THIRD DIVISION
[ G.R. No. 195835, March 14, 2016 ]SISON OLAÑO v. LIM ENG CO +
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO, RESPONDENT.
DECISION
SISON OLAÑO v. LIM ENG CO +
SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI, PETITIONERS, VS. LIM ENG CO, RESPONDENT.
DECISION
REYES, J.:
This is a petition for review on certiorari[1] under Rule 45 of the Rules of Court, assailing the Decision[2] dated July 9, 2010 and Resolution[3] dated February 24, 2011 of the Court of Appeals (CA) in CA-G.R. SP No. 95471, which annulled the Resolutions dated March 10, 2006[4] and May 25, 2006[5] of the Department of Justice (DOJ) in I.S. No. 2004-925, finding no probable cause for copyright infringement against Sison Olano, Sergio Ong, Marilyn Go and Jap Fuk Hai (petitioners) and directing the withdrawal of the criminal information filed against them.
The Antecedents
The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. (Metrotech).[6] Lim Eng Co (respondent), on the other hand, is the Chairman of LEC Steel Manufacturing Corporation (LEC), a company which specializes in architectural metal manufacturing.[7]
Sometime in 2002, LEC was invited by the architects of the Manansala Project (Project), a high-end residential building in Rockwell Center, Makati City, to submit design/drawings and specifications for interior and exterior hatch doors. LEC complied by submitting on July 16, 2002, shop plans/drawings, including the diskette therefor, embodying the designs and specifications required for the metal hatch doors.[8]
After a series of consultations and revisions, the final shop plans/drawings were submitted by LEC on January 15, 2004 and thereafter copied and transferred to the title block of Ski-First Balfour Joint Venture (SKI-FB), the Project's contractor, and then stamped approved for construction on February 3, 2004.[9]
LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and exterior hatch doors for the 7th to 22nd floors of the Project based on the final shop plans/drawings.[10]
Sometime thereafter, LEC learned that Metrotech was also subcontracted to install interior and exterior hatch doors for the Project's 23rd to 41st floors.[11]
On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech, however, insisted that no copyright infringement was committed because the hatch doors it manufactured were patterned in accordance with the drawings provided by SKI-FB.[12]
On July 2, 2004, LEC deposited with the National Library the final shop plans/drawings of the designs and specifications for the interior and exterior hatch doors of the Project.[13] On July 6, 2004, LEC was issued a Certificate of Copyright Registration and Deposit showing that it is the registered owner of plans/drawings for interior and exterior hatch doors under Registration Nos. 1-2004-13 and 1-2004-14, respectively.[14] This copyright pertains to class work "I" under Section 172 of Republic Act (R.A.) No. 8293, The Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science."
On December 9, 2004, LEC was issued another Certificate of Copyright Registration and Deposit showing that it is the registered owner of plans/drawings for interior and exterior hatch doors under Registration Nos. H-2004-566 and H-2004-567[15] which is classified under Section 172(h) of R.A. No. 8293 as "original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art."
When Metrotech still refused to stop fabricating hatch doors based on LEC's shop plans/drawings, the latter sought the assistance of the National Bureau of Investigation (NBI) which in turn applied for a search warrant before the Regional Trial Court (RTC) of Quezon City, Branch 24. The application was granted on August 13, 2004 thus resulting in the confiscation of finished and unfinished metal hatch doors as well as machines used in fabricating and manufacturing hatch doors from the premises of Metrotech.[16]
On August 13, 2004, the respondent filed a Complaint-Affidavit[17] before the DOJ against the petitioners for copyright infringement. In the meantime or on September 8, 2004, the RTC quashed the search warrant on the ground that copyright infringement was not established.[18]
Traversing the complaint, the petitioners admitted manufacturing hatch doors for the Project. They denied, however, that they committed copyright infringement and averred that the hatch doors they manufactured were functional inventions that are proper subjects of patents and that the records of the Intellectual Property Office reveal that there is no patent, industrial design or utility model registration on LEC's hatch doors. Metrotech further argued that the manufacturing of hatch doors per se is not copyright infringement because copyright protection does not extend to the objects depicted in the illustrations and plans. Moreover, there is no artistic or ornamental expression embodied in the subject hatch doors that would subject them to copyright protection.[19]
Resolutions of the DOJ
In a Resolution[20] dated August 18, 2005, the investigating prosecutor dismissed the respondent's complaint based on inadequate evidence showing that: (1) the petitioners committed the prohibited acts under Section 177 of R.A. No. 8293; and (2) the interior and exterior hatch doors of the petitioners are among the classes of copyrightable work enumerated in Sections 172 and 173 of the same law.[21]
Adamant, the respondent filed a petition for review before the DOJ but it was also denied due course in the Resolution[22] dated November 16, 2005.
Upon the respondent's motion for reconsideration, however, the Resolution[23] dated January 27, 2006 of the DOJ reversed and set aside the Resolution dated August 18, 2005 and directed the Chief State Prosecutor to file the appropriate information for copyright infringement against the petitioners.[24] The DOJ reasoned that the pieces of evidence adduced show that the subject hatch doors are artistic or ornamental with distinctive hinges, door and jamb, among others. The petitioners were not able to sufficiently rebut these allegations and merely insisted on the non-artistic nature of the hatch doors. The DOJ further held that probable cause was established insofar as the artistic nature of the hatch doors and based thereon the act of the petitioners in manufacturing or causing to manufacture hatch doors similar to those of the respondent can be considered as unauthorized reproduction; hence, copyright infringement under Section 177.1 in relation to Section 216 of R.A. No. 8293.[25]
Aggrieved, the petitioners moved for reconsideration. This time, the DOJ made a complete turn around by granting the motion, vacating its Resolution dated January 27, 2006 and declaring that the evidence on record did not establish probable cause because the subject hatch doors were plainly metal doors with functional components devoid of any aesthetic or artistic features. Accordingly, the DOJ Resolution[26] dated March 10, 2006 disposed as follows:
In its assailed Decision[30] dated July 9, 2010, the CA granted the petition. The CA held that the vacillating findings of the DOJ on the presence or lack of probable cause manifest capricious and arbitrary exercise of discretion especially since its opposite findings were based on the same factual evidence and arguments.
The CA then proceeded to make its own finding of probable cause and held that:
It is a settled judicial policy that courts do not reverse the Secretary of Justice's findings and conclusions on the matter of probable cause. Courts are not empowered to substitute their judgment for that of the executive branch upon which full discretionary authority has been delegated in the determination of probable cause during a preliminary investigation. Courts may, however, look into whether the exercise of such discretionary authority was attended with grave abuse of discretion.[37]
Otherwise speaking, "judicial review of the resolution of the Secretary of Justice is limited to a determination of whether there has been a grave abuse of discretion amounting to lack or excess of jurisdiction."[38]
The CA anchored its act of reversing the DOJ Resolution dated March 10, 2006 upon the foregoing tenets. Thus, the Court's task in the present petition is only to determine if the CA erred in concluding that the DOJ committed grave abuse of discretion in directing the withdrawal of any criminal information filed against the petitioners.
Grave abuse of discretion has been defined as "such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The abuse of discretion must be grave as where the power is exercised in an arbitrary or despotic manner by reason of passion or personal hostility and must be so patent and gross as to amount to an evasion of positive duty or to a virtual refusal to perform the duty enjoined by or to act at all in contemplation of law."[39] "'Capricious,' usually used in tandem with the term 'arbitrary,' conveys the notion of willful and unreasoning action."[40]
According to the CA, the DOJ's erratic findings on the presence or absence of probable cause constitute grave abuse of discretion. The CA explained:
Inconsistent findings and conclusions on the part of the DOJ will denote grave abuse of discretion only if coupled with gross misapprehension of facts,[43] which, after a circumspect review of the records, is not attendant in the present case.
The facts upon which the resolutions issued by the investigating prosecutor and the DOJ were actually uniform, viz:
It may be observed that in the Resolution dated August 18, 2005 issued by the investigating prosecutor, the primary issue was whether the hatch doors of LEC fall within copyrightable works. This was resolved by ruling that hatch doors themselves are not covered by LEC's Certificate of Registration Nos. 1-2004-13 and 1-2004-14 issued on the plans/drawing depicting them. The DOJ reversed this ruling in its Resolution dated January 27, 2006 wherein the issue was streamlined to whether the illustrations of the hatch doors under LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567 bore artistic ornamental designs.
This situation does not amount to grave abuse of discretion but rather a mere manifestation of the intricate issues involved in the case which thus resulted in varying conclusions of law. Nevertheless, the DOJ ultimately pronounced its definite construal of copyright laws and their application to the evidence on record through its Resolution dated March 10, 2006 when it granted the petitioners' motion for reconsideration. Such construal, no matter how erroneous to the CA's estimation, did not amount to grave abuse of discretion. "[I]t is elementary that not every erroneous conclusion of law or fact is an abuse of discretion."[45]
More importantly, the Court finds that no grave abuse of discretion was committed by the DOJ in directing the withdrawal of the criminal information against the respondents because a finding of probable cause contradicts the evidence on record, law, and jurisprudence.
"Probable cause has been defined as the existence of such facts and circumstances as would excite the belief in a reasonable mind, acting on the facts within the knowledge of the prosecutor, that the person charged was guilty of the crime for which he was prosecuted. It is a reasonable ground of presumption that a matter is, or may be, well-founded on such a state of facts in the mind of the prosecutor as would lead a person of ordinary caution and prudence to believe, or entertain an honest or strong suspicion, that a thing is so."[46]
"The term does not mean actual and positive cause nor does it import absolute certainty. It is merely based on opinion and reasonable belief. Thus, a finding of probable cause does not require an inquiry into whether there is sufficient evidence to procure a conviction. It is enough that it is believed that the act or omission complained of constitutes the offense charged."[47]
"In order that probable cause to file a criminal case may be arrived at, or in order to engender the well-founded belief that a crime has been committed, the elements of the crime charged should be present. This is based on the principle that every crime is defined by its elements, without which there should be - at the most - no criminal offense."[48]
A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to its exclusive use and enjoyment to the extent specified in the statute."[49] Under Section 177 of R.A. No. 8293, the Copyright or Economic Rights consist of the exclusive right to carry out, authorize or prevent the following acts:
While both elements subsist in the records, they did not simultaneously concur so as to substantiate infringement of LEC's two sets of copyright registrations.
The respondent failed to substantiate the alleged reproduction of the drawings/sketches of hatch doors copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14. There is no proof that the respondents reprinted the copyrighted sketches/drawings of LEC's hatch doors. The raid conducted by the NBI on Metrotech's premises yielded no copies or reproduction of LEC's copyrighted sketches/drawings of hatch doors. What were discovered instead were finished and unfinished hatch doors.
Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science."[51] As such, LEC's copyright protection there under covered only the hatch door sketches/drawings and not the actual hatch door they depict.[52]
As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated:[53]
"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea itself."[56]
The respondent claimed that the petitioners committed copyright infringement when they fabricated/manufactured hatch doors identical to those installed by LEC. The petitioners could not have manufactured such hatch doors in substantial quantities had they not reproduced the copyrighted plans/drawings submitted by LEC to SK1-FB. This insinuation, without more, does not suffice to establish probable cause for infringement against the petitioners. "[Although the determination of probable cause requires less than evidence which would justify conviction, it should at least be more than mere suspicion."[57]
Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that the ownership thereof was not established by the evidence on record because the element of copyrightability is absent.
"Ownership of copyrighted material is shown by proof of originality and copyrightability."[58] While it is true that where the complainant presents a copyright certificate in support of the claim of infringement, the validity and ownership of the copyright is presumed. This presumption, however, is rebuttable and it cannot be sustained where other evidence in the record casts doubt on the question of ownership,[59] as in the instant case.
Moreover, "[t]he 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."[60]
Here, evidence negating originality and copyrightability as elements of copyright ownership was satisfactorily proffered against LEC's certificate of registration.
The following averments were not successfully rebuffed by LEC:
A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an opening that resembles a window equipped with an escape for use in case of fire or emergency.[64] It is thus by nature, functional and utilitarian serving as egress access during emergency. It is not primarily an artistic creation but rather an object of utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information" is excluded from copyright eligibility.[65]
The only instance when a useful article may be the subject of copyright protection is when it incorporates a design element that is physically or conceptually separable from the underlying product. This means that the utilitarian article can function without the design element. In such an instance, the design element is eligible for copyright protection.[66]
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.[67]
A belt, being an object utility with the function of preventing one's pants from falling down, is in itself not copyrightable. However, an ornately designed belt buckle which is irrelevant to or did not enhance the belt's function hence, conceptually separable from the belt, is eligible for copyright. It is copyrightable as a sculptural work with independent aesthetic value, and not as an integral element of the belt's functionality.[68]
A table lamp is not copyrightable because it is a functional object intended for the purpose of providing illumination in a room. The general shape of a table lamp is likewise not copyrightable because it contributes to the lamp's ability to illuminate the reaches of a room. But, a lamp base in the form of a statue of male and female dancing figures made of semi vitreous china is copyrightable as a work of art because it is unrelated to the lamp's utilitarian function as a device used to combat darkness.[69]
In the present case, LEC's hatch doors bore no design elements that are physically and conceptually separable, independent and distinguishable from the hatch door itself. The allegedly distinct set of hinges and distinct jamb, were related and necessary hence, not physically or conceptually separable from the hatch door's utilitarian function as an apparatus for emergency egress. Without them, the hatch door will not function.
More importantly, they are already existing articles of manufacture sourced from different suppliers. Based on the records, it is unrebutted that: (a) the hinges are similar to those used in truck doors; (b) the gaskets were procured from a company named Pemko and are not original creations of LEC; and (c) the locking device are ordinary drawer locks commonly used in furniture and office desks.
Being articles of manufacture already in existence, they cannot be deemed as original creations. As earlier stated, valid copyright ownership denotes originality of the copyrighted material. Originality means that the material was not copied, evidences at least minimal creativity and was independently created by the author.[70] It connotes production as a result of independent labor.[71] LEC did not produce the door jambs and hinges; it bought or acquired them from suppliers and thereafter affixed them to the hatch doors. No independent original creation can be deduced from such acts.
The same is true with respect to the design on the door's panel. As LEC has stated, the panels were "designed to blend in with the floor of the units in which they [were] installed."[72] Photos of the panels indeed show that their color and pattern design were similar to the wooden floor parquet of the condominium units.[73] This means that the design on the hatch door panel was not a product of LEC's independent artistic judgment and discretion but rather a mere reproduction of an already existing design.
Verily then, the CA erred in holding that a probable cause for copyright infringement is imputable against the petitioners. Absent originality and copyrightability as elements of a valid copyright ownership, no infringement can subsist.
WHEREFORE, premises considered, the petition is hereby GRANTED. The Decision dated July 9, 2010 and Resolution dated February 24, 2011 of the Court of Appeals in CA-G.R. SP No. 95471 are REVERSED and SET ASIDE. The Resolutions dated March 10, 2006 and May 25, 2006 of the Department of Justice in I.S. No. 2004-925 dismissing the complaint for copyright infringement are REINSTATED.
SO ORDERED.
Velasco, Jr., (Chairperson), Peralta, Perez, and Jardeleza, JJ., concur.
NOTICE OF JUDGMENT
Sirs / Mesdames:
Please take notice that on March 14, 2016 a Decision, copy attached hereto, was rendered by the Supreme Court in the above-entitled case, the original of which was received by this Office on April 20, 2016 at 10:07 a.m.
[1] Rollo, pp. 3-42.
[2] Penned by Associate Justice Rodil V. Zalameda, with Associate Justices Mario L. Guariña III and Apolinario D. Bruselas, Jr. concurring; id. at 45-58.
[3] Id. at 60-65.
[4] Issued by Secretary Raul M. Gonzalez; id. at 145-148.
[5] Id. at 149-150.
[6] Id. at 73.
[7] Id. at 66.
[8] Id. at 66, 97.
[9] Id. at 66, 97-98.
[10] Id. at 98.
[11] Id. at 47.
[12] Id. at 98.
[13] Id.
[14] Id. at 105.
[15] Id.
[16] Id.
[17] Id. at 66-68.
[18] Id. at 69-72.
[19] Id. at 76-78.
[20] Rendered by Senior State Prosecutor Rosalina P. Aquino; id. at 97-113.
[21] Id. at 113.
[22] Id. at 139-140.
[23] Id. at 141-144.
[24] Id. at 143.
[25] Id. at 142.
[26] Id. at 145-148.
[27] Id. at 147.
[28] Id. at 149-150.
[29] Id. at 151-164.
[30] Id. at 45-58.
[31] Id. at 53-55.
[32] Id. at 58.
[33] Id. at 60-65.
[34] Id. at 17.
[35] Id. at 17-18.
[36] Id. at 20-21.
[37] Spouses Aduan v. Chong, 610 Phil. 178, 183-184 (2009), citing First Women's Credit Corporation v. Hon. Perez, 524 Phil. 305, 308-309 (2006).
[38] Spouses Aduan v. Chong, id. at 184, citing United Coconut Planters Bank v. Looyuko, 560 Phil. 581, 591 (2007).
[39] Spouses Aduan v. Chong; id. at 185.
[40] Spouses Balangauan v. The Hon. CA, Special 19th Division, et al., 584 Phil. 183, 197-198 (2008)
[41] Rollo, p. 57.
[42] Tan, Jr. v. Matsuura, et al., 701 Phil. 236, 250 (2013).
[43] Id. at 260.
[44] Rollo, p. 105.
[45] First Women's Credit Corporation v. Hon. Perez, supra note 37, at 310.
[46] Hasegawa v. Giron, G.R. No. 184536, August 14, 2013, 703 SCRA 549, 559.
[47] United Coconut Planters Bank v. Looyuko, supra note 38, at 596-597.
[48] Ang-Abaya, et al. v. Ang, 593 Phil. 530, 542 (2008).
[49] Habana v. Robles, 369 Phil. 764, 787 (1999).
[50] Ching v. Salinas, Sr., 500 Phil. 628, 639 (2005).
[51] Rollo, p. 107.
[52] Id. at 109.
[53] 456 Phil. 474 (2003).
[54] Id. at 489.
[55] Habana v. Robles, supra note 49, at 790.
[56] Mazer v. Stein, 347 U.S. 201 (1954).
[57] Tan, Jr. v. Matsuura, et al., supra note 42, at 256.
[58] Ching v. Salinas, Sr., supra note 50.
[59] Id. at 640.
[60] Id. at 640-641.
[61] CA rollo, p. 84.
[62] Id. at 63.
[63] Ching v. Salinas, Sr., supra note 50, at 650, citing Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated, supra note 53, at 490.
[64] See WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY (Unabridged), pp. 1037, 2613, (1986 edition).
[65] Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir 2005).
[66] Id.
[67] Id., citing 17 U.S.C. § 101.
[68] Id., citing Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980).
[69] Id., citing Mazer v. Stein, supra note 56.
[70] Ching v. Salinas, Sr., supra note 50.
[71] Jones Bros. Co. v. Underkoffler, 16 F. Supp. 729 (M.D. Pa. 1936).
[72] Rollo, p. 24.
[73] Id. at 209-210.
The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. (Metrotech).[6] Lim Eng Co (respondent), on the other hand, is the Chairman of LEC Steel Manufacturing Corporation (LEC), a company which specializes in architectural metal manufacturing.[7]
Sometime in 2002, LEC was invited by the architects of the Manansala Project (Project), a high-end residential building in Rockwell Center, Makati City, to submit design/drawings and specifications for interior and exterior hatch doors. LEC complied by submitting on July 16, 2002, shop plans/drawings, including the diskette therefor, embodying the designs and specifications required for the metal hatch doors.[8]
After a series of consultations and revisions, the final shop plans/drawings were submitted by LEC on January 15, 2004 and thereafter copied and transferred to the title block of Ski-First Balfour Joint Venture (SKI-FB), the Project's contractor, and then stamped approved for construction on February 3, 2004.[9]
LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and exterior hatch doors for the 7th to 22nd floors of the Project based on the final shop plans/drawings.[10]
Sometime thereafter, LEC learned that Metrotech was also subcontracted to install interior and exterior hatch doors for the Project's 23rd to 41st floors.[11]
On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech, however, insisted that no copyright infringement was committed because the hatch doors it manufactured were patterned in accordance with the drawings provided by SKI-FB.[12]
On July 2, 2004, LEC deposited with the National Library the final shop plans/drawings of the designs and specifications for the interior and exterior hatch doors of the Project.[13] On July 6, 2004, LEC was issued a Certificate of Copyright Registration and Deposit showing that it is the registered owner of plans/drawings for interior and exterior hatch doors under Registration Nos. 1-2004-13 and 1-2004-14, respectively.[14] This copyright pertains to class work "I" under Section 172 of Republic Act (R.A.) No. 8293, The Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science."
On December 9, 2004, LEC was issued another Certificate of Copyright Registration and Deposit showing that it is the registered owner of plans/drawings for interior and exterior hatch doors under Registration Nos. H-2004-566 and H-2004-567[15] which is classified under Section 172(h) of R.A. No. 8293 as "original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art."
When Metrotech still refused to stop fabricating hatch doors based on LEC's shop plans/drawings, the latter sought the assistance of the National Bureau of Investigation (NBI) which in turn applied for a search warrant before the Regional Trial Court (RTC) of Quezon City, Branch 24. The application was granted on August 13, 2004 thus resulting in the confiscation of finished and unfinished metal hatch doors as well as machines used in fabricating and manufacturing hatch doors from the premises of Metrotech.[16]
On August 13, 2004, the respondent filed a Complaint-Affidavit[17] before the DOJ against the petitioners for copyright infringement. In the meantime or on September 8, 2004, the RTC quashed the search warrant on the ground that copyright infringement was not established.[18]
Traversing the complaint, the petitioners admitted manufacturing hatch doors for the Project. They denied, however, that they committed copyright infringement and averred that the hatch doors they manufactured were functional inventions that are proper subjects of patents and that the records of the Intellectual Property Office reveal that there is no patent, industrial design or utility model registration on LEC's hatch doors. Metrotech further argued that the manufacturing of hatch doors per se is not copyright infringement because copyright protection does not extend to the objects depicted in the illustrations and plans. Moreover, there is no artistic or ornamental expression embodied in the subject hatch doors that would subject them to copyright protection.[19]
In a Resolution[20] dated August 18, 2005, the investigating prosecutor dismissed the respondent's complaint based on inadequate evidence showing that: (1) the petitioners committed the prohibited acts under Section 177 of R.A. No. 8293; and (2) the interior and exterior hatch doors of the petitioners are among the classes of copyrightable work enumerated in Sections 172 and 173 of the same law.[21]
Adamant, the respondent filed a petition for review before the DOJ but it was also denied due course in the Resolution[22] dated November 16, 2005.
Upon the respondent's motion for reconsideration, however, the Resolution[23] dated January 27, 2006 of the DOJ reversed and set aside the Resolution dated August 18, 2005 and directed the Chief State Prosecutor to file the appropriate information for copyright infringement against the petitioners.[24] The DOJ reasoned that the pieces of evidence adduced show that the subject hatch doors are artistic or ornamental with distinctive hinges, door and jamb, among others. The petitioners were not able to sufficiently rebut these allegations and merely insisted on the non-artistic nature of the hatch doors. The DOJ further held that probable cause was established insofar as the artistic nature of the hatch doors and based thereon the act of the petitioners in manufacturing or causing to manufacture hatch doors similar to those of the respondent can be considered as unauthorized reproduction; hence, copyright infringement under Section 177.1 in relation to Section 216 of R.A. No. 8293.[25]
Aggrieved, the petitioners moved for reconsideration. This time, the DOJ made a complete turn around by granting the motion, vacating its Resolution dated January 27, 2006 and declaring that the evidence on record did not establish probable cause because the subject hatch doors were plainly metal doors with functional components devoid of any aesthetic or artistic features. Accordingly, the DOJ Resolution[26] dated March 10, 2006 disposed as follows:
WHEREFORE, finding cogent reason to reverse the assailed resolution, the motion for reconsideration is GRANTED finding no probable cause against the [petitioners]. Consequently, the City Prosecutor of Manila is hereby directed to cause the withdrawal of the information, if any has been filed in court, and to report the action taken thereon within TEN (10) DAYS from receipt hereof.The respondent thereafter filed a motion for reconsideration of the foregoing resolution but it was denied[28] on May 25, 2006. The respondent then sought recourse before the CA via a petition for certiorari[29] ascribing grave abuse of discretion on the part of the DOJ.
SO ORDERED.[27]
In its assailed Decision[30] dated July 9, 2010, the CA granted the petition. The CA held that the vacillating findings of the DOJ on the presence or lack of probable cause manifest capricious and arbitrary exercise of discretion especially since its opposite findings were based on the same factual evidence and arguments.
The CA then proceeded to make its own finding of probable cause and held that:
[F]or probable cause for copyright infringement to exist, essentially, it must be shown that the violator reproduced the works without the consent of the owner of the copyright.The CA further ruled that any allegation on the non-existence of ornamental or artistic values on the hatch doors are matters of evidence which are best ventilated in a full-blown trial rather than during the preliminary investigation stage. Accordingly, the CA disposed as follows:
In the present case before Us, [the petitioners] do not dispute that: (1) LEG was issued copyrights for the illustrations of the hatch doors under Section 171.i, and for the hatch doors themselves as ornamental design or model for articles of manufacture pursuant to Section 171.h of R.A. [No.] 8293; and (2) they manufactured hatch doors based on drawings and design furnished by SKI-FB, which consists of LEC works subject of copyrights. These two (2) circumstances, taken together, are sufficient to excite the belief in a reasonable mind that [the petitioners] are probably guilty of copyright infringement. First, LEC has indubitably established that it is the owner of the copyright for both the illustrations of the hatch doors and [the] hatch doors themselves, and second, [the petitioners] manufactured hatch doors based on LEC's works, sans EEC's consent.
x x x x
[T]he fact that LEC enjoys ownership of copyright not only on the illustrations of the hatch doors but on the hatch doors itself and that [the petitioners] manufactured the same is sufficient to warrant a finding of probable cause for copyright infringement. x x x.[31]
WHEREFORE, considering the foregoing premises, the present Petition is GRANTED, and accordingly, the assailed Resolutions dated 10 March 2006 and 25 May 2006 are ANNULLED and SET ASIDE. The Resolution of the Secretory of Justice dated 27 January 2006 finding probable cause against [the petitioners], is REINSTATED.The CA reiterated the above ruling in its Resolution[33] dated February 24, 2011 when it denied the petitioners' motion for reconsideration. Hence, the present appeal, arguing that:
SO ORDERED.[32]
- There was no evidence of actual reproduction of the hatch doors during the preliminary investigation that would lead the investigating prosecutor to declare the existence of probable cause;[34]
- Even assuming that the petitioners manufactured hatch doors based on the illustrations and plans covered by the respondent's Certificate of Registration Nos. 1-2004-13 and 1-2004-14, the petitioners could not have committed copyright infringement. Certificate of Registration Nos. 1-2004-13 and 1-2004-14 are classified under Section 172(i) which pertains to "illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science." Hence the original works that are copyrighted are the illustrations and plans of interior hatch doors and exterior hatch doors. Thus, it is the reproduction of the illustrations and plans covered by the copyright registration that amounts to copyright infringement. The petitioners did not reproduce the illustrations and plans covered under Certificate of Registration Nos. 1-2004-13 and 1-2004-14.
The manufacturing of hatch doors per se does not fall within the purview of copyright infringement because copyright protection does not extend to the objects depicted in the illustrations and plans;[35] and - LEC's copyright registration certificates are not conclusive proofs that the items covered thereby are copyrightable. The issuance of registration certificate and acceptance of deposit by the National Library is ministerial in nature and does not involve a determination of whether the item deposited is copyrightable or not. Certificates of registration and deposit 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.[36]
Ruling of the Court
It is a settled judicial policy that courts do not reverse the Secretary of Justice's findings and conclusions on the matter of probable cause. Courts are not empowered to substitute their judgment for that of the executive branch upon which full discretionary authority has been delegated in the determination of probable cause during a preliminary investigation. Courts may, however, look into whether the exercise of such discretionary authority was attended with grave abuse of discretion.[37]
Otherwise speaking, "judicial review of the resolution of the Secretary of Justice is limited to a determination of whether there has been a grave abuse of discretion amounting to lack or excess of jurisdiction."[38]
The CA anchored its act of reversing the DOJ Resolution dated March 10, 2006 upon the foregoing tenets. Thus, the Court's task in the present petition is only to determine if the CA erred in concluding that the DOJ committed grave abuse of discretion in directing the withdrawal of any criminal information filed against the petitioners.
Grave abuse of discretion has been defined as "such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The abuse of discretion must be grave as where the power is exercised in an arbitrary or despotic manner by reason of passion or personal hostility and must be so patent and gross as to amount to an evasion of positive duty or to a virtual refusal to perform the duty enjoined by or to act at all in contemplation of law."[39] "'Capricious,' usually used in tandem with the term 'arbitrary,' conveys the notion of willful and unreasoning action."[40]
According to the CA, the DOJ's erratic findings on the presence or absence of probable cause constitute grave abuse of discretion. The CA explained:
This, to Our minds, in itself creates a nagging, persistent doubt as to whether [the DOJ Secretary] issued the said resolutions untainted with a whimsical and arbitrary use of his discretion. For one cannot rule that there is reason to overturn the investigating prosecutor's findings at the first instance and then go on to rule that ample evidence exists showing that the hatch doors possess artistic and ornamental elements at the second instance and proceed to rule that no such artistry can be found on the purely utilitarian hatch doors at the last instance. x x x.[41]The Court disagrees. It has been held that the issuance by the DOJ of several resolutions with varying findings of fact and conclusions of law on the existence of probable cause, by itself, is not indicative of grave abuse of discretion.[42]
Inconsistent findings and conclusions on the part of the DOJ will denote grave abuse of discretion only if coupled with gross misapprehension of facts,[43] which, after a circumspect review of the records, is not attendant in the present case.
The facts upon which the resolutions issued by the investigating prosecutor and the DOJ were actually uniform, viz:
The positions taken by the DOJ and the investigating prosecutor differed only in the issues tackled and the conclusions arrived at.
It may be observed that in the Resolution dated August 18, 2005 issued by the investigating prosecutor, the primary issue was whether the hatch doors of LEC fall within copyrightable works. This was resolved by ruling that hatch doors themselves are not covered by LEC's Certificate of Registration Nos. 1-2004-13 and 1-2004-14 issued on the plans/drawing depicting them. The DOJ reversed this ruling in its Resolution dated January 27, 2006 wherein the issue was streamlined to whether the illustrations of the hatch doors under LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567 bore artistic ornamental designs.
This situation does not amount to grave abuse of discretion but rather a mere manifestation of the intricate issues involved in the case which thus resulted in varying conclusions of law. Nevertheless, the DOJ ultimately pronounced its definite construal of copyright laws and their application to the evidence on record through its Resolution dated March 10, 2006 when it granted the petitioners' motion for reconsideration. Such construal, no matter how erroneous to the CA's estimation, did not amount to grave abuse of discretion. "[I]t is elementary that not every erroneous conclusion of law or fact is an abuse of discretion."[45]
More importantly, the Court finds that no grave abuse of discretion was committed by the DOJ in directing the withdrawal of the criminal information against the respondents because a finding of probable cause contradicts the evidence on record, law, and jurisprudence.
"Probable cause has been defined as the existence of such facts and circumstances as would excite the belief in a reasonable mind, acting on the facts within the knowledge of the prosecutor, that the person charged was guilty of the crime for which he was prosecuted. It is a reasonable ground of presumption that a matter is, or may be, well-founded on such a state of facts in the mind of the prosecutor as would lead a person of ordinary caution and prudence to believe, or entertain an honest or strong suspicion, that a thing is so."[46]
"The term does not mean actual and positive cause nor does it import absolute certainty. It is merely based on opinion and reasonable belief. Thus, a finding of probable cause does not require an inquiry into whether there is sufficient evidence to procure a conviction. It is enough that it is believed that the act or omission complained of constitutes the offense charged."[47]
"In order that probable cause to file a criminal case may be arrived at, or in order to engender the well-founded belief that a crime has been committed, the elements of the crime charged should be present. This is based on the principle that every crime is defined by its elements, without which there should be - at the most - no criminal offense."[48]
A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to its exclusive use and enjoyment to the extent specified in the statute."[49] Under Section 177 of R.A. No. 8293, the Copyright or Economic Rights consist of the exclusive right to carry out, authorize or prevent the following acts:
Copyright infringement is thus committed by any person who shall use original literary or artistic works, or derivative works, without the copyright owner's consent in such a manner as to violate the foregoing copy and economic rights. For a claim of copyright infringement to prevail, the evidence on record must demonstrate: (1) ownership of a validly copyrighted material by the complainant; and (2) infringement of the copyright by the respondent.[50]
While both elements subsist in the records, they did not simultaneously concur so as to substantiate infringement of LEC's two sets of copyright registrations.
The respondent failed to substantiate the alleged reproduction of the drawings/sketches of hatch doors copyrighted under Certificate of Registration Nos. 1-2004-13 and 1-2004-14. There is no proof that the respondents reprinted the copyrighted sketches/drawings of LEC's hatch doors. The raid conducted by the NBI on Metrotech's premises yielded no copies or reproduction of LEC's copyrighted sketches/drawings of hatch doors. What were discovered instead were finished and unfinished hatch doors.
Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section 172 of R.A. No. 8293 which covers "illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science."[51] As such, LEC's copyright protection there under covered only the hatch door sketches/drawings and not the actual hatch door they depict.[52]
As the Court held in Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated:[53]
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. Accordingly, it can cover only the works falling within the statutory enumeration or description.[54] (Citations omitted and italics in the original)Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science, to be properly classified as a copyrightable class "I" work, what was copyrighted were their sketches/drawings only, and not the actual hatch doors themselves. To constitute infringement, the usurper must have copied or appropriated the original work of an author or copyright proprietor, absent copying, there can be no infringement of copyright.[55]
"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea itself."[56]
The respondent claimed that the petitioners committed copyright infringement when they fabricated/manufactured hatch doors identical to those installed by LEC. The petitioners could not have manufactured such hatch doors in substantial quantities had they not reproduced the copyrighted plans/drawings submitted by LEC to SK1-FB. This insinuation, without more, does not suffice to establish probable cause for infringement against the petitioners. "[Although the determination of probable cause requires less than evidence which would justify conviction, it should at least be more than mere suspicion."[57]
Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that the ownership thereof was not established by the evidence on record because the element of copyrightability is absent.
"Ownership of copyrighted material is shown by proof of originality and copyrightability."[58] While it is true that where the complainant presents a copyright certificate in support of the claim of infringement, the validity and ownership of the copyright is presumed. This presumption, however, is rebuttable and it cannot be sustained where other evidence in the record casts doubt on the question of ownership,[59] as in the instant case.
Moreover, "[t]he 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."[60]
Here, evidence negating originality and copyrightability as elements of copyright ownership was satisfactorily proffered against LEC's certificate of registration.
The following averments were not successfully rebuffed by LEC:
[T]he hinges on LEC's "hatch doors" have no ornamental or artistic value. In fact, they are just similar to hinges found in truck doors that had been in common use since the 1960's. The gaskets on LEC's "hatch doors", aside from not being ornamental or artistic, were merely procured from a company named Pemko and are not original creations of LEC. The locking device in LEC's "hatch doors" are ordinary drawer locks commonly used in furniture and office desks.[61]In defending the copyrightability of its hatch doors' design, LEC merely claimed:
LEC's Hatch Doors were particularly designed to blend in with the floor of the units in which they are installed and, therefore, appeal to the aesthetic sense of the owner of units or any visitors thereto[;]From the foregoing description, it is clear that the hatch doors were not artistic works within the meaning of copyright laws. A copyrightable work refers to literary and artistic works defined as original intellectual creations in the literary and artistic domain.[63]
LEC's Hatch Doors have a distinct set of hinges, a distinct door a distinct jamb, all of which are both functional or utilitarian and artistic or ornamental at the same time[;] and
Moreover, the Project is a high-end residential building located in the Rockwell Center, a very prime area in Metro Manila. As such, the owner of the Project is not expected to settle for Hatch Doors that simply live up to their function as such. The owner would require, as is the case for the Project, Hatch Doors that not only fulfill their utilitarian purposes but also appeal to the artistic or ornamental sense of their beholders.[62]
A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an opening that resembles a window equipped with an escape for use in case of fire or emergency.[64] It is thus by nature, functional and utilitarian serving as egress access during emergency. It is not primarily an artistic creation but rather an object of utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information" is excluded from copyright eligibility.[65]
The only instance when a useful article may be the subject of copyright protection is when it incorporates a design element that is physically or conceptually separable from the underlying product. This means that the utilitarian article can function without the design element. In such an instance, the design element is eligible for copyright protection.[66]
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.[67]
A belt, being an object utility with the function of preventing one's pants from falling down, is in itself not copyrightable. However, an ornately designed belt buckle which is irrelevant to or did not enhance the belt's function hence, conceptually separable from the belt, is eligible for copyright. It is copyrightable as a sculptural work with independent aesthetic value, and not as an integral element of the belt's functionality.[68]
A table lamp is not copyrightable because it is a functional object intended for the purpose of providing illumination in a room. The general shape of a table lamp is likewise not copyrightable because it contributes to the lamp's ability to illuminate the reaches of a room. But, a lamp base in the form of a statue of male and female dancing figures made of semi vitreous china is copyrightable as a work of art because it is unrelated to the lamp's utilitarian function as a device used to combat darkness.[69]
In the present case, LEC's hatch doors bore no design elements that are physically and conceptually separable, independent and distinguishable from the hatch door itself. The allegedly distinct set of hinges and distinct jamb, were related and necessary hence, not physically or conceptually separable from the hatch door's utilitarian function as an apparatus for emergency egress. Without them, the hatch door will not function.
More importantly, they are already existing articles of manufacture sourced from different suppliers. Based on the records, it is unrebutted that: (a) the hinges are similar to those used in truck doors; (b) the gaskets were procured from a company named Pemko and are not original creations of LEC; and (c) the locking device are ordinary drawer locks commonly used in furniture and office desks.
Being articles of manufacture already in existence, they cannot be deemed as original creations. As earlier stated, valid copyright ownership denotes originality of the copyrighted material. Originality means that the material was not copied, evidences at least minimal creativity and was independently created by the author.[70] It connotes production as a result of independent labor.[71] LEC did not produce the door jambs and hinges; it bought or acquired them from suppliers and thereafter affixed them to the hatch doors. No independent original creation can be deduced from such acts.
The same is true with respect to the design on the door's panel. As LEC has stated, the panels were "designed to blend in with the floor of the units in which they [were] installed."[72] Photos of the panels indeed show that their color and pattern design were similar to the wooden floor parquet of the condominium units.[73] This means that the design on the hatch door panel was not a product of LEC's independent artistic judgment and discretion but rather a mere reproduction of an already existing design.
Verily then, the CA erred in holding that a probable cause for copyright infringement is imputable against the petitioners. Absent originality and copyrightability as elements of a valid copyright ownership, no infringement can subsist.
WHEREFORE, premises considered, the petition is hereby GRANTED. The Decision dated July 9, 2010 and Resolution dated February 24, 2011 of the Court of Appeals in CA-G.R. SP No. 95471 are REVERSED and SET ASIDE. The Resolutions dated March 10, 2006 and May 25, 2006 of the Department of Justice in I.S. No. 2004-925 dismissing the complaint for copyright infringement are REINSTATED.
SO ORDERED.
Velasco, Jr., (Chairperson), Peralta, Perez, and Jardeleza, JJ., concur.
April 20, 2016
Sirs / Mesdames:
Please take notice that on March 14, 2016 a Decision, copy attached hereto, was rendered by the Supreme Court in the above-entitled case, the original of which was received by this Office on April 20, 2016 at 10:07 a.m.
Very truly yours,
(SGD)WILFREDO V. LAPITAN
Division Clerk of Court
(SGD)WILFREDO V. LAPITAN
Division Clerk of Court
[1] Rollo, pp. 3-42.
[2] Penned by Associate Justice Rodil V. Zalameda, with Associate Justices Mario L. Guariña III and Apolinario D. Bruselas, Jr. concurring; id. at 45-58.
[3] Id. at 60-65.
[4] Issued by Secretary Raul M. Gonzalez; id. at 145-148.
[5] Id. at 149-150.
[6] Id. at 73.
[7] Id. at 66.
[8] Id. at 66, 97.
[9] Id. at 66, 97-98.
[10] Id. at 98.
[11] Id. at 47.
[12] Id. at 98.
[13] Id.
[14] Id. at 105.
[15] Id.
[16] Id.
[17] Id. at 66-68.
[18] Id. at 69-72.
[19] Id. at 76-78.
[20] Rendered by Senior State Prosecutor Rosalina P. Aquino; id. at 97-113.
[21] Id. at 113.
[22] Id. at 139-140.
[23] Id. at 141-144.
[24] Id. at 143.
[25] Id. at 142.
[26] Id. at 145-148.
[27] Id. at 147.
[28] Id. at 149-150.
[29] Id. at 151-164.
[30] Id. at 45-58.
[31] Id. at 53-55.
[32] Id. at 58.
[33] Id. at 60-65.
[34] Id. at 17.
[35] Id. at 17-18.
[36] Id. at 20-21.
[37] Spouses Aduan v. Chong, 610 Phil. 178, 183-184 (2009), citing First Women's Credit Corporation v. Hon. Perez, 524 Phil. 305, 308-309 (2006).
[38] Spouses Aduan v. Chong, id. at 184, citing United Coconut Planters Bank v. Looyuko, 560 Phil. 581, 591 (2007).
[39] Spouses Aduan v. Chong; id. at 185.
[40] Spouses Balangauan v. The Hon. CA, Special 19th Division, et al., 584 Phil. 183, 197-198 (2008)
[41] Rollo, p. 57.
[42] Tan, Jr. v. Matsuura, et al., 701 Phil. 236, 250 (2013).
[43] Id. at 260.
[44] Rollo, p. 105.
[45] First Women's Credit Corporation v. Hon. Perez, supra note 37, at 310.
[46] Hasegawa v. Giron, G.R. No. 184536, August 14, 2013, 703 SCRA 549, 559.
[47] United Coconut Planters Bank v. Looyuko, supra note 38, at 596-597.
[48] Ang-Abaya, et al. v. Ang, 593 Phil. 530, 542 (2008).
[49] Habana v. Robles, 369 Phil. 764, 787 (1999).
[50] Ching v. Salinas, Sr., 500 Phil. 628, 639 (2005).
[51] Rollo, p. 107.
[52] Id. at 109.
[53] 456 Phil. 474 (2003).
[54] Id. at 489.
[55] Habana v. Robles, supra note 49, at 790.
[56] Mazer v. Stein, 347 U.S. 201 (1954).
[57] Tan, Jr. v. Matsuura, et al., supra note 42, at 256.
[58] Ching v. Salinas, Sr., supra note 50.
[59] Id. at 640.
[60] Id. at 640-641.
[61] CA rollo, p. 84.
[62] Id. at 63.
[63] Ching v. Salinas, Sr., supra note 50, at 650, citing Pearl and Dean (Philippines), Incorporated v. Shoemart, Incorporated, supra note 53, at 490.
[64] See WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY (Unabridged), pp. 1037, 2613, (1986 edition).
[65] Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir 2005).
[66] Id.
[67] Id., citing 17 U.S.C. § 101.
[68] Id., citing Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980).
[69] Id., citing Mazer v. Stein, supra note 56.
[70] Ching v. Salinas, Sr., supra note 50.
[71] Jones Bros. Co. v. Underkoffler, 16 F. Supp. 729 (M.D. Pa. 1936).
[72] Rollo, p. 24.
[73] Id. at 209-210.