear in any public
record information.

Citing Feist Publications, Inc. v. Rural Tel. Serv.

Co., --- U.S. ----, 111 S. Ct. 1282, 113 L. Ed. 2d 358
(1991), the defendants contend that an author's
selection, coordination, and arrangement of facts
merit consideration in the decision whether a work
is "original," but they are irrelevant to the
application of the merger doctrine. We disagree.
The question in Feist was whether a compilation of
facts contained sufficient originality to be
copyrightable. The Court explained that, although
the facts contained in a compilation can never be
original, the author's selection, arrangement, and
coordination of those facts may be. Id. 111 S. Ct. at
1288-89. But nothing in Feist suggests that those
factors are inapplicable to the question whether an
idea is subject to a variety of expressions. As we
have explained, it is precisely because mapmakers
who seek to express the idea embodied in Mason's
maps must make choices as to selection,
coordination, and arrangement that they can express
that idea in a variety of ways
8

Thus, as one commentator states:

In copyright law, an "idea" is not an

epistemological concept, but a legal conclusion
prompted by notions--often unarticulated and
unproven--of appropriate competition. Thus,
copyright doctrine attaches the label "idea" to
aspects of works which, if protected, would (or, we
fear, might) preclude, or render too expensive,
subsequent authors' endeavors.

on [his] placement of the survey and real property

boundaries." Mason Aff. at 2.

Jane C. Ginsburg, No "Sweat"? Copyright and

Other Protection of Works of Information after
Feist v. Rural Telephone, 92 Colum. L. Rev. 338,
346 (1992) (footnotes omitted).

Although ... an award of minimum statutory

damages may be multiplied if separate works and
separately liable infringers are involved in the suit,
a single award ... is to be made "for all
infringements involved in the action." A single
infringer of a single work is liable for a single
amount ..., no matter how many acts of
infringement are involved in the action and
regardless of whether the acts were separate,
isolated, or occurred in a related series.

A compilation "is a work formed by the collection

and assembling of preexisting materials or of data
that are selected, coordinated, or arranged in such a
way that the resulting work as a whole constitutes
an original work of authorship." 17 U.S.C. 101
10

Mason explained in his deposition:

In 1967, I placed all of the survey lines in the
county on the [USGS] topo [graphical] maps. Now,
you just don't draw it on there. I placed each corner
of each survey separately; each line of each survey
separately ..., and each--the positioning of each
survey corner, each survey line was a matter of
judgment. You just can't buy a map, of any source I
know, that has them all on there correctly.... So,
each line was placed on there. I made a judgment
on each corner, each line for every survey. Then,
the same system worked for the tracts within the
survey; and I detailed on the topo map the
individual real property lines within each survey.
In his affidavit, Mason explained that he chose to
"locate each individual survey on the topographic
maps independently of each of the other surveys,"
to place the oldest titled grants on the topographic
maps first, and then add the more recent surveys
proceeding from the earliest grants, and to position
the surveys on the USGS maps "not only by
examining the record facts, but also by using
topographic features shown on U.S.G.S. maps,
especially the features from the U.S.G.S. map
commonly found at property boundaries as a check

11

The legislative history of section 504 is particularly

direct on this point:

....
... Where the infringements of one work were
committed by a single infringer acting individually,
a single award of statutory damages would be
made.... However, where separate infringements for
which two or more defendants are not jointly liable
are joined in the same action, separate awards of
statutory damages would be appropriate.
H.R.REP. No. 1476 at 162, reprinted in 1976
U.S.C.C.A.N. at 5659, 5778. As the D.C. Circuit
explained, " [b]oth the text of [section 504(c) (1) ]
and its legislative history make clear that statutory
damages are to be calculated according to the
number of works infringed, not the number of
infringements.... [O]nly one penalty lies for
multiple infringements of one work." Walt Disney
Co. v. Powell, 897 F.2d 565, 569 (D.C. Cir. 1990).

SECOND DIVISION
UNILEVER PHILIPPINES G.R. No. 119280
(PRC), INC.,
Petitioner, Present:
PUNO, J., Chairperson,
SANDOVAL-GUTIERREZ,
- v e r s u s - CORONA,

AZCUNA and GARCIA,* JJ.

against it already disposed of the main case

THE HONORABLE COURT

OF APPEALS and PROCTER
AND GAMBLE PHILIPPINES,
INC.,
Respondents. Promulgated:

without trial, thus denying petitioner of any

opportunity to present evidence on its behalf.
A
ugust
10,
2006

x----------------------------------------x

The antecedents show that on August 24, 1994,

private respondent Procter and Gamble Phils.,
Inc. filed a complaint for injunction with damages
and a prayer for temporary restraining order
and/or writ of preliminary injunction against

DECISION

petitioner Unilever, alleging that:

CORONA, J.:

1.5.

As early as 1982, a P&G

subsidiary in Italy used a
key
visual
in
the
advertisement of its laundry
detergent and bleaching
products. This key visual
known as the double-tug
or tac-tacdemonstration
shows the fabric being held
by
both
hands
and
stretched sideways.

1.6.

The tac-tac was

conceptualized for P&G by
the
advertising
agency Milano and Gray of
Italy
in
1982. The tactac was used in the same
year in an advertisement
entitled
All aperto to
demonstrate the effect on
fabrics
of
one
of P&GPs products, a liquid
bleach called Ace.

In this petition for review under Rule 45 of the

Rules of Court, petitioner assails the February 24,
1995 decision[1] of the Court of Appeals (CA) in
CA-G.R.

SP

No.

35242

entitled Unilever

Philippines (PRC), Inc. v. Honorable Fernando

V. Gorospe,

Jr.

Philippines,

Inc.

issuance

by

preliminary

the

and

Procter

(P&GP) which
court a

injunction

and

affirmed

quo of

against

Gamble

it.

writ
The

the
of
writ

enjoined petitioner from using and airing, until

further orders of the court, certain television
commercials for its laundry products claimed to

xxxxxxxxx
1.7.

Since then, P&G has

used the tac-tac key visual
in the advertisement of its
products. In fact, in 1986, in
Italy, the tac-tac key visual
was used in the television
commercial for Ace entitled
Kite.

1.8.

P&G has used the same

distinctive tac-tac key visual
to local consumers in the
Philippines.

be identical or similar to its double tug or tactac key visual.[2]

Petitioner

alleges

that

the

writ

of

preliminary injunction was issued by the trial

court (and affirmed by the CA) without any
evidence

of

private

respondents

clear

and

unmistakable right to the writ. Petitioner further

contends that the preliminary injunction issued

xxxxxxxxx
1.10.

Substantially
materially
imitating

and
the

aforesaid tac-tac key visual

of P&GP and in blatant
disregard
of P&GPs intellectual
property rights, Unilever on
24 July 1993 started airing a
60
second television
commercial TVC of its
Breeze Powerwhite laundry
product called Porky. The
said
TVC
included
a
stretching
visual
presentation
and
sound
effects almost [identical] or
substantially
similar
to P&GPs tac-tac key visual.

rejoinder. P&GP received Unilevers rejoinder to

reply on September 13, 1994. The following day,
on September 14, 1994, P&GP filed its sur-reply
to Unilevers rejoinder.
On September 19, 1994, P&GP received a
copy of the order dated September 16, 1994
ordering the issuance of a writ of preliminary
injunction and fixing a bond of P100,000. On the

xxxxxxxxx
1.14.

1.15.

same date, P&GP filed the required bond issued

On July 15, 1994, P&GP

aired in the Philippines, the
same
Kite
television
advertisement it used in
Italy
in
1986,
merely
dubbing
the
Italian
language with Filipino for
the same produce Ace
bleaching
liquid
which P&GP now markets in
the Philippines.

by Prudential Guarantee and Assurance, Inc.

On

On August 1, 1994,
Unilever filed a Complaint
with the Advertising Board
of the Philippines to prevent
P&GP from airing the Kite
television advertisement.[3]

and setting it for hearing on September 2, 1994

for Unilever to show cause why the writ of
preliminary injunction should not issue. During
on

September

2,

1994,

1994,

petitioner

allegedly committed by the court a quo, to wit:

an order granting a temporary restraining order

hearing

21,

appealed to the CA assigning the following errors

On August 26, 1994, Judge Gorospe issued

the

September

P&GP

received Unilevers answer with opposition to

preliminary injunction. P&GP filed its reply to
Unilevers opposition to a preliminary injunction
on September 6, 1994.
During the hearing on September 9, 1994,
Judge Gorospe ordered petitioner to submit a sur-

PUBLIC RESPONDENT HAD

ACTED WITHOUT OR IN EXCESS OF
JURISDICTION AND WITH GRAVE
ABUSE
OF
DISCRETION
AMOUNTING
TO
LACK
OF
JURISDICTION IN ISSUING THE WRIT
OF PRELIMINARY INJUNCTION IN
VIOLATION OF THE RULES ON
EVIDENCE
AND
PROCEDURE,
PARTICULARLY OF SEC. 3 (a), RULE
58 OF THE REVISED RULES OF
COURT AND OF THE PREVAILING
JURISPRUDENCE.
PUBLIC RESPONDENT IN
ISSUING THE VOID ORDER DATED
SEPTEMBER 16, 1994, HAD, IN
EFFECT, ALREADY PREJUDGED THE
MERITS OF THE MAIN CASE.
PUBLIC RESPONDENT HAD
ISSUED
THE
VOID
ORDER
ACCORDING RELIEF TO A NONPARTY IN CIVIL CASE NO. 94-2434
WITHOUT JURISDICTION.
PUBLIC RESPONDENT IN
ISSUING THE VOID ORDER HAD
DEPRIVED
PETITIONER
OF
SUBSTANTIVE AND PROCEDURAL
DUE
PROCESS;
PUBLIC
RESPONDENT HAD FORECLOSED
PETITIONERS RIGHT AND THE
OPPORTUNITY TO CROSS-EXAMINE
PROCTERS WITNESSES ABAD AND
HERBOSA.[4]

On February 24, 1995, the CA rendered its

decision finding that Judge Gorospe did not act
with grave abuse of discretion in issuing the
disputed order. The petition for certiorari was
thus dismissed for lack of merit.
After a careful perusal of the records, we
agree with the CA and affirm its decision in toto:
Petitioner does not deny
that
the
questioned
TV
advertisements are substantially
similar to P&GPs double tug or tactac key visual. However, it submits
that P&GP is not entitled to the
relief demanded, which is to enjoin
petitioner from airing said TV
advertisements, for the reason that
petitioner
has
Certificates
of
Copyright Registration for which
advertisements while P&GP has
none with respect to its double-tug
or tac-tac key
visual. In
other
words, it is petitioners contention
that P&GP is not entitled to any
protection because it has not
registered with the National Library
the very TV commercials which it
claims have been infringed by
petitioner.
We disagree. Section 2 of
PD 49 stipulates that the copyright
for a work or intellectual creation
subsists from the moment of its
creation. Accordingly, the creator
acquires copyright for his work
right upon its creation. Contrary to
petitioners
contention,
the
intellectual creators exercise and
enjoyment of copyright for his work
and the protection given by law to
him is not contingent or dependent
on any formality or registration.
Therefore, taking the material
allegations of paragraphs 1.3 to
1.5 of P&GPs verified Complaint in
the context of PD 49, it cannot be
seriously doubted that at least, for
purposes of determining whether
preliminary injunction should issue
during the pendency of the case,
P&GP is entitled to the injunctive
relief prayed for in its Complaint.

The
second
ground
is
likewise
not
well-taken.
As
adverted to earlier, the provisional
remedy of preliminary injunction
will not issue unless it is shown in
the verified complaint that plaintiff
is probably entitled to the relief
demanded, which consists in whole
or in part in restraining the
commission or continuance of the
acts complained of. In view of such
requirement, the court has to make
a tentative determination if the
right sought to be protected exists
and whether the act against which
the writ is to be directed
is violative of such right. Certainly,
the courts determination as to the
propriety of issuing the writ cannot
be taken as a prejudgment of the
merits of the case because it is
tentative in nature and the writ
may be dissolved during or after
the trial if the court finds that
plaintiff was not entitled to it.
xxxxxxxxx
Obviously,
the
determination made by the court a
quo was only for purposes of
preliminary
injunction,
without
passing upon the merits of the
case, which cannot be done until
after a full-blown hearing is
conducted.
The third ground is patently
unmeritorious. As alleged in the
Complaint P&GP is a subsidiary of
Procter and Gamble Company
(P&G) for which the double tug
or tac-tac key
visual
was
conceptualized or created. In that
capacity, P&GP used the said TV
advertisement in the Philippines to
promote its products. As such
subsidiary, P&GP is definitely
within the protective mantle of the
statute (Sec. 6, PD 49).
Finally,
We
find
the
procedure adopted by the court a
quo to be in order.
The record clearly shows
that respondent Judge followed the
(procedure provided for in Section
5, Rule 58, as amended by BP 224,
and Paragraph A(8) of the Interim
Rules). In fact, the court a quo set
the incident for hearing on
September 2, 1994, at which date
petitioner was ordered to show
cause why the writ should not be
issued.
Petitioner
filed
an

Opposition to the application for

preliminary injunction. The same
incident was again set for hearing
on September 9, 1994, during
which the parties made some
manifestations in support of their
respective positions.Subsequent to
such hearing petitioner filed a
Reply to P&GPs Rejoinder to its
Opposition. Under the foregoing
circumstances, it is absurd to even
suggest that petitioner was not
given its day in court in the matter
of the issuance of the preliminary
injunctive relief.

acts, in which case it shall be

known as a preliminary mandatory
injunction.
Injunction is resorted to only when there is
a

pressing

necessity

to

avoid

injurious

consequences which cannot be remedied under

any standard compensation.[7] As correctly ruled
by the CA, there was an extreme urgency to
grant the preliminary injunction prayed for by

xxxxxxxxx

P&GP considering that TV commercials are aired

There
was
of
course
extreme urgency for the court a
quo to act on plaintiffs application
for preliminary injunction. The
airing of TV commercials is
necessarily of limited duration
only. Without
such
temporary
relief, any permanent injunction
against
the
infringing
TV
advertisements of which P&GP may
possibly succeed in getting after
the main case is finally adjudicated
could be illusory if by then such
advertisements are no longer used
or aired by petitioner. It is therefore
not difficult to perceive the
possible irreparable damage which
P&GP may suffer if respondent
Judge did not act promptly on its
application
for
preliminary
injunction.[5]

for a limited period of time only. In fact, this Court

takes note of the fact that the TV commercial in
issue the Kite TV advertisement is no longer
aired today, more than 10 years after the
injunction was granted on September 16, 1994.
The sole objective of a writ of preliminary
injunction is to preserve the status quo until the
merits of the case can be heard fully.[8] A writ of
preliminary injunction is generally based solely
on initial and incomplete evidence.[9] Thus, it was
impossible for the court a quo to fully dispose of

Preliminary

provisional

the case, as claimed by petitioner, without all the

remedy intended to provide protection to parties

evidence needed for the full resolution of the

for the preservation of their rights or interests

same. To date, the main case still has to be

during

resolved by the trial court.

[6]

injunction

the pendencyof

the

is

principal

action.

Thus, Section1, Rule 58 of the Rules of Court

provides:
Section
1.
Preliminary
injunction defined; classes. A
preliminary injunction is an order
granted at any stage of an action
or
proceeding
prior
to
the
judgment or final order, requiring a
party or a court, agency or a
person to refrain from a particular
act or acts. It may also require the
performance of a particular act or

The issuance of a preliminary injunction

rests entirely on the discretion of the court and is
generally not interfered with except in cases of
manifest abuse.[10] There was no such abuse in the
case at bar, especially because petitioner was
given

all

the

opportunity

to

oppose

the

application for injunction. The fact was, it failed

to convince the court why the injunction should

not

be

issued. Thus,

in Santos

v.

Court

of

Appeals,[11] we held that no grave abuse of

discretion can be attributed to a judge or body
issuing a writ of preliminary injunction where a
party has not been deprived of its day in court as
it was heard and it exhaustively presented all its
arguments and defenses.
WHEREFORE, the petition is hereby DENIED.
Costs against petitioner.
SO ORDERED.

SECOND DIVISION

[G.R. No. 132604. March 6, 2002]

VENANCIO SAMBAR, doing business under

the name and style of CVS Garment
Enterprises, petitioner, vs.
LEVI
STRAUSS & CO., and LEVI STRAUSS
(PHIL.), INC., respondents.
DECISION
QUISUMBING, J.:
This petition for review on certiorari prays for
the reversal of the decision dated January 30, 1998,
of the Court of Appeals in CA-G.R. CV No.
51553. That decision affirmed the decision in Civil
Case No. 88-2220 of the Regional Trial Court,
Branch 66, Makati City, making permanent the writ
of preliminary injunction, ordering CVS Garment
and Industrial Company (CVSGIC) and petitioner
Venancio Sambar to pay private respondents jointly
and solidarily the sum of P50,000 as temperate and
nominal damages, P10,000 as exemplary damages,
and P25,000 as attorneys fees and litigation costs,
and ordering the Director of the National Library to

cancel Copyright Registration No. 1-1998 in the

name of Venancio Sambar.
The facts are as follows:
On September 28, 1987, private respondents,
through a letter from their legal officer, demanded
that CVS Garment Enterprises (CVSGE) desist
from using their stitched arcuate design on the
Europress jeans which CVSGE advertised in
the Manila Bulletin.
Atty. Benjamin Gruba, counsel of CVSGE,
replied that the arcuate design on the back pockets
of Europress jeans was different from the design on
the back pockets of Levis jeans. He further asserted
that his client had a copyright on the design it was
using.
Thereafter, private respondents filed a
complaint against Sambar, doing business under the
name and style of CVSGE. Private respondents also
impleaded the Director of the National
Library. Summons was sent to Sambar in his
business address at 161-B Iriga corner Retiro, La
Loma, Quezon City.
Atty. Gruba claimed that he erroneously
received the original summons as he mistook it as
addressed to his client, CVSGIC. He returned the
summons and the pleadings and manifested in court
that CVSGE, which was formerly doing business in
the premises, already stopped operation and
CVSGIC took over CVSGEs occupation of the
premises. He also claimed he did not know the
whereabouts of Sambar, the alleged owner of
CVSGE.
Thereafter, private respondents amended their
complaint to include CVSGIC. When private
respondents learned the whereabouts of Sambar and
CVSGE, the case was revived.
Private respondents alleged in their complaint
that Levi Strauss and Co. (LS&Co.), an
internationally known clothing manufacturer, owns
the arcuate design trademark which was registered
under U.S. Trademark Registration No. 404, 248 on
November 16, 1943, and in the Principal Register
of trademarks with the Philippine Patent Office
under Certificate of Registration No. 20240 issued
on October 8, 1973; that through a Trademark
Technical Data and Technical Assistance Agreement
with Levi Strauss (Phil.) Inc. (LSPI) in 1972,
LS&Co. granted LSPI a non-exclusive license to
use the arcuate trademark in its manufacture and
sale of Levis pants, jackets and shirts in the
Philippines; that in 1983, LS&Co. also appointed
LSPI as its agent and attorney-in-fact to protect its

trademark in the Philippines; and that sometime in

1987, CVSGIC and Venancio Sambar, without the
consent and authority of private respondents and in
infringement and unfair competition, sold and
advertised, and despite demands to cease and desist,
continued to manufacture, sell and advertise denim
pants under the brand name Europress with back
pockets bearing a design similar to the arcuate
trademark of private respondents, thereby causing
confusion on the buying public, prejudicial to
private respondents goodwill and property right.
In its answer, CVSGIC admitted it
manufactured, sold and advertised and was still
manufacturing and selling denim pants under the
brand name of Europress, bearing a back pocket
design of two double arcs meeting in the
middle. However, it denied that there was
infringement or unfair competition because the
display rooms of department stores where Levis and
Europress jeans were sold, were distinctively
segregated by billboards and other modes of
advertisement. CVSGIC avers that the public would
not be confused on the ownership of such known
trademark as Levis, Jag, Europress, etc.. Also,
CVSGIC claimed that it had its own original
arcuate design, as evidenced by Copyright
Registration No. 1-1998, which was very different
and distinct from Levis design. CVSGIC prayed for
actual, moral and exemplary damages by way of
counterclaim.
Petitioner Venancio Sambar filed a separate
answer. He denied he was connected with
CVSGIC. He admitted that Copyright Registration
No. 1-1998 was issued to him, but he denied using
it. He also said he did not authorize anyone to use
the copyrighted design. He counterclaimed for
moral and exemplary damages and payment of
attorneys fees.
After hearing, the trial court issued a writ of
preliminary injunction enjoining CVSGIC and
petitioner from manufacturing, advertising and
selling pants with the arcuate design on their back
pockets. CVSGIC and petitioner did not appear
during the October 13 and 27, 1993 hearings, when
they were to present evidence. Consequently, the
trial court ruled that they waived their right to
present evidence.

a) making the writ of preliminary injunction

permanent;
b) ordering the defendants CVS Garment and
Industrial Company and Venancio Sambar to pay
the plaintiffs jointly and solidarily the sum of
P50,000.00 as temperate and nominal damages, the
sum of P10,000.00 as exemplary damages, and the
sum of P25,000.00 as attorneys fees and litigation
expenses and to pay the costs.
SO ORDERED.[1]
Private
respondents
moved
for
a
reconsideration praying for the cancellation of
petitioners copyright registration. The trial court
granted reconsideration in its July 14, 1995 order,
thus:
IN VIEW OF THE FOREGOING, judgment is
hereby rendered:
a) making the writ of preliminary injunction
permanent;
b) ordering the defendants CVS Garment and
Industrial Company and Venancio Sambar to pay
the plaintiffs jointly and solidarily the sum of
P50,000.00 as temperate and nominal damages, the
sum of P10,000.00 as exemplary damages, and the
sum of P25,000.00 as attorneys fees and litigation
expenses and to pay the costs;
c) ordering the Director of the National Library to
cancel the Copyright Registration No. 1-1998
issued in the name of Venancio Sambar.[2]
Petitioner appealed to the Court of Appeals
which on January 30, 1998 decided in favor of
private respondents as follows:
WHEREFORE, the judgment appealed from is
AFFIRMED in toto.
SO ORDERED.[3]
In this instant petition, petitioner avers that the
Court of Appeals erred in:

On May 3, 1995, the trial court rendered its

decision. The dispositive portion reads:

I. ...RULING THAT THERE WAS AN

INFRINGEMENT
OF
RESPONDENTS ARCUATE MARK.

IN VIEW OF THE FOREGOING, judgment is

hereby rendered:

II. ...RULING THAT PETITIONER IS

JOINTLY
AND
SOLIDARILY
LIABLE WITH CVS GARMENTS

INDUSTRIAL CORPORATION FOR

INFRINGEMENT
OF
RESPONDENTS ARCUATE MARK.
III. ...IN ORDERING, THERE BEING
NO INFRINGEMENT OR UNFAIR
COMPETITION, THE AWARD OF
DAMAGES AND CANCELLATION
OF COPYRIGHT REGISTRATION
NO. 1-1998 ISSUED IN THE NAME
OF PETITIONER.[4]
Briefly, we are asked to resolve the following
issues:
1. Did petitioner infringe
respondents arcuate design?

on

private

2. Must we hold petitioner solidarily liable with

CVS Garments Industrial Corporation?
3. Are private respondents entitled to nominal,
temperate and exemplary damages and cancellation
of petitioners copyright?
On the first issue, petitioner claims that he did
not infringe on private respondents arcuate design
because there was no colorable imitation which
deceived or confused the public. He cites Emerald
Garment Manufacturing Corporation vs. Court of
Appeals, G.R. No. 100098, 251 SCRA 600 (1995),
as authority. He disagreed with the Court of
Appeals that there were confusing similarities
between Levis and Europress arcuate designs,
despite the trial courts observation of differences in
them. Petitioner maintains that although the
backpocket designs had similarities, the public was
not confused because Levis jeans had other marks
not found in Europress jeans. Further, he says Levis
long history and popularity made its trademark
easily identifiable by the public.
In its comment, private respondents aver that
the Court of Appeals did not err in ruling that there
was infringement in this case. The backpocket
design of Europress jeans, a double arc intersecting
in the middle was the same as Levis mark, also a
double arc intersecting at the center. Although the
trial court found differences in the two designs,
these differences were not noticeable. Further,
private respondents said, infringement of trademark
did not require exact similarity. Colorable imitation
enough to cause confusion among the public, was
sufficient for a trademark to be infringed. Private
respondents explained that in a market research
they conducted with 600 respondents, the result
showed that the public was confused by Europress
trademark vis the Levis trademark.

We find that the first issue raised by petitioner

is factual. The basic rule is that factual questions
are beyond the province of this Court in a petition
for review. Although there are exceptions to this
rule, this case is not one of them. [5] Hence, we find
no reason to disturb the findings of the Court of
Appeals that Europress use of the arcuate design
was an infringement of the Levis design.
On the second issue, petitioner claims that
private respondents did not show that he was
connected with CVSGIC, nor did they prove his
specific acts of infringement to make him liable for
damages. Again, this is a factual matter and factual
findings of the trial court, concurred in by the Court
of Appeals, are final and binding on this Court.
[6]
Both the courts below found that petitioner had a
copyright over Europress arcuate design and that he
consented to the use of said design by CVSGIC. We
are bound by this finding, especially in the absence
of a showing that it was tainted with arbitrariness or
palpable error.[7] It must be stressed that it was
immaterial whether or not petitioner was connected
with CVSGIC. What is relevant is that petitioner
had a copyright over the design and that he allowed
the use of the same by CVSGIC.
Petitioner also contends that the Court of
Appeals erred when it said that he had the burden to
prove that he was not connected with CVSGIC and
that he did not authorize anyone to use his
copyrighted design. According to petitioner, these
are important elements of private respondents cause
of action against him, hence, private respondents
had the ultimate burden of proof.
Pertinent is Section 1, Rule 131 of the Rules of
Court[8] which provides that the burden of proof is
the duty of a party to prove the truth of his claim or
defense, or any fact in issue by the amount of
evidence required by law. In civil cases, the burden
of proof may be on either the plaintiff or the
defendant. It is on the latter, if in his answer he
alleges an affirmative defense, which is not a denial
of an essential ingredient in the plaintiffs cause of
action, but is one which, if established, will be a
good defense i.e., an avoidance of the claim, which
prima facie, the plaintiff already has because of the
defendants own admissions in the pleadings.[9]
Petitioners defense in this case was an
affirmative defense. He did not deny that private
respondents owned the arcuate trademark nor that
CVSGIC used on its products a similar arcuate
design. What he averred was that although he
owned the copyright on the Europress arcuate
design, he did not allow CVSGIC to use it. He also

said he was not connected with CVSGIC. These

were not alleged by private respondents in their
pleadings, and petitioner therefore had the burden
to prove these.
Lastly, are private respondents entitled to
nominal, temperate and exemplary damages and
cancellation of petitioners copyright?
Petitioner insists that he had not infringed on
the arcuate trademark, hence, there was no basis for
nominal and temperate damages. Also, an award of
nominal damages precludes an award of temperate
damages. He cites Ventanilla vs. Centeno, G.R. No.
L-14333, 1 SCRA 215 (1961) on this. Thus, he
contends, assuming arguendo that there was
infringement, the Court of Appeals still erred in
awarding both nominal and temperate damages.
Petitioner likewise said that the grant of
exemplary damages was inconsistent with the trial
courts finding that the design of Europress jeans
was not similar to Levis design and that no
pecuniary loss was suffered by respondents to
entitle them to such damages.
Lastly, petitioner maintains that as Europress
arcuate design is not a copy of that of Levis, citing
the trial courts findings that although there are
similarities, there are also differences in the two
designs, cancellation of his copyright was not
justified.
On this matter, private respondents assert that
the lower courts found that there was infringement
and Levis was entitled to damages based on
Sections 22 and 23 of RA No. 166 otherwise known
as the Trade Mark Law,[10] as amended, which was
the law then governing. Said sections define
infringement and prescribe the remedies
therefor. Further, private respondents aver it was
misleading for petitioner to claim that the trial court
ruled that private respondents did not suffer
pecuniary loss, suggesting that the award of
damages was improper. According to the private
respondents, the trial court did not make any such
ruling. It simply stated that there was no evidence
that Levis had suffered decline in its sales because
of the use of the arcuate design by Europress
jeans. They offer that while there may be no direct
proof that they suffered a decline in sales, damages
may still be measured based on a reasonable
percentage of the gross sales of the respondents,
pursuant to Section 23 of the Trademark law.[11]
Finally, regarding the cancellation of
petitioners copyright, private respondents deny that
the trial court ruled that the arcuate design of

Europress jeans was not the same as Levis arcuate

design jeans. On the contrary, the trial court
expressly ruled that there was similarity. The
cancellation of petitioners copyright was justified
because petitioners copyright can not prevail over
respondents registration in the Principal Register of
Bureau of Patents, Trademarks, and Technology
Transfer. According to private respondents, the
essence of copyright registration is originality and a
copied design is inherently non-copyrightable. They
insist that registration does not confer originality
upon a copycat version of a prior design.
From the foregoing discussion, it is clear that
the matters raised by petitioner in relation to the last
issue are purely factual, except the matter of
nominal and temperate damages. Petitioner claims
that damages are not due private respondents and
his copyright should not be cancelled because he
had not infringed on Levis trademark. Both the trial
court and the Court of Appeals found there was
infringement. Thus, the award of damages and
cancellation of petitioners
copyright are
appropriate.[12] Award of damages is clearly
provided in Section 23,[13] while cancellation of
petitioners copyright finds basis on the fact that the
design was a mere copy of that of private
respondents trademark. To be entitled to copyright,
the thing being copyrighted must be original,
created by the author through his own skill, labor
and judgment, without directly copying or evasively
imitating the work of another.[14]
However, we agree with petitioner that it was
error for the Court of Appeals to affirm the award of
nominal damages combined with temperate
damages[15] by the Regional Trial Court of
Makati. What respondents are entitled to is an
award for temperate damages, not nominal
damages. For although the exact amount of damage
or loss can not be determined with reasonable
certainty, the fact that there was infringement means
they suffered losses for which they are entitled to
moderate damages.[16] We find that the award
of P50,000.00 as temperate damages fair and
reasonable, considering the circumstances herein as
well as the global coverage and reputation of
private respondents Levi Strauss & Company and
Levi Strauss (Phil.), Inc.
WHEREFORE, the decision dated January
30, 1998, of the Court of Appeals, in CA-G.R. CV
No. 51553 AFFIRMING the judgment of the
Regional Trial Court of Makati, Branch 66, dated
July 14, 1995, is hereby MODIFIED so that
nominal damages are deleted but the amount of
P50,000 is hereby awarded only as TEMPERATE

DAMAGES. In all other respects, said judgment is

hereby AFFIRMED, to wit:
a) the writ of preliminary injunction is
made permanent;
b) the defendants CVS Garment and
Industrial Company and Venancio
Sambar are ordered also to pay the
plaintiffs jointly and solidarily the sum
of P10,000.00 as exemplary damages,
and the sum of P25,000.00 as attorneys
fees and litigation expenses, and to pay
the costs; and
c) the Director of the National Library is
ordered to cancel the Copyright
Registration No. 1-1998 issued in the
name of Venancio Sambar.
SO ORDERED.
Bellosillo,
(Chairman),
Buena, and De Leon, Jr., JJ., concur.

Mendoza,

[G.R. No. 166337. March 7, 2005]

BAYANIHAN MUSIC vs. BMG
THIRD DIVISION

Gentlemen:
Quoted hereunder, for your information, is a
resolution of this Court dated MAR 7 2005.
G.R. No. 166337 (Bayanihan Music
Philippines, Inc. vs. BMG Records (Pilipinas) and
Jose Mari Chan, et al.)
Subject of this petition for review
on certiorari is the Decision dated December 14,
2004[1] of the Court of Appeals in CA-G.R. SP No.
69626, upholding the Order dated August 24, 2001
of the Regional Trial Court at Quezon City, Branch
90, which found no merit in petitioner's application
for the issuance of a writ of preliminary injunction,
along with the Order dated January 10, 2002, which
denied petitioner's motion for reconsideration.
On July 16, 1973, private respondent Jose Mari
Chan (Chan) entered into a contract with petitioner
Bayanihan Music Philippines, Inc. (Bayanihan),
whereunder the former assigned to the latter all his
rights, interests and participation over his musical
composition "Can We Just Stop and Talk A While".
On March 11, 1976, the parties entered into a
similar contract over Chan's other musical
composition entitled "Afraid For Love To Fade".

On the strength of the abovementioned

contracts, Bayanihan applied for and was granted
by the National Library a Certificate of Copyright
Registration for each of the two musical
compositions, thus: November 19, 1973, for the
song "Can We Just Stop and Talk A While" and on
May 21, 1980, for the song "Afraid for Love To
Fade."
Apparently, without the knowledge and consent
of petitioner Bayanihan, Chan authorized his corespondent BMG Records (Pilipinas) [BMG] to
record and distribute the aforementioned musical
compositions in a then recently released album of
singer Lea Salonga.
In separate letters both dated December 7,
1999, petitioner Bayanihan informed respondents
Chan and BMG of its existing copyrights over the
subject musical compositions and the alleged
violation of such right by the two. Demands were
made on both to settle the matter with Bayanihan.
However no settlement was reached by the parties.
Hence, on August 8, 2000, Bayanihan filed
with the Regional Trial Court at Quezon City a
complaint against Chan and BMG for violation of
Section 216 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the
Philippines, with a prayer for the issuance of
Temporary Restraining Order (TRO) and/or writ of
preliminary injunction, enjoining respondent BMG
from further recording and distributing the subject
musical compositions in whatever form of musical
products, and Chan from further granting any
authority to record and distribute the same musical
compositions.
In its answer, BMG contended, among others,
that: (1) the acts of recording and publication
sought to be enjoined had already been
consummated, thereby rendering moot Bayanihan's
prayer for TRO and/or preliminary injunction; and
(2) there is no clear showing that petitioner
Bayanihan would be greatly damaged by the refusal
of the prayed for TRO and/or preliminary
injunction. BMG also pleaded a cross-claim against
its co-respondent Chan for violation of his
warranty that his musical compositions are free
from claims of third persons, and a counterclaim for
damages against petitioner Bayanihan.
Chan, for his part, filed his own answer to the
complaint, thereunder alleging that: (1) it was never
his intention to divest himself of all his rights and
interest over the musical compositions in question;
(2) the contracts he entered into with Bayanihan are
mere music publication agreements giving

Bayanihan, as assignee, the power to administer his

copyright over his two songs and to act as the
exclusive publisher thereof; (3) he was not
cognizant of the application made by and the
subsequent grant of copyrights to Bayanihan; and
(4) Bayanihan was remissed in its obligations under
the contracts because it failed to effectively
advertise his musical compositions for almost
twenty
(20)
years,
hence,
he
caused
the rescission of said contracts in 1997. Chan also
included in his answer a counterclaim for damages
against Bayanihan.
After hearing the parties, the lower court came
out with an order denying Bayanihan's prayer for
TRO, saying, thus:
After carefully considering the arguments and
evaluating the evidence presented by counsels, this
Court finds that the plaintiff has not been able to
show its entitlement to the relief of TRO as prayed
for in its verified complaint (see Section 4, Rule 58
of the 1997 Rules of Civil Procedure, as amended),
hence, this Court is of the considered and humble
view that the ends of justice shall be served better if
the aforecited application is denied.
IN VIEW OF THE FOREGOING, the aforecited
application or prayer for the issuance of a TRO is
denied.
SO ORDERED.
Thereafter, the same court, in its
subsequent Order
dated August
24, 2001,
[2]
likewise denied Bayanihan's prayer for a writ of
preliminary injunction, to wit:
After carefully going over the pleadings and the
pertinent portions of the records insofar as they are
pertinent to the issue under consideration, this
Court finds that the plaintiff has not been able to
show its entitlement to the relief of preliminary
injunction as prayed for in its verified complaint
(see Section 4, Rule 58 of the 1997 Rules of Civil
Procedure, as amended), hence, this Court is of the
considered and humble view that the ends of justice
shall be served better if the aforecited application is
denied, (see also Order dated July 16, 2001).
IN VIEW OF THE FOREGOING, the application
or prayer for the issuance of a writ of preliminary
injunction is denied.
SO ORDERED.

Its motion for a reconsideration of the same

order having been likewise denied by the trial court
in its next Order of January 10, 2002,[3] petitioner
Bayanihan then went to the Court of Appeals on a
petition for certiorari, thereat docketed as CA-G.R.
SP No. 69626, imputing grave abuse of discretion
on the part of the trial court in issuing the Orders of
August 24, 2001 and January 10, 2001, denying its
prayers for a writ of preliminary injunction and
motion for reconsideration, respectively.
In
the
herein
assailed Decision
dated December 14, 2004, the Court of Appeals
upheld the challenged orders of the trial court and
accordingly dismissed Bayanihan petition, thus:
WHEREFORE, finding neither flaw of jurisdiction
nor taint of grave abuse of discretion in the issuance
of the assailed Orders of the respondent court dated
August 24, 2001 and January 10, 2002, the instant
petition is DISMISSED. No costs.
SO ORDERED.[4]
Hence, Bayanihan's present recourse.
It is petitioner's submission that the appellate
court committed reversible error when it dismissed
its petition for certiorari and upheld the trial court's
denial of its application for a writ of preliminary
injunction. Petitioner insists that as assignee of the
copyrights over the musical compositions in
question, it has a clear legal right to a writ of
preliminary injunction; that respondents BMG and
Chan violated its copyrights over the same musical
compositions; that despite knowledge by
respondent BMG of petitioner's copyrights over the
said musical compositions, BMG continues to
record and distribute the same, to petitioner's great
and irreparable injury.
We DENY.
We have constantly reminded courts that there
is no power, the exercise of which is more delicate
and requires greater caution, deliberation and sound
discretion, or which is more dangerous in a doubtful
case, than the issuance of an injunction. A court
should, as much as possible, avoid issuing the writ
which would effectively dispose of the main case
without trial.
Here, nothing is more evident than the trial
court's abiding awareness of the extremely difficult
balancing act it had to perform in dealing with
petitioner's prayer for injunctive reliefs. Conscious,
as evidently it is, of the fact that there is manifest
abuse of discretion in the issuance of an injunctive

writ if the following requisites provided for by law

are not present: (1) there must be a right in esse or
the existence of a right to be protected; and (2) the
act against which the injunction is to be directed is
a violation of such right,[5] the trial court threaded
the correct path in denying petitioner's prayer
therefor. For, such a writ should only be granted if a
party is clearly entitled thereto.[6]
Of course, while a clear showing of the right to
an injunctive writ is necessary albeit its existence
need not be conclusively established,[7] as the
evidence required therefor need not be conclusive
or complete, still, for an applicant, like petitioner
Bayanihan, to be entitled to the writ, he is required
to show that he has the ostensible right to the final
relief prayed for in its complaint.[8] Here, the trial
court did not find ample justifications for the
issuance of the writ prayed for by petitioner.
Unquestionably, respondent Chan, being
undeniably the composer and author of the lyrics of
the two (2) songs, is protected by the mere fact
alone that he is the creator thereof, conformably
with Republic Act No. 8293, otherwise known as
the Intellectual Property Code, Section 172.2 of
which reads:
172.2. Works are protected by the sole fact of their
creation, irrespective of their mode or form of
expression, as well as of their content, quality and
purpose.
An examination of petitioner's verified
complaint in light of the two (2) contracts sued
upon and the evidence it adduced during the
hearing on the application for preliminary
injunction, yields not the existence of the requisite
right protectable by the provisional relief but rather
a lingering doubt on whether there is or there is no
such right. The two contracts between petitioner
and Chan relative to the musical compositions
subject of the suit contain the following identical
stipulations:
7.
It is also hereby agreed to by the parties
herein that in the event the PUBLISHER [petitioner
herein] fails to use in any manner whatsoever
within two (2) years any of the compositions
covered by this contract, then such composition
may be released in favor of the WRITER and
excluded from this contract and the PUBLISHER
shall execute the necessary release in writing in
favor of the WRITER upon request of the
WRITER;

xxx

xxx

xxx

9.
This contract may be renewed for a period of
two-and-one-half (2 1/2) years at the option of the
PUBLISHER. Renewal may be made by the
PUBLISHER by advising the WRITER of such
renewal in writing at least five (5) days before the
expiration of this contract.[9]
It would thus appear that the two (2) contracts
expired on October 1, 1975 and March 11, 1978,
respectively, there being neither an allegation, much
less proof, that petitioner Bayanihan ever made use
of the compositions within the two-year period
agreed upon by the parties.
Anent the copyrights obtained by petitioner on
the basis of the selfsame two (2) contracts, suffice it
to say 'that such purported copyrights are not
presumed to subsist in accordance with Section
218[a] and [b], of the Intellectual Property Code,
[10]
because respondent Chan had put in issue the
existence thereof.
It is noted that Chan revoked and terminated
said contracts, along with others, on July 30, 1997,
or almost two years before petitioner Bayanihan
wrote its sort of complaint/demand letter dated
December 7, 1999 regarding the recent
"use/recording of the songs Can We Just Stop and
Talk A While' and Afraid for Love to Fade,'" or
almost three (3) years before petitioner filed its
complaint on August 8, 2000, therein praying, inter
alia, for injunctive relief. By then, it would appear
that petitioner had no more right that is protectable
by injunction.
Lastly, petitioner's insinuation that the trial
court indulged in generalizations and was rather
skimpy in dishing out its reasons for denying its
prayer for provisional injunctive relief, the same
deserves scant consideration. For sure, the manner
by which the trial court crafted its challenged orders
is quite understandable, lest it be subjected to a
plausible suspicion of having prejudged the merits
of the main case.
WHEREFORE, petition is hereby DENIED.
SO ORDERED.

U.S. Supreme Court

Sony

Corp. v. Universal City

Studios, 464 U.S. 417 (1984)

Sony Corporation of America v. Universal City

Studios, Inc.

No. 81-1687
Argued January 18, 1983
Reargued October 3, 1983
Decided January 17, 1984
464 U.S. 417
Syllabus
Petitioner Sony Corp. manufactures home
videotape recorders (VTR's), and markets them
through retail establishments, some of which are
also petitioners. Respondents own the copyrights on
some of the television programs that are broadcast
on the public airwaves. Respondents brought an
action against petitioners in Federal District Court,
alleging that VTR consumers had been recording
some of respondents' copyrighted works that had
been exhibited on commercially sponsored
television, and thereby infringed respondents'
copyrights, and further that petitioners were liable
for such copyright infringement because of their
marketing of the VTR's. Respondents sought money
damages, an equitable accounting of profits, and an
injunction against the manufacture and marketing
of the VTR's. The District Court denied respondents
all relief, holding that noncommercial home use
recording of material broadcast over the public
airwaves was a fair use of copyrighted works, and
did not constitute copyright infringement, and that
petitioners could not be held liable as contributory
infringers even if the home use of a VTR was
considered an infringing use. The Court of Appeals
reversed, holding petitioners liable for contributory
infringement and ordering the District Court to
fashion appropriate relief
Held: The sale of the VTR's to the general public
does not constitute contributory infringement of
respondents' copyrights. Pp. 464 U. S. 428-456.
(a) The protection given to copyrights is wholly
statutory, and, in a case like this, in which Congress
has not plainly marked the course to be followed by
the judiciary, this Court must be circumspect in
construing the scope of rights created by a statute
that never contemplated such a calculus of interests.
Any individual may reproduce a copyrighted work
for a "fair use"; the copyright owner does not
possess the exclusive right to such a use. Pp. 464 U.
S. 428-434.

(b) Kalem Co. v. Harper Brothers, 222 U. S. 55,

does not support respondents' novel theory that
supplying the "means" to accomplish an infringing
activity and encouraging that activity through
advertisement are sufficient to establish liability for
copyright infringement. This case does not fall in
the category of those in which it is manifestly just
to
Page 464 U. S. 418
impose
vicarious
liability
because
the
"contributory" infringer was in a position to control
the use of copyrighted works by others and had
authorized the use without permission from the
copyright owner. Here, the only contact between
petitioners and the users of the VTR's occurred at
the moment of sale. And there is no precedent for
imposing vicarious liability on the theory that
petitioners sold the VTR's with constructive
knowledge that their customers might use the
equipment to make unauthorized copies of
copyrighted material. The sale of copying
equipment, like the sale of other articles of
commerce, does not constitute contributory
infringement if the product is widely used for
legitimate, unobjectionable purposes, or, indeed, is
merely capable of substantial noninfringing uses.
Pp. 464 U. S. 434-442.
(c) The record and the District Court's findings
show (1) that there is a significant likelihood that
substantial numbers of copyright holders who
license their works for broadcast on free television
would not object to having their broadcast timeshifted by private viewers (i.e., recorded at a time
when the VTR owner cannot view the broadcast so
that it can be watched at a later time); and (2) that
there is no likelihood that time-shifting would cause
nonminimal harm to the potential market for, or the
value of, respondents' copyrighted works. The
VTR's are therefore capable of substantial
noninfringing uses. Private, noncommercial timeshifting in the home satisfies this standard of
noninfringing uses both because respondents have
no right to prevent other copyright holders from
authorizing such time-shifting for their programs
and because the District Court's findings reveal that
even the unauthorized home time-shifting of
respondents' programs is legitimate fair use. Pp.
442-456.
659 F.2d 963, reversed.

STEVENS, J., delivered the opinion of the Court in

which BURGER, C.J., and BRENNAN, WHITE,
and O'CONNOR, JJ., joined. BLACKMUN, J.,
filed a dissenting opinion in which MARSHALL,
POWELL,
and
REHNQUIST,
JJ.,
joined, post, p. 464 U. S. 457.
Page 464 U. S. 419

Syllabus |
Case

Held: The sale of the VTR's to the general public

does not constitute contributory infringement of
respondents' copyrights. Pp. 464 U. S. 428-456.

U.S. Supreme Court

Sony

Corp. v. Universal City

Studios, 464 U.S. 417 (1984)

Sony Corporation of America v. Universal City

Studios, Inc.
No. 81-1687
Argued January 18, 1983
Reargued October 3, 1983
Decided January 17, 1984
464 U.S. 417
CERTIORARI TO THE
COURT OF APPEALS

UNITED

recording of material broadcast over the public

airwaves was a fair use of copyrighted works, and
did not constitute copyright infringement, and that
petitioners could not be held liable as contributory
infringers even if the home use of a VTR was
considered an infringing use. The Court of Appeals
reversed, holding petitioners liable for contributory
infringement and ordering the District Court to
fashion appropriate relief

STATES

FOR THE NINTH CIRCUIT

Syllabus
Petitioner Sony Corp. manufactures home
videotape recorders (VTR's), and markets them
through retail establishments, some of which are
also petitioners. Respondents own the copyrights on
some of the television programs that are broadcast
on the public airwaves. Respondents brought an
action against petitioners in Federal District Court,
alleging that VTR consumers had been recording
some of respondents' copyrighted works that had
been exhibited on commercially sponsored
television, and thereby infringed respondents'
copyrights, and further that petitioners were liable
for such copyright infringement because of their
marketing of the VTR's. Respondents sought money
damages, an equitable accounting of profits, and an
injunction against the manufacture and marketing
of the VTR's. The District Court denied respondents
all relief, holding that noncommercial home use

(a) The protection given to copyrights is wholly

statutory, and, in a case like this, in which Congress
has not plainly marked the course to be followed by
the judiciary, this Court must be circumspect in
construing the scope of rights created by a statute
that never contemplated such a calculus of interests.
Any individual may reproduce a copyrighted work
for a "fair use"; the copyright owner does not
possess the exclusive right to such a use. Pp. 464 U.
S. 428-434.
(b) Kalem Co. v. Harper Brothers, 222 U. S. 55,
does not support respondents' novel theory that
supplying the "means" to accomplish an infringing
activity and encouraging that activity through
advertisement are sufficient to establish liability for
copyright infringement. This case does not fall in
the category of those in which it is manifestly just
to
Page 464 U. S. 418
impose
vicarious
liability
because
the
"contributory" infringer was in a position to control
the use of copyrighted works by others and had
authorized the use without permission from the
copyright owner. Here, the only contact between
petitioners and the users of the VTR's occurred at
the moment of sale. And there is no precedent for
imposing vicarious liability on the theory that
petitioners sold the VTR's with constructive
knowledge that their customers might use the
equipment to make unauthorized copies of
copyrighted material. The sale of copying
equipment, like the sale of other articles of
commerce, does not constitute contributory
infringement if the product is widely used for
legitimate, unobjectionable purposes, or, indeed, is
merely capable of substantial noninfringing uses.
Pp. 464 U. S. 434-442.

(c) The record and the District Court's findings

show (1) that there is a significant likelihood that
substantial numbers of copyright holders who
license their works for broadcast on free television
would not object to having their broadcast timeshifted by private viewers (i.e., recorded at a time
when the VTR owner cannot view the broadcast so
that it can be watched at a later time); and (2) that
there is no likelihood that time-shifting would cause
nonminimal harm to the potential market for, or the
value of, respondents' copyrighted works. The
VTR's are therefore capable of substantial
noninfringing uses. Private, noncommercial timeshifting in the home satisfies this standard of
noninfringing uses both because respondents have
no right to prevent other copyright holders from
authorizing such time-shifting for their programs
and because the District Court's findings reveal that
even the unauthorized home time-shifting of
respondents' programs is legitimate fair use. Pp.
442-456.
659 F.2d 963, reversed.
STEVENS, J., delivered the opinion of the Court in
which BURGER, C.J., and BRENNAN, WHITE,
and O'CONNOR, JJ., joined. BLACKMUN, J.,
filed a dissenting opinion in which MARSHALL,
POWELL,
and
REHNQUIST,
JJ.,
joined, post, p. 464 U. S. 457.
Page 464 U. S. 419
JUSTICE STEVENS delivered the opinion of the
Court.
Petitioners manufacture and sell home videotape
recorders. Respondents own the copyrights on some
of the television
Page 464 U. S. 420
programs that are broadcast on the public airwaves.
Some members of the general public use videotape
recorders sold by petitioners to record some of
these broadcasts, as well as a large number of other
broadcasts. The question presented is whether the
sale of petitioners' copying equipment to the
general public violates any of the rights conferred
upon respondents by the Copyright Act.
Respondents
commenced
this
copyright
infringement action against petitioners in the United
States District Court for the Central District of
California in 1976. Respondents alleged that some

individuals had used Betamax videotape recorders

(VTR's) to record some of respondents' copyrighted
works which had been exhibited on commercially
sponsored television, and contended that these
individuals had thereby infringed respondents'
copyrights. Respondents further maintained that
petitioners were liable for the copyright
infringement allegedly committed by Betamax
consumers because of petitioners' marketing of the
Betamax VTR's. [Footnote 1] Respondents sought
no relief against any Betamax consumer. Instead,
they sought money damages and an equitable
accounting of profits from petitioners, as well as an
injunction against the manufacture and marketing
of Betamax VTR's.
After a lengthy trial, the District Court denied
respondents all the relief they sought and entered
judgment for petitioners. 480 F.Supp. 429 (1979).
The United States Court of Appeals for the Ninth
Circuit reversed the District Court's judgment on
respondents' copyright claim, holding petitioners
liable for contributory infringement and ordering
the District Court to fashion appropriate relief. 659
F.2d 963
Page 464 U. S. 421
(1981). We granted certiorari, 457 U.S. 1116
(1982); since we had not completed our study of the
case last Term, we ordered reargument, 463 U. S.
1226 (1983). We now reverse.
An explanation of our rejection of respondents'
unprecedented attempt to impose copyright liability
upon the distributors of copying equipment requires
a quite detailed recitation of the findings of the
District Court. In summary, those findings reveal
that the average member of the public uses a VTR
principally to record a program he cannot view as it
is being televised, and then to watch it once at a
later time. This practice, known as "time-shifting,"
enlarges the television viewing audience. For that
reason, a significant amount of television
programming may be used in this manner without
objection from the owners of the copyrights on the
programs. For the same reason, even the two
respondents in this case, who do assert objections to
time-shifting in this litigation, were unable to prove
that the practice has impaired the commercial value
of their copyrights or has created any likelihood of
future harm. Given these findings, there is no basis
in the Copyright Act upon which respondents can
hold petitioners liable for distributing VTR's to the
general public. The Court of Appeals' holding that

respondents are entitled to enjoin the distribution of

VTR's, to collect royalties on the sale of such
equipment, or to obtain other relief, if affirmed,
would enlarge the scope of respondents' statutory
monopolies to encompass control over an article of
commerce that is not the subject of copyright
protection. Such an expansion of the copyright
privilege is beyond the limits of the grants
authorized by Congress.

I
The two respondents in this action, Universal City
Studios, Inc., and Walt Disney Productions, produce
and hold the copyrights on a substantial number of
motion pictures and other audiovisual works. In the
current marketplace, they can exploit their rights in
these works in a number of ways:
Page 464 U. S. 422
by authorizing theatrical exhibitions, by licensing
limited showings on cable and network television,
by selling syndication rights for repeated airings on
local television stations, and by marketing programs
on prerecorded videotapes or videodiscs. Some
works are suitable for exploitation through all of
these avenues, while the market for other works is
more limited.
Petitioner Sony manufactures millions of Betamax
videotape recorders and markets these devices
through numerous retail establishments, some of
which are also petitioners in this action. [Footnote
2] Sony's Betamax VTR is a mechanism consisting
of three basic components: (1) a tuner, which
receives electromagnetic signals transmitted over
the television band of the public airwaves and
separates them into audio and visual signals; (2) a
recorder, which records such signals on a magnetic
tape; and (3) an adapter, which converts the audio
and visual signals on the tape into a composite
signal that can be received by a television set.
Several capabilities of the machine are noteworthy.
The separate tuner in the Betamax enables it to
record a broadcast off one station while the
television set is tuned to another channel,
permitting the viewer, for example, to watch two
simultaneous news broadcasts by watching one
"live" and recording the other for later viewing.
Tapes may be reused, and programs that have been
recorded may be erased either before or after
viewing. A timer in the Betamax can be used to

activate and
predetermined

deactivate

the

equipment

at

Page 464 U. S. 423

times, enabling an intended viewer to record
programs that are transmitted when he or she is not
at home. Thus a person may watch a program at
home in the evening even though it was broadcast
while the viewer was at work during the afternoon.
The Betamax is also equipped with a pause button
and a fast-forward control. The pause button, when
depressed, deactivates the recorder until it is
released, thus enabling a viewer to omit a
commercial advertisement from the recording,
provided, of course, that the viewer is present when
the program is recorded. The fast-forward control
enables the viewer of a previously recorded
program to run the tape rapidly when a segment he
or she does not desire to see is being played back on
the television screen.
The respondents and Sony both conducted surveys
of the way the Betamax machine was used by
several hundred owners during a sample period in
1978. Although there were some differences in the
surveys, they both showed that the primary use of
the machine for most owners was "time-shifting" -the practice of recording a program to view it once
at a later time, and thereafter erasing it. Timeshifting enables viewers to see programs they
otherwise would miss because they are not at home,
are occupied with other tasks, or are viewing a
program on another station at the time of a
broadcast that they desire to watch. Both surveys
also showed, however, that a substantial number of
interviewees had accumulated libraries of tapes.
[Footnote 3] Sony's survey indicated
Page 464 U. S. 424
that over 80% of the interviewees watched at least
as much regular television as they had before
owning a Betamax. [Footnote 4] Respondents
offered no evidence of decreased television viewing
by Betamax owners. [Footnote 5]
Sony introduced considerable evidence describing
television programs that could be copied without
objection from any copyright holder, with special
emphasis on sports, religious, and educational
programming. For example, their survey indicated
that 7.3% of all Betamax use is to record sports
events, and representatives of professional baseball,
football, basketball, and hockey testified that they

had no objection to the recording of their televised

events for home use. [Footnote 6]
Page 464 U. S. 425
Respondents offered opinion evidence concerning
the future impact of the unrestricted sale of VTR's
on the commercial value of their copyrights. The
District Court found, however, that they had failed
to prove any likelihood of future harm from the use
of VTR's for time-shifting. 480 F.Supp. at 469.

use of a VTR was considered an infringing use. The

District Court noted that Sony had no direct
involvement with any Betamax purchasers who
recorded copyrighted works off the air. Sony's
advertising was silent on the subject of possible
copyright infringement, but its instruction booklet
contained the following statement:
"Television programs, films, videotapes and other
materials may be copyrighted. Unauthorized
recording of such material may be contrary to the
provisions of the United States copyright laws."

The District Court's Decision

Id. at 436.
The lengthy trial of the case in the District Court
concerned the private, home use of VTR's for
recording programs broadcast on the public
airwaves without charge to the viewer. [Footnote 7]
No issue concerning the transfer of tapes to other
persons, the use of home-recorded tapes for public
performances, or the copying of programs
transmitted on pay or cable television systems was
raised. See id. at 432-433, 442.
The District Court concluded that noncommercial
home use recording of material broadcast over the
public airwaves was a fair use of copyrighted
works, and did not constitute copyright
infringement. It emphasized the fact that the
material was broadcast free to the public at large,
the noncommercial character of the use, and the
private character of the activity conducted entirely
within the home. Moreover, the court found that the
purpose of this use served the public interest in
increasing access to television programming, an
interest that
"is consistent with the First Amendment policy of
providing the fullest possible access to information
through
the
public
airwaves. Columbia
Broadcasting System, Inc. v. Democratic National
Committee, 412 U. S. 94, 412 U. S. 102."
Id. at 454. [Footnote 8] Even when an entire
copyrighted work was recorded,
Page 464 U. S. 426
the District Court regarded the copying as fair use
"because there is no accompanying reduction in the
market for plaintiff's original work.'" Ibid. .
As an independent ground of decision, the District
Court also concluded that Sony could not be held
liable as a contributory infringer even if the home

The District Court assumed that Sony had

constructive knowledge of the probability that the
Betamax machine would be used to record
copyrighted programs, but found that Sony merely
sold a "product capable of a variety of uses, some
of them allegedly infringing." Id. at 461. It
reasoned:
"Selling a staple article of commerce -- e.g., a
typewriter, a recorder, a camera, a photocopying
machine -- technically contributes to any infringing
use subsequently made thereof, but this kind of
'contribution,' if deemed sufficient as a basis for
liability, would expand the theory beyond
precedent, and arguably beyond judicial
management."
". . . Commerce would indeed be hampered if
manufacturers of staple items were held liable as
contributory
infringers
whenever
they
'constructively' knew that some purchasers on some
occasions would use their product
Page 464 U. S. 427
for a purpose which a court later deemed, as a
matter of first impression, to be an infringement."
Ibid.
Finally, the District Court discussed the
respondents' prayer for injunctive relief, noting that
they had asked for an injunction either preventing
the future sale of Betamax machines or requiring
that the machines be rendered incapable of
recording copyrighted works off the air. The court
stated that it had
"found no case in which the manufacturers,
distributors, retailers and advertisers of the

instrument enabling the infringement were sued by

the copyright holders,"
and that the request for relief in this case "is
unique." Id. at 465.
It concluded that an injunction was wholly
inappropriate because any possible harm to
respondents was outweighed by the fact that
"the Betamax could still legally be used to record
noncopyrighted material or material whose owners
consented to the copying. An injunction would
deprive the public of the ability to use the Betamax
for this noninfringing off-the-air recording."
Id. at 468.
The Court of Appeals' Decision
The Court of Appeals reversed the District Court's
judgment on respondents' copyright claim. It did
not set aside any of the District Court's findings of
fact. Rather, it concluded as a matter of law that the
home use of a VTR was not a fair use, because it
was not a "productive use." [Footnote 9] It therefore
held that it was unnecessary for plaintiffs to prove
any harm to the potential market for the
copyrighted works, but then observed that it seemed
clear that the cumulative effect of mass
reproduction made possible by VTR's would tend to
diminish the potential market for respondents'
works. 659 F.2d at 974.
Page 464 U. S. 428
On the issue of contributory infringement, the Court
of Appeals first rejected the analogy to staple
articles of commerce such as tape recorders or
photocopying machines. It noted that such
machines "may have substantial benefit for some
purposes" and do not "even remotely raise
copyright problems." Id. at 975. VTR's, however,
are sold "for the primary purpose of reproducing
television programming," and "[v]irtually all" such
programming is copyrighted material. Ibid. The
Court of Appeals concluded, therefore, that VTR's
were not suitable for any substantial noninfringing
use even if some copyright owners elect not to
enforce their rights.
The Court of Appeals also rejected the District
Court's reliance on Sony's lack of knowledge that
home use constituted infringement. Assuming that
the statutory provisions defining the remedies for

infringement applied also to the nonstatutory tort of

contributory infringement, the court stated that a
defendant's good faith would merely reduce his
damages liability, but would not excuse the
infringing conduct. It held that Sony was chargeable
with knowledge of the homeowner's infringing
activity because the reproduction of copyrighted
materials was either "the most conspicuous use" or
"the major use" of the Betamax product. Ibid.
On the matter of relief, the Court of Appeals
concluded that "statutory damages may be
appropriate" and that the District Court should
reconsider its determination that an injunction
would not be an appropriate remedy; and, referring
to "the analogous photocopying area," suggested
that a continuing royalty pursuant to a judicially
created compulsory license may very well be an
acceptable resolution of the relief issue. Id. at 976.

II
Article I, 8, of the Constitution provides:
"The 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 respective Writings and
Discoveries. "
Page 464 U. S. 429
The monopoly privileges that Congress may
authorize are neither unlimited nor primarily
designed to provide a special private benefit.
Rather, the limited grant is a means by which an
important public purpose may be achieved. It is
intended to motivate the creative activity of authors
and inventors by the provision of a special reward,
and to allow the public access to the products of
their genius after the limited period of exclusive
control has expired.
"The copyright law, like the patent statutes, makes
reward to the owner a secondary consideration.
In Fox Film Corp. v. Doyal, 286 U. S. 123, 286 U.
S. 127, Chief Justice Hughes spoke as follows
respecting the copyright monopoly granted by
Congress,"
"The sole interest of the United States and the
primary object in conferring the monopoly lie in the
general benefits derived by the public from the
labors of authors."

"It is said that reward to the author or artist serves

to induce release to the public of the products of his
creative genius."
United States v. Paramount Pictures, Inc., 334 U. S.
131, 334 U. S. 158 (1948).
As the text of the Constitution makes plain, it is
Congress that has been assigned the task of defining
the scope of the limited monopoly that should be
granted to authors or to inventors in order to give
the public appropriate access to their work product.
Because this task involves a difficult balance
between the interests of authors and inventors in the
control and exploitation of their writings and
discoveries on the one hand, and society's
competing interest in the free flow of ideas,
information, and commerce on the other hand, our
patent and copyright statutes have been amended
repeatedly. [Footnote 10]

as history, supports our consistent deference to

Congress when major technological innovations
alter the market for copyrighted materials. Congress
has the constitutional authority and the institutional
ability to accommodate fully the varied
permutations of competing interests that are
inevitably implicated by such new technology.
In a case like this, in which Congress has not
plainly marked our course, we must be circumspect
in construing the scope of rights created by a
legislative enactment which never contemplated
such a calculus of interests. In doing so, we are
guided by Justice Stewart's exposition of the correct
approach to ambiguities in the law of copyright:
"The limited scope of the copyright holder's
statutory monopoly, like the limited copyright
duration required by the Constitution, reflects a
balance of competing claims upon the public
interest: creative work is to be

Page 464 U. S. 430

Page 464 U. S. 432
From its beginning, the law of copyright has
developed in response to significant changes in
technology. [Footnote 11] Indeed, it was the
invention of a new form of copying equipment -the printing press -- that gave rise to the original
need for copyright protection. [Footnote 12]
Repeatedly, as new developments have
Page 464 U. S. 431
occurred in this country, it has been the Congress
that has fashioned the new rules that new
technology made necessary. Thus, long before the
enactment of the Copyright Act of 1909, 35 Stat.
1075, it was settled that the protection given to
copyrights is wholly statutory. Wheaton v. Peters, 8
Pet. 591, 33 U. S. 661-662 (1834). The remedies for
infringement "are only those prescribed by
Congress." Thompson v. Hubbard, 131 U. S.
123, 131 U. S. 151 (1889).
The judiciary's reluctance to expand the protections
afforded by the copyright without explicit
legislative guidance is a recurring theme. See, e.g.,
Teleprompter Corp. v. Columbia Broadcasting
System, Inc., 415 U. S. 394 (1974); Fortnightly
Corp. v. United Artists Television, Inc., 392 U. S.
390 (1968); White-Smith Music Publishing Co. v.
Apollo Co., 209 U. S. 1 (1908); Williams &
Wilkins Co. v. United States, 203 Ct.Cl. 74, 487
F.2d 1345 (1973), aff'd by an equally divided
Court, 420 U. S. 376 (1975). Sound policy, as well

encouraged and rewarded, but private motivation

must ultimately serve the cause of promoting broad
public availability of literature, music, and the other
arts. The immediate effect of our copyright law is to
secure a fair return for an 'author's' creative labor.
But the ultimate aim is, by this incentive, to
stimulate artistic creativity for the general public
good. 'The sole interest of the United States and the
primary object in conferring the monopoly,' this
Court has said, 'lie in the general benefits derived
by the public from the labors of authors.' Fox Film
Corp. v. Doyal, 286 U. S. 123, 286 U. S.
127. See Kendall v. Winsor, 21 How. 322, 62 U. S.
327-328; Grant v. Raymond, 6 Pet. 218, 31 U. S.
241-242. When technological change has rendered
its literal terms ambiguous, the Copyright Act must
be construed in light of this basic purpose."
Twentieth Century Music Corp. v. Aiken, 422 U. S.
151, 422 U. S. 156 (1975) (footnotes omitted).
Copyright protection "subsists . . . in original works
of authorship fixed in any tangible medium of
expression." 17 U.S.C. 102(a) (1982 ed.). This
protection has never accorded the copyright owner
complete control over all possible uses of his work.
[Footnote 13] Rather, the Copyright Act grants the
Page 464 U. S. 433

copyright holder "exclusive" rights to use and to

authorize the use of his work in five qualified ways,
including reproduction of the copyrighted work in
copies. 106. [Footnote 14] All reproductions of
the work, however, are not within the exclusive
domain of the copyright owner; some are in the
public domain. Any individual may reproduce a
copyrighted work for a "fair use"; the copyright
owner does not possess the exclusive right to such a
use. Compare 106 with 107.
"Anyone who violates any of the exclusive rights of
the copyright owner," that is, anyone who
trespasses into his exclusive domain by using or
authorizing the use of the copyrighted work in one
of the five ways set forth in the statute, "is an
infringer of the copyright." 501(a). Conversely,
anyone who is authorized by the copyright owner to
use the copyrighted work in a way specified in the
statute or who makes a fair use of the work is not an
infringer of the copyright with respect to such use.
The Copyright Act provides the owner of a
copyright with a potent arsenal of remedies against
an infringer of his work, including an injunction to
restrain the infringer from violating
Page 464 U. S. 434
his rights, the impoundment and destruction of all
reproductions of his work made in violation of his
rights, a recovery of his actual damages and any
additional profits realized by the infringer or a
recovery of statutory damages, and attorney's fees.
502-505. [Footnote 15]
The two respondents in this case do not seek relief
against the Betamax users who have allegedly
infringed their copyrights. Moreover, this is not a
class action on behalf of all copyright owners who
license their works for television broadcast, and
respondents have no right to invoke whatever rights
other copyright holders may have to bring
infringement actions based on Betamax copying of
their works. [Footnote 16] As was made clear by
their own evidence, the copying of the respondents'
programs represents a small portion of the total use
of VTR's. It is, however, the taping of respondents'
own copyrighted programs that provides them with
standing to charge Sony with contributory
infringement. To prevail, they have the burden of
proving that users of the Betamax have infringed
their copyrights, and that Sony should be held
responsible for that infringement.

III
The Copyright Act does not expressly render
anyone liable for infringement committed by
another. In contrast, the
Page 464 U. S. 435
Patent Act expressly brands anyone who "actively
induces infringement of a patent" as an infringer, 35
U.S.C. 271(b), and further imposes liability on
certain
individuals
labeled
"contributory"
infringers, 271(c). The absence of such express
language in the copyright statute does not preclude
the imposition of liability for copyright
infringements on certain parties who have not
themselves engaged in the infringing activity.
[Footnote 17] For vicarious liability is imposed in
virtually all areas of the law, and the concept of
contributory infringement is merely a species of the
broader problem of identifying the circumstances in
which it is just to hold one individual accountable
for the actions of another.
Such circumstances were plainly present in Kalem
Co. v. Harper Brothers, 222 U. S. 55 (1911), the
copyright decision of this Court on which
respondents place their principal reliance.
In Kalem, the Court held that the producer of an
unauthorized film dramatization of the copyrighted
book Ben Hur was liable for his sale of the motion
picture to jobbers, who in turn arranged for the
commercial exhibition of the film. Justice Holmes,
writing for the Court, explained:
"The defendant not only expected but invoked by
advertisement the use of its films for dramatic
reproduction
Page 464 U. S. 436
of the story. That was the most conspicuous purpose
for which they could be used, and the one for which
especially they were made. If the defendant did not
contribute to the infringement it is impossible to do
so except by taking part in the final act. It is liable
on principles recognized in every part of the law."
Id. at 222 U. S. 62-63.
The use for which the item sold in Kalem had been
"especially" made was, of course, to display the
performance that had already been recorded upon it.
The producer had personally appropriated the
copyright owner's protected work and, as the owner

of the tangible medium of expression upon which

the protected work was recorded, authorized that
use by his sale of the film to jobbers. But that use of
the film was not his to authorize: the copyright
owner possessed the exclusive right to authorize
public performances of his work. Further, the
producer personally advertised the unauthorized
public performances, dispelling any possible doubt
as to the use of the film which he had authorized.
Respondents argue that Kalem stands for the
proposition that supplying the "means" to
accomplish an infringing activity and encouraging
that activity through advertisement are sufficient to
establish liability for copyright infringement. This
argument rests on a gross generalization that cannot
withstand scrutiny. The producer in Kalem did not
merely provide the "means" to accomplish an
infringing activity; the producer supplied the work
itself, albeit in a new medium of expression. Sony
in the instant case does not supply Betamax
consumers with respondents' works; respondents
do. Sony supplies a piece of equipment that is
generally capable of copying the entire range of
programs that may be televised: those that are
uncopyrighted, those that are copyrighted but may
be copied without objection from the copyright
holder, and those that the copyright holder would
prefer not to have copied. The Betamax can be used
to
Page 464 U. S. 437
make authorized or unauthorized uses of
copyrighted works, but the range of its potential use
is much broader than the particular infringing use of
the film Ben Hur involved in Kalem. Kalem does
not support respondents' novel theory of liability.
Justice Holmes stated that the producer had
"contributed" to the infringement of the copyright,
and the label "contributory infringement" has been
applied in a number of lower court copyright cases
involving an ongoing relationship between the
direct infringer and the contributory infringer at the
time the infringing conduct occurred. In such cases,
as in other situations in which the imposition of
vicarious liability is manifestly just, the
"contributory" infringer was in a position to control
the use of copyrighted works by others, and had
authorized the use without permission from the
copyright owner. [Footnote 18] This case, however,
plainly does not fall
Page 464 U. S. 438

in that category. The only contact between Sony

and the users of the Betamax that is disclosed by
this record occurred at the moment of sale. The
District Court expressly found that
"no employee of Sony, Sonam or DDBI had either
direct involvement with the allegedly infringing
activity or direct contact with purchasers of
Betamax who recorded copyrighted works off the
air."
480 F.Supp. at 460. And it further found that
"there was no evidence that any of the copies made
by Griffiths or the other individual witnesses in this
suit were influenced or encouraged by [Sony's]
advertisements."
Ibid.
Page 464 U. S. 439
If vicarious liability is to be imposed on Sony in
this case, it must rest on the fact that it has sold
equipment with constructive knowledge of the fact
that its customers may use that equipment to make
unauthorized copies of copyrighted material. There
is no precedent in the law of copyright for the
imposition of vicarious liability on such a theory.
The closest analogy is provided by the patent law
cases to which it is appropriate to refer because of
the historic kinship between patent law and
copyright law. [Footnote 19]
Page 464 U. S. 440
In the Patent Act, both the concept of infringement
and the concept of contributory infringement are
expressly defined by statute. [Footnote 20] The
prohibition against contributory infringement is
confined to the knowing sale of a component
especially made for use in connection with a
particular patent. There is no suggestion in the
statute that one patentee may object to the sale of a
product that might be used in connection with other
patents. Moreover, the Act expressly provides that
the sale of a "staple article or commodity of
commerce suitable for substantial noninfringing
use" is not contributory infringement. 35 U.S.C.
271(c).
When a charge of contributory infringement is
predicated entirely on the sale of an article of
commerce that is used by the purchaser to infringe a

patent, the public interest in access to that article of

commerce is necessarily implicated. A
Page 464 U. S. 441
finding of contributory infringement does not, of
course, remove the article from the market
altogether; it does, however, give the patentee
effective control over the sale of that item. Indeed, a
finding of contributory infringement is normally the
functional equivalent of holding that the disputed
article is within the monopoly granted to the
patentee. [Footnote 21]
For that reason, in contributory infringement cases
arising under the patent laws, the Court has always
recognized the critical importance of not allowing
the patentee to extend his monopoly beyond the
limits of his specific grant. These cases deny the
patentee any right to control the distribution of
unpatented articles unless they are "unsuited for any
commercial noninfringing use." Dawson Chemical
Co. v. Rohm & Hass Co., 448 U. S. 176, 448 U. S.
198 (1980). Unless a commodity "has no use except
through practice of the patented method," id. at 448
U. S. 199, the patentee has no right to claim that its
distribution constitutes contributory infringement.
"To form the basis for contributory infringement,
the item must almost be uniquely suited as a
component of the patented invention." P.
Rosenberg, Patent Law Fundamentals 17.02[2]
(2d ed.1982).
"[A] sale of an article which though adapted to an
infringing use is also adapted to other and lawful
uses, is not enough to make the seller a contributory
infringer. Such a rule would block the wheels of
commerce."
Henry v. A. B. Dick Co., 224 U. S. 1, 224 U. S.
48 (1912), overruled on other grounds,
Page 464 U. S. 442
Motion Picture Patents Co. v. Universal Film Mfg.
Co., 243 U. S. 502, 243 U. S. 517 (1917).
We recognize there are substantial differences
between the patent and copyright laws. But in both
areas, the contributory infringement doctrine is
grounded on the recognition that adequate
protection of a monopoly may require the courts to
look beyond actual duplication of a device or
publication to the products or activities that make
such duplication possible. The staple article of

commerce doctrine must strike a balance between a

copyright holder's legitimate demand for effective
-- not merely symbolic -- protection of the statutory
monopoly, and the rights of others freely to engage
in substantially unrelated areas of commerce.
Accordingly, the sale of copying equipment, like
the sale of other articles of commerce, does not
constitute contributory infringement if the product
is widely used for legitimate, unobjectionable
purposes. Indeed, it need merely be capable of
substantial noninfringing uses.

IV
The question is thus whether the Betamax is
capable of commercially significant noninfringing
uses. In order to resolve that question, we need not
explore all the different potential uses of the
machine and determine whether or not they would
constitute infringement. Rather, we need only
consider whether, on the basis of the facts as found
by the District Court, a significant number of them
would be noninfringing. Moreover, in order to
resolve this case, we need not give precise content
to the question of how much use is commercially
significant. For one potential use of the Betamax
plainly satisfies this standard, however it is
understood: private, noncommercial time-shifting in
the home. It does so both (A) because respondents
have no right to prevent other copyright holders
from authorizing it for their programs, and (B)
because the District Court's factual findings reveal
that even the unauthorized home time-shifting of
respondents' programs is legitimate fair use.
Page 464 U. S. 443
A. Authorized Time-Shifting
Each of the respondents owns a large inventory of
valuable copyrights, but, in the total spectrum of
television programming, their combined market
share is small. The exact percentage is not
specified, but it is well below 10%. [Footnote 22] If
they were to prevail, the outcome of this litigation
would have a significant impact on both the
producers and the viewers of the remaining 90% of
the programming in the Nation. No doubt, many
other producers share respondents' concern about
the possible consequences of unrestricted copying.
Nevertheless the findings of the District Court make
it clear that time-shifting may enlarge the total
viewing audience, and that many producers are
willing to allow private time-shifting to continue, at
least for an experimental time period. [Footnote 23]

The District Court found:

"Even if it were deemed that home-use recording of
copyrighted material constituted infringement, the
Betamax could still legally be used to record
noncopyrighted material or material whose owners
consented to the copying. An injunction would
deprive the public of the ability to use the Betamax
for this noninfringing off-the-air recording. "
Page 464 U. S. 444
"Defendants introduced considerable testimony at
trial about the potential for such copying of sports,
religious, educational and other programming. This
included testimony from representatives of the
Offices of the Commissioners of the National
Football, Basketball, Baseball and Hockey Leagues
and Associations, the Executive Director of
National Religious Broadcasters, and various
educational communications agencies. Plaintiffs
attack the weight of the testimony offered, and also
contend that an injunction is warranted because
infringing uses outweigh noninfringing uses."
"Whatever the future percentage of legal versus
illegal home-use recording might be, an injunction
which seeks to deprive the public of the very tool or
article of commerce capable of some noninfringing
use would be an extremely harsh remedy, as well as
one unprecedented in copyright law."
480 F.Supp. at 468.
Although the District Court made these statements
in the context of considering the propriety of
injunctive relief, the statements constitute a finding
that the evidence concerning "sports, religious,
educational and other programming" was sufficient
to establish a significant quantity of broadcasting
whose copying is now authorized, and a significant
potential for future authorized copying. That
finding is amply supported by the record. In
addition to the religious and sports officials
identified explicitly by the District Court, [Footnote
24] two items in the record deserve specific
mention.
Page 464 U. S. 445
First is the testimony of John Kenaston, the station
manager of Channel 58, an educational station in
Los Angeles affiliated with the Public Broadcasting
Service. He explained and authenticated the
station's published guide to its programs. [Footnote

25] For each program, the guide tells whether

unlimited home taping is authorized, home taping is
authorized subject to certain restrictions (such as
erasure within seven days), or home taping is not
authorized at all. The Spring, 1978, edition of the
guide described 107 programs. Sixty-two of those
programs or 58% authorize some home taping.
Twenty-one of them, or almost 20%, authorize
unrestricted home taping. [Footnote 26]
Second is the testimony of Fred Rogers, president
of the corporation that produces and owns the
copyright on Mister Rogers' Neighborhood. The
program is carried by more public television
stations than any other program. Its audience
numbers over 3,000,000 families a day. He testified
that he had absolutely no objection to home taping
for noncommercial use, and expressed the opinion
that it is a real service to families to be able to
record children's programs and to show them at
appropriate times. [Footnote 27]
Page 464 U. S. 446
If there are millions of owners of VTR's who make
copies of televised sports events, religious
broadcasts, and educational programs such as
Mister Rogers' Neighborhood, and if the proprietors
of those programs welcome the practice, the
business of supplying the equipment that makes
such copying feasible should not be stifled simply
because the equipment is used by some individuals
to make unauthorized reproductions of respondents'
works. The respondents do not represent a class
composed of all copyright holders. Yet a finding of
contributory infringement would inevitably
frustrate the interests of broadcasters in reaching the
portion of their audience that is available only
through time-shifting.
Of course, the fact that other copyright holders may
welcome the practice of time-shifting does not
mean that respondents should be deemed to have
granted a license to copy their programs. Thirdparty conduct would be wholly irrelevant in an
action for direct infringement of respondents'
copyrights.
But
in
an
action
for contributory infringement against the seller of
copying equipment, the copyright holder may not
prevail unless the relief that he seeks affects only
his programs, or unless he speaks for virtually all
copyright holders with an interest in the outcome.
In this case, the record makes it perfectly clear that
there are many important producers of national and
local television programs who find nothing

objectionable about the enlargement in the size of

the television audience that results from the practice
of time-shifting for private home use. [Footnote 28]
The seller of the equipment that expands those
producers' audiences cannot be a contributory

Page 464 U. S. 450

Page 464 U. S. 447

This is not, however, the end of the inquiry, because

Congress has also directed us to consider "the effect
of the use upon the potential market for or value of
the copyrighted work." 107(4). The purpose of
copyright is to create incentives for creative effort.
Even copying for noncommercial purposes may
impair the copyright holder's ability to obtain the
rewards that Congress intended him to have. But a
use that has no demonstrable effect upon the
potential market for, or the value of, the
copyrighted work need not be prohibited in order to
protect the author's incentive to create. The
prohibition of such noncommercial uses would

infringer if, as is true in this case, it has had no

direct involvement with any infringing activity.
B. Unauthorized Time-Shifting
Even unauthorized uses of a copyrighted work are
not necessarily infringing. An unlicensed use of the
copyright is not an infringement unless it conflicts
with one of the specific exclusive rights conferred
by the copyright statute. Twentieth Century Music
Corp. v. Aiken, 422 U.S. at 422 U. S. 154-155.
Moreover, the definition of exclusive rights in
106 of the present Act is prefaced by the words
"subject to sections 107 through 118." Those
sections describe a variety of uses of copyrighted
material that "are not infringements of copyright"
"notwithstanding the provisions of section 106."
The most pertinent in this case is 107, the
legislative endorsement of the doctrine of "fair
use." [Footnote 29]
Page 464 U. S. 448
That section identifies various factors [Footnote 30]
that enable a court to apply an "equitable rule of
reason" analysis to particular claims of
infringement. [Footnote 31] Although not
conclusive, the first
Page 464 U. S. 449
factor requires that "the commercial or nonprofit
character of an activity" be weighed in any fair use
decision. [Footnote 32] If the Betamax were used to
make copies for a commercial or profitmaking
purpose, such use would presumptively be unfair.
The contrary presumption is appropriate here,
however, because the District Court's findings
plainly establish that time-shifting for private home
use must be characterized as a noncommercial,
nonprofit activity. Moreover, when one considers
the nature of a televised copyrighted audiovisual
work, see 17 U.S.C. 107(2) (1982 ed.), and that
time-shifting merely enables a viewer to see such a
work which he had been invited to witness in its
entirety free of charge, the fact that

the entire work is reproduced, see 107(3), does

not have its ordinary effect of militating against a
finding of fair use. [Footnote 33]

Page 464 U. S. 451

merely inhibit access to ideas without any
countervailing benefit. [Footnote 34]
Thus, although every commercial use of
copyrighted material is presumptively an unfair
exploitation of the monopoly privilege that belongs
to the owner of the copyright, noncommercial uses
are a different matter. A challenge to a
noncommercial use of a copyrighted work requires
proof either that the particular use is harmful or
that, if it should become widespread, it would
adversely affect the potential market for the
copyrighted work. Actual present harm need not be
shown; such a requirement would leave the
copyright holder with no defense against
predictable damage. Nor is it necessary to show
with certainty that future harm will result. What is
necessary is a showing by a preponderance of the
evidence that some meaningful likelihood of future
harm exists. If the intended use is for commercial
gain, that likelihood may be presumed. But if it is
for a noncommercial purpose, the likelihood must
be demonstrated.
In this case, respondents failed to carry their burden
with regard to home time-shifting. The District
Court described respondents' evidence as follows:
"Plaintiffs' experts admitted at several points in the
trial that the time-shifting without librarying would
result in 'not a great deal of harm.' Plaintiffs'
greatest concern about time-shifting is with 'a point
of important philosophy that transcends even

commercial judgment.' They fear that, with any

Betamax usage, 'invisible boundaries' are passed:
'the copyright owner has lost control over his
program.'"
480 F.Supp. at 467.
Page 464 U. S. 452
Later in its opinion, the District Court observed:
"Most of plaintiffs' predictions of harm hinge on
speculation about audience viewing patterns and
ratings, a measurement system which Sidney
Sheinberg, MCA's president, calls a 'black art'
because of the significant level of imprecision
involved in the calculations."
Id. at 469. [Footnote 35]
There was no need for the District Court to say
much about past harm. "Plaintiffs have admitted
that no actual harm to their copyrights has occurred
to date." Id. at 451.
On the question of potential future harm from timeshifting, the District Court offered a more detailed
analysis of the evidence. It rejected respondents'
"fear that persons 'watching' the original telecast of
a program will not be measured in the live
audience, and the ratings and revenues will
decrease"
by observing that current measurement technology
allows the Betamax audience to be reflected. Id. at
466. [Footnote 36] It rejected respondents'
prediction "that live television
Page 464 U. S. 453
or movie audiences will decrease as more people
watch Betamax tapes as an alternative," with the
observation that "[t]here is no factual basis for [the
underlying] assumption." Ibid. [Footnote 37] It
rejected respondents' "fear that time-shifting will
reduce audiences for telecast reruns," and
concluded instead that "given current market
practices, this should aid plaintiffs, rather than harm
them." Ibid. [Footnote 38] And it declared that
respondents' suggestion that "theater or film rental
exhibition of a program will suffer because of timeshift recording of that program" "lacks merit." Id. at
467. [Footnote 39]

Page 464 U. S. 454

After completing that review, the District Court
restated its overall conclusion several times, in
several different ways. "Harm from time-shifting is
speculative and, at best, minimal." Ibid.
"The audience benefits from the time-shifting
capability have already been discussed. It is not
implausible that benefits could also accrue to
plaintiffs, broadcasters, and advertisers, as the
Betamax makes it possible for more persons to
view their broadcasts."
Ibid. "No likelihood of harm was shown at trial, and
plaintiffs admitted that there had been no actual
harm to date." Id. at 468-469.
"Testimony at trial suggested that Betamax may
require adjustments in marketing strategy, but it did
not establish even a likelihood of harm."
Id. at 469.
"Television production by plaintiffs today is more
profitable than it has ever been, and, in five weeks
of trial, there was no concrete evidence to suggest
that the Betamax will change the studios' financial
picture."
Ibid.
The District Court's conclusions are buttressed by
the fact that to the extent time-shifting expands
public access to freely broadcast television
programs, it yields societal benefits. In Community
Television of Southern California v. Gottfried, 459
U. S. 498, 459 U. S. 508, n. 12 (1983), we
acknowledged the public interest in making
television broadcasting more available. Concededly,
that interest is not unlimited. But it supports an
interpretation of the concept of "fair use" that
requires the copyright holder to demonstrate some
likelihood of harm before he may condemn a
private act of time-shifting as a violation of federal
law.
When these factors are all weighed in the "equitable
rule of reason" balance, we must conclude that this
record amply
Page 464 U. S. 455
supports the District Court's conclusion that home
time-shifting is fair use. In light of the findings of

Los
Angeles
News
Service, Plaintiffcounter-defendantPage 464 U. S. 456
appellee,robert Tur,
In summary, the record and findings of the District
Court lead us to two conclusions. First, Sony Counter-defendantdemonstrated a significant likelihood that
v. Frank
substantial numbers of copyright holders who appellee,
license their works for broadcast on free television
Charles
would not object to having their broadcasts time- Tullo;
shifted by private viewers. And second, respondents
Defendantsfailed to demonstrate that time-shifting would cause Bickert;
any likelihood of nonminimal harm to the potential appellants,audio
market for, or the value of, their copyrighted works.
The Betamax is, therefore, capable of substantial Video
Reporting
noninfringing uses. Sony's sale of such equipment
to the general public does not constitute Services;
Defendantcontributory
infringement
of
respondents'
counter-claimantcopyrights.
appellant, 973 F.2d
V
791 (9th Cir. 1992)
"The direction of Art. I is that Congress shall have
the District Court regarding the state of the
empirical data, it is clear that the Court of Appeals
erred in holding that the statute as presently written
bars such conduct. [Footnote 40]

the power to promote the progress of science and Annotate this Case
the useful arts. When, as here, the Constitution is
permissive, the sign of how far Congress has
U.S. Court of Appeals for the Ninth Circuit chosen to go can come only from Congress."
973 F.2d 791 (9th Cir. 1992)
Deepsouth Packing Co. v. Laitram Corp., 406 U. S.
518, 406 U. S. 530 (1972).
One may search the Copyright Act in vain for any
sign that the elected
representatives of the millions of people who watch
television every day have made it unlawful to copy
a program for later viewing at home, or have
enacted a flat prohibition against the sale of
machines that make such copying possible.
It may well be that Congress will take a fresh look
at this new technology, just as it so often has
examined other innovations in the past. But it is not
our job to apply laws that have not yet been written.
Applying the copyright statute, as it now reads, to
the facts as they have been developed in this case,
the judgment of the Court of Appeals must be
reversed.
It is so ordered.

Argued

and Submitted Oct.

Decided Aug. 27, 1992

7,

1991.

Jeffrey L. Graubart, Los Angeles, Cal., for

defendant-counter-claimant-appellant.
Elliot S. Ganezer, Ganezer Law Firm, Santa
Monica, Cal., for plaintiff-counter-defendantappellee.
Appeal from the United States District Court for the
Central District of California.
Before: BROWNING, ALARCON
NELSON, Circuit Judges.
JAMES R. BROWNING, Circuit Judge.

and

T.G.

II.
Videotapes as Original Works of Authorship
Los Angeles News Service ("LANS") records
newsworthy events on videotape and licenses
television stations and networks to use all or
segments of the unedited ("raw") footage in edited
broadcast news stories. Audio Video Reporting
Services ("AVRS") provides a video "news
clipping" service: It monitors television news
programs, records them on videotape and sells
copies of all or segments of the tapes to interested
individuals and businesses.
LANS videotaped the sites of an airplane crash and
a train wreck, registered its copyrights to the tapes,
and licensed certain Los Angeles-area television
stations to use them on news programs. AVRS made
video recordings of these news programs, which
included portions of LANS's footage, and marketed
the recordings.
LANS sued, claiming copyright infringement.
AVRS counterclaimed, alleging LANS had
fraudulently induced AVRS to provide LANS with
copies of AVRS recordings by falsely promising to
pay for the tapes.1 After a bench trial, the district
court entered judgment for LANS on the copyright
infringement claims and awarded statutory damages
of $10,000 for each infringement, a total of
$20,000. The court found for AVRS on its fraud
claim and awarded AVRS $346.13.
AVRS appeals, making the following claims: (1)
the raw videotapes are not sufficiently original to
merit copyright protection; (2) the public's First
Amendment right of access to videotapes of
newsworthy events, such as the crash and the
wreck, precludes copyright protection for the tapes;
(3) even if the tapes are copyrightable, AVRS made
"fair use" of them and is therefore shielded from
liability for copyright infringement; (4) even if
AVRS would otherwise be liable for copyright
infringement, LANS's "unclean hands" barred
recovery; (5) having found AVRS liable for
copyright infringement, the court should have
permanently enjoined AVRS from copying LANS's
copyrighted material without license from LANS,
fixed the terms of a license that would permit AVRS
to copy LANS's copyrighted material, and required
LANS to notify AVRS when LANS's copyrighted
material was broadcast; (6) the damage award was
excessive; and (7) a videotape of the train wreck
should not have been admitted into evidence. We
affirm.

Raw

AVRS claims LANS's raw videotapes, as opposed

to the edited news stories in which portions of those
tapes were combined with other footage, narrative,
interview excerpts and graphics to form a television
news "package," are not "original works of
authorship" and thus do not merit copyright
protection under 102(a) of the Copyright Act of
1976, 17 U.S.C. 101-914. Whether the raw tapes
are sufficiently original to merit copyright
protection is a mixed question of law and fact that
we examine de novo. See Harper House, Inc. v.
Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir.
1989).
AVRS argues LANS's tapes merely captured
whatever was before the camera, involved no
creativity or intellectual input, and so are not
original works deserving copyright protection. The
Supreme Court rejected a similar argument more
than 100 years ago. In Burrow-Giles Lithographic
Co. v. Sarony, 111 U.S. 53, 4 S. Ct. 279, 28 L. Ed.
349 (1884), the plaintiff argued a photograph of the
author Oscar Wilde was not original and therefore
not copyrightable because a "photograph is the
mere mechanical reproduction of the physical
features or outlines of some object animate or
inanimate, and involves no originality of thought or
any novelty in the intellectual operation connected
with its visible reproduction in shape of a picture."
Id. at 59, 4 S. Ct. at 281. The Court did not decide
whether all photographs reflected the necessary
originality, id., but held the Wilde photograph
clearly was original because of the creative and
intellectual decisions involved in producing it:
[The court below found that the photograph was] a
"useful, new, harmonious, characteristic, and
graceful picture, and that plaintiff made the same ...
entirely from his own original mental conception, to
which he gave visible form by posing the said
Oscar Wilde in front of the camera, selecting and
arranging the costume, draperies, and other various
accessories in said photograph, arranging the
subject so as to present graceful outlines, arranging
and disposing the light and shade, [and] suggesting
and evoking the desired expression...."
These findings, we think, show this photograph to
be an original work of art, the product of plaintiff's
intellectual invention, of which plaintiff is the
author
....
Id. at 60, 4 S. Ct. at 282.

Thirty-seven years later, Judge Learned Hand

suggested the question left open in Burrow-Giles-whether all photographs are sufficiently original by
their nature to merit copyright protection--had been
answered in the affirmative by Bleistein v.
Donaldson Lithographing Co., 188 U.S. 239, 23 S.
Ct. 298, 47 L. Ed. 460 (1903), which held that
chromolithographs that depicted real scenes and
people, as photographs do, were copyrightable
because they were "the personal reaction of an
individual upon nature. Personality always contains
something unique. It expresses its singularity even
in handwriting, and a very modest grade of art has
in it something irreducible, which is one man's
alone. That something he may copyright...." Id. at
250, 23 S. Ct. at 300. In Jewelers' Circular
Publishing Co. v. Keystone Publishing Co., 274 F.
932, 934 (S.D.N.Y. 1921), aff'd, 281 F. 83 (2d Cir.
1922),
Judge
Hand
said,
"Burrow-Giles
[Lithographic] Co. v. Sarony ... left open an
intimation that some photographs might not be
protected.... I think that ... Bleistein v. Donaldson
Lithographing Co. ... rules, because no photograph,
however simple, can be unaffected by the personal
influence of the author, and no two will be
absolutely alike."Professor Nimmer's treatise
reports that Judge Hand's statement of the law "has
become the prevailing view, so that [almost] any ...
photograph may claim the necessary originality to
support a copyright merely by virtue of the
photographers' personal choice of subject matter,
angle of photograph, lighting, and determination of
the precise time when the photograph is to be
taken." 1 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright ("Nimmer") 2.08 [E], at 2126.3 (1992 ed.) (footnote omitted).2 We have
stated before that the courts have recognized
repeatedly that the creative decisions involved in
producing a photograph may render it sufficiently
original to be copyrightable and "have carefully
delineated
selection
of
subject,
posture,
background, lighting, and perhaps even perspective
alone as protectible elements of a photographer's
work." United States v. Hamilton, 583 F.2d 448,
452 (9th Cir. 1978); see also Time, Inc. v. Bernard
Geis Assocs., 293 F. Supp. 130, 142-43 (S.D.N.Y.
1968) (amateur photographer's raw footage of the
assassination of President John Kennedy was
sufficiently original because of the creative effort
involved in selecting type of camera, film, lens,
area in which to shoot, time to film, and position of
camera).
Whether or not every photograph or raw videotape
is original and therefore copyrightable, it is clear
from the record in this case that the preparation of

the two videotapes at issue required the intellectual

and creative input entitled to copyright protection.3
The district court so concluded after hearing
testimony, from the operator of the video camera
and the pilot of the helicopter in which the camera
operator flew, regarding the production of LANS's
news videotapes in general and the tapes in this
case in particular. The witnesses described the
initial decisions about the newsworthiness of the
events and how best to tell the stories succinctly
and effectively; the selections of camera lenses,
angles and exposures; the choices of the heights and
directions from which to tape and what portions of
the events to film and for how long. The camera
operator described herself as "an artist. I use a
paintbrush. I use the camera to tell a story."
AVRS's reliance on Cable News Network, Inc. v.
Video Monitoring Services of America, Inc.
("CNN"), 940 F.2d 1471, vacated, 949 F.2d 378
(11th Cir. 1991), to support its contention that under
Feist Publications, Inc. v. Rural Telephone Service
Co., Inc., --- U.S. ----, 111 S. Ct. 1282, 113 L. Ed.
2d 358 (1991), the videotapes did not possess the
required originality, is misplaced.4 Feist stated the
"requisite level of creativity is extremely low; even
a slight amount will suffice. The vast majority of
works make the grade quite easily, as they possess
some creative spark, 'no matter how crude, humble
or obvious' it might be." Feist, --- U.S. at ----, 111
S. Ct. at 1287 (citation omitted). Feist held only that
a "garden-variety" telephone directory listing
subscribers alphabetically by surname was not
sufficiently original because the selection and
arrangement was "entirely typical" and "devoid of
even the slightest trace of creativity." Id. --- U.S. at
----, 111 S. Ct. at 1296-97. The Court did not
disavow the century-old proposition that
photographs may be copyrightable as the original
products of creative and artistic decisions; rather,
the Court explicitly reaffirmed Burrow-Giles,
stating that " [t]he originality requirement
articulated [therein] remains the touchstone of
copyright protection today." Id., --- U.S. at ----, 111
S. Ct. at 1288.
III. First Amendment Preclusion of Copyright
Protection
AVRS contends that even if the tapes are original
enough to merit copyright protection, we should
adopt a bright-line rule that no videotape of a
newsworthy event is copyrightable because its
creator's proprietary interest must give way to the
public's First Amendment right of access to
information.

Copyright law incorporates First Amendment goals

by ensuring that copyright protection extends only
to the forms in which ideas and information are
expressed and not to the ideas and information
themselves. " [T]he idea-expression dichotomy ...
serves to accommodate the competing interests of
copyright and the first amendment. The
'marketplace of ideas' is not limited by copyright
because copyright is limited to protection of
expression." Sid & Marty Krofft Television Prods.,
Inc. v. McDonald's Corp. ("Krofft"), 562 F.2d 1157,
1170 (9th Cir. 1977); see also Harper & Row,
Publishers, Inc. v. Nation Enters., 471 U.S. 539,
556, 105 S. Ct. 2218, 2228, 85 L. Ed. 2d 588 (1985)
("copyright's idea/expression dichotomy 'strike [s] a
definitional balance between the First Amendment
and the Copyright Act by permitting free
communication of facts while still protecting an
author's expression' " (citation omitted)).
First Amendment concerns are also addressed in the
copyright field through the "fair use" doctrine,
discussed in part IV of this opinion. As we will
note, First Amendment considerations are relevant
in determining whether the purpose of copying a
work and the nature of the work copied militate in
favor of finding a given use of a particular work to
be a "fair use," for which no liability should be
imposed.
Professor Nimmer has suggested the ideaexpression dichotomy and the fair use doctrine may
not adequately protect First Amendment interests in
some circumstances. 1 Nimmer 1.10 [C], at 1-81.
Citing the exclusive photographs of the My Lai
massacre during the Vietnam War and the Zapruder
home movie of the assassination of President John
Kennedy as examples, Nimmer proposes that
"where the 'idea' of a work contributes almost
nothing to the democratic dialogue, and it is only its
expression which is meaningful," copyright
protection of the expression should be limited in the
interest of public access to information necessary to
effective public dialogue. Id. at 1-82--1-84. Nimmer
explains:
No amount of words describing the "idea" of the
massacre could substitute for the public insight
gained through the photographs. The photographic
expression, not merely the idea, became essential if
the public was to fully understand what occurred in
that tragic episode. It would be intolerable if the
public's comprehension of the full meaning of My
Lai could be censored by the copyright owner of the
photographs....

Similarly, in the welter of conflicting versions of

what happened that tragic day in Dallas, the
Zapruder film gave the public authoritative answers
that it desperately sought; answers that no other
source could supply with equal credibility. Again, it
was only the expression, not the idea alone, that
could adequately serve the needs of an enlightened
democratic dialogue.
Id. at 1-83--1-84.
Nimmer recognizes, however, that denying
copyright protection to news pictures might defeat
the ultimate First Amendment goal of greater public
access to information by inhibiting or destroying
the business of news photography. Id. at 1-84.1--185. The treatise therefore suggests a news
photograph in which idea and expression are
inseparable should be subject to a compulsory
licensing scheme unless within a month of its
making, the photograph appears in the newspapers,
magazines or television news programs servicing a
given area. Id. at 1-85.5
Because there was no showing that other depictions
and reports of the plane crash and train wreck were
unavailable or omitted information vital to the
public understanding of the events, and because the
record establishes that LANS's tapes were shown on
local television programs immediately after the
events and thus were freely available to the public,
we conclude the problem perceived by Professor
Nimmer was not present in this case, and we reject,
as indeed would Professor Nimmer, AVRS's
contention that the First Amendment precludes
liability for infringement of LANS's copyrights.
AVRS contends that if the videotapes are
copyrightable, AVRS's use of them is protected by
the doctrine of fair use, which " 'allows a holder of
the privilege to use copyrighted material in a
reasonable manner without the consent of the
copyright owner.' " Lewis Galoob Toys, Inc. v.
Nintendo of America, Inc., 964 F.2d 965, 969 (9th
Cir. 1992) (citation omitted). Fair use is a mixed
question of law and fact. Harper & Row, 471 U.S.
at 560, 105 S. Ct. at 2230. Where the district court
has found facts sufficient to evaluate each of the
statutory factors considered in determining fair use,
as did the court here, we may determine as a matter
of law whether the challenged use is a fair one. Id.
Congress has identified four nonexclusive factors as
"especially relevant" in determining fair use. Id.
The Copyright Act provides:
[T]he fair use of a copyrighted work ... for purposes
such as criticism, comment, news reporting,

teaching ..., scholarship, or research, is not an

infringement of copyright. In determining whether
the use made of a work in any particular case is a
fair use the factors to be considered shall include-(1) the purpose and character of the use, including
whether such use is of a commercial nature or is for
nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion
used in relation to the copyrighted work as a whole;
and
(4) the effect of the use upon the potential market
for or value of the copyrighted work.
17 U.S.C. 107.
(1) AVRS argues the district court erred in finding
AVRS's use of the tapes was not a fair use because
the use was commercial in character. AVRS
maintains its clients used the tapes for "research,
scholarship and private study," and therefore
AVRS's use must be considered fair in light of Sony
Corp. of America v. Universal City Studios,
Inc., 464 U.S. 417, 104 S. Ct. 774, 78 L. Ed. 2d 574
(1984).
Even assuming AVRS's representation of its clients'
use of the tapes to be accurate, Sony does not
dictate the result for which AVRS argues. Sony held
distributors of videotape recorders ("VTRs") were
not vicariously liable for copyright infringements
allegedly committed by VTR purchasers because
VTRs could be used for "private, noncommercial
time-shifting [taping for later viewing] in the
home," id. at 442, 104 S. Ct. at 789, and such a
private, noncommercial, nonprofit activity is
presumptively a fair use, id. at 449, 104 S. Ct. at
792.
Unlike the claim against the VTR distributors
involved in Sony, LANS's claim against AVRS is
not that AVRS is vicariously liable for alleged
infringements by its customers but that it is directly
liable for its own infringements. The difference is
crucial: Under Sony, a VTR owner who tapes a
copyrighted movie broadcast over a public
television station to watch at home at a later time is
protected by the fair use doctrine, but a VTR owner
who tapes the movie to sell copies to others without
the copyright owner's consent is subject to a range
of civil and criminal sanctions. See, e.g., id. at 434
n. 15, 104 S. Ct. at 784 n. 15 ("anyone who
willfully infringes the copyright to reproduce a
motion picture for purposes of commercial
advantage or private financial gain is subject to
substantial criminal penalties"). The fact that the

VTR owner's customer buys the tape to watch the

movie at home at a convenient time will not shield
the VTR owner from liability; the ultimate use to
which the customer puts the tape is irrelevant, as is
the use AVRS's customers make of the tapes AVRS
sells.
Moreover, if AVRS had been sued on a theory of
vicarious liability, AVRS's clients' use of LANS's
footage for "research, scholarship and private
study" would not automatically be deemed fair. The
four statutory factors must still be considered. For
the same reason, AVRS's argument that its use of
the tapes was fair as a matter of law because its
purpose was "private news reporting" is unavailing.
Even if AVRS's characterization of its purpose was
correct, it would not be dispositive:
News reporting is one of the examples enumerated
in 107 to "give some idea of the sort of activities
the courts might regard as fair use under the
circumstances." This listing was not intended ... to
single out any particular use as presumptively a
"fair" use.... The fact that an article arguably is
"news" and therefore a productive use is simply one
factor in a fair use analysis.
Harper & Row, 471 U.S. at 561, 105 S. Ct. at 2231
(citations omitted). In any case, AVRS is no more a
"news reporter" than the VTR owner who tapes a
publicly broadcast movie is a filmmaker.
AVRS's purposes are "unabashedly commercial."
Pacific & S. Co., Inc. v. Duncan ("Duncan"), 744
F.2d 1490, 1496 (11th Cir. 1984) ("Of course, every
commercial exchange of goods and services
involves both the giving of the good or service and
the taking of the purchase price. The fact that [the
defendant] focuses on the giving rather than the
taking cannot hide the fact that profit is its primary
motive for making the exchange."). In Sony, the
Court emphasized that if a VTR owner copied
material previously broadcast over the public
airwaves for a commercial or profit-making
purpose, that use "would presumptively be unfair."
Sony, 464 U.S. at 449, 104 S. Ct. at 792. This factor
weighs against AVRS.
(2) The second factor bearing on the availability of
the fair use exception is the nature of the
copyrighted work--here, videotapes of news events.
"The law generally recognizes a greater need to
disseminate factual works than works of fiction or
fantasy." Harper & Row, 471 U.S. at 563, 105 S. Ct.
at 2232; see also Sony, 464 U.S. at 454, 104 S. Ct.
at 795 (interest in expanding public access to
television broadcasting is factor to be considered in

determining fair use); Duncan, 744 F.2d at 1497

(the "importance to society of the news could affect
the definition of a fair use for a number of
reasons"). This factor weighs in AVRS's favor.6

news programs does not matter, for Section 107 [of

the Copyright Act] looks to the 'potential market' in
analyzing the effects of an alleged infringement.").
This factor also weighs against AVRS.

(3) AVRS contends the third factor, the amount and

substantiality of the portion used in relation to the
copyrighted work as a whole, also weighs in its
favor because AVRS copied only a small portion of
LANS's copyrighted footage: the "clips" included in
the television newscasts AVRS recorded. Copying
even a small portion of a copyrighted work may
exceed the boundaries of fair use if the material
taken is the "heart" of the work. See Harper & Row,
471 U.S. at 564-65, 105 S. Ct. at 2232-33 (while
words quoted by copyright infringers were "an
insubstantial portion" of President Ford's
unpublished memoirs, they were the "heart of the
book" in that they were among the most
"interesting," "moving" and "powerful" passages).

Only one of the four statutory factors (the nature of

the copyrighted work) argues in favor of classifying
AVRS's unauthorized use of LANS's copyrighted
material as fair. The remainder (the commercial
character of the use, the use of the most valuable
part of the material, and the adverse impact upon
LANS's potential market) argue strongly to the
contrary. On balance, we conclude that the doctrine
of fair use does not protect AVRS from liability for
infringing LANS's copyrights.8

Although AVRS copied only a small part of the raw

footage shot by LANS, it was the most valuable
part of that footage. In preparing a newscast, a
television station selects the most effective and
illustrative shots from the raw footage available.
Thus the news programs AVRS copied included
what LANS's customers thought was the best of the
LANS footage--its "heart." The third factor weighs
against AVRS.7
(4) The fourth factor, the effect of the use upon the
potential market for or value of the copyrighted
work, "is undoubtedly the single most important
element of fair use." Harper & Row, 471 U.S. at
566, 105 S. Ct. at 2233. This factor militates against
a finding of fair use if there is a "showing by a
preponderance of the evidence that some
meaningful likelihood of future harm exists. If the
intended use is for commercial gain, that likelihood
may be presumed." Sony, 464 U.S. at 451, 104 S.
Ct. at 793 (emphasis deleted).
Although the AVRS and LANS markets are not
identical--AVRS sells edited news stories copied
from television news programs to individuals and
businesses while LANS licenses television stations
to use its raw footage in producing news programs-there is an overlap between the AVRS market and
the potential LANS market. At least some AVRS
customers might choose to buy raw footage from
LANS if they could not purchase edited news
stories from AVRS, and LANS might choose to sell
the raw footage to them. Cf. Duncan, 744 F.2d at
1496 (" [The news clipping service] uses the
broadcasts for a purpose that [the broadcaster]
might use for its own benefit. The fact that [the
broadcaster] does not actively market copies of the

AVRS contends the district court erred by failing to

find LANS was barred from prevailing on its
copyright claim because of its "unclean hands."
"The application of the unclean hands doctrine
raises primarily a question of fact." Dollar Sys., Inc.
v. Avcar Leasing Sys., Inc., 890 F.2d 165, 173 (9th
Cir. 1989). We review factual findings for clear
error. Lewis Galoob Toys, at 967.
AVRS maintains LANS should be barred from
recovering for AVRS's copyright infringement
because LANS induced AVRS to provide LANS
with copies of videotapes at issue in this litigation
by giving AVRS a check for $346.13 on which
LANS then stopped payment. Arguably, this
behavior could constitute unclean hands. See 3
Nimmer 13.09 [B], at 13-149--13-150 (defense of
unclean hands has been recognized where plaintiff
"obtained information as to the nature of
defendant's work through unfair means"). However,
the defense is rarely effective, id. at 13-148, and is
properly denied when the "plaintiff's transgression
is of an ... inconsequential nature," id. at 13-150
(footnote omitted). The district court did not err in
concluding LANS's behavior was not sufficiently
serious to bar it from recovery.
AVRS contends the district court should have
granted LANS's request for an injunction barring
AVRS from copying LANS's copyrighted material
without a license, and should have fixed the terms
of a license that would permit AVRS to copy
LANS's copyrighted material and ordered LANS to
notify AVRS when LANS's copyrighted material
was broadcast. AVRS opposed LANS's request
initially but changed its position when the district
court ruled in LANS's favor on the merits. LANS
now opposes the injunctive relief it originally
sought.
The district court had discretion to grant the
injunction LANS requested but had no obligation to

do so after LANS abandoned its request. Cf.

Universal City Studios, Inc. v. Sony Corp. of
America, 659 F.2d 963, 976 (9th Cir. 1981) (citing
Nimmer for proposition it would be abuse of
discretion to deny plaintiff's request for permanent
injunction after liability and threat of continuing
infringement had been established), rev'd on other
grounds, 464 U.S. 417, 104 S. Ct. 774, 78 L. Ed. 2d
574 (1984). Neither was the court required to
compel LANS to grant AVRS license to copy
LANS's copyrighted material nor to protect AVRS
from the possibility that without the notification
provision AVRS sought, it might inadvertently copy
LANS's copyrighted material and thus become
liable for further substantial damages. See
Universal City Studios, 659 F.2d at 976 ("In
fashioning relief, the district court should not be
overly concerned with the prospective harm to
[defendant]. A defendant has no right to expect a
return on investment from activities which violate
the copyright laws. Once a determination has been
made that an infringement is involved, the
continued profitability of [defendant's] business [ ]
is of secondary concern.").9
AVRS claims that because it had a good faith belief
in the legality of copying the newscasts containing
LANS's copyrighted material, the district court
erred by awarding more than minimal damages.
AVRS relies on 17 U.S.C. 504(c) (2), which
provides that " [i]n a case where the infringer
sustains the burden of proving, and the court finds,
that such infringer was not aware and had no reason
to believe that his or her acts constituted an
infringement of copyright, the court i [n] its
discretion may reduce the award of statutory
damages to a sum of not less than $200." The
district court did not find AVRS "had no reason to
believe" its acts did not constitute infringement.
Even if the court had so found, 504(c) (2) does
not mandate a nominal award. On this record, the
district court did not abuse its discretion by
declining to reduce the award.10
Finally, AVRS argues the district court erred by
admitting a videotape of the train wreck into
evidence. " [E]videntiary rulings are reviewed for
abuse of discretion and will not be reversed absent
prejudice." Roberts v. College of the Desert, 870
F.2d 1411, 1418 (9th Cir. 1988). AVRS argues it
was prejudiced because there would have been no
evidence that AVRS infringed LANS's copyright to
the footage of the train wreck without the tape.
AVRS is incorrect. The videographer who shot the
footage testified at trial that she saw her video
broadcast on a local channel; another LANS
employee testified the station that broadcast on that

channel had been licensed to use the footage; and

AVRS's log sheets showed AVRS sold a copy of
that station's newscast from the day in question to
the Southern Pacific Transportation Company,
whose train derailed in the wreck. This evidence
was sufficient to permit the trier of fact to infer
AVRS sold a copy of a news program containing
LANS's copyrighted footage of the train wreck
without LANS's consent, thus infringing LANS's
copyright. Assuming error, AVRS was not
prejudiced.
AFFIRMED.11
1

LANS obtained copies of the infringing tapes by

presenting AVRS with a $346.13 check on which
LANS later stopped payment
2

The exceptions Nimmer would recognize do not

apply in this case. See id. at 2-126.3--2-126.7
(suggesting a photograph of a copyrighted
photograph would not be copyrightable, nor would
a photograph that duplicated exactly every single
element of a copyrighted photograph)
3

We do not imply the mere time and effort LANS

invested in making the videotapes entitle the tapes
to copyright protection; originality in the work
product is required. See Feist Publications, Inc. v.
Rural Tel. Serv. Co., Inc., --- U.S. ----, ---- - ----,
111 S. Ct. 1282, 1291-92, 113 L. Ed. 2d 358 (1991)
(rejecting the "sweat of the brow" doctrine that held
mere industrious compilation deserving of
copyright even if the compilation was not original)
4

CNN is not precedential even in the Eleventh

Circuit since it was vacated for reconsideration by
the en banc court. See Ierna v. Arthur Murray Int'l,
Inc., 833 F.2d 1472, 1475 n. 4 (11th Cir. 1987)
(opinion vacated on rehearing is not binding
precedent). The en banc court dismissed the appeal.
Cable News Network, Inc. v. Video Monitoring
Servs. of America, Inc., 959 F.2d 188 (11th Cir.

1992) (en banc) (district court had entered

permanent injunction which was not before the
court so appeal was dismissed as it would not be
judicious to grant relief sought)
In any case, the CNN panel considered an
injunction barring the copying of any portion of an
entire newscast, which consisted of "various news
stories, prerecorded segments, interviews, and
weather reports" which themselves were
"preexisting, collected and assembled" works,
CNN, 940 F.2d at 1485, a very different issue from
the copyrightability of raw footage that may be
used in such a newscast. CNN found the injunction
too broad because the newscast was a compilation
of preexisting materials, see 17 U.S.C. 101, and
so merited copyright protection only to the extent
the selection and arrangement of those materials
was original. CNN, 940 F.2d at 1485-86; see also
17 U.S.C. 103(b) ("The copyright in a
compilation ... extends only to the material
contributed by the author of such work, as
distinguished from the preexisting material
employed in the work...."). The tapes at issue in this
case were not compilations of preexisting works or
data; they were preexisting creative works that were
incorporated into the kind of compilatory news
programs the CNN panel discussed.
5

No court has adopted Nimmer's proposal. Those

that have discussed it have found it inapplicable to
the facts before them. See, e.g., Krofft, 562 F.2d at
1171 & n. 16 (defendants infringed by producing
"McDonaldland"
television
commercials
substantially similar to plaintiffs' "H.R. Pufnstuf"
children's television show; court found there "may
be certain rare instances when first amendment
considerations will operate to limit copyright
protection for graphic expressions of newsworthy
events" but Nimmer exception was inapplicable
because plaintiffs' work did not fit Nimmer's
definition of a news photograph); Roy Export Co.
Estab. of Vaduz v. Columbia Broadcasting Sys.,
Inc., 672 F.2d 1095, 1100 (2d Cir. 1982) (defendant
CBS infringed by including copyrighted film clips
from several Charlie Chaplin movies in a television
biography of the comedian; court stated "even if we
were inclined to recognize some narrow exception
[such as the one Nimmer suggests] on extraordinary
facts, we would still conclude that the facts in this
case could not support the invention or application
of even a limited privilege" because the "showing

of copyrighted films was not essential to CBS's

news report of Charlie Chaplin's death or to its
assessment of his place in history"); Iowa State
Univ. Research Found., Inc. v. American
Broadcasting Cos., Inc., 621 F.2d 57, 61 n. 6 (2d
Cir. 1980) (defendant ABC infringed by including
in its film biography of an Olympic wrestler
portions of an earlier film biography of the wrestler
produced by two university students; court
recognized that in the "almost unique instance" of
the Zapruder film, "it is at least arguable that the
informational value of that film cannot be separated
from the photographer's expression" but "such
situations are rare" and the student film at issue
"does not fall within this limited category"); Pacific
& S. Co., Inc. v. Duncan, 572 F. Supp. 1186, 1193
(N.D. Ga. 1983) (defendant, a video monitoring
service like AVRS, infringed television station's
copyright in a news feature about a "fitness trail" at
a local college; court found Nimmer's hypothesis
"theoretically provocative" but inapplicable because
the "soft news" story, "though informational, hardly
fits in a category with film of the My Lai massacre"
and because both the story and the trail itself were
available for viewing), aff'd in part and rev'd in part,
744 F.2d 1490 (11th Cir. 1984)
6

AVRS cites the Supreme Court's statement in Sony

that " [c]opying a news broadcast may have a
stronger claim to fair use than copying a motion
picture," 464 U.S. at 455 n. 40, 104 S. Ct. at 795, to
support its contention that the nature of the
copyrighted work at issue in this case outweighs the
commercial use to which it was put. AVRS takes the
Sony Court's statement out of context. The Court
was explaining that some copyrights are more
valuable because they "govern material with broad
potential secondary markets. Such material may
well have a broader claim to protection because of
the greater potential for commercial harm." Id.
Thus, " [c]opying a news broadcast may have a
stronger claim to fair use than copying a motion
picture" because the potential market for copies of
news broadcasts is not as great as that for copies of
movies. This discussion concerns not the second
factor, the nature of the copyrighted work, but the
fourth factor, the effect upon the potential market
for the copyrighted work
7

AVRS argues that because its service is essentially

one of time-shifting, the third factor would not
count against a finding of fair use even if AVRS had
copied all of LANS's copyrighted footage of the
train wreck and plane crash. AVRS relies on the
statement in Sony that because "time-shifting
merely enables a viewer to see [a televised
copyrighted audiovisual work] which he had been
invited to witness in its entirety free of charge, the
fact that the entire work is reproduced does not
have its ordinary effect of militating against a
finding of fair use." Sony, 464 U.S. at 449-50, 104
S. Ct. at 792 (citation omitted). Again, AVRS's
reliance on Sony is misplaced. While a viewer is
"invited to witness [a telecast program] in its
entirety free of charge" and may therefore do so at a
time the viewer finds convenient, the viewer is not
invited to sell copies of the program
8

AVRS does not qualify for the exemption from

liability provided by 17 U.S.C. 109(a), which
allows the lawful owner of a copy of a copyrighted
work to sell the copy. AVRS did not purchase from
LANS the copies of the tapes AVRS sold, and the
television stations that broadcast the tapes were
only licensed to use them and could not authorize
AVRS to sell them. See 17 U.S.C. 109(d)
(privilege of selling copy does not "extend to any
person who has acquired possession of the copy ...
from the copyright owner, by rental, lease, loan, or
otherwise, without acquiring ownership of it");
Duncan, 744 F.2d at 1494 n. 6 (for purposes of 17
U.S.C. 109, the defendant video news monitoring
service "cannot be considered a newspaper clipping
service because it does not purchase the copy that it
sells to its clients"); see also United States v. Wise,
550 F.2d 1180, 1190-91 (9th Cir. 1977) (for
purposes of 17 U.S.C. 27, predecessor to 17
U.S.C. 109, theaters granted license to exhibit
films did not own the films and so could not
lawfully have sold them)
9

Nonetheless, to avoid unnecessary litigation in the

future, it would be prudent for LANS to require its
licensees to identify LANS's footage when it is
broadcast
10

We also reject AVRS's argument that the court erred

in awarding statutory damages of $10,000 rather
than $5,000 for the infringement of the copyright to
the plane crash footage. The argument hinges on
AVRS's theory that the district court believed each
of the two infringements was worth half the
statutory maximum of $20,000, but that because the
statutory maximum for the plane crash tape was
actually $10,000, the court should have awarded
LANS only $5,000 for that infringement
There is no evidence the district court awarded
$10,000 for the plane crash footage infringement
based on a belief the infringement was worth half
the statutory maximum; the court could simply have
believed the infringement merited a $10,000
damage award.
In any case, the statutory maximum for the
infringement of the copyright to the plane crash
footage was $20,000. The court found the
infringement occurred on March 1, 1989, the date
the statutory maximum increased from $10,000 to
$20,000 under the Berne Convention. See
Historical and Statutory Notes to 17 U.S.C.A. 504
(West Supp.1992).
11

AVRS's motion to supplement the excerpts of

record with material previously stricken as outside
the record is denied. LANS's request for sanctions
against AVRS for bringing the motion is also denied

OCTOBER TERM, 1993

Syllabus
CAMPBELL,
AKA
SKYYWALKER,
AL. V. ACUFFROSE MUSIC, INC.

ET

CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE SIXTH
CIRCUIT
No. 92-1292. Argued November 9, 1993-Decided
March 7,1994
Respondent Acuff-Rose Music, Inc., filed suit
against petitioners, the members of the rap music

group 2 Live Crew and their record company,

claiming that 2 Live Crew's song, "Pretty Woman,"
infringed AcuffRose's copyright in Roy Orbison's
rock ballad, "Oh, Pretty Woman." The District
Court granted summary judgment for 2 Live Crew,
holding that its song was a parody that made fair
use of the original song. See Copyright Act of 1976,
17 U. S. C. 107. The Court of Appeals reversed
and remanded, holding that the commercial nature
of the parody rendered it presumptively unfair
under the first of four factors relevant under 107;
that, by taking the "heart" of the original and
making it the "heart" of a new work, 2 Live Crew
had, qualitatively, taken too much under the third
107 factor; and that market harm for purposes of the
fourth 107 factor had been established by a
presumption attaching to commercial uses.
Held: 2 Live Crew's commercial parody may be a
fair use within the meaning of 107. Pp. 574-594.
(a) Section 107, which provides that "the fair use of
a copyrighted work ... for purposes such as criticism
[or] comment ... is not an infringement ... ,"
continues the common-law tradition of fair use
adjudication and requires case-by-case analysis
rather than bright-line rules. The statutory examples
of permissible uses provide only general guidance.
The four statutory factors are to be explored and
weighed together in light of copyright's purpose of
promoting science and the arts. Pp. 574-578.
(b) Parody, like other comment and criticism, may
claim fair use.
Under the first of the four 107 factors, "the
purpose and character of the use, including whether
such use is of a commercial nature ... ," the enquiry
focuses on whether the new work merely
supersedes the objects of the original creation, or
whether and to what extent it is "transformative,"
altering the original with new expression, meaning,
or message. The more transformative the new work,
the less will be the significance of other factors, like
commercialism, that may weigh against a finding of
fair use. The heart of any parodist's claim to quote
from existing material is the use of some elements
of a prior author's composition to

570
Syllabus

create a new one that, at least in part, comments on

that author's work. But that tells courts little about
where to draw the line. Thus, like other uses,
parody has to work its way through the relevant
factors. Pp. 578-581.
(c) The Court of Appeals properly assumed that 2
Live Crew's song contains parody commenting on
and criticizing the original work, but erred in giving
virtually dispositive weight to the commercial
nature of that parody by way of a presumption,
ostensibly
culled
from Sony
Corp.
of
America v. Universal City Studios, Inc., 464 U. S.
417, 451, that "every commercial use of
copyrighted material is presumptively ... unfair .... "
The statute makes clear that a work's commercial
nature is only one element of the first factor enquiry
into its purpose and character, and Sony itself called
for no hard evidentiary presumption. The Court of
Appeals's rule runs counter to Sony and to the long
commonlaw tradition of fair use adjudication. Pp.
581-585.
(d) The second 107 factor, "the nature of the
copyrighted work," is not much help in resolving
this and other parody cases, since parodies almost
invariably copy publicly known, expressive works,
like the Orbison song here. P. 586.
(e) The Court of Appeals erred in holding that, as a
matter of law, 2 Live Crew copied excessively from
the Orbison original under the third 107 factor,
which asks whether "the amount and substantiality
of the portion used in relation to the copyrighted
work as a whole" are reasonable in relation to the
copying's purpose. Even if 2 Live Crew's copying
of the original's first line of lyrics and characteristic
opening bass riff may be said to go to the original's
"heart," that heart is what most readily conjures up
the song for parody, and it is the heart at which
parody takes aim. Moreover, 2 Live Crew thereafter
departed markedly from the Orbison lyrics and
produced otherwise distinctive music. As to the
lyrics, the copying was not excessive in relation to
the song's parodic purpose. As to the music, this
Court expresses no opinion whether repetition of
the bass riff is excessive copying, but remands to
permit evaluation of the amount taken, in light of
the song's parodic purpose and character, its
transformative
elements, and considerations of the potential for
market substitution. Pp. 586-589.
(f) The Court of Appeals erred in resolving the
fourth 107 factor, "the effect of the use upon the

potential market for or value of the copyrighted

work," by presuming, in reliance on Sony, supra, at
451, the likelihood of significant market harm
based on 2 Live Crew's use for commercial gain.
No "presumption" or inference of market harm that
might find support in Sony is applicable to a case
involving something beyond mere duplication for
commercial purposes. The cognizable harm is
market substitution, not any harm from criticism.
As to parody

571
pure and simple, it is unlikely that the work will act
as a substitute for the original, since the two works
usually serve different market functions. The fourth
factor requires courts also to consider the potential
market for derivative works. See, e. g.,
Harper & Row,
Publishers,
Inc. v. Nation
Enterprises, 471 U. S. 539, 568. If the later work
has cognizable substitution effects in protectible
markets for derivative
works, the law will look beyond the criticism to the
work's other elements. 2 Live Crew's song
comprises not only parody but also rap music. The
absence of evidence or affidavits addressing the
effect of 2 Live Crew's song on the derivative
market for a nonparody, rap version of "Oh, Pretty
Woman" disentitled 2 Live Crew, as the proponent
of the affirmative defense of fair use, to summary
judgment. Pp. 590-594.
972 F.2d 1429, reversed and remanded.
SOUTER, J., delivered the opinion for a unanimous
Court. KENNEDY, J., filed a concurring
opinion, post, p. 596.
Bruce S. Rogow argued the cause for petitioners.
With him on the briefs was Alan Mark Turk.
Sidney S. Rosdeitcher argued
respondent.

the

cause

for

With him on the brief were Peter L. Felcher and

Stuart M. Cobert. *
JUSTICE SOUTER delivered the opinion of the
Court.

We are called upon to decide whether 2 Live Crew's

commercial parody of Roy Orbison's song, "Oh,
Pretty Woman,"
*Briefs of amici curiae urging reversal were filed
for the American Civil Liberties Union
by Steven F. Reich, Steven R. Shapiro, Marjorie
Heins, and John A. Powell; for Capitol Steps
Production, Inc., et al. by William C. Lane; for the
Harvard
Lampoon,
Inc.,
by Robert
H.
Loeffler and Jonathan Band; for the PEN American
Center
by Leon
Friedman; and for Robert C. Berry et al.
by Alfred C. Yen.
Briefs of amici curiae urging affirmance were filed
for the National Music Publishers' Association, Inc.,
et
al.
by Marvin
E.
Frankel and Michael S. Oberman; and for Fred Ebb
et
al.
by Stephen
Rackow
Kaye,
Charles S. Sims, and Jon A. Baumgarten.
Briefs of amici curiae were filed for Home Box
Office et al. by Daniel M. Waggoner, P. Cameron
DeVore, George Vradenburg, Bonnie Bogin, and
Richard Cotton; and for Warner Bros. by Cary H.
Sherman and Robert Alan Garrett.

572
may be a fair use within the meaning of the
Copyright Act of 1976, 17 U. S. C. 107 (1988 ed.
and Supp. IV). Although the District Court granted
summary judgment for 2 Live Crew, the Court of
Appeals reversed, holding the defense of fair use
barred by the song's commercial character and
excessive borrowing. Because we hold that a
parody's commercial character is only one element
to be weighed in a fair use enquiry, and that
insufficient consideration was given to the nature of
parody in weighing the degree of copying, we
reverse and remand.
I
In 1964, Roy Orbison and William Dees wrote a
rock ballad called "Oh, Pretty Woman" and
assigned their rights in it to respondent Acuff-Rose
Music, Inc. See Appendix A, infra, at 594. AcuffRose registered the song for copyright protection.

Petitioners Luther R. Campbell, Christopher

Wongwon, Mark Ross, and David Hobbs are
collectively known as 2 Live Crew, a popular rap
music groUp.l In 1989, Campbell wrote a song
entitled "Pretty Woman," which he later described
in an affidavit as intended, "through comical lyrics,
to satirize the original work .... " App. to Pet. for
Cert. 80a. On July 5, 1989, 2 Live Crew's manager
informed Acuff-Rose that 2 Live Crew had written
a parody of "Oh, Pretty Woman," that they would
afford all credit for ownership and authorship of the
original song to Acuff-Rose, Dees, and Orbison,
and that they were willing to pay a fee for the use
they wished to make of it. Enclosed with the letter
were a copy of the lyrics and a recording of 2 Live
Crew's song. See Appendix B, infra, at 595. AcuffRose's agent refused permission, stating that "I am
aware of the success
1 Rap has been defined as a "style of black
American popular music consisting of improvised
rhymes performed to a rhythmic accompaniment."
The Norton/Grove Concise Encyclopedia of Music
613 (1988). 2 Live Crew plays "[b]ass music," a
regional, hip-hop style of rap from the Liberty City
area of Miami, Florida. Brief for Petitioners 34.

was necessary to "conjure up" the original in order

to parody it; and that it was "extremely unlikely that
2 Live Crew's song could adversely affect the
market for the original." 754 F. Supp. 1150, 11541155, 1157-1158 (MD Tenn. 1991). The District
Court weighed these factors and held that 2 Live
Crew's song made fair use of Orbison's
original. Id., at 1158-1159.
The Court of Appeals for the Sixth Circuit reversed
and remanded. 972 F.2d 1429, 1439 (1992).
Although it assumed for the purpose of its opinion
that 2 Live Crew's song
2 The parties argue about the timing. 2 Live Crew
contends that the album was released on July 15,
and the District Court so held. 754 F. Supp. 1150,
1152 (MD Tenn. 1991). The Court of Appeals states
that Campbell's affidavit puts the release date in
June, and chooses that date. 972 F.2d 1429,
1432 (CA6 1992). We find the timing of the request
irrelevant for purposes of this enquiry. See n.
18, infra, discussing good faith.
32 Live Crew's motion to dismiss was converted to
a motion for summary judgment. Acuff-Rose
defended against the motion, but filed no crossmotion.

573
enjoyed by 'The 2 Live Crews', but I must inform
you that we cannot permit the use of a parody of
'Oh, Pretty Woman.'" App. to Pet. for Cert. 85a.
Nonetheless, in June or July 1989,22 Live Crew
released records, cassette tapes, and compact discs
of "Pretty Woman" in a collection of songs entitled
"As Clean As They Wanna Be." The albums and
compact discs identify the authors of "Pretty
Woman" as Orbison and Dees and its publisher as
Acuff-Rose.
Almost a year later, after nearly a quarter of a
million copies of the recording had been sold,
Acuff-Rose sued 2 Live Crew and its record
company, Luke Skyywalker Records, for copyright
infringement. The District Court granted summary
judgment for 2 Live Crew,3 reasoning that the
commercial purpose of 2 Live Crew's song was no
bar to fair use; that 2 Live Crew's version was a
parody, which "quickly degenerates into a play on
words, substituting predictable lyrics with shocking
ones" to show "how bland and banal the Orbison
song" is; that 2 Live Crew had taken no more than

574
was a parody of the Orbison original, the Court of
Appeals thought the District Court had put too little
emphasis on the fact that "every commercial use ...
is presumptively ... unfair," Sony Corp. of
America v. Universal City Studios, Inc., 464 U. S.
417, 451 (1984), and it held that "the admittedly
commercial nature" of the parody "requires the
conclusion" that the first of four factors relevant
under the statute weighs against a finding of fair
use. 972 F. 2d, at 1435, 1437. N ext, the Court of
Appeals determined that, by "taking the heart of the
original and making it the heart of a new work," 2
Live Crew had, qualitatively, taken too much. Id., at
1438. Finally, after noting that the effect on the
potential market for the original (and the market for
derivative works) is "undoubtedly the single most
important element of fair use," Harper & Row,
Publishers, Inc. v. Nation Enterprises, 471 U. S.
539, 566 (1985), the Court of Appeals faulted the
District Court for "refus[ing] to indulge the
presumption" that "harm for purposes of the fair use

analysis has been established by the presumption

attaching to commercial uses." 972 F. 2d, at 14381439. In sum, the court concluded that its "blatantly
commercial purpose ... prevents this parody from
being a fair use." Id., at 1439.
We granted certiorari, 507 U. S. 1003 (1993), to
determine whether 2 Live Crew's commercial
parody could be a fair use.
II
It is uncontested here that 2 Live Crew's song
would be an infringement of Acuff-Rose's rights in
"Oh, Pretty Woman," under the Copyright Act of
1976, 17 U. S. C. 106 (1988 ed. and Supp. IV),
but for a finding of fair use through parody.4
4 Section 106 provides in part:
"Subject to sections 107 through 120, the owner of
copyright under this title has the exclusive rights to
do and to authorize any of the following: "(1) to
reproduce the copyrighted work in copies or
phonorecords;
"(2) to prepare derivative works based upon the
copyrighted work;

575
From the infancy of copyright protection, some
opportunity for fair use of copyrighted materials has
been thought necessary to
fulfill copyright's very purpose, "[t]o promote the
Progress of Science and useful Arts .... " u. S.
Const., Art. I, 8, cl. 8.5 For as Justice Story
explained, "[i]n truth, in literature, in science and in
art, there are, and can be, few, if any, things, which
in an abstract sense, are strictly new and original
throughout. Every book in literature, science and
art, borrows, and must necessarily borrow, and use
much which was well known and used
before." Emerson v. Davies, 8 F. Cas. 615, 619 (No.
4,436) (CCD Mass. 1845). Similarly, Lord
Ellenborough expressed the inherent tension in the
need simultaneously to protect copyrighted material
and to allow others to build upon it when he wrote,
"while I shall think myself bound to secure every
man in the enjoyment of his copy-right, one must
not put manacles upon science."

"(3) to distribute copies or phonorecords of the

copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending
.... "
A derivative work is defined as one "based upon
one or more preexisting works, such as a
translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound
recording,
art
reproduction,
abridgment,
condensation, or any other form in which a work
may be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a
whole, represent an original work of authorship, is a
'derivative work.'" 17 U. S. C. 101.
2 Live Crew concedes that it is not entitled to a
compulsory license under 115 because its
arrangement changes "the basic melody or
fundamental character" of the original. 115(a)(2).
5 The exclusion of facts and ideas from copyright
protection serves that goal as well. See 102(b)
("In no case does copyright protection for an
original work of authorship extend to any idea,
procedure, process, system, method of operation,
concept, principle, or discovery ... "); Feist
Publications, Inc. v. Rural Telephone Service
Co., 499 U. S.
340, 359 (1991) ("[F]acts contained in existing
works may be freely copied"); Harper & Row,
Publishers, Inc. v. Nation Enterprises, 471 U. S.
539, 547 (1985) (copyright owner's rights exclude
facts and ideas, and fair use).

576
Carey v. Kearsley, 4 Esp. 168, 170, 170 Eng. Rep.
679, 681 (K. B. 1803). In copyright cases brought
under the Statute of Anne of 1710,6 English courts
held that in some instances "fair abridgements"
would not infringe an author's rights, see W. Patry,
The Fair Use Privilege in Copyright Law 6-17
(1985) (hereinafter Patry); Leval, Toward a Fair
Use Standard, 103 Harv. L. Rev. 1105 (1990)
(hereinafter Leval), and although the First Congress
enacted our initial copyright statute, Act of May 31,
1790, 1 Stat. 124, without any explicit reference to
"fair use," as it later came to be known,7 the
doctrine was recognized by the American courts
nonetheless.

In Folsom v. Marsh, 9 F. Cas. 342 (No. 4,901)

(CCD Mass. 1841), Justice Story distilled the
essence of law and methodology from the earlier
cases: "look to the nature and objects of the
selections made, the quantity and value of the
materials used, and the degree in which the use may
prejudice the sale, or diminish the profits, or
supersede the objects, of the original work." Id., at
348. Thus expressed, fair use remained exclusively
judge-made doctrine until the passage of the 1976
Copyright Act, in which Justice Story's summary is
discernible: 8

"(2) the nature of the copyrighted

work;
"(3) the amount and substantiality of
the portion used in relation to the
copyrighted work as a whole; and
"(4) the effect of the use upon the
potential market for or value of the
copyrighted work.
"The fact that a work is unpublished
shall not itself bar a finding of fair
use if such finding is made upon
consideration of all the above
factors." 17 U. S. C. 107 (1988 ed.
and Supp. IV).

" 107. Limitations on exclusive

rights: Fair use
"Notwithstanding the provisions of
sections 106 and 106A, the fair use
of a copyrighted work, including
such use by reproduction in copies
or phonorecords or by any other
means specified by that section, for
purposes
such
as
criticism,
comment, news reporting, teaching
(including multiple copies for
classroom use), scholarship, or
research, is not an infringement of
copyright. In determining whether
the use made of a work in any
particular
6 An Act for the Encouragement of Learning, 8
Anne, ch. 19.
7Patry 27, citing Lawrence v. Dana, 15 F. Cas. 26,
60 (No. 8,136) (CCD Mass. 1869).
8 Levall105. For a historical account of the
development of the fair use doctrine, see Patry 164.

Congress meant 107 "to restate the present

judicial doctrine of fair use, not to change, narrow,
or enlarge it in any way" and intended that courts
continue the common-law tradition of fair use
adjudication. H. R. Rep. No. 94-1476, p. 66 (1976)
(hereinafter House Report); S. Rep. No. 94-473, p.
62 (1975) (hereinafter Senate Report). The fair use
doctrine thus "permits [and requires] courts to avoid
rigid application of the copyright statute when, on
occasion, it would stifle the very creativity which
that
law
is
designed
to
foster." Stewart v. Abend, 495 U. S. 207, 236 (1990)
(internal quotation marks and citation omitted).
The task is not to be simplified with bright-line
rules, for the statute, like the doctrine it recognizes,
calls for case-bycase analysis. Harper & Row, 471
U. S., at 560; Sony, 464 U. S., at 448, and n. 31;
House Report, pp. 65-66; Senate Report, p. 62. The
text employs the terms "including" and "such as" in
the preamble paragraph to indicate the "illustrative
and not limitative" function of the examples given,
101; see Harper & Row, supra, at 561, which thus
provide
only
general guidance about the sorts of copying that
courts and

577
case is a fair use the factors to be
considered shall include578
"(1) the purpose and character of the
use, including whether such use is of
a commercial nature or is for
nonprofit educational purposes;

Congress most commonly had found to be fair

uses.9 Nor may the four statutory factors be treated
in isolation, one from another. All are to be
explored, and the results weighed together, in light
of the purposes of copyright. See Leval 1110-1111;

Patry & Perlmutter, Fair Use Misconstrued: Profit,

Presumptions, and Parody, 11 Cardozo Arts & Ent.
L. J. 667, 685-687 (1993) (hereinafter Patry &
Perlmutter ).10
A
The first factor in a fair use enquiry is "the purpose
and character of the use, including whether such use
is of a commercial nature or is for nonprofit
educational purposes." 107(1). This factor draws
on Justice Story's formulation, "the nature and
objects of the selections made." Folsom v. Marsh,
supra, at 348. The enquiry here may be guided by
the examples given in the preamble to 107,
looking to whether the use is for criticism, or
comment, or news report9 See Senate Report, p. 62 ("[W]hether a use
referred to in the first sentence of section 107 is a
fair use in a particular case will depend upon the
application of the determinative factors").
10 Because the fair use enquiry often requires close
questions of judgment as to the extent of
permissible borrowing in cases involving parodies
(or other critical works), courts may also wish to
bear in mind that the goals of the copyright law, "to
stimulate the creation and publication of edifying
matter," Leva11134, are not always best served by
automatically granting injunctive relief when
parodists are found to have gone beyond the bounds
of fair use. See 17 U. S. C. 502(a)
(court "may ... grant ... injunctions on such terms as
it may deem reasonable to prevent or restrain
infringement") (emphasis added); Leval 1132
(while in the "vast majority of cases, [an injunctive]
remedy is justified because most infringements are
simple piracy," such cases are "worlds apart from
many of those raising reasonable contentions of fair
use" where "there may be a strong public interest in
the publication of the secondary work [and] the
copyright owner's interest may be adequately
protected by an award of damages for whatever
infringement is found"); Abend v. MeA, Inc.,863
F.2d 1465, 1479 (CA9 1988) (finding "special
circumstances" that would cause "great injustice" to
defendants and "public injury" were injunction to
issue), aff'd sub nom.
Stewart v. Abend, 495 U. S. 207 (1990).

ing, and the like, see 107. The central purpose of

this investigation is to see, in Justice Story's words,
whether the new work merely "supersede[s] the
objects" of the original creation, Folsom v. Marsh,
supra, at 348; accord, Harper & Row, supra, at 562
("supplanting" the original), or instead adds
something new, with a further purpose or different
character, altering the first with new expression,
meaning, or message; it asks, in other words,
whether and to what extent the new work is
"transformative." Levalll11. Although such
transformative use is not absolutely necessary for a
finding of fair use, Sony, supra, at 455, n. 40,11 the
goal of copyright, to promote science and the arts,
is generally furthered by the creation of
transformative works. Such works thus lie at the
heart of the fair use doctrine's guarantee of
breathing space within the confines of copyright,
see, e. g., Sony, supra, at 478-480 (BLACKMUN,
J., dissenting), and the more transformative the new
work, the less will be the significance of other
factors, like commercialism, that may weigh against
a finding of fair use.
This Court has only once before even considered
whether parody may be fair use, and that time
issued no opinion because of the Court's equal
division. Benny v. Loew's Inc., 239 F.2d 532 (CA9
1956), aff'd sub nom. Columbia Broadcasting
System, Inc. v. Loew's Inc., 356 U. S. 43 (1958).
Suffice it to say now that parody has an obvious
claim to transformative value, as Acuff-Rose itself
does not deny. Like less ostensibly humorous forms
of criticism, it can provide social benefit, by
shedding light on an earlier work, and, in the
process, creating a new one. We thus line up with
the courts that have held that parody, like other
comment or criticism, may claim fair use under
107. See, e. g., Fisher v. Dees, 794 F.2d 432 (CA9
1986) ("When Sonny Sniffs Glue," a parody of
"When Sunny Gets Blue," is fair use); Elsmere
Music, Inc. v. National Broadcasting Co., 482 F.
Supp. 741
11 The obvious statutory exception to this focus on
transformative uses is the straight reproduction of
multiple copies for classroom distribution.

580
579

(SDNY), aff'd, 623 F.2d 252 (CA2 1980) ("I Love

Sodom," a "Saturday Night Live" television parody

of "I Love New York," is fair use); see also House

Report, p. 65; Senate Report, p. 61 ("[U]se in a
parody of some of the content of the work
parodied" may be fair use).
The germ of parody lies in the definition of the
Greek parodeia, quoted in Judge Nelson's Court of
Appeals dissent, as "a song sung alongside
another." 972 F. 2d, at 1440, quoting 7
Encyclopedia Britannica 768 (15th ed. 1975).
Modern dictionaries accordingly describe a parody
as a "literary or artistic work that imitates the
characteristic style of an author or a work for comic
effect or ridicule," 12 or as a "composition in prose
or verse in which the characteristic turns of thought
and phrase in an author or class of authors are
imitated in such a way as to make them appear
ridiculous." 13 For the purposes of copyright law,
the nub of the definitions, and the heart of any
parodist's claim to quote from existing material, is
the use of some elements of a prior author's
composition to create a new one that, at least in
part, comments on that author's works. See, e. g.,
Fisher v. Dees,
supra, at
437; MeA, Inc. v. Wilson, 677 F.2d 180, 185 (CA2
1981). If, on the contrary, the commentary has no
critical bearing on the substance or style of the
original composition, which the alleged infringer
merely uses to get attention or to avoid the drudgery
in working up something fresh, the claim to fairness
in borrowing from another's work diminishes
accordingly (if it does not vanish), and other
factors, like the extent of its commerciality, loom
larger.14 Parody needs to mimic
12 American Heritage Dictionary 1317 (3d ed.
1992). 1311 Oxford English Dictionary 247 (2d ed.
1989).
14 A parody that more loosely targets an original
than the parody presented here may still be
sufficiently aimed at an original work to come
within our analysis of parody. If a parody whose
wide dissemination in the market runs the risk of
serving as a substitute for the original or licensed
derivatives (see infra, at 590-594, discussing factor
four), it is more incumbent on one claiming fair use
to establish the extent of transformation and the
parody's critical relationship to the original. By con-

an original to make its point, and so has some claim

to use the creation of its victim's (or collective
victims') imagination, whereas satire can stand on
its own two feet and so requires justification for the
very act of borrowing.15 See ibid.;Bisceglia,
Parody and Copyright Protection: Turning the
Balancing Act Into a Juggling Act, in ASCAP,
Copyright Law Symposium, No. 34, p. 25 (1987).
The fact that parody can claim legitimacy for some
appropriation does not, of course, tell either
parodist or judge much about where to draw the
line. Like a book review quoting the copyrighted
material criticized, parody mayor may not be fair
use, and petitioners' suggestion that any parodic use
is presumptively fair has no more justification in
law or fact than the equally hopeful claim that any
use for news reporting should be presumed fair,
see Harper & Row, 471 U. S., at 561. The Act has
no hint of an evidentiary preference for parodists
over their victims, and no workable presumption for
parody could take account of the fact that parody
often shades into satire when society is lampooned
through its creative artifacts, or that a work may
contain both parodic and nonparodic elements.
Accordingly, parody, like any other use, has to work
its way through the relevant factors, and be judged
case by case, in light of the ends of the copyright
law.
Here, the District Court held, and the Court of
Appeals assumed, that 2 Live Crew's "Pretty
Woman" contains partrast, when there is little or no risk of market
substitution, whether because of the large extent of
transformation of the earlier work, the new work's
minimal distribution in the market, the small extent
to which it borrows from an original, or other
factors, taking parodic aim at an original is a less
critical factor in the analysis, and looser forms of
parody may be found to be fair use, as may satire
with lesser justification for the borrowing than
would otherwise be required.
15 Satire has been defined as a work "in which
prevalent follies or vices are assailed with ridicule,"
14 Oxford English Dictionary, supra, at 500, or are
"attacked through irony, derision, or wit," American
Heritage Dictionary, supra, at 1604.

581
582

ody, commenting on and criticizing the original

work, whatever it may have to say about society at
large. As the District Court remarked, the words of
2 Live Crew's song copy the original's first line, but
then "quickly degenerat[e] into a play on words,
substituting predictable lyrics with shocking ones ...
[that] derisively demonstrat[e] how bland and banal
the Orbison song seems to them." 754 F. Supp., at
1155 (footnote omitted). Judge Nelson, dissenting
below, came to the same conclusion, that the 2 Live
Crew song "was clearly intended to ridicule the
white-bread original" and "reminds us that sexual
congress with nameless streetwalkers is not
necessarily the stuff of romance and is not
necessarily without its consequences. The singers
(there are several) have the same thing on their
minds as did the lonely man with the nasal voice,
but here there is no hint of wine and roses." 972 F.
2d, at 1442. Although the majority below had
difficulty discerning any criticism of the original in
2 Live Crew's song, it assumed for purposes of its
opinion that there was some. Id., at 1435-1436, and
n. 8.
We have less difficulty in finding that critical
element in 2 Live Crew's song than the Court of
Appeals did, although having found it we will not
take the further step of evaluating its quality. The
threshold question when fair use is raised in defense
of parody is whether a parodic character may
reasonably be perceived.16 Whether, going beyond
that, parody is in good taste or bad does not and
should not matter to fair use. As Justice Holmes
explained, "[i]t would be a dangerous undertaking
for persons trained only to the law to constitute
themselves final judges of the worth of [a work],
outside of the narrowest and most obvious limits. At
16 The only further judgment, indeed, that a court
may pass on a work goes to an assessment of
whether the parodic element is slight or great, and
the copying small or extensive in relation to the
parodic element, for a work with slight parodic
element and extensive copying will be more likely
to merely "supersede the objects" of the original.
See infra, at 586-594, discussing factors three and
four.

make them repulsive until the public had learned

the new language in which their author
spoke." Bleistein v. Donaldson
Lithographing Co., 188 U. S. 239, 251 (1903)
(circus posters have copyright protection);
cf. Yankee Publishing Inc. v. News America
Publishing, Inc., 809 F. Supp. 267, 280 (SDNY
1992) (Leval, J.) ("First Amendment protections do
not apply only to those who speak clearly, whose
jokes are funny, and whose parodies succeed")
(trademark case).
While we might not assign a high rank to the
parodic element here, we think it fair to say that 2
Live Crew's song reasonably could be perceived as
commenting on the original or criticizing it, to some
degree. 2 Live Crew juxtaposes the romantic
musings of a man whose fantasy comes true, with
degrading taunts, a bawdy demand for sex, and a
sigh of relief from paternal responsibility. / The
later words can be taken as a comment on the
naivete of the original of an earlier day, as a
rejection of its sentiment that ignores the ugliness
of street life and the debasement that it signifies. It
is this joinder of reference and ridicule that marks
off the author's choice of parody from the other
types of comment and criticism that traditionally
have had a claim to fair use protection as
transformative works.17
The Court of Appeals, however, immediately cut
short the enquiry into 2 Live Crew's fair use claim
by confining its treatment of the first factor
essentially to one relevant fact, the commercial
nature of the use. The court then inflated the
significance of this fact by applying a presumption
osten17We note in passing that 2 Live Crew need not
label their whole album, or even this song, a parody
in order to claim fair use protection, nor should 2
Live Crew be penalized for this being its first
parodic essay. Parody serves its goals whether
labeled or not, and there is no reason to require
parody to state the obvious (or even the reasonably
perceived). See Patry & Perlmutter 716-717.

584
583
the one extreme some works of genius would be
sure to miss appreciation. Their very novelty would

sibly culled from Sony, that "every commercial use

of copyrighted material is presumptively ...
unfair .... " Sony, 464 U. S., at 451. In giving

virtually dispositive weight to the commercial

nature of the parody, the Court of Appeals erred.
The language of the statute makes clear that the
commercial or nonprofit educational purpose of a
work is only one element of the first factor enquiry
into its purpose and character. Section 107(1) uses
the term "including" to begin the dependent clause
referring to commercial use, and the main clause
speaks of a broader investigation into "purpose and
character."
As
we
explained
in Harper & Row, Congress resisted attempts to
narrow the ambit of this traditional enquiry by
adopting categories of presumptively fair use, and it
urged courts to preserve the breadth of their
traditionally ample view of the universe of relevant
evidence. 471 U. S., at 561; House Report, p. 66.
Accordingly, the mere fact that a use is educational
and not for profit does not insulate it from a finding
of infringement, any more than the commercial
character of a use bars a finding of fairness. If,
indeed, commerciality carried presumptive force
against a finding of fairness, the presumption would
swallow nearly all of the illustrative uses listed in
the preamble paragraph of 107, including news
reporting,
comment,
criticism,
teaching,
scholarship, and research, since these activities "are
generally conducted for profit in this
country." Harper & Row, supra, at 592 (Brennan,
J., dissenting). Congress could not have intended
such a rule, which certainly is not inferable from
the common-law cases, arising as they did from the
world of letters in which Samuel Johnson could
pronounce that "[n]o man but a blockhead ever
wrote, except for money." 3 Boswell's Life of
Johnson 19 (G. Hill ed. 1934).
Sony itself called
presumption.

for

no

hard

evidentiary

There, we emphasized the need for a "sensitive

balancing of interests," 464 U. S., at 455, n. 40,
noted that Congress had "eschewed a rigid, brightline approach to fair use," id., at

585
449, n. 31, and stated that the commercial or
nonprofit educational character of a work is "not
conclusive," id., at 448-449, but rather a fact to be
"weighed along with other[s] in fair use
decisions," id., at 449, n. 32 (quoting House Report,

p. 66). The Court of Appeals's elevation of one

sentence from Sony to a per se rule thus runs as
much counter to Sony itself as to the long commonlaw tradition of fair use adjudication. Rather, as we
explained in Harper & Row, Sony stands for the
proposition that the "fact that a publication was
commercial as opposed to nonprofit is a separate
factor that tends to weigh against a finding of fair
use." 471 U. S., at 562. But that is all, and the fact
that even the force of that tendency will vary with
the context is a further reason against elevating
commerciality to hard presumptive significance.
The use, for example, of a copyrighted work to
advertise a product, even in a parody, will be
entitled to less indulgence under the first factor of
the fair use enquiry than the sale of a parody for its
own sake, let alone one performed a single time by
students in school. See generally Patry &
Perlmutter 679-680; Fisher v. Dees, 794 F. 2d, at
437; MaxtoneGraham v. Burtchaell, 803 F.2d 1253,
1262
(CA2
1986); Sega
Enterprises
Ltd. v. Accolade, Inc., 977 F.2d 1510, 1522 (CA9
1992).18
18 Finally, regardless of the weight one might place
on the alleged infringer's state of mind,
compare Harper & Row, 471 U. S., at 562 (fair use
presupposes good faith and fair dealing) (quotation
marks omitted), with Folsom v. Marsh, 9 F. Cas.
342, 349 (No. 4,901) (CCD Mass. 1841) (good faith
does not bar a finding of infringement); LevaI11261127 (good faith irrelevant to fair use analysis), we
reject Acuff-Rose's argument that 2 Live Crew's
request for permission to use the original should be
weighed against a finding of fair use. Even if good
faith were central to fair use, 2 Live Crew's actions
do not necessarily suggest that they believed their
version was not fair use; the offer may simply have
been made in a goodfaith effort to avoid this
litigation. If the use is otherwise fair, then no
permission need be sought or granted. Thus, being
denied permission to use a work does not weigh
against
a
finding
of
fair
use.
See Fisher v. Dees, 794 F.2d 432, 437 (CA9 1986).

586
B
The second statutory factor, "the nature of the
copyrighted work," 107(2), draws on Justice

Story's expression, the "value of the materials

used." Folsom v. Marsh, 9 F. Cas., at 348. This
factor calls for recognition that some works are
closer to the core of intended copyright protection
than others, with the consequence that fair use is
more difficult to establish when the former works
are copied. See, e. g., Stewart v. Abend, 495 U. S.,
at 237-238 (contrasting fictional short story with
factual works); Harper & Row, 471 U. S., at 563564 (contrasting soon-to-be-published memoir with
published speech); Sony, 464 U. S., at 455, n. 40
(contrasting
motion
pictures
with
news
broadcasts); Feist, 499 U. S., at 348-351
(contrasting creative works with bare factual
compilations); 3 M. Nimmer & D. Nimmer,
Nimmer on Copyright 13.05[A][2] (1993)
(hereinafter Nimmer); Leval 1116. We agree with
both the District Court and the Court of Appeals
that the Orbison original's creative expression for
public dissemination falls within the core of the
copyright's protective purposes. 754 F. Supp., at
1155-1156; 972 F.2d, at 1437. This fact, however, is
not much help in this case, or ever likely to help
much in separating the fair use sheep from the
infringing goats in a parody case, since parodies
almost invariably copy publicly known, expressive
works.
C
The third factor asks whether "the amount and
substantiality of the portion used in relation to the
copyrighted work as a whole," 107(3) (or, in
Justice Story's words, "the quantity and value of the
materials used," Folsom v. Marsh, supra, at 348)
are reasonable in relation to the purpose of the
copying. Here, attention turns to the persuasiveness
of a parodist's justification for the particular
copying done, and the enquiry will harken back to
the first of the statutory
factors, for, as in prior cases, we recognize that the
extent of permissible copying varies with the
purpose and character

review of a published work or a news account of a

speech" but not in a scoop of a soon-to-bepublished memoir). The facts bearing on this factor
will also tend to address the fourth, by revealing the
degree to which the parody may serve as a market
substitute for the original or potentially licensed
derivatives. See Leval 1123.
The District Court considered the song's parodic
purpose in finding that 2 Live Crew had not helped
themselves overmuch. 754 F. Supp., at 1156-1157.
The Court of Appeals disagreed, stating that
"[w]hile it may not be inappropriate to find that no
more was taken than necessary, the copying was
qualitatively substantial. ... We conclude that taking
the heart of the original and making it the heart of a
new work was to purloin a substantial portion of the
essence of the originaL" 972 F. 2d, at 1438.
The Court of Appeals is of course correct that this
factor calls for thought not only about the quantity
of the materials used, but about their quality and
importance, too. In Harper & Row, for example, the
Nation had taken only some 300 words out of
President Ford's memoirs, but we signaled the
significance of the quotations in finding them to
amount to "the heart of the book," the part most
likely to be newsworthy and important in licensing
serialization. 471 U. S., at 564-566, 568 (internal
quotation marks omitted). We also agree with the
Court of Appeals that whether "a substantial portion
of the infringing work was copied verbatim" from
the copyrighted work is a relevant question,
see id., at 565, for it may reveal a dearth of
transformative character or purpose under the first
factor, or a greater likelihood of market harm under
the fourth; a work composed primarily of an
original, particularly its heart, with little added or
changed,

588
is more likely to be a merely superseding use,
fulfilling demand for the original.
587
of the use. See Sony, supra, at 449-450
(reproduction of entire work "does not have its
ordinary effect of militating against a finding of fair
use" as to home videotaping of television
programs); Harper & Row, supra, at 564 ("[E]ven
substantial quotations might qualify as fair use in a

Where we part company with the court below is in

applying these guides to parody, and in particular to
parody in the song before us. Parody presents a
difficult case. Parody's humor, or in any event its
comment, necessarily springs from recognizable
allusion to its object through distorted imitation. Its
art lies in the tension between a known original and

its parodic twin. When parody takes aim at a

particular original work, the parody must be able to
"conjure up" at least enough of that original to
make the object of its critical wit recognizable.
See, e. g., Elsmere Music, 623 F. 2d, at 253, n.
1; Fisher v. Dees, 794 F. 2d, at 438-439. What
makes for this recognition is quotation of the
original's most distinctive or memorable features,
which the parodist can be sure the audience will
know. Once enough has been taken to assure
identification, how much more is reasonable will
depend, say, on the extent to which the song's
overriding purpose and character is to parody the
original or, in contrast, the likelihood that the
parody may serve as a market substitute for the
original. But using some characteristic features
cannot be avoided.
We think the Court of Appeals was insufficiently
appreciative of parody's need for the recognizable
sight or sound when it ruled 2 Live Crew's use
unreasonable as a matter of law. It is true, of course,
that 2 Live Crew copied the characteristic opening
bass riff (or musical phrase) of the original, and true
that the words of the first line copy the Orbison
lyrics. But if quotation of the opening riff and the
first line may be said to go to the "heart" of the
original, the heart is also what most readily conjures
up the song for parody, and it is the heart at which
parody takes aim. Copying does not become
excessive in relation to parodic purpose merely
because the portion taken was the original's heart. H
2 Live Crew had copied a
significantly less memorable part of the original, it
is difficult to see how its parodic character

distinctive sounds, interposing "scraper" noise,

overlaying the music with solos in different keys,
and altering the drum beat. See 754 F. Supp., at
1155. This is not a case, then, where "a substantial
portion" of the parody itself is composed of a
"verbatim" copying of the original. It is not, that is,
a case where the parody is so insubstantial, as
compared to the copying, that the third factor must
be resolved as a matter of law against the parodists.
Suffice it to say here that, as to the lyrics, we think
the Court of Appeals correctly suggested that "no
more was taken than necessary," 972 F. 2d, at 1438,
but just for that reason, we fail to see how the
copying can be excessive in relation to its parodic
purpose, even if the portion taken is the original's
"heart." As to the music, we express no opinion
whether repetition of the bass riff is excessive
copying, and we remand to permit evaluation of the
amount taken, in light of the song's parodic purpose
and character, its transformative elements, and
considerations of the potential for market
substitution sketched more fully below.
19 This may serve to heighten the comic effect of
the parody, as one witness stated, App. 32a,
Mfidavit of Oscar Brand; see also Elsmere Music,
Inc. v. National Broadcasting Co., 482 F. Supp.
741, 747 (SDNY 1980) (repetition of "I Love
Sodom"), or serve to dazzle with the original's
music, as Acuff-Rose now contends.

590
D
589
would have come through. See Fisher v. Dees,
supra, at 439.
This is not, of course, to say that anyone who calls
himself a parodist can skim the cream and get away
scot free. In parody, as in news reporting,
see Harper & Row, supra, context is everything,
and the question of fairness asks what else the
parodist did besides go to the heart of the original.
It is significant that 2 Live Crew not only copied
the first line of the original, but thereafter departed
markedly from the Orbison lyrics for its own ends.
2 Live Crew not only copied the bass riff and
repeated it,19 but also produced otherwise

The fourth fair use factor is "the effect of the use

upon the potential market for or value of the
copyrighted work." 107(4). It requires courts to
consider not only the extent of market harm caused
by the particular actions of the alleged infringer, but
also "whether unrestricted and widespread conduct
of the sort engaged in by the defendant ... would
result in a substantially adverse impact on the
potential market" for the original. Nimmer
13.05[A][ 4], p. 13102.61 (footnote omitted);
accord, Harper & Row, 471 U. S., at 569; Senate
Report, p. 65; Folsom v. Marsh, 9 F. Cas., at 349.
The enquiry "must take account not only of harm to
the original but also of harm to the market for
derivative works." Harper & Row, supra, at 568.

Since fair use is an affirmative defense,2o its

proponent would have difficulty carrying the
burden of demonstrating fair use without favorable
evidence about relevant markets.21 In moving for
summary judgment, 2 Live Crew left themselves at
just such a disadvantage when they failed to address
the effect on the market for rap derivatives, and
confined themselves to uncontroverted submissions
that there was no likely effect on the market for the
original. They did not, however, thereby subject
themselves to the evidentiary presumption applied
by the Court of Appeals. In assessing the likelihood
of significant market harm, the Court of Ap20 Harper & Row, 471 U. S., at 561; H. R. Rep. No.
102-836, p. 3, n. 3 (1992).
21 Even favorable evidence, without more, is no
guarantee of fairness.
Judge Leval gives the example of the film
producer's appropriation of a composer's previously
unknown song that turns the song into a
commercial success; the boon to the song does not
make the film's simple copying fair. Leva11124, n.
84. This factor, no less than the other three, may be
addressed only through a "sensitive balancing of
interests." Sony Corp. of America v. Universal City
Studios, Inc., 464 U. S. 417, 455, n. 40 (1984).
Market harm is a matter of degree, and the
importance of this factor will vary, not only with
the amount of harm, but also with the relative
strength of the showing on the other factors.

No "presumption" or inference of market harm that

might find support in Sony is applicable to a case
involving something beyond mere duplication for
commercial purposes. Sony's discussion of a
presumption contrasts a context of verbatim
copying of the original in its entirety for
commercial purposes, with the noncommercial
context of Sony itself (home copying of television
programming). In the former circumstances,
what Sony said simply makes common sense: when
a commercial use amounts to mere duplication of
the entirety of an original, it clearly "supersede[s]
the objects," Folsom v. Marsh, supra, at 348, of the
original and serves as a market replacement for it,
making it likely that cognizable market harm to the
original will occur. Sony, supra, at 451. But when,
on the contrary, the second use is transformative,
market substitution is at least less certain, and
market harm may not be so readily inferred. Indeed,
as to parody pure and simple, it is more likely that
the new work will not affect the market for the
original in a way cognizable under this factor, that
is, by acting as a substitute for it ("supersed[ing]
[its] objects"). See Leval 1125; Patry & Perlmutter
692, 697-698. This is so because the parody and the
original usually serve different market functions.
Bisceglia, ASCAP, Copyright Law Symposium, No.
34, at 23.
We do not, of course, suggest that a parody may not
harm the market at all, but when a lethal parody,
like a scathing

592
591
peals quoted from language in Sony that" '[i]f the
intended use is for commercial gain, that likelihood
may be presumed. But if it is for a noncommercial
purpose, the likelihood must be demonstrated.'" 972
F. 2d, at 1438, quoting Sony, 464 U. S., at 451. The
court reasoned that because "the use of the
copyrighted work is wholly commercial, ... we
presume that a likelihood of future harm to AcuffRose exists." 972 F. 2d, at 1438. In so doing, the
court resolved the fourth factor against 2 Live
Crew, just as it had the first, by applying a
presumption about the effect of commercial use, a
presumption which as applied here we hold to be
error.

theater review, kills demand for the original, it does

not produce a harm cognizable under the Copyright
Act. Because "parody may quite legitimately aim at
garroting the original, destroying it commercially as
well as artistically," B. Kaplan, An Unhurried View
of Copyright 69 (1967), the role of the courts is to
distinguish between "[b]iting criticism [that merely]
suppresses demand [and] copyright infringemente,
which] usurps it." Fisher v. Dees, 794 F. 2d, at 438.
This distinction between potentially remediable
displacement and unremediable disparagement is
reflected in the rule that there is no protectible
derivative market for criticism. The market for
potential derivative uses includes only those that
creators of original works would in general develop
or license others to develop. Yet the unlikelihood

that creators of imaginative works will license

critical reviews or lampoons of their own
productions removes such uses from the very notion
of a potential licensing market. "People ask ... for
criticism, but they only want praise." S. Maugham,
Of Human Bondage 241 (Penguin ed. 1992). Thus,
to the extent that the opinion below may be read to
have considered harm to the market for parodies of
"Oh, Pretty Woman," see 972 F. 2d, at 1439, the
court erred. Accord, Fisher v. Dees, supra, at 437;
Leva11125; Patry & Perlmutter 688-691.22
In explaining why the law recognizes no derivative
market for critical works, including parody, we
have, of course, been speaking of the later work as
if it had nothing but a critical aspect (i. e., "parody
pure and simple," supra, at 591). But the later work
may have a more complex character, with effects
not only in the arena of criticism but also in
protectible markets for derivative works, too. In that
sort of case, the law looks beyond the criticism to
the other elements of the work, as it does here. 2
Live Crew's song comprises not
22We express no opinion as to the derivative
markets for works using elements of an original as
vehicles for satire or amusement, making no
comment on the original or criticism of it.

nonparody, rap version of "Oh, Pretty Woman."

And while Acuff-Rose would have us find evidence
of a rap market in the very facts that 2 Live Crew
recorded a rap parody of "Oh, Pretty Woman" and
another rap group sought a license to record a rap
derivative, there was no evidence that a potential
rap market was harmed in any way by 2 Live
Crew's parody, rap version. The fact that 2 Live
Crew's parody sold as part of a collection of rap
songs says very little about the parody's effect on a
market for a rap version of the original, either of the
music alone or of the music with its lyrics. The
District Court essentially passed
23 See Nimmer 13.05[A][ 4], p. 13-102.61 ("a
substantially adverse impact on the potential
market"); Leval 1125 ("reasonably substantial"
harm); Patry & Perlmutter 697-698 (same).
24 In some cases it may be difficult to determine
whence the harm flows.
In such cases, the other fair use factors may provide
some indicia of the likely source of the harm. A
work whose overriding purpose and character is
parodic and whose borrowing is slight in relation to
its parody will be far less likely to cause cognizable
harm than a work with little parodic content and
much copying.

593
594
only parody but also rap music, and the derivative
market for rap music is a proper focus of enquiry,
see Harper & Row, supra, at 568; Nimmer
13.05[B]. Evidence of substantial harm to it would
weigh against a finding of fair use,23 because the
licensing of derivatives is an important economic
incentive to the creation of originals. See 17 U. S.
C. 106(2) (copyright owner has rights to
derivative works). Of course, the only harm to
derivatives that need concern us, as discussed
above, is the harm of market substitution. The fact
that a parody may impair the market for derivative
uses by the very effectiveness of its critical
commentary is no more relevant under copyright
than the like threat to the original market.24
Although 2 Live Crew submitted uncontroverted
affidavits on the question of market harm to the
original, neither they, nor Acuff-Rose, introduced
evidence or affidavits addressing the likely effect of
2 Live Crew's parodic rap song on the market for a

on this issue, observing that Acuff-Rose is free to

record "whatever version of the original it desires,"
754 F. Supp., at 1158; the Court of Appeals went
the other way by erroneous presumption. Contrary
to each treatment, it is impossible to deal with the
fourth factor except by recognizing that a silent
record on an important factor bearing on fair use
disentitled the proponent of the defense, 2 Live
Crew, to summary judgment. The evidentiary hole
will doubtless be plugged on remand.
III
It was error for the Court of Appeals to conclude
that the commercial nature of 2 Live Crew's parody
of "Oh, Pretty Woman" rendered it presumptively
unfair. No such evidentiary presumption is available
to address either the first factor, the character and
purpose of the use, or the fourth, market harm, in
determining whether a transformative use, such as

parody, is a fair one. The court also erred in holding

that 2 Live Crew had necessarily copied excessively
from the Orbison original, considering the parodic
purpose of the use. We therefore reverse the
judgment of the Court of Appeals and remand the
case for further proceedings consistent with this
opinion.

I guess I'll go on home, it's late There'll be

tomorrow night, but wait!

It is so ordered.

APPENDIX B TO OPINION OF THE COURT

APPENDIX A TO OPINION OF
THE COURT
"Oh, Pretty Woman" by Roy Orbison and William
Dees Pretty Woman, walking down the street,
Pretty Woman, the kind I like to meet,

What do I see
Is she walking back to me? Yeah, she's walking
back to me! Oh, Pretty Woman.

"Pretty Woman" as Recorded by 2 Live Crew Pretty

woman walkin' down the street
Pretty woman girl you look so sweet
Pretty woman you bring me down to that knee
Pretty woman you make me wanna beg please Oh,
pretty woman

Pretty Woman, I don't believe you,

you're not the truth,

Big hairy woman you need to shave that stuff Big

hairy woman you know I bet it's tough Big hairy
woman all that hair it ain't legit

No one could look as good as you Mercy

Pretty Woman, won't you pardon me, Pretty
Woman, I couldn't help but see,
596
'Cause you look like 'Cousin It' Big hairy woman
595
Appendix B to opinion of the Court
Pretty Woman, that you look lovely as can be Are
you lonely just like me?
Pretty Woman, stop a while,

Bald headed woman girl your hair won't grow Bald

headed woman you got a teeny weeny afro Bald
headed woman you know your hair could look
nice
Bald headed woman first you got to roll it with rice
Bald headed woman here, let me get this hunk of
biz for ya

Pretty Woman, talk a while,

Pretty Woman give your smile to me Pretty Woman,
yeah, yeah, yeah Pretty Woman, look my way,

Ya know what I'm saying you look

better than rice a roni
Oh bald headed woman

Pretty Woman, say you'll stay with me 'Cause I

need you, I'll treat you right Come to me baby, Be
mine tonight
Pretty Woman, don't walk on by, Pretty Woman,
don't make me cry, Pretty Woman, don't walk away,

Big hairy woman come on in

And don't forget your bald headed friend Hey pretty
woman let the boys
Jump in

Hey, O. K.
If that's the way it must be, O. K.

Two timin' woman girl you know you ain't right

Two timin' woman you's out with my boy last night
Two timin' woman that takes a load off my mind

Two timin' woman now I know the baby ain't mine

Oh, two timin' woman
Oh pretty woman
JUSTICE KENNEDY, concurring.
I agree that remand is appropriate and join the
opinion of the Court, with these further
observations about the fair use analysis of parody.
The common-law method instated by the fair use
provision of the copyright statute, 17 U. s. C. 107
(1988 ed. and Supp. IV), presumes that rules will
emerge from the course of decisions. I agree that
certain general principles
are now discernible to define the fair use exception
for parody. One of these rules, as the Court
observes, is that parody may qualify as fair use
regardless of whether it is published or per597
formed for profit. Ante, at 591. Another is that
parody may qualify as fair use only if it draws upon
the original composition to make humorous or
ironic
commentary
about
that
same
composition. Ante, at 580. It is not enough that the
parody use the original in a humorous fashion,
however creative that humor may be. The parody
must target the original, and not just its general
style, the genre of art to which it belongs, or society
as a whole (although if it targets the original, it may
target
those
features
as
well).
See Rogers v. Koons, 960 F.2d 301, 310 (CA2
1992) ("[T]hough the satire need not be only of the
copied work and may ... also be a parody of modern
society, the copied work must be, at least in part, an
object of the parody"); Fisher v. Dees, 794 F.2d
432, 436 (CA9 1986) ("[A] humorous or satiric
work deserves protection under the fair-use doctrine
only if the copied work is at least partly the target
of the work in question"). This prerequisite confines
fair use protection to works whose very subject is
the original composition and so necessitates some
borrowing from it. See MeA, Inc. v. Wilson, 677
F.2d 180, 185 (CA2 1981) ("[I]f the copyrighted
song is not at least in part an object of the parody,
there is no need to conjure it up"); Bisceglia,
Parody and Copyright Protection: Turning the
Balancing Act Into a Juggling Act, in ASCAP,
Copyright Law Symposium, No. 34, pp. 23-29
(1987). It also protects works we have reason to
fear will not be licensed by copyright holders who
wish to shield their works from criticism.

See Fisher, supra, at 437 ("Selfesteem is seldom

strong enough to permit the granting of permission
even in exchange for a reasonable fee"); Posner,
When Is Parody Fair Use?, 21 J. Legal Studies 67,
73 (1992) ("There is an obstruction when the
parodied work is a target of the parodist's criticism,
for it may be in the private interest of the copyright
owner, but not in the social interest, to suppress
criticism of the work") (emphasis deleted).
If we keep the definition of parody within these
limits, we have
gone most of the way towards satisfying the fourfactor

598
fair use test in 107. The first factor (the purpose
and character of use) itself concerns the definition
of parody. The second factor (the nature of the
copyrighted work) adds little to the first, since
"parodies almost invariably copy publicly known,
expressive works." Ante, at 586. The third factor
(the amount and substantiality of the portion used in
relation to the whole) is likewise subsumed within
the definition of parody. In determining whether an
alleged parody has taken too much, the target of the
parody is what gives content to the inquiry. Some
parodies, by their nature, require substantial
copying. See Elsmere Music, Inc. v. National
Broadcasting Co., 623 F.2d 252 (CA2 1980)
(holding that "I Love Sodom" skit on "Saturday
Night Live" is legitimate parody of the "I Love
New York" campaign). Other parodies, like Lewis
Carroll's "You Are Old, Father William," need only
take parts of the original composition. The third
factor does reinforce the principle that courts should
not accord fair use protection to profiteers who do
no more than add a few silly words to someone
else's song or place the characters from a familiar
work in novel or eccentric poses. See, e. g., Walt
Disney Productions v. Air Pirates, 581 F.2d
751 (CA9 1978); DC Comics Inc. v. Unlimited
Monkey Business, Inc., 598 F. Supp. 110 (ND Ga.
1984).
But,
as
I
believe
the
Court
acknowledges, ante, at 588-589, it is by no means a
test of mechanical application. In my view, it serves
in effect to ensure compliance with the targeting
requirement.
As to the fourth factor (the effect of the use on the
market for the original), the Court acknowledges

that it is legitimate for

parody to suppress demand for the original by its
critical effect. Ante, at 591-592. What it may not do
is usurp demand by its substitutive effect. Ibid. It
will be difficult, of course, for courts to determine
whether harm to the market results from a parody's
critical or substitutive effects. But again, if we keep
the definition of parody within appropriate bounds,
this inquiry may be of little significance. If a work
targets another for humorous or ironic effect, it is
by defini-

599
tion a new creative work. Creative works can
compete with other creative works for the same
market, even if their
appeal is overlapping. Factor four thus underscores
the importance of ensuring that the parody is in fact
an independent creative work, which is why the
parody must "make some critical comment or
statement about the original work which reflects the
original perspective of the parodist-thereby giving
the parody social value beyond its entertainment
function." Metro-Goldwyn-Mayer, Inc. v. Showcase
Atlanta Cooperative Productions, Inc., 479 F. Supp.
351, 357 (ND Ga. 1979).
The fair use factors thus
reinforce the importance of keeping the definition
of parody within proper limits. More than arguable
parodic content should be required to deem a
would-be parody a fair use. Fair use is an
affirmative defense, so doubts about whether a
given use is fair should not be resolved in favor of
the self-proclaimed parodist. We should not make it
easy for musicians to exploit existing works and
then later claim that their rendition was a valuable
commentary on the original. Almost any revamped
modern version of a familiar, composition can be
construed as a "comment on the naivete of the
original," ante, at 583, because of the difference in
style and because it will be amusing to hear how the
old tune sounds in the new genre. Just the thought
of a rap version of Beethoven's Fifth Symphony or
"Achy Breaky Heart" is bound to make people
smile. If we allow any weak transformation to
qualify as parody, however, we weaken the
protection of copyright. And underprotection of
copyright disserves the goals of copyright just as
much as overprotection, by reducing the financial
incentive to create.

The Court decides it is "fair to say that 2 Live

Crew's song reasonably could be perceived as
commenting on the original or criticizing it, to some
degree." Ibid. (applying the first fair use factor).
While I am not so assured that 2 Live Crew's song
is a legitimate parody, the Court's treatment of
600
the remaining factors leaves room for the District
Court to determine on remand that the song is not a
fair use. As future courts apply our fair use analysis,
they must take
care to ensure that not just any commercial takeoff
is rationalized post hoc as a parody.
With these observations, I join the opinion of the
Court.

601
The next page is purposely numbered 801. The
numbers between 600 and 801 were intentionally
omitted, in order to make it possible to publish the
orders with permanent page numbers, thus making
the official citations available upon publication of
the preliminary prints of the United States Reports.

602
OCTOBER 4, 1993
Appeal Dismissed
No. 93-208. IDAHO HISPANIC CAUCUS, INC.,
ET AL. V. IDAHO ET AL. Appeal from D. C. Idaho
dismissed for want of jurisdiction.
Certiorari Granted-Vacated and Remanded
No.
92-1596.
LIBERTY
MORTGAGE
CO. V. FREY ET AL. C. A. 10th Cir. Certiorari
granted, judgment vacated, and case remanded for
further
consideration
in
light
of Nobelman v. American Savings Bank, 508 U. S.
324 (1993). Reported below: 982
No. 92-1826. TEXAS V. PARRISH. Ct. Crim. App.
Tex. Certiorari granted, judgment vacated, and case

remanded for further consideration in light

of United States v. Dixon, 509 U. S. 688 (1993).
Reported below: 872 S. W. 2d 224.
No. 92-1968. BODIE V. CITY OF HUNTSVILLE
ET AL. C. A. 11th Cir. Certiorari granted, judgment
vacated, and case remanded for further
consideration in light of Leatherman v. Tarrant
County Narcotics Intelligence and Coordination
Unit, 507
No. 92-8022. SAFFEELS V. UNITED STATES. C.
A. 8th Cir.
Motion of petitioner for leave to proceed in forma
pauperis granted. Certiorari granted, judgment
vacated, and case remanded for further
consideration
in
light
of Stinson v. United
States, 508 U. S. 36 (1993). Reported below: 982
F.2d 1199.
No. 92-8439. RINCON V. UNITED STATES. C. A.
9th Cir.
Motion of petitioner for leave to proceed in forma
pauperis granted. Certiorari granted, judgment
vacated, and case remanded for further
consideration in light of Daubert v. Merrell Dow
Pharmaceuticals, Inc., 509 U. S. 579 (1993).
Reported below: 984 F.2d 1003.
No. 92-8613. EVANS V. UNITED STATES. C. A.
11th Cir.
Motion of petitioner for leave to proceed in forma
pauperis 801