JESSIE G. CHING v. WILLIAM M. SALINAS

FACTS:

The case involves a petition for review on certiorari filed by Jessie G. Ching, the owner and general manager of Jeshicris Manufacturing Co., who seeks to reverse the Decision and Resolution of the Court of Appeals (CA). Ching's petition challenges the CA's affirmation of the January 3, 2002 and February 14, 2002 Orders of the Regional Trial Court (RTC) of Manila, Branch 1. These orders quashed and set aside Search Warrant Nos. 01-2401 and 01-2402 granted in favor of Ching.

Ching is the owner of a Utility Model called "Leaf Spring Eye Bushing for Automobile" made of plastic. On September 4, 2001, Ching obtained Certificates of Copyright Registration and Deposit from the National Library for his work. On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for assistance in apprehending and prosecuting illegal manufacturers and distributors of his work.

After an 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. The NBI alleged that the respondents reproduced and distributed Ching's models, in violation of Sections 177.1 and 177.3 of Republic Act No. 8293. The applications sought the seizure of various articles, including the leaf spring eye bushing and related molds and tools used in its manufacture.

The RTC granted the application and issued the search warrants. During the execution of the search warrants, the NBI seized several articles and items, including the leaf spring eye bushings made of plastic polypropylene and polyvinyl chloride, vehicle bearing cushions, and molds used in the manufacture of these items.

The respondents filed a motion to quash the search warrants, arguing that the copyright registrations obtained by Ching were in violation of the Intellectual Property Code. They claimed that the works covered by the certificates were not artistic or literary but rather spare parts of automobiles, which are not original and should be the subject of a patent, not copyright.

The trial court granted the motion to quash the search warrants, finding that there was no probable cause for their issuance. The court ruled that Ching's work pertained to technical solutions, not literary and artistic expressions as required by the Intellectual Property Code.

Ching's motion for reconsideration of the order was denied, prompting him to file a petition for certiorari in the CA. He argued that the trial court had no jurisdiction to resolve the validity of his copyright certificates and that his works were covered by the Intellectual Property Code. However, the CA dismissed the petition, finding no grave abuse of discretion on the part of the trial court.

Ching now seeks the reversal of the CA's decision through this petition for review on certiorari before the Supreme Court.

The petitioner in this case is seeking the reinstatement of search warrants that were issued for the offense of Violation of Class Designation of Copyrightable Works. However, the objects subject to the search warrants, namely the Leaf Spring Eye Bushing and Vehicle Bearing Cushion, are not copyrightable under the Law on Copyright. The petitioner argues that even if the trial court may resolve the validity of his copyright in a proceeding to quash a search warrant, the court erred in declaring that his works are not copyrightable in the first place. The petitioner claims that the Intellectual Property Code of the Philippines provides that copyright protection automatically attaches to a work by the sole fact of its creation, irrespective of its mode or form of expression. The petitioner also argues that the law does not provide that the intended use or use in industry of an article eligible for patent invalidates its registration under the Law on Copyright. The respondents, on the other hand, argue that the petitioner's work is essentially a technical solution to a problem in automobiles and therefore is the subject of a patent, not a copyright. They assert that the certificates issued by the National Library are only certifications of the deposit of a certain work and do not confer copyright protection.

The petitioner in this case requested the National Bureau of Investigation (NBI) to investigate and file an application for a search warrant against the respondents for infringement under Republic Act (RA) No. 8293. The petitioner claimed that he owned utility models that were copyrightable and sought to establish his ownership over these models. The Regional Trial Court (RTC), which had jurisdiction over the case, was tasked with determining whether probable cause existed for the issuance of the search warrant. The RTC was obligated to resolve whether an offense was committed and whether the copyrighted material existed and was being copied and distributed. The ownership of a valid copyright was deemed essential, which required proof of originality and copyrightability. The absence of probable cause would result in the nullification of the search warrant.

ISSUES:

  1. Whether the RTC had the constitutional obligation to determine probable cause for the issuance of a search warrant.

  2. Whether the petitioner-applicant had to prove ownership of copyrighted material and the existence and validity of his copyright in order to establish probable cause for infringement under R.A. No. 8293.

  3. Whether the petitioner's models are copyrightable.

  4. Whether the petitioner's models are works of applied art or artistic works.

  5. Whether the petitioner's models have aesthetic or artistic features that can be identified separately from the utilitarian aspects.

  6. Whether functional components of useful articles can be granted copyright protection.

  7. Whether the vehicle-bearing cushion is a utility model.

  8. Whether the leaf spring eye bushing and vehicle bearing cushion are copyrightable.

  9. Whether or not the name of an enterprise can be protected under copyright law.

RULING:

  1. The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable cause, and cannot refuse to determine whether an offense has been committed. The absence of probable cause will nullify the search warrant.

  2. In order to establish probable cause for infringement under R.A. No. 8293, the petitioner-applicant had to prove ownership of copyrighted material and the existence and validity of his copyright. Ownership is shown by proof of originality and copyrightability, and copying is shown by proof of access to copyrighted material and substantial similarity between works. The petitioner cannot seek relief from the RTC based on his claim of copyright ownership and repudiate the court's jurisdiction to determine the validity of his claim.

  3. The petitioner's models are not copyrightable.

  4. The petitioner's models are not works of applied art or artistic works.

  5. The petitioner's models do not have aesthetic or artistic features that can be identified separately from the utilitarian aspects.

  6. Functional components of useful articles cannot be granted copyright protection.

  7. Yes, the vehicle-bearing cushion is a utility model. A utility model refers to a technical solution to a problem in the mechanical field, and this utility model for a vehicle-bearing cushion meets this definition. It is made of polyvinyl chloride, a durable and pressure-resistant material, and it has a simple construction that can be easily made using ordinary molding equipment.

  8. No, the leaf spring eye bushing and vehicle bearing cushion are not copyrightable. They do not meet the criteria for copyright protection as they are not ornamental or artistic creations, and they are not of the same kind and nature as the works enumerated in the copyright law. Copyright protection only applies to works falling within the statutory description or enumeration.

  9. No, the name of an enterprise cannot be protected under copyright law. The scope of copyright is confined to literary and artistic works, while a name is a means of identifying or distinguishing an enterprise. Copyright protection is not applicable to names or designations.

PRINCIPLES:

  • The RTC has the constitutional obligation to determine probable cause and cannot abdicate this duty.

  • Ownership of copyrighted material is proven by evidence of originality and copyrightability.

  • Copying is proven by evidence of access and substantial similarity.

  • A copyright certificate provides prima facie evidence of originality, validity, and ownership, shifting the burden of proof to the defendant.

  • A certificate of registration does not create a rebuttable presumption of copyright validity if other evidence casts doubt on the question.

  • Works for applied art must be artistic creations with utilitarian functions or incorporated in useful articles. They must be intellectual creations in the literary and artistic domain, or works of applied art.

  • Copyright protection extends to works of applied art that are artistic creations.

  • Works of applied art or industrial design without separable artistic features are not protected by copyright.

  • Utility models and useful articles with no artistic design or value are not copyrightable.

  • Functional components of useful articles are generally not granted copyright protection unless they are separable from the useful article.

  • A utility model is a technical solution to a problem in the mechanical field and refers to an invention in the mechanical field.

  • Copyright is a statutory right that grants protection to works falling within the statutory enumeration or description.

  • Trademark, copyright, and patent rights are distinct and separate from each other and cannot be interchanged. Each has its own scope of protection and cannot be used interchangeably for different types of intellectual property.

  • Copyright law protects literary and artistic works that are original intellectual creations in the literary and artistic domain.

  • The scope of copyright does not cover names or designations of an enterprise.

  • Copyright protection is not applicable to works that solely serve a utilitarian function.

  • The dichotomy of protection for the aesthetic is art for copyright and the invention of original and ornamental design for design patents.