PACITA I. HABANA, ALICIA L. CINCO AND JOVITA N. FERNANDO, PETITIONERS, VS. FELICIDAD C. ROBLES AND GOODWILL TRADING CO., INC., RESPONDENTS.

Habana versus Robles

The Case

This is a petition for review on certiorari brought by three authors and copyright owners, Pacita Habana, Alicia Cinco, and Jovita Fernando, against Felicidad Robles and Goodwill Trading Company, Incorporated. The petitioners sued for copyright infringement and unfair competition with damages, claiming that Robles copied substantial portions of their English textbook into her own. The case matters because the Supreme Court here explains what substantial reproduction means in copyright law, and clarifies the limits of the writer's right of fair use — the doctrine that allows quotation of another's work only with proper acknowledgment of the source and author.

Procedural History

The petitioners filed their complaint for infringement and unfair competition with damages before the Regional Trial Court of Makati. After trial on the merits, the trial court dismissed the complaint and even ordered the petitioners to reimburse the respondents for attorney's fees. The petitioners appealed to the Court of Appeals, which affirmed the dismissal but deleted the award of attorney's fees, finding no bad faith on the petitioners' part in suing. The petitioners moved for reconsideration, which the Court of Appeals denied. The petitioners then came to the Supreme Court by petition for review on certiorari.

Facts

The petitioners were the authors and copyright owners of duly registered works entitled College English for Today, Books 1 and 2, and a workbook for college freshman English. The respondent Felicidad Robles authored and Goodwill Trading published and distributed another work entitled Developing English Proficiency, Books 1 and 2, also covered by copyright certificates.

While revising their books, the petitioners scouted bookstores and chanced upon Robles' book. They were surprised to find it strikingly similar to their own in contents, scheme of presentation, illustrations, and illustrative examples. Upon itemized comparison, they found several pages of the respondent's book to be similar, if not altogether a copy, of their work. They demanded that the respondents cease and desist from selling the infringing copies and pay damages, but the respondents ignored the demands.

On July 7, 1988, the petitioners filed the complaint. Robles answered, denying plagiarism and insisting that her book was the product of her independent research and that any similarity was due to a common syllabus and the right of fair use. Goodwill, for its part, claimed it was not privy to any copying and that Robles had guaranteed the materials were her own. The trial court dismissed the complaint, and the Court of Appeals affirmed, prompting this petition.

Issues

• Whether or not, despite the apparent textual, thematic, and sequential similarity between the two books, the respondents committed copyright infringement.
• Whether or not there was animus furandi, meaning the intent to steal, on the part of the respondents when they refused to withdraw the copies from the market despite notice.
• Whether or not respondent Robles abused a writer's right to fair use in violation of the copyright law.

Applicable Provisions

Section 177 of Republic Act Number 8293, the Intellectual Property Code, provides:

Subject to the provisions of chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts: 177.1 Reproduction of the work or substantial portion of the work; 177.2 Dramatization, translation, adaptation, abridgement, arrangement or other transformation of the work; 177.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership.

This defines the economic rights of the copyright owner, including the exclusive right to reproduce the work or a substantial portion of it.

Section 184.1 of the same Code, on limitations on copyright, provides:

Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) the recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, that the source and the name of the author, if appearing on the work are mentioned.

This is the fair use provision the Court applies, and it conditions lawful quotation on mentioning the source and the name of the author.

Ruling

On the first issue, the Court ruled that there was copyright infringement. It held that substantial reproduction does not require copying the entire work or even a large portion of it. If so much is taken that the value of the original is substantially diminished, or the labors of the original author are substantially and to an injurious extent appropriated, that is enough. The Court compared the books and found several pages of the respondent's book similar if not identical to the petitioners' text, including identical examples, with the only difference being that the petitioners acknowledged the original author while the respondents did not.

On the second issue, the Court treated Robles' act of pulling out her book from the bookstores upon learning of the complaint, while denying the demand, as an indicia of wrongdoing. It stressed that copying alone is not what is prohibited; the copying must produce an injurious effect, and here the injury lay in lifting the fruit of the petitioners' research and misrepresenting it as her own.

On the third issue, the Court held that the right of fair use was abused. Even granting that the copied portions also appear in foreign books, the least Robles could have done was to acknowledge the petitioners as the source. The Court quoted the fair use limitation and held that copying without appropriate acknowledgment is injury enough.

Doctrine

A Bar candidate should retain these rules. First, copyright infringement does not require copying the whole work; it is enough that so much is taken that the value of the original is sensibly diminished or the author's labors are substantially appropriated. Second, copying alone is not prohibited — the copying must produce an injurious effect. Third, the fair use of quotations under Section 184.1 of the Intellectual Property Code requires that the source and the name of the author be mentioned; copying without acknowledgment is infringement. Fourth, the essence of intellectual piracy is a trespass on the private domain of the copyright owner.

Disposition

The Supreme Court granted the petition, set aside the decision and resolution of the Court of Appeals, and remanded the case to the trial court to receive evidence on the damages sustained by the petitioners and to render judgment accordingly.

Remember This

Memorize this line: to constitute infringement it is not necessary that the whole or even a large portion of the work be copied — if so much is taken that the value of the original is sensibly diminished, that is piracy. Examiners use this case to test substantial reproduction and the requirement of acknowledgment of source under fair use.