JESSIE G. CHING, PETITIONER, VS. WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M…

Ching versus Salinas

The Case

This is a petition for review on certiorari brought by Jessie G. Ching against William M. Salinas, Senior, and the other respondents, officers and members of the board of directors of Wilaware Product Corporation. Ching asked the Supreme Court to reverse the Court of Appeals, which had affirmed the orders of the Regional Trial Court of Manila quashing the search warrants earlier issued in his favor. The case matters because it settles a question every intellectual property practitioner must answer: may a judge, in deciding whether to issue or to quash a search warrant for copyright infringement, examine whether the work is copyrightable at all? The Court answers yes, and in doing so draws the line between works of applied art, which copyright protects, and useful articles and utility models, which it does not.

Procedural History

Ching applied to the Regional Trial Court of Manila for search warrants against the Salinas respondents, alleging infringement under the Intellectual Property Code. The trial court granted the application and issued the two search warrants, and the National Bureau of Investigation seized the articles listed in the warrants. The respondents then moved to quash, arguing that the copyright registrations were void because the subject matter was not literary or artistic but consisted of automotive spare parts. The trial court granted the motion in January 2002, holding that there was no probable cause because the works were technical solutions rather than literary and artistic works. Ching's motion for reconsideration was denied in February 2002.

Ching then filed a petition for certiorari in the Court of Appeals, insisting that the trial court had no jurisdiction to pass upon the validity of his copyright certificates. The Court of Appeals dismissed the petition in September 2003, finding no grave abuse of discretion, and later denied reconsideration. Ching elevated the matter to the Supreme Court by petition for review on certiorari.

Facts

Jessie G. Ching was the owner and general manager of Jeshicris Manufacturing Company, which manufactured a utility model described as a leaf spring eye bushing for automobiles, made of plastic. In early September 2001, Ching and Joseph Yu were issued certificates of copyright registration and deposit by the National Library for that work and for a vehicle bearing cushion.

On September 20, 2001, Ching asked the National Bureau of Investigation for investigative assistance against illegal manufacturers and distributors of the works. After investigation, the Bureau filed applications for search warrants before the Regional Trial Court of Manila against William Salinas, Senior and the officers of Wilaware Product Corporation, alleging that they reproduced and distributed the models in violation of the Intellectual Property Code. The court issued the warrants, and the Bureau seized plastic bushings, vehicle bearing cushions, molds, and records of sale.

The respondents moved to quash, contending that the registrations were issued in violation of the Intellectual Property Code because the subject matter was not artistic or literary but consisted of automotive spare parts that were not original. Ching opposed the motion, arguing that the validity of his copyright could not be litigated in a search warrant proceeding and that his certificates enjoyed the presumption of validity. The trial court quashed the warrants for want of probable cause, and the appellate courts sustained it, bringing the matter to the Supreme Court.

Issues

• Whether or not the Regional Trial Court had jurisdiction, in resolving an application for or a motion to quash a search warrant for copyright infringement, to determine whether the applicant's work is copyrightable and whether he owns a valid copyright.
• Whether or not the trial court committed grave abuse of discretion in ruling that Ching's leaf spring eye bushing and vehicle bearing cushion are not copyrightable works.

Applicable Provisions

Section 4, Rule 126 of the Rules of Criminal Procedure provides:

Section 4. Requisite for issuing search warrant. A search warrant shall not issue but upon probable cause in connection with one specific offense to be determined personally by the judge after examination under oath or affirmation of the complainant and the witnesses he may produce, and, particularly, describing the place to be searched and the things to be seized.

This is the source of the judge's duty to determine probable cause, which the Court reads as necessarily including the existence of the offense alleged.

Section 172.1, paragraph (h) of the Intellectual Property Code provides:

Section 172. Literary and Artistic Works. 172.1. Literary and artistic works, hereinafter referred to as works, are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art.

This is the very classification Ching invoked for his certificates, and the Court measures his models against it.

Section 218.2 of the Intellectual Property Code provides:

218.2. In an action under this Chapter: (a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter; and (b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership.

This fixes the burden of proof: the presumption operates only while the defendant does not put subsistence or ownership in issue.

Ruling

On the first issue, the Court held that the trial court had jurisdiction and, indeed, the duty to determine copyrightability. Probable cause exists only where facts and circumstances could lead a reasonably cautious and prudent man to believe that an offense has been committed. To establish infringement, the applicant must show that he owns a valid copyright and that the copyrighted material was being copied and distributed. Ownership is shown by proof of originality and copyrightability. By asking the National Bureau of Investigation to seek a warrant based on his claimed copyright, Ching authorized the court to test that claim, and he could not later repudiate its jurisdiction without running afoul of estoppel. The certificate of registration gives prima facie evidence of validity and ownership and shifts the burden of proof, but it creates no rebuttable presumption of validity where other evidence in the record casts doubt on the question.

On the second issue, the Court held that the trial court did not abuse its discretion. The specifications showed a cylindrical plastic body with a co-axial bore, a flange, and a metal jacket, and a semi-circular cushion with a central hole and ridges, all serving purely mechanical purposes. These are not literary or artistic works, not intellectual creations in the literary and artistic domain, and not ornamental designs. The Court stressed that while works of applied art are copyrightable, useful articles and works of industrial design are not, and a useful article may be protected only to the extent that its pictorial, graphic, or sculptural features can be identified separately from, and exist independently of, its utilitarian aspects. Ching's models are utility models, useful articles without artistic design or value.

Doctrine

A judge determining probable cause for a search warrant must resolve whether an offense exists, and in a copyright infringement case that inquiry necessarily includes the validity and ownership of the copyright. The applicant bears the burden of proving originality and copyrightability; the certificate of registration supplies only prima facie evidence, which yields once the defense puts subsistence or ownership in issue under Section 218.2. Copyright protects original intellectual creations in the literary and artistic domain, including works of applied art, but it does not protect useful articles or utility models whose aesthetic features cannot be identified separately from, and exist independently of, their utilitarian function.

Disposition

The Supreme Court denied the petition and affirmed the decision of the Court of Appeals and the orders of the trial court quashing the search warrants, with costs against Ching.

Remember This

Memorize this line: a copyright certificate is prima facie evidence of validity only, and a useful article is protected only if its artistic features are separable from its utilitarian function. Examiners use this case to test the limits of copyright over industrial and automotive parts, and the authority of a court in a search warrant proceeding to pass on copyrightability.