G.R. No. L-36402 March 16, 1987 Appeal, p. 11; Resolution, CA-G.R. NO.

46373-R, Rollo,
pp. 32-36) under the provisions of Section 3 of the
FILIPINO SOCIETY OF COMPOSERS, AUTHORS Copyright Law (Act 3134 of the Philippine Legislature).
AND PUBLISHERS, INC., plaintiff-appellant,
vs. The lower court, finding for the defendant, dismissed the
BENJAMIN TAN, defendant-appellee. complaint (Record on Appeal, p. 25).

PARAS, J.: Plaintiff appealed to the Court of Appeals which as

already stated certified the case to the Supreme Court
An appeal was made to the Court of Appeals docketed for adjudication on the legal question involved.
as CA-G.R. No. 46373-R * entitled Filipino Society of (Resolution, Court of Appeals, Rollo, p. 36; Resolution of
Composers, Authors, Publishers, Inc., Plaintiff-Appellant the Supreme Court of February 18, 1973, Rollo, p. 38).
v. Benjamin Tan, Defendant-Appellee, from the decision
of the Court of First Instance of Manila, Branch VII in In its brief in the Court of Appeals, appellant raised the
Civil Case No. 71222 ** "Filipino Society of Composers, following Assignment of Errors:
Authors and Publishers, Inc., Plaintiff v. Benjamin Tan,
Defendant," which had dismissed plaintiffs' complaint I
without special pronouncement as to costs.
THE LOWER COURT ERRED IN HOLDING THAT THE
The Court of Appeals, finding that the case involves pure MUSICAL COMPOSITIONS OF THE APPELLANT
questions of law, certified the same to the Supreme WERE IN THE NATURE OF PUBLIC PROPERTY
Court for final determination (Resolution, CA-G.R. No. WHEN THEY WERE COPYRIGHTED OR
46373-R, Rollo, p. 36; Resolution of the Supreme Court REGISTERED.
of February 16, 1973 in L-36402, Rollo, p. 38).
II
The undisputed facts of this case are as follows:
THE LOWER COURT ERRED IN HOLDING THAT THE
Plaintiff-appellant is a non-profit association of authors, MUSICAL COMPOSITIONS OF THE APPELLANT
composers and publishers duly organized under the WERE PLAYED AND SUNG IN THE SODA FOUNTAIN
Corporation Law of the Philippines and registered with AND RESTAURANT OF THE APPELLEE BY
the Securities and Exchange Commission. Said INDEPENDENT CONTRACTORS AND ONLY UPON
association is the owner of certain musical compositions THE REQUEST OF CUSTOMERS.
among which are the songs entitled: "Dahil Sa Iyo",
"Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao III
Lamang" and "The Nearness Of You."
THE LOWER COURT ERRED IN HOLDING THAT THE
On the other hand, defendant-appellee is the operator of PLAYING AND SINGING OF COPYRIGHTED MUSICAL
a restaurant known as "Alex Soda Foundation and COMPOSITIONS IN THE SODA FOUNTAIN AND
Restaurant" where a combo with professional singers, RESTAURANT OF THE APPELLEE ARE NOT PUBLIC
hired to play and sing musical compositions to entertain PERFORMANCES FOR PROFIT OF THE SAID
and amuse customers therein, were playing and singing COMPOSITIONS WITHIN THE MEANING AND
the above-mentioned compositions without any license CONTEMPLATION OF THE COPYRIGHT LAW.
or permission from the appellant to play or sing the
same. Accordingly, appellant demanded from the
appellee payment of the necessary license fee for the IV
playing and singing of aforesaid compositions but the
demand was ignored. THE LOWER COURT ERRED IN NOT HOLDING THAT
THE APPELLEE IS LIABLE TO THE APPELLANT FOR
Hence, on November 7, 1967, appellant filed a complaint FOUR (4) SEPARATE INFRINGEMENTS. (Brief for
with the lower court for infringement of copyright against Appellant, pp. A and B).
defendant-appellee for allowing the playing in defendant-
appellee's restaurant of said songs copyrighted in the The petition is devoid of merit.
name of the former.
The principal issues in this case are whether or not the
Defendant-appellee, in his answer, countered that the playing and signing of musical compositions which have
complaint states no cause of action. While not denying been copyrighted under the provisions of the Copyright
the playing of said copyrighted compositions in his Law (Act 3134) inside the establishment of the
establishment, appellee maintains that the mere singing defendant-appellee constitute a public performance for
and playing of songs and popular tunes even if they are profit within the meaning and contemplation of the
copyrighted do not constitute an infringement (Record on Copyright Law of the Philippines; and assuming that
there were indeed public performances for profit, exclusive right of the owner of the copyright." (Herbert v.
whether or not appellee can be held liable therefor. Shanley Co.; John Church Co. v. Hillard Hotel Co., et al.,
242 U.S. 590-591). In delivering the opinion of the Court
Appellant anchors its claim on Section 3(c) of the in said two cases, Justice Holmes elaborated thus:
Copyright Law which provides:
If the rights under the copyright are infringed only by a
SEC. 3. The proprietor of a copyright or his heirs or performance where money is taken at the door, they are
assigns shall have the exclusive right: very imperfectly protected. Performances not different in
kind from those of the defendants could be given that
might compete with and even destroy the success of the
xxx xxx xxx
monopoly that the law intends the plaintiffs to have. It is
enough to say that there is no need to construe the
(c) To exhibit, perform, represent, produce, or reproduce statute so narrowly. The defendants' performances are
the copyrighted work in any manner or by any method not eleemosynary. They are part of a total for which the
whatever for profit or otherwise; if not reproduced in public pays, and the fact that the price of the whole is
copies for sale, to sell any manuscripts or any record attributed to a particular item which those present are
whatsoever thereof; expected to order is not important. It is true that the
music is not the sole object, but neither is the food,
xxx xxx xxx which probably could be got cheaper elsewhere. The
object is a repast in surroundings that to people having
It maintains that playing or singing a musical composition limited power of conversation or disliking the rival noise,
is universally accepted as performing the musical give a luxurious pleasure not to be had from eating a
composition and that playing and singing of copyrighted silent meal. If music did not pay, it would be given up. If it
music in the soda fountain and restaurant of the appellee pays, it pays out of the public's pocket. Whether it pays
for the entertainment of the customers although the latter or not, the purpose of employing it is profit, and that is
do not pay for the music but only for the food and drink enough. (Ibid., p. 594).
constitute performance for profit under the Copyright
Law (Brief for the Appellant, pp. 19-25). In the case at bar, it is admitted that the patrons of the
restaurant in question pay only for the food and drinks
We concede that indeed there were "public and apparently not for listening to the music. As found by
performances for profit. " the trial court, the music provided is for the purpose of
entertaining and amusing the customers in order to
The word "perform" as used in the Act has been applied make the establishment more attractive and desirable
to "One who plays a musical composition on a piano, (Record on Appeal, p. 21). It will be noted that for the
thereby producing in the air sound waves which are playing and singing the musical compositions involved,
heard as music ... and if the instrument he plays on is a the combo was paid as independent contractors by the
piano plus a broadcasting apparatus, so that waves are appellant (Record on Appeal, p. 24). It is therefore
thrown out, not only upon the air, but upon the other, obvious that the expenses entailed thereby are added to
then also he is performing the musical composition." the overhead of the restaurant which are either
(Buck, et al. v. Duncan, et al.; Same Jewell La Salle eventually charged in the price of the food and drinks or
Realty Co., 32F. 2d. Series 367). to the overall total of additional income produced by the
bigger volume of business which the entertainment was
programmed to attract. Consequently, it is beyond
In relation thereto, it has been held that "The playing of
question that the playing and singing of the combo in
music in dine and dance establishment which was paid
defendant-appellee's restaurant constituted performance
for by the public in purchases of food and drink
for profit contemplated by the Copyright Law. (Act 3134
constituted "performance for profit" within a Copyright
amended by P.D. No. 49, as amended).
Law." (Buck, et al. v. Russon No. 4489 25 F. Supp. 317).
Thus, it has been explained that while it is possible in
such establishments for the patrons to purchase their Nevertheless, appellee cannot be said to have infringed
food and drinks and at the same time dance to the music upon the Copyright Law. Appellee's allegation that the
of the orchestra, the music is furnished and used by the composers of the contested musical
orchestra for the purpose of inducing the public to compositions waived  their right in favor of the general
patronize the establishment and pay for the public when they allowed their intellectual creations to
entertainment in the purchase of food and drinks. The become property of the public domain before applying
defendant conducts his place of business for profit, and it for the corresponding copyrights for the same (Brief for
is public; and the music is performed for profit (Ibid, p. Defendant-Appellee, pp. 14-15) is correct.
319). In a similar case, the Court ruled that "The
Performance in a restaurant or hotel dining room, by The Supreme Court has ruled that "Paragraph 33 of
persons employed by the proprietor, of a copyrighted Patent Office Administrative Order No. 3 (as amended,
musical composition, for the entertainment of patrons, dated September 18, 1947) entitled 'Rules of Practice in
without charge for admission to hear it, infringes the the Philippines Patent Office relating to the Registration
of Copyright Claims' promulgated pursuant to Republic
Act 165, provides among other things that an intellectual
creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within the (60) days if
made elsewhere, failure of which renders such creation
public property." (Santos v. McCullough Printing
Company, 12 SCRA 324-325 [1964]. Indeed, if the
general public has made use of the object sought to be
copyrighted for thirty (30) days prior to the copyright
application the law deems the object to have been
donated to the public domain and the same can no
longer be copyrighted.

A careful study of the records reveals that the song

"Dahil Sa Iyo" which was registered on April 20, 1956
(Brief for Appellant, p. 10) became popular in radios,
juke boxes, etc. long before registration (TSN, May 28,
1968, pp. 3-5; 25) while the song "The Nearness Of You"
registered on January 14, 1955 (Brief for Appellant, p.
10) had become popular twenty five (25) years prior to
1968, (the year of the hearing) or from 1943 (TSN, May
28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin"
and "Sapagkat Kami Ay Tao Lamang" both registered on
July 10, 1966, appear to have been known and sang by
the witnesses as early as 1965 or three years before the
hearing in 1968. The testimonies of the witnesses at the
hearing of this case on this subject were unrebutted by
the appellant. (Ibid, pp. 28; 29 and 30).

Under the circumstances, it is clear that the musical

compositions in question had long become public
property, and are therefore beyond the protection of the
Copyright Law.

PREMISES CONSIDERED, the appealed decision of the

Court of First Instance of Manila in Civil Case No. 71222
is hereby AFFIRMED.

SO ORDERED.
G.R. No. L-30774             January 29, 1929 Plaintiff alleges that by reason of defendants' acts, it was
damaged in the sum of P5,000; that the defendants
PHILIPPINE EDUCATION COMPANY, INC., plaintiff- threaten to, and will continue appropriating and
appellee, reproducing the article owned by the plaintiff, in voilation
vs. of its rights, unless restrained by the court, and plaintiff
VICENTE SOTTO and V. R. ALINDADA defendants. prays for judgment against the defendants for P5,000,
V. R. ALINDADA, appellant. and that they be perpetually enjoined from the
publication of any further articles without the knowledge
or consent of the plaintiff, and for such other and further
Vicente Sotto for appellant.
relief as the court may deem just and equitable.
Gibbs, and McDonough and Roman Ozaeta for
appellee.
To this complaint, the defendants filed a general
demurrer upon the ground that it did not state facts
STATEMENT
sufficient to constitute a cause of action, which was
overruled. The defendants then answered in which they
Plaintiff alleges that it is a domestic corporation, with its made a general and specific denial of all of the material
principal office in the City of Manila, of which the allegations of the complaint, and as a special defense
defendants are also residents and of legal age; that it is allege:
the proprietor and publisher of the monthly
magazine Philippine Education Magazine, which is
(a) That the defendant Vicente Sotto is not the owner of
published in the City of Manila and of general circulation
the magazine The Independent, nor has he any
in the Philippine Islands; that the defendant, Vicente
intervention in the publication of said magazine.
Sotto, is the proprietor and publisher, and the defendant,
V. R. Alindada, is the editor of a weekly newspaper
known as The Independent, which is also published in (b) That the plaintiff is not the owner of the article entitled
the City of Manila and also of such general circulation; "The True Story of Mrs. Rizal," because it is not
that in December, 1927, plaintiff contracted with Austin registered in its name in the proper registry under Act
Craig for the preparation and publication of an original No. 3134 and the regulation concerning the registration
article to be written by him concerning Mrs. Jose Rizal, of intellectual property made by the Chief of the
to be published exclusively in the Philippine Education Philippine Library and Museum.
Magazine, and that by virtue thereof, the said Craig
prepared and wrote an original article entitled "The True (c) That the defendant V. R. Alindada, as the editor
Story of Mrs. Rizal," and delivered it to the plaintiff which of The Independent, published in said magazine the
paid him for it, and thereby became the exclusive owner article entitled "The True Story of Mrs. Rizal," written by
of the article; that it printed and published the article in its Austin Craig, in good faith and in the belief that such an
issue of December, 1927, and that it was on the market interesting historical passage of the Philippines was
for sale in the early part of that month; that as such published by the magazine Philippine Education
owner the plaintiff has the exclusive right to print and Magazine for the information and propaganda of the
publish the article in its magazine, and that it gave notice ideas and patriotic feelings of the wife of the apostle of
in that issue "that all rights thereto were reserved;" that our country's liberties, without any intention to prejudice
the defendants unlawfully and without the knowledge or anybody in his property rights.
consent of the plaintiff appropriated, copied and
reproduced and published the article in the weekly Wherefore, the defendants pray the court that the
issues of The Independent of December 24th and complaint be dismissed and the defendants absolved
December 31, 1927, without citing the source of its therefrom, with costs against the plaintiff.
defendants; that upon such discovery, the plaintiff to the
fact that the article in question was published "without The case was tried and submitted upon the following
permission or even the courtesy of an ordinary credit admitted facts:
line," and requested that in his next issue that "you state
in some prominent place that this article was taken from
our magazine, and I request further that you refrain from (1) That the Philippine Education Co., Inc., is the
similar thefts in the future," Also calling his attention to corporation that contracted with Austin Craig for the
the fact that we have stated plainly "on the title page of preparation of the article "The True Story of Mrs. Rizal,"
our magazine that we reserve all rights, and you infringe for its exclusive publication in said magazine.
on them at your peril." In answer to that latter, the editor
protested against the use of the word "thefts," and (2) That said article which was prepared by Mr. Austin
advised the plaintiff in substance that it had not Craig and published in the "Philippine Education
registered such right under the Copyright Law, and that Magazine" is not found registered in the Copyright
"any newspaper can reprint the article of Professor Craig Office, although in the same magazine, under letter A,
without permission from anybody. Will you appreciate on the third page containing the index, there may be
this free lesson of law?" And the article as continued was read a note "All Rights Reserved."
again published in the next issue of The Independent.
(3) That the Philippine Education Co., Inc., paid Mr. Section 2 of the Act defines and enumerates what may
Austin Craig a certain sum for the preparation of said be copyrighted which, among other things, includes
article. books, composite and cyclopedic works, manuscripts,
commentaries and critical studies.
(4) That The Independent, which is edited under the
management of Mr. V. R. Alindada, published the said Section 4 provides:
article written by Austin Craig on December 24, 1927
and December 31st of the same year, making it appear For the purpose of this Act articles and other writings
in the heading of the article the name of the author, the published without the names of the authors or under
first publication of which is marked as Exhibit B. pseudonyms are considered as the property of the
publishers.
(5) That on December 23d when The
Independent published it, the editor of The Philippine And section 5 says:
Education Magazine wrote to Mr. V. R. Alindada, editor
of The Independent, the letter marked with letter C. Lines, passages, or paragraphs in a book or other
copyrighted works may be qouted or cited or reproduced
(6) That notwithstanding the letter Exhibit C, the for comment, dissertation, or criticism.
publication of the said article was continued in the issue
of The Independent of December 31st, marked Exhibit News items, editorial paragraphs, and articles in
E, without citing the source of the article but making it periodicals may also be reproduced unless they contain
appear therein the name of the author. a notice that their publication is reserved or a notice of
copyright, but the source of the reproduction or original
(7) That the purposes of the judgment that may be reproduced shall be cited. In case of musical works part
rendered in this case, in the event of adverse judgment, of little extent may also be reproduced.
Mr. V. R. Alindada, one of the defendants, admits to be
solely responsible civilly. Hence, the real question involved is the construction
which should be placed upon the second paragraph of
(8) That in relation to the admission just mentioned, the section 5.
document, Exhibit F, is presented.
It is conceded that neither Professor Craig nor the
Mr. SOTTO. Before presenting our evidence, I request palintiff applied for or obtained a copyright of the article
that the defendant Vicente Sotto be excluded from the in question under the terms and provisions of this Act.
complaint. The defendants contends taht after the article was once
published without a copyright in plaintiff's magazine, it
Mr. OZAETA. Without objection. then became public property, and that he had a legal
right to publish it in his magazine, without giving "the
COURT. According to the petition of the defendant Mr. source of the reproduction."
Vicente Sotto, which is concurred in by counsel for the
plaintiff, the case is dismissed with respect to him, It must be conceded that after the Copyright Law of the
without costs. United States, he would have that legal right. That is the
construction which has been place upon that law by
Upon such issues the lower court rendered judgment numerous decisions both state and federal of that nation.
against the defendant, V. R. Alindada, for P500, without Be that as it may, we have carefully read and reread the
costs, from which he appeals, contending, first, that the Copyright Law of the United States, and the provisions
lower court erred in overruling the demurrer to the contained in the second paragraph of section 5 of the
complaint, and second, in sentencing him to pay P500 to Act No. 3134 are removed to be found in the Copyright
the plaintiff. Law of the United States. Neither does it contain any
similar provision, and for want thereof, the decisions of
those courts are not in point on the question involved
here, and, as appellant says, the legal question
presented on this appeal is one of first impression in this
JOHNS, J.: court, and the case is submitted without the citation of
the decision of any court under the same or similar
The question presented involves the legal construction of statute.
Act No. 3134 of the Philippine Legislature, which is
entitled "An Act to protect intellectual property," and Section 4 specifically provides:
which is known as the Copyright Law of the Philippine
Islands.
For the purpose of this Act articles and other writings
published without the names of the authors or under
pseudonyms are conidered as the property of the use and value of the whole Copyright Law, but it will bbe
publishers. notted that this exception is specifically confined and
limited to "news items editorial paragraphs, and articles
The first paragraph of section 5 says: in periodicals," and hence could not be made to apply to
any other provisions of the Copyright Law. It will also be
noted that in the instant case, the defendant had the
Lines, passages, or paragraphs in book or other
legal right to publish the article in question by giving "the
copyrighted works may be qouted or cited or reproduced
source of the reproduction." The plaintiff bought and paid
for comment, dissertion, or criticism.
for the article and published it with the notice that "we
reserve all rights," and the defendant published the
It is very apparent that this paragraph is confined and article in question without citing "the source of the
limited to a book or other copyrighted works, and, hence, reproduction," and for aught that appeared in his paper,
that it does not apply to the publication of the article now the article was purchase and paid for by the defendant.
in question. The second paragraph of this question is
confined to news items, editorial paragraphs and articles
We are clearly of the opinon that the language in
in periodicals which may also be reproduced, "unless
question in the Copyright Law of the Philippine Islands,
they contain a notice that their publication is reserved or
which is not found in the Copyright Law of the United
a notice of copyright, but the source of the reproduction
States, was inserted for a specific purpose, and it was
or original reproduce shall be cited." It is admitted that
intended to prohibit the doing of the very thing which the
the plaintiff notified the defendant "that we reserve all
defendant did in this case; otherwise, the use of all of
rights and you infringe on them at your peril," and that
those words is a nullity. This construction does not least
after receipt of the notice, the defendant published the
impair the Copyright Law, except as to "news items,
article in question, without giving "the source of the
editorial paragraphs, and articles in periodicals," and it
reproduction."
protects an enterprising newspaper or magazine that
invests its money and pays for the right to publish an
If it had been the purpose and intent of the Legislature to original article, and that was the reason why the
limit the reproduction of "news items, editorial Legislature saw fit to use the language in question.
paragraphs, and articles in periodicals," to those which
have a notice or copyright only, it never would have said
Above and beyond all this, it would seem that upon the
if "they contain a notice that their publication is
undisputed facts in this case, common courtesy among
reserved."
newspaper men would suggest that the defendant would
give "the source of the reproduction." It would have been
Analyzing the language used, it says, first, that such a very simple and an easy thing to do.
news items, editorial paragraphs, and articles in
periodicals may be reproduced, unless they contain a
All things considered, we are clearly of the opinion that
notice that their publication is reserved, or, second, that
the judgment of the lower court should be affirmed, with
may also be reproduced, unless they contain a notice of
costs. So ordered.
copyright. But in either event, the law specifically
provides that "the source of the reproduction or original
reproduced shall be cited," and is not confined or limited
to case in which there is "a notice of copyright," and
specifically says that in either event "the source of the
reproduction or original reproduced shall be cited." To
give this section any other construction would be to
nullify, eliminate and take from the paragraph the words
"they contain a notice that their publication is reserved,"
and to say that the Legislature never intended to say
what it did say. This court must construe the language
found in the act. The language is plain, clear, define and
certain, and this court has no legal right to say that the
Legislature did not mean what it said when it used those
words, which is all the more apparent by the use of the
word "or" after the word "reserved." In the instant case,
the plaintiff did not give notice of its copyright, for the
simple reason that it did not have a copyright, but it did
notify the defendant that in the publication of the article
"we reserved all rights," which was legally equivalent to a
notice "that their publication is reserved." To give that
paragraph any other construction would eliminate, take
from it, and wipe out, the words "that their publication is
reserved," and this court has no legal right to do that. It
was contended that this construction would nullify the
 (b) Kalem Co. v. Harper Brothers, 222 U. S. 55, does not
support respondents' novel theory that supplying the
"means" to accomplish an infringing activity and
encouraging that activity through advertisement are
sufficient to establish liability for copyright infringement.
This case does not fall in the category of those in which
it is manifestly just to

Page 464 U. S. 418

impose vicarious liability because the "contributory"

Sony Corp. v. Universal City Studios, 464 U.S. infringer was in a position to control the use of
417 (1984) copyrighted works by others and had authorized the use
without permission from the copyright owner. Here, the
CERTIORARI TO THE UNITED STATES COURT OF only contact between petitioners and the users of the
APPEALS VTR's occurred at the moment of sale. And there is no
precedent for imposing vicarious liability on the theory
FOR THE NINTH CIRCUIT that petitioners sold the VTR's with constructive
knowledge that their customers might use the equipment
Syllabus to make unauthorized copies of copyrighted material.
The sale of copying equipment, like the sale of other
articles of commerce, does not constitute contributory
Petitioner Sony Corp. manufactures home videotape
infringement if the product is widely used for legitimate,
recorders (VTR's), and markets them through retail
unobjectionable purposes, or, indeed, is merely capable
establishments, some of which are also petitioners.
of substantial noninfringing uses. Pp. 464 U. S. 434-442.
Respondents own the copyrights on some of the
television programs that are broadcast on the public
airwaves. Respondents brought an action against (c) The record and the District Court's findings show (1)
petitioners in Federal District Court, alleging that VTR that there is a significant likelihood that substantial
consumers had been recording some of respondents' numbers of copyright holders who license their works for
copyrighted works that had been exhibited on broadcast on free television would not object to having
commercially sponsored television, and thereby infringed their broadcast time-shifted by private viewers
respondents' copyrights, and further that petitioners were (i.e., recorded at a time when the VTR owner cannot
liable for such copyright infringement because of their view the broadcast so that it can be watched at a later
marketing of the VTR's. Respondents sought money time); and (2) that there is no likelihood that time-shifting
damages, an equitable accounting of profits, and an would cause nonminimal harm to the potential market
injunction against the manufacture and marketing of the for, or the value of, respondents' copyrighted works. The
VTR's. The District Court denied respondents all relief, VTR's are therefore capable of substantial noninfringing
holding that noncommercial home use recording of uses. Private, noncommercial time-shifting in the home
material broadcast over the public airwaves was a fair satisfies this standard of noninfringing uses both
use of copyrighted works, and did not constitute because respondents have no right to prevent other
copyright infringement, and that petitioners could not be copyright holders from authorizing such time-shifting for
held liable as contributory infringers even if the home their programs and because the District Court's findings
use of a VTR was considered an infringing use. The reveal that even the unauthorized home time-shifting of
Court of Appeals reversed, holding petitioners liable for respondents' programs is legitimate fair use. Pp. 442-
contributory infringement and ordering the District Court 456.
to fashion appropriate relief
659 F.2d 963, reversed.
Held: The sale of the VTR's to the general public does
not constitute contributory infringement of respondents' STEVENS, J., delivered the opinion of the Court in which
copyrights. Pp. 464 U. S. 428-456. BURGER, C.J., and BRENNAN, WHITE, and
O'CONNOR, JJ., joined. BLACKMUN, J., filed a
(a) The protection given to copyrights is wholly statutory, dissenting opinion in which MARSHALL, POWELL, and
and, in a case like this, in which Congress has not plainly REHNQUIST, JJ., joined, post, p. 464 U. S. 457.
marked the course to be followed by the judiciary, this
Court must be circumspect in construing the scope of Page 464 U. S. 419
rights created by a statute that never contemplated such
a calculus of interests. Any individual may reproduce a JUSTICE STEVENS delivered the opinion of the Court.
copyrighted work for a "fair use"; the copyright owner
does not possess the exclusive right to such a use.
Pp. 464 U. S. 428-434.
Petitioners manufacture and sell home videotape programs. For the same reason, even the two
recorders. Respondents own the copyrights on some of respondents in this case, who do assert objections to
the television time-shifting in this litigation, were unable to prove that
the practice has impaired the commercial value of their
Page 464 U. S. 420 copyrights or has created any likelihood of future harm.
Given these findings, there is no basis in the Copyright
Act upon which respondents can hold petitioners liable
programs that are broadcast on the public airwaves.
for distributing VTR's to the general public. The Court of
Some members of the general public use videotape
Appeals' holding that respondents are entitled to enjoin
recorders sold by petitioners to record some of these
the distribution of VTR's, to collect royalties on the sale
broadcasts, as well as a large number of other
of such equipment, or to obtain other relief, if affirmed,
broadcasts. The question presented is whether the sale
would enlarge the scope of respondents' statutory
of petitioners' copying equipment to the general public
monopolies to encompass control over an article of
violates any of the rights conferred upon respondents by
commerce that is not the subject of copyright protection.
the Copyright Act.
Such an expansion of the copyright privilege is beyond
the limits of the grants authorized by Congress.
Respondents commenced this copyright infringement
action against petitioners in the United States District
I
Court for the Central District of California in 1976.
Respondents alleged that some individuals had used
Betamax videotape recorders (VTR's) to record some of The two respondents in this action, Universal City
respondents' copyrighted works which had been Studios, Inc., and Walt Disney Productions, produce and
exhibited on commercially sponsored television, and hold the copyrights on a substantial number of motion
contended that these individuals had thereby infringed pictures and other audiovisual works. In the current
respondents' copyrights. Respondents further marketplace, they can exploit their rights in these works
maintained that petitioners were liable for the copyright in a number of ways:
infringement allegedly committed by Betamax
consumers because of petitioners' marketing of the Page 464 U. S. 422
Betamax VTR's. [Footnote 1] Respondents sought no
relief against any Betamax consumer. Instead, they by authorizing theatrical exhibitions, by licensing limited
sought money damages and an equitable accounting of showings on cable and network television, by selling
profits from petitioners, as well as an injunction against syndication rights for repeated airings on local television
the manufacture and marketing of Betamax VTR's. stations, and by marketing programs on prerecorded
videotapes or videodiscs. Some works are suitable for
After a lengthy trial, the District Court denied exploitation through all of these avenues, while the
respondents all the relief they sought and entered market for other works is more limited.
judgment for petitioners. 480 F. Supp. 429 (1979). The
United States Court of Appeals for the Ninth Circuit Petitioner Sony manufactures millions of Betamax
reversed the District Court's judgment on respondents' videotape recorders and markets these devices through
copyright claim, holding petitioners liable for contributory numerous retail establishments, some of which are also
infringement and ordering the District Court to fashion petitioners in this action. [Footnote 2] Sony's Betamax
appropriate relief. 659 F.2d 963 VTR is a mechanism consisting of three basic
components: (1) a tuner, which receives electromagnetic
Page 464 U. S. 421 signals transmitted over the television band of the public
airwaves and separates them into audio and visual
(1981). We granted certiorari, 457 U.S. 1116 (1982); signals; (2) a recorder, which records such signals on a
since we had not completed our study of the case last magnetic tape; and (3) an adapter, which converts the
Term, we ordered reargument, 463 U. S. 1226 (1983). audio and visual signals on the tape into a composite
We now reverse. signal that can be received by a television set.

An explanation of our rejection of respondents' Several capabilities of the machine are noteworthy. The
unprecedented attempt to impose copyright liability upon separate tuner in the Betamax enables it to record a
the distributors of copying equipment requires a quite broadcast off one station while the television set is tuned
detailed recitation of the findings of the District Court. In to another channel, permitting the viewer, for example, to
summary, those findings reveal that the average watch two simultaneous news broadcasts by watching
member of the public uses a VTR principally to record a one "live" and recording the other for later viewing.
program he cannot view as it is being televised, and then Tapes may be reused, and programs that have been
to watch it once at a later time. This practice, known as recorded may be erased either before or after viewing. A
"time-shifting," enlarges the television viewing audience. timer in the Betamax can be used to activate and
For that reason, a significant amount of television deactivate the equipment at predetermined
programming may be used in this manner without
objection from the owners of the copyrights on the Page 464 U. S. 423
times, enabling an intended viewer to record programs The lengthy trial of the case in the District Court
that are transmitted when he or she is not at home. Thus concerned the private, home use of VTR's for recording
a person may watch a program at home in the evening programs broadcast on the public airwaves without
even though it was broadcast while the viewer was at charge to the viewer. [Footnote 7] No issue concerning
work during the afternoon. The Betamax is also the transfer of tapes to other persons, the use of home-
equipped with a pause button and a fast-forward control. recorded tapes for public performances, or the copying
The pause button, when depressed, deactivates the of programs transmitted on pay or cable television
recorder until it is released, thus enabling a viewer to systems was raised. See id. at 432-433, 442.
omit a commercial advertisement from the recording,
provided, of course, that the viewer is present when the The District Court concluded that noncommercial home
program is recorded. The fast-forward control enables use recording of material broadcast over the public
the viewer of a previously recorded program to run the airwaves was a fair use of copyrighted works, and did
tape rapidly when a segment he or she does not desire not constitute copyright infringement. It emphasized the
to see is being played back on the television screen. fact that the material was broadcast free to the public at
large, the noncommercial character of the use, and the
The respondents and Sony both conducted surveys of private character of the activity conducted entirely within
the way the Betamax machine was used by several the home. Moreover, the court found that the purpose of
hundred owners during a sample period in 1978. this use served the public interest in increasing access to
Although there were some differences in the surveys, television programming, an interest that
they both showed that the primary use of the machine for
most owners was "time-shifting" -- the practice of "is consistent with the First Amendment policy of
recording a program to view it once at a later time, and providing the fullest possible access to information
thereafter erasing it. Time-shifting enables viewers to through the public airwaves. Columbia Broadcasting
see programs they otherwise would miss because they System, Inc. v. Democratic National Committee, 412 U.
are not at home, are occupied with other tasks, or are S. 94, 412 U. S. 102."
viewing a program on another station at the time of a
broadcast that they desire to watch. Both surveys also Id. at 454. [Footnote 8] Even when an entire copyrighted
showed, however, that a substantial number of work was recorded,
interviewees had accumulated libraries of tapes.
[Footnote 3] Sony's survey indicated
Page 464 U. S. 426
Page 464 U. S. 424
the District Court regarded the copying as fair use
"because there is no accompanying reduction in the
that over 80% of the interviewees watched at least as market for plaintiff's original work.'" Ibid.  .
much regular television as they had before owning a
Betamax. [Footnote 4] Respondents offered no evidence
of decreased television viewing by Betamax owners. As an independent ground of decision, the District Court
[Footnote 5] also concluded that Sony could not be held liable as a
contributory infringer even if the home use of a VTR was
considered an infringing use. The District Court noted
Sony introduced considerable evidence describing that Sony had no direct involvement with any Betamax
television programs that could be copied without purchasers who recorded copyrighted works off the air.
objection from any copyright holder, with special Sony's advertising was silent on the subject of possible
emphasis on sports, religious, and educational copyright infringement, but its instruction booklet
programming. For example, their survey indicated that contained the following statement:
7.3% of all Betamax use is to record sports events, and
representatives of professional baseball, football,
basketball, and hockey testified that they had no "Television programs, films, videotapes and other
objection to the recording of their televised events for materials may be copyrighted. Unauthorized recording of
home use. [Footnote 6] such material may be contrary to the provisions of the
United States copyright laws."
Page 464 U. S. 425
Id. at 436.
Respondents offered opinion evidence concerning the
future impact of the unrestricted sale of VTR's on the The District Court assumed that Sony had constructive
commercial value of their copyrights. The District Court knowledge of the probability that the Betamax machine
found, however, that they had failed to prove any would be used to record copyrighted programs, but
likelihood of future harm from the use of VTR's for time- found that Sony merely sold a "product capable of a
shifting. 480 F. Supp. at 469. variety of uses, some of them allegedly infringing." Id. at
461. It reasoned:
The District Court's Decision
"Selling a staple article of commerce -- e.g., a typewriter, tend to diminish the potential market for respondents'
a recorder, a camera, a photocopying machine -- works. 659 F.2d at 974.
technically contributes to any infringing use subsequently
made thereof, but this kind of 'contribution,' if deemed Page 464 U. S. 428
sufficient as a basis for liability, would expand the theory
beyond precedent, and arguably beyond judicial On the issue of contributory infringement, the Court of
management." Appeals first rejected the analogy to staple articles of
commerce such as tape recorders or photocopying
". . . Commerce would indeed be hampered if machines. It noted that such machines "may have
manufacturers of staple items were held liable as substantial benefit for some purposes" and do not "even
contributory infringers whenever they 'constructively' remotely raise copyright problems." Id. at 975. VTR's,
knew that some purchasers on some occasions would however, are sold "for the primary purpose of
use their product reproducing television programming," and "[v]irtually all"
such programming is copyrighted material. Ibid. The
Page 464 U. S. 427 Court of Appeals concluded, therefore, that VTR's were
not suitable for any substantial noninfringing use even if
for a purpose which a court later deemed, as a matter of some copyright owners elect not to enforce their rights.
first impression, to be an infringement."
The Court of Appeals also rejected the District Court's
Ibid. reliance on Sony's lack of knowledge that home use
constituted infringement. Assuming that the statutory
provisions defining the remedies for infringement applied
Finally, the District Court discussed the respondents'
also to the nonstatutory tort of contributory infringement,
prayer for injunctive relief, noting that they had asked for
the court stated that a defendant's good faith would
an injunction either preventing the future sale of
merely reduce his damages liability, but would not
Betamax machines or requiring that the machines be
excuse the infringing conduct. It held that Sony was
rendered incapable of recording copyrighted works off
chargeable with knowledge of the homeowner's
the air. The court stated that it had
infringing activity because the reproduction of
copyrighted materials was either "the most conspicuous
"found no case in which the manufacturers, distributors, use" or "the major use" of the Betamax product. Ibid.
retailers and advertisers of the instrument enabling the
infringement were sued by the copyright holders,"
On the matter of relief, the Court of Appeals concluded
that "statutory damages may be appropriate" and that
and that the request for relief in this case "is the District Court should reconsider its determination that
unique." Id. at 465. an injunction would not be an appropriate remedy; and,
referring to "the analogous photocopying area,"
It concluded that an injunction was wholly inappropriate suggested that a continuing royalty pursuant to a
because any possible harm to respondents was judicially created compulsory license may very well be
outweighed by the fact that an acceptable resolution of the relief issue. Id. at 976.

"the Betamax could still legally be used to record II

noncopyrighted material or material whose owners
consented to the copying. An injunction would deprive Article I, § 8, of the Constitution provides:
the public of the ability to use the Betamax for this
noninfringing off-the-air recording."
"The Congress shall have Power . . . To Promote the
Progress of Science and useful Arts, by securing for
Id. at 468. limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries. "
The Court of Appeals' Decision
Page 464 U. S. 429
The Court of Appeals reversed the District Court's
judgment on respondents' copyright claim. It did not set The monopoly privileges that Congress may authorize
aside any of the District Court's findings of fact. Rather, it are neither unlimited nor primarily designed to provide a
concluded as a matter of law that the home use of a VTR special private benefit. Rather, the limited grant is a
was not a fair use, because it was not a "productive means by which an important public purpose may be
use." [Footnote 9] It therefore held that it was achieved. It is intended to motivate the creative activity
unnecessary for plaintiffs to prove any harm to the of authors and inventors by the provision of a special
potential market for the copyrighted works, but then reward, and to allow the public access to the products of
observed that it seemed clear that the cumulative effect their genius after the limited period of exclusive control
of mass reproduction made possible by VTR's would has expired.
"The copyright law, like the patent statutes, makes Ct.Cl. 74, 487 F.2d 1345 (1973), aff'd by an equally
reward to the owner a secondary consideration. In Fox divided Court, 420 U. S. 376 (1975). Sound policy, as
Film Corp. v. Doyal, 286 U. S. 123, 286 U. S. 127, Chief well as history, supports our consistent deference to
Justice Hughes spoke as follows respecting the Congress when major technological innovations alter the
copyright monopoly granted by Congress," market for copyrighted materials. Congress has the
constitutional authority and the institutional ability to
"The sole interest of the United States and the primary accommodate fully the varied permutations of competing
object in conferring the monopoly lie in the general interests that are inevitably implicated by such new
benefits derived by the public from the labors of technology.
authors."
In a case like this, in which Congress has not plainly
"It is said that reward to the author or artist serves to marked our course, we must be circumspect in
induce release to the public of the products of his construing the scope of rights created by a legislative
creative genius." enactment which never contemplated such a calculus of
interests. In doing so, we are guided by Justice Stewart's
exposition of the correct approach to ambiguities in the
United States v. Paramount Pictures, Inc., 334 U. S.
law of copyright:
131, 334 U. S. 158 (1948).

"The limited scope of the copyright holder's statutory

As the text of the Constitution makes plain, it is
monopoly, like the limited copyright duration required by
Congress that has been assigned the task of defining the
the Constitution, reflects a balance of competing claims
scope of the limited monopoly that should be granted to
upon the public interest: creative work is to be
authors or to inventors in order to give the public
appropriate access to their work product. Because this
task involves a difficult balance between the interests of Page 464 U. S. 432
authors and inventors in the control and exploitation of
their writings and discoveries on the one hand, and encouraged and rewarded, but private motivation must
society's competing interest in the free flow of ideas, ultimately serve the cause of promoting broad public
information, and commerce on the other hand, our availability of literature, music, and the other arts. The
patent and copyright statutes have been amended immediate effect of our copyright law is to secure a fair
repeatedly. [Footnote 10] return for an 'author's' creative labor. But the ultimate
aim is, by this incentive, to stimulate artistic creativity for
Page 464 U. S. 430 the general public good. 'The sole interest of the United
States and the primary object in conferring the
monopoly,' this Court has said, 'lie in the general benefits
From its beginning, the law of copyright has developed in
derived by the public from the labors of authors.' Fox
response to significant changes in technology. [Footnote
Film Corp. v. Doyal, 286 U. S. 123, 286 U. S.
11] Indeed, it was the invention of a new form of copying
127. See  Kendall v. Winsor, 21 How. 322, 62 U. S. 327-
equipment -- the printing press -- that gave rise to the
328; Grant v. Raymond, 6 Pet. 218, 31 U. S. 241-242.
original need for copyright protection. [Footnote 12]
When technological change has rendered its literal terms
Repeatedly, as new developments have
ambiguous, the Copyright Act must be construed in light
of this basic purpose."
Page 464 U. S. 431
Twentieth Century Music Corp. v. Aiken, 422 U. S.
occurred in this country, it has been the Congress that 151, 422 U. S. 156 (1975) (footnotes omitted).
has fashioned the new rules that new technology made
necessary. Thus, long before the enactment of the
Copyright protection "subsists . . . in original works of
Copyright Act of 1909, 35 Stat. 1075, it was settled that
authorship fixed in any tangible medium of expression."
the protection given to copyrights is wholly
17 U.S.C. § 102(a) (1982 ed.). This protection has never
statutory. Wheaton v. Peters, 8 Pet. 591, 33 U. S. 661-
accorded the copyright owner complete control over all
662 (1834). The remedies for infringement "are only
possible uses of his work. [Footnote 13] Rather, the
those prescribed by Congress." Thompson v.
Copyright Act grants the
Hubbard, 131 U. S. 123, 131 U. S. 151 (1889).

Page 464 U. S. 433

The judiciary's reluctance to expand the protections
afforded by the copyright without explicit legislative
guidance is a recurring theme. See, e.g., Teleprompter copyright holder "exclusive" rights to use and to
Corp. v. Columbia Broadcasting System, Inc., 415 U. S. authorize the use of his work in five qualified ways,
394 (1974); Fortnightly Corp. v. United Artists Television, including reproduction of the copyrighted work in copies.
Inc., 392 U. S. 390 (1968); White-Smith Music § 106. [Footnote 14] All reproductions of the work,
Publishing Co. v. Apollo Co., 209 U. S. however, are not within the exclusive domain of the
1 (1908); Williams & Wilkins Co. v. United States, 203 copyright owner; some are in the public domain. Any
individual may reproduce a copyrighted work for a "fair 17] For vicarious liability is imposed in virtually all areas
use"; the copyright owner does not possess the of the law, and the concept of contributory infringement
exclusive right to such a use. Compare § 106 with § 107. is merely a species of the broader problem of identifying
the circumstances in which it is just to hold one individual
"Anyone who violates any of the exclusive rights of the accountable for the actions of another.
copyright owner," that is, anyone who trespasses into his
exclusive domain by using or authorizing the use of the Such circumstances were plainly present in Kalem Co.
copyrighted work in one of the five ways set forth in the v. Harper Brothers, 222 U. S. 55 (1911), the copyright
statute, "is an infringer of the copyright." § 501(a). decision of this Court on which respondents place their
Conversely, anyone who is authorized by the copyright principal reliance. In Kalem, the Court held that the
owner to use the copyrighted work in a way specified in producer of an unauthorized film dramatization of the
the statute or who makes a fair use of the work is not an copyrighted book Ben Hur was liable for his sale of the
infringer of the copyright with respect to such use. motion picture to jobbers, who in turn arranged for the
commercial exhibition of the film. Justice Holmes, writing
The Copyright Act provides the owner of a copyright with for the Court, explained:
a potent arsenal of remedies against an infringer of his
work, including an injunction to restrain the infringer from "The defendant not only expected but invoked by
violating advertisement the use of its films for dramatic
reproduction
Page 464 U. S. 434
Page 464 U. S. 436
his rights, the impoundment and destruction of all
reproductions of his work made in violation of his rights, of the story. That was the most conspicuous purpose for
a recovery of his actual damages and any additional which they could be used, and the one for which
profits realized by the infringer or a recovery of statutory especially they were made. If the defendant did not
damages, and attorney's fees. §§ 502-505. [Footnote 15] contribute to the infringement it is impossible to do so
except by taking part in the final act. It is liable on
The two respondents in this case do not seek relief principles recognized in every part of the law."
against the Betamax users who have allegedly infringed
their copyrights. Moreover, this is not a class action on Id. at 222 U. S. 62-63.
behalf of all copyright owners who license their works for
television broadcast, and respondents have no right to The use for which the item sold in Kalem had been
invoke whatever rights other copyright holders may have "especially" made was, of course, to display the
to bring infringement actions based on Betamax copying performance that had already been recorded upon it.
of their works. [Footnote 16] As was made clear by their The producer had personally appropriated the copyright
own evidence, the copying of the respondents' programs owner's protected work and, as the owner of the tangible
represents a small portion of the total use of VTR's. It is, medium of expression upon which the protected work
however, the taping of respondents' own copyrighted was recorded, authorized that use by his sale of the film
programs that provides them with standing to charge to jobbers. But that use of the film was not his to
Sony with contributory infringement. To prevail, they authorize: the copyright owner possessed the exclusive
have the burden of proving that users of the Betamax right to authorize public performances of his work.
have infringed their copyrights, and that Sony should be Further, the producer personally advertised the
held responsible for that infringement. unauthorized public performances, dispelling any
possible doubt as to the use of the film which he had
III authorized.

The Copyright Act does not expressly render anyone Respondents argue that Kalem stands for the
liable for infringement committed by another. In contrast, proposition that supplying the "means" to accomplish an
the infringing activity and encouraging that activity through
advertisement are sufficient to establish liability for
Page 464 U. S. 435 copyright infringement. This argument rests on a gross
generalization that cannot withstand scrutiny. The
producer in Kalem did not merely provide the "means" to
Patent Act expressly brands anyone who "actively
accomplish an infringing activity; the producer supplied
induces infringement of a patent" as an infringer, 35
the work itself, albeit in a new medium of expression.
U.S.C. § 271(b), and further imposes liability on certain
Sony in the instant case does not supply Betamax
individuals labeled "contributory" infringers, § 271(c).
consumers with respondents' works; respondents do.
The absence of such express language in the copyright
Sony supplies a piece of equipment that is generally
statute does not preclude the imposition of liability for
capable of copying the entire range of programs that
copyright infringements on certain parties who have not
may be televised: those that are uncopyrighted, those
themselves engaged in the infringing activity. [Footnote
that are copyrighted but may be copied without objection
from the copyright holder, and those that the copyright In the Patent Act, both the concept of infringement and
holder would prefer not to have copied. The Betamax the concept of contributory infringement are expressly
can be used to defined by statute. [Footnote 20] The prohibition against
contributory infringement is confined to the knowing sale
Page 464 U. S. 437 of a component especially made for use in connection
with a particular patent. There is no suggestion in the
statute that one patentee may object to the sale of a
make authorized or unauthorized uses of copyrighted
product that might be used in connection with other
works, but the range of its potential use is much broader
patents. Moreover, the Act expressly provides that the
than the particular infringing use of the film Ben Hur
sale of a "staple article or commodity of commerce
involved in Kalem. Kalem does not support respondents'
suitable for substantial noninfringing use" is not
novel theory of liability.
contributory infringement. 35 U.S.C. § 271(c).
Justice Holmes stated that the producer had
When a charge of contributory infringement is predicated
"contributed" to the infringement of the copyright, and the
entirely on the sale of an article of commerce that is
label "contributory infringement" has been applied in a
used by the purchaser to infringe a patent, the public
number of lower court copyright cases involving an
interest in access to that article of commerce is
ongoing relationship between the direct infringer and the
necessarily implicated. A
contributory infringer at the time the infringing conduct
occurred. In such cases, as in other situations in which
the imposition of vicarious liability is manifestly just, the Page 464 U. S. 441
"contributory" infringer was in a position to control the
use of copyrighted works by others, and had authorized finding of contributory infringement does not, of course,
the use without permission from the copyright owner. remove the article from the market altogether; it does,
[Footnote 18] This case, however, plainly does not fall however, give the patentee effective control over the
sale of that item. Indeed, a finding of contributory
Page 464 U. S. 438 infringement is normally the functional equivalent of
holding that the disputed article is within the monopoly
granted to the patentee. [Footnote 21]
in that category. The only contact between Sony and the
users of the Betamax that is disclosed by this record
occurred at the moment of sale. The District Court For that reason, in contributory infringement cases
expressly found that arising under the patent laws, the Court has always
recognized the critical importance of not allowing the
patentee to extend his monopoly beyond the limits of his
"no employee of Sony, Sonam or DDBI had either direct
specific grant. These cases deny the patentee any right
involvement with the allegedly infringing activity or direct
to control the distribution of unpatented articles unless
contact with purchasers of Betamax who recorded
they are "unsuited for any commercial noninfringing
copyrighted works off the air."
use." Dawson Chemical Co. v. Rohm & Hass Co., 448
U. S. 176, 448 U. S. 198 (1980). Unless a commodity
480 F. Supp. at 460. And it further found that "has no use except through practice of the patented
method," id. at 448 U. S. 199, the patentee has no right
"there was no evidence that any of the copies made by to claim that its distribution constitutes contributory
Griffiths or the other individual witnesses in this suit were infringement. "To form the basis for contributory
influenced or encouraged by [Sony's] advertisements." infringement, the item must almost be uniquely suited as
a component of the patented invention." P. Rosenberg,
Ibid. Patent Law Fundamentals § 17.02[2] (2d ed.1982).

Page 464 U. S. 439 "[A] sale of an article which though adapted to an

infringing use is also adapted to other and lawful uses, is
If vicarious liability is to be imposed on Sony in this case, not enough to make the seller a contributory infringer.
it must rest on the fact that it has sold equipment with Such a rule would block the wheels of commerce."
constructive knowledge of the fact that its customers
may use that equipment to make unauthorized copies of Henry v. A. B. Dick Co., 224 U. S. 1, 224 U. S.
copyrighted material. There is no precedent in the law of 48 (1912), overruled on other grounds,
copyright for the imposition of vicarious liability on such a
theory. The closest analogy is provided by the patent law Page 464 U. S. 442
cases to which it is appropriate to refer because of the
historic kinship between patent law and copyright law. Motion Picture Patents Co. v. Universal Film Mfg.
[Footnote 19] Co., 243 U. S. 502, 243 U. S. 517 (1917).

Page 464 U. S. 440

We recognize there are substantial differences between "Even if it were deemed that home-use recording of
the patent and copyright laws. But in both areas, the copyrighted material constituted infringement, the
contributory infringement doctrine is grounded on the Betamax could still legally be used to record
recognition that adequate protection of a monopoly may noncopyrighted material or material whose owners
require the courts to look beyond actual duplication of a consented to the copying. An injunction would deprive
device or publication to the products or activities that the public of the ability to use the Betamax for this
make such duplication possible. The staple article of noninfringing off-the-air recording. "
commerce doctrine must strike a balance between a
copyright holder's legitimate demand for effective -- not Page 464 U. S. 444
merely symbolic -- protection of the statutory monopoly,
and the rights of others freely to engage in substantially "Defendants introduced considerable testimony at trial
unrelated areas of commerce. Accordingly, the sale of about the potential for such copying of sports, religious,
copying equipment, like the sale of other articles of educational and other programming. This included
commerce, does not constitute contributory infringement testimony from representatives of the Offices of the
if the product is widely used for legitimate, Commissioners of the National Football, Basketball,
unobjectionable purposes. Indeed, it need merely be Baseball and Hockey Leagues and Associations, the
capable of substantial noninfringing uses. Executive Director of National Religious Broadcasters,
and various educational communications agencies.
IV Plaintiffs attack the weight of the testimony offered, and
also contend that an injunction is warranted because
The question is thus whether the Betamax is capable of infringing uses outweigh noninfringing uses."
commercially significant noninfringing uses. In order to
resolve that question, we need not explore all the "Whatever the future percentage of legal versus illegal
different potential uses of the machine and determine home-use recording might be, an injunction which seeks
whether or not they would constitute infringement. to deprive the public of the very tool or article of
Rather, we need only consider whether, on the basis of commerce capable of some noninfringing use would be
the facts as found by the District Court, a significant an extremely harsh remedy, as well as one
number of them would be noninfringing. Moreover, in unprecedented in copyright law."
order to resolve this case, we need not give precise
content to the question of how much use is commercially 480 F. Supp. at 468.
significant. For one potential use of the Betamax plainly
satisfies this standard, however it is understood: private,
noncommercial time-shifting in the home. It does so both Although the District Court made these statements in the
(A) because respondents have no right to prevent other context of considering the propriety of injunctive relief,
copyright holders from authorizing it for their programs, the statements constitute a finding that the evidence
and (B) because the District Court's factual findings concerning "sports, religious, educational and other
reveal that even the unauthorized home time-shifting of programming" was sufficient to establish a significant
respondents' programs is legitimate fair use. quantity of broadcasting whose copying is now
authorized, and a significant potential for future
authorized copying. That finding is amply supported by
Page 464 U. S. 443 the record. In addition to the religious and sports officials
identified explicitly by the District Court, [Footnote 24]
A. Authorized Time-Shifting two items in the record deserve specific mention.

Each of the respondents owns a large inventory of Page 464 U. S. 445

valuable copyrights, but, in the total spectrum of
television programming, their combined market share is First is the testimony of John Kenaston, the station
small. The exact percentage is not specified, but it is well manager of Channel 58, an educational station in Los
below 10%. [Footnote 22] If they were to prevail, the Angeles affiliated with the Public Broadcasting Service.
outcome of this litigation would have a significant impact He explained and authenticated the station's published
on both the producers and the viewers of the remaining guide to its programs. [Footnote 25] For each program,
90% of the programming in the Nation. No doubt, many the guide tells whether unlimited home taping is
other producers share respondents' concern about the authorized, home taping is authorized subject to certain
possible consequences of unrestricted copying. restrictions (such as erasure within seven days), or
Nevertheless the findings of the District Court make it home taping is not authorized at all. The Spring, 1978,
clear that time-shifting may enlarge the total viewing edition of the guide described 107 programs. Sixty-two of
audience, and that many producers are willing to allow those programs or 58% authorize some home taping.
private time-shifting to continue, at least for an Twenty-one of them, or almost 20%, authorize
experimental time period. [Footnote 23] unrestricted home taping. [Footnote 26]

The District Court found:

Second is the testimony of Fred Rogers, president of the Those sections describe a variety of uses of copyrighted
corporation that produces and owns the copyright on material that "are not infringements of copyright"
Mister Rogers' Neighborhood. The program is carried by "notwithstanding the provisions of section 106." The
more public television stations than any other program. most pertinent in this case is § 107, the legislative
Its audience numbers over 3,000,000 families a day. He endorsement of the doctrine of "fair use." [Footnote 29]
testified that he had absolutely no objection to home
taping for noncommercial use, and expressed the Page 464 U. S. 448
opinion that it is a real service to families to be able to
record children's programs and to show them at That section identifies various factors [Footnote 30] that
appropriate times. [Footnote 27] enable a court to apply an "equitable rule of reason"
analysis to particular claims of infringement. [Footnote
Page 464 U. S. 446 31] Although not conclusive, the first

If there are millions of owners of VTR's who make copies Page 464 U. S. 449
of televised sports events, religious broadcasts, and
educational programs such as Mister Rogers' factor requires that "the commercial or nonprofit
Neighborhood, and if the proprietors of those programs character of an activity" be weighed in any fair use
welcome the practice, the business of supplying the decision. [Footnote 32] If the Betamax were used to
equipment that makes such copying feasible should not make copies for a commercial or profitmaking purpose,
be stifled simply because the equipment is used by such use would presumptively be unfair. The contrary
some individuals to make unauthorized reproductions of presumption is appropriate here, however, because the
respondents' works. The respondents do not represent a District Court's findings plainly establish that time-shifting
class composed of all copyright holders. Yet a finding of for private home use must be characterized as a
contributory infringement would inevitably frustrate the noncommercial, nonprofit activity. Moreover, when one
interests of broadcasters in reaching the portion of their considers the nature of a televised copyrighted
audience that is available only through time-shifting. audiovisual work, see 17 U.S.C. § 107(2) (1982 ed.),
and that time-shifting merely enables a viewer to see
Of course, the fact that other copyright holders may such a work which he had been invited to witness in its
welcome the practice of time-shifting does not mean that entirety free of charge, the fact that
respondents should be deemed to have granted a
license to copy their programs. Third-party conduct Page 464 U. S. 450
would be wholly irrelevant in an action for direct
infringement of respondents' copyrights. But in an action
for contributory infringement against the seller of copying the entire work is reproduced, see § 107(3), does not
equipment, the copyright holder may not prevail unless have its ordinary effect of militating against a finding of
the relief that he seeks affects only his programs, or fair use. [Footnote 33]
unless he speaks for virtually all copyright holders with
an interest in the outcome. In this case, the record This is not, however, the end of the inquiry, because
makes it perfectly clear that there are many important Congress has also directed us to consider "the effect of
producers of national and local television programs who the use upon the potential market for or value of the
find nothing objectionable about the enlargement in the copyrighted work." § 107(4). The purpose of copyright is
size of the television audience that results from the to create incentives for creative effort. Even copying for
practice of time-shifting for private home use. [Footnote noncommercial purposes may impair the copyright
28] The seller of the equipment that expands those holder's ability to obtain the rewards that Congress
producers' audiences cannot be a contributory intended him to have. But a use that has no
demonstrable effect upon the potential market for, or the
Page 464 U. S. 447 value of, the copyrighted work need not be prohibited in
order to protect the author's incentive to create. The
prohibition of such noncommercial uses would
infringer if, as is true in this case, it has had no direct
involvement with any infringing activity.
Page 464 U. S. 451
B. Unauthorized Time-Shifting
merely inhibit access to ideas without any countervailing
benefit. [Footnote 34]
Even unauthorized uses of a copyrighted work are not
necessarily infringing. An unlicensed use of the copyright
is not an infringement unless it conflicts with one of the Thus, although every commercial use of copyrighted
specific exclusive rights conferred by the copyright material is presumptively an unfair exploitation of the
statute. Twentieth Century Music Corp. v. Aiken, 422 monopoly privilege that belongs to the owner of the
U.S. at 422 U. S. 154-155. Moreover, the definition of copyright, noncommercial uses are a different matter. A
exclusive rights in § 106 of the present Act is prefaced challenge to a noncommercial use of a copyrighted work
by the words "subject to sections 107 through 118." requires proof either that the particular use is harmful or
that, if it should become widespread, it would adversely or movie audiences will decrease as more people watch
affect the potential market for the copyrighted work. Betamax tapes as an alternative," with the observation
Actual present harm need not be shown; such a that "[t]here is no factual basis for [the underlying]
requirement would leave the copyright holder with no assumption." Ibid. [Footnote 37] It rejected respondents'
defense against predictable damage. Nor is it necessary "fear that time-shifting will reduce audiences for telecast
to show with certainty that future harm will result. What is reruns," and concluded instead that "given current
necessary is a showing by a preponderance of the market practices, this should aid plaintiffs, rather than
evidence that some meaningful likelihood of future harm harm them." Ibid. [Footnote 38] And it declared that
exists. If the intended use is for commercial gain, that respondents' suggestion that "theater or film rental
likelihood may be presumed. But if it is for a exhibition of a program will suffer because of time-shift
noncommercial purpose, the likelihood must be recording of that program" "lacks merit." Id. at 467.
demonstrated. [Footnote 39]

In this case, respondents failed to carry their burden with Page 464 U. S. 454
regard to home time-shifting. The District Court
described respondents' evidence as follows: After completing that review, the District Court restated
its overall conclusion several times, in several different
"Plaintiffs' experts admitted at several points in the trial ways. "Harm from time-shifting is speculative and, at
that the time-shifting without librarying would result in best, minimal." Ibid.
'not a great deal of harm.' Plaintiffs' greatest concern
about time-shifting is with 'a point of important "The audience benefits from the time-shifting capability
philosophy that transcends even commercial judgment.' have already been discussed. It is not implausible that
They fear that, with any Betamax usage, 'invisible benefits could also accrue to plaintiffs, broadcasters, and
boundaries' are passed: 'the copyright owner has lost advertisers, as the Betamax makes it possible for more
control over his program.'" persons to view their broadcasts."

480 F. Supp. at 467. Ibid. "No likelihood of harm was shown at trial, and
plaintiffs admitted that there had been no actual harm to
Page 464 U. S. 452 date." Id. at 468-469.

Later in its opinion, the District Court observed: "Testimony at trial suggested that Betamax may require
adjustments in marketing strategy, but it did not establish
"Most of plaintiffs' predictions of harm hinge on even a likelihood of harm."
speculation about audience viewing patterns and ratings,
a measurement system which Sidney Sheinberg, MCA's Id. at 469.
president, calls a 'black art' because of the significant
level of imprecision involved in the calculations." "Television production by plaintiffs today is more
profitable than it has ever been, and, in five weeks of
Id. at 469. [Footnote 35] trial, there was no concrete evidence to suggest that the
Betamax will change the studios' financial picture."
There was no need for the District Court to say much
about past harm. "Plaintiffs have admitted that no actual Ibid.
harm to their copyrights has occurred to date." Id. at 451.
The District Court's conclusions are buttressed by the
On the question of potential future harm from time- fact that to the extent time-shifting expands public
shifting, the District Court offered a more detailed access to freely broadcast television programs, it yields
analysis of the evidence. It rejected respondents' societal benefits. In Community Television of Southern
California v. Gottfried, 459 U. S. 498, 459 U. S. 508, n.
"fear that persons 'watching' the original telecast of a 12 (1983), we acknowledged the public interest in
program will not be measured in the live audience, and making television broadcasting more available.
the ratings and revenues will decrease" Concededly, that interest is not unlimited. But it supports
an interpretation of the concept of "fair use" that requires
the copyright holder to demonstrate some likelihood of
by observing that current measurement technology
harm before he may condemn a private act of time-
allows the Betamax audience to be reflected. Id. at 466.
shifting as a violation of federal law.
[Footnote 36] It rejected respondents' prediction "that live
television
When these factors are all weighed in the "equitable rule
of reason" balance, we must conclude that this record
Page 464 U. S. 453
amply
Page 464 U. S. 455

supports the District Court's conclusion that home time-

shifting is fair use. In light of the findings of the District
Court regarding the state of the empirical data, it is clear
that the Court of Appeals erred in holding that the statute
as presently written bars such conduct. [Footnote 40]

Page 464 U. S. 456

In summary, the record and findings of the District Court

lead us to two conclusions. First, Sony demonstrated a
significant likelihood that substantial numbers of
copyright holders who license their works for broadcast
on free television would not object to having their
broadcasts time-shifted by private viewers. And second,
respondents failed to demonstrate that time-shifting
would cause any likelihood of nonminimal harm to the
potential market for, or the value of, their copyrighted
works. The Betamax is, therefore, capable of substantial
noninfringing uses. Sony's sale of such equipment to the
general public does not constitute contributory
infringement of respondents' copyrights.

"The direction of Art. I is that Congress shall have the

power to promote the progress of science and the useful
arts. When, as here, the Constitution is permissive, the
sign of how far Congress has chosen to go can come
only from Congress."

Deepsouth Packing Co. v. Laitram Corp., 406 U. S.

518, 406 U. S. 530 (1972).

One may search the Copyright Act in vain for any sign
that the elected representatives of the millions of people
who watch television every day have made it unlawful to
copy a program for later viewing at home, or have
enacted a flat prohibition against the sale of machines
that make such copying possible.

It may well be that Congress will take a fresh look at this

new technology, just as it so often has examined other
innovations in the past. But it is not our job to apply laws
that have not yet been written. Applying the copyright
statute, as it now reads, to the facts as they have been
developed in this case, the judgment of the Court of
Appeals must be reversed.

It is so ordered.
 news reporting is not an infringement of copyright.
Section 107 further provides that, in determining whether
the use was fair, the factors to be considered shall
include: (1) the purpose and character of the use; (2) the
nature of the copyrighted work; (3) the substantiality of
the portion used in relation to the

Page 471 U. S. 540

copyrighted work as a whole; and (4) the effect on the

potential market for or value of the copyrighted work.

Harper & Row v. Nation Enterprises, 471 U.S. Held: The Nation's article was not a "fair use" sanctioned
539 (1985) by § 107. Pp. 471 U. S. 542-569.

CERTIORARI TO THE UNITED STATES COURT OF (a) In using generous verbatim excerpts of Mr. Ford's
APPEALS FOR THE unpublished expression to lend authenticity to its
account of the forthcoming memoirs, The Nation
effectively arrogated to itself the right of first publication,
SECOND CIRCUIT an important marketable subsidiary right. Pp. 471 U. S.
545-549.
Syllabus
(b) Though the right of first publication, like other rights
In 1977, former President Ford contracted with enumerated in § 106, is expressly made subject to the
petitioners to publish his as yet unwritten memoirs. The fair use provisions of 107, fair use analysis must always
agreement gave petitioners the exclusive first serial right be tailored to the individual case. The nature of the
to license prepublication excerpts. Two years later, as interest at stake is highly relevant to whether a given use
the memoirs were nearing completion, petitioners, as the is fair. The unpublished nature of a work is a key, though
copyright holders, negotiated a prepublication licensing not necessarily determinative, factor tending to negate a
agreement with Time Magazine under which Time defense of fair use. And under ordinary circumstances,
agreed to pay $25,000 ($12,500 in advance and the the author's right to control the first public appearance of
balance at publication) in exchange for the right to his undisseminated expression will outweigh a claim of
excerpt 7,500 words from Mr. Ford's account of his fair use. Pp. 471 U. S. 549-555.
pardon of former President Nixon. Shortly before the
Time article's scheduled release, an unauthorized (c) In view of the First Amendment's protections
source provided The Nation Magazine with the embodied in the Act's distinction between copyrightable
unpublished Ford manuscript. Working directly from this expression and uncopyrightable facts and ideas, and the
manuscript, an editor of The Nation produced a 2,250- latitude for scholarship and comment traditionally
word article, at least 300 to 400 words of which afforded by fair use, there is no warrant for expanding,
consisted of verbatim quotes of copyrighted expression as respondents contend should be done, the fair use
taken from the manuscript. It was timed to "scoop" the doctrine to what amounts to a public figure exception to
Time article. As a result of the publication of The copyright. Whether verbatim copying from a public
Nation's article, Time canceled its article and refused to figure's manuscript in a given case is or is not fair must
pay the remaining $12,500 to petitioners. Petitioners be judged according to the traditional equities of fair use.
then brought suit in Federal District Court against Pp. 471 U. S. 555-560.
respondent publishers of The Nation, alleging, inter
alia, violations of the Copyright Act (Act). The District
Court held that the Ford memoirs were protected by (d) Taking into account the four factors enumerated in §
copyright at the time of The Nation publication, and that 107 as especially relevant in determining fair use leads
respondents' use of the copyrighted material constituted to the conclusion that the use in question here was not
an infringement under the Act, and the court awarded fair. (i) The fact that news reporting was the general
actual damages of $12,500. The Court of Appeals purpose of The Nation's use is simply one factor. While
reversed, holding that The Nation's publication of the The Nation had every right to be the first to publish the
300 to 400 words it identified as copyrightable information, it went beyond simply reporting
expression was sanctioned as a "fair use" of the uncopyrightable information and actively sought to
copyrighted material under § 107 of the Act. Section 107 exploit the headline value of its infringement, making a
provides that, notwithstanding the provisions of § 106 "news event" out of its unauthorized first publication. The
giving a copyright owner the exclusive right to reproduce fact that the publication was commercial, as opposed to
the copyrighted work and to prepare derivative works nonprofit, is a separate factor tending to weigh against a
based on the copyrighted work, the fair use of a finding of fair use. Fair use presupposes good faith. The
copyrighted work for purposes such as comment and Nation's unauthorized use of the undisseminated
manuscript had not merely the incidental effect, but
the intended purpose, of supplanting the copyright Magazine. Time had agreed to purchase the exclusive
holders' commercially valuable right of first publication. right to print prepublication excerpts from the copyright
(ii) While there may be a greater need to disseminate holders, Harper & Row Publishers, Inc. (hereinafter
works of fact than works of fiction, The Nation's taking of Harper & Row), and Reader's Digest Association, Inc.
copyrighted expression exceeded that necessary to (hereinafter Reader's Digest). As a result of The Nation
disseminate the facts, and infringed the copyright article, Time canceled its agreement. Petitioners brought
holders' interests in confidentiality and creative control a successful copyright action against The Nation. On
over the first public appearance of the work. (iii) Although appeal, the Second Circuit reversed the lower court's
the verbatim quotes finding of infringement, holding that The Nation's act was
sanctioned as a "fair use" of the copyrighted material.
Page 471 U. S. 541 We granted certiorari, 467 U.S. 1214 (1984), and we
now reverse.
in question were an insubstantial portion of the Ford
manuscript, they qualitatively embodied Mr. Ford's I
distinctive expression, and played a key role in the
infringing article. (iv) As to the effect of The Nation's In February, 1977, shortly after leaving the White House,
article on the market for the copyrighted work, Time's former President Gerald R. Ford contracted with
cancellation of its projected article and its refusal to pay petitioners Harper & Row and Reader's Digest, to
$12,500 were the direct effect of the infringing publish his as yet unwritten memoirs. The memoirs were
publication. Once a copyright holder establishes a causal to contain "significant hitherto unpublished material"
connection between the infringement and loss of concerning the Watergate crisis, Mr. Ford's pardon of
revenue, the burden shifts to the infringer to show that former President Nixon, and "Mr. Ford's reflections on
the damage would have occurred had there been no this period of history, and the morality and personalities
taking of copyrighted expression. Petitioners established involved." App. to Pet. for Cert. C-14 - C-15. In addition
a prima facie case of actual damage that respondents to the right to publish the Ford memoirs in book form, the
failed to rebut. More important, to negate a claim of fair agreement gave petitioners the exclusive right to license
use, it need only be shown that, if the challenged use prepublication excerpts, known in the trade as "first
should become widespread, it would adversely affect the serial rights." Two years later, as the memoirs were
potential market for the copyrighted work. Here, The nearing completion, petitioners negotiated a
Nation's liberal use of verbatim excerpts posed prepublication licensing agreement with Time, a weekly
substantial potential for damage to the marketability of news magazine. Time agreed to pay $25,000, $12,500 in
first serialization rights in the copyrighted work. Pp. 471 advance and an
U. S. 560-569.
Page 471 U. S. 543
723 F.2d 195, reversed and remanded.
additional $12,500 at publication, in exchange for the
O'CONNOR, J., delivered the opinion of the Court, in right to excerpt 7,500 words from Mr. Ford's account of
which BURGER, C.J., and BLACKMUN, POWELL, the Nixon pardon. The issue featuring the excerpts was
REHNQUIST, and STEVENS, JJ., joined. BRENNAN, J., timed to appear approximately one week before
filed a dissenting opinion, in which WHITE and shipment of the full-length book version to bookstores.
MARSHALL, JJ., joined, post, p. 471 U. S. 579. Exclusivity was an important consideration; Harper &
Row instituted procedures designed to maintain the
JUSTICE O'CONNOR delivered the opinion of the Court. confidentiality of the manuscript, and Time retained the
right to renegotiate the second payment should the
material appear in print prior to its release of the
This case requires us to consider to what extent the "fair
excerpts.
use" provision of the Copyright Revision Act of 1976
(hereinafter
Two to three weeks before the Time article's scheduled
release, an unidentified person secretly brought a copy
Page 471 U. S. 542
of the Ford manuscript to Victor Navasky, editor of The
Nation, a political commentary magazine. Mr. Navasky
the Copyright Act), 17 U.S.C. § 107, sanctions the knew that his possession of the manuscript was not
unauthorized use of quotations from a public figure's authorized, and that the manuscript must be returned
unpublished manuscript. In March, 1979, an undisclosed quickly to his "source" to avoid discovery. 557 F. Supp.
source provided The Nation Magazine with the 1067, 1069 (SDNY 1983). He hastily put together what
unpublished manuscript of "A Time to Heal: The he believed was "a real hot news story" composed of
Autobiography of Gerald R. Ford." Working directly from quotes, paraphrases, and facts drawn exclusively from
the purloined manuscript, an editor of The Nation the manuscript. Ibid. Mr. Navasky attempted no
produced a short piece entitled "The Ford Memoirs -- independent commentary, research or criticism, in part
Behind the Nixon Pardon." The piece was timed to because of the need for speed if he was to "make news"
"scoop" an article scheduled shortly to appear in Time by "publish[ing] in advance of publication of the Ford
book." App. 416-417. The 2,250-word article, reprinted in "When the uncopyrighted material is stripped away, the
the 471 U.S. 539App|>Appendix to this opinion, article in The Nation contains, at most, approximately
appeared on April 3, 1979. As a result of The Nation's
article, Time canceled its piece and refused to pay the Page 471 U. S. 545
remaining $12,500.
300 words that are copyrighted. These remaining
Petitioners brought suit in the District Court for the paragraphs and scattered phrases are all verbatim
Southern District of New York, alleging conversion, quotations from the memoirs which had not appeared
tortious interference with contract, and violations of the previously in other publications. They include a short
Copyright Act. After a 6-day bench trial, the District segment of Ford's conversations with Henry Kissinger
Judge found that "A Time to Heal" was protected by and several other individuals. Ford's impressionistic
copyright at the time of The Nation publication and that depictions of Nixon, ill with phlebitis after the resignation
respondents' use of the copyrighted material constituted and pardon, and of Nixon's character, constitute the
an infringement under the Copyright Act, §§ 106(1), (2), major portion of this material. It is these parts of the
and (3), protecting respectively the right to reproduce the magazine piece on which [the court] must focus in [its]
work, the right to license preparation of derivative works, examination of the question whether there was a 'fair
and the right of first distribution of use' of copyrighted matter."

Page 471 U. S. 544 Id. at 206. Examining the four factors enumerated in §
107, see infra at 471 U. S. 547, n. 2, the majority found
the copyrighted work to the public. App. to Pet. for Cert. the purpose of the article was "news reporting," the
C-29 - C-30. The District Court rejected respondents' original work was essentially factual in nature, the 300
argument that The Nation's piece was a "fair use" words appropriated were insubstantial in relation to the
sanctioned by § 107 of the Act. Though billed as "hot 2,250-word piece, and the impact on the market for the
news," the article contained no new facts. The magazine original was minimal, as "the evidence [did] not support a
had "published its article for profit," taking "the heart" of finding that it was the very limited use of expression per
"a soon-to-be published" work. This unauthorized use se which led to Time's decision not to print the excerpt."
"caused the Time agreement to be aborted, and thus The Nation's borrowing of verbatim quotations merely
diminished the value of the copyright." 557 F. Supp. at "len[t] authenticity to this politically significant
1072. Although certain elements of the Ford memoirs, material . . . complementing the reporting of the facts."
such as historical facts and memoranda, were not per 723 F.2d at 208. The Court of Appeals was especially
se copyrightable, the District Court held that it was influenced by the "politically significant" nature of the
subject matter and its conviction that it is not "the
"the totality of these facts and memoranda collected, purpose of the Copyright Act to impede that harvest of
together with Ford's reflections, that made them of value knowledge so necessary to a democratic state" or "chill
to The Nation, [and] this . . . totality . . . is protected by the activities of the press by forbidding a circumscribed
the copyright laws." use of copyrighted words." Id. at 197, 209.

Id. at 1072-1073. The court awarded actual damages of II

$12,500.
We agree with the Court of Appeals that copyright is
A divided panel of the Court of Appeals for the Second intended to increase, and not to impede, the harvest of
Circuit reversed. The majority recognized that Mr. Ford's knowledge. But we believe the Second Circuit gave
verbatim "reflections" were original "expression" insufficient deference to the scheme established by the
protected by copyright. But it held that the District Court Copyright Act for
had erred in assuming the "coupling [of these reflections]
with uncopyrightable fact transformed that information Page 471 U. S. 546
into a copyrighted totality.'" 723 F.2d 195, 205 (1983).
The majority noted that copyright attaches to expression, fostering the original works that provide the seed and
not facts or ideas. It concluded that, to avoid granting a substance of this harvest. The rights conferred by
copyright monopoly over the facts underlying history and copyright are designed to assure contributors to the
news, "`expression' [in such works must be confined] to store of knowledge a fair return for their
its barest elements -- the ordering and choice of the labors. Twentieth Century Music Corp. v. Aiken, 422 U.
words themselves."  Id. at 204. Thus similarities between S. 151, 422 U. S. 156 (1975).
the original and the challenged work traceable to the
copying or paraphrasing of uncopyrightable material, Article I, § 8, of the Constitution provides:
such as historical facts, memoranda and other public
documents, and quoted remarks of third parties, must be
disregarded in evaluating whether the second author's "The Congress shall have Power . . . to Promote the
use was fair or infringing. Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Page 471 U. S. 548
Right to their respective Writings and Discoveries."
procedures. See §§ 106, 401, 408; App. to Pet. for Cert.
As we noted last Term: C-20. Thus there is no dispute that the unpublished
manuscript of "A Time to Heal," as a whole, was
"[This] limited grant is a means by which an important protected by § 106 from unauthorized reproduction. Nor
public purpose may be achieved. It is intended to do respondents dispute that verbatim copying of
motivate the creative activity of authors and inventors by excerpts of the manuscript's original form of expression
the provision of a special reward, and to allow the public would constitute infringement unless excused as fair
access to the products of their genius after the limited use. See 1 M. Nimmer, Copyright § 2.11[B], p. 2-159
period of exclusive control has expired." (1984) (hereinafter Nimmer). Yet copyright does not
prevent subsequent users from copying from a prior
author's work those constituent elements that are not
Sony Corp. of America v. Universal City Studios,
original -- for example, quotations borrowed under the
Inc., 464 U. S. 417, 464 U. S. 429 (1984). "The
rubric of fair use from other copyrighted works, facts, or
monopoly created by copyright thus rewards the
materials in the public domain -- as long as such use
individual author in order to benefit the public." Id. at 464
does not unfairly appropriate the author's original
U. S. 477 (dissenting opinion). This principle applies
contributions. Ibid.; A. Latman, Fair Use of Copyrighted
equally to works of fiction and nonfiction. The book at
Works (1958), reprinted as Study No. 14 in Copyright
issue here, for example, was two years in the making,
Law Revision Studies Nos. 1416, prepared for the
and began with a contract giving the author's copyright
Senate Committee on the Judiciary, 86th Cong., 2d
to the publishers in exchange for their services in
Sess., 7 (1960) (hereinafter Latman). Perhaps the
producing and marketing the work. In preparing the
controversy between the lower courts in this case over
book, Mr. Ford drafted essays and word portraits of
copyrightability is more aptly styled a dispute over
public figures and participated in hundreds of taped
whether The Nation's appropriation of unoriginal and
interviews that were later distilled to chronicle his
uncopyrightable elements encroached on the originality
personal viewpoint. It is evident that the monopoly
embodied in the work as a whole. Especially in the realm
granted by copyright actively served its intended purpose
of factual narrative, the law is currently unsettled
of inducing the creation of new material of potential
regarding the ways in which uncopyrightable elements
historical value.
combine with the author's original contributions to form
protected expression. Compare Wainwright Securities
Section 106 of the Copyright Act confers a bundle of Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (CA2
exclusive rights to the owner of the copyright. [Footnote 1977) (protection accorded author's analysis, structuring
1] Under the Copyright of material and marshaling of facts), with Hoehling v.
Universal City Studios, Inc., 618 F.2d 972 (CA2 1980)
Page 471 U. S. 547 (limiting protection to ordering and choice of
words). See, e.g., 1 Nimmer § 2.11[D], at 2-164 - 2-165.
Act, these rights -- to publish, copy, and distribute the
author's work -- vest in the author of an original work We need not reach these issues, however, as The
from the time of its creation. § 106. In practice, the Nation has admitted to lifting verbatim quotes of the
author commonly sells his rights to publishers who offer author's original language totaling between 300 and 400
royalties in exchange for their services in producing and words and constituting some 13% of The Nation article.
marketing the author's work. The copyright owner's In using generous
rights, however, are subject to certain statutory
exceptions. §§ 107-118. Among these is § 107, which Page 471 U. S. 549
codifies the traditional privilege of other authors to make
"fair use" of an earlier writer's work. [Footnote 2] In
verbatim excerpts of Mr. Ford's unpublished manuscript
addition, no author may copyright facts or ideas. § 102.
to lend authenticity to its account of the forthcoming
The copyright is limited to those aspects of the work --
memoirs, The Nation effectively arrogated to itself the
termed "expression" -- that display the stamp of the
right of first publication, an important marketable
author's originality.
subsidiary right. For the reasons set forth below, we find
that this use of the copyrighted manuscript, even
Creation of a nonfiction work, even a compilation of pure stripped to the verbatim quotes conceded by The Nation
fact, entails originality. See, e.g., Schroeder v. William to be copyrightable expression, was not a fair use within
Morrow & Co., 566 F.2d 3 (CA7 1977) (copyright in the meaning of the Copyright Act.
gardening directory); cf. Burrow-Giles Lithographic Co.
v. Sarony, 111 U. S. 53, 111 U. S. 58 (1884) (originator
III
of a photograph may claim copyright in his work). The
copyright holders of "A Time to Heal" complied with the
relevant statutory notice and registration A
Fair use was traditionally defined as "a privilege in others Perhaps because the fair use doctrine was predicated on
than the owner of the copyright to use the copyrighted the author's implied consent to "reasonable and
material in a reasonable manner without his consent." H. customary" use when he released his work for public
Ball, Law of Copyright and Literary Property 260 (1944) consumption, fair use traditionally was not recognized as
(hereinafter Ball). The statutory formulation of the a defense to charges
defense of fair use in the Copyright Act reflects the intent
of Congress to codify the common law doctrine. 3 Page 471 U. S. 551
Nimmer § 13.05. Section 107 requires a case-by-case
determination whether a particular use is fair, and the of copying from an author's as yet unpublished works.
statute notes four nonexclusive factors to be considered. [Footnote 4] Under common law copyright, "the property
This approach was "intended to restate the [preexisting] of the author . . . in his intellectual creation [was]
judicial doctrine of fair use, not to change, narrow, or absolute until he voluntarily part[ed] with the
enlarge it in any way." H.R.Rep. No. 94-1476, p. 66 same." American Tobacco Co. v. Werckmeister, 207 U.
(1976) (hereinafter House Report). S. 284, 207 U. S. 299 (1907); 2 Nimmer § 8.23, at 8-273.
This absolute rule, however, was tempered in practice by
"[T]he author's consent to a reasonable use of his the equitable nature of the fair use doctrine. In a given
copyrighted works ha[d] always been implied by the case, factors such as implied consent through de
courts as a necessary incident of the constitutional policy facto publication on performance or dissemination of a
of promoting the progress of science and the useful arts, work may tip the balance of equities in favor of
since a prohibition of such use would inhibit subsequent prepublication use. See Copyright Law Revision -- Part
writers from attempting to improve upon prior works, and 2: Discussion and Comments on Report of the Register
thus . . . frustrate the very ends sought to be attained." of Copyrights on General Revision of the U.S. Copyright
Law, 88th Cong., 1st Sess., 27 (H.R. Comm. Print 1963)
Ball 260. Professor Latman, in a study of the doctrine of (discussion suggesting works disseminated to the public
fair use commissioned by Congress for the revision in a form not constituting a technical "publication" should
effort, see Sony Corp. of America v. Universal City nevertheless be subject to fair use); 3 Nimmer § 13.05,
Studios, Inc., 464 U.S. at 464 U. S. 462-463, n. 9 at 13-62, n. 2. But it has never been seriously disputed
(dissenting opinion), summarized prior law as turning on that "the fact that the plaintiff's work is unpublished . . . is
the a factor tending to negate the defense of fair
use." Ibid. Publication of an author's expression before
"importance he has authorized its dissemination seriously infringes
the author's right to decide when and whether it will be
made public, a factor not present in fair use of published
Page 471 U. S. 550
works. [Footnote 5]
of the material copied or performed from the point of
Page 471 U. S. 552
view of the reasonable copyright owner. In other words,
would the reasonable copyright owner have consented
to the use?" Respondents contend, however, that Congress, in
including first publication among the rights enumerated
in § 106, which are expressly subject to fair use under §
Latman 15. [Footnote 3]
107, intended that fair use would apply in pari materia to
published and unpublished works. The Copyright Act
As early as 1841, Justice Story gave judicial recognition does not support this proposition.
to the doctrine in a case that concerned the letters of
another former President, George Washington.
The Copyright Act represents the culmination of a major
legislative reexamination of copyright doctrine. See Mills
"[A] reviewer may fairly cite largely from the original Music, Inc. v. Snyder, 469 U. S. 153, 469 U. S. 159-160
work, if his design be really and truly to use the (1985); Sony Corp. of America v. Universal City Studios,
passages for the purposes of fair and reasonable Inc., 464 U.S. at 464 U. S. 462-463, n. 9 (dissenting
criticism. On the other hand, it is as clear that, if he thus opinion). Among its other innovations, it eliminated
cites the most important parts of the work, with a view publication "as a dividing line between common law and
not to criticise, but to supersede the use of the original statutory protection," House Report at 129, extending
work, and substitute the review for it, such a use will be statutory protection to all works from the time of their
deemed in law a piracy." creation. It also recognized for the first time a distinct
statutory right of first publication, which had previously
Folsom v. Marsh, 9 F. Cas. 342, 344-345 (No. 4,901) been an element of the common law protections afforded
(CC Mass.) As Justice Story's hypothetical illustrates, unpublished works. The Report of the House Committee
the fair use doctrine has always precluded a use that on the Judiciary confirms that
"supersede[s] the use of the
original." Ibid. Accord, S.Rep. No. 94-473, p. 65 (1975) "Clause (3) of section 106, establishes the exclusive
(hereinafter Senate Report). right of publications. . . . Under this provision, the
copyright owner would have the right to control the first general standards of fair use are applicable to all kinds
public distribution of an authorized copy . . . of his work." of uses of copyrighted material." Id. at 65. We find
unconvincing respondents' contention that the absence
Id. at 62. of the quoted passage from the House Report indicates
an intent to abandon the traditional distinction between
fair use of published and unpublished works. It appears
Though the right of first publication, like the other rights
instead that the fair use discussion of photocopying of
enumerated in § 106, is expressly made subject to the
classroom materials was omitted from the final Report
fair use provision of § 107, fair use analysis must always
because educators and publishers in the interim had
be tailored to the individual case. Id. at 65; 3 Nimmer §
negotiated a set of guidelines that rendered the
13.05[A]. The
discussion obsolete. House Report at 67. The House
Report nevertheless incorporates the discussion by
Page 471 U. S. 553 reference, citing to the Senate Report and stating: "The
Committee has reviewed this discussion, and considers
nature of the interest at stake is highly relevant to it still has value as an analysis of various aspects of the
whether a given use is fair. From the beginning, those [fair use] problem." Ibid.
entrusted with the task of revision recognized the
Even if the legislative history were entirely silent, we
"overbalancing reasons to preserve the common law would be bound to conclude from Congress'
protection of undisseminated works until the author or characterization of § 107 as a "restatement" that its
his successor chooses to disclose them." effect was to preserve existing law concerning fair use of
unpublished works as of other types of protected works,
Copyright Law Revision, Report of the Register of and not to "change, narrow, or enlarge it." Id. at 66. We
Copyrights on the General Revision of the U.S. conclude that the unpublished nature of a work is "[a]
Copyright Law, 87th Cong., 1st Sess., 41 (Comm. Print key, though not necessarily determinative, factor"
1961). The right of first publication implicates a threshold tending to negate a defense of fair use. Senate Report at
decision by the author whether and in what form to 64. See 3 Nimmer § 13.05, at 13-62, n. 2; W. Patry, The
release his work. First publication is inherently different Fair Use Privilege in Copyright Law 125 (1985)
from other § 106 rights in that only one person can be (hereinafter Patry).
the first publisher; as the contract with Time illustrates,
the commercial value of the right lies primarily in We also find unpersuasive respondents' argument that
exclusivity. Because the potential damage to the author fair use may be made of a soon-to-be-published
from judicially enforced "sharing" of the first publication manuscript on the ground that the author has
right with unauthorized users of his manuscript is demonstrated he has no interest in nonpublication. This
substantial, the balance of equities in evaluating such a argument assumes that the unpublished nature of
claim of fair use inevitably shifts. copyrighted material is only relevant to letters or other
confidential writings not intended for dissemination. It is
The Senate Report confirms that Congress intended the true that common law copyright was often enlisted in the
unpublished nature of the work to figure prominently in service of personal privacy. See Brandeis & Warren, The
fair use analysis. In discussing fair use of photocopied Right to Privacy, 4 Harv.L.Rev.193, 198-199 (1890). In
materials in the classroom the Committee Report states: its commercial guise, however, an author's right to
choose when he will publish is no less deserving of
"A key, though not necessarily determinative, factor in protection.
fair use is whether or not the work is available to the
potential user. If the work is 'out of print' and unavailable Page 471 U. S. 555
for purchase through normal channels, the user may
have more justification for reproducing it. . . . The The period encompassing the work's initiation, its
applicability of the fair use doctrine to unpublished works preparation, and its grooming for public dissemination is
is narrowly limited, since, although the work is a crucial one for any literary endeavor. The Copyright
unavailable, this is the result of a deliberate choice on Act, which accords the copyright owner the "right to
the part of the copyright owner. Under ordinary control the first public distribution" of his work, House
circumstances, the copyright owner's 'right of first Report at 62, echos the common law's concern that the
publication' would outweigh any needs of reproduction author or copyright owner retain control throughout this
for classroom purposes." critical stage. See generally Comment, The Stage of
Publication as a "Fair Use" Factor: Harper & Row,
Senate Report at 64. Although the Committee selected Publishers v. Nation Enterprises, 58 St. John's L.Rev.
photocopying of classroom materials to illustrate fair use, 597 (1984). The obvious benefit to author and public
it emphasized that "the same alike of assuring authors the leisure to develop their
ideas free from fear of expropriation outweighs any
Page 471 U. S. 554 short-term "news value" to be gained from premature
publication of the author's expression. See Goldstein,
Copyright and the First Amendment, 70 Colum.L.Rev. York Times Co. v. United States, 403 U. S. 713, 403 U.
983, 1004-1006 (1970) (The absolute protection the S. 726, n. (1971) (BRENNAN, J., concurring) (Copyright
common law accorded to soon-to-be published works laws are not restrictions on freedom of speech, as
"[was] justified by [its] brevity and expedience"). The copyright protects only form of expression, and not the
author's control of first public distribution implicates not ideas expressed); 1 Nimmer § 1.10[B][2]. As this Court
only his personal interest in creative control, but his long ago observed:
property interest in exploitation of prepublication rights,
which are valuable in themselves and serve as a "[T]he news element -- the information respecting current
valuable adjunct to publicity and marketing. See Belshi events contained in the literary production -- is not the
v. Woodward, 598 F. Supp. 36 (DC 1984) (successful creation of the writer, but is a report of matters that
marketing depends on coordination of serialization and ordinarily are publici juris; it is the history of the day."
release to public); Marks, Subsidiary Rights and
Permissions, in What Happens in Book Publishing 230 International News Service v. Associated Press, 248 U.
(C. Grannis ed.1967) (exploitation of subsidiary rights is S. 215, 248 U. S. 234 (1918). But copyright assures
necessary to financial success of new books). Under those who write and publish factual narratives such as
ordinary circumstances, the author's right to control the "A Time to Heal" that
first public appearance of his undisseminated expression
will outweigh a claim of fair use.
Page 471 U. S. 557
B
they may at least enjoy the right to market the original
expression contained therein as just compensation for
Respondents, however, contend that First Amendment their investment. Cf. Zacchini v. Scripps-Howard
values require a different rule under the circumstances of Broadcasting Co., 433 U. S. 562, 433 U. S. 575 (1977).
this case. The thrust of the decision below is that "[t]he
scope of [fair use] is undoubtedly wider when the
information Respondents' theory, however, would expand fair use to
effectively destroy any expectation of copyright
protection in the work of a public figure. Absent such
Page 471 U. S. 556 protection, there would be little incentive to create or
profit in financing such memoirs, and the public would be
conveyed relates to matters of high public denied an important source of significant historical
concern." Consumers Union of the United States, Inc. v. information. The promise of copyright would be an empty
General Signal Corp., 724 F.2d 1044, 1050 (CA2 1983) one if it could be avoided merely by dubbing the
(construing 723 F.2d 195 (1983) (case below) as infringement a fair use "news report" of the book. See
allowing advertiser to quote Consumer Reports), cert. Wainwright Securities Inc. v. Wall Street Transcript
denied, 469 U.S. 823 (1984). Respondents advance the Corp., 558 F.2d 91 (CA2 1977), cert. denied, 434 U.S.
substantial public import of the subject matter of the Ford 1014 (1978).
memoirs as grounds for excusing a use that would
ordinarily not pass muster as a fair use -- the piracy of Nor do respondents assert any actual necessity for
verbatim quotations for the purpose of "scooping" the circumventing the copyright scheme with respect to the
authorized first serialization. Respondents explain their types of works and users at issue here. [Footnote 6]
copying of Mr. Ford's expression as essential to Where an author and publisher have invested extensive
reporting the news story it claims the book itself resources in creating an original work and are poised to
represents. In respondents' view, not only the facts release it to the public, no legitimate aim is served by
contained in Mr. Ford's memoirs, but "the precise preempting the right of first publication. The fact that the
manner in which [he] expressed himself [were] as words the author has chosen to clothe his narrative may
newsworthy as what he had to say." Brief for of themselves be "newsworthy" is not an independent
Respondents 38-39. Respondents argue that the public's justification for unauthorized copying of the author's
interest in learning this news as fast as possible expression prior to publication. To paraphrase another
outweighs the right of the author to control its first recent Second Circuit decision:
publication.
"[Respondent] possessed an unfettered right to use any
The Second Circuit noted, correctly, that copyright's factual information revealed in [the memoirs] for the
idea/ expression dichotomy purpose of enlightening its audience, but it can claim

"strike[s] a definitional balance between the First Page 471 U. S. 558

Amendment and the Copyright Act by permitting free
communication of facts while still protecting an author's
expression." no need to 'bodily appropriate' [Mr. Ford's] 'expression'
of that information by utilizing portions of the actual
[manuscript]. The public interest in the free flow of
723 F.2d at 203. No author may copyright his ideas or information is assured by the law's refusal to recognize a
the facts he narrates. 17 U.S.C. § 102(b). See, e.g., New
valid copyright in facts. The fair use doctrine is not a "If every volume that was in the public interest could be
license for corporate theft, empowering a court to ignore pirated away by a competing publisher, . . . the public
a copyright whenever it determines the underlying work [soon] would have nothing worth reading."
contains material of possible public importance."
Sobel, Copyright and the First Amendment: A Gathering
Iowa State University Research Foundation, Inc. v. Storm?, 19 ASCAP Copyright Law Symposium 43, 78
American Broadcasting Cos., Inc., 621 F.2d 57, 61 (1971). See generally Comment, Copyright and the First
(1980) (citations omitted). Accord, Roy Export Co. Amendment; Where Lies the Public Interest?, 59 Tulane
Establishment v. Columbia Broadcasting System, L.Rev. 135 (1984).
Inc., 503 F. Supp. 1137 (SDNY 1980) ("newsworthiness"
of material copied does not justify copying), aff'd, 672 Moreover, freedom of thought and expression "includes
F.2d 1095 (CA2), cert. denied, 459 U.S. 826 both the right to speak freely and the right to refrain from
(1982); Quinto v. Legal Times of Washington, Inc., 506 speaking at all." Wooley v. Maynard, 430 U. S. 705, 430
F. Supp. 554 (DC 1981) (same). U. S. 714 (1977) (BURGER, C.J.). We do not suggest
this right not to speak would sanction abuse of the
In our haste to disseminate news, it should not be copyright owner's monopoly as an instrument to
forgotten that the Framers intended copyright itself to be suppress facts. But in the words of New York's Chief
the engine of free expression. By establishing a Judge Fuld:
marketable right to the use of one's expression,
copyright supplies the economic incentive to create and "The essential thrust of the First Amendment is to
disseminate ideas. This Court stated in Mazer v. prohibit improper restraints on the voluntary public
Stein, 347 U. S. 201, 209 (1954): expression of ideas; it shields the man who wants to
speak or publish when others wish him to be quiet.
"The economic philosophy behind the clause There is necessarily, and within suitably defined areas, a
empowering Congress to grant patents and copyrights is concomitant freedom not to speak publicly, one which
the conviction that encouragement of individual effort by serves the same ultimate end as freedom of speech in
personal gain is the best way to advance public welfare its affirmative aspect."
through the talents of authors and inventors in 'science
and useful Arts.'" Estate of Hemingway v. Random House, Inc., 23 N.Y.2d
341, 348, 244 N.E.2d 250, 255 (1968).
And again in Twentieth Century Music Corp. v. Aiken:
Page 471 U. S. 560
"The immediate effect of our copyright law is to secure a
fair return for an 'author's' creative labor. But the ultimate Courts and commentators have recognized that
aim is, by this incentive, to stimulate [the creation of copyright, and the right of first publication in particular,
useful works] for the general public good." serve this countervailing First Amendment value. See
Schnapper v. Foley, 215 U.S.App.D.C. 59, 667 F.2d 102
422 U.S. at 422 U. S. 156. (1981), cert. denied, 455 U.S. 948 (1982); 1 Nimmer §
1.10[B], at 1-70, n. 24; Patry 140-142.
Page 471 U. S. 559
In view of the First Amendment protections already
It is fundamentally at odds with the scheme of copyright embodied in the Copyright Act's distinction between
to accord lesser rights in those works that are of greatest copyrightable expression and uncopyrightable facts and
importance to the public. Such a notion ignores the ideas, and the latitude for scholarship and comment
major premise of copyright, and injures author and public traditionally afforded by fair use, we see no warrant for
alike. expanding the doctrine of fair use to create what
amounts to a public figure exception to copyright.
Whether verbatim copying from a public figure's
"[T]o propose that fair use be imposed whenever the
manuscript in a given case is or is not fair must be
'social value [of dissemination] . . . outweighs any
judged according to the traditional equities of fair use.
detriment to the artist' would be to propose depriving
copyright owners of their right in the property precisely
when they encounter those users who could afford to IV
pay for it."
Fair use is a mixed question of law and fact. Pacific &
Gordon, Fair Use as Market Failure: A Structural and Southern Co. v. Duncan, 744 F.2d 1490, 1495, n. 8
Economic Analysis of the Betamax Case and its (CA11 1984). Where the district court has found facts
Predecessors, 82 Colum.L.Rev. 1600, 1615 (1982). And sufficient to evaluate each of the statutory factors, an
as one commentator has noted: appellate court
"need not remand for further factfinding . . . , [but] may "The issue is not what constitutes 'news,' but whether a
conclude as a matter of law that [the challenged use] claim of newsreporting is a valid fair use defense to an
do[es] not qualify as a fair use of the copyrighted work." infringement of copyrightable expression."

Id. at 1495. Thus whether The Nation article constitutes Patry 119. The Nation has every right to seek to be the
fair use under § 107 must be reviewed in light of the first to publish information. But The Nation went beyond
principles discussed above. The factors enumerated in simply reporting uncopyrightable information and actively
the section are not meant to be exclusive: sought to exploit the headline value of its infringement,
making a "news event" out of its unauthorized first
"[S]ince the doctrine is an equitable rule of reason, no publication of a noted figure's copyrighted expression.
generally applicable definition is possible, and each case
raising the question must be decided on its own facts." Page 471 U. S. 562

House Report at 65. The four factors identified by The fact that a publication was commercial, as opposed
Congress as especially relevant in determining whether to nonprofit, is a separate factor that tends to weigh
the use was fair are: (1) the purpose and character of the against a finding of fair use.
use; (2) the nature of the copyrighted work; (3) the
substantiality of the portion used in relation to the "[E]very commercial use of copyrighted material is
copyrighted work as presumptively an unfair exploitation of the monopoly
privilege that belongs to the owner of the copyright."
Page 471 U. S. 561
Sony Corp. of America v. Universal City Studios,
a whole; (4) the effect on the potential market for or Inc., 464 U.S. at 464 U. S. 451. In arguing that the
value of the copyrighted work. We address each one purpose of news reporting is not purely commercial, The
separately. Nation misses the point entirely. The crux of the
profit/nonprofit distinction is not whether the sole motive
Purpose of the Use. The Second Circuit correctly of the use is monetary gain, but whether the user stands
identified news reporting as the general purpose of The to profit from exploitation of the copyrighted material
Nation's use. News reporting is one of the examples without paying the customary price. See Roy Export Co.
enumerated in § 107 to "give some idea of the sort of Establishment v. Columbia Broadcasting System,
activities the courts might regard as fair use under the Inc., 503 F. Supp. at 1144; 3 Nimmer § 13.05[A][1], at
circumstances." Senate Report at 61. This listing was 13-71, n. 25.3.
not intended to be exhaustive, see ibid.; § 101 (definition
of "including" and "such as"), or to single out any In evaluating character and purpose, we cannot ignore
particular use as presumptively a "fair" use. The drafters The Nation's stated purpose of scooping the forthcoming
resisted pressures from special interest groups to create hardcover and Time abstracts. [Footnote 7] App. to Pet.
presumptive categories of fair use, but structured the for Cert. C-27. The Nation's use had not merely the
provision as an affirmative defense requiring a case-by- incidental effect, but the intended purpose, of
case analysis. See H.R.Rep. No. 83, 90th Cong., 1st supplanting the copyright holder's commercially valuable
Sess., 37 (1967); Patry 477, n. 4. right of first publication. See Meredith Corp. v. Harper &
Row, Publishers, Inc., 378 F. Supp. 686, 690 (SDNY)
"[W]hether a use referred to in the first sentence of (purpose of text was to compete with original), aff'd, 500
section 107 is a fair use in a particular case will depend F.2d 1221 (CA2 1974). Also relevant to the "character"
upon the application of the determinative factors, of the use is "the propriety of the defendant's conduct." 3
including those mentioned in the second sentence." Nimmer § 13.05[A], at 13-72. "Fair use
presupposes good faith' and `fair dealing.'"  Time Inc. v.
Bernard Geis Associates, 293 F. Supp. 130, 146 (SDNY
Senate Report at 62. The fact that an article arguably is
1968), quoting
"news," and therefore a productive use, is simply one
factor in a fair use analysis.
Page 471 U. S. 563
We agree with the Second Circuit that the trial court
erred in fixing on whether the information contained in Schulman, Fair Use and the Revision of the Copyright
the memoirs was actually new to the public. As Judge Act, 53 Iowa L.Rev. 832 (1968). The trial court found
Meskill wisely noted, "[c]ourts should be chary of that The Nation knowingly exploited a purloined
deciding what is and what is not news." 723 F.2d at 215 manuscript. App. to Pet. for Cert. B-1, C-20 - C-21, C-28
(dissenting). Cf. Gertz v. Robert Welch, Inc., 418 U. S. - C-29. Unlike the typical claim of fair use, The Nation
323, 418 U. S. 345-346 (1974). cannot offer up even the fiction of consent as
justification. Like its competitor newsweekly, it was free
to bid for the right of abstracting excerpts from "A Time
to Heal." Fair use "distinguishes between `a true scholar
and a chiseler who infringes a work for personal confidential." App. to Pet. for Cert. 1C-20. While the
profit.'" Wainwright Securities Inc. v. Wall Street copyright holders' contract with Time required Time to
Transcript Corp.,  558 F.2d at 94, quoting from Hearings submit its proposed article seven days before
on Bills for the General Revision of the Copyright Law publication, The Nation's clandestine publication
before the House Committee on the Judiciary, 89th afforded no such opportunity for creative or quality
Cong., 1st Sess., ser. 8, pt. 3, p. 1706 (1966) (statement control. Id. at C-18. It was hastily patched together, and
of John Schulman). contained "a number of inaccuracies." App. 300b-300c
(testimony of Victor Navasky). A use that so clearly
Nature of the Copyrighted Work. Second, the Act directs infringes the copyright holder's interests in confidentiality
attention to the nature of the copyrighted work. "A Time and creative control is difficult to characterize as "fair."
to Heal" may be characterized as an unpublished
historical narrative or autobiography. The law generally Amount and Substantiality of the Portion Used. Next, the
recognizes a greater need to disseminate factual works Act directs us to examine the amount and substantiality
than works of fiction or fantasy. See Gorman, Fact or of the portion used in relation to the copyrighted work as
Fancy? The Implications for Copyright, 29 J.Copyright a whole. In absolute terms, the words actually quoted
Soc. 560, 561 (1982). were an insubstantial portion of "A Time to Heal." The
District Court, however, found that "[T]he Nation took
"[E]ven within the field of fact works, there are gradations what was
as to the relative proportion of fact and fancy. One may
move from sparsely embellished maps and directories to Page 471 U. S. 565
elegantly written biography. The extent to which one
must permit expressive language to be copied, in order essentially the heart of the book." 557 F. Supp. at 1072.
to assure dissemination of the underlying facts, will thus We believe the Court of Appeals erred in overruling the
vary from case to case." District Judge's evaluation of the qualitative nature of the
taking. See, e.g., Roy Export Co. Establishment v.
Id. at 563. Some of the briefer quotes from the memoirs Columbia Broadcasting System, Inc., 503 F. Supp. at
are arguably necessary adequately to convey the facts; 1145 (taking of 55 seconds out of 1 hour and 29-minute
for example, Mr. Ford's characterization of the White film deemed qualitatively substantial). A Time editor
House tapes as the "smoking gun" is perhaps so integral described the chapters on the pardon as "the most
to the idea expressed as to be inseparable from it. Cf. 1 interesting and moving parts of the entire manuscript."
Nimmer § 1.10[C]. But The Nation did not stop at Reply Brief for Petitioners 16, n. 8. The portions actually
isolated phrases, and instead excerpted subjective quoted were selected by Mr. Navasky as among the
descriptions and portraits of public figures whose power most powerful passages in those chapters. He testified
lies in the author's individualized expression. Such that he used verbatim excerpts because simply reciting
the information could not adequately convey the
Page 471 U. S. 564 "absolute certainty with which [Ford] expressed himself,"
App. 303, or show that "this comes from President
Ford," id. at 305, or carry the "definitive quality" of the
use, focusing on the most expressive elements of the
original, id. at 306. In short, he quoted these passages
work, exceeds that necessary to disseminate the facts.
precisely because they qualitatively embodied Ford's
distinctive expression.
The fact that a work is unpublished is a critical element
of its "nature." 3 Nimmer § 13.05[A]; Comment, 58 St.
As the statutory language indicates, a taking may not be
John's L.Rev. at 613. Our prior discussion establishes
excused merely because it is insubstantial with respect
that the scope of fair use is narrower with respect to
to the infringing work. As Judge Learned Hand cogently
unpublished works. While even substantial quotations
remarked, "no plagiarist can excuse the wrong by
might qualify as fair use in a review of a published work
showing how much of his work he did not
or a news account of a speech that had been delivered
pirate." Sheldon v. Metro-Goldwyn Pictures Corp., 81
to the public or disseminated to the press, see House
F.2d 49, 56 (CA2), cert. denied, 298 U.S. 669 (1936).
Report at 65, the author's right to control the first public
Conversely, the fact that a substantial portion of the
appearance of his expression weighs against such use
infringing work was copied verbatim is evidence of the
of the work before its release. The right of first
qualitative value of the copied material, both to the
publication encompasses not only the choice whether to
originator and to the plagiarist who seeks to profit from
publish at all, but also the choices of when, where, and
marketing someone else's copyrighted expression.
in what form first to publish a work.

Stripped to the verbatim quotes, [Footnote 8] the direct

In the case of Mr. Ford's manuscript, the copyright
takings from the unpublished manuscript constitute at
holders' interest in confidentiality is irrefutable; the
least 13% of the infringing
copyright holders had entered into a contractual
undertaking to "keep the manuscript confidential" and
required that all those to whom the manuscript was Page 471 U. S. 566
shown also "sign an agreement to keep the manuscript
article. See Meeropol v. Nizer, 560 F.2d 1061, 1071 Page 471 U. S. 568
(CA2 1977) (copyrighted letters constituted less than 1%
of infringing work but were prominently featured). The Inc. v. Mastercraft Corp., 656 F.2d 11, 15 (CA2 1981).
Nation article is structured around the quoted excerpts The trial court properly awarded actual damages and
which serve as its dramatic focal points. See Appendix accounting of profits. See 17 U.S.C. § 504(b).
to this opinion, post p. 471 U. S. 570. In view of the
expressive value of the excerpts and their key role in the More important, to negate fair use, one need only show
infringing work, we cannot agree with the Second Circuit that, if the challenged use "should become widespread,
that the "magazine took a meager, indeed an it would adversely affect the potential market for the
infinitesimal, amount of Ford's original language." 723 copyrighted work." Sony Corp. of America v. Universal
F.2d at 209. City Studios, Inc., 464 U.S. at 464 U. S. 451 (emphasis
added); id. at 464 U. S. 484, and n. 36 (collecting cases)
Effect on the Market. Finally, the Act focuses on "the (dissenting opinion). This inquiry must take account not
effect of the use upon the potential market for or value of only of harm to the original, but also of harm to the
the copyrighted work." This last factor is undoubtedly the market for derivative works. See Iowa State University
single most important element of fair use. [Footnote Research Foundation, Inc. v. American Broadcasting
9] See 3 Nimmer § 13.05[A], at 13-76, and cases cited Cos., 621 F.2d 57 (CA2 1980); Meeropol v. Nizer,
therein. "Fair use, when properly applied, is limited to supra, at 1070; Roy Export v. Columbia Broadcasting
copying by others which System, Inc., 503 F. Supp. at 1146.

Page 471 U. S. 567 "If the defendant's work adversely affects the value of
any of the rights in the copyrighted work (in this case the
does not materially impair the marketability of the work adaptation [and serialization] right) the use is not fair."
which is copied." 1 Nimmer § l.10[D], at 1-87. The trial
court found not merely a potential, but an actual, effect 3 Nimmer § 13.05[B], at 13-77 - 13-78 (footnote omitted).
on the market. Time's cancellation of its projected
serialization and its refusal to pay the $12,500 were the It is undisputed that the factual material in the balance of
direct effect of the infringement. The Court of Appeals The Nation's article, besides the verbatim quotes at
rejected this factfinding as clearly erroneous, noting that issue here, was drawn exclusively from the chapters on
the record did not establish a causal relation between the pardon. The excerpts were employed as featured
Time's nonperformance and respondents' unauthorized episodes in a story about the Nixon pardon -- precisely
publication of Mr. Ford's expression, as opposed to the the use petitioners had licensed to Time. The borrowing
facts taken from the memoirs. We disagree. Rarely will a of these verbatim quotes from the unpublished
case of copyright infringement present such clear-cut manuscript lent The Nation's piece a special air of
evidence of actual damage. Petitioners assured Time authenticity -- as Navasky expressed it, the reader would
that there would be no other authorized publication of know it was Ford speaking, and not The Nation. App.
any portion of the unpublished manuscript prior to April 300c. Thus it directly competed for a share of the market
23, 1979. Any publication of material from chapters 1 for prepublication excerpts. The Senate Report states:
and 3 would permit Time to renegotiate its final payment.
Time cited The Nation's article, which contained
verbatim quotes from the unpublished manuscript, as a "With certain special exceptions . . . a use that supplants
reason for its nonperformance. With respect to any part of the normal market for a copyrighted work
apportionment of profits flowing from a copyright would ordinarily be considered an infringement."
infringement, this Court has held that an infringer who
commingles infringing and noninfringing elements "must Senate Report at 65.
abide the consequences, unless he can make a
separation of the profits so as to assure to the injured Page 471 U. S. 569
party all that justly belongs to him." Sheldon v. Metro-
Goldwyn Pictures Corp., 309 U. S. 390, 309 U. S. Placed in a broader perspective, a fair use doctrine that
406 (1940). Cf. 17 U.S.C. § 504(b) (the infringer is permits extensive prepublication quotations from an
required to prove elements of profits attributable to other unreleased manuscript without the copyright owner's
than the infringed work). Similarly, once a copyright consent poses substantial potential for damage to the
holder establishes with reasonable probability the marketability of first serialization rights in general.
existence of a causal connection between the
infringement and a loss of revenue, the burden properly
"Isolated instances of minor infringements, when
shifts to the infringer to show that this damage would
multiplied many times, become in the aggregate a major
have occurred had there been no taking of copyrighted
inroad on copyright that must be prevented."
expression. See 3 Nimmer § 14.02, at 14-7 - 14-8.1.
Petitioners established a prima facie case of actual
damage that respondents failed to rebut. See Stevens Ibid.
Linen Associates,
V
The Court of Appeals erred in concluding that The The Background Facts
Nation's use of the copyrighted material was excused by
the public's interest in the subject matter. It erred, as Petitioners Isabelita C. Vinuya and about 70 other elderly
well, in overlooking the unpublished nature of the work women, all members of the Malaya Lolas Organization,
and the resulting impact on the potential market for first filed with the Court in G.R. No. 162230 a special civil
serial rights of permitting unauthorized prepublication action of certiorari with application for preliminary
excerpts under the rubric of fair use. Finally, in finding mandatory injunction against the Executive Secretary,
the taking "infinitesimal," the Court of Appeals accorded the Secretary of Foreign Affairs, the Secretary of Justice,
too little weight to the qualitative importance of the and the Office of the Solicitor General.
quoted passages of original expression. In sum, the
traditional doctrine of fair use, as embodied in the Petitioners claimed that in destroying villages in the
Copyright Act, does not sanction the use made by The Philippines during World War II, the Japanese army
Nation of these copyrighted materials. Any copyright systematically raped them and a number of other
infringer may claim to benefit the public by increasing women, seizing them and holding them in houses or
public access to the copyrighted work. See Pacific & cells where soldiers repeatedly ravished and abused
Southern Co. v. Duncan, 744 F.2d at 1499-1500. But them.
Congress has not designed, and we see no warrant for
judicially imposing, a "compulsory license" permitting
unfettered access to the unpublished copyrighted Petitioners alleged that they have since 1998 been
expression of public figures. approaching the Executive Department, represented by
the respondent public officials, requesting assistance in
filing claims against the Japanese military officers who
The Nation conceded that its verbatim copying of some established the comfort women stations. But that
300 words of direct quotation from the Ford manuscript Department declined, saying that petitioners’ individual
would constitute an infringement unless excused as a claims had already been fully satisfied under the Peace
fair use. Because we find that The Nation's use of these Treaty between the Philippines and Japan.
verbatim excerpts from the unpublished manuscript was
not a fair use, the judgment of the Court of Appeals is
reversed, and the case is remanded for further Petitioners wanted the Court to render judgment,
proceedings consistent with this opinion. compelling the Executive Department to espouse their
claims for official apology and other forms of reparations
against Japan before the International Court of Justice
It is so ordered. and other international tribunals.

On April 28, 2010, the Court rendered judgment

dismissing petitioners’ action. Justice Mariano C. del
Castillo wrote the decision for the Court. The Court
essentially gave two reasons for its decision: it cannot
grant the petition because, first, the Executive
Department has the exclusive prerogative under the
Constitution and the law to determine whether to
espouse petitioners’ claim against Japan; and, second,
the Philippines is not under any obligation in international
law to espouse their claims.

On June 9, 2010, petitioners filed a motion for

reconsideration of the Court’s decision. More than a
A.M. No. 10-7-17-SC               October 15, 2010 month later on July 18, 2010, counsel for petitioners,
Atty. Herminio Harry Roque, Jr., announced in his online
IN THE MATTER OF THE CHARGES OF blog that his clients would file a supplemental petition
PLAGIARISM, ETC., AGAINST ASSOCIATE JUSTICE "detailing plagiarism committed by the court" under the
MARIANO C. DEL CASTILLO. second reason it gave for dismissing the petition and that
"these stolen passages were also twisted to support the
DECISION court’s erroneous conclusions that the Filipino comfort
women of World War Two have no further legal
PER CURIAM: remedies." The media gave publicity to Atty. Roque’s
announcement.
This case is concerned with charges that, in preparing a
decision for the Court, a designated member plagiarized On July 19, 2010, petitioners filed the supplemental
the works of certain authors and twisted their meanings motion for reconsideration that Atty. Roque announced.
to support the decision. It accused Justice Del Castillo of "manifest intellectual
theft and outright plagiarism" 1 when he wrote the
decision for the Court and of "twisting the true intents of
the plagiarized sources … to suit the arguments of the In the meantime, on July 19, 2010, Evan Criddle wrote
assailed Judgment."2 They charged Justice Del Castillo on his blog that he and his co-author Evan Fox-Descent
of copying without acknowledgement certain passages (referred to jointly as Criddle-Descent) learned of alleged
from three foreign articles: plagiarism involving their work but Criddle’s concern,
after reading the supplemental motion for
a. A Fiduciary Theory of Jus Cogens by Evan J. Criddle reconsideration, was the Court’s conclusion that
and Evan Fox-Descent, Yale Journal of International prohibitions against sexual slavery are not jus cogens or
Law (2009); internationally binding norms that treaties cannot
diminish.
b. Breaking the Silence: Rape as an International Crime
by Mark Ellis, Case Western Reserve Journal of On July 23, 2010, Dr. Mark Ellis wrote the Court
International Law (2006); and expressing concern that in mentioning his work, the
Court "may have misread the argument [he] made in the
article and employed them for cross purposes." Dr. Ellis
c. Enforcing Erga Omnes Obligations by Christian J.
said that he wrote the article precisely to argue for
Tams, Cambridge University Press (2005).
appropriate legal remedy for victims of war crimes.
Petitioners claim that the integrity of the Court’s
On August 8, 2010, after the referral of the matter to the
deliberations in the case has been put into question by
Committee for investigation, the Dean of the University
Justice Del Castillo’s fraud. The Court should thus
of the Philippines (U.P.) College of Law publicized a
"address and disclose to the public the truth about the
Statement from his faculty, claiming that
manifest intellectual theft and outright plagiarism" 3 that
the Vinuya decision was "an extraordinary act of
resulted in gross prejudice to the petitioners.
injustice" and a "singularly reprehensible act of
dishonesty and misrepresentation by the Highest Court
Because of the publicity that the supplemental motion for of the land." The statement said that Justice Del Castillo
reconsideration generated, Justice Del Castillo circulated had a "deliberate intention to appropriate the original
a letter to his colleagues, subsequently verified, stating authors’ work," and that the Court’s decision amounted
that when he wrote the decision for the Court he had the to "an act of intellectual fraud by copying works in order
intent to attribute all sources used in it. He said in the to mislead and deceive."5
pertinent part:
On August 18, 2010 Mr. Christian J. Tams wrote Chief
It must be emphasized that there was every intention to Justice Renato C. Corona that, although relevant
attribute all sources, whenever due. At no point was sentences in the Court’s decision were taken from his
there ever any malicious intent to appropriate another’s work, he was given generic reference only in the
work as our own. We recall that this ponencia was thrice footnote and in connection with a citation from another
included in the Agenda of the Court en banc. It was author (Bruno Simma) rather than with respect to the
deliberated upon during the Baguio session on April 13, passages taken from his work. He thought that the form
2010, April 20, 2010 and in Manila on April 27, 2010. of referencing was inappropriate. Mr. Tams was also
Each time, suggestions were made which necessitated concerned that the decision may have used his work to
major revisions in the draft. Sources were re-studied, support an approach to erga omnes concept (obligations
discussions modified, passages added or deleted. The owed by individual States to the community of nations)
resulting decision comprises 34 pages with 78 footnotes. that is not consistent with what he advocated.

xxxx On August 26, 2010, the Committee heard the parties’

submissions in the summary manner of administrative
As regards the claim of the petitioners that the concepts investigations. Counsels from both sides were given
as contained in the above foreign materials were ample time to address the Committee and submit their
"twisted," the same remains their opinion which we do evidence. The Committee queried them on these.
not necessarily share.4
Counsels for Justice Del Castillo later asked to be heard
On July 27, 2010, the Court En Banc referred the with the other parties not in attendance so they could
charges against Justice Del Castillo to its Committee on make submissions that their client regarded as sensitive
Ethics and Ethical Standards, chaired by the Chief and confidential, involving the drafting process that went
Justice, for investigation and recommendation. The Chief into the making of the Court’s decision in the Vinuya
Justice designated retired Justice Jose C. Vitug to serve case. Petitioners’ counsels vigorously objected and the
as consultant of the Committee. He graciously accepted. Committee sustained the objection. After consulting
Justice Del Castillo, his counsels requested the
On August 2, 2010, the Committee directed petitioners to Committee to hear the Justice’s court researcher, whose
comment on Justice Del Castillo’s verified letter. When name need not be mentioned here, explain the research
this was done, it set the matter for hearing. work that went into the making of the decision in
the Vinuya case. The Committee granted the request.
The researcher demonstrated by Power Point The Passages from Tams
presentation how the attribution of the lifted passages to
the writings of Criddle-Descent and Ellis, found in the Petitioners point out that the Vinuya decision lifted
beginning drafts of her report to Justice Del Castillo, passages from Tams’ book, Enforcing Erga Omnes
were unintentionally deleted. She tearfully expressed Obligations in International Law (2006) and used them in
remorse at her "grievous mistake" and grief for having Footnote 69 with what the author thought was a mere
"caused an enormous amount of suffering for Justice Del generic reference. But, although Tams himself may have
Castillo and his family."6 believed that the footnoting in this case was not "an
appropriate form of referencing,"9 he and petitioners
On the other hand, addressing the Committee in reaction cannot deny that the decision did attribute the source or
to the researcher’s explanation, counsel for petitioners sources of such passages. Justice Del Castillo did not
insisted that lack of intent is not a defense in plagiarism pass off Tams’ work as his own. The Justice primarily
since all that is required is for a writer to acknowledge attributed the ideas embodied in the passages to Bruno
that certain words or language in his work were taken Simma, whom Tams himself credited for them. Still,
from another’s work. Counsel invoked the Court’s ruling Footnote 69 mentioned, apart from Simma, Tams’ article
in University of the Philippines Board of Regents v. Court as another source of those ideas.
of Appeals and Arokiaswamy William Margaret
Celine,7 arguing that standards on plagiarism in the The Court believes that whether or not the footnote is
academe should apply with more force to the judiciary. sufficiently detailed, so as to satisfy the footnoting
standards of counsel for petitioners is not an ethical
After the hearing, the Committee gave the parties ten matter but one concerning clarity of writing. The
days to file their respective memoranda. They filed their statement "See Tams, Enforcing Obligations Erga
memoranda in due course. Subsequently after Omnes in International Law (2005)" in the Vinuya
deliberation, the Committee submitted its unanimous decision is an attribution no matter if Tams thought that it
findings and recommendations to the Court. gave him somewhat less credit than he deserved. Such
attribution altogether negates the idea that Justice Del
The Issues Castillo passed off the challenged passages as his own.

This case presents two issues: That it would have been better had Justice Del Castillo
used the introductory phrase "cited in" rather than the
phrase "See" would make a case of mere inadvertent
1. Whether or not, in writing the opinion for the Court in
slip in attribution rather than a case of "manifest
the Vinuya case, Justice Del Castillo plagiarized the
intellectual theft and outright plagiarism." If the Justice’s
published works of authors Tams, Criddle-Descent, and
citations were imprecise, it would just be a case of bad
Ellis.
footnoting rather than one of theft or deceit. If it were
otherwise, many would be target of abuse for every
2. Whether or not Justice Del Castillo twisted the works editorial error, for every mistake in citing pagination, and
of these authors to make it appear that such works for every technical detail of form.
supported the Court’s position in the Vinuya decision.
The Passages from Ellis
The Court’s Rulings and Criddle-Descent

Because of the pending motion for reconsideration in the Petitioners also attack the Court’s decision for lifting and
Vinuya case, the Court like its Committee on Ethics and using as footnotes, without attribution to the author,
Ethical Standards will purposely avoid touching the passages from the published work of Ellis. The Court
merits of the Court’s decision in that case or the made the following statement on page 27 of its decision,
soundness or lack of soundness of the position it has so marked with Footnote 65 at the end:
far taken in the same. The Court will deal, not with the
essential merit or persuasiveness of the foreign author’s
We fully agree that rape, sexual slavery, torture, and
works, but how the decision that Justice Del Castillo
sexual violence are morally reprehensible as well as
wrote for the Court appropriated parts of those works
legally prohibited under contemporary international law.
and for what purpose the decision employed the same.
65 xxx
At its most basic, plagiarism means the theft of another
Footnote 65 appears down the bottom of the page. Since
person’s language, thoughts, or ideas. To plagiarize, as
the lengthy passages in that footnote came almost
it is commonly understood according to Webster, is "to
verbatim from Ellis’ article,10 such passages ought to
take (ideas, writings, etc.) from (another) and pass them
have been introduced by an acknowledgement that they
off as one’s own."8 The passing off of the work of
are from that article. The footnote could very well have
another as one’s own is thus an indispensable element
read:
of plagiarism.
65 In an article, Breaking the Silence: Rape as an The first mention of rape as a specific crime came in
International Crime, Case Western Reserve Journal of December 1945 when Control Council Law No. 10
International Law (2006), Mark Ellis said: The concept of included the term rape in the definition of crimes against
rape as an international crime is relatively new. This is humanity. Law No. 10, adopted by the four occupying
not to say that rape has never been historically powers in Germany, was devised to establish a uniform
prohibited, particularly in war. But modern-day sensitivity basis for prosecuting war criminals in German courts.
to the crime of rape did not emerge until after World War (Control Council for Germany, Law No. 10: Punishment
II. In the Nuremberg Charter, the word rape was not of Persons Guilty of War Crimes, Crimes Against Peace
mentioned. The article on crimes against humanity and Against Humanity, Dec. 20, 1945, 3 Official Gazette
explicitly set forth prohibited acts, but rape was not Control Council for Germany 50, 53 (1946))
mentioned by name. (For example, the Treaty of Amity
and Commerce between Prussia and the United States The 1949 Geneva Convention Relative to the Treatment
provides that in time of war all women and children "shall of Prisoners of War was the first modern-day
not be molested in their persons." The Treaty of Amity international instrument to establish protections against
and Commerce, Between his Majesty the King of Prussia rape for women. Geneva Convention Relative to the
and the United States of America, art. 23, Sept. 10, Protection of Civilian Persons in Time of War, Aug. 12,
1785, U.S.-Pruss., 8 Treaties & Other Int'l Agreements 1949, art. 27, 6 U.S.T. 3316, 75 U.N.T.S. 287 (entry into
Of The U.S. 78, 85. The 1863 Lieber Instructions force Oct. 20, 1950) [hereinafter Fourth Geneva
classified rape as a crime of "troop discipline." (Mitchell, Convention].Furthermore, the ICC, the ICTY, and the
The Prohibition of Rape in International Humanitarian International Criminal Tribunal for Rwanda (ICTR) have
Law as a Norm of Jus cogens: Clarifying the Doctrine, 15 significantly advanced the crime of rape by enabling it to
Duke J. Comp. Int’l. L. 219, 224). It specified rape as a be prosecuted as genocide, a war crime, and a crime
capital crime punishable by the death penalty (Id. at against humanity.
236). The 1907 Hague Convention protected women by
requiring the protection of their "honour." ("Family But, as it happened, the acknowledgment above or a
honour and rights, the lives of persons, and private similar introduction was missing from Footnote 65.
property, as well as religious convictions and practice,
must be respected." Convention (IV) Respecting the
Laws & Customs of War on Land, art. 46, Oct. 18, 1907. Next, petitioners also point out that the following eight
General Assembly resolution 95 (I) of December 11, sentences and their accompanying footnotes appear in
1946 entitled, "Affirmation of the Principles of text on pages 30-32 of the Vinuya decision:
International Law recognized by the Charter of the
Nürnberg Tribunal"; General Assembly document xxx In international law, the term "jus cogens" (literally,
A/64/Add.1 of 1946; See Agreement for the Prosecution "compelling law") refers to norms that command
and Punishment of the Major War Criminals of the peremptory authority, superseding conflicting treaties
European Axis, Aug. 8, 1945, 59 Stat. 1544, 82 U.N.T.S. and custom. Jus cogens norms are considered
279. Article 6(c) of the Charter established crimes peremptory in the sense that they are mandatory, do not
against humanity as the following: admit derogation, and can be modified only by general
international norms of equivalent authority.711avvphi1
CRIMES AGAINST HUMANITY: namely, murder,
extermination, enslavement, deportation, and other Early strains of the jus cogens doctrine have existed
inhumane acts committed against any civilian population, since the 1700s,72 but peremptory norms began to
before or during the war, or persecutions on political, attract greater scholarly attention with the publication of
racial or religious grounds in execution of or in Alfred von Verdross's influential 1937 article, Forbidden
connection with any crime within the Jurisdiction of the Treaties in International Law.73 The recognition of jus
Tribunal, whether or not in violation of the domestic law cogens gained even more force in the 1950s and 1960s
of the country where perpetrated. with the ILC’s preparation of the Vienna Convention on
the Law of Treaties (VCLT).74 Though there was a
The Nuremberg Judgment did not make any reference to consensus that certain international norms had attained
rape and rape was not prosecuted. (Judge Gabrielle Kirk the status of jus cogens,75 the ILC was unable to reach
McDonald, The International Criminal Tribunals Crime a consensus on the proper criteria for identifying
and Punishment in the International Arena,7 ILSA J. Int’l. peremptory norms.
Comp. L. 667, 676.) However, International Military
Tribunal for the Far East prosecuted rape crimes, even After an extended debate over these and other theories
though its Statute did not explicitly criminalize rape. The of jus cogens, the ILC concluded ruefully in 1963 that
Far East Tribunal held General Iwane Matsui, "there is not as yet any generally accepted criterion by
Commander Shunroku Hata and Foreign Minister Hirota which to identify a general rule of international law as
criminally responsible for a series of crimes, including having the character of jus cogens."76 In a commentary
rape, committed by persons under their authority. (The accompanying the draft convention, the ILC indicated
Tokyo Judgment: Judgment Of The International Military that "the prudent course seems to be to x x x leave the
Tribunal For The Far East 445-54 (1977). full content of this rule to be worked out in State practice
and in the jurisprudence of international tribunals."77
Thus, while the existence of jus cogens in international Here, Justice Del Castillo’s researcher did just that. She
law is undisputed, no consensus exists on its electronically "cut" relevant materials from books and
substance,77 beyond a tiny core of principles and journals in the Westlaw website and "pasted" these to a
rules.78 "main manuscript" in her computer that contained the
issues for discussion in her proposed report to the
Admittedly, the Vinuya decision lifted the above, Justice. She used the Microsoft Word program. 12 Later,
including their footnotes, from Criddle-Descent’s article, after she decided on the general shape that her report
A Fiduciary Theory of Jus Cogens. 11 Criddle-Descent’s would take, she began pruning from that manuscript
footnotes were carried into the Vinuya decision’s own those materials that did not fit, changing the positions in
footnotes but no attributions were made to the two the general scheme of those that remained, and adding
authors in those footnotes. and deleting paragraphs, sentences, and words as her
continuing discussions with Justice Del Castillo, her chief
editor, demanded. Parenthetically, this is the standard
The Explanation
scheme that computer-literate court researchers use
everyday in their work.
Unless amply explained, the above lifting from the works
of Ellis and Criddle-Descent could be construed as
Justice Del Castillo’s researcher showed the Committee
plagiarism. But one of Justice Del Castillo’s researchers,
the early drafts of her report in the Vinuya case and
a court-employed attorney, explained how she
these included the passages lifted from the separate
accidentally deleted the attributions, originally planted in
articles of Criddle-Descent and of Ellis with proper
the beginning drafts of her report to him, which report
attributions to these authors. But, as it happened, in the
eventually became the working draft of the decision. She
course of editing and cleaning up her draft, the
said that, for most parts, she did her research
researcher accidentally deleted the attributions.
electronically. For international materials, she sourced
these mainly from Westlaw, an online research service
for legal and law-related materials to which the Court First Finding
subscribes.
The Court adopts the Committee’s finding that the
In the old days, the common practice was that after a researcher’s explanation regarding the accidental
Justice would have assigned a case for study and report, removal of proper attributions to the three authors is
the researcher would source his materials mostly from credible. Given the operational properties of the
available law books and published articles on print. Microsoft program in use by the Court, the accidental
When he found a relevant item in a book, whether for decapitation of attributions to sources of research
one side of the issue or for the other, he would place a materials is not remote.
strip of paper marker on the appropriate page, pencil
mark the item, and place the book on his desk where For most senior lawyers and judges who are not
other relevant books would have piled up. He would later computer literate, a familiar example similar to the
paraphrase or copy the marked out passages from some circumstances of the present case would probably help
of these books as he typed his manuscript on a manual illustrate the likelihood of such an accident happening. If
typewriter. This occasion would give him a clear researcher X, for example, happens to be interested in
opportunity to attribute the materials used to their "the inalienable character of juridical personality" in
authors or sources. connection with an assignment and if the book of the
learned Civilist, Arturo M. Tolentino, happens to have
With the advent of computers, however, as Justice Del been published in a website, researcher X would
Castillo’s researcher also explained, most legal probably show interest in the following passage from that
references, including the collection of decisions of the book:
Court, are found in electronic diskettes or in internet
websites that offer virtual libraries of books and articles. xxx Both juridical capacity and capacity to act are not
Here, as the researcher found items that were relevant rights, but qualities of persons; hence, they cannot be
to her assignment, she downloaded or copied them into alienated or renounced.15
her "main manuscript," a smorgasbord plate of materials
that she thought she might need. The researcher’s xxx
technique in this case is not too far different from that
employed by a carpenter. The carpenter first gets the _____________________________
pieces of lumber he would need, choosing the kinds and 15 3 Von Tuhr 296; 1 Valverde 291.
sizes suitable to the object he has in mind, say a table.
When ready, he would measure out the portions he
needs, cut them out of the pieces of lumber he had Because the sentence has a footnote mark (#15) that
collected, and construct his table. He would get rid of the attributes the idea to other sources, it is evident that
scraps. Tolentino did not originate it. The idea is not a product of
his intellect. He merely lifted it from Von Tuhr and
Valverde, two reputable foreign authors.
When researcher X copies and pastes the above _____________________________
passage and its footnote into a manuscript-in-the-making 43 3 Von Tuhr 296; 1 Valverde 291.
in his computer, the footnote number would, given the
computer program in use, automatically change and As it happened, the Microsoft word program does not
adjust to the footnoting sequence of researcher X’s have a function that raises an alarm when original
manuscript. Thus, if the preceding footnote in the materials are cut up or pruned. The portions that remain
manuscript when the passage from Tolentino was simply blend in with the rest of the manuscript, adjusting
pasted on it is 23, Tolentino’s footnote would the footnote number and removing any clue that what
automatically change from the original Footnote 15 to should stick together had just been severed.
Footnote 24.
This was what happened in the attributions to Ellis and
But then, to be of use in his materials-gathering scheme, Criddle-Descent. The researcher deleted the subject
researcher X would have to tag the Tolentino passage tags and, accidentally, their accompanying footnotes that
with a short description of its subject for easy reference. served as reminder of the sources of the lifted passages.
A suitable subject description would be: "The inalienable With 119 sources cited in the decision, the loss of the 2
character of juridical personality.23" The footnote mark, of them was not easily detectable.
23 From Tolentino, which researcher X attaches to the
subject tag, serves as reminder to him to attribute the Petitioners point out, however, that Justice Del Castillo’s
passage in its final form to Tolentino. After the passage verified letter of July 22, 2010 is inconsistent with his
has been tagged, it would now appear like this: researcher’s claim that the omissions were mere errors
in attribution. They cite the fact that the Justice did not
The inalienable character of juridical personality.23 disclose his researcher’s error in that letter despite the
latter’s confession regarding her mistake even before the
xxx Both juridical capacity and capacity to act are not Justice sent his letter to the Chief Justice. By denying
rights, but qualities of persons; hence, they cannot be plagiarism in his letter, Justice Del Castillo allegedly
alienated or renounced.24 perjured himself and sought to whitewash the case. 13

xxx But nothing in the July 22 letter supports the charge of

false testimony. Justice Del Castillo merely explained
_____________________________ "that there was every intention to attribute all sources
23 From Tolentino. whenever due" and that there was never "any malicious
24 3 Von Tuhr 296; 1 Valverde 291. intent to appropriate another’s work as our own," which
as it turns out is a true statement. He recalled how the
Court deliberated upon the case more than once,
The tag is of course temporary and would later have to
prompting major revisions in the draft of the decision. In
go. It serves but a marker to help researcher X
the process, "(s)ources were re-studied, discussions
maneuver the passage into the right spot in his final
modified, passages added or deleted." Nothing in the
manuscript.
letter suggests a cover-up. Indeed, it did not preclude a
researcher’s inadvertent error.
The mistake of Justice Del Castillo’s researcher is that,
after the Justice had decided what texts, passages, and
And it is understandable that Justice Del Castillo did not
citations were to be retained including those from
initially disclose his researcher’s error. He wrote the
Criddle-Descent and Ellis, and when she was already
decision for the Court and was expected to take full
cleaning up her work and deleting all subject tags, she
responsibility for any lapse arising from its preparation.
unintentionally deleted the footnotes that went with such
What is more, the process of drafting a particular
tags—with disastrous effect.
decision for the Court is confidential, which explained his
initial request to be heard on the matter without the
To understand this, in Tolentino’s example, the attendance of the other parties.
equivalent would be researcher X’s removal during
cleanup of the tag, "The inalienable character of juridical
Notably, neither Justice Del Castillo nor his researcher
personality.23," by a simple "delete" operation, and the
had a motive or reason for omitting attribution for the
unintended removal as well of the accompanying
lifted passages to Criddle-Descent or to Ellis. The latter
footnote (#23). The erasure of the footnote eliminates
authors are highly respected professors of international
the link between the lifted passage and its source,
law. The law journals that published their works have
Tolentino’s book. Only the following would remain in the
exceptional reputations. It did not make sense to
manuscript:
intentionally omit attribution to these authors when the
decision cites an abundance of other sources. Citing
xxx Both juridical capacity and capacity to act are not these authors as the sources of the lifted passages
rights, but qualities of persons; hence, they cannot be would enhance rather than diminish their informative
alienated or renounced.43 value. Both Justice Del Castillo and his researcher gain
nothing from the omission. Thus, the failure to mention
the works of Criddle-Decent and Ellis was xxx Both juridical capacity and capacity to act are not
unquestionably due to inadvertence or pure oversight. rights, but qualities of persons; hence, they cannot be
alienated or renounced.43
Petitioners of course insist that intent is not material in
committing plagiarism since all that a writer has to do, to _____________________________
avoid the charge, is to enclose lifted portions with 43 3 Von Tuhr 296; 1 Valverde 291.
quotation marks and acknowledge the sources from
which these were taken.14 Petitioners point out that the Although the unintended deletion severed the passage’s
Court should apply to this case the ruling in University of link to Tolentino, the passage remains to be attributed to
the Philippines Board of Regents v. Court of Appeals Von Tuhr and Valverde, the original sources that
and Arokiaswamy William Margaret Celine. 15 They argue Tolentino himself cites. The text and its footnote
that standards on plagiarism in the academe should reference cancel out any impression that the passage is
apply with more force to the judiciary. a creation of researcher X. It is the same with the
passages from Criddle-Descent and Ellis. Because such
But petitioners’ theory ignores the fact that plagiarism is passages remained attributed by the footnotes to the
essentially a form of fraud where intent to deceive is authors’ original sources, the omission of attributions to
inherent. Their theory provides no room for errors in Criddle-Descent and Ellis gave no impression that the
research, an unrealistic position considering that there is passages were the creations of Justice Del Castillo. This
hardly any substantial written work in any field of wholly negates the idea that he was passing them off as
discipline that is free of any mistake. The theory places his own thoughts.
an automatic universal curse even on errors that, as in
this case, have reasonable and logical explanations. True the subject passages in this case were reproduced
in the Vinuya decision without placing them in quotation
Indeed, the 8th edition of Black’s Law Dictionary defines marks. But such passages are much unlike the creative
plagiarism as the "deliberate and knowing presentation line from Robert Frost,17 "The woods are lovely, dark,
of another person's original ideas or creative and deep, but I have promises to keep, and miles to go
expressions as one's own."16 Thus, plagiarism before I sleep, and miles to go before I sleep." The
presupposes intent and a deliberate, conscious effort to passages here consisted of common definitions and
steal another’s work and pass it off as one’s own. terms, abridged history of certain principles of law, and
similar frequently repeated phrases that, in the world of
Besides, the Court said nothing in U.P. Board of Regents legal literature, already belong to the public realm.
that would indicate that an intent to pass off another’s
work as one’s own is not required in plagiarism. The To paraphrase Bast and Samuels,18 while the academic
Court merely affirmed the academic freedom of a publishing model is based on the originality of the
university to withdraw a master’s degree that a student writer’s thesis, the judicial system is based on the
obtained based on evidence that she misappropriated doctrine of stare decisis, which encourages courts to cite
the work of others, passing them off as her own. This is historical legal data, precedents, and related studies in
not the case here since, as already stated, Justice Del their decisions. The judge is not expected to produce
Castillo actually imputed the borrowed passages to original scholarship in every respect. The strength of a
others. decision lies in the soundness and general acceptance
of the precedents and long held legal opinions it draws
Second Finding from.

The Court also adopts the Committee’s finding that the Third Finding
omission of attributions to Criddle-Descent and Ellis did
not bring about an impression that Justice Del Castillo Petitioners allege that the decision twisted the passages
himself created the passages that he lifted from their from Tams, Criddle-Descent, and Ellis. The Court adopts
published articles. That he merely got those passages the Committee’s finding that this is not so. Indeed, this
from others remains self-evident, despite the accidental allegation of twisting or misrepresentation remains a
deletion. The fact is that he still imputed the passages to mystery to the Court. To twist means "to distort or
the sources from which Criddle-Descent and Ellis pervert the meaning of."19 For example, if one lifts the
borrowed them in the first place. lyrics of the National Anthem, uses it in his work, and
declares that Jose Palma who wrote it "did not love his
This is best illustrated in the familiar example above. country," then there is "twisting" or misrepresentation of
After the deletion of the subject tag and, accidentally, its what the anthem’s lyrics said. Here, nothing in
footnote which connects to the source, the lifted passage the Vinuya decision said or implied that, based on the
would appear like this: lifted passages, authors Tams, Criddle-Descent, and
Ellis supported the Court’s conclusion that the
Philippines is not under any obligation in international
law to espouse Vinuya et al.’s claims.
The fact is that, first, since the attributions to Criddle- Assigning cases for study and research to a court
Descent and Ellis were accidentally deleted, it is attorney, the equivalent of a "law clerk" in the United
impossible for any person reading the decision to States Supreme Court, is standard practice in the high
connect the same to the works of those authors as to courts of all nations. This is dictated by necessity. With
conclude that in writing the decision Justice Del Castillo about 80 to 100 cases assigned to a Justice in our Court
"twisted" their intended messages. And, second, the each month, it would be truly senseless for him to do all
lifted passages provided mere background facts that the studies and research, going to the library, searching
established the state of international law at various the internet, checking footnotes, and watching the
stages of its development. These are neutral data that punctuations. If he does all these by himself, he would
could support conflicting theories regarding whether or have to allocate at least one to two weeks of work for
not the judiciary has the power today to order the each case that has been submitted for decision. The
Executive Department to sue another country or whether wheels of justice in the Supreme Court will grind to a halt
the duty to prosecute violators of international crimes under such a proposition.
has attained the status of jus cogens.
What is important is that, in this case, Justice Del
Considering how it was impossible for Justice Del Castillo retained control over the writing of the decision
Castillo to have twisted the meaning of the passages he in the Vinuya case without, however, having to look over
lifted from the works of Tams, Criddle-Descent, and Ellis, his researcher’s shoulder as she cleaned up her draft
the charge of "twisting" or misrepresentation against him report to ensure that she hit the right computer keys. The
is to say the least, unkind. To be more accurate, Justice’s researcher was after all competent in the field
however, the charge is reckless and obtuse. of assignment given her. She finished law from a leading
law school, graduated third in her class, served as
No Misconduct Editor-in Chief of her school’s Law Journal, and placed
fourth in the bar examinations when she took it. She
earned a master’s degree in International Law and
On occasions judges and justices have mistakenly cited
Human Rights from a prestigious university in the United
the wrong sources, failed to use quotation marks,
States under the Global-Hauser program, which counsel
inadvertently omitted necessary information from
for petitioners concedes to be one of the top post
footnotes or endnotes. But these do not, in every case,
graduate programs on International Law in the world.
amount to misconduct. Only errors that are tainted with
Justice Del Castillo did not exercise bad judgment in
fraud, corruption, or malice are subject of disciplinary
assigning the research work in the Vinuya case to her.
action.20 This is not the case here. Justice Del Castillo’s
acts or omissions were not shown to have been impelled
by any of such disreputable motives. 21 If the rule were Can errors in preparing decisions be prevented? Not
otherwise, no judge or justice, however competent, until computers cease to be operated by human beings
honest, or dedicated he may be, can ever hope to retire who are vulnerable to human errors. They are hypocrites
from the judiciary with an unblemished record.22 who believe that the courts should be as error-free as
they themselves are.
No Inexcusable Negligence
Incidentally, in the course of the submission of
petitioners’ exhibits, the Committee noted that
Finally, petitioners assert that, even if they were to
petitioners’ Exhibit J, the accusing statement of the
concede that the omission was the result of plain error,
Faculty of the U.P. College of Law on the allegations of
Justice Del Castillo is nonetheless guilty of gross
plagiarism and misinterpretation, was a mere dummy.
inexcusable negligence. They point out that he has full
The whole of the statement was reproduced but the
control and supervision over his researcher and should
signatures portion below merely listed the names of 38
not have surrendered the writing of the decision to the
faculty members, in solid rows, with the letters "Sgd" or
latter.23
"signed" printed beside the names without exception.
These included the name of retired Supreme Court
But this assumes that Justice Del Castillo abdicated the Justice Vicente V. Mendoza, a U.P. professor.
writing of the Vinuya decision to his researcher, which is
contrary to the evidence adduced during the hearing. As
Because the Committee declined to admit a mere
his researcher testified, the Justice set the direction that
dummy of Exhibit J, it directed Atty. Roque to present the
the research and study were to take by discussing the
signed copy within three days of the August 26
issues with her, setting forth his position on those issues,
hearing.25 He complied. As it turned out, the original
and reviewing and commenting on the study that she
statement was signed by only a minority of the faculty
was putting together until he was completely satisfied
members on the list. The set of signatories that
with it.24 In every sense, Justice Del Castillo was in
appeared like solid teeth in the dummy turned out to be
control of the writing of the report to the Court, which
broken teeth in the original. Since only 37 out of the 81
report eventually became the basis for the decision, and
on the list signed the document, it does not appear to be
determined its final outcome.
a statement of the Faculty but of just some of its
members. And retired Justice V. V. Mendoza did not sign
the statement, contrary to what the dummy represented.
The Committee wondered why the Dean submitted a
dummy of the signed document when U.P. has an
abundance of copying machines.
A.M. No. 10-7-17-SC               February 8, 2011
Since the above circumstances appear to be related to
separate en banc matter concerning the supposed IN THE MATTER OF THE CHARGES OF
Faculty statement, there is a need for the Committee to PLAGIARISM, ETC., AGAINST ASSOCIATE JUSTICE
turn over the signed copy of the same to the en banc for MARIANO C. DEL CASTILLO.
its consideration in relation to that matter.
RESOLUTION
WHEREFORE, in view of all of the above, the Court:
PER CURIAM:
1. DISMISSES for lack of merit petitioner Vinuya, et
al.’s charges of plagiarism, twisting of cited materials,
and gross neglect against Justice Mariano C. del Petitioners Isabelita C. Vinuya, et al., all members of the
Castillo; Malaya Lolas Organization, seek reconsideration of the
decision of the Court dated October 12, 2010 that
dismissed their charges of plagiarism, twisting of cited
2. DIRECTS the Public Information Office to send copies materials, and gross neglect against Justice Mariano Del
of this decision to Professors Evan J. Criddle and Evan Castillo in connection with the decision he wrote for the
Fox-Descent, Dr. Mark Ellis, and Professor Christian J. Court in G.R. No. 162230, entitled Vinuya v. Romulo. 1
Tams at their known addresses;
Mainly, petitioners claim that the Court has by its
3. DIRECTS the Clerk of Court to provide all court decision legalized or approved of the commission of
attorneys involved in legal research and reporting with plagiarism in the Philippines. This claim is absurd. The
copies of this decision and to enjoin them to avoid Court, like everyone else, condemns plagiarism as the
editing errors committed in the Vinuya case while using world in general understands and uses the term.
the existing computer program especially when the
volume of citations and footnoting is substantial; and
Plagiarism, a term not defined by statute, has a popular
or common definition. To plagiarize, says Webster, is "to
4. Finally, DIRECTS the Clerk of Court to acquire the steal and pass off as one’s own" the ideas or words of
necessary software for use by the Court that can prevent another. Stealing implies malicious taking. Black’s Law
future lapses in citations and attributions. Dictionary, the world’s leading English law dictionary
quoted by the Court in its decision, defines plagiarism as
Further, the Court DIRECTS the Committee on Ethics the "deliberate and knowing presentation of another
and Ethical Standards to turn over to the en banc the person's original ideas or creative expressions as one’s
dummy as well as the signed copy of petitioners’ Exhibit own."2 The presentation of another person’s ideas as
J, entitled "Restoring Integrity," a statement by the one’s own must be deliberate or premeditated—a taking
Faculty of the University of the Philippines College of with ill intent.
Law for the en banc’s consideration in relation to the
separate pending matter concerning that supposed There is no commonly-used dictionary in the world that
Faculty statement. embraces in the meaning of plagiarism errors in
attribution by mere accident or in good faith.
SO ORDERED.
Certain educational institutions of course assume
different norms in its application. For instance, the
Loyola Schools Code of Academic Integrity ordains that
"plagiarism is identified not through intent but through
the act itself. The objective act of falsely attributing to
one’s self what is not one’s work, whether intentional or
out of neglect, is sufficient to conclude that plagiarism
has occurred. Students who plead ignorance or appeal
to lack of malice are not excused."3

But the Court’s decision in the present case does not set
aside such norm. The decision makes this clear, thus:

To paraphrase Bast and Samuels, while the academic

publishing model is based on the originality of the
writer’s thesis, the judicial system is based on the
doctrine of stare decisis, which encourages courts to cite regardless of whether the parties or property are the
historical legal data, precedents, and related studies in same."6
their decisions. The judge is not expected to produce
original scholarship in every respect. The strength of a And because judicial precedents are not always clearly
decision lies in the soundness and general acceptance delineated, they are quite often entangled in apparent
of the precedents and long held legal opinions it draws inconsistencies or even in contradictions, prompting
from.4 experts in the law to build up regarding such matters a
large body of commentaries or annotations that, in
Original scholarship is highly valued in the academe and themselves, often become part of legal writings upon
rightly so. A college thesis, for instance, should contain which lawyers and judges draw materials for their
dissertations embodying results of original research, theories or solutions in particular cases. And, because of
substantiating a specific view.5 This must be so since the the need to be precise and correct, judges and
writing is intended to earn for the student an academic practitioners alike, by practice and tradition, usually lift
degree, honor, or distinction. He earns no credit nor passages from such precedents and writings, at times
deserves it who takes the research of others, copies omitting, without malicious intent, attributions to the
their dissertations, and proclaims these as his own. originators.
There should be no question that a cheat deserves
neither reward nor sympathy. Is this dishonest? No. Duncan Webb, writing for the
International Bar Association puts it succinctly. When
But the policy adopted by schools of disregarding the practicing lawyers (which include judges) write about the
element of malicious intent found in dictionaries is law, they effectively place their ideas, their language,
evidently more in the nature of establishing what and their work in the public domain, to be affirmed,
evidence is sufficient to prove the commission of such adopted, criticized, or rejected. Being in the public
dishonest conduct than in rewriting the meaning of domain, other lawyers can thus freely use these without
plagiarism. Since it would be easy enough for a student fear of committing some wrong or incurring some liability.
to plead ignorance or lack of malice even as he has Thus:
copied the work of others, certain schools have adopted
the policy of treating the mere presence of such copied The tendency to copy in law is readily explicable. In law
work in his paper sufficient objective evidence of accuracy of words is everything. Legal disputes often
plagiarism. Surely, however, if on its face the student’s centre round the way in which obligations have been
work shows as a whole that he has but committed an expressed in legal documents and how the facts of the
obvious mistake or a clerical error in one of hundreds of real world fit the meaning of the words in which the
citations in his thesis, the school will not be so obligation is contained. This, in conjunction with the risk-
unreasonable as to cancel his diploma. aversion of lawyers means that refuge will often be
sought in articulations that have been tried and tested. In
In contrast, decisions of courts are not written to earn a sense therefore the community of lawyers have
merit, accolade, or prize as an original piece of work or together contributed to this body of knowledge,
art. Deciding disputes is a service rendered by the language, and expression which is common property
government for the public good. Judges issue decisions and may be utilized, developed and bettered by anyone. 7
to resolve everyday conflicts involving people of flesh
and blood who ache for speedy justice or juridical beings The implicit right of judges to use legal materials
which have rights and obligations in law that need to be regarded as belonging to the public domain is not unique
protected. The interest of society in written decisions is to the Philippines. As Joyce C. George, whom Justice
not that they are originally crafted but that they are fair Maria Lourdes Sereno cites in her dissenting opinion,
and correct in the context of the particular disputes observed in her Judicial Opinion Writing Handbook:
involved. Justice, not originality, form, and style, is the
object of every decision of a court of law. A judge writing to resolve a dispute, whether trial or
appellate, is exempted from a charge of plagiarism even
There is a basic reason for individual judges of whatever if ideas, words or phrases from a law review article,
level of courts, including the Supreme Court, not to use novel thoughts published in a legal periodical or
original or unique language when reinstating the laws language from a party’s brief are used without giving
involved in the cases they decide. Their duty is to apply attribution. Thus judges are free to use whatever sources
the laws as these are written. But laws include, under the they deem appropriate to resolve the matter before
doctrine of stare decisis, judicial interpretations of such them, without fear of reprisal. This exemption applies to
laws as are applied to specific situations. Under this judicial writings intended to decide cases for two
doctrine, Courts are "to stand by precedent and not to reasons: the judge is not writing a literary work and,
disturb settled point." Once the Court has "laid down a more importantly, the purpose of the writing is to resolve
principle of law as applicable to a certain state of facts, it a dispute. As a result, judges adjudicating cases are not
will adhere to that principle, and apply it to all future subject to a claim of legal plagiarism. 8
cases, where facts are substantially the same;
If the Court were to inquire into the issue of plagiarism depart, as officers of the court, from the objective of
respecting its past decisions from the time of Chief assisting the Court in the administration of justice.
Justice Cayetano S. Arellano to the present, it is likely to
discover that it has not on occasion acknowledged the As Duncan Webb said:
originators of passages and views found in its decisions.
These omissions are true for many of the decisions that In presenting legal argument most lawyers will have
have been penned and are being penned daily by recourse to either previous decisions of the courts,
magistrates from the Court of Appeals, the frequently lifting whole sections of a judge’s words to
Sandiganbayan, the Court of Tax Appeals, the Regional lend weight to a particular point either with or without
Trial Courts nationwide and with them, the municipal trial attribution. The words of scholars are also sometimes
courts and other first level courts. Never in the judiciary’s given weight, depending on reputation. Some
more than 100 years of history has the lack of attribution encyclopaedic works are given particular authority. In
been regarded and demeaned as plagiarism. England this place is given to Halsbury’s Laws of
England which is widely considered authoritative. A
This is not to say that the magistrates of our courts are lawyer can do little better than to frame an argument or
mere copycats. They are not. Their decisions analyze claim to fit with the articulation of the law in Halsbury’s.
the often conflicting facts of each case and sort out the While in many cases the very purpose of the citation is to
relevant from the irrelevant. They identify and formulate claim the authority of the author, this is not always the
the issue or issues that need to be resolved and case. Frequently commentary or dicta of lesser standing
evaluate each of the laws, rulings, principles, or will be adopted by legal authors, largely without
authorities that the parties to the case invoke. The attribution.
decisions then draw their apt conclusions regarding
whether or not such laws, rulings, principles, or xxxx
authorities apply to the particular cases before the Court.
These efforts, reduced in writing, are the product of the
judges’ creativity. It is here—actually the substance of The converse point is that originality in the law is viewed
their decisions—that their genius, originality, and honest with skepticism. It is only the arrogant fool or the truly
labor can be found, of which they should be proud. gifted who will depart entirely from the established
template and reformulate an existing idea in the belief
that in doing so they will improve it. While over time
In Vinuya, Justice Del Castillo examined and incremental changes occur, the wholesale abandonment
summarized the facts as seen by the opposing sides in a of established expression is generally considered
way that no one has ever done. He identified and foolhardy.9
formulated the core of the issues that the parties raised.
And when he had done this, he discussed the state of
the law relevant to their resolution. It was here that he The Court probably should not have entertained at all the
drew materials from various sources, including the three charges of plagiarism against Justice Del Castillo,
foreign authors cited in the charges against him. He coming from the losing party. But it is a case of first
compared the divergent views these present as they impression and petitioners, joined by some faculty
developed in history. He then explained why the Court members of the University of the Philippines school of
must reject some views in light of the peculiar facts of law, have unfairly maligned him with the charges of
the case and applied those that suit such facts. Finally, plagiarism, twisting of cited materials, and gross neglect
he drew from his discussions of the facts and the law the for failing to attribute lifted passages from three foreign
right solution to the dispute in the case. On the whole, authors. These charges as already stated are false,
his work was original. He had but done an honest work. applying the meaning of plagiarism as the world in
general knows it.
The Court will not, therefore, consistent with established
practice in the Philippines and elsewhere, dare permit True, Justice Del Castillo failed to attribute to the foreign
the filing of actions to annul the decisions promulgated authors materials that he lifted from their works and used
by its judges or expose them to charges of plagiarism for in writing the decision for the Court in the Vinuya case.
honest work done. But, as the Court said, the evidence as found by its
Ethics Committee shows that the attribution to these
authors appeared in the beginning drafts of the decision.
This rule should apply to practicing lawyers as well. Unfortunately, as testified to by a highly qualified and
Counsels for the petitioners, like all lawyers handling experienced court-employed researcher, she
cases before courts and administrative tribunals, cannot accidentally deleted the same at the time she was
object to this. Although as a rule they receive cleaning up the final draft. The Court believed her since,
compensation for every pleading or paper they file in among other reasons, she had no motive for omitting the
court or for every opinion they render to clients, lawyers attribution. The foreign authors concerned, like the
also need to strive for technical accuracy in their dozens of other sources she cited in her research, had
writings. They should not be exposed to charges of high reputations in international law.1awphi1
plagiarism in what they write so long as they do not
Notably, those foreign authors expressly attributed the
controversial passages found in their works to earlier
writings by others. The authors concerned were not
themselves the originators. As it happened, although the
ponencia of Justice Del Castillo accidentally deleted the
attribution to them, there remained in the final draft of the
decision attributions of the same passages to the earlier
writings from which those authors borrowed their ideas in
the first place. In short, with the remaining attributions
after the erroneous clean-up, the passages as it finally
appeared in the Vinuya decision still showed on their
face that the lifted ideas did not belong to Justice Del
Castillo but to others. He did not pass them off as his
own.

With our ruling, the Court need not dwell long on G.R. Nos. 76649-51 August 19, 1988
petitioners’ allegations that Justice Del Castillo had also
committed plagiarism in writing for the Court his decision
20TH CENTURY FOX FILM CORPORATION, petitioner,
in another case, Ang Ladlad v. Commission on
vs.
Elections.10 Petitioners are nit-picking. Upon close
COURT OF APPEALS, EDUARDO M. BARRETO,
examination and as Justice Del Castillo amply
RAUL SAGULLO and FORTUNE
demonstrated in his comment to the motion for
LEDESMA, respondents.
reconsideration, he in fact made attributions to passages
in such decision that he borrowed from his sources
although they at times suffered in formatting lapses. GUTIERREZ, JR., J.:

Considering its above ruling, the Court sees no point in The petitioner questions the application of the
further passing upon the motion of the Integrated Bar of constitutional provision against illegal searches and
the Philippines for leave to file and admit motion for seizures to raids conducted in connection with the
reconsideration-in-intervention dated January 5, 2011 government's anti-film piracy campaign. The main issue
and Dr. Peter Payoyo’s claim of other instances of hinges on whether or not the judge properly lifted the
alleged plagiarism in the Vinuya decision. search warrants he issued earlier upon the application of
the National Bureau of Investigation on the basis of the
complaint filed by the petitioner.
ACCORDINGLY, the Court DENIES petitioners’ motion
for reconsideration for lack of merit.
In a letter-complaint dated August 26, 1985, petitioner
20th Century Fox Film Corporation through counsel
SO ORDERED.
sought the National Bureau of Investigation's (NBI)
assistance in the conduct of searches and seizures in
connection with the latter's anti-film piracy campaign.
Specifically, the letter-complaint alleged that certain
videotape outlets all over Metro Manila are engaged in
the unauthorized sale and renting out of copyrighted
films in videotape form which constitute a flagrant
violation of Presidential Decree No. 49 (otherwise known
as the Decree on the Protection of Intellectual Property).

Acting on the letter-complaint, the NBI conducted

surveillance and investigation of the outlets pinpointed
by the petitioner and subsequently filed three (3)
applications for search warrants against the video outlets
owned by the private respondents. The applications
were consolidated and heard by the Regional Trial Court
of Makati, Branch 132.

On September 4, 1985, the lower court issued the

desired search warrants.

Armed with the search warrants, the NBI accompanied

by the petitioner's agents, raided the video outlets and
seized the items described therein. An inventory of the
items seized was made and left with the private The right of the people to be secure in their persons,
respondents. houses, papers, and effects against unreasonable
searches and seizures of whatever nature and for any
Acting on a motion to lift search warrants and release purpose shall be inviolable, and no search warrant or
seized properties filed by the private respondents, the warrant of arrest shall issue except upon probable cause
lower court issued an order dated October 8, 1985, lifting to be determined personally by the judge after
the three (3) search warrants issued earlier against the examination under oath or affirmation of the complainant
private respondents by the court. The dispositive portion and the witnesses he may produce, and particularly
of the order reads: describing the place to be searched and the persons or
things to be seized.
WHEREFORE, the Court hereby orders that Search
Warrants Nos. SW- 85-024; issued against Eduardo M. This constitutional right protects a citizen against wanton
Barreto of the Junction Video, etc., Paranaque, Metro and unreasonable invasion of his privacy and liberty as
Manila; SW No. 85-025, issued against Raul M. Sagullo to his person, papers and effects. We have explained in
of South Video Bug Center, Inc., etc., also of No. 5355 the case of People v. Burgos (144 SCRA 1)
Pres. Avenue BF Homes, Parañaque, Metro Manila; and citing Villanueva v. Querubin (48 SCRA 345) why the
SW No. 85-026, issued against Fortune A. Ledesma of right is so important:
Sonix Video Services of San Antonio Plaza, Forbes
Park, Makati, Metro Manila, be lifted. It is deference to one's personality that lies at the core of
this right, but it could be also looked upon as a
Consequently, the articles listed in the returns of the recognition of a constitutionally protected area, primarily
three search warrants which could not be a basis of any one's home, but not necessarily thereto confined. (Cf.
criminal prosecution, now in the possession of the Hoffa v. United States, 385 US 293 119661) What is
National Bureau of Investigation which under the law sought to be guarded is a man's prerogative to choose
must be delivered to this Court, but which the NBI failed who is allowed entry to his residence. In that haven of
to do, are hereby ordered to be returned to their owners refuge, his individuality can assert itself not only in the
through their lawyer, Atty. Benito Salazar or his agents choice of who shall be welcome but likewise in the kind
or representatives, against proper receipt, to be of objects he wants around him. There the state,
forwarded to this Court for record purposes, as proof that however powerful, does not as such have access except
said properties have been returned to the possession of under the circumstances above noted, for in the
the rightful owners." (p. 34, Rollo) traditional formulation, his house, however humble, is his
castle. Thus is outlawed any unwarranted intrusion by
government, which is called upon to refrain from any
The lower court denied a motion for reconsideration filed
invasion of his dwelling and to respect the privacies of
by the petitioner in its order dated January 2, 1986.
his life. (Cf Schmerber v. California, 384 US 757 [1966],
Brennan, J. and Boyd v. United States, 116 630 [1886]).
The petitioner filed a petition for certiorari with the Court In the same vein, Landynski in his authoritative work
of Appeals to annul the October 8, 1985 and January 2, (Search and Seizure and the Supreme Court [1966]),
1986 orders of the lower court. The petition was could fitly characterize constitutional right as the
dismissed. embodiment of a "spiritual concept: the belief that to
value the privacy of home and person and to afford its
Hence, this petition. constitutional protection against the long reach of
government is no less than to value human dignity, and
The main issue hinges on the meaning of "probable that his privacy must not be disturbed except in case of
cause" within the context of the constitutional provision overriding social need, and then only under stringent
against illegal searches and seizures (Section 3, Article procedural safeguards."(ibid, p. 74).
IV, 1973 Constitution, now, Section 2, Article Ill, 1987
Constitution. The government's right to issue search warrants against
a citizen's papers and effects is circumscribed by the
The petitioner maintains that the lower court issued the requirements mandated in the searches and seizures
questioned search warrants after finding the existence of provision of the Constitution.
a probable cause justifying their issuance. According to
the petitioner, the lower court arrived at this conclusion In the case of Burgos, Sr. v. Chief of Staff, AFP (133
on the basis of the depositions of applicant NBI's two SCRA 800), we defined probable cause for a valid
witnesses which were taken through searching questions search "as such facts and circumstances which would
and answers by the lower court. lead a reasonably discreet and prudent man to believe
that an offense has been committed and that the objects
Section 2, Article III of the present Constitution which sought in connection with the offense are in the place
substantially reproduces Section 3, Article IV of the 1973 sought to be searched." This constitutional provision also
Constitution on illegal searches and seizures provides: demands "no less than personal knowledge by the
complainant or his witnesses of the facts upon which the
issuance of a search warrant may be justified" in order to This doctrine has never been overturned, and as a
convince the judge, not the individual making the matter of fact it had been enshrined in the Bill of Rights
affidavit and seeking the issuance of the warrant, of the in our 1973 Constitution.
existence of a probable cause. (Alvarez v. Court of First
Instance, 64 Phil. 33; Burgos, Sr. v. Chief of Staff, So that lacking in persuasive effect, the allegation that
AFP, supra). master tapes were viewed by the NBI and were
compared to the purchased and seized video tapes from
In the instant case, the lower court lifted the three the respondents' establishments, it should be dismissed
questioned search warrants against the private as not supported by competent evidence and for that
respondents on the ground that it acted on the matter the probable cause hovers in that grey debatable
application for the issuance of the said search warrants twilight zone between black and white resolvable in favor
and granted it on the misrepresentations of applicant NBI of respondents herein.
and its witnesses that infringement of copyright or a
piracy of a particular film have been committed. Thus the But the glaring fact is that 'Cocoon,' the first video tape
lower court stated in its questioned order dated January mentioned in the search warrant, was not even duly
2,1986: registered or copyrighted in the Philippines. (Annex C of
Opposition p. 152 record). So, that lacking in the
According to the movant, all three witnesses during the requisite presentation to the Court of an alleged master
proceedings in the application for the three search tape for purposes of comparison with the purchased
warrants testified of their own personal knowledge. Yet, evidence of the video tapes allegedly pirated and those
Atty. Albino Reyes of the NBI stated that the counsel or seized from respondents, there was no way to determine
representative of the Twentieth Century Fox Corporation whether there really was piracy, or copying of the film of
will testify on the video cassettes that were pirated, so the complainant Twentieth Century Fox." (pp. 37-39,
that he did not have personal knowledge of the alleged Rollo)
piracy. The witness Bacani also said that the video
cassettes were pirated without stating the manner it was xxx xxx xxx
pirated and that it was Atty. Domingo that has knowledge
of that fact. The lower court, therefore, lifted the three (3) questioned
search warrants in the absence of probable cause that
On the part of Atty. Domingo, he said that the re-taping the private respondents violated P.D. 49. As found out
of the allegedly pirated tapes was from master tapes by the court, the NBI agents who acted as witnesses did
allegedly belonging to the Twentieth Century Fox, not have personal knowledge of the subject matter of
because, according to him, it is of his personal their testimony which was the alleged commission of the
knowledge. offense by the private respondents. Only the petitioner's
counsel who was also a witness during the application
At the hearing of the Motion for Reconsideration, Senior for the issuance of the search warrants stated that he
NBI Agent Atty. Albino Reyes testified that when the had personal knowledge that the confiscated tapes
complaint for infringement was brought to the NBI, the owned by the private respondents were pirated tapes
master tapes of the allegedly pirated tapes were shown taken from master tapes belonging to the petitioner.
to him and he made comparisons of the tapes with those However, the lower court did not give much credence to
purchased by their man Bacani. Why the master tapes or his testimony in view of the fact that the master tapes of
at least the film reels of the allegedly pirated tapes were the allegedly pirated tapes were not shown to the court
not shown to the Court during the application gives some during the application.
misgivings as to the truth of that bare statement of the
NBI agent on the witness stand. " All these factors were taken into consideration by the
lower court when it lifted the three questioned search
Again as the application and search proceedings is a warrants. There is no truth, therefore, to the petitioner's
prelude to the filing of criminal cases under PD 49, the allegation that the lower court based its January 2, 1986
copyright infringement law, and although what is order only "on the fact that the original or master copies
required for the issuance thereof is merely the presence of the copyrighted films were not presented during the
of probable cause, that probable cause must be application for search warrants, thus leading it to
satisfactory to the Court, for it is a time- honored precept conclude that it had been "misled by the applicant and
that proceedings to put a man to task as an offender his witnesses." (p. 17, Rollo)
under our laws should be interpreted in strictissimi
juris against the government and liberally in favor of the The presentation of the master tapes of the copyrighted
alleged offender. films from which the pirated films were allegedly copied,
was necessary for the validity of search warrants against
xxx xxx xxx 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 purposes of the subversive organizations known as
probable cause exists to justify the issuance of the Movement for Free Philippines, Light-a-Fire Movement
search warrants is not meritorious. The court cannot and April 6 Movement; and
presume that duplicate or copied tapes were necessarily
reproduced from master tapes that it owns. 3] Motor vehicles used in the distribution/circulation of
the 'WE FORUM and other subversive materials and
The application for search warrants was directed against propaganda, more particularly,
video tape outlets which allegedly were engaged in the
unauthorized sale and renting out of copyrighted films 1] Toyota-Corolla, colored yellow with Plate No. NKA
belonging to the petitioner pursuant to P.D. 49. 892;

The essence of a copyright infringement is the similarity 2] DATSUN pick-up colored white with Plate No. NKV
or at least substantial similarity of the purported pirated 969;
works to the copyrighted work. Hence, the applicant
must present to the court the copyrighted films to 3] A delivery truck with Plate No. NBS 542;
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 4] TOYOTA-TAMARAW, colored white with Plate No.
of the copyrighted films to the pirated films must be PBP 665;and,
established to satisfy the requirements of probable
cause. Mere allegations as to the existence of the 5] TOYOTA Hi-Lux, pick-up truck with Plate No. NGV
copyrighted films cannot serve as basis for the issuance 472 with marking "Bagong Silang."
of a search warrant.
In Stanford v. State of Texas (379 U.S. 476,13 L ed 2nd
Furthermore, we note that the search warrants described 431), the search warrant which authorized the search for
the articles sought to be seized as follows: 'books, records, pamphlets, cards, receipts, lists,
memoranda, pictures, recordings and other written
xxx xxx xxx instruments concerning the Communist Parties of Texas,
and the operations of the Community Party in Texas,"
was declared void by the U.S. Supreme Court for being
xxx xxx xxx too general. In like manner, directions to "seize any
evidence in connection with the violation of SDC 13-
c) Television sets, Video Cassettes Recorders, 3703 or otherwise' have been held too general, and that
rewinders, tape head cleaners, accessories, equipments portion of a search warrant which authorized the seizure
and other machines used or intended to be used in the of any "paraphernalia which could be used to violate
unlawful reproduction, sale, rental/lease distribution of Sec. 54-197 of the Connecticut General Statutes [the
the above-mentioned video tapes which she is keeping statute dealing with the crime of conspiracy]"' was held
and concealing in the premises above-described." (p. 26, to be a general warrant, and therefore invalid (68 Am.
Rollo) Jur. 2d., pp. 736-737). The description of the articles
sought to be seized under the search warrants in
In the case of Burgos v. Chief of Staff, AFP supra, we question cannot be characterized differently. (at pp. 814-
stated: 815)

xxx xxx xxx Undoubtedly, a similar conclusion can be deduced from

the description of the articles sought to be confiscated
Another factor which makes the search warrants under under the questioned search warrants.
consideration constitutionally objectionable is that they
are in the nature of general warrants. The search Television sets, video cassette recorders, reminders and
warrants describe the articles sought to be seized in this tape cleaners are articles which can be found in a video
wise: tape store engaged in the legitimate business of lending
or renting out betamax tapes. In short, these articles and
l] All printing equipment, paraphernalia, paper, ink, photo appliances are generally connected with, or related to a
equipment, typewriters, cabinets, tables legitimate business not necessarily involving piracy of
communications/recording equipment, tape recorders, intellectual property or infringement of copyright laws.
dictaphone and the like used and/or connected in the Hence, including these articles without specification
printing of the 'WE FORUM' newspaper and any and all and/or particularity that they were really instruments in
document/communications, letters and facsimile of prints violating an Anti-Piracy law makes The search warrant
related to "WE FORUM" newspaper. too general which could result in the confiscation of all
items found in any video store. In fact, this actually
happened in the instant case. Thus, the lower court, in
2] Subversive documents, pamphlets, leaflets, books,
its questioned order dated October 8, 1985 said:
and other publications to promote the objectives and
Although the applications and warrants themselves is also an indication of the widespread breakdown of
covered certain articles of property usually found in a national order and discipline. Courts should not impose
video store, the Court believes that the search party any unnecessary roadblocks in the way of the anti-film
should have confined themselves to articles that are piracy campaign. However, the campaign cannot ignore
according to them, evidence constitutive of infringement or violate constitutional safeguards. To say that the
of copyright laws or the piracy of intellectual property, but problem of pirated films can be solved only by the use of
not to other articles that are usually connected with, or unconstitutional shortcuts is to denigrate the long history
related to, a legitimate business, not involving piracy of and experience behind the searches and seizures clause
intellectual property, or infringement of copyright laws. of the Bill of Rights. The trial court did not commit
So that a television set, a rewinder, and a whiteboard reversible error.
listing Betamax tapes, video cassette cleaners video
cassette recorders as reflected in the Returns of Search WHEREFORE, the instant petition is DISMISSED. The
Warrants, are items of legitimate business engaged in questioned decision and resolution of the Court of
the video tape industry, and which could not be the Appeals are AFFIRMED.
subject of seizure, The applicant and his agents
therefore exceeded their authority in seizing perfectly SO ORDERED.
legitimate personal property usually found in a video
cassette store or business establishment." (p. 33, Rollo)

All in all, we find no grave abuse of discretion on the part

of the lower court when it lifted the search warrants it
earlier issued against the private respondents. We agree
with the appellate court's findings to the effect that:

An assiduous examination of the assailed orders reveal

that the main ground upon which the respondent Court
anchored said orders was its subsequent findings that it
was misled by the applicant (NBI) and its witnesses 'that
infringement of copyright or a piracy of a particular film
have been committed when it issued the questioned
warrants.' Stated differently, the respondent Court
G.R. No. 96597-99 October 6, 1994
merely corrected its erroneous findings as to the
existence of probable cause and declared the search
and seizure to be unreasonable. Certainly, such action is COLUMBIA PICTURES, INC., ORION PICTURES
within the power and authority of the respondent Court to CORP., PARAMOUNT PICTURES CORP.,
perform, provided that it is not exercised in an TWENTIETH CENTURY FOX FILM CORP., UNITED
oppressive or arbitrary manner. Indeed, the order of the ARTISTS CORP., UNIVERSAL CITY STUDIOS, INC.,
respondent Court declaring the existence of probable WALT DISNEY COMPANY and WARNER BROS.,
cause is not final and does not constitute  res judicata. INC., petitioners,
vs.
HON. COURT OF APPEALS, TUBE VIDEO
A careful review of the record of the case shows that the
ENTERPRISES and EDWARD CHAM, BLOOMING
respondent Court did not commit a grave abuse of
ROSE TAPE CENTER and MA. JAJORIE T. UY, and
discretion when it issued the questioned orders. Grave
VIDEO CHANNEL and LYDIA NABONG, respondents.
abuse of discretion' implies such capricious and
whimsical exercise of judgment as is equivalent to lack
of jurisdiction, or, in other words, where the power is G.R. No. 97156 October 6, 1994
exercised in an arbitrary or despotic manner by reason
of passion or personal hostility, and it must be so patent COLUMBIA PICTURES INDUSTRIES, INC., ORION
and gross as to amount to an evasion of positive duty or PICTURES CORPORATION, PARAMOUNT PICTURES
to a virtual refusal to perform the duty enjoined or to act CORP., TWENTIETH CENTURY FOX FILM CORP.,
at all in contemplation of law.' But far from being MGM/UA COMMUNICATIONS COMPANY,
despotic or arbitrary, the assailed orders were motivated UNIVERSAL CITY STUDIOS, INC., THE WALT
by a noble desire of rectifying an error, much so when DISNEY COMPANY, and WARNER BROS.,
the erroneous findings collided with the constitutional INC., petitioners,
rights of the private respondents. In fact, the petitioner vs.
did not even contest the righteousness and legality of the HON. COURT OF APPEALS, FOX'S VIDEO, INC. and
questioned orders but instead concentrated on the ALFREDO ONGYANGCO., respondents.
alleged denial of due process of law." (pp. 44-45, Rollo)
RESOLUTION
The proliferation of pirated tapes of films not only
deprives the government of much needed revenues but VITUG, J.:
On 07 April 1988, the National Bureau of Investigation 1. There is no probable cause nor the existence of a
("NBI"), through its Agent Lauro C. Reyes, filed with the satisfactory fact upon which the search warrant is based;
Regional Trial Court of Pasig
(Branch 159) three applications for search warrant 2. The National Bureau of Investigation has no authority
against private respondents Tube Video Enterprises and nor the jurisdiction to initiate the filing of suit against the
Edward C. Cham (ASW No. 95), the Blooming Rose defendants;
Tape Center and Ma. Jajorie T. Uy (ASW No. 96), and
the Video 3. The confiscation of defendants' seized articles based
Channel and Lydia Nabong (ASW No. 97), charging said on the questioned search warrant violated the latter's
respondents with violation of Section 56 of Presidential constitutional right against deprivation of properties
Decree ("P.D.") No. 49, otherwise known as the Decree without due process.
on the Protection of Intellectual Property, as amended by
P.D. No. 1988.
4. The films in question are not protected by Pres.
Decree
In the three applications for search warrant, NBI Agent No. 1988 in that they were never registered in the
Reyes stated under oath that the respondents had in National Library as a condition precedent to the
their possession and control — availment of the protection secured by that decree. The
complaint has acquired no right under the same.
1. (p)irated video tapes of the copyrighted motion
pictures/films the titles of which are mentioned in the 5. The mere publication by complainant of its alleged
attached list; ownership over the films in question does not ipso
facto vest in the right to proceed under P.D. No. 49 as
2. (p)osters, advertising leaflets, flyers, brochures, that law requires official registration. Moreover, the said
invoices, journals, ledgers, job order slips, delivery slips, publication took place only after the application for the
stickers and books of account bearing and/or mentioned questioned search warrant.2
the pirated films with titles . . ., or otherwise used in the
videogram business or activities of the defendants; sold, In SW No. 96
leased, distributed or possessed for the purpose of sale,
lease, distribution, circulation or public exhibition,
journals, ledgers, job order slips, delivery slips, stickers 1. The complainants, one Rico V. Domingo and one
and books of accounts used in the unlawful videogram Rene C. Baltazar, in representation of the Motion Picture
business or activities of the defendants; (and) Association of America, Inc., have not proven nor
established their ownership over the films listed in Annex
"A" of the search warrant issued by this Honorable Court
3. (t)elevision sets, video cassette and/or laser disc against the defendants herein.
recorders, dubbing machines, rewinders, film projectors,
U-matic machines, image enhancers, dubbing machines,
tape head cleaners, converters, accessories, equipment 2. The information provided by the National Bureau of
and other machines and paraphernalia, materials or Investigation agents and the representatives of the
empty/erasable video tapes and master copies used or MPAA, Inc. are replete with generalities insofar as the
intended to be used in the unlawful exhibition, showing, description of the items to be concerned in violation of
reproduction, sale lease or disposition of videograms the provisions of Sec. 3 of Rule 126 of the Rules of
they are keeping and concealing in the premises Court. Their allegations as to the offense are
abovedescribed. 1 presumptuous and speculative in violation of the same
section of the Rules of Court.3
Acting on the applications, then Regional Trial Court
Judge Maria Private respondents in SW No. 97 adopted the motions
Alicia M. Austria conducted a joint hearing during which filed for the quashal of both SW No. 95 and SW No. 96.
she made a personal examination of the applicant and
his witnesses. Finding just and probable cause for Herein petitioners (the private complainants in the three
granting the application at the time, Judge Austria issued cases), namely, Columbia Pictures Entertainment, Inc.,
the corresponding Search Warrants ("SW") numbered Orion Pictures Corporation, Twentieth Century Fox Film
95, 96, and 97. Corporation, MGM/UA Communications Company,
Universal City Studios, Inc., Walt Disney Company and
Private respondents filed their respective motions to Warner Bros., Inc., submitted their oppositions to the
quash the three search warrants, citing as grounds motions to quash. The movants, herein private
therefor the following: respondents, filed their replies to the oppositions and
sought, simultaneously, the release of the items seized.
After a rejoinder was filed, the court a quo  considered all
In SW No. 95 the incidents submitted for resolution.
In a Joint Order, issued on 09 December 1988, Judge Petitioners appealed the order of Judge Austria to the
Austria defined the issues raised in the motions to quash Court of Appeals, docketed CA-G.R. CV No. 22133-
thusly: 22135, assigning the following alleged errors:

1. Whether or not the NBI had authority to file the 1. The Court a quo erred in ruling that private
application for search warrant; whether or not it is the complainants were uncertain of their ownership of the
Videogram Regulatory Board under P.D. No. 1987 which titles subject of the pirated video tapes.
has exclusive jurisdiction to file suits against violators of
said law. 2. The Court a quo  erred in ordering the quashal of the
search warrants on the ground that the requirement of
2. Whether or not this Court observed due process of producing the "master tapes" during the application for a
law before issuing the search warrants in question. search warrant, as enunciated in the 20th Century
Fox case, promulgated on 19 August 1988, was
3. Whether or not search warrants Nos. 95, 96 and 97 applicable to the facts of the instant case which
are general warrants and therefore void. transpired on 07 April 1988, and that the same was not
complied with.
4. Whether or not there was probable cause in the
issuance of the search warrants pursuant to Section 3, 3. The Court a quo erred in ruling that appellants do not
Rule 126 of the 1985 Rules on Criminal Procedure and have a protectable copyright under Philippine laws for
Section 2, Article III of the 1987 Constitution of the their failure to comply with the deposit and registration
Republic of the Philippines. requirements of Presidential Decree No. 49, as amended
by Presidential Decree No. 1988.6
5. Whether or not private complainants who are
members of the Motion Picture Association of America, On 31 October 1990, the Court of Appeals, through
Inc. (MPAA for brevity) through their counsel, Atty. Rico Justice Salome A. Montoya, rendered its decision
Domingo, have sufficiently proven their ownership over sustaining petitioners' first and third assignment of errors
the alleged pirated video tapes of the copyrighted motion but rejecting petitioners' second assignment of error. It,
pictures/films. therefore, still affirmed the quashal of the search
warrants.
6. Whether or not the items seized by the NBI agents by
virtue of SW Nos. 95, 96 and 97 may be ordered Hence, this petition (G.R. No. 96597-99). Another
released to defendants. 4 decision rendered by the Court of Appeals in another
case (CA-G.R. No. 20617), involving the same
petitioners on substantially identical facts and issues,
Anent the first three issues, Judge Austria ruled that the
was also brought before this Court (G.R. No. 97156). In
NBI had the authority to apply for the search warrants;
a Resolution, dated 06 March 1991, this Court
that in the issuance of the search warrants, due process
consolidated the two petitions.
of law was duly observed; and that the questioned
search warrants were not general in character since the
provision of law violated, i.e., Sec. 56 of P.D. No. 49, as We affirm the decisions of the Court of Appeals.
amended by P.D. No. 1988, was clearly specified. Judge
Austria, nonetheless, reversed her former stand initially This Court, in 20th Century Fox Film Corp. vs. Court of
finding probable cause for the issuance of the search Appeals (164 SCRA 655) has already laid down the rule
warrants and ordered the quashal of the search warrants that a basic requirement for the validity of search
giving the following reasons: warrants, in cases of this nature, is the presentation of
the master tapes of the copyrighted films from which
1. Private complainants were uncertain of their pirated films are supposed to have been copied. We
ownership of the titles subject of the seized video tapes; quote:

2. Complainants did not comply with the requirement that The presentation of the master tapes of the copyrighted
the master tapes should be presented during the films from which the pirated films were allegedly copied,
application for search warrants; and 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
3. Private complainants cannot seek the protection of
of the master tapes at the time of application may not be
Philippine laws as they failed to comply with the deposit
necessary as these would be merely evidentiary in
and registration requirements of P.D. No. 49 as
nature and not determinative of whether or not a
amended by P.D. No. 1988.5
probable cause exists to justify the issuance of the
search warrants is not meritorious. The court cannot
Judge Austria thus ordered the return of all the items presume that duplicate or copied tapes were necessarily
seized by virtue of the warrants. 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.

We also fully concur with the Court of Appeals when, in

resolving petitioners' motion for reconsideration in CA-
G.R. CV No. 22133-35, it ratiocinated thusly:

It is not correct to say that "the basic fact" to be proven

to establish probable cause in the instant cases is not
the "unauthorized transfer" of a motion picture that has
been recorded but the "sale, lease, or distribution of
pirated video tapes of copyrighted films."

In applying for the search warrants the NBI charged

violation of the entire provisions of Section 56 of P.D.
No. 49 as amended by P.D.
No. 1988. This included not only the sale, lease or
distribution of pirated tapes but also the transfer or
causing to be transferred of any sound recording or
motion picture or other audio visual work.
[G.R. No. 110318. August 28, 1996.]
But even assuming, as appellants argue, that only the
sale, lease, or distribution of pirated video tapes is COLUMBIA PICTURES, INC., ORION PICTURES
involved, the fact remains that there is need to establish CORPORATION, PARAMOUNT PICTURES
probable cause that the tapes being sold, leased or CORPORATION, TWENTIETH CENTURY FOX FILM
distributed are pirated tapes, hence the issue reverts CORPORATION, UNITED ARTISTS CORPORATION,
back to the question of whether there was unauthorized UNIVERSAL CITY STUDIOS, INC., THE WALT
transfer, directly or indirectly, of a sound recording or DISNEY COMPANY, and WARNER BROTHERS,
motion picture or other audio visual work that has been INC., Petitioners, v. COURT OF APPEALS,
recorded. 7 SUNSHINE HOME VIDEO, INC. and DANILO A.
PELINDARIO, Respondents.
With due respect to petitioners, the Court does not see a
compelling reason to reexamine its previous position on
the issue. SYLLABUS

WHEREFORE, in view of the foregoing, the instant

1. COMMERCIAL LAW; CORPORATION CODE;
petitions are hereby DENIED for lack of merit.
FOREIGN CORPORATIONS NOT DOING BUSINESS
IN THE PHILIPPINES MAY SUE IN PHILIPPINE
SO ORDERED. COURTS; LICENSE NOT NECESSARY. — The
obtainment of a license prescribed by Section 125 of the
Corporation Code is not a condition precedent to the
maintenance of any kind of action in Philippine courts by
foreign corporation. However, under the aforequoted
provision, no foreign corporation shall be permitted to
transact business in the Philippines, as this phrase is
understood under the Corporation Code, unless it shall DISTRIBUTION RIGHTS OF FILMS, NOT AN
have the license required by law, and until it complies INDICATION OF "DOING BUSINESS." - The fact that
with the law in transacting business here, it shall not be petitioners are admittedly copyright owners or owners of
permitted to maintain any suit in local courts. As thus exclusive distribution rights in the Philippines motion
interpreted, any foreign corporation not doing business in pictures or films does not convert such ownership into an
the Philippines may maintain an action in our courts indicium of doing business which would require them to
upon any cause of action, provided that the subject obtain a license before they can sue upon a cause of
matter and the defendant are within the jurisdiction of the action in local courts.
court. It is not the absence of the prescribed license but
"doing business" in the Philippines without such license 4. ID.; ID.; ID.; APPOINTMENT OF AN ATTORNEY-IN-
which debars the foreign corporation from access to our FACT, CANNOT BE DEEMED AS "DOING BUSINESS."
courts. In other words, although a foreign corporation is — With express authority pursuant to a special power of
without license to transact business in the Philippines, it attorney, tantamount to doing business in the
does not follow that It has no capacity to bring an action. Philippines. We fail to see how exercising one’s legal
Such license is not necessary if it is not engaged in and property rights and taking steps for the vigilant
business in the Philippines. Based on Article 133 of the protection of said rights, particularly the appointment of
Corporation Code and gauged by such statutory an attorney-in-fact, can be deemed by and of themselves
standards, petitioners are not barred from maintaining to be doing business here.
the present action. There is no showing that, under our
statutory of case law, petitioners are doing, transacting, 5. ID.; ID.; ID.; ENGAGING IN LITIGATION, NOT
engaging in or carrying on business in the Philippines as WITHIN THE MEANING OF "DOING BUSINESS." — In
would require obtention of a license before they can accordance with the rule that "doing business" imports
seek redress from our courts. No evidence has been only acts in furtherance of the purposes for which a
offered to show that petitioners have performed any of foreign corporation was organized, it is held that the
the enumerated acts or any other specific act indicative mere institution and prosecution or defense of a suit,
of an intention to conduct or transact business in the particularly if the transation which is the basis of the suit
Philippines. took place out of the State, do not amount to the doing of
business in the State. The institution of a suit or the
2. ID.; ID.; FOREIGN CORPORATION; "DOING removal thereof is neither the making of contract nor the
BUSINESS" OR "TRANSACTING BUSINESS", doing of business within a constitutional provision
CONSTRUED. — No general rule or governing principle placing foreign corporations licensed to do business in
can be laid down as to what constitutes "doing" or the State under the same regulations, limitations and
"engaging in" or "transacting" business. Each case must liabilities with respect to such acts as domestic
be judged in the light of its own peculiar environmental corporations. Merely engaging in litigation has been
circumstances. The true tests, however, seem to be considered as not a sufficient minimum contact to
whether the foreign corporation is continuing the body or warrant the exercise of Jurisdiction over a foreign
substance of the business or enterprise for which it was corporation.
organized or whether it has substantially retired from it
and turned it over to another. As a general proposition 6. REMEDIAL LAW; ACTIONS; MOTION TO DISMISS;
upon which many authorities agree in principle, subject LACK OF LEGAL CAPACITY TO SUE,
to such modifications as may be necessary in view of the DISTINGUISHED FROM LACK OF PERSONALITY TO
particular issue or of the terms of the statute involved, it SUE. — Among the grounds for a motion to dismiss
is recognized that a foreign corporation is "doing", under the Rules of Court are lack of legal capacity to sue
"transacting", "engaging in", or carrying on "business in and that the complaint states no cause of action. Lack of
the State when, and ordinarily only when, it has entered legal capacity to sue means that the plaintiff is not in the
the State by its agent and is there engaged in carrying exercise of his civil rights, or does not have the
on and transacting through them some substantial part necessary qualification to appear in the case, or does
of its ordinary or customary business, usually continuous not have the character or representation he claims. On
in the sense that it may be distinguished from merely the other hand, a case is dismissible for lack of
casual, sporadic, or occasional transactions and isolated personality to sue upon proof that the plaintiff is not the
acts. The Corporation Code does not itself define or real party in interest, hence grounded on failure to state
categorize what acts constitute doing or transacting a cause of action. The term "lack of capacity to sue"
business in the Philippines. Jurisprudence has, however, should not be confused with the term "lack of personality
held that the term implies a continuity of commercial to sue." While the former refers to a plaintiff’s general
dealings and arrangements, and contemplates, to that disability to sue, such as on account of minority, insanity,
extent, the performance of acts or works or the exercise incompetence, lack of juridical personality or any other
of some of the functions normally incident to or in general disqualifications of a party, the latter refers to the
progressive prosecution of the purpose and subject of its fact that the plaintiff is not the real party in interest.
organization. Correspondingly, the first can be a ground for a motion
to dismiss based on the ground of lack of legal capacity
3. ID.; ID.; ID.; FACT THAT PETITIONERS ARE to sue, whereas the second can be used as a ground for
COPYRIGHT OWNERS OR OWNERS OF EXCLUSIVE a motion to dismiss based on the fact that the complaint,
on the face thereof, evidently states no cause of action. same authority as the statute itself. Interpreting the
aforequoted correlated provisions of the Civil Code and
7. ID.; ID.; ID.; LACK OF LEGAL CAPACITY TO SUE, in light of the above disquisition, this Court emphatically
NOT LACK OF PERSONALITY TO SUE, PROPER declared in Co v. Court of Appeals, Et. Al. that the
GROUND AGAINST A FOREIGN CORPORATION principle of prospectivity applies not only to original or
DOING BUSINESS WITHOUT A LICENSE. — As a amendatory statutes and administrative rulings and
consideration aside, we have perforce to comment on circulars, but also, and properly so, to judicial decisions.
private respondents’ basis for arguing that petitioners are
barred from maintaining suit in the Philippines. For 10. ID.; ID.; ID.; ID.; RATIONALE. — Our holding in the
allegedly being foreign corporations doing business in earlier case of People v. Jabinal echoes the rationale for
the Philippines without a license, private respondents this judicial declaration, viz.: Decisions of this Court,
repeatedly maintain in all their pleadings that petitioners although in themselves not laws, are nevertheless
have thereby no legal personality to bring an action evidence of what the laws mean, and this is the reason
before Philippine courts. Applying the above discussion why under Article 8 of the New Civil Code, "Judicial
to the instant petition, the ground available for barring decisions applying or interpreting the laws or the
recourse, to our courts by an unlicensed foreign Constitution shall form part of the legal system." The
corporation doing or transacting business in the interpretation upon a law by this Court constitutes, in a
Philippines should properly be "lack of capacity to sue," way, a part of the law as of the date that the law was
not "lack of personality to sue." Certainly, a corporation originally passed, since this Court’s construction merely
whose legal rights have been violated is undeniably establishes the contemporaneous legislative intent that
such, if not the only, real party in interest to bring suit the law thus construed intends to effectuate. The settled
thereon although, for failure to comply with the licensing rule supported by numerous authorities is a restatement
requirement, it is not capacitated to maintain any suit of the legal maxim "legis interpretation legis vim obtinet"
before our courts. — the interpretation placed upon the written law by a
competent court has the force of law. . ., but when a
8. ID.; ID.; ID.; DOCTRINE OF LACK OF CAPACITY TO doctrine of this Court is overruled and a different view is
SUE; NEVER INTENDED TO INSULATE FROM SUIT adopted, the new doctrine should be applied
UNSCRUPULOUS ESTABLISHMENT FOR VIOLATION prospectively, and should not apply to parties who had
OF LEGAL RIGHTS OF UNSUSPECTING FOREIGN relied on the old doctrine and acted on the faith thereof .
FIRMS. — The doctrine of lack of capacity to sue based
on failure to first acquire a local license is based on 11. ID.; COURTS; JUDICIAL INTERPRETATION
considerations of public policy. It was never intended to BECOMES PART OF THE LAW OF THE LAND AS OF
favor nor insulate from suit unscrupulous establishments THE DATE THAT LAW WAS ORIGINALLY PASSED;
or nationals in case of breach of valid obligations or QUALIFICATION. — It is consequently clear that a
violation of legal rights of unsuspecting foreign firms or judicial interpretation becomes a part of the law as of the
entities simply because they are not licensed to do date that law was originally passed, subject only to the
business in the country. qualification that when a doctrine of this Court is
overruled and a different view is adopted, and more so
9. ID.; CRIMINAL PROCEDURE; SEARCH WARRANT; when there is a reversal thereof, the new doctrine should
RULING IN CENTURY FOX CASE (164 SCRA 655), be applied prospectively and should not apply to parties
WITH NO RETROACTIVE APPLICATION. — Mindful as who relied on the old doctrine and acted in good faith. To
we are of the ramifications of the doctrine of stare decisis hold otherwise would be to deprive the law of its quality
and the rudiments of fair play, it is our considered view of fairness and justice then, if there is no recognition of
that the 20th Century Fox ruling (164 SCRA 655) calling what had transpired prior to such adjudication.
for the production of the master tape of the copyrighted
films for determination of probable cause cannot be 12. ID.; CRIMINAL PROCEDURE; SEARCH
retroactively applied to the instant case to justify the WARRANT; RULING IN CENTURY FOX CASE (164
quashal of Search Warrant No. 87-053. Article 4 of the SCRA 655) SERVES AS A GUIDEPOST IN
Civil Code provides that" (l)aws shall have no retroactive DETERMINING EXISTENCE OF PROBABLE CAUSE
effect, unless the contrary is provided. Correlatively, IN COPYRIGHT INFRINGEMENT CASES ONLY
Article 8 of the same Code declares that" (j)udicial WHERE THERE IS DOUBT AS TO THE TRUE NEXUS
decisions applying the laws or the Constitution shall form BETWEEN THE MASTER TAPE AND THE PIRATED
part of the legal system of the Philippines." COPIES. — The supposed pronunciamento in said case
Jurisprudence, in our system of government, cannot be regarding the necessity for the presentation of the
considered as an independent source of law; it cannot master tapes of the copyrighted films for the validity of
create law. While it is true that Judicial decisions which search warrants should at most be understood to merely
apply or interpret the Constitution or the laws are part of serve as a guidepost in determining the existence of
the legal system of the Philippines, still they are not laws. probable cause in copyright infringement cases where
Judicial decision, though not laws, are nonetheless there is doubt as to the true nexus between the master
evidence of what the laws mean, and it is for this reason tape and the pirated copies. An objective and careful
that they are part of the legal system of the Philippines. reading of the decision in said case could lead to no
Judicial decisions of the Supreme Court assume the other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in
all or similar copyright infringement cases. Judicial dicta 16. ID.; ID.; ID.; PROBABLE CAUSE, CONSTRUED. —
should always be construed within the factual matrix of At best, the term "probable cause" has been understood
their parturition, otherwise a careless interpretation to mean a reasonable ground of suspicion, supported by
thereof could unfairly fault the writer with the vice of circumstances sufficiently strong in themselves to
overstatement and the reader with the fallacy of undue warrant a cautious man in the belief that the person
generalization. accused is guilty of the offense with which he is charged,
or the existence of such facts and circumstances as
13. ID.; ID.; ID.; RULING IN CENTURY FOX CASE (164 would excite an honest belief in a reasonable mind
SCRA 655) DOES NOT RULE OUT USE OF acting on all the facts and circumstances within the
TESTIMONIAL OR DOCUMENTARY EVIDENCE. — It knowledge of the magistrate that the charge made by the
is evidently incorrect to suggest, as the ruling in 20th applicant for the warrant is true. Probable cause does
Century Fox may appear to do, that in copyright not mean actual and positive cause, nor does it import
infringement cases, the presentation of master tapes of absolute certainty. The determination of the existence of
the copyrighted films is always necessary to meet the probable cause is not concerned with the question of
requirement of probable cause and that, in the absence whether the offense charged has been or is being
thereof, there can be no finding of probable cause for the committed in fact, or whether the accused is guilty or
issuance of a search warrant. It is true that such master innocent, but only whether the affiant has reasonable
tapes are object evidence, with the merit that in this grounds for his belief. The requirement is less than
class of evidence the ascertainment of the controverted certainty or proof , but more than suspicion or possibility.
fact is made through demonstrations involving the direct In Philippine jurisprudence, probable cause has been
use of the senses of the presiding magistrate. Such uniformly defined as such facts and circumstances which
auxiliary procedure, however, does not rule out the use would lead a reasonable, discreet and prudent man to
of testimonial or documentary evidence, depositions, believe that an offense has been committed, and that the
admissions or other classes of evidence tending to prove objects sought in connection with the offense are in the
the factum probandum, especially where the production place sought to be searched. It being the duty of the
in court of object evidence would result in delay, issuing officer to issue, or refused to issue, the warrant
inconvenience or expenses out of proportion to its as soon as practicable after the application therefor Is
evidentiary value. filed, the facts warranting the conclusion of probable
cause must be assessed at the time of such judicial
14. CONSTITUTIONAL LAW; BILL OF RIGHTS; determination by necessarily using legal standards then
CONSTITUTIONAL STANDARDS IN THE ISSUANCE set forth in law and jurisprudence, and not those that
OF SEARCH WARRANTS. — Of course, as a general have yet to be crafted thereafter.
rule, constitutional and statutory provisions relating to
search warrants prohibit their issuance except on a 17. ID.; ID.; ID.; PRESCRIBED PROCEDURE FOR
showing of probable cause, supported by oath or ISSUANCE THEREOF. — The prescribed procedure for
affirmation. These provisions prevent the issuance of the issuance of a search warrant are: (1) the
warrants on loose, vague, or doubtful bases of fact, and examination under oath or affirmation of the complainant
emphasize the purpose to protect against all general and his witnesses, with them particularly describing the
searches. Indeed, Article III of our Constitution mandates place to be searched and the things to be seized; (2) an
in Sec. 2 thereof that no search warrant shall issue examination personally conducted by the judge in the
except upon probable cause to be determined personally form of searching questions and answers, in writing and
by the Judge after examination under oath or affirmation under oath of the complainant and witnesses on facts
of the complainant and the witnesses he may produce, personally known to them; and, (3) the taking of sworn
and particularly describing the place to be searched and statements, together with the affidavits submitted, which
the things to be seized; and Sec. 3 thereof provides that were duly attached to the records.
any evidence obtained in violation of the preceding
section shall be inadmissible for any purpose in any 18. COMMERCIAL LAW; P.D. 49 (DECREE ON THE
proceeding. PROTECTION OF INTELLECTUAL PROPERTY);
INFRINGEMENT OF COPYRIGHT, CONSTRUED. —
15. REMEDIAL LAW; CRIMINAL PROCEDURE; The essence of intellectual piracy should be essayed in
SEARCH WARRANT; MANDATORY REQUIREMENT conceptual terms in order to underscore its gravity by an
OF EXISTENCE OF PROBABLE CAUSE. — The appropriate understanding thereof. Infringement of a
constitutional (Sections 2 and 3, Article III) and statutory copyright is a trespass on a private domain owned and
(Sections 3,4,5 of Rule 126 of the Rule of Court) occupied by the owner of the copyright, and, therefore,
provisions of various jurisdictions requiring a showing of protected by law, and infringement of copyright, or
probable cause before a search warrant can be issued piracy, which is a synonymous term in this connection,
are mandatory and must be complied with, and such a consists in the doing by any person, without the consent
showing has been held to be an unqualified condition of the owner of the copyright, of anything the sole right to
precedent to the issuance of a warrant. A search warrant do which is conferred by statute on the owner of the
not based on probable cause is a nullity, or is void, and copyright.
the issuance thereof is, in legal contemplation, arbitrary.
19. ID.; ID.; INFRINGEMENT; COPY OF A PIRACY IS damages." The statutory interpretation of the Executive
AN INFRINGEMENT OF THE ORIGINAL. — A copy of a Branch being correct, is entitled (to) weight and respect.
piracy is an infringement of the original, and it is no
defense that the pirate, in such cases, did not know what 22. ID.; ID.; RIGHTS THEREUNDER SUBSISTS FROM
works he was indirectly copying, or did not know whether MOMENT OF CREATION. — Section 2 of the decree
or not he was infringing any copyright; he at least knew prefaces its enumeration of copyrightable works with the
that what he was copying was not his, and he copied at explicit statement that "the rights granted under this
his peril. In determining the question of infringement, the Decree shall, from the moment of creation, subsist with
amount of matter copied from the copyrighted work is an respect to any of the following classes of works." This
important consideration. To constitute infringement, it is means that under the present state of the law, the
not necessary that the whole or even a large portion of copyright for a work is acquired by an intellectual creator
the work shall have been copied. If so much is taken that from the moment of creation even in the absence of
the value of the original is sensibly diminished, or the registration and deposit.
labors of the original author are substantially and to an
injurious extent appropriated by another, that is sufficient 23. ID.; ID.; ABSENCE OF AUTHORITY OR CONSENT
in point of law to constitute a piracy. TO SELL, LEASE, DISTRIBUTE OR CIRCULATE
COPYRIGHTED FILMS CONSTITUTES FILM PIRACY;
20. REMEDIAL LAW; CRIMINAL PROCEDURE; LICENSE FROM THE VIDEOGRAM REGULATORY
SEARCH WARRANT; MUST PARTICULARLY BOARD, NOT A BAR TO CIVIL AND CRIMINAL
DESCRIBE THINGS TO BE SEIZED. — A search PROSECUTION. — This case has been fought on the
warrant may be said to particularly describe the things to basis of, and its resolution long delayed by resort to,
be seized when the description therein is as specific as technicalities to a virtually abusive extent by private
the circumstances will ordinarily allow (People v. Rubio, respondents, without so much as an attempt to adduce
57 Phil. 384); or when the description expresses a any credible evidence showing that they conduct their
conclusion of fact — not of law — by which the warrant business legitimately and fairly. The fact that private
officer may be guided in making the search and seizure respondents could not show proof of their authority or
(idem., dissent of Abad Santos, J.,); or when the things that there was consent from the copyright owners for
described are limited to those which bear direct relation them to sell, lease, distribute or circulate petitioners’
to the offense for which the warrant is being issued (Sec. copyrighted films immeasurably bolsters the lower courts
2, Rule 126, Revised Rules of Court). If the articles initial finding of probable cause. That private
desired to be seized have any direct relation to an respondents are licensed by the Videogram Regulatory
offense committed, the applicant must necessarily have Board does not insulate from criminal and civil liability for
some evidence, other than those articles, to prove the their unlawful business practices.
said offense; and the articles subject of search and
seizure should come in handy merely to strengthen such
evidence. DECISION

21. COMMERCIAL LAW; P.D. 49 (DECREE ON REGALADO, J.:

PROTECTION OF INTELLECTUAL PROPERTY);
REGISTRATION AND DEPOSIT REQUIREMENT, Before us is a petition for review on certiorari of the
PREREQUISITE ONLY TO A SUIT FOR DAMAGES. — decision of the Court of Appeals 1 promulgated on July
It is pointless for private respondents to insist on 22, 1992 and its resolution 2 of May 10, 1993 denying
compliance with the registration and deposit petitioners’ motion for reconsideration, both of which
requirements under Presidential Decree No. 49 as sustained the order 3 of the Regional Trial Court, Branch
prerequisites for invoking the court’s protective mantle in 133, Makati, Metro Manila, dated November 22, 1988 for
copyright infringement cases. As explained by the court the quashal of Search Warrant No. 87-053 earlier issued
below: As correctly pointed out by private complainants- per its own order 4 on September 5, 1988 for violation of
oppositors, the Department of Justice has resolved this section 56 of Presidential Decree No. 49, as amended,
legal question as far back as December 12, 1978 in its otherwise known as the "Decree on the Protection of
Opinion No. 191 of the then Secretary of Justice Vicente Intellectual Property."cralaw virtua1aw library
Abad Santos which stated that Sections 26 and 50 do
not apply to cinematographic works and PD No. 49 "had The material facts found by respondent appellate court
done away with the registration and deposit of are as follows:chanrob1es virtual 1aw library
cinematographic works" and that "even without prior
registration and deposit of a work which may be entitled Complainants thru counsel lodged a formal complaint
to protection under the Decree, the creator can file action with the National Bureau of Investigation for violation of
for infringement of its rights." He cannot demand, PD No. 49, as amended, and sought its assistance in
however, payment of damages arising from infringement. their anti-film piracy drive. Agents of the NBI and private
The same opinion stressed that "the requirements of researchers made discreet surveillance on various video
registration and deposit are thus retained under the establishments in Metro Manila including Sunshine
Decree, not as conditions for the acquisition of copyright Home Video Inc. (Sunshine for brevity), owned and
and other rights, but as prerequisites to a suit for operated by Danilo A. Pelindario with address at No. 6
Mayfair Center, Magallanes, Makati, Metro Manila. for reconsideration thereof was denied. Hence, this
petition was brought to this Court particularly challenging
On November 14, 1987, NBI Senior Agent Lauro C. the validity of respondent court’s retroactive application
Reyes applied for a search warrant with the court a quo of the ruling in 20th Century Fox Film Corporation v.
against Sunshine seeking the seizure, among others, of Court of Appeals, Et Al., 6 in dismissing petitioners’
pirated video tapes of copyrighted films all of which were appeal and upholding the quashal of the search warrant
enumerated in a list attached to the application; and, by the trial court.
television sets, video cassettes and/or laser disc
recordings equipment and other machines and I
paraphernalia used or intended to be used in the
unlawful exhibition, showing, reproduction, sale, lease or
disposition of videograms tapes in the premises above Inceptively, we shall settle the procedural considerations
described. In the hearing of the application, NBI Senior on the matter of and the challenge to petitioners’ legal
Agent Lauro C. Reyes, upon questions by the court a standing in our courts, they being foreign corporations
quo, reiterated in substance his averments in his not licensed to do business in the Philippines.
affidavit. His testimony was corroborated by another
witness, Mr. Rene C. Baltazar. Atty. Rico V. Domingo’s Private respondents aver that being foreign corporations,
deposition was also taken. On the basis of the affidavits petitioners should have such license to be able to
depositions of NBI Senior Agent Lauro C. Reyes, Rene maintain an action in Philippines courts. In so
C. Baltazar and Atty. Rico V. Domingo, Search Warrant challenging petitioners’ personality to sue, private
No 87-053 for violation of Section 56 of PD No. 9, as respondents point to the fact that petitioners are the
amended, was issued by the court a quo. copyright owners or owners of exclusive rights of
distribution in the Philippines of copyrighted motion
The search warrant was served at about 1:45 p.m. on pictures or films, and also to the appointment of Atty.
December 14, 1987 to Sunshine and/or their Rico V. Domingo as their attorney-at-fact, as being
representatives. In the course of the search of the constitutive of "doing business in the Philippines" under
premises indicated in the search warrant, the NBI Agents Section 1(f)(1) and (2), Rule 1 of the Rules of the Board
found and seized various video tapes of duly copyrighted of Investments. As foreign corporations doing business
motion pictures/films owned or exclusively distributed by in the Philippines, Section 133 of Batas Pambansa Bldg.
private complainants, and machines, equipment, 68, or the Corporation Code of the Philippines, denies
television sets, paraphernalia, materials, accessories all them the right to maintain a suit in Philippine courts in
of which were included in the receipt for properties the absence of a license to do business. Consequently,
accomplished by the raiding team. Copy of the receipt they have no right to ask for the issuance of a search
was furnished and/or tendered to Mr. Danilo A. warrant. 7
Pelindario, registered owner-proprietor of Sunshine
Home Video. In refutation, petitioners flatly deny that they are doing
business in the Philippines, 8 and contend that private
On December 16, 1987, a "Return of Search Warrant" respondents have not adduced evidence to prove that
was filed with the Court. petitioners are doing such business here, as would
require them to be licensed by the Securities and
A "Motion To Lift the Order of Search Warrant" was filed Exchange Commission, other than averments in the
but was later denied for lack of merit (p. 280, Records). quoted portions of petitioners’ "Opposition to Urgent
Motion to Lift Order of Search Warrant" dated April 28,
A Motion for reconsideration of the Order of denial was 1988 and Atty. Rico V. Domingo’s affidavit of December
filed. The court a quo granted the said motion for 14, 1987. Moreover, an exclusive right to distribute a
reconsideration and justified it in this product or the ownership of such exclusive right does not
manner:jgc:chanrobles.com.ph conclusively prove the act of doing business nor
establish the presumption of doing business. 9
"It is undisputed that the master tapes of the copyrighted
films from which the pirated films were allegedly copies The Corporation Code provides:chanrob1es virtual 1aw
(sic), were never presented in the proceedings for the library
issuance of the search warrants in question. The orders
of the Court granting the search warrants and denying Sec. 133. Doing business without a license. — No
the urgent motion to lift order of search warrants were, foreign corporation transacting business in the
therefore, issued in error. Consequently, they must be Philippines without a license, or its successors or
set aside." (p. 13, Appellant’s Brief) 5 assigns, shall be permitted to maintain or intervene in
any action, suit or proceeding in any court or
Petitioners thereafter appealed the order of the trial, administrative agency of the Philippines; but such
court granting private respondents’ motion for corporation may be sued or proceeded against before
reconsideration, thus lifting the search warrant which it Philippine courts or administrative tribunals on any valid
had therefore issued, to the Court of Appeals. As stated cause of action recognized under Philippine laws.
at the outset, said appeal was dismissed and the motion
The obtainment of a license prescribed by Section 125 of business in the Philippines. Jurisprudence has, however,
the Corporation Code is not a condition precedent to the held that the term implies a continuity of commercial
maintenance of any kind of action in Philippine courts by dealings and arrangements, and contemplates, to that
a foreign corporation. However, under the aforequoted extent, the performance of acts or works or the exercise
provision, no foreign corporation shall be permitted to of some of the functions normally incident to or in
transact business in the Philippines, as this phrase is progressive prosecution of the purpose and subject of its
understood under the Corporation Code, unless it shall organization. 16
have the license required by law, and until it complies
with the law in transacting business here, it shall not be This traditional case law definition has evolved into a
permitted to maintain any suit in local courts. 10 As thus statutory definition, having been adopted with some
interpreted, any foreign corporation doing business in the qualifications in various pieces of legislation in our
Philippines may maintain an action in our courts upon jurisprudence.
any cause of action, provided that the subject matter and
the defendant are within the jurisdiction of the court. It is For instance, Republic Act No. 5455 17
not the absence of the prescribed license bud "doing provides:chanrob1es virtual 1aw library
business" in the Philippines without such license which
debars the foreign corporation from access to our courts. SECTION 1. Definitions and scope of this Act. — (1) . . .;
In other words, although a foreign corporation is without and the phrase "doing business" shall include soliciting
license to transact business in the Philippines, it does orders, purchases, service contracts, opening offices,
not follow that it has no capacity to bring an action. Such whether called "liaison" offices or branches; appointing
license is not necessary if it is not engaged in business representatives or distributors who are domiciled in the
in the Philippines. 11 Philippines or who in any calendar year stay in the
Philippines for a period or periods totalling one hundred
Statutory provisions in many jurisdictions are eighty days or more; participating in the management,
determinative of what constitutes "doing business" or supervision or control of any domestic business firm,
"transacting business" within that forum, in which case entity or corporation in the Philippines; and any other act
said provisions are controlling there. In others where no or acts that imply a continuity of commercial dealings or
such definition or qualification is laid down regarding acts arrangements, and contemplate to that extent the
or transactions falling within its purview, the question performance of acts or works, or the exercise of some of
rests primarily on facts and intent. It is thus held that all the functions normally incident to, and in-progressive
the combined acts of a foreign corporation in the State prosecution of, commercial gain or of the purpose and
must be considered, and every circumstance is material object of the business organization.
which indicates a purpose on the part of the corporation
to engage in some part of its regular business in the Presidential Decree No. 1789, 18 in Article 65 thereof,
State. 12 defines "doing business" to include soliciting orders,
purchases, service contracts, opening offices, whether
No general rule or governing principles can be laid down called "liaison" offices or branches; appointing
as to what constitutes "doing" or "engaging in" or representatives or distributors who are domiciled in the
"transacting" business. Each case must be judged in the Philippines or who in any calendar year stay in the
light of its own peculiar environmental circumstances. 13 Philippines for a period or periods totalling one hundred
The true tests, however, seem to be whether the foreign eighty days or more; participating in the management,
corporation is continuing the body or substance of the supervision or control of any domestic business firm,
business or enterprise for which it was organized or entity or corporation in the Philippines, and any other act
whether it has substantially retired from it and turned it or acts that imply a continuity of commercial dealings or
over to another. 14 arrangements and contemplate to that extent the
performance of acts or works, or the exercise of some of
As a general proposition upon which many authorities the functions normally incident to, and in progressive
agree in principle, subject to such modifications as may prosecution of, commercial gain or of the purpose and
be necessary in view of the particular issue or of the object of the business organization.
terms of the statute involved, it is recognized that a
foreign corporation is "doing," "transacting," "engaging The implementing rules and regulations of said
in," or "carrying on" business in the State when, and presidential decree conclude the enumeration of acts
ordinarily only when, it has entered the State by its constituting "doing business" with a catch-all definition,
agents and is there engaged in carrying on and thus:chanrob1es virtual 1aw library
transacting through them some substantial part of its
ordinary or customary business, usually continuous in Sec. 1(g).’Doing Business’ shall be any act or
the sense that it may be distinguished from merely combination of acts enumerated in Article 65 of the
casual, sporadic, or occasional transactions and isolated Code. In particular ‘doing business’ includes:chanrob1es
acts. 15 virtual 1aw library

The Corporation Code does not itself define or x           x          x

categorize what acts constitute doing or transacting
 of such registration by petitioners can be expected to be
found for, as aforestated, said foreign film corporations
(10) Any other act or acts which imply a continuity of do not transact or do business in the Philippines and,
commercial dealings or arrangements, and contemplate therefore, do not need to be licensed in order to take
to the extent the performance of acts or, works, or the recourse to our courts.
exercise of some of the functions normally incident to, or
in the progressive prosecution of, commercial gain or of Although Section 1(g) of the Implementing Rules and
the purpose and object of the business organization. Regulations of the Omnibus Investments Code lists,
among others —
Finally, Republic Act No. 7042 19 embodies such
concept in this wise:chanrob1es virtual 1aw library (1) Soliciting orders, purchases (sales) or service
contracts. Concrete and specific solicitations by a foreign
SEC. 3. Definitions. — As used in this Act:chanrob1es firm, or by an agent of such foreign firm, not acting
virtual 1aw library independently of the foreign firm amounting to
negotiations or fixing of the terms and conditions of sales
x           x          x or service contracts, regardless of where the contracts
are actually reduced to writing, shall constitute doing
business even if the enterprise has no office or fixed
(d) the phrase "doing business shall include soliciting place of business in the Philippines. The arrangements
orders, service contracts, opening offices, whether called agreed upon as to manner, time and terms of delivery of
‘liaison’ offices or branches; appointing representatives the goods or the transfer of title thereto is immaterial. A
or distributors domiciled in the Philippines or who in any foreign firm which does business through the middlemen
calendar year stay in the country for a period or periods acting in their own names, such as indentors,
totalling one hundred eight(y) (180) days or more; commercial brokers or commission merchants, shall not
participating in the management, supervision or control be deemed doing business in the Philippines. But such
of any domestic business, firm, entity or corporation in indentors, commercial brokers or commission merchants
the Philippines; and any other act or acts that imply a shall be the ones deemed to be doing business in the
continuity of commercial dealings or arrangements, and Philippines.
contemplate to that extent the performance of acts or
works, or the exercise of some of the functions normally (2) Appointing a representative or distributor who is
incident to, and in progressive prosecution of, domiciled in the Philippines, unless said representative
commercial gain or of the purpose and object of the or distributor has an independent status, i.e., it transacts
business organization: Provided, however, That the business in its name and for its own account, and not in
phrase "doing business" shall not be deemed to include the name or for the account of a principal. Thus, where a
mere investment as a shareholder by a foreign entity in foreign firm is represented in the Philippines by a person
domestic corporations duly registered to do business, or local company which does not act in its name but in
and/or the exercise of rights as such investors; nor the name of the foreign firm, the latter is doing business
having a nominee director or officer to represent its in the Philippines.
interests in such corporation; nor appointing a
representative or distributor domiciled in the Philippines as acts constitutive of "doing business," the fact that
which transacts business in its own name and for its own petitioners are admittedly copyright owners or owners of
account. exclusive distribution rights in the Philippines of motion
pictures or films does not convert such ownership into an
Based on Article 133 of the Corporation Code and indicium of doing business which would require them to
gauged by such statutory standards, petitioners are not obtain a license before they can use upon a cause of
barred from maintaining the present action. There is no action in local courts.
showing that, under our statutory or case law, petitioners
are doing, transacting, engaging in or carrying on Neither is the appointment of Atty. Rico V. Domingo as
business in the Philippines as would require obtention of attorney-in-fact of petitioners, with express authority
a license before they can seek redress from our courts. pursuant to a special power of attorney, inter alia —
No evidence has been offered to show that petitioners
have performed any of the enumerated acts or any other To lay criminal complaints with the appropriate
specific act indicative of an intention to conduct or authorities and to provide evidence in support of both
transact business in the Philippines. civil and criminal proceedings against any person or
persons involved in the criminal infringement of
Accordingly, the certification issued by the Securities and copyright, or concerning the unauthorized importation,
Exchange Commission 20 stating that its records do not duplication, exhibition or distribution of any
show the registration of petitioner film companies either cinematographic work(s) — films or video cassettes — of
as corporations or partnerships or that they have been which . . . is the owner of copyright or the owner of
licensed to transact business in the Philippines, while exclusive rights of owner or copyright or the owner of
undeniably true, is of no consequence to petitioners’ exclusive rights of distribution in the Philippines pursuant
right to bring action in the Philippines. Verily, no record to any agreement(s) between . . . and the respective
owners of copyright in such cinematographic work(s), to liabilities with respect to such acts as domestic
initiate and prosecute on behalf of . . . criminal or civil corporations. Merely engaging in litigation has been
actions in the Philippines against any person or persons considered as not a sufficient minimum contact to
unlawfully distributing, exhibiting, selling or offering for warrant the exercise of jurisdiction over a foreign
sale any films or video cassettes of which . . . is the corporation. 27
owner of copyright or the owner of exclusive rights of
distribution in the Philippines pursuant to any As a consideration aside, we have perforce to comment
agreement(s) between . . . and the respective owners of on private respondents’ basis for arguing that petitioners
copyright in such works. 21 are barred from maintaining suit in the Philippines. For
allegedly being foreign corporations doing business in
tantamount to doing business in the Philippines. We fail the Philippines without a license, private respondents
to see how exercising one’s legal and property rights and repeatedly maintain in all their pleadings that petitioners
taking steps for the vigilant protection of said rights, have thereby no legal personality to bring an action
particularly the appointment of an attorney-in-fact, can before Philippine courts. 28
be deemed by and of themselves to be doing business
here. Among the grounds for a motion to dismiss under the
Rules of Court are lack of legal capacity to sue 29 and
As a general rule, a foreign corporation will not be that the complaint states no cause of action. 30 Lack of
regarded as doing business in the State simply because legal capacity to sue means that the plaintiff is not in the
it enters into contracts with residents of the State, where exercise of his civil rights, or does not have the
such contracts are consummated outside the State. 22 necessary qualification to appear in the case, or does
In fact, a view is taken that a foreign corporation is not not have the character or representation he claims. 31
doing business in the state merely because sales of its On the other hand, a case is dismissible for lack of
product are made there or other business furthering its personality to sue upon proof that the plaintiff is not the
interests is transacted there by an alleged agent, real party in interest, hence grounded on failure to state
whether a corporation or a natural person, where such a cause of action. 32 The term "lack of capacity to sue"
activities are not under the direction and control of the should not be confused with the term "lack of personality
foreign corporation but are engaged in by the alleged to sue." While the former refers to a plaintiff’s general
agent as an independent business. 23 disability to sue, such as on account of minority, insanity,
incompetence, lack of juridical personality or any other
It is generally held that sales made to customers in the general disqualifications of a party, the latter refers to the
State by an independent dealer who has purchased and fact that the plaintiff is not the real party in interest.
obtained title from the corporation to the products sold Correspondingly, the first can be a ground for a motion
are not a doing of business by the corporation. 24 to dismiss based on the ground of lack of legal capacity
Likewise, a foreign corporation which sells its products to to sue, 33 whereas the second can be used as a ground
persons styled "distributing agents" in the State, for for a motion to dismiss based on the fact that the
distribution by then, is not doing business in the State so complaint, on the face thereof, evidently states no cause
as to render it subject to service of process therein, of action. 34
where the contract with these purchasers is that they
shall buy exclusively from the foreign corporation such Applying the above discussion to the instant petition, the
goods as it manufactures and shall sell them at trade ground available for barring recourse to our courts by an
prices established by it.25cralaw:red unlicensed foreign corporation doing or transacting
business in the Philippines should properly be "lack of
It has moreover been held that the act of a foreign capacity to sue," not "lack of personality to sue."
corporation in engaging an attorney to represent it in a Certainly, a corporation whose legal rights have been
Federal court sitting in a particular State is not doing violated is undeniable such, if not the only, real party in
business within the scope of the minimum contact test. interest to bring suit thereon although, for failure to
26 With much more reason should this doctrine apply to comply with the licensing requirement, it is not
the mere retainer of Atty. Domingo for legal protection capacitated to maintain any suit before our courts.
against contingent acts of intellectual piracy.
Lastly, on this point, we reiterate this Court’s rejection of
In accordance with the rule that "doing business" imports the common procedural tactics of erring local companies
only acts in furtherance of the purposes for which a which, when sued by unlicensed foreign corporations not
foreign corporation was organized, it is held that the engaged in business in the Philippines, invoke the
mere institution and prosecution or defense of a suit, latter’s supposed lack of capacity to sue. The doctrine of
particularly if the transaction which is the basis of the suit lack of capacity to sue based on failure to first acquired a
took place out of the State, do not amount to the doing of local license is based on considerations of public policy.
business in the State. The institution of a suit or the It was never intended to favor nor insulate from suit
removal thereof is neither the making of a contract nor unscrupulous establishments or nationals in case of
the doing of business within a constitutional provision breach of valid obligations or violations of legal rights of
placing foreign corporations licensed to do business in unsuspecting foreign firms or entities simply because
the State under the same regulations, limitations and they are not licensed to do business in the country. 35
II had supervened as a doctrine promulgated at the time of
the solution of private respondents’ motion for
reconsideration seeking the quashal of the search
We now proceed to the main issue of the retroactive warrant for failure of the trial court to require presentation
application to the present controversy of the ruling in of the master tapes prior to the issuance of the search
20th Century Fox Film Corporation v. Court of Appeals, warrant, would have constituted grave abuse of
Et Al., promulgated on August 19, 1988, 36 that for the discretion. 38
determination of probable cause to support the issuance
of a search warrant in copyright infringement cases Respondent court upheld the retroactive application of
involving videograms, the production of the master tape the 20th Century Fox ruling by the trial court in resolving
for comparison with the allegedly pirated copies is petitioners’ motion for reconsideration in favor of the
necessary. quashal of the search warrant, on this renovated
thesis:chanrob1es virtual 1aw library
Petitioners assert that the issuance of a search warrant
is addressed to the discretion of the court subject to the And whether this doctrine should apply retroactively, it
determination of probable cause in accordance with the must be noted that in the 20th Century Fox case, the
procedure prescribed therefor under Section 3 and 4 of lower court quashed the earlier search warrant it issued.
Rule 126. as of the time of the application for the search On certiorari, the Supreme Court affirmed the quashal on
warrant in question, the controlling creation for the the ground among others that the master tapes or
finding of probable cause was that enunciated in Burgos copyrighted films were not presented for comparison
v. Chief of Staff 37 stating that:chanrob1es virtual 1aw with the purchased evidence of the video tapes to
library determine whether the latter is an unauthorized
reproduction of the former.
Probable cause for a search warrant is defined as such
facts and circumstances which would lead a reasonably If the lower court in the Century Fox case did not quash
discrete and prudent man to believe that an offense has the warrant, it is Our view that the Supreme Court would
been committed and that the objects sought in have invalidated the warrant just the same considering
connection with the offense are in the place sought to be the very strict requirement set by the Supreme Court for
searched. the determination of ‘probable cause’ in copyright
infringement cases as enunciated in this 20th Century
According to petitioners, after complying with what the Fox case. This is so because, as was stated by the
law then required, the lower court determined that there Supreme Court in the said case, the master tapes and
was probable cause for the issuance of a search the pirate tapes must be presented for comparison to
warrant, and which determination in fact led to the satisfy the requirement of ‘probable cause.’ So it goes
issuance and service on December 14, 1987 of Search back to the very existence of probable cause. . . . 39
Warrant No. 87-053. It is further argued that any search
warrant so issued in accordance with all applicable legal Mindful as we are of the ramifications of the doctrine of
requirements is valid, for the lower court could not stare decisis and the rudiments of fair play, it is our
possibly have been expected to apply, as the basis for a considered view that the 20th Century Fox ruling cannot
finding of probable cause for the issuance of a search be retroactively applied to the instant case to justify the
warrant in copyright infringement cases involving quashal of Search Warrant No. 87-053. Herein
videograms, a pronouncement which was not existent at petitioners’ consistent position that the order of the lower
the time of such determination, on December 14, 1987, court of September 5, 1988 denying therein defendants’
and is, the doctrine in the 20th Century Fox case that motion to lift the order of search warrant was properly
was promulgated only on August 19, 1988, or over eight issued, there having been satisfactory compliance with
months later. the then prevailing standards under the law for
determination of probable cause, is indeed well taken.
Private respondents predictably argue in support of the The lower court could not possibly have expected more
ruling of the Court of Appeals sustaining the quashal of evidence from petitioners in their application for a search
the search warrant by the lower court on the strength of warrant other than what the law and jurisprudence, then
that 20th Century Fox ruling which, they claim, goes into existing and judicially accepted, required with respect to
the very essence of probable cause. At the time of the the finding of probable cause.
issuance of the search warrant involved here, although
the 20th Century Fox case had not yet been decided, Article 4 of the Civil Code provides that" (l)aws shall
Section 2, Article III of the Constitution and Section 3, have no retroactive effect, unless the contrary is
Rule 126 of the 1985 Rules on Criminal Procedure provided. Correlatively, Article 8 of the same Code
embodied the prevailing and governing law on the declares that" (j)udicial decisions applying the laws or
matter. The ruling in 20th Century Fox was merely an the Constitution shall form part of the legal system of the
application of the law on probable cause. Hence, they Philippines."cralaw virtua1aw library
posit that there was no law that was retrospectively
applied, since the law had been there all along. To Jurisprudence, in our system of government, cannot be
refrain from applying the 20th Century Fox ruling, which considered as an independent source of law; it cannot
create law. 40 While it is true that judicial decisions law carried into effect, is all too familiar. Such judicial
which apply or interpret the Constitution or the laws are doctrine does not amount to the passage of a new law
part of the legal system of the Philippines, still they are but consists merely of a construction or interpretation of
not laws. Judicial decisions, though not laws, are a pre-existing one, and that is precisely the situation
nonetheless evidence of what the laws mean, and it is obtaining in this case.
for this reason that they are part of the legal system of
the Philippines. 41 Judicial decisions of the Supreme It is consequently clear that a judicial interpretation
Court assume the same authority as the statute itself. 42 becomes a part of the law as of the date that law was
originally passed, subject only to the qualification that
Interpreting the aforequoted correlated provisions of the when a doctrine of this Court is overruled and a different
Civil Code and in light of the above disquisition, this view is adopted, and more so when there is a reversal
Court emphatically declared in Co v. Court of Appeals, thereof, the new doctrine should be applied prospectively
Et. Al. 43 That the principle of prospectivity applies not and should not apply to parties who relied on the old
only to originator amendatory statutes and administrative doctrine and acted in good faith. 47 To hold otherwise
rulings and circulars, but also, and properly so, to judicial would be to deprive the law of its quality of fairness and
decisions. Our holding in the earlier case of People v. justice then, if there is no recognition of what had
Jubinal 44 echoes the rationale for this judicial transpired prior to such adjudication. 48
declaration, vis.:chanrob1es virtual 1aw library
There is merit in petitioners’ impassioned and well-
Decisions of this Court, although in themselves not laws, founded argumentation:chanrob1es virtual 1aw library
are nevertheless evidence of what the laws mean, and
this is the reason why under Article 8 of the New Civil The case of 20th Century Fox Film Corporation v. Court
Code, "Judicial decisions applying or interpreting the of Appeals, Et Al., 164 SCRA 655 (August 19, 1988)
laws or the Constitution shall form part of the legal (hereinafter 20th Century Fox) was inexistent in
system." The interpretation upon a law by this Court December of 1987 when Search Warrant 87-053 was
constitutes, in a way, a part of the law as of the date that issued by the lower court. Hence, it boggles the
the law was originally passed, since this Court’s imagination how the lower court could be expected to
construction merely establishes the contemporaneous apply the formulation of 20th Century Fox in finding
legislative intent that the law thus construed intends to probable cause when the formulation was yet non-
effectuate. The settled rule supported by numerous existent.
authorities is a restatement of the legal maxim "legis
interpretation legis vim obtinet" — the interpretation x           x          x
placed upon the written law by a competent court has
the force of law. . . ., but when a doctrine of this Court is
overruled and a different view is adopted, the new In short, the lower court was convinced at that time after
doctrine should be applied prospectively, and should not conducting searching examination questions of the
apply to parties who had relied on the old doctrine and applicant and his witnesses that "an offense had been
acted on the faith thereof . . . . (Emphasis supplied). committed and that the objects sought in connection with
the offense (were) in the place sought to be searched"
This was forcefully reiterated in Spouses Benzonan v. (Burgos v. Chief of Staff, Et Al., 133 SCRA 800). It is
Court of Appeals, Et Al., 45 where the Court indisputable, therefore, that at the time of the application,
expounded:chanrob1es virtual 1aw library or on December 14, 1987, the lower court did not commit
any error nor did it fail to comply with any legal
. . . But while our decisions form part of the law of the requirement for the valid issuance of search warrant.
land, they are also subject to Article 4 of the Civil Code
which provides that "laws shall have no retroactive effect . . . (W)e believe that the lower court should be
unless the contrary is provided." This is expressed in the considered as having followed the requirements of the
familiar legal maximum lex prospicit, non respicit, the law law in issuing Search Warrant No. 87-053. The search
looks forward not backward. The rationale against warrant is therefore valid and binding. It must be noted
retroactivity is easy to perceive. The retroactive that nowhere is it found in the allegations of the
application of a law usually divests rights that have Respondents that the lower court failed to apply the law
already become vested or impairs the obligations of as then interpreted in 1987. Hence, we find it absurd that
contract and hence, is unconstitutional (Francisco v. it is (sic) should be seen otherwise, because it is simply
Certeza, 3 SCRA (565 [1961]). The same consideration impossible to have required the lower court to apply a
underlies our rulings giving only prospective effect to formulation which will only be defined six months later.
decisions enunciating new doctrines. . . .
Furthermore, it is unjust and unfair to require compliance
The reasoning behind Senarillos v. Hermosisima 46 that with legal and/or doctrinal requirements which are
judicial interpretation of a statute constitutes part of the inexistent at the time they were supposed to have been
law as of the date it was originally passed, since the complied with.
Court’s construction merely establishes the
contemporaneous legislative intent that the interpreted x           x          x
 an unauthorized reproduction of the former. This linkage
of the copyrighted films to the pirated films must be
. . . If the lower court’s reversal will be sustained, what established to satisfy the requirements of probable
encouragement can be given to courts and litigants to cause. Mere allegations as to the existence of the
respect the law and rules if they can expect with copyrighted films cannot serve as basis for the issuance
reasonable certainty that upon the passage of a new of a search warrant.
rule, their conduct can still be open to question? This
certainly breeds instability in our system of dispensing For a closer and more perspicuous appreciation of the
justice. For Petitioners who took special effort to redress factual antecedents of 20th Century Fox, the pertinent
their grievances and to protect their property rights by portions of the decision therein are quoted hereunder, to
resorting to the remedies provided by the law, it is most wit:jgc:chanrobles.com.ph
unfair that fealty to the rules and procedures then
obtaining would bear but fruits of injustice. 49 "In the instant case, the lower court lifted the three
questioned search warrants against the private
Withal, even the proposition that the prospectivity of respondents on the ground that it acted on the
judicial decisions imports application thereof not only to application for the issuance of the said search warrants
future cases but also to cases still ongoing or not yet and granted it on the misrepresentations of applicant NBI
final when the decision was promulgated, should not be and its witnesses that infringement of copyright or a
countenanced in the jural sphere on account of its piracy of a particular film have been committed. Thus the
inevitably unsettling repercussions. More to the point, it lower court stated in its questioned order dated January
is felt that the reasonableness of the added requirement 2, 1986:jgc:chanrobles.com.ph
in 20th Century Fox calling for the production of the
master tapes of the copyrighted films for determination of "According to the movant, all three witnesses during the
probable cause in copyright infringement cases needs proceedings in the application for the three search
revisiting and clarification. warrants testified of their own personal knowledge. Yet,
Atty. Albino Reyes of the NBI stated that the counsel or
It will be recalled that the 20th Century Fox case arose representative of the Twentieth Century Fox Corporation
from search warrant proceedings in anticipation of the will testify on the video cassettes that were pirated, so
filing of a case for the unauthorized sale or renting out of that he did not have personal knowledge of the alleged
copyrighted films in videotape format in violation of piracy. The witness Bacani also said that the video
Presidential Decree No. 49. It revolved around the cassettes were pirated without stating the manner it was
meaning of probable cause within the context of the pirated and that it was Atty. Domingo that has knowledge
constitutional provision against illegal searches and of that fact.
seizures, as applied to copyright infringement cases
involving videotapes. "On the part of Atty. Domingo, he said that the re-taping
of the allegedly pirated tapes was from master tapes
Therein it was ruled that — allegedly belonging to the Twentieth Century Fox,
because, according to him it is of his personal
The presentation of master tapes of the copyrighted films knowledge.
from which the pirated films were allegedly copied, was
necessary for the validity of search warrants against "At the hearing of the Motion for Reconsideration, Senior
those who have in their possession the pirated films. The NBI Agent Atty. Albino Reyes testified that when the
petitioner’s argument to the effect that the presentation complaint for infringement was brought to the NBI, the
of the master tapes at the time of application may not be master tapes of the allegedly pirated tapes were shown
necessary as these would be merely evidentiary in to him and he made comparisons of the tapes with those
nature and not determinative of whether or not a purchased by their man Bacani. Why the master tapes or
probable cause exists to justify the issuance of the at least the film reels of the allegedly pirated tapes were
search warrants is not meritorious. The court cannot not shown to the Court during the application gives some
presume that duplicate or copied tapes were necessarily misgivings as to the truth of that bare statement of the
reproduced from master tapes that it owns. NBI agent on the witness stand.

The application for search warrants was directed against "Again as the application and search proceedings is a
video tape outlets which allegedly were engaged in the prelude to the filing of criminal cases under PD 49, the
unauthorized sale and renting out of copyrighted films copyright infringement law, and although what is
belonging to the petitioner pursuant to P.D. 49. required for the issuance thereof is merely the presence
of probable cause, that probable cause must be
The essence of a copyright infringement is the similarity satisfactory to the Court, for it is a time-honored precept
or at least substantial similarity of the purported pirated that proceedings to put a man to task as an offender
works to the copyrighted work. Hence, the applicant under our laws should be interpreted in strictissimi juris
must present to the court the copyrighted films to against the government and liberally in favor of the
compare them with the purchased evidence of the video alleged offender.
tapes allegedly pirated to determine whether the latter is
x           x          x copyrighted films with the pirated ones. Thus, there is no
reason not the present them (Italics supplied for
emphasis). 50
"This doctrine has never been overturned, and as a
matter of fact it had been enshrined in the Bill of Rights In fine, the supposed pronunciamento in said case
in our 1973 Constitution. regarding the necessity for the presentation of the
master tapes of the copyrighted films for the validity of
"So that lacking in persuasive effect, the allegation that search warrants should at most be understood to merely
master tapes were viewed by the NBI and were serve as a guidepost in determining the existence of
compared to the purchased and seized video tapes from probable cause in copyright infringement cases where
the respondents’ establishments, it should be dismissed there is doubt as to the true nexus between the master
as not supported by competent evidence and for that tape and the pirated copies. An objective and careful
matter the probable cause hovers in that grey debatable reading of the decision in said case could lead to no
twilight zone between black and white resolvable in favor other conclusion than that said directive was hardly
of respondents herein. intended to be a sweeping and inflexible requirement in
all or similar copyright infringement cases. Judicial dicta
"But the glaring fact is that ‘Cocoon,’ the first video tape should always be construed within the factual matrix of
mentioned in the search warrant, was not even duly their parturition, otherwise a careless interpretation
registered or copyrighted in the Philippines. (Annex C of thereof could unfairly fault the writer with the vice of
Opposition p. 152 record.) So, that lacking in the overstatement and the reader with the fallacy of undue
requisite presentation to the Court of an alleged master generalization.
tape for purposes of comparison with the purchased
evidence of the video tapes allegedly pirated and those In the case at bar, NBI Senior Agent Lauro C. Reyes
seized from respondents, there was no way to determine who filed the application for search warrant with the
whether there really was piracy, or copying of the film of lower court following a formal complaint lodged by
the complainant Twentieth Century Fox."cralaw petitioners, judging from his affidavit 51 and his
virtua1aw library deposition, 52 did testify on matters within his personal
knowledge based on said complaint of petitioners as well
x           x          x as his own investigation and surveillance of the private
respondents’ video rental shop. Likewise, Atty. Rico V.
Domingo, in his capacity as attorney-at-fact, stated in his
The lower court, therefore, lifted the three (3) questioned affidavit 53 and further expounded in his deposition 54
search warrants in the absence of probable cause that that he personally knew of the fact that private
the private respondents violated P.D. 49. As found by respondents had never been authorized by his clients to
the court, the NBI agents who acted as witnesses did not reproduce, lease and possess for the purpose of selling
have personal knowledge of the subject matter of their any of the copyrighted films.
testimony which was the alleged commission of the
offense by the private respondents. Only the petitioner’s Both testimonies of Agent Reyes and Atty. Domingo
counsel who was also a witness during the application were corroborated by Rene C. Baltazar, a private
for the issuance of the search warrants stated that he researcher retained by Motion Pictures Association of
had personal knowledge that the confiscated tapes America, Inc. (MPAA, Inc.), who was likewise presented
owned by the private, respondents were pirated tapes as a witness during the search warrant proceedings. 55
taken from master tapes belonging to the petitioner. The records clearly reflect that the testimonies of the
However, the lower court did not give much credence to above named witnesses were straightforward and
his testimony in view of the fact that the master tapes of stemmed from matters within their personal knowledge.
the allegedly pirated tapes were not shown to the court They displayed none of the ambivalence and uncertainty
during the application." (Emphasis ours). that the witnesses in the 20th Century Fox case
exhibited. This categorical forthrightness in their
The italicized passages readily expose the reason why statements, among others, was what initially and
the trial court therein required the presentation of the correctly convinced the trial court to make a finding of
master tapes of the allegedly pirated films in order to the existence of probable cause.
convince itself of the existence of probable cause under
the factual milieu peculiar to that case. In the case at There is no originality in the argument of private
bar, respondent appellate court itself respondents against the validity of the search warrant,
observed:chanrob1es virtual 1aw library obviously borrowed from 20th Century Fox, that
petitioners’ witnesses — NBI Agent Lauro C. Reyes,
We feel that the rationale behind the aforequoted Atty. Rico V. Domingo and Rene C. Baltazar — did not
doctrine is that the pirated copies as well as the master have personal knowledge of the subject matter of their
tapes, unlike the other types of personal properties respective testimonies and that said witnesses’ claim
which may be seized, were available for presentation to that the video tapes were pirated, without stating the
the court at the time of the application for a search manner by which these were pirated, is a conclusion of
warrant to determine the existence of the linkage of the fact without basis. 56 The difference, it must be pointed
out, is that the records in the present case reveal that (1) Sec. 4. Examination of complainant; record. — The
there is no allegation of misrepresentation, much less a judge must, before issuing the warrant, personally
finding thereof by the lower court, on the part of examine in the form of searching questions and
petitioners’ witnesses; (2) there is no denial on the part answers, in writing and under oath the complainant and
of private respondents that the tapes seized were any witnesses he may produce on facts personally
illegitimate copies of the copyrighted ones nor have they known to them and attach to the record their sworn
shown that they were given any authority by petitioners statements together with any affidavits submitted.
to copy, sell, lease, distribute or circulate, or at least, to
offer for sale, lease, distribution or circulation the said Sec. 5. Issuance and form of search warrant. — If the
video tapes; and (3) a discreet but extensive surveillance judge is thereupon satisfied of the existence of facts
of the suspected area was undertaken by petitioner’s upon which the application is based, or that there is
witnesses sufficient to enable them to execute probable cause to believe that they exist, he must issue
trustworthy affidavits and depositions regarding matters the warrant, which must be substantially in the form
discovered in the course thereof and of which they have prescribed by these Rules.
personal knowledge.
The constitutional and statutory provisions of various
It is evidently incorrect to suggest, as the ruling in 20th jurisdictions requiring a showing of probable cause
Century Fox may appear to do, that in copyrighted films before a search warrant can be issued are mandatory
is always necessary to meet the requirement of probable and must be complied with, and such a showing has
cause and that, in the absence thereof, there can be no been held to be an unqualified condition precedent to the
finding of probable cause for the issuance of a search issuance of a warrant. A search warrant not based on
warrant. It is true that such master tapes are object probable cause is a nullity, or is void, and the issuance
evidence, with the merit that in this class of evidence the thereof is, in legal contemplation, arbitrary. 61 It
ascertainment of the controverted fact is made through behooves us, then, to review the concept of probable
demonstrations involving the direct use of the senses of cause, firstly, from representative holdings in the
the presiding magistrate. 57 Such auxiliary procedure, American jurisdiction from which we patterned our
however, does not rule out the use of testimonial or doctrines on the matter.
documentary evidence, depositions, admissions or other
classes of evidence tending to prove the factum Although the term "probable cause" has been said to
probandum, 58 especially where the production in court have a well-defined meaning in the law, the term is
of object evidence would result in delay, inconvenience exceedingly difficult to define, in this case, with any
or expenses out of proportion to its evidentiary value. 59 degree of precision; indeed, no definition of it which
would justify the issuance of a search warrant can be
Of course, as a general rule, constitutional and statutory formulated which would cover every state of facts which
provisions relating to search warrants prohibits their might arise, and no formula or standard, or hard and fast
issuance except on a showing of probable cause, rule, may be laid down which may be applied to the facts
supported by oath or affirmation. These provisions of every situation. 62 As to what acts constitute probable
prevent the issuance of warrants on loose, vague, or cause seem incapable of definition. 63 There is, of
doubtful bases of fact, and emphasize the purpose to necessity, no exact test. 64
protect against all general searches. 60 Indeed, Article III
of our Constitution mandates in Sec. 2 thereof that no At best, the term "probable cause" has been understood
search warrant shall issue except upon probable cause to mean a reasonable ground of suspicion, supported by
to be determined personally by the judge after circumstances sufficiently strong in themselves to
examination under oath or affirmation of the complainant warrant a cautious man in the belief that the person
and the witnesses he may produce, and particularly accused is guilty of the offense with which he is charged;
describing the place to be searched and the things to be 65 or the existence of such facts and circumstances as
seized; and Sec. 3 thereof provides that any evidence would excite an honest belief in a reasonable mind
obtained in violation of the preceding section shall be acting on all the facts and circumstances within the
inadmissible for any purpose in any proceeding. knowledge of the magistrate that the charge made by the
applicant for the warrant is true. 66
These constitutional strictures are implemented by the
following provisions of Rule 126 of the Rules of Probable cause does not mean actual and positive
Court:chanrob1es virtual 1aw library cause, nor does it important absolute certainty. The
determination of the existence of probable cause is not
Sec. 3. Requisites for issuing search warrant. — A concerned with the question of whether the offense
search warrant shall not issue but upon probable cause charged has been or is being committed in fact, or
in connection with one specific offense to be determined whether the accused is guilty or innocent, but only
personally by the judge after examination under oath or whether the affiant has reasonable grounds for his belief.
affirmation of the complainant and the witnesses he may 67 The requirement is less than certainty or proof, but
produce, and particularly describing the place to be more than suspicion or possibility. 68
searched and the things to be seized.
In Philippine jurisprudence, probable cause has been
uniformly defined as such facts and circumstances which 20th Century Fox regarding master tapes as the dictum
would lead a reasonable, discreet and prudent man to for all seasons and reasons in infringement cases.
believe that an offense has been committed, and that the
objects sought in connection with the offense are in the Turning now to the case at bar, it can be gleaned from
place sought to be searched. 69 It being the duty of the the records that the lower court followed the prescribed
issuing officer to issue, or refuse to issue, the warrant as procedure for the issuance of a search warrant: (1) the
soon as practicable after the application therefor is filed, examination under oath or affirmation of the complainant
70 the facts warranting the conclusion of probable cause and his witnesses, with them particularly describing the
must be assessed at the time of such judicial place to be searched and the things to be seized; (2) an
determination by necessarily using legal standards then examination personally conducted by the judge in the
set forth in law and jurisprudence, and not those that form of searching questions and answers, in writing and
have yet to be crafted thereafter. under oath of the complainant and witnesses on facts
personally known to them; and, (3) the taking of sworn
As already stated, the definition of probable cause statements, together with the affidavits submitted, which
enunciated in Burgos, Sr. v. Chief of Staff, Et Al., supra, were duly attached to the records.
vis-a-vis the provisions of Sections 3 and 4 of Rule 126,
were the prevailing and controlling legal standards, as Thereafter, the court a quo made the following factual
they continue to be, by which a finding or probable cause findings leading to the issuance of the search warrant
is tested. Since the proprietary of the issuance of a now subject to this controversy:chanrob1es virtual 1aw
search warrant is to be determined at the time of the library
application therefor, which in turn must not be too remote
in time from the occurrence of the offense alleged to In the instant case, the following facts have been
have been committed, the issuing judge, in determining established: (1) copyrighted video tapes bearing titles
the existence of probable cause, can and should enumerated in Search Warrant No. 87-053 were being
logically look to the touchstones in the laws therefore sold, leased, distributed or circulated, or offered for sale,
enacted and the decisions already promulgated at the lease, distribution, or transferred or caused to be
time, and not to those which had not yet even been transferred by defendants at their video outlets, without
conceived or formulated. the written consent of the private complainants or their
assignee; (2) recovered or confiscated from defendants’
It is worth noting that neither the Constitution nor the possession were video tapes containing copyrighted
Rules of Court attempt to define probable cause, motion picture films without the authority of the
obviously for the purpose of leaving such matter to the complainant; (3) the video tapes originated from spurious
court’s discretion within the particular facts of each case. or unauthorized persons; and (4) said video tapes were
Although the Constitution prohibits the issuance of a exact reproductions of the film listed in the search
search warrant in the absence of probable cause, such warrant whose copyrights or distribution rights were
constitutional inhibition does not command the owned by complainants.
legislature to establish a definition or formula for
determining what shall constitute probable cause. 71 The basis of these facts are the affidavits and
Thus, Congress, despite its broad authority to fashion depositions of NBI Senior Agent Lauro C. Reyes, Atty.
standards of reasonableness for searches and seizures, Rico V. Domingo, and Rene C. Baltazar. Motion Pictures
72 does not venture to make such a definition or Association of America, Inc. (MPAA) thru their counsel,
standard formulation of probable cause, nor categorize Atty. Rico V. Domingo, filed a complaint with the National
what facts and circumstances make up the same, much Bureau of Investigation against certain video
less limit the determination thereof to and within the establishments one of which is defendant, for violation of
circumscription of a particular class of evidence, all in PD No. 49 as amended by PD No. 1988. Atty. Lauro C.
deference to judicial discretion and probity. 73 Reyes led a team to conduct discreet surveillance
operations on said video establishments. Per information
Accordingly, to restrict the exercise of discretion by a earlier gathered by Atty. Domingo, defendants were
judge by adding a particular requirement (the engaged in the illegal sale, rental, distribution, circulation
presentation of master tapes, as intimated by 20th or public exhibition of copyrighted films of MPAA without
Century Fox) not provided nor implied in the law for a its written authority or its members. Knowing that
finding of probable cause is beyond the realm of judicial defendant Sunshine Home Video and its proprietor, Mr.
competence or statesmanship. It serves no purpose but Danilo Pelindario, were not authorized by MPAA to
to stultify and constrict the judicious exercise of a court’s reproduce, lease, and possess for the purpose of selling
prerogatives and to denigrate the judicial duty of any of its copyrighted motion pictures, he instructed his
determining the existence of probable cause to a mere researcher, Mr. Rene Baltazar to rent two video
ministerial or mechanical function. There is, to repeat, no cassettes from said defendants on October 21, 1987.
law or rule which requires that the existence of probable Rene C. Baltazar proceeded to Sunshine Home Video
cause is or should be determined solely by a specific and rented tapes containing Little Shop of Horror. He
kind of evidence. Surely, this could not have been was issued rental slip No. 26362 dated October 21 1987
contemplated by the framers of the Constitution, and we for P10.00 with a deposit of P100.00. Again, on
do not believe that the Court intended the statement in December 11, 1987, he returned to Sunshine Home
Video and rented Robocop with rental slip No. 25271
also for P10.00. On the basis of the complaint of MPAA Given the present international awareness and furor over
thru counsel, Atty. Lauro C. Reyes personally went to violations in large scale of intellectual property rights,
Sunshine Home Video at No. 6 Mayfair Center, calling for transnational sanctions, it bears calling to
Magallanes Commercial Center, Makati. His last visit mind the Court’s admonition also in La Chemise
was on December 7, 1987. There, he found the video Lacoste, supra, that —
outlet renting, leasing, distributing video cassette tapes
whose titles were copyrighted and without the authority . . . Judges all over the country are well advised to
of MPAA. remember that court processes should not be used as
instruments to, unwittingly or otherwise, aid
Given these facts, a probable cause exists. . . . 74 counterfeiters and intellectual pirates, tie the hands of
the law as it seeks to protect the Filipino consuming
The lower court subsequently executed a volte-face, public and frustrate executive and administrative
despite its prior detailed and substantiated findings, by implementation of solemn commitments pursuant to
stating in its order of November 22, 1988 denying international conventions and treaties.
petitioners’ motion for reconsideration and quashing the
search warrant that — III

. . . The two (2) cases have a common factual milieu;

both involve alleged pirated copyrighted films of private The amendment of Section 56 of Presidential Decree
complainants which were found in the possession or No. 49 by Presidential Decree No. 1987, 77 which would
control of the defendants. Hence, the necessity of the here be publicized judicially, brought about the revision
presentation of the master tapes from which the pirated of its penalty structure and enumerated additional acts
films were allegedly copied is necessary in the instant considered violative of said decree on intellectual
case, to establish the existence of probable cause. 75 property, namely, (1) directly or indirectly transferring or
causing to be transferred any sound recording or motion
Being based solely on an unjustifiable and improper picture or other audio-visual works so recorded with
retroactive application of the master tape requirement intent to sell, lease, publicly exhibit or cause to be sold,
generated by 20th Century Fox upon a factual situation leased or publicly exhibited, or to use or cause to be
completely different from that in the case at bar, and used for profit such articles on which sounds, motion
without anything more, this later order clearly defies pictures, or other audio-visual works are so transferred
elemental fair play and is a gross reversible error. in fact, without the written consent of the owner or his assignee;
this observation of the Court in La Chemise Lacoste, (2) selling, leasing, distributing, circulating, publicly
S.A. v. Fernandez, Et Al., supra, may just as easily apply exhibiting, or offering for sale, lease, distribution, or
to the present case:chanrob1es virtual 1aw library possessing for the purpose of sale, lease, distribution,
circulation or public exhibition any of the
A review of the grounds invoked . . . in his motion to abovementioned articles, without the written consent of
quash the search warrants reveals the fact that they are the owner or his assignee; and, (3) directly or indirectly
not appropriate for quashing a warrant. They are matters offering or making available for a fee, rental, or any other
of defense which should be ventilated during the trial on form of compensation any equipment, machinery,
the merits of case. . . . paraphernalia or any material with the knowledge that
such equipment, machinery, paraphernalia or material
As correctly pointed out by petitioners, a blind espousal will be used by another to reproduce, without the
of the requisite of presentation of the master tapes in consent of the owner, any phonograph record, disc, wire,
copyright infringement cases, as the prime determinant tape, film or other article on which sounds, motion
of probable cause, is too exacting and impracticable a pictures or other audio-visual recordings may be
requirement to be complied with in a search warrant transferred, and which provide distinct bases for criminal
application which, it must not be overlooked, is only an prosecution, being crimes independently punishable
ancillary proceeding. Further, on realistic considerations, under Presidential Decree No. 49, as amended, aside
a strict application of said requirement militates against from the act of infringing or aiding or abetting such
the elements of secrecy and speed which underlie covert infringement under Section 29.
investigative and surveillance operations in police
enforcement campaigns against all forms of criminality, The trial court’s finding that private respondents
considering that the master tapes of a motion picture committed acts in blatant transgression of Presidential
required to be presented before the court consists of Decree No. 49 all the more bolsters its findings of
several reels contained in circular steel casings which, probable cause, which determination can be reached
because of their bulk, will definitely draw attention, unlike even in the absence of master tapes by the judge in the
diminutive objects like video tapes which can be easily exercise of sound discretion. The executive concern and
concealed. 76 With hundreds of titles being pirated, this resolve expressed in the foregoing amendments to the
onerous and tedious imposition would be multiplied a decree for the protection of intellectual property rights
hundredfold by judicial fiat, discouraging and preventing should be matched by corresponding judicial vigilance
legal recourses in foreign jurisdictions. and activism, instead of the apathy of submitting to
technicalities in the face of ample evidence of guilt. direct relation to an offense committed, the applicant
must necessarily have some evidence, other than those
The essence of intellectual piracy should be essayed in articles, to prove the said offense; and the articles
conceptual terms in order to underscore its gravity by an subject of search and seizure should come in handy
appropriate understanding thereof. Infringement of a merely to strengthen such evidence. . . .
copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore, On private respondents’ averment that the search
protected by law, and infringement of copyright, or warrant was made applicable to more than one specific
piracy, which is a synonymous term in this connection, offense on the ground that there are as many offenses of
consists in the doing by any person, without the consent infringement as there are rights protected and, therefore,
of the owner of the copyright, of anything the sole right to to issue one search warrant for all the movie titles
do which is conferred by statute on the owner of the allegedly pirated violates the rule that a search warrant
copyright. 78 must be issued only in connection with one specific
offense, the lower court said:chanrob1es virtual 1aw
A copy of a piracy is an infringement of the original, and library
it is no defense that the pirate, in such cases, did not
know what works he was indirectly copying, or did not . . . As the face of the search warrant itself indicates, it
know whether or not he was infringing any copyright; he was issued for violation of Section 56, PD 49 as
at least knew that what he was copying was not his, and amended only. The specifications therein (in Annex A)
he copied at his peril. In determining the question of merely refer to the titles of the copyrighted motion
infringement, the amount of matter copied from the pictures/films belonging to private complainants which
copyrighted work is an important consideration. To defendants were in control/possession for sale, lease,
constitute infringement, it is not necessary that the whole distribution or public exhibition in contravention of Sec.
or even a large portion of the work shall have been 56, PD 49 as amended. 83
copied. If so much is taken that the value of the original
is sensibly diminished, or the labors of the original author That there were several counts of the offense of
are substantially and to an injurious extent appropriated copyright infringement and the search warrant
by another, that is sufficient in point of law to constitute a uncovered several contraband items in the form of pirate
piracy. 79 The question of whether there has been an video tapes is not to be confused with the number of
actionable infringement of a literary, musical, or artistic offenses charged. The search warrant herein issued
work in motion pictures, radio or television being one of does not violate the one-specific-offense rule.
fact, 80 it should properly be determined during the trial.
That is the stage calling for conclusive or preponderating It is pointless for private respondents to insist on
evidence, and not the summary proceeding for the compliance with the registration and deposit
issuance of a search warrant wherein both lower courts requirements under presidential Decree No. 49 as
erroneously require the master tapes. prerequisites for invoking the court’s protective mantle in
copyright infringement cases. As explained by the court
In disregarding private respondent’s argument that below:chanrob1es virtual 1aw library
Search Warrant No. 87-053 is a general warrant, the
lower court observed that "it was worded in a manner Defendants-movants contend that PD 49 as amended
that the enumerated seizable items bear direct relation to covers only producers who have complied with the
the offense of violation of Sec. 56 of PD 49 as amended. requirements of deposit and notice (in other words
It authorized only the seizur(e) of articles used or registration) under Sections 49 and 50 thereof. Absent
intended to be used in the unlawful sale, lease and other such registration, as in this case, there was no right
unconcerted acts in violation of PD 49 as amended. . . ." created, hence, no infringement under PD 49 as
81 amended. This is not well-taken.

On this point, Bache and Co., (Phil.), Inc., Et. Al. v. Ruiz, As correctly pointed out by private complainants-
Et Al., 82 instructs and enlightens:chanrob1es virtual oppositors, the Department of Justice has resolved this
1aw library legal question as far back as December 12, 1978 in its
Opinion No. 191 of the then Secretary of Justice Vicente
As search warrant may be said to particularly describe Abad Santos which stated that Sections 26 and 50 do
the things to be seized when the description therein is as not apply to cinematographic works and PD No. 49 "had
specific as the circumstances will ordinarily allow done away with the registration and deposit of
(People v. Rubio, 57 Phil. 384); or when the description cinematographic works" and that "even without prior
expresses a conclusion of fact — not of law — by which registration and deposit of a work which may be entitled
the warrant officer may be guided in making the search to protection under the Decree, the creator can file action
and seizure (idem., dissent of Abad Santos, J.,); or when for infringement of its rights." He cannot demand,
the things described are limited to those which bear however, payment of damages arising from infringement.
direct relation to the offense for which the warrant is The same opinion stressed that "the requirements of
being issued (Sec 2, Rule 126, Revised Rules of registration and deposit are thus retained under the
Court). . . . If the articles desired to be seized have any Decree, not as conditions for the acquisition of copyright
and other rights, but as prerequisites to a suit for any credible evidence showing that they conduct their
damages." The statutory interpretation of the Executive business legitimately and fairly. The fact that private
Branch being correct, is entitled (to) weight and respect. respondents could not show proof of their authority or
that there was consent from the copyright owners for
x           x          x them to sell, lease, distribute or circulate petitioners’
copyrighted films immeasurably bolsters the lower
court’s initial finding of probable cause. That private
Defendants-movants maintain that complainant and his respondents are licensed by the Videogram Regulatory
witnesses led the Court to believe that a crime existed Board does not insulate them from criminal and civil
when in fact there was none. This is wrong. As earlier liability for their unlawful business practices. What is
discussed, PD 49 as amended, does not require more deplorable is that the reprehensible acts of some
registration and deposit for a creator to be able to file an unscrupulous characters have stigmatized the
action for infringement of his rights. These conditions are Philippines with an unsavory reputation as a hub for
merely pre-requisites to an action for damages. So, as intellectual piracy in this part of the globe, formerly in the
long as the proscribed acts are shown to exist, an action records of the General Agreement on Tariffs and Trade
for infringement may be initiated. 84 and, now, of the World Trade Organization. Such acts
must not be glossed over but should be denounced and
Accordingly, the certifications 85 from the Copyright repressed lest the Philippines become an international
Section of the National Library, presented as evidence pariah in the global intellectual community.
by private respondents to show non-registration of some
of the films of petitioners, assume no evidentiary weight WHEREFORE, the assailed judgment and resolution of
or significance, whatsoever. respondent Court of Appeals, and necessarily inclusive
of the order of the lower court dated November 22, 1988,
Furthermore, a closer review of Presidential Decree No. are hereby REVERSED and SET ASIDE. The order of
49 reveals that even with respect to works which are the court a quo of September 5, 1988 upholding the
required under Section 26 thereof to be registered and validity of Search Warrant No. 87-053 is hereby
with copies to deposited with the National Library, such REINSTATED, and said court is DIRECTED to take and
as books, including composite and cyclopedic works, expeditiously proceed with such appropriate proceedings
manuscripts, directories and gazetteers; and periodicals, as may be called for in this case. Trebles costs are
including pamphlets and newspapers; lectures, sermons, further assessed against private respondents.
addresses, dissertations prepared for oral delivery; and
letters, the failure to comply with said requirements does SO ORDERED
not deprive the copyright owner of the right to sue for
infringement. Such non-compliance merely limits the
remedies available to him and subjects him to the
corresponding sanction.

The reason for this is expressed in Section 2 of the

decree which prefaces its enumeration of copyrightable
works with the explicit statement that "the rights granted
under this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of
works." This means that under the present state of the
law, the copyright for a work is acquired by an
intellectual creator from the moment of creation even in
the absence of registration and deposit. As has been
authoritatively clarified:chanrob1es virtual 1aw library

The registration and deposit of two complete copies or

reproductions of the work with the National library within
three weeks after the first public dissemination or
performance of the work, as provided for in Section 26
(P.D. No. 49, as amended), is not for the purpose of
securing a copyright of the work, but rather to avoid the
penalty for non-compliance of the deposit of said two
copies and in order to recover damages in an
infringement suit. 86

One distressing observation. This case has been fought

on the basis of, and its resolution long delayed by resort
to, technicalities to a virtually abusive extent by private
respondents, without so much as an attempt to adduce
 On September 7, 1965, identical motions to
quash 2 were filed by accused Ramos on the ground of
prescription, alleging therein, inter alia, that:

xxx xxx xxx

G.R. No. L-25265 May 9, 1978 Consequently, the delivery of the alleged offense was
made as early as July 17, 1963 and all subsequent
knowledge or discoveries of posterior sales and
PEOPLE OF THE PHILIPPINES, plaintiff-appellant,
possession of said books by the respondents, including
vs.
that involved in the police search of September 4, 1963
SOCORRO C. RAMOS, defendant-appellee, PHOENIX
were only confirmatory of the first. Under 91 of the
PUBLISHING HOUSE INC., intervenor.
Revised Penal Code and in the light of the afore-quoted
ruling announced in the Pangasinan Trans. Co.
G.R. No. L-25644 May 9, 1978 case, supra; the prescriptive period, therefore,
commenced to run on the day after such discovery on
SOCORRO C. RAMOS, petitioner, July 17, 1963 and, accordingly, the offense has long
vs. since prescribed since under the Copyright Law, Act
HON. PLACIDO RAMOS, in his capacity as Presiding 3134:
Judge, Branch III, CFI, Manila; and the PEOPLE OF
THE PHILIPPINES, represented by State Prosecutor Sec. 24. All actions, suits, or proceedings arising under
DELIA P. MEDINA, respondents. this Act shall be originally cognizable by the Court of
First Instance of the Philippine Islands and shall
SANTOS, J.: prescribe after two years from the time the cause of
action arose.
The above-entitled cases — the first an appeal and the
second a special civil action — are decided jointly Assuming arguendo, that the last actual sale should be
because they raise a common — issue which arose from the starting point of computation, again the offense
the prosecution of a common defendant, Socorro C. charged has prescribed, since, as already pointed out,
Ramos, for alleged violations of the copyright law— the documented evidence on this point shows that the
viz, whether or not the extra day in the leap year, 1964 last sale was made on August 30, 1963.
should be taken into consideration in the computation of
the two-year period of prescription provided in Section The prosecution, also in both cases, filed its Opposition
24 of the copyright law. to the Motion to Quash 3 raising two issues, to wit:

The factual and procedural antecedents follow. 1. That the issue of prescription in this case can be
resolved only after the presentation of evidence and
On September 3, 1965, two criminal cases — No. 80006 hence, it is premature to raise that issue before trial
of the Court of First Instance of Manila, Branch III, and
No. 80007 also of the same Court, Branch XIV— 2. That, as the violation committed by the defendant was
identical in every respect, except for the fact that they a continuing offense, the two-year prescriptive period
pertain to different editions of the same textbook, were may be counted from September 3, 1963, or one day
filed against Socorro C. Ramos, for alleged violations of before the search in defendants' premises , which
Act 3134, otherwise known as the Copyright Law, as confirmed her possession of spurious and pirated copies
amended. The information in Criminal Case No. 80007 of the textbook in question.
alleged —
The prosecution's theory is that "(T)he crime being a
That on or about July to September, 1963, in the City of continuing offense, the statute of limitations begins to run
Manila and within the jurisdiction of this Honorable Court, from the completion of the last act or series of acts which
the said accused, as the proprietor aid general manager constitute the offense, " and this last act was committed
of the National Book Store, as enterprise engaged in the on September 3, 1963. Therefore when the information
business of publishing, selling and distributing books, did was filed on September 3, 1965, it was filed within the
then and there, wilfully and illegaly sell and distribute two-year period, albeit the last day of the prescriptive
spurious and pirated copies of the high school textbook, period.
entitled General Science Today for Philippine
School, First Year, by Gilam, Van Houten and Cornista,
Again, in both the accused filed a "Reply to Opposition to
said accused knowing that said book was duly
Motion to Quash." 4 She alleged that even assuming that
copyrighted by the Phoenix Publishing House, Inc., and
the crime is a continuing offense, the prescriptive period
was being distributed exclusively by its sister
should start from August 30, 1963, the date of the last
corporation, Alemar's or Sibal and Sons, Inc.1
invoiced sale, and not September 3, 1963, as there was
no indubitable proof that she had sold copies of the 365 days. This had been applied to criminal cases
questioned book on that date. Nonetheless, accused (People v. del Rosario, 51 O.G., 2686). 1964 was a leap
contended that even if the prescriptive period should year so that when this case was filed,  it was filed one
start from September 3, 1963, as proposed by the day too late.
prosecution, the two-year period was tolled on
September 2, 1965. She pointed out that two years The Motion to Quash is, therefore, granted and this case
mean a period of 730 days in accordance with Article 13 dismissed on the ground that the crime has already
of the New Civil Code, and 1964, being a leap year prescribed. (Emphasis supplied.)
consisting of 366 days, the 730th day fell on September
2, 1965. Hence, "... . when the information was filed on The prosecution appealed the above order to this Court
September 3, 1965, the offense, if any, had already on October 15, 1965. 9
prescribed. "
Meanwhile, in Criminal Case No. 80006, the motion to
The prosecution filed a Rejoinder 5 in both cases alleging quash was not resolved until December 23, 1965. On
as follow: this date, Hon. Placido Ramos denied the motion to
quash, and set the arraignment of the accused on
l. That February 28, and 29, 1964, should be regarded January 12, 1966, thus —
as one day only, and consequently, the two-year period
commencing on September 3, 1963 would end on Wherefore, finding the information to have been filed well
September 3, 1965; within the statutory period of two years from the date of
the last offense committed by the accused the Court
2. That under Act No. 3326, the prescriptive period was denies the motion to quash.
interrupted by the filing of the proceedings in the fiscal's
office; The arraignment of the accused is hereby set on
January 12, 1966 at 8:30 A.M.
3. That prescription would not lie in this case because
the complainant never waived the right to prosecute the The trial court refused to accept the prosecution's view
defendant. that the prescriptive period should run from September
3, held instead, that the same should commence on
Accused Ramos, also in cases, filed an Urgent Motion to September 4, 1963.
Strike the Rejoinder, 6 on the ground that it was filed
after the case had been submitted for resolution. She xxx xxx xxx
prayed that "in the event that the same should at all be
considered and allowed, that the accused be notified
thereof and granted reasonable opportunity to file a The evidence shows that on September 4, 1963, the
surrejoinder...". Manila Police by virtue of a search warrant procured by
the offended party, seized, among other articles, 69
copies of  General Science Today for Philippine
It appears that the Rejoinder was admitted by both trial Schools, First Year, by Gilman, Van Houten and
courts, but a Surrejoinder 7 was filed only in Criminal Cornista and one copy of the same textbook for Second
Case No. 80006. Here, the accused traversed the Year (Exhibit 5). The evidence likewise shows that on
prosecution's contentions in the Rejoinder, thus: September 3, 1963, the National Book Store, run and
managed by the accused, sold one said textbook, Exhibit
1. Under applicable and specific provisions of Philippine 'D' and Exhibit '2'. The mere possession by the accused
law, the two-year period of prescription commencing on on September 4, 1963 of several copies of this textbook
September 3, 1963 ended on September 2, 1965 ...; which is the textbook alleged to be spurious and pirated,
indicates that said accused was distributing or selling
2. The filing (of) proceedings in the Office of the City said textbook on September 4, 1963 . . . This being the
Fiscal of Manila did not interrupt the prescriptive period. case, it follows of necessity that the period of
prescription commenced to run from September 4, 1963
In Criminal Case No. 80007, Hon. Jesus De Veyra and two years from this date, by excluding the first and
granted the motion to quash by an order dated October including the last, would expire on September 4, 1965
7, 1965. 8 Pertinent portion of his order reads: and hence, the action, which was instituted on
September 3, 1965 is well within the prescriptive period.
. . . . And now to the main issue - whether the crime has
prescribed. In the Opposition to the Motion to Quash, the xxx xxx xxx
Prosecution, in its insistence on the theory of a
continuing crime, admits that the two-year prescriptive Furthermore, the trial court ignored the accused's theory
period should run from September 3, 1963. This case on leap year:
was filed on September 3, 1965 - one day too late.
Article 13, CCP provides that year shall mean a period of
Even if the last sale of said textbook could be considered 1. In G.R. No. L-25265, the appeal, then Solicitor
to have taken place on September 3, 1963, Exhibits 'D' General Arturo Alafriz filed a four-page brief dated
and '2', the Court is also of the opinion that the two-year December 21, 1965 15 wherein he recommended
period would expire September 3, 1965. affirmance of the order of 'Judge De Veyra quashing the
information, and the dismissal of the appeal, for the
The argument that inasmuch as 1964 is a leap year the simple reason that "the order appealed from is in
two-year period must contain 731 days, as contemplated accordance with law." Accused, now appellee Ramos,
by Article 13 of the Civil Code of the Philippines, is, in filed a brief dated January 21, 1966 16 reiterating her
the opinion of the Court, without merits for this particular previous allegations in the lower court.
legal provision that a year is understood to be of 365
days each is applicable only in determining the number The Phoenix Publishing House, Inc., the offended party,
of days a year must legally contain but not for the filed a motion to intervene in this appeal, on the following
purpose of ascertaining the period of prescription based grounds:
on years. In the computation of the period of
prescription, a year should be construed as the calendar a) That the Solicitor General, instead of prosecuting the
year comprising the whole period from January 1 to appeal, recommended its dismissal
December 31, regardless of the number of days it
contains. Consequently, in this particular case, if it is b) That, to protect its interest, it is necessary that the
considered that the last sale took place on September 3, movant be allowed to intervene and to submit
1963, the two-year period, following the rule exclude the- memorandum to sustain its view that the criminal action
first-and-include-the-last, will expire on September 3, against the accused had not yet prescribed. 17
1965.
Over the opposition of the accused-appellee, this Court
The accused filed a Motion for Reconsideration. 10 Two granted the same. 18 Accordingly, the Phoenix Publishing
more pleadings were filed, 11 after which, the trial court House, Inc. filed its Memorandum 19 wherein it alleged
finally denied said motion for reconsideration for lack of that the trial court erred
merit, 12 and reset the arraignment of the accused on
February 24, 1966 at 8:30 A.M.
I. IN ACTING ON DEFENDANT'S MOTION TO QUASH
WITHOUT REQUIRING THE PRESENTATION OF
The accused thus filed with this Court this petition EVIDENCE IN SUPPORT OF THE PLEA OF
for certiorari, mandamus and prohibition, 13 with the PRESCRIPTION.
following prayer:
II. IN NOT APPLYING TO THIS CASE THE FOUR-
(a) Forthwith issue, upon filing by petitioner of a bond in YEAR PRESCRIPTIVE PERIOD PROVIDED FOR IN
such amount as this Honorable Court may fix, a Writ of ACT NO. 3326.
Preliminary Injunction restraining, enjoining and
prohibiting respondents from further proceedings in
Criminal Case No. 80006 of the Court of First instance of III. IN NOT HOLDING THAT THE PRELIMINARY
Manila, Branch III, daring the pendency of this Action: INVESTIGATION PROCEEDINGS IN THE MANILA
CITY FISCAL'S OFFICE AND IN THE DEPARTMENT
OF JUSTICE INTERRUPTED PRESCRIPTION.
(b) After due hearing, to render judgment in favor of
petitioner and against respondents —
IV. IN NOT CONSIDERING FEBRUARY 28 AND 29,
1964, AS ONE DAY FOR PURPOSES OF
(1) Annulling and setting aside the Orders of the PRESCRIPTION.
respondent Judge of December 23, 1965 (Annex 'G')
denying petitioner's motion to quash, and of January 20,
1966 (Annex 'K') denying petitioner's motion for Accused-appellee, Ramos, filed a Reply
reconsideration; Memorandum 20 refuting intervenor's assignment of
errors. Subsequent pleadings 21 focused on whether
February 28, and 29 of a leap year should be counted as
(2) Ordering respondent Judge to dismiss Criminal Case one day or separate days in computing the period of
No. 80006 aforesaid; and prescription.

(3) Making the writ of preliminary injunction hereafter La 2. In G.R. No. L-25644-the special civil action — the
be issued permanent and final. issues raised in the foregoing assignment of errors were
relied upon in respondent People's Answer. 22 And,
This Court on February 11, 1966, issued a writ of following respondent Judge Ramos' reasoning, it was
preliminary injunction restraining the trial Court from contended that the period of prescription should start
further proceedings in Criminal Case No. 80006. 14 Also from September 4, 1963, and not September 3, 1963, as
on the same date, the two cases, G.R. No. L-25265 and originally proposed by the prosecution. Furthermore, as
G.R. No. L-25644, were consolidated. an affirmative defense, it was alleged that the petitioner
has no cause of action for certiorari, prohibition and Section 24. All actions, suits, or proceedings arising
mandamus since Judge Ramos did not commit any under this Act shall be originally cognizable by the
grave abuse of discretion in refusing to quash the Courts of First Instance of the Philippines and shall
information. Respondent contended that the prescribe after two years from the time the cause of
"(P)etitioner's remedy is to appeal the judgment of action arose.
conviction rendered after a trial on the merits. " This
allegation was opposed by petitioner Ramos; 23 she 2. Now on the main issue of prescription. The question to
insisted that she had a cause of action for certiorari be resolved is the proper computation of the two-year
prohibition and mandamus. Respondent People filed a period of prescription from September 3, 1963.
Reply Memorandum 24 disputing petitioner's allegations. Resolution of this issue hinges, in turn, on whether
February 28, and 29 of a leap year, 1964, should be
We are, thus, faced with conflicting orders of two counted as one day, as proposed by the prosecution; or
different Branches of the Court of First Instance of as separate days, as alleged by the defense.
Manila-one holding that the crime has prescribed, the
other that it has not. This issue which was in 1965 still undetermined is now a
settled matter. It was held in 1969 in Namarco vs.
1. Now to resolve the preliminary issues: Tuazon  27 that February 28 and 29 of a leap year should
be counted as separate days in computing periods of
a. On the propriety of the special civil action for certiorari prescription. Thus, this Court, speaking thru former Chief
and prohibition. Justice Roberto Concepcion, held that where the
prescriptive period was supposed to commence on
December 21, 1955, the filing of the action on December
We find for petitioner. As We had occasion to hold
21, 1965, was done after the ten-year period has lapsed
in Quizon vs. Baltazar, 76 SCRA 559:
— since 1960 and 1964 were both leap years and the
case was thus filed two (2) days too late. Since this case
As to the contention of respondents that the denial of a was filed on September 3, 1965, it was filed one day too
motion to quash is not a ground for certiorari and late; considering that the 730th day fell on September 2,
prohibition, suffice it to state that to allow an accused to 1965 — the year 1964 being a leap year.
undergo the ordeals of trial and conviction when the
information or complaint against him is patently defective
In explaining the rationale for its holding, the Court took
or the offense charged therein has been indisputably
pains to trace the antecedent decisional and statutory
shown to have already prescribed is unfair and unjust for
bases for its conclusion, thus —
which reason, procedurally, the ordinary remedy of
appeal cannot be plain and adequate.
Prior to the approval of the Civil Code of Spain, the
Supreme Court thereof held, on March 30, 1887, that,
As to mandamus, We are incline to agree with
when the law spoke of months, it meant a 'natural' month
respondent's allegation that "petitioner has no cause of
or 'solar' month, in the absence of express provision to
action for mandamus which is a writ intended to control
the contrary. Such provision was incorporated into the
the exercise of a purely ministerial function. To quash an
Civil Code of Spain, subsequently promulgated. Hence,
information is not a ministerial function," 25 However,
the same Supreme Court declared that, pursuant to
mandamus as a remedy is a superfluity here,
Article 7 of said Code, 'whenever months are referred to
considering that petitioner can obtain full relief thru
in the law. it shall be understood that months are of 30
certiorari and prohibition.
days,' not the 'natural', 'solar' or 'calendar' months,
unless they are 'designated by name,' in which case,
b. On the applicability of the four-year prescriptive period 'they shall be computed by the actual number of days
provided in Act No. 3326. 26 they have.' This concept was, later, modified in the
Philippines, by Section 13 of the Revised Administrative
The same is not applicable. Said Act provides: Code, pursuant to which 'month shall be understood to
refer to a calendar month.' With the approval of the Civil
Section 1. Violations penalized by special acts Code of the Philippines (RA 386) we have reverted to
shall unless otherwise provided in such acts, prescribe the provisions of the Spanish Civil Code in accordance
in accordance with the following rules: (a)........... (b) after with which a month is to be considered as the regular
four years for those punished by imprisonment for more 30-month and not the solar or civil month with the
than one month, but less than two years; ... (Emphasis particularity that, whereas the Spanish Civil Code merely
supplied.) mentioned 'months, days or nights,' ours has added
thereto the term 'years' and explicitly ordains in Article 13
Act No. 3326 applies only if the special act does not that it shall be understood that years are of three
provide for its own prescriptive period. It has no hundred sixty-five days. 28
application here, where the Copyright Law provides for
its own prescriptive period, viz:
With respect to the opinion of some members of the
Court that Article 13 of the Civil Code is unrealistic, the
Court adverted to the proper remedy thus —

Although some justices of the Supreme Court are

inclined to think that Article 13 of the Civil Code defining
'years' to mean 365 days is not realistic, the remedy is
not judicial legislation. If public interest demands a
reversion to the policy embodied in the Revised
Administrative Code, this may be done through
legislative process, not by judicial decree. 29

Finally, there is no merit in the allegation that the

reckoning of the prescriptive period should start from
September 4, 1963. This was the date when the police
authorities discovered several pirated books in
accused's store. But the accused was charged, in both
Criminal Cases Nos. 80006 and 80007, with having
allegedly sold  and distributed  spurious and pirated
copies of the textbook in question, not of illegal
possession of the same. The prosecution's claim that the
preliminary investigation proceedings in the Manila City
Fiscal's Office and in the prosecution Division of the
Department of Justice interrupted the running of the
prescriptive period, is also without merit. We held
in People vs. Tayco  30 that the running of the period of
prescription is interrupted not by the act of the offended
party in reporting the offense to the final but the filing of
the complaint or information in court.

WHEREFORE, the order dated October 7, 1965 of the

Court of First Instance of Manila Branch XIV in Criminal
Case No. 80007 dismissing the case on the ground of
prescription, is AFFIRMED. The order dated December
23, 1965 of the same court, Branch III, in Criminal Case
No. 80006, is REVERSED and SET ASIDE, and the
case is DISMISSED, on the ground that the crime
charged therein had already prescribed. Without
pronouncement as to costs.

SO ORDERED.
 motion having been overruled, plaintiff excepted to the
order overruling it, and appealed the case to the
Supreme Court upon a bill of exceptions.

The ground of the decision appealed from is that a

comparison of the plaintiff's dictionary with that of the
defendant does not show that the latter is an improper
copy of the former, which has been published and
offered for sale by the plaintiff for about twenty-five years
or more. For this reason the court held that the plaintiff
had no right of action and that the remedy sought by him
could not be granted.

The appellant contends that court below erred in not

declaring that the defendant had reproduced the
plaintiff's work and that the defendant had violated article
7 of the Law of January 10, 1879, on Intellectual
G.R. No. L-11937            April 1, 1918 Property.

PEDRO SERRANO LAKTAW, plaintiff-appellant, Said article provides:

vs.
MAMERTO PAGLINAWAN, defendant-appellee. Nobody may reproduce another person's work without
the owner's consent, even merely to annotate or add
ARAULLO, J.: anything to it, or improve any edition thereof.

In the complaint presented in the Court of First Instance Therefore, in order that said article may be violated, it is
of the City of Manila on February 20, 1915, it was not necessary, as the court below seems to have
alleged: (1) That the plaintiff was, according to the laws understood, that a work should be an improper copy of
regulating literary properties, the registered owner and another work previously published. It is enough that
author of a literary work entitled Diccionario Hispano- another's work has been reproduced without the consent
Tagalog (Spanish-Tagalog Dictionary) published in the of the owner, even though it be only to annotate, add
City of Manila in 1889 by the printing establishment La something to it, or improve any edition thereof.
Opinion, and a copy of which was attached to the
complaint, as Exhibit A; (2) that the defendant, without Upon making a careful and minute comparison of Exhibit
the consent of the plaintiff, reproduced said literary work, A, the dictionary written and published by the plaintiff,
improperly copied the greater part thereof in the work and Exhibit B, written and published by the defendant,
published by him and entitled Diccionariong Kastila- and, taking into account the memorandum (fols. 55 to
Tagalog (Spanish-Tagalog Dictionary), a copy of which 59) presented by the defendant, in which he enumerates
was also attached to the complaint as Exhibit B; (3) that the words and terms which, according to him, are in his
said act of the defendant, which is a violation of article 7 dictionary but not in that of that of the plaintiff, and
of the Law of January 10, 1879, on Intellectual Property, viceversa, and the equivalents or definitions given by the
caused irreparable injuries to the plaintiff, who was plaintiff, as well as the new Tagalog words which are in
surprised when, on publishing his new work the dictionary of the defendant but not in that of the
entitled Diccionario Tagalog-Hispano (Tagalog-Spanish plaintiff; and considering the notes, Exhibit C, first series,
Dictionary) he learned of the fact, and (4) that the presented by the plaintiff, in which the terms copied by
damages occasioned to the plaintiff by the publication of the defendant from the plaintiff's dictionary are
defendant's work amounted to $10,000. The plaintiff enumerated in detail and in relation to each letter of the
therefore prayed the court to order the defendant to alphabet and which the plaintiff's own words and terms
withdraw from sale all stock of the work herein identified are set forth, with a summary, at the foot of each group
as Exhibit B and to pay the plaintiff the sum of $10,000, of letters, which shows the number of initial Spanish
with costs. words contained in the defendant's dictionary, the words
that are his own and the fact that the remaining ones are
The defendant in his answer denied generally each and truly copied from the plaintiff's dictionary — considering
every allegation of the complaint and prayed the court to all of these facts, we come to a conclusion completely
absolve him from the complaint. After trial and the different and contrary to that of the trial court, for said
introduction of evidence by both parties, the court on evidence clearly shows:
August 20, 1915, rendered judgment, absolving the
defendant from the complaint, but without making any 1. That, of the Spanish words in the defendant's
special pronouncement as to costs. The plaintiff moved dictionary, Exhibit B, which correspond to each letter of
for a new trial on the ground that the judgment was the alphabet, those that are enumerated below have
against the law and the weight of the evidence. Said been copied and reproduced from the plaintiff's
dictionary, with the exception of those that are stated to
  23,560 3,108
be defendant's own.

Therefore, of the 23,560 Spanish words in the

Letter Words Defendant's
defendant's dictionary, after deducting 17 words
own
corresponding to the letters K and X (for the plaintiff has
no words corresponding to them), only 3,108 words are
"A" 1,184 231
the defendant's own, or, what is the same thing, the
"B" 364 28 defendant has added only this number of words to those
that are in the plaintiff's dictionary, he having reproduced
"C" 660 261 or copied the remaining 20,452 words.

"CH" 76 10 2. That the defendant also literally reproduced and

copied for the Spanish words in his dictionary, the
"D" 874 231 equivalents, definitions and different meanings in
Tagalog, given in plaintiff's dictionary, having
"E" 880 301 reproduced, as to some words, everything that appears
in the plaintiff's dictionary for similar Spanish words,
"F" 383 152 although as to some he made some additions of his own.
Said copies and reproductions are numerous as may be
"G" 302 111 seen, by comparing both dictionaries and using as a
guide or index the defendant's memorandum and notes,
"H" 57 64
first series, Exhibit C, in which, as to each word, the
similarities and differences between them are set forth in
"I" 814 328
detail.
"J" 113 25
3. That the printer's errors in the plaintiff's dictionary as
"K" 11 11 to the expression of some words in Spanish as well as
their equivalents in Tagalog are also reproduced, a fact
"L" 502 94 which shows that the defendant, in preparing his
dictionary, literally copied those Spanish words and their
"LL" 36 2 meanings and equivalents in Tagalog from the plaintiff's
dictionary.
"M" 994 225
The trial court has chosen at random, as is stated in the
"N" 259 53
judgment appealed from, some words from said
"Ñ" 6 2 dictionaries in making the comparison on which its
conclusion is based, and consequently the conclusion
"O" 317 67 reached by it must be inaccurate and not well founded,
because said comparison was not complete.
"P" 803 358
In said judgment some words of the defendant's
"Q" 84 11 dictionary are transcribed, the equivalents and meanings
of which in Tagalog are exactly the same as those that
"R" 847 140 are given in the plaintiff's dictionary, with the exception,
as to some of them, of only one acceptation, which is the
"S" 746 118 defendant's own production. And with respect to the
examples used by the defendant in his dictionary, which,
"T" 591 147 according to the judgment, are not copied from the
plaintiff's — the judgment referring to the
"U" 107 15 preposition a (to), in Tagalog sa — it must be noted that
the defendant, in giving in his dictionary an example of
"V" 342 96
said preposition, uses the expression "voy a Tayabas" (I
"X" 6 6 am going to Tayabas) instead of "voy a Bulacan" (I am
going to Bulacan), as the plaintiff does in his dictionary,
"Y" 24 4 or what is the same thing, that one speaks of Bulacan
while the other speaks of Tayabas. This does not show
"Z" 73 17 that there was no reproduction or copying by the
defendant of the plaintiffs work, but just the opposite, for
  ______ _____ he who intends to imitate the work of another, tries to
make it appear in some manner that there is some
difference between the original and the imitation; and in approval of the Governor-General of the Islands, on
the example referred to, with respect to the June 15, 1887. Said law of January 10, 1879, and the
preposition a (to), that dissimilarity as to the province rules for its application, were therefore in force in these
designated seems to effect the same purpose. Islands when the plaintiff's dictionary was edited and
published in 1889.
In the judgment appealed from, the court gives one to
understand that the reproduction of another's dictionary It appears from the evidence that although the plaintiff
without the owner's consent does not constitute a did not introduce at the trial the certificate of registration
violation of the Law of Intellectual Property for the court's of his property rights to said work which, according to
idea of a dictionary is stated in the decision itself, as said rules, was kept in the Central Government of these
follows: Islands, and was issued to him in 1890, the same having
been lost during the revolution against Spain, and no
Dictionaries have to be made with the aid of others, and trace relative to the issuance of said certificate being
they are improved by the increase of words. What may obtainable in the Division of Archives of the Executive
be said of a pasture ground may be said also of a Bureau on account of the loss of the corresponding
dictionary, i. e., that it should be common property for all records, yet as in the first page of said dictionary the
who may desire to write a new dictionary, and the property right of the plaintiff was reserved by means of
defendant has come to this pasture ground and taken the words "Es propiedad del autor" (All rights reserved),
whatever he needed from it in the exercise of a perfect taken in connection with the permission granted him by
right. the Governor-General on November 24, 1889, to print
and publish said dictionary, after an examination thereof
by the permanent committee of censors, which
Such idea is very erroneous, especially in relation to the
examination was made, and the necessary license
Law of Intellectual Property. Danvilla y Collado the
granted to him, these facts constitute sufficient proof,
author of the Law of January 10, 1879, on Intellectual
under the circumstances of the case, as they have not
Property, which was discussed and approved in the
been overcome by any evidence on the part of the
Spanish Cortes, in his work entitled La Propiedad
defendant, showing that said plaintiff did not comply with
Intelectual (page 362, 1st ed.) states with respect to
the requirements of article 36 of said law, which was the
dictionaries and in relation to article 7 of said law:
prerequisite to the enjoyment of the benefits thereof
according to the preceding articles, among which is
The protection of the law cannot be denied to the author article 7, which is alleged in the complaint to have been
of a dictionary, for although words are not the property of violated by the defendant.
anybody, their definitions, the example that explain their
sense, and the manner of expressing their different
Even considering that said Law of January 10, 1879,
meanings, may constitute a special work. On this point,
ceased to operate in these Islands, upon the termination
the correctional court of the Seine held, on August 16,
of Spanish sovereignty and the substitution thereof by
1864, that a dictionary constitutes property, although
that of the United States of America, the right of the
some of the words therein are explained by mere
plaintiff to invoke said law in support of the action
definitions expressed in a few lines and sanctioned by
instituted by him in the present case cannot be disputed.
usage, provided that the greater part of the other words
His property right to the work Diccionario Hispano-
contain new meanings; new meanings which evidently
Tagalog (Spanish-Tagalog Dictionary), published by him
may only belonged to the first person who published
and edited in 1889, is recognized and sanctioned by said
them.
law, and by virtue thereof, he had acquired a right of
which he cannot be deprived merely because the law is
Therefore, the plaintiff, Pedro Serrano, cannot be denied not in force now or is of no actual application. This
the legal protection which he seeks, and which is based conclusion is necessary to protect intellectual property
on the fact that the dictionary published by him in 1889 is rights vested after the sovereignty of Spain was
his property — said property right being recognized and superseded by that of the United States. It was so held
having been granted by article 7, in connection with superseded by that of the United States. It was so held
article 2, of said law — and on the further fact that said in the Treaty of Paris of December 10, 1898, between
work was reproduced by the defendant without his Spain and the United States, when it declared in article
permission. 13 thereof that the rights to literary, artistic, and industrial
properties acquired by the subject of Spain in the Island
This law was published in the Gaceta de Madrid on of Cuba and in Puerto Rico and the Philippines and other
January 12, 1879. It took effect in these Islands six ceded territories, at the time of the exchange of the
months after its promulgation or publication, as provided ratification of said Treaty, shall continue to be respect.
in article 56 thereof. The body of rules for the execution
of said law having been approved by royal decree of In addition to what has been said, according to article
September 3, 1880, and published in the Gaceta de 428 of the Civil Code, the author of a literary, scientific,
Madrid on September 6, 1880 and extended to the or artistic work, has the right to exploit it and dispose
Philippine Islands by royal decree of May 5, 1887, it was thereof at will. In relation to this right, there exists the
in turn published in the Gaceta de Manila, with the
exclusive right of the author, who is the absolute owner cannot be denied that the reproduction of the plaintiff's
of his own work, to produce it, according to article 2 of book by the defendant has caused damages to the
the Law of January 10, 1879, and consequently, nobody former, but the amount thereof has not been determined
may reproduce it, without his permission, not even to at the trial, for the statement of the plaintiff as to the
annotate or add something to it, or to improve any proceeds he would have realized if he had printed in
edition thereof, according to article 7 of said law. 1913 the number of copies of his work which he stated in
Manresa, in his commentaries on article 429 of the Civil his declaration — a fact which he did not do because the
Code (vol. 3, p. 633, 3d ed.) says that the concrete defendant had reproduced it — was not corroborated in
statement of the right to literary properties is found in the any way at the trial and is based upon mere calculations
legal doctrine according to which nobody may reproduce made by the plaintiff himself; for which reason no
another person's work, without the consent of his owner, pronouncement can be made in this decision as to the
or even to annotate or add something to it or to improve indemnification for damages which the plaintiff seeks to
any edition thereof. And on page 616 of said volume, recover.
Manresa says the following:
The plaintiff having prayed, not for a permanent
He who writes a book, or carves a statue, or makes an injunction against the defendant, as the plaintiff himself
invention, has the absolute right to reproduce or sell it, in his brief erroneously states, but for a judgment
just as the owner of land has the absolute right to sell it ordering the defendant to withdraw from sale all stock of
or its fruits. But while the owner of land, by selling it and his work Diccionariong Kastila-Tagalog (Spanish-
its fruits, perhaps fully realizes all its economic value, by Tagalog Dictionary), of which Exhibit B is a copy, and the
receiving its benefits and utilities, which are presented, suit instituted by said plaintiff being proper, we reverse
for example, by the price, on the other hand the author of the judgment appealed from and order the defendant to
a book, statue or invention, does not reap all the benefits withdraw from sale, as prayed for in the complaint, all
and advantages of his own property by disposing of it, stock of his work above-mentioned, and to pay the costs
for the most important form of realizing the economic of first instance. We make no special pronouncement as
advantages of a book, statue or invention, consists in the to the costs of this instance. So ordered.
right to reproduce it in similar or like copies, everyone of
which serves to give to the person reproducing them all
the conditions which the original requires in order to give
the author the full enjoyment thereof. If the author of a
book, after its publication, cannot prevent its
reproduction by any person who may want to reproduce
it, then the property right granted him is reduced to a
very insignificant thing and the effort made in the
production of the book is no way rewarded.

Indeed the property right recognized and protected by

the Law of January 10, 1879, on Intellectual Property,
would be illusory if, by reason of the fact that said law is
no longer in force as a consequence of the change of
sovereignty in these Islands, the author of a work, who
has the exclusive right to reproduce it, could not prevent
another person from so doing without his consent, and
could not enforce this right through the courts of justice
in order to prosecute the violator of this legal provision
and the defrauder or usurper of his right, for he could not
obtain the full enjoyment of the book or other work, and
his property right thereto, which is recognized by law,
would be reduced, as Manresa says, to an insignificant
thing, if he should have no more right than that of selling
his work.

The reproduction by the defendant without the plaintiff's

consent of the Diccionario Hispano-Tagalog (Spanish-
Tagalog Dictionary), published and edited in the City of
Manila in 1889, by the publication of the Diccionariong
Kastila-Tagalog (Spanish-Tagalog Dictionary), published
in the same city and edited in the press El Progreso in
1913, as appears from Exhibit B, which is attached to the
complaint, has caused the plaintiff, according to the
latter, damages in the sum of $10,000. It is true that it
 and 2 (1985 edition) which book was covered by
copyrights issued to them.

In the course of revising their published works,

petitioners scouted and looked around various
bookstores to check on other textbooks dealing with the
same subject matter. By chance they came upon the
book of respondent Robles and upon perusal of said
book they were surprised to see that the book was
strikingly similar to the contents, scheme of presentation,
illustrations and illustrative examples in their own book,
CET.chanrobles virtual lawlibrary

After an itemized examination and comparison of the two

books (CET and DEP), petitioners found that several
pages of the respondent’s book are similar, if not all
together a copy of petitioners’ book, which is a case of
plagiarism and copyright infringement.

Petitioners then made demands for damages against

respondents and also demanded that they cease and
desist from further selling and distributing to the general
public the infringed copies of respondent Robles’ works.

However, respondents ignored the demands, hence, on

July 7, 1988, petitioners filed with the Regional Trial
Court, Makati, a complaint for "Infringement and/or unfair
[G.R. No. 131522. July 19, 1999.] competition with damages" 4 against private
respondents. 5
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N.
FERNANDO, Petitioners, v. FELICIDAD C. ROBLES In the complaint, petitioners alleged that in 1985,
and GOODWILL TRADING CO., INC., Respondents. respondent Felicidad C. Robles being substantially
familiar with the contents of petitioners’ works, and
DECISION without securing their permission, lifted, copied,
plagiarized and/or transposed certain portions of their
book CET. The textual contents and illustrations of CET
PARDO, J.: were literally reproduced in the book DEP. The
plagiarism, incorporation and reproduction of particular
portions of the book CET in the book DEP, without the
The case before us is a petition for review on certiorari 1 authority or consent of petitioners, and the
to set aside the (a) decision of the Court of Appeals 2 , misrepresentations of respondent Robles that the same
and (b) the resolution denying petitioners’ motion for was her original work and concept adversely affected
reconsideration, 3 in which the appellate court affirmed and substantially diminished the sale of the petitioners’
the trial court’s dismissal of the complaint for book and caused them actual damages by way of
infringement and/or unfair competition and damages but unrealized income.chanroblesvirtuallawlibrary
deleted the award for attorney’s fees.chanrobles.com :
virtual law library Despite the demands of the petitioners for respondents
to desist from committing further acts of infringement and
The facts are as follows:chanrob1es virtual 1aw library for respondent to recall DEP from the market,
respondents refused. Petitioners asked the court to order
Petitioners are authors and copyright owners of duly the submission of all copies of the book DEP, together
issued certificates of copyright registration covering their with the molds, plates and films and other materials used
published works, produced through their combined in its printing destroyed, and for respondents to render
resources and efforts, entitled COLLEGE ENGLISH FOR an accounting of the proceeds of all sales and profits
TODAY (CET for brevity), Books 1 and 2, and since the time of its publication and sale.
WORKBOOK FOR COLLEGE FRESHMAN ENGLISH,
Series 1. Respondent Robles was impleaded in the suit because
she authored and directly committed the acts of
Respondent Felicidad Robles and Goodwill Trading Co., infringement complained of, while respondent Goodwill
Inc. are the author/publisher and distributor/seller of Trading Co., Inc. was impleaded as the publisher and
another published work entitled "DEVELOPING joint co-owner of the copyright certificates of registration
ENGLISH PROFICIENCY" (DEP for brevity), Books 1 covering the two books authored and caused to be
published by respondent Robles with obvious Felicidad Robles and Goodwill Trading Co., Inc. shall be
connivance with one another. DISMISSED; that said plaintiffs solidarily reimburse
defendant Robles for P20,000.00 attorney’s fees and
On July 27, 1988, respondent Robles filed a motion for a defendant Goodwill for P5,000.00 attorney’s fees.
bill of particulars 6 which the trial court approved on Plaintiffs are liable for cost of suit.
August 17, 1988. Petitioners complied with the desired
particularization, and furnished respondent Robles the IT IS SO ORDERED.
specific portions, inclusive of pages and lines, of the
published and copyrighted books of the petitioners which "Done in the City of Manila this 23rd day of April,
were transposed, lifted, copied and plagiarized and/or 1993.chanrobles.com:cralaw:red
otherwise found their way into respondent’s
book.chanrobles lawlibrary : rednad "(s/t) MARVIE R. ABRAHAM SINGSON

On August 1, 1988, respondent Goodwill Trading Co., "Assisting Judge

Inc. filed its answer to the complaint 7 and alleged that
petitioners had no cause of action against Goodwill "S.C. Adm. Order No. 124-92" 11
Trading Co., Inc. since it was not privy to the
misrepresentation, plagiarism, incorporation and On May 14, 1993, petitioners filed their notice of appeal
reproduction of the portions of the book of petitioners; with the trial court 12, and on July 19, 1993, the court
that there was an agreement between Goodwill and the directed its branch clerk of court to forward all the
respondent Robles that Robles guaranteed Goodwill that records of the case to the Court of Appeals. 13
the materials utilized in the manuscript were her own or
that she had secured the necessary permission from In the appeal, petitioners argued that the trial court
contributors and sources; that the author assumed sole completely disregarded their evidence and fully
responsibility and held the publisher without any liability. subscribed to the arguments of respondent Robles that
the books in issue were purely the product of her
On November 28, 1988, respondent Robles filed her researches and studies and that the copied portions
answer 8 , and denied the allegations of plagiarism and were inspired by foreign authors and as such not subject
copying that petitioners claimed. Respondent stressed to copyright. Petitioners also assailed the findings of the
that (1) the book DEP is the product of her independent trial court that they were animated by bad faith in
researches, studies and experiences, and was not a instituting the complaint. 14
copy of any existing valid copyrighted book; (2) DEP
followed the scope and sequence or syllabus which are On June 27, 1997, the Court of Appeals rendered
common to all English grammar writers as judgment in favor of respondents Robles and Goodwill
recommended by the Association of Philippine Colleges Trading Co., Inc. The relevant portions of the decision
of Arts and Sciences (APCAS), so any similarity between state:chanrobles law library
the respondents book and that of the petitioners was due
to the orientation of the authors to both works and "It must be noted, however, that similarity of the
standards and syllabus; and (3) the similarities may be allegedly infringed work to the author’s or proprietor’s
due to the authors’ exercise of the "right to fair use of copyrighted work does not of itself establish copyright
copyrighted materials, as guides."cralaw virtua1aw infringement, especially if the similarity results from the
library fact that both works deal with the same subject or have
the same common source, as in this case.
Respondent interposed a counterclaim for damages on
the ground that bad faith and malice attended the filing of Appellee Robles has fully explained that the portion or
the complaint, because petitioner Habana was material of the book claimed by appellants to have been
professionally jealous and the book DEP replaced CET copied or lifted from foreign books. She has duly proven
as the official textbook of the graduate studies that most of the topics or materials contained in her
department of the Far Eastern University. 9chanrobles book, with particular reference to those matters claimed
law library by appellants to have been plagiarized were topics or
matters appearing not only in appellants and her books
During the pre-trial conference, the parties agreed to a but also in earlier books on College English, including
stipulation of facts 10 and for the trial court to first foreign books, i.e. Edmund Burke’s "Speech on
resolve the issue of infringement before disposing of the Conciliation", Boerigs’ "Competence in English" and
claim for damages. Broughton’s, "Edmund Burke’s
Collection." chanrobles.com:cralaw:red
After the trial on the merits, on April 23, 1993, the trial
court rendered its judgment finding x           x          x
thus:jgc:chanrobles.com.ph

"WHEREFORE, premises considered, the court hereby "Appellant’s reliance on the last paragraph on Section 11
orders that the complaint filed against defendants is misplaced. It must be emphasized that they failed to
prove that their books were made sources by appellee." recording, a computer program, a compilation of data
15 and other materials or a musical work in graphic form,
irrespective of the ownership of the original or the copy
The Court of Appeals was of the view that the award of which is the subject of the rental; (n)
attorneys’ fees was not proper, since there was no bad
faith on the part of petitioners Habana Et. Al. in instituting 177.5 Public display of the original or copy of the work;
the action against respondents.
177.6 Public performance of the work; and
On July 12, 1997, petitioners filed a motion for
reconsideration, 16 however, the Court of Appeals 177.7 Other communication to the public of the work" 19
denied the same in a Resolution 17 dated November 25,
1997.chanroblesvirtualawlibrary The law also provided for the limitations on copyright,
thus:chanroblesvirtuallawlibrary
Hence, this petition.
"SECTION 184.1 Limitations on copyright. —
In this appeal, petitioners submit that the appellate court Notwithstanding the provisions of Chapter V, the
erred in affirming the trial court’s decision. following acts shall not constitute infringement of
copyright:chanrob1es virtual 1aw library
Petitioners raised the following issues: (1) whether or
not, despite the apparent textual, thematic and (a) the recitation or performance of a work, once it has
sequential similarity between DEP and CET, been lawfully made accessible to the public, if done
respondents committed no copyright infringement; (2) privately and free of charge or if made strictly for a
whether or not there was animus furandi on the part of charitable or religious institution or society; [Sec. 10(1),
respondent when they refused to withdraw the copies of P.D. No. 49]
CET from the market despite notice to withdraw the
same; and (3) whether or not respondent Robles abused (b) The making of quotations from a published work if
a writer’s right to fair use, in violation of Section 11 of they are compatible with fair use and only to the extent
Presidential Decree No. 49. 18 justified for the purpose, including quotations from
newspaper articles and periodicals in the form of press
We find the petition impressed with summaries; Provided, that the source and the name of
merit.chanrobles.com : virtual law library the author, if appearing on the work are mentioned;
(Sec. 11 third par. P.D. 49)chanrobles.com.ph : virtual
The complaint for copyright infringement was filed at the law library
time that Presidential Decree No. 49 was in force. At
present, all laws dealing with the protection of intellectual x           x          x
property rights have been consolidated and as the law
now stands, the protection of copyrights is governed by
Republic Act No. 8293. Notwithstanding the change in (e) The inclusion of a work in a publication, broadcast, or
the law, the same principles are reiterated in the new law other communication to the public, sound recording of
under Section 177. It provides for the copy or economic film, if such inclusion is made by way of illustration for
rights of an owner of a copyright as teaching purposes and is compatible with fair use:
follows:jgc:chanrobles.com.ph Provided, That the source and the name of the author, if
appearing in the work is mentioned; 20
"SECTION 177. Copy or Economic rights. — Subject to
the provisions of chapter VIII, copyright or economic In the above quoted provisions, "work" has reference to
rights shall consist of the exclusive right to carry out, literary and artistic creations and this includes books and
authorize or prevent the following acts:chanrob1es other literary, scholarly and scientific works. 21
virtual 1aw library
A perusal of the records yields several pages of the book
177.1 Reproduction of the work or substantial portion of DEP that are similar if not identical with the text of
the work; CET.chanrobles virtual lawlibrary

177.2 Dramatization, translation, adaptation, abridgment, On page 404 of petitioners’ Book 1 of College English for
arrangement or other transformation of the Today, the authors wrote:chanrob1es virtual 1aw library
work;chanroblesvirtuallawlibrary:red
Items in dates and addresses:chanrob1es virtual 1aw
177.3 The first public distribution of the original and each library
copy of the work by sale or other forms of transfer of
ownership; He died on Monday, April 15, 1975.

177.4 Rental of the original or a copy of an audiovisual Miss Reyes lives in 214 Taft Avenue,
or cinematographic work, a work embodied in a sound
Manila 22 occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or
On page 73 of respondents Book 1 Developing English piracy, which is a synonymous term in this connection,
Today, they wrote:chanroblesvirtuallawlibrary consists in the doing by any person, without the consent
of the owner of the copyright, of anything the sole right to
He died on Monday, April 25, 1975. do which is conferred by statute on the owner of the
copyright. 29
Miss Reyes address is 214 Taft Avenue Manila 23
The respondents’ claim that the copied portions of the
On Page 250 of CET, there is this example on book CET are also found in foreign books and other
parallelism or repetition of sentence structures, grammar books, and that the similarity between her style
thus:jgc:chanrobles.com.ph and that of petitioners can not be avoided since they
come from the same background and orientation may be
"The proposition is peace. Not peace through the true. However, in this jurisdiction under Sec 184 of
medium of war; not peace to be hunted through the Republic Act 8293 it is provided that:chanrob1es virtual
labyrinth of intricate and endless negotiations; not peace 1aw library
to arise out of universal discord, fomented from principle,
in all parts of the empire; not peace to depend on the Limitations on Copyright. Notwithstanding the provisions
juridical determination of perplexing questions, or the of Chapter V, the following shall not constitute
precise marking of the boundary of a complex infringement of copyright:chanrobles lawlibrary : rednad
government. It is simple peace; sought in its natural
course, and in its ordinary haunts. It is peace sought in x           x          x
the spirit of peace, and laid in principles purely pacific.

— Edmund Burke, "Speech on Criticism." 24 (c) The making of quotations from a published work if
they are compatible with fair use and only to the extent
On page 100 of the book DEP 25 , also in the topic of justified for the purpose, including quotations from
parallel structure and repetition, the same example is newspaper articles and periodicals in the form of press
found in toto. The only difference is that petitioners summaries: Provided, That the source and the name of
acknowledged the author Edmund Burke, and the author, if appearing on the work, are mentioned.
respondents did not.
A copy of a piracy is an infringement of the original, and
In several other pages 26 the treatment and manner of it is no defense that the pirate, in such cases, did not
presentation of the topics of DEP are similar if not a know whether or not he was infringing any copyright; he
rehash of that contained in CET.cralawnad at least knew that what he was copying was not his, and
he copied at his peril. 30
We believe that respondent Robles’ act of lifting from the
book of petitioners substantial portions of discussions The next question to resolve is to what extent can
and examples, and her failure to acknowledge the same copying be injurious to the author of the book being
in her book is an infringement of petitioners’ copyrights. copied. Is it enough that there are similarities in some
sections of the books or large segments of the books are
When is there a substantial reproduction of a book? It the same?chanrobles virtual lawlibrary
does not necessarily require that the entire copyrighted
work, or even a large portion of it, be copied. If so much In the case at bar, there is no question that petitioners
is taken that the value of the original work is substantially presented several pages of the books CET and DEP that
diminished, there is an infringement of copyright and to more or less had the same contents. It may be correct
an injurious extent, the work is appropriated. 27 that the books being grammar books may contain
materials similar as to some technical contents with
In determining the question of infringement, the amount other grammar books, such as the segment about the
of matter copied from the copyrighted work is an "Author Card." However, the numerous pages that the
important consideration. To constitute infringement, it is petitioners presented showing similarity in the style and
not necessary that the whole or even a large portion of the manner the books were presented and the identical
the work shall have been copied. If so much is taken that examples can not pass as similarities merely because of
the value of the original is sensibly diminished, or the technical consideration.chanrobles.com.ph : virtual law
labors of the original author are substantially and to an library
injurious extent appropriated by another, that is sufficient
in point of law to constitute piracy. 28cralawnad The respondents claim that their similarity in style can be
attributed to the fact that both of them were exposed to
The essence of intellectual piracy should be essayed in the APCAS syllabus and their respective academic
conceptual terms in order to underscore its gravity by an experience, teaching approach and methodology are
appropriate understanding thereof. Infringement of a almost identical because they were of the same
copyright is a trespass on a private domain owned and background.
However, we believe that even if petitioners and
respondent Robles were of the same background in
terms of teaching experience and orientation, it is not an
excuse for them to be identical even in examples
contained in their books. The similarities in examples
and material contents are so obviously present in this
case. How can similar/identical examples not be
considered as a mark of copying?

We consider as an indicia of guilt or wrongdoing the act

of respondent Robles of pulling out from Goodwill
bookstores the book DEP upon learning of petitioners’
complaint while pharisaically denying petitioners’
demand. It was further noted that when the book DEP
was re-issued as a revised version, all the pages cited
by petitioners to contain portion of their book College
English for Today were eliminated.

In cases of infringement, copying alone is not what is

prohibited. The copying must produce an "injurious
effect." Here, the injury consists in that respondent
Robles lifted from petitioners’ book materials that were
the result of the latter’s research work and compilation
and misrepresented them as her own. She circulated the
book DEP for commercial use and did not acknowledge
petitioners as her source.chanrobles virtual lawlibrary

Hence, there is a clear case of appropriation of

copyrighted work for her benefit that respondent Robles
committed. Petitioners’ work as authors is the product of
their long and assiduous research and for another to
represent it as her own is injury enough In copyrighting
books the purpose is to give protection to the intellectual
product of an author. This is precisely what the law on
copyright protected, under Section 184.1 (b). Quotations
from a published work if they are compatible with fair use
and only to the extent justified by the purpose, including
quotations from newspaper articles and periodicals in the
form of press summaries are allowed provided that the
source and the name of the author, if appearing on the
work, are mentioned.

In the case at bar, the least that respondent Robles

could have done was to acknowledge petitioners
Habana Et. Al. as the source of the portions of DEP. The
final product of an author’s toil is her book. To allow
another to copy the book without appropriate
acknowledgment is injury enough.

WHEREFORE, the petition is hereby GRANTED. The

decision and resolution of the Court of Appeals in CA-
G.R. CV No. 44053 are SET ASIDE. The case is ordered
remanded to the trial court for further proceedings to
receive evidence of the parties to ascertain the damages
caused and sustained by petitioners and to render
decision in accordance with the evidence submitted to
it.chanrobles law library : red

SO ORDERED.
 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
G.R. No. 108946 January 28, 1999 Zosa sought a review of the resolution of the Assistant
City Prosecutor before the Department of Justice.
FRANCISCO G. JOAQUIN, JR., and BJ
PRODUCTIONS, INC., petitioners, On August 12, 1992, respondent Secretary of Justice
vs. Franklin M. Drilon reversed the Assistant City
HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, Prosecutor's findings and directed him to move for the
WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY dismissal of the case against private respondents. 1
FRANCISCO, respondents.
Petitioner Joaquin filed a motion for reconsideration, but
MENDOZA, J.: his motion denied by respondent Secretary of Justice on
December 3, 1992. Hence, this petition. Petitioners
contend that:
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 1. The public respondent gravely abused his discretion
"Gabriel Zosa, et al. v. City Prosecutor of Quezon City amounting to lack of jurisdiction — when he invoked
and Francisco Joaquin, Jr.," and its resolution, dated non-presentation of the master tape as being fatal to the
December 3, 1992, denying petitioner Joaquin's motion existence of probable cause to prove infringement,
for reconsideration. despite the fact that private respondents never raised the
same as a controverted issue.
Petitioner BJ Productions, Inc. (BJPI) is the
holder/grantee of Certificate of Copyright No. M922, 2. The public respondent gravely abused his discretion
dated January 28, 1971, of Rhoda and Me, a dating amounting to lack of jurisdiction when he arrogated unto
game show aired from 1970 to 1977. 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.
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 Both public and private respondents maintain that
presentation. 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 conducting another preliminary investigation or to
of Rhoda and Me and that the formats or concepts of dismiss or move for dismissal of the complaint or
dating game shows are not covered by copyright information.
protection under P.D. No. 49.
In reviewing resolutions of prosecutors, the Secretary of
Non-Assignment of Error. Justice is not precluded from considering errors,
although unassigned, for the purpose of determining
Petitioners claim that their failure to submit the whether there is probable cause for filing cases in court.
copyrighted master videotape of the television show He must make his own finding, of probable cause and is
Rhoda and Me was not raised in issue by private not confined to the issues raised by the parties during
respondents during the preliminary investigation and, preliminary investigation. Moreover, his findings are not
therefore, it was error for the Secretary of Justice to subject to review unless shown to have been made with
reverse the investigating prosecutor's finding of probable grave abuse.
cause on this ground.
Opinion of the Secretary of Justice
A preliminary investigation falls under the authority of the
state prosecutor who is given by law the power to direct Petitioners contend, however, that the determination of
and control criminal the question whether the format or mechanics of a show
actions. 2 He is, however, subject to the control of the is entitled to copyright protection is for the court, and not
Secretary of Justice. Thus, Rule 112, §4 of the Revised the Secretary of Justice, to make. They assail the
Rules of Criminal Procedure, provides: following portion of the resolution of the respondent
Secretary of Justice:
Sec. 4. Duty of investigating fiscal. — If the investigating
fiscal finds cause to hold the respondent for trial, he shall [T]he essence of copyright infringement is the copying, in
prepare the resolution and corresponding information. whole or in part, of copyrightable materials as defined
He shall certify under oath that he, or as shown by the and enumerated in Section 2 of PD. No. 49. Apart from
record, an authorized officer, has personally examined the manner in which it is actually expressed, however,
the complainant and his witnesses, that there is the idea of a dating game show is, in the opinion of this
reasonable ground to believe that a crime has been Office, a non-copyrightable material. Ideas, concepts,
committed and that the accused is probably guilty formats, or schemes in their abstract form clearly do not
thereof, that the accused was informed of the complaint fall within the class of works or materials susceptible of
and of the evidence submitted against him and that he copyright registration as provided in PD. No.
was given an opportunity to submit controverting 49. 3 (Emphasis added.)
evidence. Otherwise, he shall recommend dismissal of
the complaint. It is indeed true that the question whether the format or
mechanics of petitioners television show is entitled to
In either case, he shall forward the records of the case to copyright protection is a legal question for the court to
the provincial or city fiscal or chief state prosecutor within make. This does not, however, preclude respondent
five (5) days from his resolution. The latter shall take Secretary of Justice from making a preliminary
appropriate action thereon ten (10) days from receipt determination of this question in resolving whether there
thereof, immediately informing the parties of said action. is probable cause for filing the case in court. In doing so
in this case, he did not commit any grave error.
No complaint or information may be filed or dismissed by
an investigating fiscal without the prior written authority Presentation of Master Tape
or approval of the provincial or city fiscal or chief state
prosecutor. Petitioners claim that respondent Secretary of Justice
gravely abused his discretion in ruling that the master
Where the investigating assistant fiscal recommends the videotape should have been predented in order to
dismissal of the case but his findings are reversed by the determine whether there was probable cause for
provincial or city fiscal or chief state prosecutor on the copyright infringement. They contend that 20th Century
ground that a probable cause exists, the latter may, by Fox Film Corporation v. Court of Appeals, 4 on which
himself, file the corresponding information against the respondent Secretary of Justice relied in reversing the
respondent or direct any other assistant fiscal or state resolution of the investigating prosecutor, is inapplicable
prosecutor to do so, without conducting another to the case at bar because in the present case, the
preliminary investigation. parties presented sufficient evidence which clearly
establish "linkage between the copyright show "Rhoda
If upon petition by a proper party, the Secretary of and Me" and the infringing TV show "It's a Date." 5
Justice reverses the resolution of the provincial or city
fiscal or chief state prosecutor, he shall direct the fiscal The case of 20th Century Fox Film Corporation involved
concerned to file the corresponding information without raids conducted on various videotape outlets allegedlly
selling or renting out "pirated" videotapes. The trial court As may [be] gleaned from the evidence on record, the
found that the affidavits of NBI agents, given in support substance of the television productions complainant's
of the application for the search warrant, were "RHODA AND ME" and Zosa's "IT'S A DATE" is that two
insufficient without the master tape. Accordingly, the trial matches are made between a male and a female, both
court lifted the search warrants it had previously issued single, and the two couples are treated to a night or two
against the defendants. On petition for review, this Court of dining and/or dancing at the expense of the show. The
sustained the action of the trial court and ruled: 6 major concepts of both shows is the same. Any
difference appear mere variations of the major concepts.
The presentation of the master tapes of the copyrighted
films from which the pirated films were allegedly copied, That there is an infringement on the copyright of the
was necessary for the validity of search warrants against show "RHODA AND ME" both in content and in the
those who have in their possession the pirated films. The execution of the video presentation are established
petitioner's argument to the effect that the presentation because respondent's "IT'S A DATE" is practically an
of the master tapes at the time of application may not be exact copy of complainant's "RHODA AND ME" because
necessary as these would be merely evidentiary in of substantial similarities as follows, to wit:
nature and not determinative of whether or not a
probable cause exists to justify the issuance of the RHODA AND ME "IT'S A DATE"
search warrants is not meritorious. The court cannot
presume that duplicate or copied tapes were necessarily Set 1 Set 1
reproduced from master tapes that it owns. a. Unmarried participant of one gender a. same
(searcher) appears on one side of a
The application for search warrants was directed against divider, while three (3) unmarried
video tape outlets which allegedly were engaged in the participants of the other gender are on
unauthorized sale and renting out of copyrighted films the other side of the divider. This
belonging to the petitioner pursuant to P.D. 49. arrangement is done to ensure that the
searcher does not see the searchees.
The essence of a copyright infringement is the similarity b. Searcher asks a question to be b. same
or at least substantial similarity of the purported pirated answered by each of the searchees.
works to the copyrighted work. Hence, the applicant The purpose is to determine who
must present to the court the copyrighted films to among the searchees is the most
compare them with the purchased evidence of the video compatible with the searcher.
tapes allegedly pirated to determine whether the latter is c. Searcher speculates on the match to c. same
an unauthorized reproduction of the former. This linkage the searchee.
of the copyrighted films to the pirated films must be d. Selection is made by the use of d. Selection is
established to satisfy the requirements of probable compute (sic) methods, or by the way based on the
cause. Mere allegations as to the existence of the questions are answered, or similar answer of the
copyrighted films cannot serve as basis for the issuance methods. Searchees.
of a search warrant.
Set 2 Set 2
Same as above with the genders of the same
This ruling was qualified in the later case of Columbia
searcher and searchees
Pictures, Inc. v. Court of Appeals 7 in which it was held:
interchanged. 9
In fine, the supposed  pronunciamento in said case
regarding the necessity for the presentation of the Petitioners assert that the format of Rhoda and Me is a
master tapes of the copyrighted films for the validity of product of ingenuity and skill and is thus entitled to
search warrants should at most be understood to merely copyright protection. It is their position that the
serve as a guidepost in determining the existence of presentation of a point-by-point comparison of the
probable cause in copyright infringement cases where formats of the two shows clearly demonstrates the nexus
there is doubt as to the true nexus between the master between the shows and hence establishes the existence
tape and the printed copies. An objective and careful of probable cause for copyright infringement. Such being
reading of the decision in said case could lead to no the case, they did not have to produce the master tape.
other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in To begin with the format of a show is not copyrightable.
all or similar copyright infringement cases. . . 8 Section 2 of P.D. No. 49, 10 otherwise known as the
DECREE ON INTELLECTUAL PROPERTY, enumerates
In the case at bar during the preliminary investigation, the classes of work entitled to copyright protection, to
petitioners and private respondents presented written wit:
descriptions of the formats of their respective televisions
shows, on the basis of which the investigating prosecutor Sec. 2. The rights granted by this Decree shall, from the
ruled: moment of creation, subsist with respect to any of the
following classes of works:
(A) Books, including composite and cyclopedic works, This provision is substantially the same as §172 of the
manuscripts, directories, and gazetteers: INTELLECTUAL PROPERTY CODE OF PHILIPPINES
(R.A. No. 8293). 11 The format or mechanics of a
(B) Periodicals, including pamphlets and newspapers; 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
(C) Lectures, sermons, addresses, dissertations
cover them.
prepared for oral delivery;

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

(D) Letters;
statutory right. It is a new or independent right granted
by the statute, and not simply a pre-existing right
(E) Dramatic or dramatico-musical compositions; regulated by the statute. Being a statutory grant, the
choreographic works and entertainments in dumb rights are only such as the statute confers, and may be
shows, the acting form of which is fixed in writing or obtained and enjoyed only with respect to the subjects
otherwise; and by the persons and on terms and conditions
specified in the statute. 12
(F) Musical compositions, with or without words;
Since . . . copyright in published works is purely a
(G) Works of drawing, painting, architecture, sculpture, statutory creation, a copyright may be obtained only for a
engraving, lithography, and other works of art; models or work falling within the statutory enumeration or
designs for works of art; description. 13

(H) Reproductions of a work of art; Regardless of the historical viewpoint, it is authoritatively

settled in the United States that there is no copyright
(I) Original ornamental designs or models for articles of except that which is both created and secured by act of
manufacture, whether or not patentable, and other works Congress . . . . . 14
of applied art;
P.D. No. 49, §2, in enumerating what are subject to
(J) Maps, plans, sketches, and charts; copyright, refers to finished works and not to concepts.
The copyright does not extend to an idea, procedure,
(K) Drawings or plastic works of a scientific or technical process, system, method of operation, concept,
character; 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
(I) Photographic works and works produced by a process
CODE OF THE PHILIPPINES provides:
analogous to photography lantern slides;
Sec. 175. Unprotected Subject Matter. —
(M) Cinematographic works and works produced by a
Notwithstanding the provisions of Sections 172 and 173,
process analogous to cinematography or any process for
no protection shall extend, under this law, to any idea,
making audio-visual recordings;
procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they
(N) Computer programs; are expressed, explained, illustrated or embodied in a
work; news of the day and other miscellaneous facts
(O) Prints, pictorial illustrations advertising copies, labels having the character of mere items of press information;
tags, and box wraps; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof.
(P) Dramatizations, translations, adaptations,
abridgements, arrangements and other alterations of What then is the subject matter of petitioners' copyright?
literary, musical or artistic works or of works of the This Court is of the opinion that petitioner BJPI's
Philippine government as herein defined, which shall be copyright covers audio-visual recordings of each episode
protected as provided in Section 8 of this Decree. of Rhoda and Me, as falling within the class of works
mentioned in P.D. 49, §2(M), to wit:
(Q) Collections of literary, scholarly, or artistic works or
of works referred to in Section 9 of this Decree which by Cinematographic works and works produced by a
reason of the selection and arrangement of their process analogous to cinematography or any process for
contents constitute intellectual creations, the same to be making audio-visual recordings;
protected as such in accordance with Section 8 of this
Decree. The copyright does not extend to the general concept or
format of its dating game show. Accordingly, by the very
(R) Other literary, scholarly, scientific and artistic works. nature of the subject of petitioner BJPI's copyright, the
investigating prosecutor should have the opportunity to Petitioner ABS-CBN Broadcasting Corporation (ABS-
compare the videotapes of the two shows. CBN) is licensed under the laws of the Republic of the
Philippines to engage in television and radio
Mere description by words of the general format of the broadcasting.4 It broadcasts television programs by
two dating game shows is insufficient; the presentation wireless means to Metro Manila and nearby provinces,
of the master videotape in evidence was indispensable and by satellite to provincial stations through Channel 2
to the determination of the existence of probable cause. on Very High Frequency (VHF) and Channel 23 on Ultra
As aptly observed by respondent Secretary of Justice: High Frequency (UHF). The programs aired over
Channels 2 and 23 are either produced by ABS-CBN or
purchased from or licensed by other producers.
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 ABS-CBN also owns regional television stations which
dissimilarity may be found by merely describing the pattern their programming in accordance with perceived
general copyright/format of both dating game shows. demands of the region. Thus, television programs shown
in Metro Manila and nearby provinces are not
necessarily shown in other provinces.
WHEREFORE, the petition is hereby DISMISSED

Respondent Philippine Multi-Media System, Inc. (PMSI)

SO ORDERED.1âwphi1.nêt
is the operator of Dream Broadcasting System. It
delivers digital direct-to-home (DTH) television via
satellite to its subscribers all over the Philippines. Herein
individual respondents, Cesar G. Reyes, Francis Chua,
Manuel F. Abellada, Raul B. De Mesa, and Aloysius M.
Colayco, are members of PMSI’s Board of Directors.

PMSI was granted a legislative franchise under Republic

Act No. 86305 on May 7, 1998 and was given a
Provisional Authority by the National
Telecommunications Commission (NTC) on February 1,
2000 to install, operate and maintain a nationwide DTH
satellite service. When it commenced operations, it
offered as part of its program line-up ABS-CBN
Channels 2 and 23, NBN, Channel 4, ABC Channel 5,
GMA Channel 7, RPN Channel 9, and IBC Channel 13,
together with other paid premium program channels.

However, on April 25, 2001, 6 ABS-CBN demanded for

PMSI to cease and desist from rebroadcasting Channels
2 and 23. On April 27, 2001,7 PMSI replied that the
G.R. No. 175769-70             January 19, 2009 rebroadcasting was in accordance with the authority
granted it by NTC and its obligation under NTC
ABS-CBN BROADCASTING Memorandum Circular No. 4-08-88, 8 Section 6.2 of
CORPORATION, Petitioners, which requires all cable television system operators
vs. operating in a community within Grade “A” or “B”
PHILIPPINE MULTI-MEDIA SYSTEM, INC., CESAR G. contours to carry the television signals of the authorized
REYES, FRANCIS CHUA (ANG BIAO), MANUEL F. television broadcast stations.9
ABELLADA, RAUL B. DE MESA, AND ALOYSIUS M.
COLAYCO, Respondents. Thereafter, negotiations ensued between the parties in
an effort to reach a settlement; however, the negotiations
DECISION were terminated on April 4, 2002 by ABS-CBN allegedly
due to PMSI’s inability to ensure the prevention of illegal
retransmission and further rebroadcast of its signals, as
YNARES-SANTIAGO, J.: well as the adverse effect of the rebroadcasts on the
business operations of its regional television stations. 10
This petition for review on certiorari 1 assails the July 12,
2006 Decision2 of the Court of Appeals in CA-G.R. SP On May 13, 2002, ABS-CBN filed with the IPO a
Nos. 88092 and 90762, which affirmed the December complaint for “Violation of Laws Involving Property
20, 2004 Decision of the Director-General of the Rights, with Prayer for the Issuance of a Temporary
Intellectual Property Office (IPO) in Appeal No. 10-2004- Restraining Order and/or Writ of Preliminary Injunction,”
0002. Also assailed is the December 11, 2006 which was docketed as IPV No. 10-2002-0004. It alleged
Resolution3 denying the motion for reconsideration.
that PMSI’s unauthorized rebroadcasting of Channels 2 Last July 22, 2003, the National Telecommunications
and 23 infringed on its broadcasting rights and copyright. Commission (NTC) received a letter dated July 17, 2003
from President/COO Rene Q. Bello of the International
On July 2, 2002, the Bureau of Legal Affairs (BLA) of the Broadcasting Corporation (IBC-Channel 13) complaining
IPO granted ABS-CBN’s application for a temporary that your company, Dream Broadcasting System, Inc.,
restraining order. On July 12, 2002, PMSI suspended its has cut-off, without any notice or explanation
retransmission of Channels 2 and 23 and likewise filed a whatsoever, to air the programs of IBC-13, a free-to-air
petition for certiorari with the Court of Appeals, which television, to the detriment of the public.
was docketed as CA-G.R. SP No. 71597.
We were told that, until now, this has been going on.
Subsequently, PMSI filed with the BLA a Manifestation
reiterating that it is subject to the must-carry rule under Please be advised that as a direct broadcast satellite
Memorandum Circular No. 04-08-88. It also submitted a operator, operating a direct-to-home (DTH)
letter dated December 20, 2002 of then NTC broadcasting system, with a provisional authority
Commissioner Armi Jane R. Borje to PMSI stating as (PA) from the NTC, your company, along with cable
follows: television operators, are mandated to strictly comply
with the existing policy of NTC on mandatory
This refers to your letter dated December 16, 2002 carriage of television broadcast signals as provided
requesting for regulatory guidance from this Commission under Memorandum Circular No. 04-08-88, also
in connection with the application and coverage of NTC known as the Revised Rules and Regulations
Memorandum Circular No. 4-08-88, particularly Section Governing Cable Television System in the
6 thereof, on mandatory carriage of television broadcast Philippines.
signals, to the direct-to-home (DTH) pay television
services of Philippine Multi-Media System, Inc. (PMSI). This mandatory coverage provision under Section
6.2 of said Memorandum Circular, requires all cable
Preliminarily, both DTH pay television and cable television system operators, operating in a
television services are broadcast services, the only community within the Grade “A” or “B” contours to
difference being the medium of delivering such services “must-carry” the television signals of the authorized
(i.e. the former by satellite and the latter by cable). Both television broadcast stations, one of which is IBC-
can carry broadcast signals to the remote areas, thus 13. Said directive equally applies to your company
enriching the lives of the residents thereof through the as the circular was issued to give consumers and
dissemination of social, economic, educational the public a wider access to more sources of news,
information and cultural programs. information, entertainment and other
programs/contents.
The DTH pay television services of PMSI is equipped to
provide nationwide DTH satellite services. Concededly, This Commission, as the governing agency vested by
PMSI’s DTH pay television services covers very much laws with the jurisdiction, supervision and control over all
wider areas in terms of carriage of broadcast signals, public services, which includes direct broadcast satellite
including areas not reachable by cable television operators, and taking into consideration the paramount
services thereby providing a better medium of interest of the public in general, hereby directs you to
dissemination of information to the public. immediately restore the signal of IBC-13 in your network
programs, pursuant to existing circulars and regulations
of the Commission.
In view of the foregoing and the spirit and intent of
NTC memorandum Circular No. 4-08-88, particularly
section 6 thereof, on mandatory carriage of For strict compliance. (Emphasis added)12
television broadcast signals, DTH pay television
services should be deemed covered by such NTC Meanwhile, on October 10, 2003, the NTC issued
Memorandum Circular. Memorandum Circular No. 10-10-2003, entitled
“Implementing Rules and Regulations Governing
For your guidance. (Emphasis added)11 Community Antenna/Cable Television (CATV) and Direct
Broadcast Satellite (DBS) Services to Promote
Competition in the Sector.” Article 6, Section 8 thereof
On August 26, 2003, PMSI filed another Manifestation
states:
with the BLA that it received a letter dated July 24, 2003
from the NTC enjoining strict and immediate compliance
with the must-carry rule under Memorandum Circular No. As a general rule, the reception, distribution and/or
04-08-88, to wit: transmission by any CATV/DBS operator of any
television signals without any agreement with or
authorization from program/content providers are
Dear Mr. Abellada:
prohibited.
On whether Memorandum Circular No. 10-10-2003 preliminary injunction with the Court of Appeals, which
amended Memorandum Circular No. 04-08-88, the NTC was docketed as CA-G.R. SP No. 88092.
explained to PMSI in a letter dated November 3, 2003
that: On July 18, 2005, the Court of Appeals issued a
temporary restraining order. Thereafter, ABS-CBN filed a
To address your query on whether or not the provisions petition for contempt against PMSI for continuing to
of MC 10-10-2003 would have the effect of amending the rebroadcast Channels 2 and 23 despite the restraining
provisions of MC 4-08-88 on mandatory carriage of order. The case was docketed as CA- G.R. SP No.
television signals, the answer is in the negative. 90762.

xxxx On November 14, 2005, the Court of Appeals ordered

the consolidation of CA-G.R. SP Nos. 88092 and 90762.
The Commission maintains that, MC 4-08-88 remains
valid, subsisting and enforceable. In the assailed Decision dated July 12, 2006, the Court
of Appeals sustained the findings of the Director-General
Please be advised, therefore, that as duly licensed of the IPO and dismissed both petitions filed by ABS-
direct-to-home satellite television service provider CBN.17
authorized by this Commission, your company
continues to be bound by the guidelines provided ABS-CBN’s motion for reconsideration was denied,
for under MC 04-08-88, specifically your obligation hence, this petition.
under its mandatory carriage provisions, in addition
to your obligations under MC 10-10-2003. (Emphasis ABS-CBN contends that PMSI’s unauthorized
added) rebroadcasting of Channels 2 and 23 is an infringement
of its broadcasting rights and copyright under the
Please be guided accordingly.13 Intellectual Property Code (IP Code); 18that Memorandum
Circular No. 04-08-88 excludes DTH satellite television
On December 22, 2003, the BLA rendered a operators; that the Court of Appeals’ interpretation of the
decision14 finding that PMSI infringed the broadcasting must-carry rule violates Section 9 of Article III 19 of the
rights and copyright of ABS-CBN and ordering it to Constitution because it allows the taking of property for
permanently cease and desist from rebroadcasting public use without payment of just compensation; that
Channels 2 and 23. the Court of Appeals erred in dismissing the petition for
contempt docketed as CA-G.R. SP No. 90762 without
requiring respondents to file comment.
On February 6, 2004, PMSI filed an appeal with the
Office of the Director-General of the IPO which was
docketed as Appeal No. 10-2004-0002. On December Respondents, on the other hand, argue that PMSI’s
23, 2004, it also filed with the Court of Appeals a “Motion rebroadcasting of Channels 2 and 23 is sanctioned by
to Withdraw Petition; Alternatively, Memorandum of the Memorandum Circular No. 04-08-88; that the must-carry
Petition for Certiorari” in CA-G.R. SP No. 71597, which rule under the Memorandum Circular is a valid exercise
was granted in a resolution dated February 17, 2005. of police power; and that the Court of Appeals correctly
dismissed CA-G.R. SP No. 90762 since it found no need
to exercise its power of contempt.
On December 20, 2004, the Director-General of the IPO
rendered a decision15 in favor of PMSI, the dispositive
portion of which states: After a careful review of the facts and records of this
case, we affirm the findings of the Director-General of
the IPO and the Court of Appeals.
WHEREFORE, premises considered, the instant appeal
is hereby GRANTED. Accordingly, Decision No. 2003-01
dated 22 December 2003 of the Director of Bureau of There is no merit in ABS-CBN’s contention that PMSI
Legal Affairs is hereby REVERSED and SET ASIDE. violated its broadcaster’s rights under Section 211 of the
IP Code which provides in part:
Let a copy of this Decision be furnished the Director of
the Bureau of Legal Affairs for appropriate action, and Chapter XIV
the records be returned to her for proper disposition. The BROADCASTING ORGANIZATIONS
Documentation, Information and Technology Transfer
Bureau is also given a copy for library and reference Sec. 211. Scope of Right. - Subject to the provisions of
purposes. Section 212, broadcasting organizations shall enjoy the
exclusive right to carry out, authorize or prevent any of
SO ORDERED.16 the following acts:

Thus, ABS-CBN filed a petition for review with prayer for 211.1. The rebroadcasting of their broadcasts;
issuance of a temporary restraining order and writ of
xxxx It is under the second category that Appellant’s DTH
satellite television service must be examined since it is
Neither is PMSI guilty of infringement of ABS-CBN’s satellite-based. The elements of such category are as
copyright under Section 177 of the IP Code which states follows:
that copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the 1. There is transmission of sounds or images or of
public performance of the work (Section 177.6), and representations thereof;
other communication to the public of the work (Section
177.7).20 2. The transmission is through satellite;

Section 202.7 of the IP Code defines broadcasting as 3. The transmission is for public reception; and
“the transmission by wireless means for the public
reception of sounds or of images or of representations 4. The means for decrypting are provided to the public
thereof; such transmission by satellite is also by the broadcasting organization or with its consent.
‘broadcasting’ where the means for decrypting are
provided to the public by the broadcasting organization
or with its consent.” It is only the presence of all the above elements can a
determination that the DTH is broadcasting and
consequently, rebroadcasting Appellee’s signals in
On the other hand, rebroadcasting as defined in Article violation of Sections 211 and 177 of the IP Code, may be
3(g) of the International Convention for the Protection of arrived at.
Performers, Producers of Phonograms and Broadcasting
Organizations, otherwise known as the 1961 Rome
Convention, of which the Republic of the Philippines is a Accordingly, this Office is of the view that the
signatory, 21 is “the simultaneous broadcasting by one transmission contemplated under Section 202.7 of the IP
broadcasting organization of the broadcast of another Code presupposes that the origin of the signals is the
broadcasting organization.” broadcaster. Hence, a program that is broadcasted is
attributed to the broadcaster. In the same manner, the
rebroadcasted program is attributed to the
The Director-General of the IPO correctly found that rebroadcaster.
PMSI is not engaged in rebroadcasting and thus cannot
be considered to have infringed ABS-CBN’s
broadcasting rights and copyright, thus: In the case at hand, Appellant is not the origin nor does it
claim to be the origin of the programs broadcasted by
the Appellee. Appellant did not make and transmit on its
That the Appellant’s [herein respondent PMSI] own but merely carried the existing signals of the
subscribers are able to view Appellee’s [herein petitioner Appellee. When Appellant’s subscribers view Appellee’s
ABS-CBN] programs (Channels 2 and 23) at the same programs in Channels 2 and 23, they know that the
time that the latter is broadcasting the same is origin thereof was the Appellee.
undisputed. The question however is, would the
Appellant in doing so be considered engaged in
broadcasting. Section 202.7 of the IP Code states that Aptly, it is imperative to discern the nature of
broadcasting means broadcasting. When a broadcaster transmits, the signals
are scattered or dispersed in the air. Anybody may pick-
up these signals. There is no restriction as to its number,
“the transmission by wireless means for the public type or class of recipients. To receive the signals, one is
reception of sounds or of images or of representations not required to subscribe or to pay any fee. One only has
thereof; such transmission by satellite is also to have a receiver, and in case of television signals, a
‘broadcasting’ where the means for decrypting are television set, and to tune-in to the right
provided to the public by the broadcasting organization channel/frequency. The definition of broadcasting,
or with its consent.” wherein it is required that the transmission is wireless, all
the more supports this discussion. Apparently, the
Section 202.7 of the IP Code, thus, provides two undiscriminating dispersal of signals in the air is possible
instances wherein there is broadcasting, to wit: only through wireless means. The use of wire in
transmitting signals, such as cable television, limits the
1. The transmission by wireless means for the public recipients to those who are connected. Unlike wireless
reception of sounds or of images or of representations transmissions, in wire-based transmissions, it is not
thereof; and enough that one wants to be connected and possesses
the equipment. The service provider, such as cable
2. The transmission by satellite for the public reception of television companies may choose its subscribers.
sounds or of images or of representations thereof where
the means for decrypting are provided to the public by The only limitation to such dispersal of signals in the air
the broadcasting organization or with its consent. is the technical capacity of the transmitters and other
equipment employed by the broadcaster. While the
broadcaster may use a less powerful transmitter to limit similar to a cable television system because the services
its coverage, this is merely a business strategy or it renders fall under cable “retransmission,” as described
decision and not an inherent limitation when in the Working Paper, to wit:
transmission is through cable.
(G) Cable Retransmission
Accordingly, the nature of broadcasting is to scatter the
signals in its widest area of coverage as possible. On 47. When a radio or television program is being
this score, it may be said that making public means that broadcast, it can be retransmitted to new audiences by
accessibility is undiscriminating as long as it [is] within means of cable or wire. In the early days of cable
the range of the transmitter and equipment of the television, it was mainly used to improve signal
broadcaster. That the medium through which the reception, particularly in so-called “shadow zones,” or to
Appellant carries the Appellee’s signal, that is via distribute the signals in large buildings or building
satellite, does not diminish the fact that it operates and complexes. With improvements in technology, cable
functions as a cable television. It remains that the operators now often receive signals from satellites
Appellant’s transmission of signals via its DTH satellite before retransmitting them in an unaltered form to their
television service cannot be considered within the subscribers through cable.
purview of broadcasting. x x x
48. In principle, cable retransmission can be either
xxxx simultaneous with the broadcast over-the-air or delayed
(deferred transmission) on the basis of a fixation or a
This Office also finds no evidence on record showing reproduction of a fixation. Furthermore, they might be
that the Appellant has provided decrypting means to the unaltered or altered, for example through replacement of
public indiscriminately. Considering the nature of this commercials, etc. In general, however, the term
case, which is punitive in fact, the burden of proving the “retransmission” seems to be reserved for such
existence of the elements constituting the acts transmissions which are both simultaneous and
punishable rests on the shoulder of the complainant. unaltered.

Accordingly, this Office finds that there is no 49. The Rome Convention does not grant rights against
rebroadcasting on the part of the Appellant of the unauthorized cable retransmission. Without such a right,
Appellee’s programs on Channels 2 and 23, as defined cable operators can retransmit both domestic and
under the Rome Convention.22 foreign over the air broadcasts simultaneously to their
subscribers without permission from the broadcasting
Under the Rome Convention, rebroadcasting is “the organizations or other rightholders and without obligation
simultaneous broadcasting by one broadcasting to pay remuneration.25 (Emphasis added)
organization of the broadcast of another broadcasting
organization.” The Working Paper23 prepared by the Thus, while the Rome Convention gives broadcasting
Secretariat of the Standing Committee on Copyright and organizations the right to authorize or prohibit the
Related Rights defines broadcasting organizations as rebroadcasting of its broadcast, however, this protection
“entities that take the financial and editorial responsibility does not extend to cable retransmission. The
for the selection and arrangement of, and investment in, retransmission of ABS-CBN’s signals by PMSI – which
the transmitted content.”24 Evidently, PMSI would not functions essentially as a cable television – does not
qualify as a broadcasting organization because it does therefore constitute rebroadcasting in violation of the
not have the aforementioned responsibilities imposed former’s intellectual property rights under the IP Code.
upon broadcasting organizations, such as ABS-CBN.
It must be emphasized that the law on copyright is not
ABS-CBN creates and transmits its own signals; PMSI absolute. The IP Code provides that:
merely carries such signals which the viewers receive in
its unaltered form. PMSI does not produce, select, or Sec. 184. Limitations on Copyright. -
determine the programs to be shown in Channels 2 and
23. Likewise, it does not pass itself off as the origin or 184.1. Notwithstanding the provisions of Chapter V, the
author of such programs. Insofar as Channels 2 and 23 following acts shall not constitute infringement of
are concerned, PMSI merely retransmits the same in copyright:
accordance with Memorandum Circular 04-08-88. With
regard to its premium channels, it buys the channels
from content providers and transmits on an as-is basis to xxxx
its viewers. Clearly, PMSI does not perform the functions
of a broadcasting organization; thus, it cannot be said (h) The use made of a work by or under the direction or
that it is engaged in rebroadcasting Channels 2 and 23. control of the Government, by the National Library or by
educational, scientific or professional institutions where
The Director-General of the IPO and the Court of such use is in the public interest and is compatible with
Appeals also correctly found that PMSI’s services are fair use;
The carriage of ABS-CBN’s signals by virtue of the must- Further, as correctly observed by the Court of Appeals,
carry rule in Memorandum Circular No. 04-08-88 is the must-carry rule as well as the legislative franchises
under the direction and control of the government though granted to both ABS-CBN and PMSI are in consonance
the NTC which is vested with exclusive jurisdiction to with state policies enshrined in the Constitution,
supervise, regulate and control telecommunications and specifically Sections 9,32 17,33 and 2434 of Article II on the
broadcast services/facilities in the Philippines.26 The Declaration of Principles and State Policies.35
imposition of the must-carry rule is within the NTC’s
power to promulgate rules and regulations, as public ABS-CBN was granted a legislative franchise under
safety and interest may require, to encourage a larger Republic Act No. 7966, Section 1 of which authorizes it
and more effective use of communications, radio and “to construct, operate and maintain, for commercial
television broadcasting facilities, and to maintain purposes and in the public interest, television and radio
effective competition among private entities in these broadcasting in and throughout the Philippines x x x.”
activities whenever the Commission finds it reasonably Section 4 thereof mandates that it “shall provide
feasible.27 As correctly observed by the Director-General adequate public service time to enable the government,
of the IPO: through the said broadcasting stations, to reach the
population on important public issues; provide at all
Accordingly, the “Must-Carry Rule” under NTC Circular times sound and balanced programming; promote public
No. 4-08-88 falls under the foregoing category of participation such as in community programming; assist
limitations on copyright. This Office agrees with the in the functions of public information and education x x
Appellant [herein respondent PMSI] that the “Must-Carry x.”
Rule” is in consonance with the principles and objectives
underlying Executive Order No. 436,28 to wit: PMSI was likewise granted a legislative franchise under
Republic Act No. 8630, Section 4 of which similarly
The Filipino people must be given wider access to more states that it “shall provide adequate public service time
sources of news, information, education, sports event to enable the government, through the said broadcasting
and entertainment programs other than those provided stations, to reach the population on important public
for by mass media and afforded television programs to issues; provide at all times sound and balanced
attain a well informed, well-versed and culturally refined programming; promote public participation such as in
citizenry and enhance their socio-economic growth: community programming; assist in the functions of public
information and education x x x.” Section 5, paragraph 2
WHEREAS, cable television (CATV) systems could of the same law provides that “the radio spectrum is a
support or supplement the services provided by finite resource that is a part of the national patrimony and
television broadcast facilities, local and overseas, as the the use thereof is a privilege conferred upon the grantee
national information highway to the countryside.29 by the State and may be withdrawn anytime, after due
process.”
The Court of Appeals likewise correctly observed that:
In Telecom. & Broadcast Attys. of the Phils., Inc. v.
COMELEC,36 the Court held that a franchise is a mere
[T]he very intent and spirit of the NTC Circular will
privilege which may be reasonably burdened with some
prevent a situation whereby station owners and a few
form of public service. Thus:
networks would have unfettered power to make time
available only to the highest bidders, to communicate
only their own views on public issues, people, and to All broadcasting, whether by radio or by television
permit on the air only those with whom they agreed – stations, is licensed by the government. Airwave
contrary to the state policy that the (franchise) grantee frequencies have to be allocated as there are more
like the petitioner, private respondent and other TV individuals who want to broadcast than there are
station owners, shall provide at all times sound and frequencies to assign. A franchise is thus a privilege
balanced programming and assist in the functions of subject, among other things, to amendment by Congress
public information and education. in accordance with the constitutional provision that “any
such franchise or right granted . . . shall be subject to
amendment, alteration or repeal by the Congress when
This is for the first time that we have a structure that
the common good so requires.”
works to accomplish explicit state policy goals.30

xxxx
Indeed, intellectual property protection is merely a
means towards the end of making society benefit from
the creation of its men and women of talent and genius. Indeed, provisions for COMELEC Time have been made
This is the essence of intellectual property laws, and it by amendment of the franchises of radio and television
explains why certain products of ingenuity that are broadcast stations and, until the present case was
concealed from the public are outside the pale of brought, such provisions had not been thought of as
protection afforded by the law. It also explains why the taking property without just compensation. Art. XII, §11
author or the creator enjoys no more rights than are of the Constitution authorizes the amendment of
consistent with public welfare.31 franchises for “the common good.” What better measure
can be conceived for the common good than one for free commercial advertisers and producers, as well as from
air time for the benefit not only of candidates but even direct sales.
more of the public, particularly the voters, so that they
will be fully informed of the issues in an election? “[I]t is In contrast, cable and DTH television earn revenues
the right of the viewers and listeners, not the right of the from viewer subscription. In the case of PMSI, it offers its
broadcasters, which is paramount.” customers premium paid channels from content
providers like Star Movies, Star World, Jack TV, and
Nor indeed can there be any constitutional objection to AXN, among others, thus allowing its customers to go
the requirement that broadcast stations give free air beyond the limits of “Free TV and Cable TV.” 43 It does
time. Even in the United States, there are responsible not advertise itself as a local channel carrier because
scholars who believe that government controls on these local channels can be viewed with or without DTH
broadcast media can constitutionally be instituted to television.
ensure diversity of views and attention to public affairs to
further the system of free expression. For this purpose, Relevantly, PMSI’s carriage of Channels 2 and 23 is
broadcast stations may be required to give free air time material in arriving at the ratings and audience share of
to candidates in an election. Thus, Professor Cass R. ABS-CBN and its programs. These ratings help
Sunstein of the University of Chicago Law School, in commercial advertisers and producers decide whether to
urging reforms in regulations affecting the broadcast buy airtime from the network. Thus, the must-carry rule
industry, writes: is actually advantageous to the broadcasting networks
because it provides them with increased viewership
xxxx which attracts commercial advertisers and producers.

In truth, radio and television broadcasting companies, On the other hand, the carriage of free-to-air signals
which are given franchises, do not own the airwaves and imposes a burden to cable and DTH television providers
frequencies through which they transmit broadcast such as PMSI. PMSI uses none of ABS-CBN’s
signals and images. They are merely given the resources or equipment and carries the signals and
temporary privilege of using them. Since a franchise is a shoulders the costs without any recourse of
mere privilege, the exercise of the privilege may charging.44 Moreover, such carriage of signals takes up
reasonably be burdened with the performance by the channel space which can otherwise be utilized for other
grantee of some form of public service. x x x37 premium paid channels.

There is likewise no merit to ABS-CBN’s claim that There is no merit to ABS-CBN’s argument that PMSI’s
PMSI’s carriage of its signals is for a commercial carriage of Channels 2 and 23 resulted in competition
purpose; that its being the country’s top broadcasting between its Metro Manila and regional stations. ABS-
company, the availability of its signals allegedly CBN is free to decide to pattern its regional programming
enhances PMSI’s attractiveness to potential in accordance with perceived demands of the region;
customers;38 or that the unauthorized carriage of its however, it cannot impose this kind of programming on
signals by PMSI has created competition between its the regional viewers who are also entitled to the free-to-
Metro Manila and regional stations. air channels. It must be emphasized that, as a national
broadcasting organization, one of ABS-CBN’s
ABS-CBN presented no substantial evidence to prove responsibilities is to scatter its signals to the widest area
that PMSI carried its signals for profit; or that such of coverage as possible. That it should limit its signal
carriage adversely affected the business operations of its reach for the sole purpose of gaining profit for its
regional stations. Except for the testimonies of its regional stations undermines public interest and deprives
witnesses,[39] no studies, statistical data or information the viewers of their right to access to information.
have been submitted in evidence.
Indeed, television is a business; however, the welfare of
Administrative charges cannot be based on mere the people must not be sacrificed in the pursuit of profit.
speculation or conjecture. The complainant has the The right of the viewers and listeners to the most diverse
burden of proving by substantial evidence the allegations choice of programs available is paramount.45 The
in the complaint.40 Mere allegation is not evidence, and is Director-General correctly observed, thus:
not equivalent to proof.41
The “Must-Carry Rule” favors both broadcasting
Anyone in the country who owns a television set and organizations and the public. It prevents cable television
antenna can receive ABS-CBN’s signals for free. Other companies from excluding broadcasting organization
broadcasting organizations with free-to-air signals such especially in those places not reached by signal. Also,
as GMA-7, RPN-9, ABC-5, and IBC-13 can likewise be the rule prevents cable television companies from
accessed for free. No payment is required to view the depriving viewers in far-flung areas the enjoyment of
said channels42 because these broadcasting networks do programs available to city viewers. In fact, this Office
not generate revenue from subscription from their finds the rule more burdensome on the part of the cable
viewers but from airtime revenue from contracts with television companies. The latter carries the television
signals and shoulders the costs without any recourse of Whereas, the national government supports the
charging. On the other hand, the signals that are carried promotes the orderly growth of the Cable Television
by cable television companies are dispersed and industry within the framework of a regulated fee
scattered by the television stations and anybody with a enterprise, which is a hallmark of a democratic society;
television set is free to pick them up.
Whereas, public interest so requires that monopolies in
With its enormous resources and vaunted technological commercial mass media shall be regulated or prohibited,
capabilities, Appellee’s [herein petitioner ABS-CBN] hence, to achieve the same, the cable TV industry is
broadcast signals can reach almost every corner of the made part of the broadcast media;
archipelago. That in spite of such capacity, it chooses to
maintain regional stations, is a business decision. That Whereas, pursuant to Act 3846 as amended and
the “Must-Carry Rule” adversely affects the profitability of Executive Order 205 granting the National
maintaining such regional stations since there will be Telecommunications Commission the authority to set
competition between them and its Metro Manila station is down rules and regulations in order to protect the public
speculative and an attempt to extrapolate the effects of and promote the general welfare, the National
the rule. As discussed above, Appellant’s DTH satellite Telecommunications Commission hereby promulgates
television services is of limited subscription. There was the following rules and regulations on Cable Television
not even a showing on part of the Appellee the number Systems;
of Appellant’s subscribers in one region as compared to
non-subscribing television owners. In any event, if this The policy of the Memorandum Circular is to carry
Office is to engage in conjecture, such competition improved signals in remote areas for the good of the
between the regional stations and the Metro Manila general public and to promote dissemination of
station will benefit the public as such competition will information. In line with this policy, it is clear that DTH
most likely result in the production of better television television should be deemed covered by the
programs.”46 Memorandum Circular. Notwithstanding the different
technologies employed, both DTH and cable television
All told, we find that the Court of Appeals correctly have the ability to carry improved signals and promote
upheld the decision of the IPO Director-General that dissemination of information because they operate and
PMSI did not infringe on ABS-CBN’s intellectual property function in the same way.
rights under the IP Code. The findings of facts of
administrative bodies charged with their specific field of In its December 20, 2002 letter, 50 the NTC explained that
expertise, are afforded great weight by the courts, and in both DTH and cable television services are of a similar
the absence of substantial showing that such findings nature, the only difference being the medium of
are made from an erroneous estimation of the evidence delivering such services. They can carry broadcast
presented, they are conclusive, and in the interest of signals to the remote areas and possess the capability to
stability of the governmental structure, should not be enrich the lives of the residents thereof through the
disturbed.47 dissemination of social, economic, educational
information and cultural programs. Consequently, while
Moreover, the factual findings of the Court of Appeals the Memorandum Circular refers to cable television, it
are conclusive on the parties and are not reviewable by should be understood as to include DTH television which
the Supreme Court. They carry even more weight when provides essentially the same services.
the Court of Appeals affirms the factual findings of a
lower fact-finding body,48 as in the instant case. In Eastern Telecommunications Philippines, Inc. v.
International Communication Corporation,51 we held:
There is likewise no merit to ABS-CBN’s contention that
the Memorandum Circular excludes from its coverage The NTC, being the government agency entrusted with
DTH television services such as those provided by the regulation of activities coming under its special and
PMSI. Section 6.2 of the Memorandum Circular requires technical forte, and possessing the necessary rule-
all cable television system operators operating in a making power to implement its objectives, is in the best
community within Grade “A” or “B” contours to carry the position to interpret its own rules, regulations and
television signals of the authorized television broadcast guidelines. The Court has consistently yielded and
stations.49 The rationale behind its issuance can be accorded great respect to the interpretation by
found in the whereas clauses which state: administrative agencies of their own rules unless there is
an error of law, abuse of power, lack of jurisdiction or
Whereas, Cable Television Systems or Community grave abuse of discretion clearly conflicting with the
Antenna Television (CATV) have shown their ability to letter and spirit of the law.52
offer additional programming and to carry much
improved broadcast signals in the remote areas, thereby With regard to the issue of the constitutionality of the
enriching the lives of the rest of the population through must-carry rule, the Court finds that its resolution is not
the dissemination of social, economic, educational necessary in the disposition of the instant case. One of
information and cultural programs; the essential requisites for a successful judicial inquiry
into constitutional questions is that the resolution of the Indirect contempt may either be initiated (1) motu
constitutional question must be necessary in deciding proprio by the court by issuing an order or any other
the case.53 In Spouses Mirasol v. Court of Appeals,54 we formal charge requiring the respondent to show cause
held: why he should not be punished for contempt or (2) by
the filing of a verified petition, complying with the
As a rule, the courts will not resolve the constitutionality requirements for filing initiatory pleadings.62
of a law, if the controversy can be settled on other
grounds. The policy of the courts is to avoid ruling on ABS-CBN filed a verified petition before the Court of
constitutional questions and to presume that the acts of Appeals, which was docketed CA G.R. SP No. 90762,
the political departments are valid, absent a clear and for PMSI’s alleged disobedience to the Resolution and
unmistakable showing to the contrary. To doubt is to Temporary Restraining Order, both dated July 18, 2005,
sustain. This presumption is based on the doctrine of issued in CA-G.R. SP No. 88092. However, after the
separation of powers. This means that the measure had cases were consolidated, the Court of Appeals did not
first been carefully studied by the legislative and require PMSI to comment on the petition for contempt. It
executive departments and found to be in accord with ruled on the merits of CA-G.R. SP No. 88092 and
the Constitution before it was finally enacted and ordered the dismissal of both petitions.
approved.55
ABS-CBN argues that the Court of Appeals erred in
The instant case was instituted for violation of the IP dismissing the petition for contempt without having
Code and infringement of ABS-CBN’s broadcasting ordered respondents to comment on the same.
rights and copyright, which can be resolved without Consequently, it would have us reinstate CA-G.R. No.
going into the constitutionality of Memorandum Circular 90762 and order respondents to show cause why they
No. 04-08-88. As held by the Court of Appeals, the only should not be held in contempt.
relevance of the circular in this case is whether or not
compliance therewith should be considered It bears stressing that the proceedings for punishment of
manifestation of lack of intent to commit infringement, indirect contempt are criminal in nature. The modes of
and if it is, whether such lack of intent is a valid defense procedure and rules of evidence adopted in contempt
against the complaint of petitioner.56 proceedings are similar in nature to those used in
criminal prosecutions. 63 While it may be argued that the
The records show that petitioner assailed the Court of Appeals should have ordered respondents to
constitutionality of Memorandum Circular No. 04-08-88 comment, the issue has been rendered moot in light of
by way of a collateral attack before the Court of Appeals. our ruling on the merits. To order respondents to
In Philippine National Bank v. Palma,57 we ruled that for comment and have the Court of Appeals conduct a
reasons of public policy, the constitutionality of a law hearing on the contempt charge when the main case has
cannot be collaterally attacked. A law is deemed valid already been disposed of in favor of PMSI would be
unless declared null and void by a competent court; circuitous. Where the issues have become moot, there is
more so when the issue has not been duly pleaded in no justiciable controversy, thereby rendering the
the trial court.58 resolution of the same of no practical use or value.64

As a general rule, the question of constitutionality must WHEREFORE, the petition is DENIED. The July 12,
be raised at the earliest opportunity so that if not raised 2006 Decision of the Court of Appeals in CA-G.R. SP
in the pleadings, ordinarily it may not be raised in the Nos. 88092 and 90762, sustaining the findings of the
trial, and if not raised in the trial court, it will not be Director-General of the Intellectual Property Office and
considered on appeal.59 In Philippine Veterans Bank v. dismissing the petitions filed by ABS-CBN Broadcasting
Court of Appeals,60 we held: Corporation, and the December 11, 2006 Resolution
denying the motion for reconsideration, are AFFIRMED.
We decline to rule on the issue of constitutionality as all
the requisites for the exercise of judicial review are not SO ORDERED.
present herein. Specifically, the question of
constitutionality will not be passed upon by the
Court unless, at the first opportunity, it is properly
raised and presented in an appropriate case,
adequately argued, and is necessary to a
determination of the case, particularly where the
issue of constitutionality is the very lis mota
presented.x x x61

Finally, we find that the dismissal of the petition for

contempt filed by ABS-CBN is in order.