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Intellectual Property Law Cases

G.R. No. 148222 August 15, 2003


PEARL & DEAN (PHIL.), INCORPORATED, Petitioner,
vs.
SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, Respondents.
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 decision1 of the Court of Appeals reversing the October 31,
1996 decision2of the Regional Trial Court of Makati, Branch 133, in Civil Case No. 92-516 which declared
private respondents Shoemart Inc. (SMI) and North Edsa Marketing Inc. (NEMI) liable for infringement of
trademark and copyright, and unfair competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of Appeals3 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 Dean’s General Manager, Rodolfo Vergara, submitted for signature the
contracts covering SM Cubao and SM Makati to SMI’s 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, SMI’s house counsel informed Pearl and Dean that it was
rescinding the contract for SM Makati due to non-performance of the terms thereof. In his reply dated
February 17, 1986, Vergara protested the unilateral action of SMI, saying it was without basis. In the same
letter, he pushed for the signing 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 Shoemart’s chain of stores. SMI approved the proposal
and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its contract with
Metro Industrial was terminated, SMI engaged the services of EYD Rainbow Advertising Corporation to
make the light boxes. Some 300 units were fabricated in 1991. These were delivered on a staggered basis
and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed at
SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that aside
from the two (2) reported SM branches, light boxes similar to those it manufactures were also installed in
two (2) other SM stores. It further discovered that defendant-appellant North Edsa Marketing Inc. (NEMI),
through its marketing arm, Prime Spots Marketing Services, was set up primarily to sell advertising space
in lighted display units located in SMI’s 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 SMI’s 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 SMI’s 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
Dean’s copyright. SMI noted that the registration of the mark "Poster Ads" was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word "Poster Ads" is a generic term
which 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 SMI’s good name.
On this basis, SMI, aside from praying for the dismissal of the case, also counterclaimed for moral, actual
and exemplary damages and for the cancellation of Pearl and Dean’s Certification 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 SMI’s averments, admissions and denials and prayed
for similar reliefs and counterclaims as SMI."
The RTC of Makati City decided in favor of P & D:
Wherefore, defendants SMI and NEMI are found jointly and severally liable for infringement of copyright
under Section 2 of PD 49, as amended, and infringement of trademark under Section 22 of RA No. 166, as
amended, and are hereby penalized under Section 28 of PD 49, as amended, and Sections 23 and 24 of
RA 166, as amended. Accordingly, defendants are hereby directed:
(1) to pay plaintiff the following damages:
(a) actual damages - ₱16,600,000.00,
representing profits
derived by defendants
as a result of infringe-
ment of plaintiff’s copyright
from 1991 to 1992
(b) moral damages - ₱1,000.000.00
(c) exemplary damages - ₱1,000,000.00
(d) attorney’s fees - ₱1,000,000.00
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 plaintiff’s light boxes and its trademark
"Poster Ads".
Defendants’ counterclaims are hereby ordered dismissed for lack of merit.
SO ORDERED.4
On appeal, however, the Court of Appeals reversed the trial court:
Since the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable class
"O" work, we have to agree with SMI when it posited that what was copyrighted were the technical
drawings only, and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a utilitarian object, a copyright over the drawings like plaintiff-
appellant’s 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 "Selden’s Condensed Ledger or Bookkeeping Simplified" which purported to
explain a new system of bookkeeping. Included as part of the book were blank forms and illustrations
consisting of ruled lines and headings, specially designed for use in connection with the system explained
in the work. These forms showed the entire operation of a day or a week or a month on a single page, or
on two pages following each other. The defendant Baker then produced forms which were similar to the
forms illustrated in Selden’s copyrighted books. The Court held that exclusivity to the actual forms is not
extended by a copyright. The reason was that "to grant a monopoly in the underlying 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 plaintiff’s 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 Dean’s copyright over the technical drawings of
the latter’s 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 registrant’s ownership of
the mark or trade-name, and of the registrant’s exclusive right to use the same in connection with the
goods, business or 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 Dean’s registered trademark and
defendants-appellants’ "Poster Ads" design, as well as the parallel use by which said words were used in
the parties’ respective advertising copies, we cannot find defendants-appellants liable for infringement of
trademark. "Poster Ads" was registered by Pearl and Dean for specific use in its stationeries, in contrast to
defendants-appellants who used the same words in their advertising display units. Why Pearl and Dean
limited the use of its trademark to stationeries is simply beyond us. But, having already done so, it must
stand by the consequence of the registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-appellants that the words "Poster Ads" are a simple
contraction of the generic term poster advertising. In the absence of any convincing proof that "Poster Ads"
has acquired a secondary meaning in this jurisdiction, we find that Pearl and Dean’s 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 Court’s 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 & DEAN’S 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 LATTER’S 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,
ATTORNEY’S FEES AND COSTS OF SUIT.6
ISSUES
In resolving this very interesting case, we are challenged once again to put into proper perspective four
main concerns of intellectual property law — patents, copyrights, trademarks and unfair competition arising
from infringement of any of the first three. We shall focus then on the following issues:
(1) if the engineering or technical drawings of an advertising display unit (light box) are granted
copyright protection (copyright certificate of registration) by the National Library, is the light box
depicted in such engineering drawings ipso facto also protected by such copyright?
(2) or should the light box be registered separately and protected by a patent issued by the Bureau
of Patents Trademarks and Technology Transfer (now Intellectual Property Office) — in addition to
the copyright of the engineering drawings?
(3) can the owner of a registered trademark legally prevent others from using such trademark if it is
a mere abbreviation of a term descriptive of his goods, services or business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI had the
units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously, petitioner’s
position was premised on its belief that its copyright over the engineering drawings extended ipso facto to
the light boxes depicted or illustrated in said drawings. In ruling that there was no copyright infringement,
the Court of Appeals held that the copyright was limited to the drawings alone and not to the light box itself.
We agree with the appellate court.
First, petitioner’s application for a copyright certificate — as well as Copyright Certificate No. PD-R2588
issued by the National Library on January 20, 1981 — clearly stated that it was for a class "O" work under
Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. Said
Section 2 expressly enumerated the works subject to copyright:
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any of
the following works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps;
xxx xxx xxx
Although petitioner’s 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, petitioner’s copyright
protection extended only to the technical drawings and not to the light box itself because the latter was not
at all in the category of "prints, pictorial illustrations, advertising copies, labels, tags and box wraps." Stated
otherwise, even as we find that P & D indeed owned a valid copyright, the same could have referred only to
the technical drawings within the category of "pictorial illustrations." It could not have possibly stretched out
to include the underlying light box. The strict application9 of the law’s enumeration in Section 2 prevents us
from giving petitioner even a little leeway, that is, even if its copyright certificate was entitled "Advertising
Display Units." What the law does not include, it excludes, and for the good reason: the light box was not a
literary or artistic 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 & D’s technical drawings for sale to the public without license from P &
D, then no doubt they would have been guilty of copyright infringement. But this was not the case. SMI’s
and NEMI’s acts complained of by P & D were to have units similar or identical to the light box illustrated in
the technical drawings manufactured by Metro and EYD Rainbow Advertising, for leasing out to different
advertisers. Was this an infringement of petitioner’s copyright over the technical drawings? We do not think
so.
During the trial, the president of P & D himself admitted that the light box was neither a literary not an
artistic work but an "engineering or marketing invention."10 Obviously, there appeared to be some confusion
regarding what ought or ought not to be the proper subjects of copyrights, patents and trademarks. In the
leading case of Kho vs. Court of Appeals,11 we ruled that these three legal rights are completely distinct and
separate from one another, and the protection afforded by one cannot be used interchangeably to cover
items or works that exclusively pertain to the others:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with
one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its manufacture and commercial use of the light boxes without
license from petitioner, private respondents cannot be held legally liable for infringement of P & D’s
copyright over itstechnical drawings of the said light boxes, should they be liable instead for infringement of
patent? We do not think so either.
For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired no
patent rights which could have protected its invention, if in fact it really was. And because it had no patent,
petitioner could not legally prevent anyone from manufacturing or commercially using the contraption.
In Creser Precision Systems, Inc. vs. Court of Appeals,12 we held that "there can be no infringement of a
patent until a patent has been issued, since whatever right one has to the invention covered by the patent
arises alone from the grant of patent. 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 petitioner’s 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. O’Donnel,16 "The act secured to the inventor the exclusive
right to make use, and vend the thing patented, and consequently to prevent others from exercising like
privileges without the consent of the patentee. It was passed for the purpose of encouraging useful
invention and promoting new and useful inventions by the protection and stimulation given to inventive
genius, and was intended to secure to the public, after the lapse of the exclusive privileges granted the
benefit of such inventions and improvements."
The law attempts to strike an ideal balance between the two interests:
"(The p)atent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure
of new useful and non-obvious advances in technology and design, in return for the exclusive right to
practice the invention for a number of years. The inventor may keep his invention secret and reap its fruits
indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is
granted. An exclusive enjoyment is guaranteed him for 17 years, but upon the expiration of that period, the
knowledge of the invention inures to the people, who are thus enabled to practice it and profit by its use."17
The patent law has a three-fold purpose: "first, patent law seeks to foster and reward invention; second, it
promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the
invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free use of the public."18
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-depth
investigation is required because "in rewarding a useful invention, the rights and welfare of the community
must be fairly dealt with and effectively guarded. To that end, the prerequisites to obtaining a patent are
strictly observed and when a patent is issued, the limitations on its exercise are equally strictly enforced. To
begin with, a genuine invention or discovery must be demonstrated lest in the constant demand for new
appliances, the heavy hand of tribute be laid on each slight technological advance in art."19
There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effect
that a person is claiming the creation of a work. The law confers the copyright from the moment of
creation20 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 box’s eligibility as a patentable invention. The irony here is that, had petitioner secured a
patent instead, its exclusivity would have been for 17 years only. But through the simplified procedure of
copyright-registration with the National Library — without undergoing the rigor of defending the patentability
of its invention before the IPO and the public — the petitioner would be protected for 50 years. This
situation could not have been the intention of the law.
In the oft-cited case of Baker vs. Selden21 , the United States Supreme Court held that only the expression
of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the copyright of a book
which expounded on a new accounting system he had developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant reproduced forms similar to those illustrated in the
plaintiff’s copyrighted book. The US Supreme Court ruled that:
"There is no doubt that a work on the subject of book-keeping, though only explanatory of well known
systems, may be the subject of a copyright; but, then, it is claimed only as a book. x x x. But there is a clear
distinction between the books, as such, and the art, which it is, intended to illustrate. The mere statement of
the proposition is so evident that it requires hardly any argument to support it. The same distinction may be
predicated of every other art as well as that of bookkeeping. A treatise on the composition and use of
medicines, be they old or new; on the construction and use of ploughs or watches or churns; or on the
mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the
effect of perspective, would be the subject of copyright; but no one would contend that the copyright of the
treatise would give the exclusive right to the art or manufacture described therein. The copyright of the
book, if not pirated from other works, would be valid without regard to the novelty or want of novelty of its
subject matter. The novelty of the art or thing described or explained has nothing to do with the validity of
the copyright. To give to the author of the book an exclusive property in the art described therein,
when no examination of its novelty has ever been officially made, would be a surprise and a fraud
upon the public. That is the province of letters patent, not of copyright. The claim to an invention of
discovery of an art or manufacture must be subjected to the examination of the Patent Office before
an exclusive right therein can be obtained; and a patent from the government can only secure it.
The difference between the two things, letters patent and copyright, may be illustrated by reference to the
subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in
the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians
generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives
that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the
mixture as a new art, manufacture or composition of matter. He may copyright his book, if he
pleases; but that only secures to him the exclusive right of printing and publishing his book. So of
all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,
gives no exclusive right to the modes of drawing described, though they may never have been known or
used before. By publishing the book without getting a patent for the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his book, or any material part thereof, as a book intended
to convey instruction in the art, any person may practice and use the art itself which he has described and
illustrated therein. The use of the art is a totally different thing from a publication of the book
explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell and
use account books prepared upon the plan set forth in such book. Whether the art might or might not have
been patented, is a question, which is not before us. It was not patented, and is open and free to the use of
the public. And, of course, in using the art, the ruled lines and headings of accounts must necessarily be
used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas
produced by the peculiar nature of the art described in the books, which have been made the subject of
copyright. In describing the art, the illustrations and diagrams employed happened to correspond more
closely than usual with the actual work performed by the operator who uses the art. x x x The description
of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive
claim to the art itself. The object of the one is explanation; the object of the other is use. The former
may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters
patent." (underscoring supplied)
ON THE ISSUE OF TRADEMARK INFRINGEMENT
This issue concerns the use by respondents of the mark "Poster Ads" which petitioner’s 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,23where we, invoking Section 20 of the old Trademark Law, ruled that "the certificate of registration
issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only
to those goods specified in the certificate, subject to any conditions and limitations specified in the
certificate x 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. 1âwphi1

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 petitioner’s complaint in the RTC also cited unfair
competition, the trial court did not find private respondents liable therefor. Petitioner did not appeal this
particular point; hence, it 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.27In this case, there was no evidence that P & D’s use of "Poster Ads"
was distinctive or well-known. As noted by the Court of Appeals, petitioner’s 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 petitioner’s own expert witness that
he himself could not associate "Poster Ads" with petitioner P & D because it was "too generic" definitely
precluded the application 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, Sandoval-Gutierrez, and Carpio-Morales, JJ., concur.

G.R. No. 172835 December 13, 2007


AIR PHILIPPINES CORPORATION, Petitioner,
vs.
PENNSWELL, INC. Respondent.
DECISION
CHICO-NAZARIO, J.:
Petitioner Air Philippines Corporation seeks, via the instant Petition for Review under Rule 45 of the Rules
of Court, the nullification of the 16 February 2006 Decision1 and the 25 May 2006 Resolution2 of the Court
of Appeals in CA-G.R. SP No. 86329, which affirmed the Order 3 dated 30 June 2004 of the Regional Trial
Court (RTC), Makati City, Branch 64, in Civil Case No. 00-561.
Petitioner Air Philippines Corporation is a domestic corporation engaged in the business of air
transportation services. On the other hand, respondent Pennswell, Inc. was organized to engage in the
business of manufacturing and selling industrial chemicals, solvents, and special lubricants.
On various dates, respondent delivered and sold to petitioner sundry goods in trade, covered by Sales
Invoices No. 8846,4 9105,5 8962,6 and 8963,7 which correspond to Purchase Orders No. 6433, 6684, 6634
and 6633, respectively. Under the contracts, petitioner’s total outstanding obligation amounted to
₱449,864.98 with interest at 14% per annum until the amount would be fully paid. For failure of the
petitioner to comply with its obligation under said contracts, respondent filed a Complaint8 for a Sum of
Money on 28 April 2000 with the RTC.
In its Answer,9 petitioner contended that its refusal to pay was not without valid and justifiable reasons. In
particular, petitioner alleged that it was defrauded in the amount of ₱592,000.00 by respondent for its
previous sale of four items, covered by Purchase Order No. 6626. Said items were misrepresented by
respondent as belonging to a new line, but were in truth and in fact, identical with products petitioner had
previously purchased from respondent. Petitioner asserted that it was deceived by respondent which
merely altered the names and labels of such goods. Petitioner specifically identified the items in question,
as follows:
Label/Description Item No. Amount P.O. Date
1. a. Anti-Friction Fluid MPL-800 153,941.40 5714 05/20/99
b. Excellent Rust Corrosion (fake) MPL-008 155,496.00 5888 06/20/99

2. a. Contact Grease COG #2 115,236.00 5540 04/26/99


b. Connector Grease (fake) CG 230,519.52 6327 08/05/99

3. a. Trixohtropic Grease EPC 81,876.96 4582 01/29/99


b. Di-Electric Strength Protective EPC#2 81,876.96 5446 04/21/99
Coating (fake)

4. a. Dry Lubricant ASC-EP 87,346.52 5712 05/20/99


b. Anti-Seize Compound (fake) ASC-EP 124,108.10 4763 & 02/16/99 &
2000 5890 06/24/99

According to petitioner, respondent’s products, namely Excellent Rust Corrosion, Connector Grease,
Electric Strength Protective Coating, and Anti-Seize Compound, are identical with its Anti-Friction Fluid,
Contact Grease, Thixohtropic Grease, and Dry Lubricant, respectively. Petitioner asseverated that had
respondent been forthright about the identical character of the products, it would not have purchased the
items complained of. Moreover, petitioner alleged that when the purported fraud was discovered, a
conference was held between petitioner and respondent on 13 January 2000, whereby the parties agreed
that respondent would return to petitioner the amount it previously paid. However, petitioner was surprised
when it received a letter from the respondent, demanding payment of the amount of ₱449,864.94, which
later became the subject of respondent’s Complaint for Collection of a Sum of Money against petitioner.
During the pendency of the trial, petitioner filed a Motion to Compel 10 respondent to give a detailed list of
the ingredients and chemical components of the following products, to wit: (a) Contact Grease and
Connector Grease; (b) Thixohtropic Grease and Di-Electric Strength Protective Coating; and (c) Dry
Lubricant and Anti-Seize Compound.11 It appears that petitioner had earlier requested the Philippine
Institute of Pure and Applied Chemistry (PIPAC) for the latter to conduct a comparison of respondent’s
goods.
On 15 March 2004, the RTC rendered an Order granting the petitioner’s motion. It disposed, thus:
The Court directs [herein respondent] Pennswell, Inc. to give [herein petitioner] Air Philippines
Corporation[,] a detailed list of the ingredients or chemical components of the following chemical products:
a. Contact Grease to be compared with Connector Grease;
b. Thixohtropic Grease to be compared with Di-Electric Strength Protective Coating; and
c. Dry Lubricant to be compared with Anti-Seize Compound[.]
[Respondent] Pennswell, Inc. is given fifteen (15) days from receipt of this Order to submit to [petitioner] Air
Philippines Corporation the chemical components of all the above-mentioned products for chemical
comparison/analysis.12
Respondent sought reconsideration of the foregoing Order, contending that it cannot be compelled to
disclose the chemical components sought because the matter is confidential. It argued that what petitioner
endeavored to inquire upon constituted a trade secret which respondent cannot be forced to divulge.
Respondent maintained that its products are specialized lubricants, and if their components were revealed,
its business competitors may easily imitate and market the same types of products, in violation of its
proprietary rights and to its serious damage and prejudice.
The RTC gave credence to respondent’s reasoning, and reversed itself. It issued an Order dated 30 June
2004, finding that the chemical components are respondent’s trade secrets and are privileged in character.
A priori, it rationalized:
The Supreme Court held in the case of Chavez vs. Presidential Commission on Good Government, 299
SCRA 744, p. 764, that "the drafters of the Constitution also unequivocally affirmed that aside from national
security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual
Property Code and other related laws) as well as banking transactions (pursuant to the Secrecy of Bank
Deposit Act) are also exempted from compulsory disclosure."
Trade secrets may not be the subject of compulsory disclosure. By reason of [their] confidential and
privileged character, ingredients or chemical components of the products ordered by this Court to be
disclosed constitute trade secrets lest [herein respondent] would eventually be exposed to unwarranted
business competition with others who may imitate and market the same kinds of products in violation of
[respondent’s] proprietary rights. Being privileged, the detailed list of ingredients or chemical components
may not be the subject of mode of discovery under Rule 27, Section 1 of the Rules of Court, which
expressly makes privileged information an exception from its coverage.13
Alleging grave abuse of discretion on the part of the RTC, petitioner filed a Petition for Certiorari under Rule
65 of the Rules of Court with the Court of Appeals, which denied the Petition and affirmed the Order dated
30 June 2004 of the RTC.
The Court of Appeals ruled that to compel respondent to reveal in detail the list of ingredients of its
lubricants is to disregard respondent’s rights over its trade secrets. It was categorical in declaring that the
chemical formulation of respondent’s products and their ingredients are embraced within the meaning of
"trade secrets." In disallowing the disclosure, the Court of Appeals expounded, thus:
The Supreme Court in Garcia v. Board of Investments (177 SCRA 374 [1989]) held that trade secrets and
confidential, commercial and financial information are exempt from public scrutiny. This is reiterated in
Chavez v. Presidential Commission on Good Government (299 SCRA 744 [1998]) where the Supreme
Court enumerated the kinds of information and transactions that are recognized as restrictions on or
privileges against compulsory disclosure. There, the Supreme Court explicitly stated that:
"The drafters of the Constitution also unequivocally affirmed that, aside from national security matters and
intelligence information, trade or industrial secrets (pursuant to the Intellectual Property Code and other
related laws) as well as banking transactions (pursuant to the Secrecy of Bank Deposits Act) re also
exempt from compulsory disclosure."
It is thus clear from the foregoing that a party cannot be compelled to produce, release or disclose
documents, papers, or any object which are considered trade secrets.
In the instant case, petitioner [Air Philippines Corporation] would have [respondent] Pennswell produce a
detailed list of ingredients or composition of the latter’s lubricant products so that a chemical comparison
and analysis thereof can be obtained. On this note, We believe and so hold that the ingredients or
composition of [respondent] Pennswell’s lubricants are trade secrets which it cannot be compelled to
disclose.
[Respondent] Pennswell has a proprietary or economic right over the ingredients or components of its
lubricant products. The formulation thereof is not known to the general public and is peculiar only to
[respondent] Pennswell. The legitimate and economic interests of business enterprises in protecting their
manufacturing and business secrets are well-recognized in our system.
[Respondent] Pennswell has a right to guard its trade secrets, manufacturing formulas, marketing
strategies and other confidential programs and information against the public. Otherwise, such information
can be illegally and unfairly utilized by business competitors who, through their access to [respondent]
Pennswell’s business secrets, may use the same for their own private gain and to the irreparable prejudice
of the latter.
xxxx
In the case before Us, the alleged trade secrets have a factual basis, i.e., it comprises of the ingredients
and formulation of [respondent] Pennswell’s lubricant products which are unknown to the public and
peculiar only to Pennswell.
All told, We find no grave abuse of discretion amounting to lack or excess of jurisdiction on the part of
public respondent Judge in finding that the detailed list of ingredients or composition of the subject lubricant
products which petitioner [Air Philippines Corporation] seeks to be disclosed are trade secrets of
[respondent] Pennswell; hence, privileged against compulsory disclosure.14
Petitioner’s Motion for Reconsideration was denied.
Unyielding, petitioner brought the instant Petition before us, on the sole issue of:
WHETHER THE COURT OF APPEALS RULED IN ACCORDANCE WITH PREVAILING LAWS AND
JURISPRUDENCE WHEN IT UPHELD THE RULING OF THE TRIAL COURT THAT THE CHEMICAL
COMPONENTS OR INGREDIENTS OF RESPONDENT’S PRODUCTS ARE TRADE SECRETS OR
INDUSTRIAL SECRETS THAT ARE NOT SUBJECT TO COMPULSORY DISCLOSURE.15

Petitioner seeks to convince this Court that it has a right to obtain the chemical composition and ingredients
of respondent’s products to conduct a comparative analysis of its products. Petitioner assails the
conclusion reached by the Court of Appeals that the matters are trade secrets which are protected by law
and beyond public scrutiny. Relying on Section 1, Rule 27 of the Rules of Court, petitioner argues that the
use of modes of discovery operates with desirable flexibility under the discretionary control of the trial court.
Furthermore, petitioner posits that its request is not done in bad faith or in any manner as to annoy,
embarrass, or oppress respondent.
A trade secret is defined as a plan or process, tool, mechanism or compound known only to its owner and
those of his employees to whom it is necessary to confide it.16 The definition also extends to a secret
formula or process not patented, but known only to certain individuals using it in compounding some article
of trade having a commercial value. 17 A trade secret may consist of any formula, pattern, device, or
compilation of information that: (1) is used in one's business; and (2) gives the employer an opportunity to
obtain an advantage over competitors who do not possess the information. 18 Generally, a trade secret is a
process or device intended for continuous use in the operation of the business, for example, a machine or
formula, but can be a price list or catalogue or specialized customer list. 19 It is indubitable that trade
secrets constitute proprietary rights. The inventor, discoverer, or possessor of a trade secret or similar
innovation has rights therein which may be treated as property, and ordinarily an injunction will be granted
to prevent the disclosure of the trade secret by one who obtained the information "in confidence" or through
a "confidential relationship."20 American jurisprudence has utilized the following factors21 to determine if an
information is a trade secret, to wit:
(1) the extent to which the information is known outside of the employer's business;
(2) the extent to which the information is known by employees and others involved in the business;
(3) the extent of measures taken by the employer to guard the secrecy of the information;
(4) the value of the information to the employer and to competitors;
(5) the amount of effort or money expended by the company in developing the information; and
(6) the extent to which the information could be easily or readily obtained through an independent
source.22
In Cocoland Development Corporation v. National Labor Relations Commission,23 the issue was the
legality of an employee’s termination on the ground of unauthorized disclosure of trade secrets. The Court
laid down the rule that any determination by management as to the confidential nature of technologies,
processes, formulae or other so-called trade secrets must have a substantial factual basis which can pass
judicial scrutiny. The Court rejected the employer’s naked contention that its own determination as to what
constitutes a trade secret should be binding and conclusive upon the NLRC. As a caveat, the Court said
that to rule otherwise would be to permit an employer to label almost anything a trade secret, and thereby
create a weapon with which he/it may arbitrarily dismiss an employee on the pretext that the latter
somehow disclosed a trade secret, even if in fact there be none at all to speak of.24 Hence, in Cocoland,
the parameters in the determination of trade secrets were set to be such substantial factual basis that can
withstand judicial scrutiny.
The chemical composition, formulation, and ingredients of respondent’s special lubricants are trade secrets
within the contemplation of the law. Respondent was established to engage in the business of general
manufacturing and selling of, and to deal in, distribute, sell or otherwise dispose of goods, wares,
merchandise, products, including but not limited to industrial chemicals, solvents, lubricants, acids, alkalies,
salts, paints, oils, varnishes, colors, pigments and similar preparations, among others. It is unmistakable to
our minds that the manufacture and production of respondent’s products proceed from a formulation of a
secret list of ingredients. In the creation of its lubricants, respondent expended efforts, skills, research, and
resources. What it had achieved by virtue of its investments may not be wrested from respondent on the
mere pretext that it is necessary for petitioner’s defense against a collection for a sum of money. By and
large, the value of the information to respondent is crystal clear. The ingredients constitute the very fabric of
respondent’s production and business. No doubt, the information is also valuable to respondent’s
competitors. To compel its disclosure is to cripple respondent’s business, and to place it at an undue
disadvantage. If the chemical composition of respondent’s lubricants are opened to public scrutiny, it will
stand to lose the backbone on which its business is founded. This would result in nothing less than the
probable demise of respondent’s business. Respondent’s proprietary interest over the ingredients which it
had developed and expended money and effort on is incontrovertible. Our conclusion is that the detailed
ingredients sought to be revealed have a commercial value to respondent. Not only do we acknowledge the
fact that the information grants it a competitive advantage; we also find that there is clearly a glaring intent
on the part of respondent to keep the information confidential and not available to the prying public.
We now take a look at Section 1, Rule 27 of the Rules of Court, which permits parties to inspect documents
or things upon a showing of good cause before the court in which an action is pending. Its entire provision
reads:
SECTION 1. Motion for production or inspection order. – Upon motion of any party showing good cause
therefore, the court in which an action is pending may (a) order any party to produce and permit the
inspection and copying or photographing, by or on behalf of the moving party, of any designated
documents, papers, books, accounts, letters, photographs, objects or tangible things, not privileged, which
constitute or contain evidence material to any matter involved in the action and which are in his possession,
custody or control; or (b) order any party to permit entry upon designated land or other property in his
possession or control for the purpose of inspecting, measuring, surveying, or photographing the property or
any designated relevant object or operation thereon. The order shall specify the time, place and manner of
making the inspection and taking copies and photographs, and may prescribe such terms and conditions
as are just.
A more than cursory glance at the above text would show that the production or inspection of documents or
things as a mode of discovery sanctioned by the Rules of Court may be availed of by any party upon a
showing of good cause therefor before the court in which an action is pending. The court may order any
party: a) to produce and permit the inspection and copying or photographing of any designated documents,
papers, books, accounts, letters, photographs, objects or tangible things, which are not privileged; 25 which
constitute or contain evidence material to any matter involved in the action; and which are in his
possession, custody or control; or b) to permit entry upon designated land or other property in his
possession or control for the purpose of inspecting, measuring, surveying, or photographing the property or
any designated relevant object or operation thereon.
Rule 27 sets an unequivocal proviso that the documents, papers, books, accounts, letters, photographs,
objects or tangible things that may be produced and inspected should not be privileged. 26 The documents
must not be privileged against disclosure.27 On the ground of public policy, the rules providing for
production and inspection of books and papers do not authorize the production or inspection of privileged
matter; that is, books and papers which, because of their confidential and privileged character, could not be
received in evidence.28 Such a condition is in addition to the requisite that the items be specifically
described, and must constitute or contain evidence material to any matter involved in the action and which
are in the party’s possession, custody or control.
Section 2429 of Rule 130 draws the types of disqualification by reason of privileged communication, to wit:
(a) communication between husband and wife; (b) communication between attorney and client; (c)
communication between physician and patient; (d) communication between priest and penitent; and (e)
public officers and public interest. There are, however, other privileged matters that are not mentioned by
Rule 130. Among them are the following: (a) editors may not be compelled to disclose the source of
published news; (b) voters may not be compelled to disclose for whom they voted; (c) trade secrets; (d)
information contained in tax census returns; and (d) bank deposits. 30
We, thus, rule against the petitioner. We affirm the ruling of the Court of Appeals which upheld the finding of
the RTC that there is substantial basis for respondent to seek protection of the law for its proprietary rights
over the detailed chemical composition of its products.
That trade secrets are of a privileged nature is beyond quibble. The protection that this jurisdiction affords
to trade secrets is evident in our laws. The Interim Rules of Procedure on Government Rehabilitation,
effective 15 December 2000, which applies to: (1) petitions for rehabilitation filed by corporations,
partnerships, and associations pursuant to Presidential Decree No. 902-A,31 as amended; and (2) cases
for rehabilitation transferred from the Securities and Exchange Commission to the RTCs pursuant to
Republic Act No. 8799, otherwise known as The Securities Regulation Code, expressly provides that the
court may issue an order to protect trade secrets or other confidential research, development, or
commercial information belonging to the debtor. 32 Moreover, the Securities Regulation Code is explicit that
the Securities and Exchange Commission is not required or authorized to require the revelation of trade
secrets or processes in any application, report or document filed with the Commission.33 This
confidentiality is made paramount as a limitation to the right of any member of the general public, upon
request, to have access to all information filed with the Commission.34
Furthermore, the Revised Penal Code endows a cloak of protection to trade secrets under the following
articles:
Art. 291. Revealing secrets with abuse of office. — The penalty of arresto mayor and a fine not exceeding
500 pesos shall be imposed upon any manager, employee or servant who, in such capacity, shall learn the
secrets of his principal or master and shall reveal such secrets.
Art. 292. Revelation of industrial secrets. — The penalty of prision correccional in its minimum and medium
periods and a fine not exceeding 500 pesos shall be imposed upon the person in charge, employee or
workman of any manufacturing or industrial establishment who, to the prejudice of the owner thereof, shall
reveal the secrets of the industry of
the latter.
Similarly, Republic Act No. 8424, otherwise known as the National Internal Revenue Code of 1997, has a
restrictive provision on trade secrets, penalizing the revelation thereof by internal revenue officers or
employees, to wit:
SECTION 278. Procuring Unlawful Divulgence of Trade Secrets. - Any person who causes or procures an
officer or employee of the Bureau of Internal Revenue to divulge any confidential information regarding the
business, income or inheritance of any taxpayer, knowledge of which was acquired by him in the discharge
of his official duties, and which it is unlawful for him to reveal, and any person who publishes or prints in
any manner whatever, not provided by law, any income, profit, loss or expenditure appearing in any income
tax return, shall be punished by a fine of not more than two thousand pesos (₱2,000), or suffer
imprisonment of not less than six (6) months nor more than five (5) years, or both.
Republic Act No. 6969, or the Toxic Substances and Hazardous and Nuclear Wastes Control Act of 1990,
enacted to implement the policy of the state to regulate, restrict or prohibit the importation, manufacture,
processing, sale, distribution, use and disposal of chemical substances and mixtures that present
unreasonable risk and/or injury to health or the environment, also contains a provision that limits the right
of the public to have access to records, reports or information concerning chemical substances
and mixtures including safety data submitted and data on emission or discharge into the
environment, if the matter is confidential such that it would divulge trade secrets, production or
sales figures; or methods, production or processes unique to such manufacturer, processor or
distributor; or would otherwise tend to affect adversely the competitive position of such
manufacturer, processor or distributor.35
Clearly, in accordance with our statutory laws, this Court has declared that intellectual and industrial
property rights cases are not simple property cases.36 Without limiting such industrial property rights to
trademarks and trade names, this Court has ruled that all agreements concerning intellectual property are
intimately connected with economic development.37 The protection of industrial property encourages
investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human
needs. It speeds up transfer of technology and industrialization, and thereby bring about social and
economic progress.38 Verily, the protection of industrial secrets is inextricably linked to the advancement of
our economy and fosters healthy competition in trade.
Jurisprudence has consistently acknowledged the private character of trade secrets. There is a privilege
1âwphi1

not to disclose one’s trade secrets.39 Foremost, this Court has declared that trade secrets and banking
transactions are among the recognized restrictions to the right of the people to information as embodied in
the Constitution.40 We said that the drafters of the Constitution also unequivocally affirmed that, aside from
national security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual
Property Code and other related laws) as well as banking transactions (pursuant to the Secrecy of Bank
Deposits Act), are also exempted from compulsory disclosure.41
Significantly, our cases on labor are replete with examples of a protectionist stance towards the trade
secrets of employers. For instance, this Court upheld the validity of the policy of a pharmaceutical company
prohibiting its employees from marrying employees of any competitor company, on the rationalization that
the company has a right to guard its trade secrets, manufacturing formulas, marketing strategies and other
confidential programs and information from competitors.42 Notably, it was in a labor-related case that this
Court made a stark ruling on the proper determination of trade secrets.
In the case at bar, petitioner cannot rely on Section 7743 of Republic Act 7394, or the Consumer Act of the
Philippines, in order to compel respondent to reveal the chemical components of its products. While it is
true that all consumer products domestically sold, whether manufactured locally or imported, shall indicate
their general make or active ingredients in their respective labels of packaging, the law does not apply to
respondent. Respondent’s specialized lubricants -- namely, Contact Grease, Connector Grease,
Thixohtropic Grease, Di-Electric Strength Protective Coating, Dry Lubricant and Anti-Seize Compound --
are not consumer products. "Consumer products," as it is defined in Article 4(q), 44 refers to goods, services
and credits, debts or obligations which are primarily for personal, family, household or agricultural
purposes, which shall include, but not be limited to, food, drugs, cosmetics, and devices. This is not the
nature of respondent’s products. Its products are not intended for personal, family, household or agricultural
purposes. Rather, they are for industrial use, specifically for the use of aircraft propellers and engines.
Petitioner’s argument that Republic Act No. 8203, or the Special Law on Counterfeit Drugs, requires the
disclosure of the active ingredients of a drug is also on faulty ground. 45 Respondent’s products are outside
the scope of the cited law. They do not come within the purview of a drug 46 which, as defined therein,
refers to any chemical compound or biological substance, other than food, that is intended for use in the
treatment, prevention or diagnosis of disease in man or animals. Again, such are not the characteristics of
respondent’s products.
What is clear from the factual findings of the RTC and the Court of Appeals is that the chemical formulation
of respondent’s products is not known to the general public and is unique only to it. Both courts uniformly
ruled that these ingredients are not within the knowledge of the public. Since such factual findings are
generally not reviewable by this Court, it is not duty-bound to analyze and weigh all over again the
evidence already considered in the proceedings below.47 We need not delve into the factual bases of such
findings as questions of fact are beyond the pale of Rule 45 of the Rules of Court. Factual findings of the
trial court when affirmed by the Court of Appeals, are binding and conclusive on the Supreme Court.48
We do not find merit or applicability in petitioner’s invocation of Section 12 49 of the Toxic Substances and
Hazardous and Nuclear Wastes Control Act of 1990, which grants the public access to records, reports or
information concerning chemical substances and mixtures, including safety data submitted, and data on
emission or discharge into the environment. To reiterate, Section 1250 of said Act deems as confidential
matters, which may not be made public, those that would divulge trade secrets, including production or
sales figures or methods; production or processes unique to such manufacturer, processor or distributor, or
would otherwise tend to affect adversely the competitive position of such manufacturer, processor or
distributor. It is true that under the same Act, the Department of Environment and Natural Resources may
release information; however, the clear import of the law is that said authority is limited by the right to
confidentiality of the manufacturer, processor or distributor, which information may be released only to a
medical research or scientific institution where the information is needed for the purpose of medical
diagnosis or treatment of a person exposed to the chemical substance or mixture. The right to
confidentiality is recognized by said Act as primordial. Petitioner has not made the slightest attempt to show
that these circumstances are availing in the case at bar.
Indeed, the privilege is not absolute; the trial court may compel disclosure where it is indispensable for
doing justice.51 We do not, however, find reason to except respondent’s trade secrets from the application
of the rule on privilege. The revelation of respondent’s trade secrets serves no better purpose to the
disposition of the main case pending with the RTC, which is on the collection of a sum of money. As can be
gleaned from the facts, petitioner received respondent’s goods in trade in the normal course of business.
To be sure, there are defenses under the laws of contracts and sales available to petitioner. On the other
hand, the greater interest of justice ought to favor respondent as the holder of trade secrets. If we were to
weigh the conflicting interests between the parties, we rule in favor of the greater interest of respondent.
Trade secrets should receive greater protection from discovery, because they derive economic value from
being generally unknown and not readily ascertainable by the public.52 To the mind of this Court, petitioner
was not able to show a compelling reason for us to lift the veil of confidentiality which shields respondent’s
trade secrets.
WHEREFORE, the Petition is DENIED. The Decision dated 16 February 2006, and the Resolution dated
25 May 2006, of the Court of Appeals in CA-G.R. SP No. 86329 are AFFIRMED. No costs.
SO ORDERED.
MINITA V. CHICO-NAZARIO
Associate Justice
Foot notes:

Sec. 24. Disqualification by reason of privileged communication. – The following persons cannot testify as
to matters learned in confidence in the following cases:
(a) The husband or the wife, during or after the marriage cannot be examined without the consent
of the other as to any communication received in confidence by one from the other during the
marriage except in a civil case by one against the other, or in a criminal case for a crime committed
by one against the other or the latter's direct descendants or ascendants;
(b) An attorney cannot, without the consent of his client, be examined as to any communication
made by the client to him, or his advice given thereon in the course of, or with a view to,
professional employment, nor can an attorney's secretary, stenographer, or clerk be examined,
without the consent of the client and his employer, concerning any fact the knowledge of which has
been acquired in such capacity;
(c) A person authorized to practice medicine, surgery or obstetrics cannot in a civil case, without the
consent of the patient, be examined as to any advice or treatment given by him or any information
which he may have acquired in attending such patient in a professional capacity, which information
was necessary to enable him to act in capacity, and which would blacken the reputation of the
patient;
(d) A minister or priest cannot, without the consent of the person making the confession, be
examined as to any confession made to or any advice given by him in his professional character in
the course of discipline enjoined by the church to which the minister or priest belongs;
(e) A public officer cannot be examined during his term of office or afterwards, as to
communications made to him in official confidence, when the court finds that the public interest
would suffer by the disclosure.
30 Francisco, Evidence (3rd ed., 1996), pp. 171-173.

31 SEC Reorganization Act.


32 Section 4, Rule 3 of the Interim Rules of Procedure on Government Rehabilitation.

33 Section 66.2 of the Securities Regulation Code of 2000 provides that, "66.2. Nothing in this Code shall
be construed to require, or to authorize the Commission to require, the revealing of trade secrets or
processes in any application, report, or document filed with the Commission.
34 SEC. 66. Revelation of Information Filed with the Commission. – 66.1. All information filed with the
Commission in compliance with the requirements of this Code shall be made available to any member of
the general public, upon request, in the premises and during regular office hours of the Commission,
except as set forth in this Section.
35 Section 12. - Public Access to Records, Reports or Notification. The public shall have access to records,
reports, or information concerning chemical substances and mixtures including safety data submitted, data
on emission or discharge into the environment, and such documents shall be available for inspection or
reproduction during normal business hours except that the Department of Environment and Natural
Resources may consider a record, report or information or particular portions thereof confidential and may
not be made public when such would divulge trade secrets, production or sales figures or methods,
production or processes unique to such manufacturer, processor or distributor, or would otherwise tend to
affect adversely the competitive position of such manufacturer, processor or distributor. The Department of
Environment and Natural Resources, however, may release information subject to claim of confidentiality to
a medical research or scientific institution where the information is needed for the purpose of medical
diagnosis or treatment of a person exposed to the chemical substance or mixture.
36 Mirpuri v. Court of Appeals, 376 Phil. 628 (1999).

37 Id.

38 Id. In Mirpuri (id. at 666), the Court acknowledges the Philippines’ respect for intellectual and industrial
property, and held:
The Intellectual Property Code of the Philippines declares that "an effective intellectual and
industrial property system is vital to the development of domestic and creative activity, facilitates
transfer of technology, it attracts foreign investments, and ensures market access for our products."
The Intellectual Property Code took effect on January 1, 1998 and by its express provision,
repealed the Trademark Law, the Patent Law, Articles 188 and 189 of the Revised Penal Code, the
Decree on Intellectual Property, and the Decree on Compulsory Reprinting of Foreign Textbooks.
The Code was enacted to strengthen the intellectual and industrial property system in the
Philippines as mandated by the country's accession to the Agreement Establishing the World Trade
Organization (WTO).
39 Id.

40 The pertinent Constitutional provisions on the right of the people to information are, to wit:

Sec. 7 [Article III]. The right of the people to information on matters of public concern shall be
recognized. Access to official records, and to documents, and papers pertaining to official acts,
transactions, or decisions, as well as to government research data used as basis for policy
development, shall be afforded the citizen, subject to such limitations as may be provided by law.
Sec. 28 [Article II]. Subject to reasonable conditions prescribed by law, the State adopts and
implements a policy of full public disclosure of all its transactions involving public interest.
41 Chavez v. Presidential Commission on Good Government and Magtanggol Gunigundo, 360 Phil. 133,
161 (1998).
42 Duncan Association of Detailman-PTGWO v. Glaxo Wellcome Philippines, Inc., G.R. No. 162994, 17
September 2004, 438 SCRA 343, 352; See also Star Paper Corporation v. Simbol, G.R. No. 164774, 12
April 2006, 487 SCRA 228, 242.
43 ARTICLE 77. Minimum Labeling Requirements for Consumer Products. All consumer products
domestically sold whether manufactured locally or imported shall indicate the following in their respective
labels of packaging:
a) its correct and registered trade name or brand name;
b) its duly registered trademark;
c) its duly registered business name;
d) the address of the manufacturer, importer, repacker of the consumer product in the Philippines;
e) its general make or active ingredients;
f) the net quantity of contents, in terms of weight, measure or numerical count rounded off to at
least the nearest tenths in the metric system;
g) country of manufacture, if imported; and
h) if a consumer product is manufactured, refilled or repacked under license from a principal, the
label shall so state the fact.
The following may be required by the concerned department in accordance with the rules and
regulations they will promulgate under authority of this Act:
a) whether it is flammable or inflammable;
b) directions for use, if necessary;
c) warning of toxicity;
d) wattage, voltage or amperage; or
e) process of manufacture used, if necessary.
Any word, statement or other information required by or under authority of the preceding paragraph
shall appear on the label or labeling with such conspicuousness as compared with other words,
statements, designs, or devices therein, and in such terms as to render it likely to be read and
understood by the ordinary individual under customary conditions of purchase or use.
The above requirements shall form an integral part of the label without danger of being erased or
detached under ordinary handling of the product.
44 ARTICLE 4. Definition of Terms. For purposes of this Act, the term:

xxxx
q) "Consumer products and services" means goods, services and credits, debts or obligations
which are primarily for personal, family, household or agricultural purposes, which shall include but
not limited to, food, drugs, cosmetics, and devices.
45 Petitioner cites the definition of a counterfeit drug/medicine in Republic Act 8203 or the Special Law on
Counterfeit Drugs to buttress its argument, specifically Section 3(b)(4) thereof, to wit:
a drug which contains no amount of, or a different active ingredient, or less than eighty percent
(80%) of the active ingredient it purports to possess, as distinguished from an adulterated drug
including reduction or loss or efficacy due to expiration.
46 SECTION 3. Definition of Terms – For purposes of this Act, the terms:

(a) Drugs shall refer to any chemical compound or biological substance, other than food, intended
for use in the treatment, prevention or diagnosis of disease in man or animals, including but not
limited to:
(1) any article recognized in the official United States Pharmacopoeia – National Formulary
(USP-NF), official Homeopathic Pharmacopoeia of the United States, Philippines National
Drug Formulary, British Pharmacopoeia, any National Compendium or any supplement to
any of them;
(2) any article intended for use in the diagnosis, cure mitigation, treatment, or prevention of
disease in man or animals;
(3) any article other than food intended to affect the structure or any function of the body of
man or animals;
(4) any article intended for use as a component of any articles specified in clauses (1), (2),
(3) not including devices or their components, parts, or accessories; and
(5) herbal and/or traditional drugs which are articles of plant or animal origin used in folk
medicine which are:
(a) recognized in the Philippine National Drug Formulary; (b) intended for use in the
treatment or cure or mitigation of disease symptoms, injury or body defect in man;
(c) other than food, intended to affect the structure or any function of the body of
man; (d) in finished or ready-to-use dosage form; and (e) intended for use as a
component of any of the articles specified in clauses (a), (b), (c) and (d).
47 Ceballos v. Intestate Estate of the Late Emigdio Mercado, G.R. No. 155856, 28 May 2004, 430 SCRA
323, 331.
48 Filinvest Land, Inc. v. Court of Appeals, G.R. No. 138980, 20 September 2005, 470 SCRA 260, 267-268.

49 Section 12. - Public Access to Records, Reports or Notification. The public shall have access to records,
reports or information concerning chemical substances and mixtures including safety data submitted, data
on emission or discharge into the environment, and such documents shall be available for inspection or
reproduction during normal business hours except that the Department of Environment and Natural
Resources may consider a record, report or information or particular portions thereof confidential and may
not be made public when such would divulge trade secrets, production or sales figures or methods,
production or processes unique to such manufacturer, processor or distributor, or would otherwise tend to
affect adversely the competitive position of such manufacturer, processor or distributor. The Department of
Environment and Natural Resources, however, may release information subject to claim of confidentiality to
a medical research or scientific institution where the information is needed for the purpose of medical
diagnosis or treatment of a person exposed to the chemical substance or mixture. (Republic Act No. 6969.)
50 Republic Act No. 6969.

G.R. NO. 156041 February 21, 2007


PEST MANAGEMENT ASSOCIATION OF THE PHILIPPINES (PMAP), represented by its President,
MANUEL J. CHAVEZ, Petitioner,
vs.
FERTILIZER AND PESTICIDE AUTHORITY (FPA), SECRETARY OF THE DEPARTMENT OF
AGRICULTURE, FPA OFFICER- IN-CHARGE CESAR M. DRILON, AND FPA DEPUTY DIRECTOR
DARIO C. SALUBARSE,Respondents.
DECISION
AUSTRIA-MARTINEZ, J.:
This resolves the Petition for Review on Certiorari seeking to set aside the Decision1 of the Regional Trial
Court of Quezon City, Branch 90 (RTC) dated November 5, 2002.
The case commenced upon petitioner’s filing of a Petition For Declaratory Relief With Prayer For Issuance
Of A Writ Of Preliminary Injunction And/Or Temporary Restraining Order with the RTC on January 4, 2002.
Petitioner, a non-stock corporation duly organized and existing under the laws of the Philippines, is an
association of pesticide handlers duly licensed by respondent Fertilizer and Pesticide Authority (FPA). It
questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory Policies and Implementing
Guidelines, which provides thus:
3.12 Protection of Proprietary Data
Data submitted to support the first full or conditional registration of a pesticide active ingredient in
the Philippines will be granted proprietary protection for a period of seven years from the date of
such registration. During this period subsequent registrants may rely on these data only with third
party authorization or otherwise must submit their own data. After this period, all data may be freely
cited in support of registration by any applicant, provided convincing proof is submitted that the product
being registered is identical or substantially similar to any current registered pesticide, or differs only in
ways that would not significantly increase the risk of unreasonable adverse effects.
Pesticides granted provisional registration under P.D. 1144 will be considered first registered in 1977, the
date of the Decree.
Pesticide products in which data is still under protection shall be referred to as proprietary pesticides, and
all others as commodity pesticides. (Emphasis supplied)
Petitioner argued that the specific provision on the protection of the proprietary data in FPA’s Pesticide
Regulatory Policies and Implementing Guidelines is unlawful for going counter to the objectives of
Presidential Decree No. 1144 (P.D. No. 1144); for exceeding the limits of delegated authority; and for
encroaching on the exclusive jurisdiction of the Intellectual Property Office.
On November 5, 2002, the RTC dismissed the petition for declaratory relief for lack of merit. The RTC held
that "the FPA did not exceed the limits of its delegated authority in issuing the aforecited Section 3.12 of the
Guidelines granting protection to proprietary data x x x because the issuance of the aforecited Section was
a valid exercise of its power to regulate, control and develop the pesticide industry under P.D. 1144" 2 and
the assailed provision does "not encroach on one of the functions of the Intellectual Properly Office (IPO)."3
Dissatisfied with the RTC Decision, petitioner resorted to filing this petition for review on certiorari where
the following issues are raised:
I

WHETHER OR NOT RESPONDENT FPA HAS ACTED BEYOND THE SCOPE OF ITS
DELEGATED POWER WHEN IT GRANTED A SEVEN-YEAR PROPRIETARY PROTECTION
TO DATA SUBMITTED TO SUPPORT THE FIRST FULL OR CONDITIONAL REGISTRATION
OF A PESTICIDE INGREDIENT IN THE PHILIPPINES;

II

WHETHER OR NOT RESPONDENT FPA IS ENCROACHING ON THE EXCLUSIVE


JURISDICTION OF THE INTELLECTUAL PROPERTY OFFICE (IPO) WHEN IT INCLUDED IN
ITS PESTICIDE REGULATORY POLICIES AND IMPLEMENTING GUIDELINES THE
SUBJECT SEVEN-YEAR PROPRIETARY DATA PROTECTION;

III

WHETHER OR NOT SAID PROPRIETARY DATA PROTECTION IS AN UNLAWFUL


RESTRAINT OF FREE TRADE;

IV

WHETHER OR NOT SAID PROPRIETARY DATA PROTECTION RUNS COUNTER TO THE


OBJECTIVES OF P.D. NO. 1144;

WHETHER OR NOT THE REGIONAL TRIAL COURT OF QUEZON CITY, BRANCH 90,
COMMITTED A REVERSIBLE ERROR WHEN IT UPHELD THE VALIDITY OF SECTION 3.12
OF THE PESTICIDE REGULATORY POLICIES AND IMPLEMENTING GUIDELINES ISSUED
BY RESPONDENT FPA.
Respondents, on the other hand, maintain that the provision on the protection of proprietary data in the
FPA's Pesticide Regulatory Policies and Implementing Guidelines is valid and legal as it does not violate
the objectives of P.D. No. 1144; the proprietary data are a substantial asset which must be protected; the
protection for a limited number of years does not constitute unlawful restraint of free trade; and such
provision does not encroach upon the jurisdiction of the Intellectual Property Office.
Respondents expound that since under P.D. No. 1144, the FPA is mandated to regulate, control and
develop the pesticide industry, it was necessary to provide for such protection of proprietary data,
otherwise, pesticide handlers will proliferate to the the detriment of the industry and the public since the
inherent toxicity of pesticides are hazardous and are potential environmental contaminants.
They also pointed out that the protection under the assailed Pesticide Regulatory Policies and
Implementing Guidelines is warranted, considering that the development of proprietary data involves an
investment of many years and large sums of money, thus, the data generated by an applicant in support of
his application for registration are owned and proprietary to him. Moreover, since the protection accorded to
the proprietary data is limited in time, then such protection is reasonable and does not constitute unlawful
restraint of trade.
Lastly, respondents emphasize that the provision on protection of proprietary data does not usurp the
functions of the Intellectual Property Office (IPO) since a patent and data protection are two different
matters. A patent prohibits all unlicensed making, using and selling of a particular product, while data
protection accorded by the FPA merely prevents copying or unauthorized use of an applicant's data, but
any other party may independently generate and use his own data. It is further argued that under Republic
Act No. 8293 (R.A. No. 8293), the grant of power to the IPO to administer and implement State policies on
intellectual property is not exclusionary as the IPO is even allowed to coordinate with other government
agencies to formulate and implement plans and policies to strengthen the protection of intellectual property
rights.
The petition is devoid of merit.
The law being implemented by the assailed Pesticide Regulatory Policies and Implementing Guidelines is
P.D. No. 1144, entitled Creating the Fertilizer and Pesticide Authority and Abolishing the Fertilizer Industry
Authority. As stated in the Preamble of said decree, "there is an urgent need to create a technically-oriented
government authority equipped with the required expertise to regulate, control and develop both the
fertilizer and the pesticide industries." (Underscoring supplied) The decree further provided as follows:
Section 6. Powers and Functions. The FPA shall have jurisdiction, over all existing handlers of pesticides,
fertilizers and other agricultural chemical inputs. The FPA shall have the following powers and functions:
I. Common to Fertilizers, Pesticides and other Agricultural Chemicals
xxx
4. To promulgate rules and regulations for the registration and licensing of handlers of these products,
collect fees pertaining thereto, as well as the renewal, suspension, revocation, or cancellation of such
registration or licenses and such other rules and regulations as may be necessary to implement this
Decree;
xxx
Section 7. Power to Issue Rules and Regulations to Implement Decree. The FPA is hereby authorized to
issue or promulgate rules and regulations to implement, and carry out the purposes and provisions of this
Decree.
Did the FPA go beyond its delegated power and undermine the objectives of P.D. No. 1144 by issuing
regulations that provide for protection of proprietary data? The answer is in the negative.
Under P.D. No. 1144, the FPA is given the broad power to issue rules and regulations to implement and
carry out the purposes and provisions of said decree, i.e., to regulate, control and develop the pesticide
industry. In furtherance of such ends, the FPA sees the protection of proprietary data as one way of fulfilling
its mandate. InRepublic v. Sandiganbayan,4 the Court emphasized that:
x x x [t]he interpretation of an administrative government agency, which is tasked to implement a
statute is generally accorded great respect and ordinarily controls the construction of the
courts. The reason behind this rule was explained in Nestle Philippines, Inc. vs. Court of Appeals in this
wise:
The rationale for this rule relates not only to the emergence of the multifarious needs of a modern or
modernizing society and the establishment of diverse administrative agencies for addressing and satisfying
those needs; it also relates to the accumulation of experience and growth of specialized capabilities by the
administrative agency charged with implementing a particular statute. In Asturias Sugar Central, Inc. vs.
Commissioner of Customs, the Court stressed that executive officials are presumed to have
familiarized themselves with all the considerations pertinent to the meaning and purpose of the law,
and to have formed an independent, conscientious and competent expert opinion thereon. The
courts give much weight to the government agency officials charged with the implementation of the
law, their competence, expertness, experience and informed judgment, and the fact that they
frequently are the drafters of the law they interpret."
x x x.5 [Emphasis supplied]
Verily, in this case, the Court acknowledges the experience and expertise of FPA officials who are best
qualified to formulate ways and means of ensuring the quality and quantity of pesticides and handlers
thereof that should enter the Philippine market, such as giving limited protection to proprietary data
submitted by applicants for registration. The Court ascribes great value and will not disturb the FPA's
determination that one way of attaining the purposes of its charter is by granting such protection, specially
where there is nothing on record which shows that said administrative agency went beyond its delegated
powers.
Moreover, petitioner has not succeeded in convincing the Court that the provision in question has legal
infirmities.
1awphi1.net

There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise known as
theIntellectual Property Code of the Philippines. Section 5 thereof enumerates the functions of the IPO.
Nowhere in said provision does it state nor can it be inferred that the law intended the IPO to have the
exclusive authority to protect or promote intellectual property rights in the Philippines. On the contrary,
paragraph (g) of said Section even provides that the IPO shall "[c]oordinate with other government
agencies and the private sector efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country." Clearly, R.A. No. 8293 recognizes that efforts to fully
protect intellectual property rights cannot be undertaken by the IPO alone. Other agencies dealing with
intellectual property rights are, therefore, not precluded from issuing policies, guidelines and regulations to
give protection to such rights.
There is also no evidence whatsoever to support petitioner's allegation that the grant of protection to
proprietary data would result in restraining free trade. Petitioner did not adduce any reliable data to prove
its bare allegation that the protection of proprietary data would unduly restrict trade on pesticides.
Furthermore, as held inAssociation of Philippine Coconut Desiccators v. Philippine Coconut
Authority,6 despite the fact that "our present Constitution enshrines free enterprise as a policy, it
nonetheless reserves to the government the power to intervene whenever necessary to promote the
general welfare." There can be no question that the unregulated use or proliferation of pesticides would be
hazardous to our environment. Thus, in the aforecited case, the Court declared that "free enterprise does
not call for removal of ‘protective regulations’."7 More recently, in Coconut Oil Refiners Association, Inc. v.
Torres,8 the Court held that "[t]he mere fact that incentives and privileges are granted to certain enterprises
to the exclusion of others does not render the issuance unconstitutional for espousing unfair competition." It
must be clearly explained and proven by competent evidence just exactly how such protective regulation
would result in the restraint of trade.
In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and Implementing Guidelines
granting protection to proprietary data is well within the authority of the FPA to issue so as to carry out its
purpose of controlling, regulating and developing the pesticide industry.
WHEREFORE, the petition is DENIED. The Decision of the Regional Trial Court of Quezon City, Branch 90,
in SP. Civil Case No. Q-01-42790 is AFFIRMED.
SO ORDERED.
MA. ALICIA AUSTRIA-MARTINEZ
Associate Justice
WE CONCUR:
CONSUELO YNARES-SANTIAGO
Associate Justice
Chairperson
ROMEO J. CALLEJO, SR. MINITA V. CHICO-NAZARIO
Associate Justice Asscociate Justice
ANTONIO EDUARDO B. NACHURA
Associate Justice
ATTE S TATI O N
I attest that the conclusions in the above Decision had been reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.
CONSUELO YNARES-SANTIAGO
Associate Justice
Chairperson, Third Division

___________________________________________________________________________________

G.R. No. 108946 January 28, 1999


FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners,
vs.
HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and
CASEY FRANCISCO, respondents.

MENDOZA, J.:
This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice, dated
August 12, 1992, in Criminal Case No. Q-92-27854, entitled "Gabriel Zosa, et al. v. City Prosecutor of
Quezon City and Francisco Joaquin, Jr.," and its resolution, dated December 3, 1992, denying petitioner
Joaquin's motion for reconsideration.
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated
January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of
copyright specifying the show's format and style of presentation.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on
RPN Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc. (IXL). On July 18,
1991, he wrote a letter to private respondent Gabriel M. Zosa, president and general manager of IXL,
informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue airing It's a
Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and requested a
meeting to discuss a possible settlement. IXL, however, continued airing It's a Date, prompting petitioner
Joaquin to send a second letter on July 25, 1991 in which he reiterated his demand and warned that, if IXL
did not comply, he would endorse the matter to his attorneys for proper legal action.
Meanwhile, private respondent Zosa sought to register IXL's copyright to the first episode of It's a Date for
which it was issued by the National Library a certificate of copyright August 14, 1991.
Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe Medina,
and Casey Francisco, in the Regional Trial Court of Quezon City where it was docketed as Criminal Case
No. 92-27854 and assigned to Branch 104 thereof. However, private respondent Zosa sought a review of
the resolution of the Assistant City Prosecutor before the Department of Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City
Prosecutor's findings and directed him to move for the dismissal of the case against private respondents. 1

Petitioner Joaquin filed a motion for reconsideration, but his motion denied by
respondent Secretary of Justice on December 3, 1992. Hence, this petition.
Petitioners contend that:
1. The public respondent gravely abused his discretion amounting to lack of
jurisdiction — when he invoked non-presentation of the master tape as being
fatal to the existence of probable cause to prove infringement, despite the
fact that private respondents never raised the same as a controverted issue.
2. The public respondent gravely abused his discretion amounting to lack of
jurisdiction when he arrogated unto himself the determination of what is
copyrightable — an issue which is exclusively within the jurisdiction of the
regional trial court to assess in a proper proceeding.
Both public and private respondents maintain that petitioners failed to establish the existence of probable
cause due to their failure to present the copyrighted master videotape of Rhoda and Me. They contend that
petitioner BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or
concepts of dating game shows are not covered by copyright protection under P.D. No. 49.
Non-Assignment of Error.
Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda
and Me was not raised in issue by private respondents during the preliminary investigation and, therefore, it
was error for the Secretary of Justice to reverse the investigating prosecutor's finding of probable cause on
this ground.
A preliminary investigation falls under the authority of the state prosecutor who is given by law the power to
direct and control criminal
actions. 2 He is, however, subject to the control of the Secretary of Justice. Thus, Rule 112, §4 of the Revised Rules of Criminal Procedure, provides:
Sec. 4. Duty of investigating fiscal. — If the investigating fiscal finds cause to hold the
respondent for trial, he shall prepare the resolution and corresponding information. He shall
certify under oath that he, or as shown by the record, an authorized officer, has personally
examined the complainant and his witnesses, that there is reasonable ground to believe
that a crime has been committed and that the accused is probably guilty thereof, that the
accused was informed of the complaint and of the evidence submitted against him and that
he was given an opportunity to submit controverting evidence. Otherwise, he shall
recommend dismissal of the complaint.
In either case, he shall forward the records of the case to the provincial or city fiscal or chief
state prosecutor within five (5) days from his resolution. The latter shall take appropriate
action thereon ten (10) days from receipt thereof, immediately informing the parties of said
action.
No complaint or information may be filed or dismissed by an investigating fiscal without the
prior written authority or approval of the provincial or city fiscal or chief state prosecutor.
Where the investigating assistant fiscal recommends the dismissal of the case but his
findings are reversed by the provincial or city fiscal or chief state prosecutor on the ground
that a probable cause exists, the latter may, by himself, file the corresponding information
against the respondent or direct any other assistant fiscal or state prosecutor to do so,
without conducting another preliminary investigation.
If upon petition by a proper party, the Secretary of Justice reverses the resolution of the
provincial or city fiscal or chief state prosecutor, he shall direct the fiscal concerned to file
the corresponding information without conducting another preliminary investigation or to
dismiss or move for dismissal of the complaint or information.
In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering errors,
although unassigned, for the purpose of determining whether there is probable cause for filing cases in
court. He must make his own finding, of probable cause and is not confined to the issues raised by the
parties during preliminary investigation. Moreover, his findings are not subject to review unless shown to
have been made with grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of the question whether the format or mechanics of a
show is entitled to copyright protection is for the court, and not the Secretary of Justice, to make. They
assail the following portion of the resolution of the respondent Secretary of Justice:
[T]he essence of copyright infringement is the copying, in whole or in part, of copyrightable
materials as defined and enumerated in Section 2 of PD. No. 49. Apart from the manner in
which it is actually expressed, however, the idea of a dating game show is, in the opinion of
this Office, a non-copyrightable material. Ideas, concepts, formats, or schemes in their
abstract form clearly do not fall within the class of works or materials susceptible of
copyright registration as provided in PD. No. 49.3 (Emphasis added.)
It is indeed true that the question whether the format or mechanics of petitioners television show is entitled
to copyright protection is a legal question for the court to make. This does not, however, preclude
respondent Secretary of Justice from making a preliminary determination of this question in resolving
whether there is probable cause for filing the case in court. In doing so in this case, he did not commit any
grave error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the
master videotape should have been predented in order to determine whether there was probable cause for
copyright infringement. They contend that 20th Century Fox Film Corporation v. Court of Appeals, 4 on
which respondent Secretary of Justice relied in reversing the resolution of the
investigating prosecutor, is inapplicable to the case at bar because in the
present case, the parties presented sufficient evidence which clearly establish
"linkage between the copyright show "Rhoda and Me" and the infringing TV
show "It's a Date." 5
The case of 20th Century Fox Film Corporation involved raids conducted on
various videotape outlets allegedlly selling or renting out "pirated" videotapes.
The trial court found that the affidavits of NBI agents, given in support of the
application for the search warrant, were insufficient without the master tape.
Accordingly, the trial court lifted the search warrants it had previously issued
against the defendants. On petition for review, this Court sustained the action of
the trial court and ruled: 6
The presentation of the master tapes of the copyrighted films from which the pirated films
were allegedly copied, was necessary for the validity of search warrants against those who
have in their possession the pirated films. The petitioner's argument to the effect that the
presentation of the master tapes at the time of application may not be necessary as these
would be merely evidentiary in nature and not determinative of whether or not a probable
cause exists to justify the issuance of the search warrants is not meritorious. The court
cannot presume that duplicate or copied tapes were necessarily reproduced from master
tapes that it owns.
The application for search warrants was directed against video tape outlets which allegedly
were engaged in the unauthorized sale and renting out of copyrighted films belonging to the
petitioner pursuant to P.D. 49.
The essence of a copyright infringement is the similarity or at least substantial similarity of
the purported pirated works to the copyrighted work. Hence, the applicant must present to
the court the copyrighted films to compare them with the purchased evidence of the video
tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of
the former. This linkage of the copyrighted films to the pirated films must be established to
satisfy the requirements of probable cause. Mere allegations as to the existence of the
copyrighted films cannot serve as basis for the issuance of a search warrant.

This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of Appeals 7 in
which it was held:
In fine, the supposed pronunciamento in said case regarding the necessity for the
presentation of the master tapes of the copyrighted films for the validity of search warrants
should at most be understood to merely serve as a guidepost in determining the existence
of probable cause in copyright infringement cases where there is doubt as to the true nexus
between the master tape and the printed copies. An objective and careful reading of the
decision in said case could lead to no other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in all or similar copyright infringement
cases. . . 8

In the case at bar during the preliminary investigation, petitioners and private
respondents presented written descriptions of the formats of their respective
televisions shows, on the basis of which the investigating prosecutor ruled:
As may [be] gleaned from the evidence on record, the substance of the television
productions complainant's "RHODA AND ME" and Zosa's "IT'S A DATE" is that two matches
are made between a male and a female, both single, and the two couples are treated to a
night or two of dining and/or dancing at the expense of the show. The major concepts of
both shows is the same. Any difference appear mere variations of the major concepts.
That there is an infringement on the copyright of the show "RHODA AND ME" both in
content and in the execution of the video presentation are established because
respondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME"
because of substantial similarities as follows, to wit:

RHODA AND ME "IT'S A DATE"

Set 1 Set 1

a. Unmarried participant of one gender (searcher) a. same


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 to be answered by each b. same


of the searchees. The purpose is to determine who
among the searchees is the most compatible with the
searcher.

c. Searcher speculates on the match to the c. same


searchee.

d. Selection is made by the use of compute (sic) d. Selection is based on the answer of the Searchees.
methods, or by the way questions are answered, or
similar methods.

Set 2 Set 2

Same as above with the genders of the searcher and


searchees interchanged.

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the presentation of a point-by-point comparison of the formats of
the two shows clearly demonstrates the nexus between the shows and hence establishes the existence of
probable cause for copyright infringement. Such being the case, they did not have to produce the master
tape.

To begin with the format of a show is not copyrightable. Section 2 of P.D. No. 49, 10 otherwise
known
as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of
work entitled to copyright protection, to wit:
Sec. 2. The rights granted by this Decree shall, from the moment of creation, subsist with
respect to any of the following classes of works:
(A) Books, including composite and cyclopedic works, manuscripts, directories, and
gazetteers:
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments
in dumb shows, the acting form of which is fixed in writing or otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other
works of art; models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or models for articles of manufacture, whether or not
patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings or plastic works of a scientific or technical character;
(I) Photographic works and works produced by a process analogous to photography lantern
slides;
(M) Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations advertising copies, labels tags, and box wraps;
(P) Dramatizations, translations, adaptations, abridgements, arrangements and other
alterations of literary, musical or artistic works or of works of the Philippine government as
herein defined, which shall be protected as provided in Section 8 of this Decree.
(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of
this Decree which by reason of the selection and arrangement of their contents constitute
intellectual creations, the same to be protected as such in accordance with Section 8 of this
Decree.
(R) Other literary, scholarly, scientific and artistic works.
This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF
PHILIPPINES (R.A. No. 8293). 11 The format or mechanics of a television show is not
included in the list of protected works in §2 of P.D. No. 49. For this reason, the
protection afforded by the law cannot be extended to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated by the
statute. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the persons and on terms
and conditions specified in the statute. 12

Since . . . copyright in published works is purely a statutory creation,


a copyright may be obtained only for a work falling within the
statutory enumeration or description. 13
Regardless of the historical viewpoint, it is authoritatively settled in
the United States that there is no copyright except that which is both
created and secured by act of Congress . . . . . 14
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished
works and not to concepts. The copyright does not extend to an idea, procedure,
process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or
embodied in such work. 15 Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:
Sec. 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172
and 173, no protection shall extend, under this law, to any idea, procedure, system, method
or operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts
having the character of mere items of press information; or any official text of a legislative,
administrative or legal nature, as well as any official translation thereof.
What then is the subject matter of petitioners' copyright? This Court is of the opinion that petitioner BJPI's
copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the class of
works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works produced by a process analogous to cinematography or
any process for making audio-visual recordings;
The copyright does not extend to the general concept or format of its dating game show.
Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the investigating
prosecutor should have the opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination of the existence
of probable cause. As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can describe because it involves a whole
spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may
be found by merely describing the general copyright/format of both dating game shows.
WHEREFORE, the petition is hereby DISMISSED
SO ORDERED. 1âwphi1.nêt

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 Decision1 and Resolution2 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 set
e) Mold for spring eye bushing for L300 2 sets
f) Mold for leaf spring eye bushing C190 with metal 1 set
g) Mold for vehicle bearing cushion 1 set8
The respondents filed a motion to quash the search warrants on the following grounds:
2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground that:
a) the subject matter of the registrations are not artistic or literary;
b) the subject matter of the registrations are spare parts of automobiles meaning – there (sic) are
original parts that they are designed to replace. Hence, they are not original.9
The respondents averred that the works covered by the certificates issued by the National Library are not
artistic in nature; they are considered automotive spare parts and pertain to technology. They aver that the
models are not original, and as such are the proper subject of a patent, not copyright.10
In opposing the motion, the petitioner averred that the court which issued the search warrants was not the
proper forum in which to articulate the issue of the validity of the copyrights issued to him. Citing the ruling
of the Court inMalaloan 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 court’s 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 petitioner’s motion for reconsideration of the said decision suffered the same fate. The petitioner
forthwith filed the present petition for review on certiorari, contending that the revocation of his copyright
certificates should be raised in a direct action and not in a search warrant proceeding.
The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of his
copyright in a proceeding to quash a search warrant for allegedly infringing items, the RTC committed a
grave abuse of its discretion when it declared that his works are not copyrightable in the first place. He
claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of the Philippines, which took
effect on January 1, 1998, provides in no uncertain terms that copyright protection automatically attaches to
a work by the sole fact of its creation, irrespective of its mode or form of expression, as well as of its
content, quality or purpose.15 The law gives a non-inclusive definition of "work" as referring to original
intellectual creations in the literary and artistic domain protected from the moment of their creation; and
includes original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design and other works of applied art under Section 172.1(h) of R.A. No. 8293. lawphil.net

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or
artistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect to which
the petitioner’s utility designs were classified. Moreover, according to the petitioner, what the Copyright Law
protects is the author’s intellectual creation, regardless of whether it is one with utilitarian functions or
incorporated in a useful article produced on an industrial scale.
The petitioner also maintains that the law does not provide that the intended use or use in industry of an
article eligible for patent bars or invalidates its registration under the Law on Copyright. The test of
protection for the aesthetic is not beauty and utility, but art for the copyright and invention of original and
ornamental design for design patents.16 In like manner, the fact that his utility designs or models for articles
of manufacture have been expressed in the field of automotive parts, or based on something already in the
public domain does not automatically remove them from the protection of the Law on Copyright.17
The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same presumption to
an affidavit executed by an author who claims copyright ownership of his work.
The petitioner adds that a finding of probable cause to justify the issuance of a search warrant means
merely a reasonable suspicion of the commission of the offense. It is not equivalent to absolute certainty or
a finding of actual and positive cause.18 He assists that the determination of probable cause does not
concern the issue of whether or not the alleged work is copyrightable. He maintains that to justify a finding
of probable cause in the issuance of a search warrant, it is enough that there exists a reasonable suspicion
of the commission of the offense.
The petitioner contends that he has in his favor the benefit of the presumption that his copyright is valid;
hence, the burden of overturning this presumption is on the alleged infringers, the respondents herein. But
this burden cannot be carried in a hearing on a proceeding to quash the search warrants, as the issue
therein is whether there was probable cause for the issuance of the search warrant. The petitioner
concludes that the issue of probable cause should be resolved without invalidating his copyright.
In their comment on the petition, the respondents aver that the work of the petitioner is essentially a
technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e., from
rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strong enough to
endure pressure brought about by the vibration of the counter bearing and thus brings bushings. Such
work, the respondents assert, is the subject of copyright under Section 172.1 of R.A. No. 8293. The
respondents posit that a technical solution in any field of human activity which is novel may be the subject
of a patent, and not of a copyright. They insist that the certificates issued by the National Library are only
certifications that, at a point in time, a certain work was deposited in the said office. Furthermore, the
registration of copyrights does not provide for automatic protection. Citing Section 218.2(b) of R.A. No.
8293, the respondents aver that no copyright is said to exist if a party categorically questions its existence
and legality. Moreover, under Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registration
and deposit of work is not conclusive as to copyright outlay or the time of copyright or the right of the
copyright owner. The respondents maintain that a copyright exists only when the work is covered by the
protection of R.A. No. 8293.
The petition has no merit.
The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models are
copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing that
upon the filing of the application for search warrant, the RTC was duty-bound to determine whether
probable cause existed, in accordance with Section 4, Rule 126 of the Rules of Criminal Procedure:
SEC. 4. Requisite for issuing search warrant. – A search warrant shall not issue but upon probable cause in
connection with one specific offense to be determined personally by the judge after examination under oath
or affirmation of the complainant and the witnesses he may produce, and, particularly, describing the place
to be searched and the things to be seized.
In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in the
determination of probable cause, the court must necessarily resolve whether or not an offense exists to
justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed, probable
cause is deemed to exist only where facts and circumstances exist which could lead a reasonably cautious
and prudent man to believe that an offense has been committed or is being committed. Besides, in Section
3, Rule 126 of the Rules of Criminal Procedure, a search warrant may be issued for the search and seizure
of personal property (a) subject of the offense; (b) stolen or embezzled and other proceeds or fruits of the
offense; or (c) used or intended to be used as the means of committing an offense.
The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable
cause. The court cannot abdicate its constitutional obligation by refusing to determine whether an offense
has been committed.20 The absence of probable cause will cause the outright nullification of the search
warrant.21
For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an
application is committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie Ching
and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material was being copied
and distributed by the respondents. Thus, the ownership of a valid copyright is essential.22
Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality is
meant that the material was not copied, and evidences at least minimal creativity; that it was independently
created by the author and that it possesses at least same minimal degree of creativity. 23 Copying is shown
by proof of access to copyrighted material and substantial similarity between the two works. 24 The
applicant must thus demonstrate the existence and the validity of his copyright because in the absence of
copyright protection, even original creation may be freely copied.25
By requesting the NBI to investigate and, if feasible, file an application for a search warrant for infringement
under R.A. No. 8293 against the respondents, the petitioner thereby authorized the RTC (in resolving the
application), to delve into and determine the validity of the copyright which he claimed he had over the
utility models. The petitioner cannot seek relief from the RTC based on his claim that he was the copyright
owner over the utility models and, at the same time, repudiate the court’s jurisdiction to ascertain the
validity of his claim without running afoul to the doctrine of estoppel.
To discharge his burden, the applicant may present the certificate of registration covering the work or, in its
absence, other evidence.26 A copyright certificate provides prima facie evidence of originality which is one
element of copyright validity. It constitutes prima facie evidence of both validity and ownership27 and the
validity of the facts stated in the certificate. 28 The presumption of validity to a certificate of copyright
registration merely orders the burden of proof. The applicant should not ordinarily be forced, in the first
instance, to prove all the multiple facts that underline the validity of the copyright unless the respondent,
effectively challenging them, shifts the burden of doing so to the applicant. 29 Indeed, Section 218.2 of R.A.
No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action
relates if the defendant does not put in issue the question whether copyright subsists in the work or
other subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the
owner of the copyright if he claims to be the owner of the copyright and the defendant does not put
in issue the question of his ownership.
A certificate of registration creates no rebuttable presumption of copyright validity where other evidence in
the record casts doubt on the question. In such a case, validity will not be presumed.30
To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A. No.
8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos. 2001-197 and
2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued by the National Library
covering work identified as Leaf Spring Eye Bushing for Automobile and Vehicle Bearing Cushion both
classified under Section 172.1(h) of R.A. No. 8293, to wit:
SEC. 172. Literary and Artistic Works. – 172.1. Literary and artistic works, hereinafter referred to as
"works," are original intellectual creations in the literary and artistic domain protected from the moment of
their creation and shall include in particular:
...
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an
industrial design, and other works of applied art.
Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic creation
with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an
industrial scale.
But, as gleaned from the specifications appended to the application for a copyright certificate filed by the
petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial bore that is centrally located and provided with a
perpendicular flange on one of its ends and a cylindrical metal jacket surrounding the peripheral walls of
said body, with the bushing made of plastic that is either polyvinyl chloride or polypropylene. 31 Likewise,
the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi-circular body
having a central hole to secure a conventional bearing and a plurality of ridges provided therefore, with said
cushion bearing being made of the same plastic materials. 32 Plainly, these are not literary or artistic works.
They are not intellectual creations in the literary and artistic domain, or works of applied art. They are
certainly not ornamental designs or one having decorative quality or value.
It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art. 33 Works for applied art include all
original pictorials, graphics, and sculptural works that are intended to be or have been embodied in useful
article regardless of factors such as mass production, commercial exploitation, and the potential availability
of design patent protection.34
As gleaned from the description of the models and their objectives, these articles are useful articles which
are defined as one having an intrinsic utilitarian function that is not merely to portray the appearance of the
article or to convey information. Indeed, while works of applied art, original intellectual, literary and artistic
works are copyrightable, useful articles and works of industrial design are not. 35 A useful article may be
copyrightable only if and only to the extent that such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capable of existing independently of the utilitarian
aspects of the article.
We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the author’s
intellectual creation, regardless of whether it is a creation with utilitarian functions or incorporated in a
useful article produced on an industrial scale, is protected by copyright law. However, the law refers to a
"work of applied art which is an artistic creation." It bears stressing that there is no copyright protection for
works of applied art or industrial design which have aesthetic or artistic features that cannot be identified
separately from the utilitarian aspects of the article.36 Functional components of useful articles, no matter
how artistically designed, have generally been denied copyright protection unless they are separable from
the useful article.37
In this case, the petitioner’s models are not works of applied art, nor artistic works. They are utility models,
useful articles, albeit with no artistic design or value. Thus, the petitioner described the utility model as
follows:
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber.
These rubber bushings after a time, upon subjecting them to so much or intermittent pressure would
eventually wore (sic) out that would cause the wobbling of the leaf spring.
The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile that
is made up of plastic.
Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of polyvinyl
chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both causes cushion to the
leaf spring, yet strong enough to endure pressure brought about by the up and down movement of said leaf
spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a much
longer life span than the rubber bushings.
Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a very
simple construction and can be made using simple and ordinary molding equipment.
A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is supplied
with a metal jacket to reinforce the plastic eye bushing when in engaged with the steel material of the leaf
spring.
These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.
Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model;
Figure 2 is a sectional view taken along line 2-2 of Fig. 1;
Figure 3 is a longitudinal sectional view of another embodiment of this utility model;
Figure 4 is a perspective view of a third embodiment; and
Figure 5 is a sectional view thereof.
Referring now to the several views of the drawings wherein like reference numerals designated same parts
throughout, there is shown a utility model for a leaf-spring eye bushing for automobile generally designated
as reference numeral 10.
Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12
centrally provided thereof.
As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 on
one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said body 11. When
said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-spring eye (not shown), which
is also made of steel or cast steel. In effect, the bushing 10 will not be directly in contact with steel, but
rather the metal jacket, making the life of the bushing 10 longer than those without the metal jacket.
In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant soft
texture plastic or a hard polypropylene plastic, both are capable to endure the pressure applied thereto,
and, in effect, would lengthen the life and replacement therefor.
Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is insertably
provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17 accommodates or
engages with the leaf-spring bolt (not shown) connecting the leaf spring and the automobile’s chassis.
Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and cylindrical as
to its construction. Said another embodiment is also made of polypropylene or polyvinyl chloride plastic
material. The steel tube 17 and metal jacket 14 may also be applied to this embodiment as an option
thereof.38
VEHICLE BEARING CUSHION
Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard rubber.
These rubber bushings after a time, upon subjecting them to so much or intermittent pressure would
eventually be worn out that would cause the wobbling of the center bearing.
The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up of
plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride, an oil
resistant soft texture plastic material which causes cushion to the propeller’s center bearing, yet strong
enough to endure pressure brought about by the vibration of the center bearing.
Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life span
than rubber bushings.
Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple construction
and can be made using simple and ordinary molding equipment.
These and other objects and advantages will come to view and be understood upon a reading of the
detailed description when taken in conjunction with the accompanying drawings.
Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and
Figure 2 is a sectional view thereof.
Referring now to the several views of the drawing, wherein like reference numeral designate same parts
throughout, there is shown a utility model for a vehicle-bearing cushion generally designated as reference
numeral 10.
Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to house a
conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with a plurality of ridges
13 which serves reinforcing means thereof.
The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant
plastic material which is strong, durable and capable of enduring severe pressure from the center bearing
brought about by the rotating movement of the propeller shaft of the vehicle.39
A utility model is a technical solution to a problem in any field of human activity which is new and
industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the
aforesaid.40Essentially, a utility model refers to an invention in the mechanical field. This is the reason why
its object is sometimes described as a device or useful object. 41 A utility model varies from an invention, for
which a patent for invention is, likewise, available, on at least three aspects: first, the requisite of "inventive
step"42 in a patent for invention is not required; second, the maximum term of protection is only seven
years43 compared to a patent which is twenty years, 44 both reckoned from the date of the application; and
third, the provisions on utility model dispense with its substantive examination 45 and prefer for a less
complicated system.
Being plain automotive spare parts that must conform to the original structural design of the components
they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They
lack the decorative quality or value that must characterize authentic works of applied art. They are not even
artistic creations with incidental utilitarian functions or works incorporated in a useful article. In actuality, the
personal properties described in the search warrants are mechanical works, the principal function of which
is utility sans any aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the
catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A. No. 8293.
Applying the principle of ejusdem generis which states that "where a statute describes things of a particular
class or kind accompanied by words of a generic character, the generic word will usually be limited to
things of a similar nature with those particularly enumerated, unless there be something in the context of
the state which would repel such inference," 46 the Leaf Spring Eye Bushing and Vehicle Bearing Cushion
are not copyrightable, being not of the same kind and nature as the works enumerated in Section 172 of
R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion. Indeed, inJoaquin, Jr. v. Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,48 the Court ruled that:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted
by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only
such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description.
That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance
of a search warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated,50 the Court ruled that "these copyright and patent rights are
completely distinct and separate from one another, and the protection afforded by one cannot be used
interchangeably to cover items or works that exclusively pertain to the others." The Court expounded
further, thus:
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with
one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable.
The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein51 to
buttress his petition. In that case, the artifacts involved in that case were statuettes of dancing male and
female figures made of semi-vitreous china. The controversy therein centered on the fact that although
copyrighted as "works of art," the statuettes were intended for use and used as bases for table lamps, with
electric wiring, sockets and lampshades attached. The issue raised was whether the statuettes were
copyright protected in the United States, considering that the copyright applicant intended primarily to use
them as lamp bases to be made and sold in quantity, and carried such intentions into effect. At that time,
the Copyright Office interpreted the 1909 Copyright Act to cover works of artistic craftsmanship insofar as
their form, but not the utilitarian aspects, were concerned. After reviewing the history and intent of the US
Congress on its copyright legislation and the interpretation of the copyright office, the US Supreme Court
declared that the statuettes were held copyrightable works of art or models or designs for works of art. The
High Court ruled that:
"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so far as
their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels,
glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and
sculpture. …"
So we have a contemporaneous and long-continued construction of the statutes by the agency charged to
administer them that would allow the registration of such a statuette as is in question here.52
The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and utility
but art for the copyright and the invention of original and ornamental design for design patents."
Significantly, the copyright office promulgated a rule to implement Mazer to wit:
… [I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively
shaped will not qualify it as a work of art."
In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted,
utility models which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The assailed
Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant
Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs against
the petitioner.
SO ORDERED.
Puno, (Chairman), Austria-Martinez, Tinga, and Chico-Nazario, JJ., concur.

G.R. No. 76193 November 9, 1989


UNITED FEATURE SYNDICATE, INC., petitioner,
vs.
MUNSINGWEAR CREATION MANUFACTURING COMPANY, respondent.
Quasha, Asperilla, Ancheta, Pena and Nolasco for petitioner.
Jaime G. Manzano for private respondent.

PARAS, J.:
This is a petition for review on certiorari filed by United Feature Syndicate Inc., seeking to set aside the
Resolution of the Seventh Division of the Court of Appeals * dated September 16, 1986 dismissing the appeal of petitioner-
appellant for having been filed out of time and denying its Motion for Reconsideration for lack of merit in its Resolution dated October 14, 1986.

The Resolution dismissing the appeal, reads as follows:


We agree with the Philippine Patent Office and respondent appellee that the decision of the
aforementioned office dated October 2, 1984 had already become final and executory at the
time the Notice of Appeal was filed.
Our reasons for this conclusions are borne out by the following facts:
a) On October 2, 1984, the decision sought to be appealed was rendered by
the Philippine Patent Office and a copy thereof was received by counsel for
petitioner-appellant on October 3, 1984 — not October 9, 1984 as stated in
the Notice of Appeal. There can be no doubt about the decision having been
received by petitioner-appellant's counsel on October 3, 1984 for this is
clearly written in the Notice of Decision (p. 61, Original Record), and in point
of fact the date of receipt cannot be October 9, 1984, as declared in the
Notice of Appeal (p. 1, Rollo), because in the motion for reconsideration
subsequently filed by petitioner-appellant it was stated that a copy of the
decision was received on October 4, 1984 (p. 80, Original Record).
b) On October 18, 1984 — as shown in the stamp mark of the Philippine
Patent Office (p. 80, Original Record) or on the 15th and last day either for
appealing or for moving for reconsideration, petitioner-appellant filed a
motion for reconsideration.
Sadly and unexplainably for a veteran law office, said motion did not contain or incorporate
a notice of hearing.
c) Possibly realizing the fatal defect in its motion for reconsideration,
petitioner-appellant subsequently filed a motion to set for hearing its motion
for reconsideration. This was done, however, only on October 31, 1984 (p.
162, Original Record).
The motion for reconsideration filed on the last day, fatally failing as it did to contain a notice
of hearing, said pleading did not interrupt the period for appealing, for the motion was
nothing but a piece of scrap paper (Agricultural and Industrial Marketing, Inc. v. Court of
Appeals, 118 SCRA [1982] 492; Republic Planters Bank v. Intermediate Appellate Court, 13
SCRA [1984] 631).
This deadly and moral deficiency in the motion for reconsideration, therefore, resulted in the
decision of the Philippine Patent Office being final and executory on October 19, 1984, the
day after the motion for reconsideration was filed, said motion having been filed on the 15th
and last day for appealing.
WHEREFORE, the motion of respondent appellee is hereby granted and the appeal
dismissed.
SO ORDERED. (Rollo 42-43)
This case arose from petition filed by petitioner for the cancellation of the registration of trademark
CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent MUNSINGWEAR in Inter Partes
Case No. 1350 entitled "United Feature Syndicate, Inc. v. Munsingwear Creation Mfg. Co.", with the
Philippine Patent Office alleging that petitioner is damaged by the registration of the trademark CHARLIE
BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in the
name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that respondent was
not entitled to the registration of the mark CHARLIE BROWN, & DEVICE at the time of application for
registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration, the copyright to
which is exclusively owned worldwide by the petitioner; (3) that as the owner of the pictorial illustration
CHARLIE BROWN, petitioner has since 1950 and continuously up to the present, used and reproduced the
same to the exclusion of others; (4) that the respondent-registrant has no bona fide use of the trademark in
commerce in the Philippines prior to its application for registration. (Petition, p. 2, Rollo, p. 8)
On October 2, 1984 the Director of the Philippine Patent Office rendered a decision in this case holding that
a copyright registration like that of the name and likeness of CHARLIE BROWN may not provide a cause of
action for the cancellation of a trademark registration, (Petition, p. 4; Rollo, p. 10 )
Petitioner filed a motion for reconsideration of the decision rendered by the Philippine Patent Office which
was denied by the Director of said office on the ground that the Decision No. 84-83 was already final and
executory (Petition, Rollo, pp. 11-12).
From this decision, petitioner-appellant appealed to the Court of Appeals and respondent court in its
resolution dated September 16, 1986 denied the appeal. While the Motion for Reconsideration was filed on
time, that is, on the last day within which to appeal, still it is a mere scrap of paper because there was no,
date, of hearing stated therein.
Subsequently, petitioner-appellant filed a motion for reconsideration which public respondent denied for
lack of merit( Annex "B", Rollo p. 45)..
Hence this petition for review on certiorari.
In the resolution of April 6, 1987, the petition was given due course.
In its petition (Rollo, p. 10) and in its memorandum (Rollo, p. 97), petitioner-appellant raised the following
legal issues:
I
WHETHER THE RESPONDENT COURT OF APPEALS ACTED IN EXCESS OF
JURISDICTION AND/OR COMMITTED GRAVE ABUSE OF DISCRETION WHEN IT
BASED ITS RESOLUTION IN DISMISSING ITS APPEAL ON STRICT TECHNICAL RULES
OF PROCEDURE AS ENUNCIATED IN RULE 15 OF THE RULES OF COURT INSTEAD
OF RELYING ON THE POLICY OF THE PHILIPPINE PATENT OFFICE AS STRESSED IN
RULE 169, AS AMENDED, OF THE RULES OF PRACTICE IN TRADEMARK CASES.
II
WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSE OF
DISCRETION AMOUNTING TO EXCESS OF JURISDICTION WHEN BY DISMISSING
THE APPEAL TO IT FROM THE DECISION OF THE DIRECTOR OF PATENTS, IT
KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO. 0342, WHICH
WAS AFFIRMED BY THIS HONORABLE SUPREME COURT TO THE EFFECT THAT A
COPYRIGHTED CHARACTER MAY NOT BE APPROPRIATED AS A TRADEMARK BY
ANOTHER UNDER PRESIDENTIAL DECREE NO. 49.
III
WHETHER, ASSUMING ARGUENDO, BUT ONLY ASSUMING, THAT THE DECISION OF
THE DIRECTOR OF PATENTS IN THE CASE AT BAR HAD ALREADY BECOME FINAL
WHEN IT WAS APPEALED TO THE COURT OF APPEALS, THE LATTER, BY REASON
OF THE SUPERVENING FACTS AFTER THE DECISION APPEALED FROM WAS
RENDERED, SHOULD HAVE HARMONIZED THE DECISION WITH LAW, THE DEMANDS
OF JUSTICE AND EQUITY.
The petitioner is impressed with merit.
Petitioner's contention that the purpose of a notice of hearing to the adverse party is to afford him an
opportunity to resist the motion, more particularly the motion for reconsideration filed by its company is well
taken. Said purpose was served when Munsingwear filed its opposition thereto on November 20, 1984 and
cured the technical defect of lack of notice of hearing complained of (Rollo, p. 52). Otherwise stated such
shortcomings of petitioner as to compliance with procedural requirements in taking its appeal cannot be
deemed sufficient to deprive it of a chance to secure a review by this court in order to obtain substantial
justice; more so where liverality accorded to the petitioner becomes compelling because of the ostensible
merit of petitioner's case (Olango v. Court of First Instance of Misamis Oriental, 121 SCRA 338 [1983]).
Moreover, in Siguenza v. Court of Appeals, (137 SCRA 570 [1985]) the Court stressed that the right to
appeal should not be lightly disregarded by a stringent application of rules of procedure especially where
the appeal is on its face meritorious and the interest of substantial justice would be served by permitting the
appeal.
As enunciated in the case of Castro v. Court of Appeals (123 SCRA 782, [1983]) the importance and real
purpose of the remedy of appeal was stressed as follows:
An appeal is an essential part of oar judicial system. We have advised the courts to proceed
with caution so as not to deprive a party of the right to appeal. (National Waterworks and
Sewerage Authority v. Municipality of Libmanan, 97 SCRA 138) and instructed that every
party-litigant should beafforded the amplest opportunity for the proper and just disposition of
his cause, freed from the constraints of technicalities. (A-One Feeds, Inc. v. Court of
Appeals, 100 SCRA 590).
The rules of procedure are not to be applied in a very rigid and technical sense. The rules of
procedure are used only to help secure not override substantial justice. (Gregorio v. Court of
Appeals, 72 SCRA 120), therefore, we ruled in Republic v. Court of Appeals (83 SCRA 453)
that a six day delay in the perfection of the appeal does not warrant its dismissal. And again
in Ramos v. Bagaso, 96 SCRA 395, this Court held that the delay of four (4) days in filing a
notice of appeal and a motion for extension of time to file a record on appeal can be
excused on the basis of equity.
It was further emphasized that we allowed the filing of an appeal in some cases where a stringent
application of the rules would have denied it, or when to do so would serve the demands of substantial
justice and in the exercise of our equity jurisdiction (Serrano v. Court of Appeals, 139 SCRA 179 [1085].)
In the case at bar, the petitioner's delay in filing their record on appeal should not be strictly construed as to
deprive them of the right to appeal especially since on its face the appeal appears to be impressed with
merit. (Emphasis supplied). All aforementioned cases are cited in G.R. No. 76595, Pacific Asia Overseas
Shipping Corporation v. NLRC, et al., May 6, 1988.
Procedural technicality should not prevail over substantive rights of a party to appeal (NEA v. CA, 126
SCRA 394).
Moreover, a judgment of the Court of Appeals that become final by reason of the mistake of the herein
petitioner's lawyer may still be reviewed on appeal by the Supreme Court particularly where the Supreme
Court already gave due course to the petition for review (Ernesto v. Court of Appeals, 116 SCRA 755
[1982]).
Where strong considerations of substantial justice are manifest in the petition, this Court may relax the
stringent application of technical rules in the exercise of equity jurisdiction. In addition to the basic merits of
the main case, such petition usually embodies justifying circumstances which warrant our heeding the
petitioner's cry for justice, inspite of the earlier negligence of counsel (Serrano v. Court of Appeals et al.,
139 SCRA 179 [1985]).
In a number of cases, this Court in the exercise of equity jurisdiction decided to disregard technicalities in
order to resolve the case on its merits based on the evidence (St. Peter Memorial Park, Inc. et al. v.
Cleofas, 121 SCRA 287, [1983]; Helmuth, Jr. v. People of the Philippines, 112 SCRA 573 [1983]).
This case was brought before this Court for the resolution of the dismissal of the appeal filed by petitioner-
appellant from the decision of the Director of the Philippines Patent Office for being filed out of time. The
normal action to take thereafter, would be to remand this case to the Court of Appeals for further
proceedings. However, in line with jurisprudence, such time consuming procedure may be properly
dispensed with to resolve the issue (Quisumbing v. Court of Appeals, 122 SCRA 709 [1983]) where there is
enough basis to end the basic controversy between the parties here and now. In the case at bar dispensing
with such procedural steps would not anyway affect substantially the merits of their respective claims as
held in Velasco v. Court of Appeals, (95 SCRA 621 [1980] cited in Ortigas & Co. Ltd. v. Ruiz, 148 SCRA
[1987] hence the need for this Court to broaden its inquiry in this case land decide the same on the merits
rather than merely resolve the procedural question raised (Dorado v. Court of Appeals, 153 SCRA 420
[1987]; De Lima v. Laguna Tayabas Co., 160 SCRA 70 [1988]).
Petitioner contends that it will be damaged by the registration of the trademark CHARLIE BROWN &
DEVICE in favor of private respondent and that it has a better right to CHARLIE BROWN & DEVICE since
the likeness of CHARLIE BROWN appeared in periodicals having worldwide distribution and covered by
copyright registration in its name which antedates the certificate of registration of respondent issued only
on September 12, 1979. (Petition, Rollo, p. 21).
Petitioner further stresses that Decision No. 84-83 (TM) promulgated by the Philippine Patent Office on
October 2, 1984 which held that "the name likeness of CHARLIE BROWN may not provide a cause of
action for the cancellation of a trademark registration," was based in the conclusion made in the case of
"Children's Television Workshop v. touch of Class" earlier decided by the Director of Patent Office on May
10, 1984. However, when the latter case was appealed to the then Intermediate Appellate Court, docketed
as A.C. G.R. SP No. 03432, the appellate court reversed the decision of the Director holding said appealed
decision as illegal and contrary to law. this reversal was affirmed by this Court on August 7, 1985 in G.R.
No. 71210 by denying the petition of respondent Touch of Class.
The Court of Appeals in reversing the Director of Patent's decision in Touch of Class, Inc. succintly said:
The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted. The
"Cookie Monster" is not, however, a trademark. It is a character in a TV series entitled
"Sesame Street." It was respondent which appropriated the "Cookie Monster" as a
trademark, after it has been copyrighted. We hold that the exclusive right secured by PD 49
to the petitioner precludes the appropriation of the "Cookie Monster" by the respondent.
Pertinently, Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on Intellectual
Property", provides:
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:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. ...
Therefore, since the name "CHARLIE BROWN" and its pictorial representation were covered by a
copyright registration way back in 1950 the same are entitled to protection under PD No. 49.
Aside from its copyright registration, petitioner is also the owner of several trademark registrations and
application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and
copyright of petitioner United Feature Syndicate Inc. as early as 1957 and additionally also as TV
SPECIALS featuring the "PEANUTS" characters "CHARLIE BROWN" (Memorandum, Rollo p. 97 [211]).
An examination of the records show that the only appreciable defense of respondent-registrant is embodied
in its answer, which reads:
It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's wear such as T-shirts,
undershirts, sweaters, brief and sandos, in class 25; whereas "CHARLIE BROWN" is used
only by petitioner as character, in a pictorial illustration used in a comic strip appearing in
newspapers and magazines. It has no trademark significance and therefore respondent-
registrant's use of "CHARLIE BROWN" & "DEVICE" is not in conflict with the petitioner's
use of "CHARLIE BROWN" (Rollo, p. 97 [21]).
It is undeniable from the records that petitioner is the actual owner of said trademark due to its prior
registration with the Patent's Office.
Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez & Gobindram Hemandas Sujanani v. Hon.
Roberto V. Ongpin, et al. 129 SCRA 373 [1984]), the Court declared.
In upholding the right of the petitioner to maintain the present suit before our courts for
unfair competition or infringement of trademarks of a foreign corporation, we are moreover
recognizing our duties and the rights of foregoing states under the Paris Convention for the
Protection of Industrial Property to which the Philippines and (France) U.S. are parties. We
are simply interpreting a solemn international commitment of the Philippines embodied in a
multilateral treaty to which we are a party and which we entered into because it is in our
national interest to do so.
PREMISES CONSIDERED, the Resolutions of the Court of Appeals dated September 16, 1985 and
October 14, 1986 dismissing petitioner's appeal are hereby SET ASIDE and Certificate of Registration no.
SR-424 issued to private respondent dated September 12, 1979 is hereby CANCELLED.
SO ORDERED.
Padilla, Sarmiento and Regalado, JJ., concur.
Melencio-Herrera (Chairperson), J., is on leave.
Footnotes
* Penned by Justice Jose A.R. Melo and concurred in by Justices Nathanael P. de Pano, Jr.
and Segundino G. Chua.

_____________________________________________________________________________
Feist publication

O'Connor, J. -- Opinion of the Court

[p*342] JUSTICE O'CONNOR delivered the opinion of the Court.


This case requires us to clarify the extent of copyright protection available to telephone
directory white pages.
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 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 [p*343] 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 [p*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 (para. 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 "courts 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 well-established 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 [p*345] "no author may copyright his ideas or the facts he narrates." Harper
& Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985). Rural wisely
concedes this point, noting in its brief that "facts 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. SeeHarper & Row, supra, at 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, [p*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
"secure 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 94. The Court explained that
originality requires independent creation plus a modicum of creativity: "While 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., at 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 [p*347] of those facts of originality, of
intellectual production, of thought, and conception." Id., at 59-60.
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, 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 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 [p*348] § 2.03[E]. The same is true of all facts --
scientific, historical, biographical, and news of the day. "They 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 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 556-
557, but that he could prevent others from copying his "subjective descriptions and
portraits of public figures." [p*349] Id., at 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 an 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: "No matter how much original authorship the work displays,
the facts and ideas it exposes are free for the taking . . . . The 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 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 "to promote the Progress of Science and useful Arts." Art. I, § 8, cl. 8.
Accord Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To this end,
copyright assures authors the right to their original [p*350] expression, but encourages
others to build freely upon the ideas and information conveyed by a work. Harper &
Row, supra, at 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, 103 (1880). We reiterated this point in Harper &
Row:
"No 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.

"Copyright does not prevent subsequent users from copying from a prior
author's work those constituent elements that are not original -- for
example . . . facts, or materials in the public domain -- as long as such use
does not unfairly appropriate the author's original contributions." 471 U.S., at
547-548 (citation omitted).

This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations
in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not
original and therefore may not be copyrighted. A factual compilation is eligible for
copyright if it features an original selection or arrangement of facts, but the copyright is
limited to [p*351] the particular selection or arrangement. In no event may copyright
extend to the facts themselves.
B
As we have explained, originality is a constitutionally mandated prerequisite for
copyright protection. The Court's decisions announcing this rule predate the Copyright
Act of 1909, but ambiguous language in the 1909 Act caused some lower courts
temporarily to lose sight of this requirement.
The 1909 Act embodied the originality requirement, but not as clearly as it might have.
See Nimmer § 2.01. The subject matter of copyright was set out in § 3 and § 4 of the
Act. Section 4 stated that copyright was available to "all the writings of an author." 35
Stat. 1076. By using the words "writings" and "author" -- the same words used in Article
I, § 8 of the Constitution and defined by the Court in The Trade-Mark
Cases and Burrow-Giles -- the statute necessarily incorporated the originality
requirement articulated in the Court's decisions. It did so implicitly, however, thereby
leaving room for error.
Section 3 was similarly ambiguous. It stated that the copyright in a work protected only
"the copyrightable component parts of the work." It thus stated an important copyright
principle, but failed to identify the specific characteristic -- originality -- that determined
which component parts of a work were copyrightable and which were not.
Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect
statutory language. They understood from this Court's decisions that there could be no
copyright without originality. See Patterson & Joyce 760-761. As explained in the
Nimmer treatise: "The 1909 Act neither defined originality, nor even expressly required
that a work be 'original' in order to command protection. However, the courts uniformly
inferred the requirement from the fact that copyright protection may only be claimed by
'authors' . . . . It was reasoned that since an author is 'the . . . [p*352] creator, originator'
it follows that a work is not the product of an author unless the work is original."
Nimmer § 2.01 (footnotes omitted) (citing cases).
But some courts misunderstood the statute. See, e. g., Leon v. Pacific Telephone &
Telegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler's Circular Publishing Co. v. Keystone
Publishing Co., 281 F. 83 (CA2 1922). These courts ignored § 3 and § 4, focusing their
attention instead on § 5 of the Act. Section 5, however, was purely technical in nature: it
provided that a person seeking to register a work should indicate on the application the
type of work, and it listed 14 categories under which the work might fall. One of these
categories was "books, including composite and cyclopedic works, directories,
gazetteers, and other compilations." § 5(a). Section 5 did not purport to say that all
compilations were automatically copyrightable. Indeed, it expressly disclaimed any such
function, pointing out that "the subject-matter of copyright is defined in section four."
Nevertheless, the fact that factual compilations were mentioned specifically in § 5 led
some courts to infer erroneously that directories and the like were copyrightable per se,
"without any further or precise showing of original -- personal -- authorship." Ginsburg
1895.
Making matters worse, these courts developed a new theory to justify the protection of
factual compilations. Known alternatively as "sweat of the brow" or "industrious
collection," the underlying notion was that copyright was a reward for the hard work that
went into compiling facts. The classic formulation of the doctrine appeared in Jeweler's
Circular Publishing Co., 281 F., at 88:
"The right to copyright a book upon which one has expended labor in its preparation
does not depend upon whether the materials which he has collected consist or not of
matters which are publici juris, or whether such materials show literary skill or
originality, either in thought or in language, or anything more than
industrious [p*353] collection. The man who goes through the streets of a town and puts
down the names of each of the inhabitants, with their occupations and their street
number, acquires material of which he is the author" (emphasis added).

The "sweat of the brow" doctrine had numerous flaws, the most glaring being that it
extended copyright protection in a compilation beyond selection and arrangement -- the
compiler's original contributions -- to the facts themselves. Under the doctrine, the only
defense to infringement was independent creation. A subsequent compiler was "not
entitled to take one word of information previously published," but rather had to
"independently work out the matter for himself, so as to arrive at the same result from
the same common sources of information." Id., at 88-89 (internal quotations omitted).
"Sweat of the brow" courts thereby eschewed the most fundamental axiom of copyright
law -- that no one may copyright facts or ideas. See Miller v. Universal City Studios,
Inc., 650 F. 2d, at 1372 (criticizing "sweat of the brow" courts because "ensuring that
later writers obtain the facts independently . . . is precisely the scope of protection
given . . . copyrighted matter, and the law is clear that facts are not entitled to such
protection").
Decisions of this Court applying the 1909 Act make clear that the statute did not permit
the "sweat of the brow" approach. The best example is International News
Service v. Associated Press, 248 U.S. 215 (1918). In that decision, the Court stated
unambiguously that the 1909 Act conferred copyright protection only on those elements
of a work that were original to the author. Associated Press had conceded taking news
reported by International News Service and publishing it in its own newspapers.
Recognizing that § 5 of the Act specifically mentioned "periodicals, including
newspapers," § 5(b), the Court acknowledged that news articles were copyrightable. Id.,
at 234. It flatly rejected, however, the notion that the copyright in an article extended
to [p*354] the factual information it contained: "The news element -- the information
respecting current events contained in the literary production -- is not the creation of the
writer, but is a report of matters that ordinarily are publici juris; it is the history of the
day."Ibid.[n *]
Without a doubt, the "sweat of the brow" doctrine flouted basic copyright principles.
Throughout history, copyright law has "recognized a greater need to disseminate factual
works than works of fiction or fantasy." Harper & Row, 471 U.S., at 563. Accord
Gorman, Fact or Fancy: The Implications for Copyright, 29 J. Copyright Soc. 560, 563
(1982). But "sweat of the brow" courts took a contrary view; they handed out
proprietary interests in facts and declared that authors are absolutely precluded from
saving time and effort by relying upon the facts contained in prior works. In truth, "it is
just such wasted effort that the proscription against the copyright of ideas and facts . . .
[is] designed to prevent." Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d
303, 310 (CA2 1966), cert. denied, 385 U.S. 1009 (1967). "Protection for the fruits of
such research . . . may in certain circumstances be available under a theory of unfair
competition. But to accord copyright protection on this basis alone distorts basic
copyright principles in that it creates a monopoly in public domain materials without the
necessary justification of protecting and encouraging the creation of 'writings' by
'authors.'" Nimmer § 3.04, p. 3-23 (footnote omitted).
C
"Sweat of the brow" decisions did not escape the attention of the Copyright Office.
When Congress decided to overhaul the copyright statute and asked the Copyright
Office to study existing problems, seeMills Music, Inc. v. Snyder, 469 U.S. 153, 159
(1985), the Copyright Office promptly recommended [p*355] that Congress clear up the
confusion in the lower courts as to the basic standards of copyrightability. The Register
of Copyrights explained in his first report to Congress that "originality" was a "basic
requisite" of copyright under the 1909 Act, but that "the absence of any reference to
[originality] in the statute seems to have led to misconceptions as to what is
copyrightable matter." Report of the Register of Copyrights on the General Revision of
the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961).
The Register suggested making the originality requirement explicit. Ibid.
Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress
dropped the reference to "all the writings of an author" and replaced it with the phrase
"original works of authorship." 17 U.S.C. § 102(a). In making explicit the originality
requirement, Congress announced that it was merely clarifying existing law: "The two
fundamental criteria of copyright protection [are] originality and fixation in tangible
form . . . . The phrase 'original works of authorship,' which is purposely left undefined,
is intended to incorporate without change the standard of originality established by the
courts under the present [1909] copyright statute." H. R. Rep. No. 94-1476, p. 51
(1976) (emphasis added) (hereinafter H. R. Rep.); S. Rep. No. 94-473, p. 50 (1975)
(emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the Copyright
Office: "Our intention here is to maintain the established standards of originality . . . ."
Supplementary Report of the Register of Copyrights on the General Revision of U.S.
Copyright Law, 89th Cong., 1st Sess., Part 6, p. 3 (H. Judiciary Comm. Print 1965)
(emphasis added).
To ensure that the mistakes of the "sweat of the brow" courts would not be repeated,
Congress took additional measures. For example, § 3 of the 1909 Act had stated that
copyright protected only the "copyrightable component parts" of a work, but had not
identified originality as the basis for distinguishing [p*356] those component parts that
were copyrightable from those that were not. The 1976 Act deleted this section and
replaced it with § 102(b), which identifies specifically those elements of a work for
which copyright is not available: "In no case does copyright protection for an original
work of authorship extend to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work." § 102(b) is universally understood to
prohibit any copyright in facts. Harper & Row, supra, at 547, 556. Accord Nimmer §
2.03[E] (equating facts with "discoveries"). As with § 102(a), Congress emphasized that
§ 102(b) did not change the law, but merely clarified it: "Section 102(b) in no way
enlarges or contracts the scope of copyright protection under the present law. Its purpose
is to restate . . . that the basic dichotomy between expression and idea remains
unchanged." H. R. Rep., at 57; S. Rep., at 54.
Congress took another step to minimize confusion by deleting the specific mention of
"directories . . . and other compilations" in § 5 of the 1909 Act. As mentioned, this
section had led some courts to conclude that directories were copyrightable per se and
that every element of a directory was protected. In its place, Congress enacted two new
provisions. First, to make clear that compilations were not copyrightable per se,
Congress provided a definition of the term "compilation." Second, to make clear that the
copyright in a compilation did not extend to the facts themselves, Congress enacted 17
U.S.C. § 103.
The definition of "compilation" is found in § 101 of the 1976 Act. It defines a
"compilation" in the copyright sense as "a work formed by the collection and assembly
of preexisting materials or of data that are selected, coordinated, or arranged in such a
way that the resulting work as a whole constitutes an original work of authorship"
(emphasis added).
[p*357] The purpose of the statutory definition is to emphasize that collections of facts
are not copyrightable per se. It conveys this message through its tripartite structure, as
emphasized above by the italics. The statute identifies three distinct elements and
requires each to be met for a work to qualify as a copyrightable compilation: (1) the
collection and assembly of pre-existing material, facts, or data; (2) the selection,
coordination, or arrangement of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of an "original" work of authorship.
"This tripartite conjunctive structure is self-evident, and should be assumed to
'accurately express the legislative purpose.'" Patry 51, quoting Mills Music, 469 U.S., at
164.
At first glance, the first requirement does not seem to tell us much. It merely describes
what one normally thinks of as a compilation -- a collection of pre-existing material,
facts, or data. What makes it significant is that it is not the sole requirement. It is not
enough for copyright purposes that an author collects and assembles facts. To satisfy the
statutory definition, the work must get over two additional hurdles. In this way, the plain
language indicates that not every collection of facts receives copyright protection.
Otherwise, there would be a period after "data."
The third requirement is also illuminating. It emphasizes that a compilation, like any
other work, is copyrightable only if it satisfies the originality requirement
("an original work of authorship"). Although § 102 states plainly that the originality
requirement applies to all works, the point was emphasized with regard to compilations
to ensure that courts would not repeat the mistake of the "sweat of the brow" courts by
concluding that fact-based works are treated differently and measured by some other
standard. As Congress explained it, the goal was to "make plain that the criteria of
copyrightable subject matter stated in section 102 apply with full force to works . . .
containing preexisting material." H. R. Rep., at 57; S. Rep., at 55.
[p*358] The key to the statutory definition is the second requirement. It instructs courts
that, in determining whether a fact-based work is an original work of authorship, they
should focus on the manner in which the collected facts have been selected, coordinated,
and arranged. This is a straightforward application of the originality requirement. Facts
are never original, so the compilation author can claim originality, if at all, only in the
way the facts are presented. To that end, the statute dictates that the principal focus
should be on whether the selection, coordination, and arrangement are sufficiently
original to merit protection.
Not every selection, coordination, or arrangement will pass muster. This is plain from
the statute. It states that, to merit protection, the facts must be selected, coordinated, or
arranged "in such a way" as to render the work as a whole original. This implies that
some "ways" will trigger copyright, but that others will not. See Patry 57, and n. 76.
Otherwise, the phrase "in such a way" is meaningless and Congress should have defined
"compilation" simply as "a work formed by the collection and assembly of preexisting
materials or data that are selected, coordinated, or arranged." That Congress did not do
so is dispositive. In accordance with "the established principle that a court should give
effect, if possible, to every clause and word of a statute," Moskal v. United States, 498
U.S. 103, 109-110 (1990) (internal quotations omitted), we conclude that the statute
envisions that there will be some fact-based works in which the selection, coordination,
and arrangement are not sufficiently original to trigger copyright protection.
As discussed earlier, however, the originality requirement is not particularly stringent. A
compiler may settle upon a selection or arrangement that others have used; novelty is not
required. Originality requires only that the author make the selection or arrangement
independently (i. e., without copying that selection or arrangement from another work),
and that it display some minimal level of creativity. Presumably,[p*359] the vast
majority of compilations will pass this test, but not all will. There remains a narrow
category of works in which the creative spark is utterly lacking or so trivial as to be
virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188 U.S.
239, 251 (1903) (referring to "the narrowest and most obvious limits"). Such works are
incapable of sustaining a valid copyright. Nimmer § 2.01[B].
Even if a work qualifies as a copyrightable compilation, it receives only limited
protection. This is the point of § 103 of the Act. Section 103 explains that "the subject
matter of copyright . . . includes compilations," § 103(a), but that copyright protects only
the author's original contributions -- not the facts or information conveyed:
"The copyright in a compilation . . . extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the
work, and does not imply any exclusive right in the preexisting material." § 103(b).

As § 103 makes clear, copyright is not a tool by which a compilation author may keep
others from using the facts or data he or she has collected. "The most important point
here is one that is commonly misunderstood today: copyright . . . has no effect one way
or the other on the copyright or public domain status of the preexisting material." H. R.
Rep., at 57; S. Rep., at 55. The 1909 Act did not require, as "sweat of the brow" courts
mistakenly assumed, that each subsequent compiler must start from scratch and is
precluded from relying on research undertaken by another. See, e. g., Jeweler's Circular
Publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works may be
freely copied because copyright protects only the elements that owe their origin to the
compiler -- the selection, coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not
"sweat of the brow," is the [p*360] touchstone of copyright protection in directories and
other fact-based works. Nor is there any doubt that the same was true under the 1909
Act. The 1976 revisions were a direct response to the Copyright Office's concern that
many lower courts had misconstrued this basic principle, and Congress emphasized
repeatedly that the purpose of the revisions was to clarify, not change, existing law. The
revisions explain with painstaking clarity that copyright requires originality, § 102(a);
that facts are never original, § 102(b); that the copyright in a compilation does not
extend to the facts it contains, § 103(b); and that a compilation is copyrightable only to
the extent that it features an original selection, coordination, or arrangement, § 101.
The 1976 revisions have proven largely successful in steering courts in the right
direction. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 1369-
1370: "A copyright in a directory . . . is properly viewed as resting on the originality of
the selection and arrangement of the factual material, rather than on the industriousness
of the efforts to develop the information. Copyright protection does not extend to the
facts themselves, and the mere use of information contained in a directory without a
substantial copying of the format does not constitute infringement" (citation omitted).
Additionally, the Second Circuit, which almost 70 years ago issued the classic
formulation of the "sweat of the brow" doctrine in Jeweler's Circular Publishing Co.,
has now fully repudiated the reasoning of that decision. See, e. g.,Financial Information,
Inc. v. Moody's Investors Service, Inc., 808 F. 2d 204, 207 (CA2 1986), cert. denied, 484
U.S. 820 (1987); Financial Information, Inc. v. Moody's Investors Service, Inc.,751 F. 2d
501, 510 (CA2 1984) (Newman, J., concurring); Hoehling v. Universal City
Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those scholars who believe that
"industrious collection" should be rewarded seem to recognize that this is beyond the
scope of existing copyright law. See Denicola 516 ("the very vocabulary of
copyright [p*361] is ill suited to analyzing property rights in works of
nonfiction"); id., at 520-521, 525; Ginsburg 1867, 1870.
III
There is no doubt that Feist took from the white pages of Rural's directory a substantial
amount of factual information. At a minimum, Feist copied the names, towns, and
telephone numbers of 1,309 of Rural's subscribers. Not all copying, however, is
copyright infringement. To establish infringement, two elements must be proven: (1)
ownership of a valid copyright, and (2) copying of constituent elements of the work that
are original. See Harper & Row, 471 U.S., at 548. The first element is not at issue here;
Feist appears to concede that Rural's directory, considered as a whole, is subject to a
valid copyright because it contains some foreword text, as well as original material in its
yellow pages advertisements. See Brief for Petitioner 18; Pet. for Cert. 9.
The question is whether Rural has proved the second element. In other words, did Feist,
by taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy
anything that was "original" to Rural? Certainly, the raw data does not satisfy the
originality requirement. Rural may have been the first to discover and report the names,
towns, and telephone numbers of its subscribers, but this data does not "'owe its origin'"
to Rural. Burrow-Giles, 111 U.S., at 58. Rather, these bits of information are
uncopyrightable facts; they existed before Rural reported them and would have
continued to exist if Rural had never published a telephone directory. The originality
requirement "rules out protecting . . . names, addresses, and telephone numbers of which
the plaintiff by no stretch of the imagination could be called the author." Patterson &
Joyce 776.
Rural essentially concedes the point by referring to the names, towns, and telephone
numbers as "preexisting material." Brief for Respondent 17. Section 103(b) states
explicitly [p*362] that the copyright in a compilation does not extend to "the preexisting
material employed in the work."
The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an innovative or surprising way. It
is equally true, however, that the selection and arrangement of facts cannot be so
mechanical or routine as to require no creativity whatsoever. The standard of originality
is low, but it does exist. See Patterson & Joyce 760, n. 144 ("While this requirement is
sometimes characterized as modest, or a low threshold, it is not without effect") (internal
quotations omitted; citations omitted). As this Court has explained, the Constitution
mandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U.S., at
94; and an author who claims infringement must prove "the existence of . . . intellectual
production, of thought, and conception." Burrow-Giles, supra, at 59-60.
The selection, coordination, and arrangement of Rural's white pages do not satisfy the
minimum constitutional standards for copyright protection. As mentioned at the outset,
Rural's white pages are entirely typical. Persons desiring telephone service in Rural's
service area fill out an application and Rural issues them a telephone number. In
preparing its white pages, Rural simply takes the data provided by its subscribers and
lists it alphabetically by surname. The end product is a garden-variety white pages
directory, devoid of even the slightest trace of creativity.
Rural's selection of listings could not be more obvious: it publishes the most basic
information -- name, town, and telephone number -- about each person who applies to it
for telephone service. This is "selection" of a sort, but it lacks the modicum of creativity
necessary to transform mere selection into copyrightable expression. Rural expended
sufficient effort [p*363] to make the white pages directory useful, but insufficient
creativity to make it original.
We note in passing that the selection featured in Rural's white pages may also fail the
originality requirement for another reason. Feist points out that Rural did not truly
"select" to publish the names and telephone numbers of its subscribers; rather, it was
required to do so by the Kansas Corporation Commission as part of its monopoly
franchise. See 737 F. Supp., at 612. Accordingly, one could plausibly conclude that this
selection was dictated by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrangement of facts. The white
pages do nothing more than list Rural's subscribers in alphabetical order. This
arrangement may, technically speaking, owe its origin to Rural; no one disputes that
Rural undertook the task of alphabetizing the names itself. But there is nothing remotely
creative about arranging names alphabetically in a white pages directory. It is an age-old
practice, firmly rooted in tradition and so commonplace that it has come to be expected
as a matter of course. See Brief for Information Industry Association et al. as Amici
Curiae 10 (alphabetical arrangement "is universally observed in directories published by
local exchange telephone companies"). It is not only unoriginal, it is practically
inevitable. This time-honored tradition does not possess the minimal creative spark
required by the Copyright Act and the Constitution.
We conclude that the names, towns, and telephone numbers copied by Feist were not
original to Rural and therefore were not protected by the copyright in Rural's combined
white and yellow pages directory. As a constitutional matter, copyright protects only
those constituent elements of a work that possess more than a de minimis quantum of
creativity. Rural's white pages, limited to basic subscriber information and arranged
alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not
afford protection [p*364] from copying to a collection of facts that are selected,
coordinated, and arranged in a way that utterly lacks originality. Given that some works
must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that
Rural's white pages pass muster, it is hard to believe that any collection of facts could
fail.
Because Rural's white pages lack the requisite originality, Feist's use of the listings
cannot constitute infringement. This decision should not be construed as demeaning
Rural's efforts in compiling its directory, but rather as making clear that copyright
rewards originality, not effort. As this Court noted more than a century ago, "'great
praise may be due to the plaintiffs for their industry and enterprise in publishing this
paper, yet the law does not contemplate their being rewarded in this way.'"
Baker v. Selden, 101 U.S., at 105. The judgment of the Court of Appeals is

G.R. No. 165306 September 20, 2005


MANLY SPORTWEAR MANUFACTURING, INC., Petitioners,
vs.
DADODETTE ENTERPRISES AND/OR HERMES SPORTS CENTER, Respondent.
DECISION
YNARES-SANTIAGO, J.:
This petition for review on certiorari1 under Rule 45 of the Revised Rules of Civil Procedure assails the July
13, 2004 decision2 of the Court of Appeals3 in CA-G.R. SP No. 79887 and its September 15, 2004
resolution4denying reconsideration thereof.
The facts are as follows:
On March 14, 2003, Special Investigator Eliezer P. Salcedo of the National Bureau of Investigation (NBI)
applied for a search warrant before the Regional Trial Court (RTC) of Quezon City, based on the
information that Dadodette Enterprises and/or Hermes Sports Center were in possession of goods, the
copyright of which belonged to Manly Sportswear Mfg., Inc. (MANLY).5
After finding reasonable grounds that a violation of Sections 172 and 217 of Republic Act (RA) No.
82936 has been committed, Judge Estrella T. Estrada of RTC-Quezon City, Branch 83, 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 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 that the copyrighted products of MANLY do not appear to be original
creations and were being manufactured and distributed by different companies locally and abroad under
various brands, and therefore unqualified for protection under Section 172 of RA 8293. Moreover, MANLY’s
certificates of registrations were issued only in 2002, whereas there were certificates of registrations for the
same sports articles which were issued earlier than MANLY’s, thus further negating the claim that its
copyrighted products were original creations.8
On August 11, 2003, the trial court denied9 MANLY’s motion for reconsideration. Hence it filed a petition for
certiorari10 before the Court of Appeals which was denied for lack of merit. The appellate court found that
the trial court correctly granted the motion to quash and that its ruling in the ancillary proceeding did not
preempt the findings of the intellectual property court as it did not resolve with finality the status or
character of the seized items.
After denial of its motion for reconsideration on September 15, 2004, MANLY filed the instant petition for
review on certiorari raising the sole issue of whether or not the Court of Appeals erred in finding that the
trial court did not gravely abuse its discretion in declaring in the hearing for the quashal of the search
warrant that the copyrighted products of MANLY are not original creations subject to the protection of RA
8293.
We deny the petition.
The power to issue search warrants is exclusively vested with the trial judges in the exercise of their judicial
function.11 As such, the power to quash the same also rests solely with them. After the judge has issued a
warrant, he is not precluded to subsequently quash the same, if he finds upon reevaluation of the evidence
that no probable cause exists.
Our ruling in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 9312 is instructive, thus:
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[.]
In the instant case, we find that the trial court did not abuse its discretion when it entertained the motion to
quash considering that no criminal action has yet been instituted when it 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 first place. As ruled by the trial court, the copyrighted
products do not appear to be original creations of MANLY and are not among the classes of work
enumerated under Section 172 of RA 8293. The trial court, thus, may not be faulted for overturning its initial
assessment that there was probable cause in view of its inherent power to issue search warrants and to
quash the same. No objection may be validly posed to an order quashing a warrant already issued as the
court must be provided with the opportunity to correct itself of an error unwittingly committed, or, with like
effect, to allow the aggrieved party the chance to convince the court that its ruling is erroneous.
Moreover, the trial court was acting within bounds when it ruled, in an ancillary proceeding, that the
copyrighted products of petitioner are not original creations. This is because in the determination of the
existence of probable cause for the issuance or quashal of a warrant, it is inevitable that the court may
touch on issues properly threshed out in a regular proceeding. In so doing, it does not usurp the power of,
much less preclude, the court from making a final judicial determination of the issues in a full-blown trial.
Consequently, MANLY’s assertion that the trial court’s order quashing the warrant preempted the finding of
the intellectual property court has no legal basis.
As pertinently held in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93:13
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 court’s
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.
...
... 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 court’s 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.
Thus, in Vlasons Enterprises Corporation v. Court of Appeals14 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…
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 petitioner’s utility models are
copyrightable and, if so, whether he is the owner of a copyright over the said models. It bears stressing that
upon the filing of the application for search warrant, the RTC was duty-bound to determine whether
probable cause existed, in accordance with Section 4, Rule 126 of the Rules of Criminal Procedure[.]
Further, the copyright certificates issued in favor of MANLY constitute merely prima facie evidence of
validity and 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 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
deposit16pursuant to Section 2, Rule 7 of the Copyrights Safeguards and Regulations17 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 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 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.
CONSUELO YNARES-SANTIAGO
Associate Justice
WE CONCUR:

BRANDIR INTERNATIONAL, INC., Plaintiff-Appellant,


v.
CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co.,
Defendant-Appellee, and
David L. Ladd, Register of Copyrights, United States Copyright
Office, Third-Party Defendant.
No. 828, Docket 86-6260.
United States Court of Appeals, Second Circuit.
Argued March 2, 1987.
Decided December 2, 1987.
Blum Kaplan, New York City (Lawrence Rosenthal, Laura E. Goldbard, Anita K.
Yeung, New York City, of counsel), for plaintiff-appellant.
Fish & Neave, New York City (Donald E. Degling, Susan Progoff, Eric M. Lee, New
York City, of counsel), for defendant-appellee.
Before OAKES and WINTER, Circuit Judges, and ZAMPANO, District Judge.[1]
O A K E S, Cir cuit Jud g e:
In passing the Copyright Act of 1976 Congress attempted to distinguish between
[1143] protectable "works of applied art" and "industrial designs not subject to
copyright protection." See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54,reprinted
in 1976 U.S.Code Cong. & Admin.News 5659, 5667 (hereinafter H.R.Rep. No.
1476). The courts, however, have had difficulty framing tests by which the fine
line establishing what is and what is not copyrightable can be drawn. Once again
we are called upon to draw such a line, this time in a case involving the "RIBBON
Rack," a bicycle rack made of bent tubing that is said to have originated from a
wire sculpture. (A photograph of the rack is contained in the appendix to this
opinion.) We are also called upon to determine whether there is any trademark
protection available to the manufacturer of the bicycle rack, appellant Brandir
International, Inc. The Register of Copyright, named as a third-party defendant
under the statute, 17 U.S.C. § 411, but electing not to appear, denied
copyrightability. In the subsequent suit brought in the United States District Court
for the Southern District of New York, Charles S. Haight, Jr., Judge, the district
court granted summary judgment on both the copyright and trademark claims to
defendant Cascade Pacific Lumber Co., d/b/a Columbia Cascade Co., manufacturer
of a similar bicycle rack. We affirm as to the copyright claim, but reverse and
remand as to the trademark claim.
Against the history of copyright protection well set out in the majority opinion
in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415-18 (2d Cir.1985),
and in Denicola, Applied Art and Industrial Design: A Suggested Approach to
Copyright in Useful Articles, 67 Minn.L.Rev. 707, 709-17 (1983), Congress adopted
the Copyright Act of 1976. The "works of art" classification of the Copyright Act of
1909 was omitted and replaced by reference to "pictorial, graphic, and sculptural
works," 17 U.S.C. § 102(a)(5). According to the House Report, the new category
was intended to supply "as clear a line as possible between copyrightable works
of applied art and uncopyrighted works of industrial design." H.R.Rep. No. 1476, at
55, U.S.Code Cong. & Admin.News 1976, p. 5668. The statutory definition of
"pictorial, graphic, and sculptural works" states that "the design of a useful article,
as defined in this section, shall be considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of the article." 17
U.S.C. § 101.[2] The legislative history added gloss on the criteria of separate
identity and independent existence in saying:
On the other hand, although the shape of an industrial product
may be aesthetically satisfying and valuable, the Committee's
intention is not to offer it copyright protection under the bill.
Unless the shape of an automobile, airplane, ladies' dress, food
processor, television set, or any other industrial product contains
some element that, physically or conceptually, can be identified
as separable from the utilitarian aspects of that article, the
design would not be copyrighted under the bill.
H.R.Rep. No. 1476, at 55, U.S.Code Cong. & Admin.News 1976, p. 5668.
As courts and commentators have come to realize, however, the line Congress
attempted to draw between copyrightable art and noncopyrightable design "was
neither clear nor new." Denicola, supra, 67 Minn.L.Rev. at 720. One aspect of the
distinction that has drawn considerable attention is the reference in the House
Report to "physicallyor conceptually" (emphasis added) separable elements. The
District of Columbia Circuit in Esquire, Inc. v. Ringer,591 F.2d 796, 803-04
(D.C.Cir.1978) (holding outdoor lighting fixtures ineligible for copyright), cert.
denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (1979), called this an
"isolated reference" and gave it no significance. Professor Nimmer, however,
[1144] seemed to favor the observations of Judge Harold Leventhal in his
concurrence in Esquire, who stated that "the overall legislative policy ... sustains
the Copyright Office in its effort to distinguish between the instances where the
aesthetic element is conceptually severable and the instances where the
aesthetic element is inextricably interwoven with the utilitarian aspect of the
article." 591 F.2d at 807; see 1 Nimmer on Copyright § 2.08[B] at 2-93 to 2-96.2
(1986). But see Gerber, Book Review, 26 U.C.L.A.L.Rev. 925, 938-43 (1979)
(criticizing Professor Nimmer's view on conceptual separability). Looking to the
section 101 definition of works of artistic craftsmanship requiring that artistic
features be "capable of existing independently of the utilitarian aspects,"
Professor Nimmer queries whether that requires physical as distinguished
from conceptual separability, but answers his query by saying "[t]here is reason to
conclude that it does not." See 1 Nimmer on Copyright § 2.08[B] at 2-96.1. In any
event, in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d
Cir.1980), this court accepted the idea that copyrightability can adhere in the
"conceptual" separation of an artistic element. Indeed, the court went on to find
such conceptual separation in reference to ornate belt buckles that could be and
were worn separately as jewelry. Kieselstein-Cord was followed in Norris
Industries, Inc. v. International Telephone & Telegraph Corp., 696 F.2d 918, 923-24
(11th Cir.), cert. denied, 464 U.S. 818, 104 S.Ct. 78, 78 L.Ed.2d 89 (1983),
although there the court upheld the Register's refusal to register automobile wire
wheel covers, finding no "conceptually separable" work of art. See also Transworld
Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95 (D.Del.1982) (finding conceptual
separability sufficient to support copyright in denying summary judgment on
copyrightability of eyeglass display cases).
In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), a
divided panel of this circuit affirmed a district court grant of summary judgment of
noncopyrightability of four life-sized, anatomically correct human torso
forms. Carol Barnhart distinguished Kieselstein-Cord, but it surely did not overrule
it. The distinction made was that the ornamented surfaces of the Kieselstein-
Cord belt buckles "were not in any respect required by their utilitarian functions,"
but the features claimed to be aesthetic or artistic in the Carol Barnhart forms
were "inextricably intertwined with the utilitarian feature, the display of clothes."
773 F.2d at 419. But cf. Animal Fair, Inc. v. Amfesco Indus., Inc., 620 F.Supp. 175,
186-88 (D.Minn.1985) (holding bear-paw design conceptually separable from the
utilitarian features of a slipper), aff'd mem., 794 F.2d 678 (8th Cir.1986). As Judge
Newman's dissent made clear, the Carol Barnhart majority did not dispute "that
`conceptual separability' is distinct from `physical separability' and, when
present, entitles the creator of a useful article to a copyright on its design." 773
F.2d at 420.
"Conceptual separability" is thus alive and well, at least in this circuit. The
problem, however, is determining exactly what it is and how it is to be applied.
Judge Newman's illuminating discussion in dissent in Carol Barnhart, see 773 F.2d
at 419-24, proposed a test that aesthetic features are conceptually separable if
"the article ... stimulate[s] in the mind of the beholder a concept that is separate
from the concept evoked by its utilitarian function." Id. at 422. This approach has
received favorable endorsement by at least one commentator, W. Patry, Latman's
The Copyright Law43-45 (6th ed. 1986), who calls Judge Newman's test the
"temporal displacement" test. It is to be distinguished from other possible ways in
which conceptual separability can be tested, including whether the primary use is
as a utilitarian article as opposed to an artistic work, whether the aesthetic
aspects of the work can be said to be "primary," and whether the article is
marketable as art, none of which is very satisfactory. But Judge Newman's test
was rejected outright by the majority as "a standard so ethereal as to amount to a
`nontest' that would be extremely difficult, if not impossible, to administer or
apply." 773 F.2d at 419 n. 5.
[1145] Perhaps the differences between the majority and the dissent in Carol
Barnhart might have been resolved had they had before them the Denicola article
on Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful
Articles, supra. There, Professor Denicola points out that although the Copyright
Act of 1976 was an effort "`to draw as clear a line as possible,'" in truth "there is
no line, but merely a spectrum of forms and shapes responsive in varying degrees
to utilitarian concerns." 67 Minn.L.Rev. at 741. Denicola argues that "the statutory
directive requires a distinction between works of industrial design and works
whose origins lie outside the design process, despite the utilitarian environment in
which they appear." He views the statutory limitation of copyrightability as "an
attempt to identify elements whose form and appearance reflect the
unconstrained perspective of the artist," such features not being the product of
industrial design. Id. at 742. "Copyrightability, therefore, should turn on the
relationship between the proffered work and the process of industrial
design." Id. at 741. He suggests that "the dominant characteristic of industrial
design is the influence of nonaesthetic, utilitarian concerns" and hence concludes
that copyrightability "ultimately should depend on the extent to which the work
reflects artistic expression uninhibited by functional considerations."[3] Id. To state
the Denicola test in the language of conceptual separability, if design elements
reflect a merger of aesthetic and functional considerations, the artistic aspects of
a work cannot be said to be conceptually separable from the utilitarian elements.
Conversely, where design elements can be identified as reflecting the designer's
artistic judgment exercised independently of functional influences, conceptual
separability exists.
We believe that Professor Denicola's approach provides the best test for
conceptual separability and, accordingly, adopt it here for several reasons. First,
the approach is consistent with the holdings of our previous cases. InKieselstein-
Cord, for example, the artistic aspects of the belt buckles reflected purely
aesthetic choices, independent of the buckles' function, while in Carol
Barnhart the distinctive features of the torsos — the accurate anatomical design
and the sculpted shirts and collars — showed clearly the influence of functional
concerns. Though the torsos bore artistic features, it was evident that the
designer incorporated those features to further the usefulness of the torsos as
mannequins. Second, the test's emphasis on the influence of utilitarian concerns
in the design process may help, as Denicola notes, to "alleviate the de facto
discrimination against nonrepresentational art that has regrettably accompanied
much of the current analysis." Id. at 745.[4] Finally, and perhaps most importantly,
we think Denicola's test will not be too difficult to administer in practice. The work
itself will continue to give "mute testimony" of its origins. In addition, the parties
will be required to present evidence relating to the design process and the nature
of the work, with the trier of fact making the determination [1146] whether the
aesthetic design elements are significantly influenced by functional
considerations.
Turning now to the facts of this case, we note first that Brandir contends, and its
chief owner David Levine testified, that the original design of the RIBBON Rack
stemmed from wire sculptures that Levine had created, each formed from one
continuous undulating piece of wire. These sculptures were, he said, created and
displayed in his home as a means of personal expression, but apparently were
never sold or displayed elsewhere. He also created a wire sculpture in the shape
of a bicycle and states that he did not give any thought to the utilitarian
application of any of his sculptures until he accidentally juxtaposed the bicycle
sculpture with one of the self-standing wire sculptures. It was not until November
1978 that Levine seriously began pursuing the utilitarian application of his
sculptures, when a friend, G. Duff Bailey, a bicycle buff and author of numerous
articles about urban cycling, was at Levine's home and informed him that the
sculptures would make excellent bicycle racks, permitting bicycles to be parked
under the overloops as well as on top of the underloops. Following this meeting,
Levine met several times with Bailey and others, completing the designs for the
RIBBON Rack by the use of a vacuum cleaner hose, and submitting his drawings
to a fabricator complete with dimensions. The Brandir RIBBON Rack began being
nationally advertised and promoted for sale in September 1979.
In November 1982 Levine discovered that another company, Cascade Pacific
Lumber Co., was selling a similar product. Thereafter, beginning in December
1982, a copyright notice was placed on all RIBBON Racks before shipment and on
December 10, 1982, five copyright applications for registration were submitted to
the Copyright Office. The Copyright Office refused registration by letter, stating
that the RIBBON Rack did not contain any element that was "capable of
independent existence as a copyrightable pictorial, graphic or sculptural work
apart from the shape of the useful article." An appeal to the Copyright Office was
denied by letter dated March 23, 1983, refusing registration on the above ground
and alternatively on the ground that the design lacked originality, consisting of
"nothing more than a familiar public domain symbol." In February 1984, after the
denial of the second appeal of the examiner's decision, Brandir sent letters to
customers enclosing copyright notices to be placed on racks sold prior to
December 1982.
Between September 1979 and August 1982 Brandir spent some $38,500 for
advertising and promoting the RIBBON Rack, including some 85,000 pieces of
promotional literature to architects and landscape architects. Additionally, since
October 1982 Brandir has spent some $66,000, including full-, half-, and quarter-
page advertisements in architectural magazines such as Landscape Architecture,
Progressive Architecture, andArchitectural Record, indeed winning an advertising
award from Progressive Architecture in January 1983. The RIBBON Rack has been
featured in Popular Science, Art and Architecture, and Design 384 magazines, and
it won an Industrial Designers Society of America design award in the spring of
1980. In the spring of 1984 the RIBBON Rack was selected from 200 designs to be
included among 77 of the designs exhibited at the Katonah Gallery in an
exhibition entitled "The Product of Design: An Exploration of the Industrial Design
Process," an exhibition that was written up in the New York Times.
Sales of the RIBBON Rack from September 1979 through January 1985 were in
excess of $1,367,000. Prior to the time Cascade Pacific began offering for sale its
bicycle rack in August 1982, Brandir's sales were $436,000. The price of the
RIBBON Rack ranges from $395 up to $2,025 for a stainless steel model and
generally depends on the size of the rack, one of the most popular being the RB-
7, selling for $485.
Applying Professor Denicola's test to the RIBBON Rack, we find that the rack is not
copyrightable. It seems clear that [1147] the form of the rack is influenced in
significant measure by utilitarian concerns and thus any aesthetic elements
cannot be said to be conceptually separable from the utilitarian elements. This is
true even though the sculptures which inspired the RIBBON Rack may well have
been — the issue of originality aside — copyrightable.
Brandir argues correctly that a copyrighted work of art does not lose its protected
status merely because it subsequently is put to a functional use. The Supreme
Court so held in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954),
and Congress specifically intended to accept and codify Mazer in section 101 of
the Copyright Act of 1976. See H.R.Rep. No. 1476 at 54-55. The district court thus
erred in ruling that, whatever the RIBBON Rack's origins, Brandir's
commercialization of the rack disposed of the issue of its copyrightability.
Had Brandir merely adopted one of the existing sculptures as a bicycle rack,
neither the application to a utilitarian end nor commercialization of that use would
have caused the object to forfeit its copyrighted status. Comparison of the
RIBBON Rack with the earlier sculptures, however, reveals that while the rack may
have been derived in part from one of more "works of art," it is in its final form
essentially a product of industrial design. In creating the RIBBON Rack, the
designer has clearly adapted the original aesthetic elements to accommodate and
further a utilitarian purpose. These altered design features of the RIBBON Rack,
including the spacesaving, open design achieved by widening the upper loops to
permit parking under as well as over the rack's curves, the straightened vertical
elements that allow in- and above-ground installation of the rack, the ability to fit
all types of bicycles and mopeds, and the heavy-gauged tubular construction of
rustproof galvanized steel, are all features that combine to make for a safe,
secure, and maintenance-free system of parking bicycles and mopeds. Its
undulating shape is said in Progressive Architecture,January 1982, to permit
double the storage of conventional bicycle racks. Moreover, the rack is
manufactured from 2 3/8-inch standard steam pipe that is bent into form, the six-
inch radius of the bends evidently resulting from bending the pipe according to a
standard formula that yields bends having a radius equal to three times the
nominal internal diameter of the pipe.
Brandir argues that its RIBBON Rack can and should be characterized as a
sculptural work of art within the minimalist art movement. Minimalist sculpture's
most outstanding feature is said to be its clarity and simplicity, in that it often
takes the form of geometric shapes, lines, and forms that are pure and free of
ornamentation and void of association. As Brandir's expert put it, "The meaning is
to be found in, within, around and outside the work of art, allowing the artistic
sensation to be experienced as well as intellectualized." People who use Foley
Square in New York City see in the form of minimalist art the "Tilted Arc," which is
on the plaza at 26 Federal Plaza. Numerous museums have had exhibitions of
such art, and the school of minimalist art has many admirers.
It is unnecessary to determine whether to the art world the RIBBON Rack properly
would be considered an example of minimalist sculpture. The result under the
copyright statute is not changed. Using the test we have adopted, it is not enough
that, to paraphrase Judge Newman, the rack may stimulate in the mind of the
reasonable observer a concept separate from the bicycle rack concept. While the
RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it
remains nonetheless the product of industrial design. Form and function are
inextricably intertwined in the rack, its ultimate design being as much the result
of utilitarian pressures as aesthetic choices. Indeed, the visually pleasing
proportions and symmetricality of the rack represent design changes made in
response to functional concerns. Judging from the awards the rack has received, it
would seem in fact that Brandir has achieved with the RIBBON Rack the highest
goal of modern industrial design, that is, the harmonious fusion of function and
aesthetics. Thus there remains no artistic element of the RIBBON [1148] Rack that
can be identified as separate and "capable of existing independently, of, the
utilitarian aspects of the article." Accordingly, we must affirm on the copyright
claim.
As to whether the configuration of Brandir's bicycle rack can be protected under
either section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), or New York State
unfair competition law, we are reminded that the design of a product itself may
function as its packaging or protectable trade dress. See LeSportsac, Inc. v. K mart
Corp., 754 F.2d 71, 75 (2d Cir.1985). The district court dismissed Brandir's claims,
saying that its analysis of the copyright issue was sufficient to dispose of the
Lanham Act and common law claims. The court stated "the design feature of the
Ribbon Racks is clearly dictated by the function to be performed, namely, holding
up bicycles. If the steam pipes were not bent into the design, but instead
remained flat, the bicycles would not stand up, they would fall down." But as
Judge Newman noted in his dissent in Carol Barnhart, 773 F.2d at 420 n. 1, the
principle of conceptual separability of functional design elements in copyright law
is different from the somewhat similar principle of functionality as developed in
trademark law. For trademark purposes, he pointed out, a design feature "has
been said to be functional if it is `essential to the use or purpose of the article' or
`affects the cost or quality of the article.'" Id. (quoting Inwood Laboratories, Inc. v.
Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 2187 n. 10, 72
L.Ed.2d 606 (1982)); seeLeSportsac, Inc. v. K mart Corp., 754 F.2d at 75-76 (trade
dress of a product is eligible for protection if it has acquired a secondary meaning
and is nonfunctional).[5]
Here, the district court limited its inquiry to determining whether portions of the
RIBBON Rack performed the function of a bicycle rack. But the fact that a design
feature performs a function does not make it essential to the performance of that
function; it is instead the absence of alternative constructions performing the
same function that renders the feature functional. Thus, the true test of
functionality is not whether the feature in question performs a function, but
whether the feature "is dictated by the functions to be performed," Warner Bros.
Inc. v. Gay Toys, Inc., 724 F.2d 327, 331 (2d Cir.1983) (quoted in LeSportsac, Inc. v.
K mart Corp., 754 F.2d at 76), as evidenced by available alternative
constructions. See Metro Kane Imports, Ltd. v. Rowoco, Inc., 618 F.Supp. 273, 275-
76 (S.D.N.Y.1985),aff'd mem., 800 F.2d 1128 (2d Cir.1986) (finding high-tech
design of orange juice squeezer not dictated by function to be performed as there
was no evidence that design permitted juicer to be manufactured at lower price or
with altered performance). There are numerous alternative bicycle rack
constructions. The nature, price, and utility of these constructions are material
issues of fact not suitable for determination by summary judgment.[6] For
example, while it is true that the materials used by Brandir are standard-size
pipes, we have no way of knowing whether the particular size and weight of the
pipes used is the best, the most economical, or the only available size and weight
pipe in the marketplace. We would rather think the opposite might be the case.
So, too, with the dimension of the bends being dictated by a standard formula
corresponding to the pipe size; it could be that there are many standard radii and
that the particular radius of Brandir's RIBBON Rack actually required new tooling.
This issue of functionality on remand should be viewed in terms of bicycle racks
generally and not one-piece undulating bicycle racks specifically. See id.at 330-
32; see also In re DC Comics, Inc., 689 F.2d 1042, 1045 (C.C.P.A.1982) (dolls
generally and not Superman dolls are the class by [1149] which functionality is
determined). We reverse and remand as to the trademark and unfair competition
claims.
Judgment affirmed as to the copyright claim; reversed and remanded as to the
trademark and unfair competition claims.

LOTUS DEV. CORP. v. BORLAND INTL., INC.


No. 93-2214
UNITED STATES COURT OF APPEALS FOR THE FIRST CIRCUIT
March 9, 1995, Decided
PRIOR HISTORY: APPEAL FROM THE UNITED STATES DISTRICT COURT FOR
THE DISTRICT OF MASSACHUSETTS. Hon. Robert E. Keeton, U.S. District Judge.
COUNSEL: Gary L. Reback, with whom Peter N. Detkin, Michael Barclay, Isabella E.
Fu, Wilson Sonsini Goodrich & Rosati, Peter E. Gelhaar, Katherine L. Parks, and
Donnelly Conroy & Gelhaar, were on brief for appellant.
Matthew P. Poppel, et. al, were on brief for Computer Scientists, amicus curiae.
Dennis S. Karjala and Peter S. Menell on brief, amici curiae.
Jeffrey C. Cannon and Baker Keaton Seibel & Cannon were on brief for Computer
Software Industry Association, amicus curiae.
Laureen E. McGurk, David A. Rabin, Bryan G. Harrison and Morris Manning & Martin
were on brief for Chicago Computer Society, Diablo Users Group, Danbury Area
Computer Society, IBM AB Users Group, Kentucky-Indiana Personal Computer Users
Group, Long Island PC Users Group, Napa Valley PC Users Group, Pacific Northwest
PC Users Group, Palmetto Personal Computer Club, Philadelphia Area Computer
Society, Inc., Phoenix IBM PC Users Group, Pinellas IBM PC Users Group, Quad Cities
Computer Society, Quattro Pro Users Group, Sacramento PC Users Group, San
Francisco PC Users Group, Santa Barbara PC Users Group, Twin Cities PC Users
Group, and Warner Robbins Personal Computer Association, amici curiae.
Diane Marie O'Malley and Hanson Bridgett Marcus Vlahos & Rudy were on brief for
Software Entrepreneurs' Forum, amicus curiae.
Peter M.C. Choy was on brief for American Committee for Interoperable Systems,
amicus curiae.
Howard B. Abrams, Howard C. Anawalt, Stephen R. Barnett, Ralph S. Brown, Stephen
L. Carter, Amy B. Cohen, Paul J. Heald, Peter A. Jaszi, John A. Kidwell, Edmund W.
Kitch, Roberta R. Kwall, David L. Lange, Marshall Leaffer, Jessica D. Litman, Charles
R. McManis, L. Ray Patterson, Jerome H. Reichman, David A. Rice, Pamela
Samuelson, David J. Seipp, David E. Shipley, Lionel S. Sobel, Alfred C. Yen, and Diane
L. Zimmerman were on brief for Copyright Law Professors, amicus curiae.
Henry B. Gutman, with whom Kerry L. Konrad, Joshua H. Epstein, Kimberly A.
Caldwell, O'Sullivan Graev & Karabell, Thomas M. Lemberg, James C. Burling, and
Hale and Dorr, were on brief for appellee.
Morton David Goldberg, June M. Besek, David O. Carson, Jesse M. Feder, Schwab
Goldberg Price & Dannay, and Arthur R. Miller were on brief for Apple Computer, Inc.,
Digital Equipment Corporation, International Business Machines Corporation, and
Xerox Corporation, amici curiae.
Jon A. Baumgarten, Proskauer Rose Goetz & Mendelsohn, and Robert A. Gorman were
on brief for Adobe Systems, Inc., Apple Computer, Inc., Computer Associates
International, Inc., Digital Equipment Corporation, and International Business Machines
Corporation, amici curiae.
Herbert F. Schwartz, Vincent N. Palladino, Susan Progoff, Fish & Neave, William J.
Cheeseman, and Foley Hoag & Eliot, were on brief for Computer and Business
Equipment Manufacturers Association, amicus curiae.
JUDGES: Before Torruella, Chief Judge, Boudin and Stahl, Circuit Judges.
OPINIONBY: STAHL
OPINION: STAHL, Circuit Judge. This appeal requires us to decide whether a computer
menu command hierarchy is copyrightable subject matter. In particular, we must decide
whether, as the district court held, plaintiff-appellee Lotus Development Corporation's
copyright in Lotus 1-2-3, a computer spreadsheet program, was infringed by defendant-
appellant Borland International, Inc., when Borland copied the Lotus 1-2-3 menu
command hierarchy into its Quattro and Quattro Pro computer spreadsheet programs.
See Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F. Supp. 78 (D. Mass. 1992) ("Borland
I"); Lotus Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203 (D. Mass. 1992) ("Borland
II"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F. Supp. 202 (D. Mass. 1993) ("Borland
III"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831 F. Supp. 223 (D. Mass. 1993)
("Borland IV").

I. Background
Lotus 1-2-3 is a spreadsheet program that enables users to perform accounting functions
electronically on a computer. Users manipulate and control the program via a series of
menu commands, such as "Copy," "Print," and "Quit." Users choose commands either by
highlighting them on the screen or by typing their first letter. In all, Lotus 1-2-3 has 469
commands arranged into more than 50 menus and submenus.
Lotus 1-2-3, like many computer programs, allows users to write what are called
"macros." By writing a macro, a user can designate a series of command choices with a
single macro keystroke. Then, to execute that series of commands in multiple parts of
the spreadsheet, rather than typing the whole series each time, the user only needs to
type the single pre-programmed macro keystroke, causing the program to recall and
perform the designated series of commands automatically. Thus, Lotus 1-2-3 macros
shorten the time needed to set up and operate the program.
Borland released its first Quattro program to the public in 1987, after Borland's
engineers had labored over its development for nearly three years. Borland's objective
was to develop a spreadsheet program far superior to existing programs, including Lotus
1-2-3. In Borland's words, "from the time of its initial release . . . Quattro included
enormous innovations over competing spreadsheet products."
The district court found, and Borland does not now contest, that Borland included in its
Quattro and Quattro Pro version 1.0 programs "a virtually identical copy of the entire 1-
2-3 menu tree." Borland III, 831 F. Supp. at 212 (emphasis in original). In so doing,
Borland did not copy any of Lotus's underlying computer code; it copied only the words
and structure of Lotus's menu command hierarchy. Borland included the Lotus menu
command hierarchy in its programs to make them compatible with Lotus 1-2-3 so that
spreadsheet users who were already familiar with Lotus 1-2-3 would be able to switch to
the Borland programs without having to learn new commands or rewrite their Lotus
macros.
In its Quattro and Quattro Pro version 1.0 programs, Borland achieved compatibility
with Lotus 1-2-3 by offering its users an alternate user interface, the "Lotus Emulation
Interface." By activating the Emulation Interface, Borland users would see the Lotus
menu commands on their screens and could interact with Quattro or Quattro Pro as if
using Lotus 1-2-3, albeit with a slightly different looking screen and with many Borland
options not available on Lotus 1-2-3. In effect, Borland allowed users to choose how
they wanted to communicate with Borland's spreadsheet programs: either by using menu
commands designed by Borland, or by using the commands and command structure
used in Lotus 1-2-3 augmented by Borland-added commands.
Lotus filed this action against Borland in the District of Massachusetts on July 2, 1990,
four days after a district court held that the Lotus 1-2-3 "menu structure, taken as a
whole -- including the choice of command terms [and] the structure and order of those
terms," was protected expression covered by Lotus's copyrights. Lotus Dev. Corp. v.
Paperback Software Int'l, 740 F. Supp. 37, 68, 70 (D. Mass. 1990)
("Paperback"). [1] Three days earlier, on the morning after the Paperback decision,
Borland had filed a declaratory judgment action against Lotus in the Northern District of
California, seeking a declaration of non-infringement. On September 10, 1990, the
district court in California dismissed Borland's declaratory judgment action in favor of
this action.
Lotus and Borland filed cross motions for summary judgment; the district court denied
both motions on March 20, 1992, concluding that "neither party's motion is supported by
the record." Borland I, 788 F. Supp. at 80. The district court invited the parties to file
renewed summary judgment motions that would "focus their arguments more precisely"
in light of rulings it had made in conjunction with its denial of their summary judgment
motions. Id. at 82. Both parties filed renewed motions for summary judgment on April
24, 1992. In its motion, Borland contended that the Lotus 1-2-3 menus were not
copyrightable as a matter of law and that no reasonable trier of fact could find that the
similarity between its products and Lotus 1-2-3 was sufficient to sustain a determination
of infringement. Lotus contended in its motion that Borland had copied Lotus 1-2-3's
entire user interface and had thereby infringed Lotus's copyrights.
On July 31, 1992, the district court denied Borland's motion and granted Lotus's motion
in part. The district court ruled that the Lotus menu command hierarchy was
copyrightable expression because
[a] very satisfactory spreadsheet menu tree can be constructed using different commands
and a different command structure from those of Lotus 1-2-3. In fact, Borland has
constructed just such an alternate tree for use in Quattro Pro's native mode. Even if one
holds the arrangement of menu commands constant, it is possible to generate literally
millions of satisfactory menu trees by varying the menu commands employed.

Borland II, 799 F. Supp. at 217. The district court demonstrated this by offering alternate
command words for the ten commands that appear in Lotus's main menu. Id. For
example, the district court stated that "the 'Quit' command could be named 'Exit' without
any other modifications," and that "the 'Copy' command could be called 'Clone,' 'Ditto,'
'Duplicate,' 'Imitate,' 'Mimic,' 'Replicate,' and 'Reproduce,' among others." Id. Because
so many variations were possible, the district court concluded that the Lotus developers'
choice and arrangement of command terms, reflected in the Lotus menu command
hierarchy, constituted copyrightable expression.
In granting partial summary judgment to Lotus, the district court held that Borland had
infringed Lotus's copyright in Lotus 1-2-3:
As a matter of law, Borland's Quattro products infringe the Lotus 1-2-3 copyright
because of (1) the extent of copying of the "menu commands" and "menu structure" that
is not genuinely disputed in this case, (2) the extent to which the copied elements of the
"menu commands" and "menu structure" contain expressive aspects separable from the
functions of the "menu commands" and "menu structure," and (3) the scope of those
copied expressive aspects as an integral part of Lotus 1-2-3.

Borland II, 799 F. Supp. at 223 (emphasis in original). The court nevertheless concluded
that while the Quattro and Quattro Pro programs infringed Lotus's copyright, Borland
had not copied the entire Lotus 1-2-3 user interface, as Lotus had contended.
Accordingly, the court concluded that a jury trial was necessary to determine the scope
of Borland's infringement, including whether Borland copied the long prompts [2] of
Lotus 1-2-3, whether the long prompts contained expressive elements, and to what
extent, if any, functional constraints limited the number of possible ways that the Lotus
menu command hierarchy could have been arranged at the time of its creation. See
Borland III, 831 F. Supp. at 207. Additionally, the district court granted Lotus summary
judgment on Borland's affirmative defense of waiver, but not on its affirmative defenses
of laches and estoppel. Borland II, 799 F. Supp. at 222-23.
Immediately following the district court's summary judgment decision, Borland
removed the Lotus Emulation Interface from its products. Thereafter, Borland's
spreadsheet programs no longer displayed the Lotus 1-2-3 menus to Borland users, and
as a result Borland users could no longer communicate with Borland's programs as if
they were using a more sophisticated version of Lotus 1-2-3. Nonetheless, Borland's
programs continued to be partially compatible with Lotus 1-2-3, for Borland retained
what it called the "Key Reader" in its Quattro Pro programs. Once turned on, the Key
Reader allowed Borland's programs to understand and perform some Lotus 1-2-3
macros. [3] With the Key Reader on, the Borland programs used Quattro Pro menus for
display, interaction, and macro execution, except when they encountered a slash ("/")
key in a macro (the starting key for any Lotus 1-2-3 macro), in which case they
interpreted the macro as having been written for Lotus 1-2-3. Accordingly, people who
wrote or purchased macros to shorten the time needed to perform an operation in Lotus
1-2-3 could still use those macros in Borland's programs. [4] The district court permitted
Lotus to file a supplemental complaint alleging that the Key Reader infringed its
copyright.
The parties agreed to try the remaining liability issues without a jury. The district court
held two trials, the Phase I trial covering all remaining issues raised in the original
complaint (relating to the Emulation Interface) and the Phase II trial covering all issues
raised in the supplemental complaint (relating to the Key Reader). At the Phase I trial,
there were no live witnesses, although considerable testimony was presented in the form
of affidavits and deposition excerpts. The district court ruled upon evidentiary objections
counsel interposed. At the Phase II trial, there were two live witnesses, each of whom
demonstrated the programs for the district court.
After the close of the Phase I trial, the district court permitted Borland to amend its
answer to include the affirmative defense of "fair use." Because Borland had presented
all of the evidence supporting its fair-use defense during the Phase I trial, but Lotus had
not presented any evidence on fair use (as the defense had not been raised before the
conclusion of the Phase I trial), the district court considered Lotus's motion for judgment
on partial findings of fact. See Fed. R. Civ. P. 52(c). The district court held that Borland
had failed to show that its use of the Lotus 1-2-3 menu command hierarchy in its
Emulation Interface was a fair use. See Borland III, 831 F. Supp. at 208.
In its Phase I-trial decision, the district court found that "each of the Borland emulation
interfaces contains a virtually identical copy of the 1-2-3 menu tree and that the 1-2-3
menu tree is capable of a wide variety of expression." Borland III, 831 F. Supp. at 218.
The district court also rejected Borland's affirmative defenses of laches and estoppel. Id.
at 218-23.
In its Phase II-trial decision, the district court found that Borland's Key Reader file
included "a virtually identical copy of the Lotus menu tree structure, but represented in a
different form and with first letters of menu command names in place of the full menu
command names." Borland IV, 831 F. Supp. at 228. In other words, Borland's programs
no longer included the Lotus command terms, but only their first letters. The district
court held that "the Lotus menu structure, organization, and first letters of the command
names . . . constitute part of the protectable expression found in [Lotus 1-2-3]." Id. at
233. Accordingly, the district court held that with its Key Reader, Borland had infringed
Lotus's copyright. Id. at 245. The district court also rejected Borland's affirmative
defenses of waiver, laches, estoppel, and fair use. Id. at 235-45. The district court then
entered a permanent injunction against Borland, id. at 245, from which Borland appeals.
This appeal concerns only Borland's copying of the Lotus menu command hierarchy into
its Quattro programs and Borland's affirmative defenses to such copying. Lotus has not
cross-appealed; in other words, Lotus does not contend on appeal that the district court
erred in finding that Borland had not copied other elements of Lotus 1-2-3, such as its
screen displays.
II. Discussion
On appeal, Borland does not dispute that it factually copied the words and arrangement
of the Lotus menu command hierarchy. Rather, Borland argues that it "lawfully copied
the unprotectable menus of Lotus 1-2-3." Borland contends that the Lotus menu
command hierarchy is not copyrightable because it is a system, method of operation,
process, or procedure foreclosed from protection by 17 U.S.C. @ 102(b). Borland also
raises a number of affirmative defenses.

A. Copyright Infringement Generally


To establish copyright infringement, a plaintiff must prove "(1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original." Feist
Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Data Gen.
Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 n.19 (1st Cir. 1994);
Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir. 1988).
To show ownership of a valid copyright and therefore satisfy Feist's first prong, a
plaintiff must prove that the work as a whole is original and that the plaintiff complied
with applicable statutory formalities. See Engineering Dynamics, Inc. v. Structural
Software, Inc., 26 F.3d 1335, 1340 (5th Cir. 1994). "In judicial proceedings, a certificate
of copyright registration constitutes prima facie evidence of copyrightability and shifts
the burden to the defendant to demonstrate why the copyright is not valid." Bibbero
Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104, 1106 (9th Cir. 1990); see also 17 U.S.C.
@ 410(c); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir. 1991)
(presumption of validity may be rebutted).
To show actionable copying and therefore satisfy Feist's second prong, a plaintiff must
first prove that the alleged infringer copied plaintiff's copyrighted work as a factual
matter; to do this, he or she may either present direct evidence of factual copying or, if
that is unavailable, evidence that the alleged infringer had access to the copyrighted
work and that the offending and copyrighted works are so similar that the court may
infer that there was factual copying (i.e., probative similarity). Engineering Dynamics,
26 F.3d at 1340; see also Concrete Mach., 843 F.2d at 606. The plaintiff must then prove
that the copying of copyrighted material was so extensive that it rendered the offending
and copyrighted works substantially similar. See Engineering Dynamics, 26 F.3d at
1341.
In this appeal, we are faced only with whether the Lotus menu command hierarchy is
copyrightable subject matter in the first instance, for Borland concedes that Lotus has a
valid copyright in Lotus 1-2-3 as a whole [5] and admits to factually copying the Lotus
menu command hierarchy. As a result, this appeal is in a very different posture from
most copyright-infringement cases, for copyright infringement generally turns on
whether the defendant has copied protected expression as a factual matter. Because of
this different posture, most copyright-infringement cases provide only limited help to us
in deciding this appeal. This is true even with respect to those copyright-infringement
cases that deal with computers and computer software.

B. Matter of First Impression


Whether a computer menu command hierarchy constitutes copyrightable subject matter
is a matter of first impression in this court. While some other courts appear to have
touched on it briefly in dicta, see, e.g., Autoskill, Inc. v. National Educ. Support Sys.,
Inc., 994 F.2d 1476, 1495 n.23 (10th Cir.), cert. denied, 114 S. Ct. 307 (1993), we know
of no cases that deal with the copyrightability of a menu command hierarchy standing on
its own (i.e., without other elements of the user interface, such as screen displays, in
issue). Thus we are navigating in uncharted waters.
Borland vigorously argues, however, that the Supreme Court charted our course more
than 100 years ago when it decided Baker v. Selden, 101 U.S. 99 (1879). In Baker v.
Selden, the Court held that Selden's copyright over the textbook in which he explained
his new way to do accounting did not grant him a monopoly on the use of his accounting
system.[6] Borland argues:
The facts of Baker v. Selden, and even the arguments advanced by the parties in that
case, are identical to those in this case. The only difference is that the "user interface" of
Selden's system was implemented by pen and paper rather than by computer.

To demonstrate that Baker v. Selden and this appeal both involve accounting systems,
Borland even supplied this court with a video that, with special effects, shows Selden's
paper forms "melting" into a computer screen and transforming into Lotus 1-2-3.
We do not think that Baker v. Selden is nearly as analogous to this appeal as Borland
claims. Of course, Lotus 1-2-3 is a computer spreadsheet, and as such its grid of
horizontal rows and vertical columns certainly resembles an accounting ledger or any
other paper spreadsheet. Those grids, however, are not at issue in this appeal for, unlike
Selden, Lotus does not claim to have a monopoly over its accounting system. Rather,
this appeal involves Lotus's monopoly over the commands it uses to operate the
computer. Accordingly, this appeal is not, as Borland contends, "identical" to Baker v.
Selden.

C. Altai
Before we analyze whether the Lotus menu command hierarchy is a system, method of
operation, process, or procedure, we first consider the applicability of the test the Second
Circuit set forth in Computer Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.
1992). [7] The Second Circuit designed its Altai test to deal with the fact that computer
programs, copyrighted as "literary works," can be infringed by what is known as
"nonliteral" copying, which is copying that is paraphrased or loosely paraphrased rather
than word for word. See id. at 701 (citing nonliteral-copying cases); see also 3 Melville
B. Nimmer & David Nimmer, Nimmer on Copyright @ 13.03[A][1] (1993). When faced
with nonliteral-copying cases, courts must determine whether similarities are due merely
to the fact that the two works share the same underlying idea or whether they instead
indicate that the second author copied the first author's expression. The Second Circuit
designed its Altai test to deal with this situation in the computer context, specifically
with whether one computer program copied nonliteral expression from another
program's code.
The Altai test involves three steps: abstraction, filtration, and comparison. The
abstraction step requires courts to "dissect the allegedly copied program's structure and
isolate each level of abstraction contained within it." Altai, 982 F.2d at 707. This step
enables courts to identify the appropriate framework within which to separate
protectable expression from unprotected ideas. Second, courts apply a "filtration" step in
which they examine "the structural components at each level of abstraction to determine
whether their particular inclusion at that level was 'idea' or was dictated by
considerations of efficiency, so as to be necessarily incidental to that idea; required by
factors external to the program itself; or taken from the public domain." Id. Finally,
courts compare the protected elements of the infringed work (i.e., those that survived the
filtration screening) to the corresponding elements of the allegedly infringing work to
determine whether there was sufficient copying of protected material to constitute
infringement. Id. at 710.
In the instant appeal, we are not confronted with alleged nonliteral copying of computer
code. Rather, we are faced with Borland's deliberate, literal copying of the Lotus menu
command hierarchy. Thus, we must determine not whether nonliteral copying occurred
in some amorphous sense, but rather whether the literal copying of the Lotus menu
command hierarchy constitutes copyright infringement.
While the Altai test may provide a useful framework for assessing the alleged nonliteral
copying of computer code, we find it to be of little help in assessing whether the literal
copying of a menu command hierarchy constitutes copyright infringement. In fact, we
think that the Altai test in this context may actually be misleading because, in instructing
courts to abstract the various levels, it seems to encourage them to find a base level that
includes copyrightable subject matter that, if literally copied, would make the copier
liable for copyright infringement.[8] While that base (or literal) level would not be at
issue in a nonliteral-copying case like Altai, it is precisely what is at issue in this appeal.
We think that abstracting menu command hierarchies down to their individual word and
menu levels and then filtering idea from expression at that stage, as both the Altai and
the district court tests require, obscures the more fundamental question of whether a
menu command hierarchy can be copyrighted at all. The initial inquiry should not be
whether individual components of a menu command hierarchy are expressive, but rather
whether the menu command hierarchy as a whole can be copyrighted. But see Gates
Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993) (endorsing Altai's
abstraction-filtration-comparison test as a way of determining whether "menus and
sorting criteria" are copyrightable).

D. The Lotus Menu Command Hierarchy: A "Method of Operation"


Borland argues that the Lotus menu command hierarchy is uncopyrightable because it is
a system, method of operation, process, or procedure foreclosed from copyright
protection by 17 U.S.C. @ 102(b). Section 102(b) states: "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." Because we
conclude that the Lotus menu command hierarchy is a method of operation, we do not
consider whether it could also be a system, process, or procedure.
We think that "method of operation," as that term is used in @ 102(b), refers to the
means by which a person operates something, whether it be a car, a food processor, or a
computer. Thus a text describing how to operate something would not extend copyright
protection to the method of operation itself; other people would be free to employ that
method and to describe it in their own words. Similarly, if a new method of operation is
used rather than described, other people would still be free to employ or describe that
method.
We hold that the Lotus menu command hierarchy is an uncopyrightable "method of
operation." The Lotus menu command hierarchy provides the means by which users
control and operate Lotus 1-2-3. If users wish to copy material, for example, they use the
"Copy" command. If users wish to print material, they use the "Print" command. Users
must use the command terms to tell the computer what to do. Without the menu
command hierarchy, users would not be able to access and control, or indeed make use
of, Lotus 1-2-3's functional capabilities.
The Lotus menu command hierarchy does not merely explain and present Lotus 1-2-3's
functional capabilities to the user; it also serves as the method by which the program is
operated and controlled. The Lotus menu command hierarchy is different from the Lotus
long prompts, for the long prompts are not necessary to the operation of the program;
users could operate Lotus 1-2-3 even if there were no long prompts. [9] The Lotus menu
command hierarchy is also different from the Lotus screen displays, for users need not
"use" any expressive aspects of the screen displays in order to operate Lotus 1-2-3;
because the way the screens look has little bearing on how users control the program, the
screen displays are not part of Lotus 1-2-3's "method of operation." [10] The Lotus
menu command hierarchy is also different from the underlying computer code, because
while code is necessary for the program to work, its precise formulation is not. In other
words, to offer the same capabilities as Lotus 1-2-3, Borland did not have to copy
Lotus's underlying code (and indeed it did not); to allow users to operate its programs in
substantially the same way, however, Borland had to copy the Lotus menu command
hierarchy. Thus the Lotus 1-2-3 code is not a uncopyrightable "method of
operation."[11]
The district court held that the Lotus menu command hierarchy, with its specific choice
and arrangement of command terms, constituted an "expression" of the "idea" of
operating a computer program with commands arranged hierarchically into menus and
submenus. Borland II, 799 F. Supp. at 216. Under the district court's reasoning, Lotus's
decision to employ hierarchically arranged command terms to operate its program could
not foreclose its competitors from also employing hierarchically arranged command
terms to operate their programs, but it did foreclose them from employing the specific
command terms and arrangement that Lotus had used. In effect, the district court limited
Lotus 1-2-3's "method of operation" to an abstraction.
Accepting the district court's finding that the Lotus developers made some expressive
choices in choosing and arranging the Lotus command terms, we nonetheless hold that
that expression is not copyrightable because it is part of Lotus 1-2-3's "method of
operation." We do not think that "methods of operation" are limited to abstractions;
rather, they are the means by which a user operates something. If specific words are
essential to operating something, then they are part of a "method of operation" and, as
such, are unprotectable. This is so whether they must be highlighted, typed in, or even
spoken, as computer programs no doubt will soon be controlled by spoken words.
The fact that Lotus developers could have designed the Lotus menu command hierarchy
differently is immaterial to the question of whether it is a "method of operation." In
other words, our initial inquiry is not whether the Lotus menu command hierarchy
incorporates any expression. [12]. Rather, our initial inquiry is whether the Lotus menu
command hierarchy is a "method of operation." Concluding, as we do, that users operate
Lotus 1-2-3 by using the Lotus menu command hierarchy, and that the entire Lotus
menu command hierarchy is essential to operating Lotus 1-2-3, we do not inquire further
whether that method of operation could have been designed differently. The "expressive"
choices of what to name the command terms and how to arrange them do not magically
change the uncopyrightable menu command hierarchy into copyrightable subject matter.
Our holding that "methods of operation" are not limited to mere abstractions is bolstered
by Baker v. Selden. In Baker, the Supreme Court explained that
the teachings of science and the rules and methods of useful art have their final end in
application and use; and this application and use are what the public derive from the
publication of a book which teaches them. . . . 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.

Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command hierarchy so that
people could learn it and use it. Accordingly, it falls squarely within the prohibition on
copyright protection established in Baker v. Selden and codified by Congress in @
102(b).
In many ways, the Lotus menu command hierarchy is like the buttons used to control,
say, a video cassette recorder ("VCR"). A VCR is a machine that enables one to watch
and record video tapes. Users operate VCRs by pressing a series of buttons that are
typically labelled "Record, Play, Reverse, Fast Forward, Pause, Stop/Eject." That the
buttons are arranged and labeled does not make them a "literary work," nor does it make
them an "expression" of the abstract "method of operating" a VCR via a set of labeled
buttons. Instead, the buttons are themselves the "method of operating" the VCR.
When a Lotus 1-2-3 user chooses a command, either by highlighting it on the screen or
by typing its first letter, he or she effectively pushes a button. Highlighting the "Print"
command on the screen, or typing the letter "P," is analogous to pressing a VCR button
labeled "Play."
Just as one could not operate a buttonless VCR, it would be impossible to operate Lotus
1-2-3 without employing its menu command hierarchy. Thus the Lotus command terms
are not equivalent to the labels on the VCR's buttons, but are instead equivalent to the
buttons themselves. Unlike the labels on a VCR's buttons, which merely make operating
a VCR easier by indicating the buttons' functions, the Lotus menu commands are
essential to operating Lotus 1-2-3. Without the menu commands, there would be no way
to "push" the Lotus buttons, as one could push unlabeled VCR buttons. While Lotus
could probably have designed a user interface for which the command terms were mere
labels, it did not do so here. Lotus 1-2-3 depends for its operation on use of the precise
command terms that make up the Lotus menu command hierarchy.
One might argue that the buttons for operating a VCR are not analogous to the
commands for operating a computer program because VCRs are not copyrightable,
whereas computer programs are. VCRs may not be copyrighted because they do not fit
within any of the @ 102(a) categories of copyrightable works; the closest they come is
"sculptural work." Sculptural works, however, are subject to a "useful-article" exception
whereby "the design of a useful article . . . shall be considered a pictorial, graphic, or
sculptural work only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article." 17 U.S.C. @ 101. A
"useful article" is "an article having an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information." Id. Whatever expression
there may be in the arrangement of the parts of a VCR is not capable of existing
separately from the VCR itself, so an ordinary VCR would not be copyrightable.
Computer programs, unlike VCRs, are copyrightable as "literary works." 17 U.S.C. @
102(a). Accordingly, one might argue, the "buttons" used to operate a computer program
are not like the buttons used to operate a VCR, for they are not subject to a useful-article
exception. The response, of course, is that the arrangement of buttons on a VCR would
not be copyrightable even without a useful-article exception, because the buttons are an
uncopyrightable "method of operation." Similarly, the "buttons" of a computer program
are also an uncopyrightable "method of operation."
That the Lotus menu command hierarchy is a "method of operation" becomes clearer
when one considers program compatibility. Under Lotus's theory, if a user uses several
different programs, he or she must learn how to perform the same operation in a
different way for each program used. For example, if the user wanted the computer to
print material, then the user would have to learn not just one method of operating the
computer such that it prints, but many different methods. We find this absurd. The fact
that there may be many different ways to operate a computer program, or even many
different ways to operate a computer program using a set of hierarchically arranged
command terms, does not make the actual method of operation chosen copyrightable; it
still functions as a method for operating the computer and as such is uncopyrightable.
Consider also that users employ the Lotus menu command hierarchy in writing macros.
Under the district court's holding, if the user wrote a macro to shorten the time needed to
perform a certain operation in Lotus 1-2-3, the user would be unable to use that macro to
shorten the time needed to perform that same operation in another program. Rather, the
user would have to rewrite his or her macro using that other program's menu command
hierarchy. This is despite the fact that the macro is clearly the user's own work product.
We think that forcing the user to cause the computer to perform the same operation in a
different way ignores Congress's direction in @ 102(b) that "methods of operation" are
not copyrightable. That programs can offer users the ability to write macros in many
different ways does not change the fact that, once written, the macro allows the user to
perform an operation automatically. As the Lotus menu command hierarchy serves as
the basis for Lotus 1-2-3 macros, the Lotus menu command hierarchy is a "method of
operation."
In holding that expression that is part of a "method of operation" cannot be copyrighted,
we do not understand ourselves to go against the Supreme Court's holding in Feist. In
Feist, the Court explained:
The primary objective of copyright is not to reward the labor of authors, but to promote
the Progress of Science and useful Arts. To this end, copyright assures authors the right
to their original expression, but encourages others to build freely upon the ideas and
information conveyed by a work.

Feist, 499 U.S. at 349-50 (quotations and citations omitted). We do not think that the
Court's statement that "copyright assures authors the right to their original expression"
indicates that all expression is necessarily copyrightable; while original expression is
necessary for copyright protection, we do not think that it is alone sufficient. Courts
must still inquire whether original expression falls within one of the categories
foreclosed from copyright protection by @ 102(b), such as being a "method of
operation."
We also note that in most contexts, there is no need to "build" upon other people's
expression, for the ideas conveyed by that expression can be conveyed by someone else
without copying the first author's expression. Our holding that methods of operation are
not limited to abstractions goes against Autoskill, 994 F.2d at 1495 n.23, in which the
Tenth Circuit rejected the defendant's argument that the keying procedure used in a
computer program was an uncopyrightable "procedure" or "method of operation" under
@ 102(b). The program at issue, which was designed to test and train students with
reading deficiencies, id. at 1481, required students to select responses to the program's
queries "by pressing the 1, 2, or 3 keys." Id. at 1495 n.23. The Tenth Circuit held that,
"for purposes of the preliminary injunction, . . . the record showed that [this] keying
procedure reflected at least a minimal degree of creativity," as required by Feist for
copyright protection. Id. As an initial matter, we question whether a programmer's
decision to have users select a response by pressing the 1, 2, or 3 keys is original. More
importantly, however, we fail to see how "a student selecting a response by pressing the
1, 2, or 3 keys," id., can be anything but an unprotectable method of operation.[14]

III. Conclusion
Because we hold that the Lotus menu command hierarchy is uncopyrightable subject
matter, we further hold that Borland did not infringe Lotus's copyright by copying it.
Accordingly, we need not consider any of Borland's affirmative defenses. The judgment
of the district court is
Reversed.

Concurrence follows. BOUDIN, Circuit Judge, concurring. The importance of this case,
and a slightly different emphasis in my view of the underlying problem, prompt me to
add a few words to the majority's tightly focused discussion.

I.
Most of the law of copyright and the "tools" of analysis have developed in the context of
literary works such as novels, plays, and films. In this milieu, the principal problem--
simply stated, if difficult to resolve--is to stimulate creative expression without unduly
limiting access by others to the broader themes and concepts deployed by the author.
The middle of the spectrum presents close cases; but a "mistake" in providing too much
protection involves a small cost: subsequent authors treating the same themes must take
a few more steps away from the original expression.
The problem presented by computer programs is fundamentally different in one respect.
The computer program is a means for causing something to happen; it has a mechanical
utility, an instrumental role, in accomplishing the world's work. Granting protection, in
other words, can have some of the consequences of patent protection in limiting other
people's ability to perform a task in the most efficient manner. Utility does not bar
copyright (dictionaries may be copyrighted), but it alters the calculus.
Of course, the argument for protection is undiminished, perhaps even enhanced, by
utility: if we want more of an intellectual product, a temporary monopoly for the creator
provides incentives for others to create other, different items in this class. But the "cost"
side of the equation may be different where one places a very high value on public
access to a useful innovation that may be the most efficient means of performing a given
task. Thus, the argument for extending protection may be the same; but the stakes on the
other side are much higher.
It is no accident that patent protection has preconditions that copyright protection does
not--notably, the requirements of novelty and non-obviousness--and that patents are
granted for a shorter period than copyrights. This problem of utility has sometimes
manifested itself in copyright cases, such as Baker v. Selden, 101 U.S. 99 (1879), and
been dealt with through various formulations that limit copyright or create limited rights
to copy. But the case law and doctrine addressed to utility in copyright have been brief
detours in the general march of copyright law.
Requests for the protection of computer menus present the concern with fencing off
access to the commons in an acute form. A new menu may be a creative work, but over
time its importance may come to reside more in the investment that has been made by
users in learning the menu and in building their own mini-programs--macros--in reliance
upon the menu. Better typewriter keyboard layouts may exist, but the familiar QWERTY
keyboard dominates the market because that is what everyone has learned to use. See P.
David, CLIO and the Economics of QWERTY, 75 Am. Econ. Rev. 332 (1985). The
QWERTY keyboard is nothing other than a menu of letters.
Thus, to assume that computer programs are just one more new means of expression,
like a filmed play, may be quite wrong. The "form"--the written source code or the menu
structure depicted on the screen--look hauntingly like the familiar stuff of copyright; but
the "substance" probably has more to do with problems presented in patent law or, as
already noted, in those rare cases where copyright law has confronted industrially useful
expressions. Applying copyright law to computer programs is like assembling a jigsaw
puzzle whose pieces do not quite fit.
All of this would make no difference if Congress had squarely confronted the issue, and
given explicit directions as to what should be done. The Copyright Act of 1976 took a
different course. While Congress said that computer programs might be subject to
copyright protection, it said this in very general terms; and, especially in @ 102(b),
Congress adopted a string of exclusions that if taken literally might easily seem to
exclude most computer programs from protection. The only detailed prescriptions for
computers involve narrow issues (like back-up copies) of no relevance here.
Of course, one could still read the statute as a congressional command that the familiar
doctrines of copyright law be taken and applied to computer programs, in cookie cutter
fashion, as if the programs were novels or play scripts. Some of the cases involving
computer programs embody this approach. It seems to me mistaken on two different
grounds: the tradition of copyright law, and the likely intent of Congress.
The broad-brush conception of copyright protection, the time limits, and the formalities
have long been prescribed by statute. But the heart of copyright doctrine--what may be
protected and with what limitations and exceptions--has been developed by the courts
through experience with individual cases. B. Kaplan, An Unhurried View of Copyright
40 (1967). Occasionally Congress addresses a problem in detail. For the most part the
interstitial development of copyright through the courts is our tradition.
Nothing in the language or legislative history of the 1976 Act, or at least nothing brought
to our attention, suggests that Congress meant the courts to abandon this case-by-case
approach. Indeed, by setting up @ 102(b) as a counterpoint theme, Congress has
arguably recognized the tension and left it for the courts to resolve through the
development of case law. And case law development is adaptive: it allows new problems
to be solved with help of earlier doctrine, but it does not preclude new doctrines to meet
new situations.

II.
In this case, the raw facts are mostly, if not entirely, undisputed. Although the inferences
to be drawn may be more debatable, it is very hard to see that Borland has shown any
interest in the Lotus menu except as a fall-back option for those users already committed
to it by prior experience or in order to run their own macros using 1-2-3 commands. At
least for the amateur, accessing the Lotus menu in the Borland Quattro or Quattro Pro
program takes some effort.
Put differently, it is unlikely that users who value the Lotus menu for its own sake--
independent of any investment they have made themselves in learning Lotus' commands
or creating macros dependent upon them--would choose the Borland program in order to
secure access to the Lotus menu. Borland's success is due primarily to other features. Its
rationale for deploying the Lotus menu bears the ring of truth.
Now, any use of the Lotus menu by Borland is a commercial use and deprives Lotus of a
portion of its "reward," in the sense that an infringement claim if allowed would increase
Lotus' profits. But this is circular reasoning: broadly speaking, every limitation on
copyright or privileged use diminishes the reward of the original creator. Yet not every
writing is copyrightable or every use an infringement. The provision of reward is one
concern of copyright law, but it is not the only one. If it were, copyrights would be
perpetual and there would be no exceptions.
The present case is an unattractive one for copyright protection of the menu. The menu
commands (e.g., "print," "quit") are largely for standard procedures that Lotus did not
invent and are common words that Lotus cannot monopolize. What is left is the
particular combination and sub-grouping of commands in a pattern devised by Lotus.
This arrangement may have a more appealing logic and ease of use than some other
configurations; but there is a certain arbitrariness to many of the choices.
If Lotus is granted a monopoly on this pattern, users who have learned the command
structure of Lotus 1-2-3 or devised their own macros are locked into Lotus, just as a
typist who has learned the QWERTY keyboard would be the captive of anyone who had
a monopoly on the production of such a keyboard. Apparently, for a period Lotus 1-2-3
has had such sway in the market that it has represented the de facto standard for
electronic spreadsheet commands. So long as Lotus is the superior spreadsheet--either in
quality or in price--there may be nothing wrong with this advantage.
But if a better spreadsheet comes along, it is hard to see why customers who have
learned the Lotus menu and devised macros for it should remain captives of Lotus
because of an investment in learning made by the users and not by Lotus. Lotus has
already reaped a substantial reward for being first; assuming that the Borland program is
now better, good reasons exist for freeing it to attract old Lotus customers: to enable the
old customers to take advantage of a new advance, and to reward Borland in turn for
making a better product. If Borland has not made a better product, then customers will
remain with Lotus anyway.
Thus, for me the question is not whether Borland should prevail but on what basis.
Various avenues might be traveled, but the main choices are between holding that the
menu is not protectable by copyright and devising a new doctrine that Borland's use is
privileged. No solution is perfect and no intermediate appellate court can make the final
choice.
To call the menu a "method of operation" is, in the common use of those words, a
defensible position. After all, the purpose of the menu is not to be admired as a work of
literary or pictorial art. It is to transmit directions from the user to the computer, i.e., to
operate the computer. The menu is also a "method" in the dictionary sense because it is a
"planned way of doing something," an "order or system," and (aptly here) an "orderly or
systematic arrangement, sequence or the like." Random House Webster's College
Dictionary 853 (1991).
A different approach would be to say that Borland's use is privileged because, in the
context already described, it is not seeking to appropriate the advances made by Lotus'
menu; rather, having provided an arguably more attractive menu of its own, Borland is
merely trying to give former Lotus users an option to exploit their own prior investment
in learning or in macros. The difference is that such a privileged use approach would not
automatically protect Borland if it had simply copied the Lotus menu (using different
codes), contributed nothing of its own, and resold Lotus under the Borland label.
The closest analogue in conventional copyright is the fair use doctrine. E.g., Harper &
Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985). Although invoked by
Borland, it has largely been brushed aside in this case because the Supreme Court has
said that it is "presumptively" unavailable where the use is a "commercial" one. See id.
at 562. In my view, this is something less than a definitive answer; "presumptively" does
not mean "always" and, in any event, the doctrine of fair use was created by the courts
and can be adapted to new purposes.
But a privileged use doctrine would certainly involve problems of its own. It might more
closely tailor the limits on copyright protection to the reasons for limiting that
protection; but it would entail a host of administrative problems that would cause cost
and delay, and would also reduce the ability of the industry to predict outcomes. Indeed,
to the extent that Lotus' menu is an important standard in the industry, it might be argued
that any use ought to be deemed privileged.
In sum, the majority's result persuades me and its formulation is as good, if not better,
than any other that occurs to me now as within the reach of courts. Some solutions (e.g.,
a very short copyright period for menus) are not options at all for courts but might be for
Congress. In all events, the choices are important ones of policy, not linguistics, and they
should be made with the underlying considerations in view.

Footnotes
1 Judge Keeton presided over both the Paperback litigation and this case.

2 Lotus 1-2-3 utilizes a two-line menu; the top line lists the commands from which the
user may choose, and the bottom line displays what Lotus calls its "long prompts." The
long prompts explain, as a sort of "help text," what the highlighted menu command will
do if entered. For example, the long prompt for the "Worksheet" command displays the
submenu that the "Worksheet" command calls up; it reads "Global, Insert, Delete,
Column, Erase, Titles, Window, Status, Page." The long prompt for the "Copy"
command explains what function the "Copy" command will perform: "Copy a cell or
range of cells." The long prompt for the "Quit" command reads, "End 1-2-3 session
(Have you saved your work?)."
Prior to trial, the parties agreed to exclude the copying of the long prompts from the
case; Lotus agreed not to contend that Borland had copied the long prompts, Borland
agreed not to argue that it had not copied the long prompts, and both sides agreed not to
argue that the issue of whether Borland had copied the long prompts was material to any
other issue in the case. See Borland III, 831 F. Supp. at 208.

3 Because Borland's programs could no longer display the Lotus menu command
hierarchy to users, the Key Reader did not allow debugging or modification of macros,
nor did it permit the execution of most interactive macros.

4 See Borland IV, 831 F. Supp. at 226-27, for a more detailed explanation of macros and
the Key Reader.

5 Computer programs receive copyright protection as "literary works." See 17 U.S.C. @


102(a)(1) (granting protection to "literary works") and 17 U.S.C. @ 101 (defining
"literary works" as "works . . . expressed in words, numbers, or other verbal or
numerical symbols or indicia, regardless of the nature of the material objects, such as
books, periodicals, phonorecords, film, tapes, disks, or cards, in which they are
embodied" (emphasis added)); see also H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54
(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667 ("The term 'literary works' . . .
includes computer data bases, and computer programs to the extent that they incorporate
authorship in the programmer's expression of original ideas, as distinguished from the
ideas themselves.").

6 Selden's system of double-entry bookkeeping is the now almost-universal T-accounts


system.

7 We consider the Altai test because both parties and many of the amici focus on it so
heavily. Borland, in particular, is highly critical of the district court for not employing
the Altai test. Borland does not, however, indicate how using that test would have been
dispositive in Borland's favor. Interestingly, Borland appears to contradict its own
reasoning at times by criticizing the applicability of the Altai test.

8 We recognize that Altai never states that every work contains a copyrightable "nugget"
of protectable expression. Nonetheless, the implication is that for literal copying, "it is
not necessary to determine the level of abstraction at which similarity ceases to consist
of an 'expression of ideas,' because literal similarity by definition is always a similarity
as to the expression of ideas." 3 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright @ 13.03[A](2) (1993).

9 As the Lotus long prompts are not before us on appeal, we take no position on their
copyrightability, although we do note that a strong argument could be made that the brief
explanations they provide "merge" with the underlying idea of explaining such
functions. See Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967)
(when the possible ways to express an idea are limited, the expression "merges" with the
idea and is therefore uncopyrightable; when merger occurs, identical copying is
permitted).

10 As they are not before us on appeal, we take no position on whether the Lotus 1-2-3
screen displays constitute original expression capable of being copyrighted.

11 Because the Lotus 1-2-3 code is not before us on appeal, we take no position on
whether it is copyrightable. We note, however, that original computer codes generally
are protected by copyright. See, e.g., Altai, 982 F.2d at 702 ("It is now well settled that
the literal elements of computer programs, i.e., their source and object codes, are the
subject of copyright protection.") (citing cases).

12 We think that the Altai test would contemplate this being the initial inquiry.

13 When there are a limited number of ways to express an idea, however, the expression
"merges" with the idea and becomes uncopyrightable. Morrissey, 379 F.2d at 678-79.

14 The Ninth Circuit has also indicated in dicta that "menus, and keystrokes" may be
copyrightable. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir.),
cert. denied, BB Asset Management, Inc. v. Symantec Corp., 113 S. Ct. 198 (1992). In
that case, however, the plaintiff did not show that the defendant had copied the plaintiff's
menus or keystrokes, so the court was not directly faced with whether the menus or
keystrokes constituted an unprotectable method of operation. Id.

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