G.R. No. 197335. September 07, 2020
REPUBLIC OF THE PHILIPPINES, THROUGH THE PHILIPPINE NATIONAL POLICE (PNP), PETITIONER, VS. HEIRS OF JOSE C. TUPAZ, IV, NAMELY: MA. CORAZON J. TUPAZ, MA. JEANETTE T. CALING, MA. …
LEONEN, J.:
belongs to the person who fixes an idea into a tangible medium of
expression. The law on copyright only protects the expression of an
idea, not the idea itself. Thus, one who merely contributes concepts or
ideas is not deemed an author.
For this Court’s resolution is a Petition for Review on Certiorari[1] assailing the Court of Appeals’ Decision[2] and Resolution.[3] The challenged judgments reversed the Regional Trial Court’s Decision,[4]
which ordered the cancellation of respondents’ certificates of
copyright registration over the designs of the Philippine National
Police (PNP) cap device and badge.[5]
In 1996, the PNP Directorate for Logistics Support Service authorized
the procurement of new uniforms and equipment for the PNP, including
brand new cap devices and badges. The PNP Directorate on Research and
Development, Clothing, and Criminalistics Equipment Division assumed the
responsibility of updating the designs of the PNP cap device and badge.[6]
The present PNP cap device and badge have the following distinctive
features: (1) a native shield, depicted as a vertically elongated
hexagon; (2) a sword-and-shield wielding warrior purporting to be
Lapu-Lapu; (3) eight (8) rays of the sun representing the first eight
(8) provinces to revolt against Spain; (4) three (3) pentagram stars
representing Luzon, Visayas, and Mindanao; (5) laurel leaves; and (6)
the words “service, honor, and justice.”[7]
The designs of the present PNP cap device and badge were previously used by the Philippine Constabulary in its coat of arms.[8]
The PNP Directorate on Research and Development, Clothing, and
Criminalistics Equipment Division collaborated with Jose C. Tupaz, IV
(Tupaz) to create the new designs of the PNP cap device and badge. Tupaz
volunteered and rendered his services for free.[9]
Under their agreement, Tupaz will sketch the new designs and produce
samples or prototypes. The samples will then be presented before the
PNP’s Uniform and Equipment Standardization Board for approval.[10]
Tupaz drew the new designs based on the PNP’s specifications and
instructions. He then submitted the finished sketches to the PNP for
evaluation. Thereafter, the designs were transmitted to and approved by
the National Police Commission.[11]
Upon approval of the new designs, the PNP conducted a public bidding
for the procurement of the new PNP cap devices and badges. Among those
who participated was El Oro Industries, Inc. (El Oro).[12] Tupaz was El Oro’s then-president and chair of the board of directors.[13]
El Oro submitted the second highest bid price. After the tabulation of
the bids, El Oro presented before the PNP’s Bids and Awards Committee
certificates of copyright registration over the PNP cap device and badge
issued in favor of Tupaz. Hence, the contract was not awarded to the
winning bidder, but to El Oro.[14]
No other manufacturer attempted to produce the PNP cap device and badge
bearing the new designs for fear of copyright infringement.[15]
Police Director Jose S. Andaya, head of the PNP Directorate on Research
and Development, Clothing, and Criminalistics Equipment Division, wrote
the National Library requesting the cancellation of the certificates of
copyright registration of the PNP cap device and badge. However, the
National Library did not act on the request.[16]
Subsequently, the Republic of the Philippines, through the PNP, filed a
Complaint before the Quezon City Regional Trial Court for the
cancellation of Tupaz’s certificates of copyright registration, with a
prayer for the issuance of a writ of preliminary injunction.[17]
In their Answer, El Oro and Tupaz alleged that El Oro is the
exclusive and official engraver of Philippine heraldry items since 1953.
They claimed that Tupaz’s ancestor, Jose T. Tupaz, Jr., developed the
original designs on which the present designs of the PNP cap device and
badge were based. Hence, El Oro owned the copyright over the new designs
and was allegedly the only qualified bidder.[18]
In its Decision,[19] the Regional Trial Court ruled in favor of the Republic of the Philippines. The dispositive portion states:
WHEREFORE, judgment is rendered in favor of the plaintiff and against the defendants as follows:
National Library to cancel Certificate of Copyright Registration No.
96-589 over the PNP Cap Device and Certificate of Copyright Registration
No. 96-721 over the PNP badge issued in favor of defendant/s Jose C.
Tupaz IV and/or El Oro Industries Inc., and to issue two new
certificates of copyright registration in the name of the Philippine
National Police in lieu of these two aforecited certificates of
copyright registration; and
prohibitory injunction, permanently prohibiting defendant/s Jose C.
Tupaz IV and/or El Oro Industries Inc., and other persons/parties
deriving interest from said defendant/s from manufacturing, using[,] and
selling the PNP cap devices and badges bearing the designs created and
developed by the Philippine National Police which are the subject
matters of Certificates of Copyright Registration Nos. 96-589 and
96-721, which had now been ordered cancelled as provided herein.All other claim/s including the counterclaim are dismissed for lack of legal and/or factual basis.
SO ORDERED.[20]
The Regional Trial Court declared that the new designs of the PNP
cap device and badge were created by the PNP Directorate for Research
and Development, Clothing, and Criminalistics Equipment Division. Under
Section 176.1 of Republic Act No. 8293,[21]
the new designs are works of the Philippine government, the copyright
of which may not be registered in favor of private entities.[22]
El Oro and Tupaz moved for reconsideration, but their motion was denied.[23]
Pending appeal before the Court of Appeals, Tupaz passed away.[24] He was substituted in the case by his heirs.[25]
In its Decision,[26]
the Court of Appeals reversed the Regional Trial Court’s ruling and
lifted the writ of prohibitory injunction issued against El Oro, Tupaz,
and their successors-in-interest.
The Court of Appeals
classified the new designs of the PNP cap device and badge as derivative
works under Section 2(P) of Presidential Decree No. 49.[27]
According to the Court of Appeals, a derivative work is entitled to
copyright protection, if produced with the consent of the original
work’s author, and if it has a “distinguishable non-trivial variation”
from the original.[28] The Court of Appeals ruled that both requirements were present.[29]
Although both parties claim authorship over the pre-existing designs,
the Court of Appeals nevertheless held that the consent requirement was
met because both parties agreed to use the pre-existing designs as basis
for the new designs. Moreover, the new designs are substantially
distinct from the pre existing designs.[30] In its Decision, the Court of Appeals stated:
Comparing Exhibits A-1 (the cap device designed earlier used by
the PNP) and A-2 (the design for which Tupaz obtained a copyright
registration certificate), substantial changes in the appearance are
present. Some of these distinctions are: the native shield in Exhibit
A-1 is checkered cream and red in color while the one in Exhibit A-2 is
silver; eight short sun rays appear on top of Exhibit A-2 while there is
none in the other earlier design; and the flowers in Exhibit A-2 are
mere buds while the ones in Exhibit A-1 have open petals. Notable
changes are also present if Exhibits B-1 (the badge design earlier used
by the PNP) and B-2 (another design for which Tupaz obtained a
certificate [of copyright registration]) are compared. For instance,
among other differences, colors (black, red, white and blue) and eight
short sun rays on top of the design are incorporated in Exhibit B-2
while Exhibit B-1 does not contain these details.[31]
The Court of Appeals declared Tupaz as the author of the new
designs. The PNP only contributed ideas, but it was Tupaz who actually
made the new designs. The Court of Appeals emphasized that the law on
copyright protects the expression of an idea, but not the idea itself.[32]
The Republic of the Philippines then filed a Petition for Review on Certiorari[33] before this Court. In a September 14, 2011 Resolution,[34]
this Court required respondents to comment on the petition. However,
they failed to file their comment on the petition. Subsequently, this
Court issued a show cause order requiring respondent Tupaz to explain
why he should not be held in contempt, and to submit the required
comment on the petition.[35]
The Resolution, and other subsequent Resolutions of this Court, were returned unserved to respondents.[36] In another Resolution,[37]
this Court required the Office of the Solicitor General to submit the
current addresses of respondents so that they may be served with court
processes.
The Office of the Solicitor General manifested that respondent
Tupaz received a copy of the petition based on the postmaster’s
certification. Meanwhile, respondent Ma. Corazon Tupaz passed away on
August 30, 2010. On the other hand, the whereabouts of respondents Ma.
Jeanette T. Caling, Ma. Junella T. Avjean, Marie Jocelyn T. Dexheimer,
and Jon Ferdinand T. Tupaz could not be ascertained.[38]
Extraordinary efforts to serve copies of the resolutions ordering
respondents to file their comment failed. This Court later resolved to
dispense with the filing of respondents’ comment on the petition.[39]
Petitioner concedes that only questions of law may be raised in a
Petition for Review on Certiorari brought under Rule 45 of the Rules of
Court. However, it claims that the present case is exempted from the
application of the general rule for two (2) reasons. First, the factual
findings of the Court of Appeals are contrary to the findings of the
trial court. Second, the conclusion of the Court of Appeals[40] is “grounded entirely on speculation, surmise[s,] and conjectures[.]”[41]
Petitioner argues that derivative works are entitled to protection
under Section 8 of Presidential Decree No. 49 only if they were
“produced with the consent of the creator or proprietor of the original
works[.]”[42] However, the
Court of Appeals failed to establish the true author of the pre-existing
designs. This is relevant to determine who can give consent.[43]
Moreover, petitioner maintains that there is no substantial distinction
between the new designs and the pre-existing designs. The distinctive
features of the pre-existing designs were exactly adopted in the new
designs. The differences pointed out by the Court of Appeals are only
trivial distinctions. Due to the absence of distinguishable non-trivial
variations, the new designs cannot be copyrighted as derivative or new
works under Section 8 of Presidential Decree No. 49.[44]
This case presents the following issues for this Court’s resolution:
First, whether or not this Court may undertake a factual review.
Second, whether or not the new designs of the PNP cap device and
badge are entitled to protection as derivative works under Section 8 of
Presidential Decree No. 49.
Lastly, whether or not the PNP, as contributor of ideas, should be deemed as the author of the new designs.
The petition is unmeritorious.
I
The scope of this Court’s jurisdiction over petitions brought
under Rule 45 of the Revised Rules of Court is limited to reviewing
questions of law.[45] This Court will not entertain questions of fact because it is not duty-bound to weigh and analyze evidence anew.[46]
The factual findings of the appellate courts are generally final and
conclusive on this Court when supported by substantial evidence.[47]
The question pertaining to the authorship of a copyrightable work is a
factual matter that generally goes beyond the scope of review in a Rule
45 Petition. However, this Court may undertake a factual review when
the findings of the Court of Appeals are “contrary to those of the trial
court[.]”[48]
In this
case, the Regional Trial Court and Court of Appeals differed as to who
created the new designs of the PNP cap device and badge. Also, both
tribunals applied different laws. The Regional Trial Court rendered its
Decision based on the present intellectual property code or Republic Act
No. 8293.[49] The Court of Appeals, on the other hand, relied on the provisions of Presidential Decree No. 49.[50]
This case shall be resolved using the provisions of Presidential Decree
No. 49, not Republic Act No. 8293. Presidential Decree No. 49 was the
law in force at the time the new designs of the PNP cap device and badge
were made. It was also the law in force when the certificates of
copyright registration were issued to respondents in 1996.[51] Republic Act No. 8293, which amended Presidential Decree No. 49, only took effect on January 1, 1998.[52]
II(A)
Copyright is “the right granted by statute to the proprietor
of an intellectual production to its exclusive use and enjoyment[.]”[53]
It “may be obtained and enjoyed only with respect to the subjects and
by the persons, and on terms and conditions specified in the statute.”[54]
Copyright is a purely statutory right. Only classes of works falling
under the statutory enumeration are entitled to protection.[55]
Copyright has two rationales: the economic benefit and social benefit.
The economic benefit is reaped by the author from his work while the
social benefit manifests when it creates impetus for individuals to be
creative.[56] Copyright, like
other intellectual property rights, grants legal protection by
prohibiting the unauthorized reproduction of the author’s work.[57]
It “create[s] a temporary monopoly on varying types of knowledge,
allowing their owners to restrict and even prevent, other from using
that knowledge.”[58] By eliminating fear of other’s appropriation and exploitation of an author’s work, intellectual creation is incentivized.[59]
When the concept of copyright emerged, it was primarily concerned with
the advancement of a common social good and not so much about the
author’s rights. Copyright statutes were initially crafted for the
reading public and to encourage education through the production of
books.[60]
Copyright
traces its beginnings in 1476 when printing was first introduced in
England. The English Crown then had two (2) main reasons in regulating
printing through licensing: (1) to suppress dissent, which was rapidly
growing due to easier reproduction of materials; and (2) to profit from
those who are willing to pay for the exclusive right to print particular
books. Subsequently, the control of publishing was ceded to a group of
printers, bookbinders, and booksellers called Stationer’s Company
through a printing patent which grants monopoly over the English
publishing trade. Through the Stationer’s Company, the English Crown
maintained its political and economic interest in the publishing trade.[61]
The Stationer’s Company eventually lost its power when the Licensing
Act expired in 1694. Failing to convince the Parliament to extend its
powers, the Stationer’s Company lobbied for the interests of authors
over publishers. In 1710, the Statute of Anne, the first copyright act,
was enacted. The Statute of Anne granted the Stationer’s Company the
remedies they needed to maintain their existing publication rights.
However, it removed the Stationer’s Company’s monopoly by allowing
anyone, whether an author or a publisher, to obtain copyright by mere
registration. The law further provided a limited term of copyright
instead of the former perpetual monopoly. It granted 14 years for the
work’s publication which is renewable for another 14 years, if the
author was still alive.[62]
While the Statute of Anne was seen as an anti-monopoly trade
regulation, it mainly focused on the author’s social contribution and
the advancement of education through the production of books.[63]
It is not mainly after the “recognition of any pre-existing authorial
right, nor…the regulation of the booksellers’ market[,]” but the
promotion of “the free market of ideas[.]”[64]
The Statute of Anne only covered books, but succeeding laws added other
subjects as new technology emerged, such as engravings, sculptures,
paintings, drawings, photographs, sound recordings, and motion pictures.[65]
The first copyright law of the United States, the Act of 1790, was
modeled after the Statute of Anne. It initially covered books, maps, and
charts and similarly required a formal registration and granted a
14-year copyright renewable for another 14-year term.[66] In its subsequent amendments, the period was extended to 28 years[67]
and it expanded copyright to other works such as historical and other
prints, dramatic works and its public performance, photographs, visual
art, and musical compositions.[68]
It later included the right to create derivative works and the
prohibition on copyright protection in government publications.[69]
Intellectual property law in our jurisdiction dates back during the Spanish occupation.[70]
When the United States took over the Philippines through the Treaty of
Paris in 1898, “patents, trademarks, and copyrights that were granted by
the Spanish government continued to have legal effect in the
[Philippines.]”[71]
While under the United States occupation, Act No. 3134, otherwise known
as the Copyright Law of the Philippine Island, was passed.[72] Act No. 3134 was based on the United States Copyright Law of 1909.[73]
After the Philippines gained its independence in 1946, Act No. 3134
provided the legal framework for intellectual property law in our
jurisdiction.[74] Years later, laws on patent[75] and trademark[76] were enacted, creating a patent office for the registration of trademarks, trade names, and service marks.[77]
In 1972, Presidential Decree No. 49, otherwise known as the Decree on
the Protection of Intellectual Property, was passed, superseding Act No.
3134. Nevertheless, Presidential Decree No. 49 was heavily modeled
after Act No. 3134.[78]
Section 2 of Presidential Decree No. 49 enumerates different classes of
copyrightable works, which are protected from the moment of creation:
SECTION 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the following classes
of works:
compositions; choreographic works and entertainments in dumb shows, the
acting form of which is fixed in writing or otherwise;
architecture, sculpture, engraving, lithography, and other works of art;
models or designs for works of art;
produced by a process analogous to cinematography or any process for
making audio-visual recordings;
adaptations, abridgements, arrangements and other alterations of
literary, musical or artistic works or of works of the Philippine
Government as herein defined, which shall be protected as provided in
Section 8 of this Decree;
or artistic works or of works referred to in Section 9 of this Decree
which by reason of the selection and arrangement of their contents
constitute intellectual creations, the same to be protected as such in
accordance with Section 8 of this Decree;
The enumeration under Section 2 of Presidential Decree No. 49 is
substantially similar to that which can be found in Section 172.1 of the
subsequent law, Republic Act No. 8293.[79]
Under both laws, the copyright vests upon the sole fact of creation.[80] Presidential Decree No. 49 requires the registration and deposit of some works with the National Library.[81] Noncompliance with this rule “does not deprive the copyright owner of the right to sue for infringement.”[82]
However, it limits the remedies of copyright owners, denies them of the
right to recover damages, and subjects them to certain sanctions. [83]
Republic Act No. 8293 retains the registration and deposit requirement
but only for the purpose of “completing the records of the National
Library and the Supreme Court Library[.]”[84] The present law “does not require registration of the work to fully recover in an infringement suit.”[85]
II(B)
Broadly defined, a derivative work refers to a work that is “based on…one or more already existing works.”[86] The author of a derivative work borrows expressive content from an existing work and transforms it into another work.[87]
Through this process, the author of a derivative work does not simply
copy the existing work but creates an original work entitled to a
separate copyright.[88]
Although the expression in the derivative work is “intermingled with the
expression from the underlying work,” the derivative author contributes
original expression to the new work making it distinct from the
underlying work.[89]
Derivative works right is inseparable from the adaptation right of the original work’s author.[90]
Adaptation right is included in the bundle of rights granted to a
recognized author or owner of an intellectual property. Under Section
5(B) of Presidential Decree No. 49:
SECTION 5. Copyright shall consist in the exclusive right;
….
(B) To make any translation or other version or extracts or
arrangements or adaptations thereof; to dramatize it if it be a
non-dramatic work; to convert it into a non-dramatic work if it be a
drama; to complete or execute it if it be a model or design[.]
Under earlier laws, authors are not granted adaptation rights. The
original author’s right was narrow as it only covered the literal
copying of the material. For instance, an author cannot claim an
injunction against the unauthorized translation of his or her work to
another language, because the rights granted under the copyright only
extends to “printing, reprinting, publishing or vending.”[91]
Adaptation right was later introduced as copyright expanded beyond literal copying. Similar to existing laws in United Kingdom,[92] Canada,[93] and Australia,[94]
the United States’ 1909 Copyright Act then allowed “abridgements,
adaptations, arrangements, dramatizations, translations, or other
version of works…of copyrighted works” only when produced with the
author’s consent.[95] This statutory text was adopted in Act No. 3134, and later in Presidential Decree No. 49.[96]
Borne out of copyright’s expansion, the notion of derivative
works was introduced in the legal scheme. When the adaptation of an
original work was authorized by the owner, and when distinct from the
underlying work, the resulting derivative work is copyrightable.
No exact definition of derivative works is found in
Presidential Decree No. 49 and Republic Act No. 8293. However, both laws
provide examples consistent with the Berne Convention.
Under
Article 2(3) of the Berne Convention for the Protection of Literary and
Artistic Works (Berne Convention) to which the Philippines is a
contracting party,[97]
derivative works pertain to “[t]ranslations, adaptations, arrangements
of music and other alterations of a literary or artistic work[.]”
Section 2(P) of Presidential Decree No. 49 grants copyright protection
to “[d]ramatizations, translations, adaptations, abridgements,
arrangements and other alterations of literary, musical or artistic
works or of works of the Philippine Government[.]” Republic Act No. 8293
devotes a separate chapter to derivative works. The enumeration is
substantially similar to that found in Presidential Decree No. 49.
However, it excludes from copyright protection derivative works based on
existing works of the government.[98]
Presidential Decree No. 49 gives special attention to derivative works
and how it may be granted copyright as a new work. Under Section 8 of
the law:
SECTION 8. The works referred to in subsections (P) and (O) of Section 2 of this Decree shall, when produced with the consent of the creator or proprietor of the original works on which they are based,
be protected as new works; however, such new works shall not affect the
force of any subsisting copyright upon the original works employed or
any part thereof, or be construed to imply an exclusive right to such
use of the original works, or to secure or extend copyright in such
original works. (Emphasis supplied)[99]
Presidential Decree No. 49 is consistent with prevailing
conventions when it was enacted. Under the Berne Convention and the
Universal Copyright Convention, authors of original works retain the
exclusive right of control over their works. Pertinent articles of the
conventions provide:
Berne Convention
Article 8.
Right of Translation.
Authors of literary and artistic works protected by this
Convention shall enjoy the exclusive right of making and of authorizing
the translation of their works throughout the term of protection of
their rights in the original works.
. . . .
Article 12.
Right of Adaptation, Arrangement and Other Alteration.
Authors of literary or artistic works shall enjoy the exclusive
right of authorizing adaptations, arrangements and other alterations of
their works.[100]
Universal Copyright Convention
Article V
1. Copyright shall include the exclusive right of the author to
make, publish, and authorize the making and publication of translations
of works protected under this Convention.
The Court of Appeals correctly classified the new designs of the
PNP cap device and badge as derivative works. Respondents, in
collaboration with the PNP and upon its instruction, borrowed expressive
content from the pre existing designs of the PNP cap device and badge
to create the new. The new designs are considered alterations of
artistic works under Section 2(P) of Presidential Decree No. 49.
However, they can only be copyrighted if they were produced with the
consent of the creator of the pre-existing designs and if there is
distinction between the new designs and the pre-existing designs.
Both requisites are present in this case.
The Regional
Trial Court and the Court of Appeals failed to determine who authored
the pre-existing designs. Respondents assert that they owned both
designs because their ancestor, Jose T. Tupaz, Jr., is the author of the
original designs of the PNP cap device and badge. On the other hand,
petitioner claims that it owned the designs. However, this would be of
little or of no consequence considering that the parties asserting
ownership over the pre-existing designs are the very same ones who
collaborated to create the new designs. It would have been a different
matter if a third party also claimed ownership over the pre-existing
designs. What is clear is that both parties agreed to create the new
designs from the pre-existing designs.
Since the creator of the
new designs must borrow expressive content from the pre-existing
designs, the new designs would obviously incorporate elements of the
original material. In this case, the borrowed elements of the original
material are the native shield, the eight (8) rays of the sun, three (3)
stars’ laurel leaves’ and the words “service,” “honor,” and “Justice.”[101]
The test of whether the new designs are copyrightable independently
from the pre-existing works is the presence of originality in the
derivative work. The new work, although similar to the pre-existing work
in some of its expressive elements, must be substantially distinct from
the pre-existing work.[102]
A careful comparison of the pre-existing designs and the new designs
shows that there are substantial distinctions between the two:[103]
(see image, p. 17)
Figure 1.1 Pre-existing PNP Cap Device & Figure 1.2 Redesigned PNP Cap Device
The most prominent feature of the pre-existing PNP cap device is
the native shield. In the new design of the PNP cap device, the native
shield has been reduced in size and the laurel leaves are made more
noticeable. The Court of Appeals observed that the native shield in the
pre-existing design is “checkered cream and red in color.” On the other
hand, the native shield in the new design is silver.[104]
The pre-existing PNP cap device contains the words “PHILIPPINE
NATIONAL POLICE” located inside the native shield, which was eliminated
in the new design. Instead, the words “PHILIPPINES” and “POLICE” were
placed at the top and bottom of the cap device, respectively.
Furthermore, the word “POLICE” is more prominent in the new design.
There are also 8 short sun rays on top of the cap device:
(see image, p. 17)
Figure 2.1 Pre-existing: PNP Badge & Figure 2.2 Redesigned PNP Badge
With regard to the PNP badge, the most prominent feature of the
pre existing design is the native shield, which has been reduced in
size in the new design. Another prominent feature of the pre-existing
design is the badge number. The badge number in the new design was
reduced and placed at the bottom portion.
The words “PHILIPPINE NATIONAL POLICE” were transposed from
the native shield in the pre-existing design and were placed on top in
the new design. The shapes of the two designs are also different. The
new design takes the general shape of an oval compared to the
pre-existing design. Aside from these, the Court of Appeals observed
that the new design contains the colors black, red, white, and blue.[105]
III
Under Section 2 of Presidential Decree No. 49, the copyright
belongs to the creator of the work or the creator’s heirs or assigns. If
the work is created by two (2) or more persons, they shall own the
copyright jointly.[106] The same principles are embodied in Sections 178.1 and 178.2 of Republic Act No. 8293.[107]
Unlike Republic Act No. 8293, which defines an author as the “natural person who has created the work[,]”[108]
Presidential Decree No. 49 does not provide a definition of an author
or a creator. Despite the law’s silence, an author, for purposes of
copyright ownership, should be deemed as one who fixes an abstract idea
into something tangible.
The Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS Agreement), which took effect in
the Philippines on January 1, 1995,[109]
states that “copyright protection shall extend to expressions and not
to ideas, procedures, methods of operation[,] or mathematical concepts
as such.”[110]
More
commonly referred to as the “idea/expression dichotomy,” the principle
in copyright protection is that “ideas are not protectable” and only
expressions of those ideas may be subject to copyright protection.[111]
In ABS-CBN Corp. v. Gozon,[112] this Court distinguished ideas and expression of ideas in relation to what may be the subject of copyright:
An idea or event must be distinguished from the expression of
that idea or event. An idea has been likened to a ghost in that it “must
be spoken to a little before it will explain itself.”
…Ideas can be either abstract or concrete. It is the concrete ideas that are generally referred to as expression:
The words “abstract” and “concrete” arise in many cases dealing with the idea/expression distinction. The Nichols
court, for example, found that the defendant’s film did not infringe
the plaintiffs play because it was “too generalized an abstraction from
what plaintiff wrote … only a part of her ideas.” In Eichel v. Marcin,
the court said that authors may exploit facts, experiences, field of
thought, and general ideas found in another’s work, “provided they do
not substantially copy a concrete form, in which the circumstances and
ideas have been developed, arranged, and put into shape.” Judge Hand, in
National Comics Publications, Inc. v. Fawcett Publications, Inc. said that “no one infringes, unless he descends so far into what is concrete as to invade… ‘expression.”‘These cases seem to be distinguishing “abstract” ideas from
“concrete” tangible embodiments of these abstractions that may be termed
expression. However, if the concrete form of a work means more than the
literal expression contained within it, it is difficult to determine
what is meant by “concrete.” Webster’s New Twentieth Century Dictionary of the English Language
provides several meanings for the word concrete. These include: “having
a material, perceptible existence; of, belonging to, or characterized
by things or events that can be perceived by the senses; real; actual;”
and “referring to a particular; specific, not general or abstract.”[113] (Citations omitted)
Joaquin v. Drilon [114]
also illustrates the distinction between ideas and expression of ideas
regarding copyrightable subject matter. The petitioner in Joaquin
claimed that the format of its dating game show called ‘Rhoda and Me’ is
entitled to copyright protection.[115] In ruling against the petitioner, this Court underscored the principle that the law on copyright is purely statutory.[116] Only classes of work enumerated in Pres. Decree No. 49 are subject to copyright.[117] Thus, the format of a television show, not falling within the enumeration, is not copyrightable.[118] Furthermore, this Court stated:
P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The
copyright does not extend to an idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless of the
form in which it is described, explained, illustrated, or embodied in
such work.[119] (Citation omitted, emphasis supplied)
Although a creator or author is not expressly defined under Pres.
Decree No. 49, it may be logically inferred—based on the scope of
copyrightable works—that a creator or an author pertains to someone who
transforms an abstract idea into a tangible form of expression through
the application of skill or labor.
To create a thing that may be
entitled to a copyright requires something more than the giving of
ideas and concepts. Ideas should translate to or transition into
something that is tangible or physical. In other words, something
capable of being perceived must be produced. To illustrate, an image
that remains in a person’s mind would not be entitled to copyright
protection unless he or she draws it on a piece of paper or paints the
image on canvass.
In this case, it is undisputed that petitioner
and respondent Tupaz collaborated to develop the new designs of the PNP
cap device and badge. However, the extent of petitioner’s participation
in developing the new designs of the PNP cap device and badge was
limited to instructing respondent Tupaz on how the designs should appear
in general and what specific elements should be incorporated.[120] Petitioner merely supplied ideas and concepts.[121]
It was respondent Tupaz who used his skill and labor to concretize what
petitioner had envisioned. Therefore, petitioner cannot be considered
as an author of the new designs either in whole or in part.
Petitioner is also not entitled to own the copyright under any of the exceptions in Section 6 of Presidential Decree No. 49.[122]
The first exception refers to works created in the course of the
employment of the creator. Section 6 of Presidential Decree No. 49
states:
If the work in which copyright subsists was made during and in
the course of the employment of the creator, the copyright shall belong
to:
creation of the object of copyright is not a part of his regular duties
even if the employee uses the time, facilities and materials of the
employer.
result of the performance of his regularly assigned duties, unless there
is an agreement, express or implied to the contrary. [123]
Section 178.3 of Republic Act No. 8293, retains the rule regarding works created in the course of the employment.[124]
The second exception refers to commissioned works. The creator of
the work should be paid valuable consideration for the work made.
Section 6 of Presidential Decree No. 49 states that the copyright of a
commissioned work belongs in joint ownership to the creator and the
person who commissioned the work. The parties, however, can agree that
the ownership of the copyright shall pertain to either of them.[125]
The rule regarding commissioned works is modified under Republic Act
No. 8293. Parties no longer have joint ownership over the copyright.
Under Section 178.4 of Republic Act No. 8293, the copyright of a
commissioned work generally belongs to the creator. However, the parties
may agree in writing to transfer the copyright to the person who
commissioned the work.[126]
In the present case, petitioner is not entitled to own the copyright
because the designs were neither commissioned works nor works created in
the course of respondent Tupaz’s employment. First, although the
parties verbally agreed to work together, petitioner did not hire
respondent Tupaz’s services for a fee or a commission. Respondent Tupaz
rendered his services voluntarily.[127]
In other words, the new designs do not qualify as commissioned works.
Second, there was no employer-employee relationship between the parties
at the time the designs were made.
Petitioner could have avoided
this dispute had it entered into a contract that clearly and expressly
spelled out the extent of each party’s rights over the new designs, as
Presidential Decree No. 49 allows the transfer or assignment of the work
and its copyright to other persons by gift, inheritance, or otherwise.[128]
WHEREFORE, the Petition for Review is DENIED. The Court of Appeals Decision dated August 12, 2010 and Resolution dated June 27, 2011 in CA-G.R. CV No. 82018 are AFFIRMED.
SO ORDERED.
Gesmundo, Carandang, Zalameda, and Gaerlan, JJ., concur.
[1] Rollo, pp. 26-49.
[2] Id. at 8-20. The
August 12, 2010 Decision docketed as CA-G.R. CV No. 82018 was penned by
Associate Justice Florito S. Macalino and concurred in by Associate
Justices Juan Q. Enriquez Jr., and Ramon M. Bato, Jr. of the Sixth
Division, Court of Appeals, Manila.
[3] Id. at 22-23. The
November 5, 2003 Resolution docketed as CA-G.R. CV No. 82018 was penned
by Associate Justice Florito S. Macalino and concurred in by Associate
Justices Juan Q. Enriquez Jr., and Ramon M. Bato, Jr. of the Sixth
Division, Court of Appeals, Manila.
[4] Id. at 83-85. The
Decision dated November 5, 2003 was penned by Presiding Judge Reynaldo
B. Daway of Branch 90, Regional Trial Court, Quezon City.
[5] Id. at 85.
[6] Id. at 30.
[7] Id. at 66-67, Petitioner’s Complaint.
[8] Id. at 30.
[9] Id. at 9.
[10] Id. at 15-17.
[11] Id. at 30-31.
[12] Id. at 31.
[13] Id. at 10.
[14] Id. at 31.
[15] Id. at 31-32.
[16] Id. at 10.
[17] Id. at 84.
[18] Id. at 10.
[19] Id. 83-85.
[20] Id. at 85.
[21] Republic Act No. 8293 (1997), sec. 176.1 provides:
SECTION 176. Works of the Government. – 176.1. No
copyright shall subsist in any work of the Government of the
Philippines. However, prior approval of the government agency or office
wherein the work is created shall be necessary for exploitation of such
work for profit. Such agency or office may, among other things, impose
as a condition the payment of royalties. No prior approval or conditions
shall be required for the use for any purpose of statutes, rules and
regulations, and speeches, lectures, sermons, addresses, and
dissertations, pronounced, read or rendered in courts of justice, before
administrative agencies, in deliberative assemblies and in meetings of
public character.
[22] Rollo, p. 85.
[23] Id. at 86.
[24] Id. at 29.
[25] Id. at 8. The heirs
of Tupaz who substituted him in the case were: (1) Ma. Corazon J.
Tupaz; (2) Ma. Jeanette T. Caling; (3) Ma. Junella T. Avjean; (4) Marie
Joselyn T. Dexheimer; (5) Jose Niño T. Tupaz, V; and (6) Jon Ferdinand
T. Tupaz.
[26] Id. at 8-20.
[27] Pres. Decree No. 49 (1972). sec. 2(P) provides:
SECTION 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the following classes
of works:
….
(P) Dramatizations, translations, adaptations, abridgements,
arrangements and other alterations of literary, musical or artistic
works or of works of the Philippine Government as herein defined, which
shall be protected as provided in Section 8 of this Decree[.]
[28] Rollo, pp. 12-13.
[29] Id. at 13-14.
[30] Id.
[31] Id. at 14.
[32] Id. at 14-17.
[33] Id. at 26-49.
[34] Id. at 99.
[35] Id. at 115.
[36] Id. at 136.
[37] Id. at 136-136-A.
[38] Id. at 137-142.
[39] Id. at 169.
[40] Id. at 35-37.
[41] Id. at 36.
[42] Id. at 38-39.
[43] Id. at 37-40.
[44] Id. at 42-45.
[45] RULES OF COURT, Rule 45, sec. 1.
[46] Fuentes v. Court of Appeals, 335 Phil. 1163, 1168 (1997) [Per J. Panganiban, Third Division]; Bautista v. Puyat, 416 Phil. 305,308 (2001) [Per J. Pardo, First Division].
[47] Pascual v. Burgos, 776 Phil. 167, 182 (2016) [Per J. Leonen, Second Division].
[48] Id. citing Medina v. Mayor Asistio, Jr 269 Phil. 225 (1990) [Per J. Bidin, Third Division]; See Gabriel v. Spouses Mabanta, 447 Phil. 717, 725 (2003) [Per Sandoval-Gutierrez, Third Division].
[49] Rollo, p. 85.
[50] Id. at 12-14, 17-18.
[51] Id. at 68.
[52] Repub1ic Act No. 8293 (1997), sec. 241.
[53] Olaño v. Lim Eng Co, 783 Phil. 238, 249 [Per J. Reyes, Third Division].
[54] Pearl & Dean (Phil.) v. Shoemart, 456 Phil. 474, 489 (2003) [Per J. Corona, Third Division].
[55] Joaquin v. Drilon, 361 Phil. 900, 914 (1999) [Per J. Mendoza, January 8, 1999].
[56] AXEL GOSSERIES, ET AL., INTELLECTUAL PROPERTY AND THEORIES OF JUSTICE 162 (2008).
[57] Id. at 160.
[58] MEIR PEREZ PUGATCH, THE INTERNATIONAL POLITICAL ECONOMY OF INTELLECTUAL PROPERTY RIGHTS 16 (2004).
[59] AXEL GOSSERIES, ET AL., INTELLECTUAL PROPERTY AND THEORIES OF JUSTICE 160 (2008).
[60] RONAN DEAZLEY, RETHINKING COPYRIGHT: HISTORY, THEORY, LANGUAGE 23 (2006).
[61] PAUL GOLDSTEIN, INTERNATIONAL COPYRIGHT: PRINCIPLES, LAW, AND PRACTICE 5 (2001).
[62] Id. at 5-6.
[63] RONAN DEAZLEY, ON THE ORIGIN OF THE RIGHT TO COPY 46 (2004).
[64] Id.
[65] PAUL GOLDSTEIN, INTERNATIONAL COPYRIGHT: PRINCIPLES, LAW, AND PRACTICE 6 (2001).
[66] Id. at 6-7.
[67] US Copyright Act of 1909, sec. 23.
[68] US Copyright Act of 1909, sec. 5.
[69] US Copyright Act of 1909, sec. 6 and 7.
[70] PAUL GOLDSTEIN, ET AL., INTELLECTUAL PROPERTY IN ASIA: LAW, ECONOMICS, HISTORY AND POLITICS, 201 (2009).
[T]he Spanish patent law [was] promulgated on March 27, 1826
… Several royal decrees paved the way for the amendment of the laws of
the Spanish colonies to place questions on patents under the
jurisdiction of ordinary tribunals in the colonies. During the Spanish
period, all patent applications of Philippine residents had to be sent
to Spain for examination and grant.
[71] Id.
[72] Id.
[73] The intellectual property system: a brief history,
INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES, available at <https://www.ipophil.gov.ph/news/the-intellectual-property-system-a-brief-history/> (last accessed on September 7, 2020).
[74] PAUL GOLDSTEIN, ET AL., INTELLECTUAL PROPERTY IN ASIA: LAW, ECONOMICS, HISTORY AND POLITICS, 201 (2009).
[75] Republic Act No. 165 (1947).
[76] Republic Act No. 166 (1947).
[77] The
intellectual property system: a brief history, INTELLECTUAL PROPERTY
OFFICE OF THE PHILIPPINES, available at <https://www.ipophil.gov.ph/news/the-intellectual-property-system-a-brief-history/> (last accessed on September 7, 2020).
[78] Pres. Decree No. 49 (1972).
[79] Republic Act No. 8293 (1997), sec. 172 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:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art;(h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial design, and
other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography, topography, architecture
or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography; lantern slides;(l) Audiovisual works and cinematographic works and works produced
by a process analogous to cinematography or any process for making
audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
[80] Pres. Decree No. 49 (1972), sec. 2 and Republic Act No. 8293 (1997), sec. 172.
[81] Pres. Decree No. 49 (1972), sec. 26 provides:
Section 26. After the first public dissemination or performance
by authority of the copyright owner of a work falling under subsections
(A), (B), (C) and (D) of Section 2 of this Decree, there shall, within
three weeks, be registered and deposited with the National Library, by
personal delivery or by registered mail, two complete copies or
reproductions of the work in such form as the Director of said library
may prescribe. A certificate of registration and deposit for which the
prescribed fee shall be collected. If, within three weeks after receipt
by the copyright owner of a written demand from the director for such
deposit, the required copies of reproductions are not delivered and the
fee is not paid, the copyright owner shall be liable to pay a fine
equivalent to the required fee per month of delay and to pay to the
National Library the amount of the retail price of the best edition of
the work. With or without a demand from the Director, a copyright owner
who has not made such deposit shall not be entitled to recover damages
in an infringement suit and shall be limited to the other remedies
specified in Section 23 of this Decree.
[82] Columbia Pictures, Inc. v. Court of Appeals, 329 Phil. 875, 930 (1996) [Per J. Regalado, En Banc].
[83] Pres. Decree No. 49 (1972), sec. 26.
[84] Rep. Act No. 8293 (1997), sec. 191.
[85] ABS-CBN v. Gozon, 755 Phil. 709, 740 (2015) [Per J. Leonen, Second Division].
[86] DEBORAH E. BOUCHOUX, INTELLECTUAL PROPERTY THE LAW OF TRADEMARKS, COPYRIGHTS, PATENTS, AND TRADE SECRETS 203 (4TH ED., 2012).
[87] Id.
[88] Id. at 203-204.
[89] Pamela Samuelson, The Quest for a Sound Conception of Copyright’s Derivative Work Right, 101 GEORGETOWN LAW JOURNAL 1505, 1526 (2013).
[90] Deidri: A. Keller, Recognizing the Derivative Works Right as a Moral Right: A Case Comparison and Proposal, 63 CASE WESTERN RESERVE LAW REVIEW 511, 541 (2012).
[91] Amy B. Cohen, When Does a Work Infringe the Derivative Works Right of a Copyright Owner?, 17 CARDOZO ARTS & ENT. L.J. 623, 626 (1999).
[92] Copyright, Designs, and Patents Act, 1988, c. 48, sec. 16 provides:
Section 16. The acts restricted by copyright in a work.
(1) The owner of the copyright in a work has, in accordance with the
following provisions of this Chapter, the exclusive right to do the
following acts in the United Kingdom –
. . . .
(e) to make an adaptation of the work or do any of the above in relation to an adaptation.
[93] Canadian Copyright Act, R.S.C. 1985, c. C-42, sec. 3(1)(a)(b)(c)provides:
Section 3(1). For the purposes of this Act, copyright, in
relation to a work, means the sole right to produce or reproduce the
work or any substantial part thereof in any material form whatever, to
perform the work or any substantial part thereof in public or, if the
work is unpublished, to publish the work or any substantial part
thereof, and includes the sole right
(a) to produce, reproduce, perform or publish any translation of the work,
(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,(c) in the case of a novel or other non-dramatic work, or of an
artistic work, to convert it into a dramatic work, by way of performance
in public or otherwise,
[94] Copyright Act 1968, sec. 10(1), 31(1)(a)(vi) provide:
Section 10. Adaptation means:
(a) in relation to a literary work in a non-dramatic form a version
of the work (whether in its original language or in a different
language) in a dramatic form;
(b) in relation to a literary work in a dramatic form a version of
the work (whether in its original language or in a different language)
in a non-dramatic form;
(ba) in relation to a literary work being a computer program—a
version of the work (whether or not in the language, code or notation in
which the work was originally expressed) not being a reproduction of
the work;
(c) in relation to a literary work (whether in a non-dramatic form or in a dramatic form):(i) a translation of the work; or (ii) a version of the work in
which a story or action is conveyed solely or principally by means of
pictures; and
(d) in relation to a musical work-an arrangement or transcription of the work.Section 31. Nature of copyright in original works
(1) For the purposes of this Act, unless the contrary intention
appears, copyright, in relation to a work, is the exclusive right:
(a) in the case of a literary, dramatic or musical work, to do all or any of the following acts:
(vi) to make an adaptation of the work;
[95] US Copyright Act of 1909, sec. 6 provides:
That compilations or abridgements, adaptations, arrangements,
dramatizations, translations, or other versions of works in the public
domain, or of copyrighted works when produced with the consent of the
proprietor of the copyright in such work, or works republished with new
matter, shall be regarded as new works subject to copyright under the
provisions of this Act; but the publication of any such new works shall
not affect the force or validity of any subsisting copyright upon the
matter employed or any part thereof, or be construed to imply an
exclusive right to such use of the original works, or to secure or
extend copyright in such original works.
[96] Act No. 3134, sec. 3(b) provides:
Section 3(b) To make any translation or other version or extracts
or arrangements or adaptations thereof; to dramatize it if it be a
non-dramatic work; to convert it into a non-dramatic work if it be a
drama; to complete or execute it if it be a model or design;
[97] The Philippines became a party to the Berne Convention on August 1, 1951. See WIPO Lex, Contracting Parties, available at <https://wipolex.wipo.int/en/treaties/parties/remarks/PH/15> (last accessed on September 7, 2020).
[98] Republic Act No. 8293 (1997), sec. 171 provides:
Section 173. Derivative Works. — 173.1. The following derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments,
arrangements, and other alterations of literary or artistic works; and(b) Collections of literary, scholarly or artistic works, and
compilations of data and other materials which are original by reason of
the selection or coordination or arrangement of their contents.
[99] Pres. Decree No. 49 (1972), sec. 8.
[100] Berne Convention, art. 8, 12.
[101] Rollo, p. 42.
[102] DEBORAH E. BOUCHOUX, INTELLECTUAL PROPERTY THE LAW OF TRADEMARKS, COPYRIGHTS, PATENTS, AND TRADE SECRETS 203-204 (4TH ED., 2012).
[103] Rollo, pp. 87 and 96; and pp. 88 and 97.
[104] Id. at 14.
[105] Id.
[106] Pres. Decree No. 49 (1972), sec. 6, par. 1 provides:
Section 6. The creator or his heirs or assigns shall own the
copyright in any of the works mentioned in Section 2 of this Decree. If
the works is produced by two or more persons, the copyright shall belong
to them jointly and their respective rights thereto shall be governed
by the Rules of the Civil Code on co-ownership.
[107] Republic Act No. 8293 (1997), sec. 178.1 provides:
Section 178. Rules on Copyright Ownership. – Copyright ownership shall be governed by the following rules:
178.1. Subject to the provisions of this section, in case of
original literary and artistic works, copyright shall belong to the
author of the work;
178.2. In case of works of joint authorship, the co-authors shall be
the original owners of the copyright and in the absence of agreement,
their rights shall be governed by the rules on co-ownership. If,
however, a work of joint authorship consists of parts that can be used
separately and the author of each part can be identified, the author of
each part shall be the original owner of the copyright in the part that
he has created[.]
[108] Republic Act No. 8293 (1997), sec. 171.1.
[109] E.I. Dupont De Nemours and Co. v. Francisco, 794 Phil. 97, 127 (2016) [Per J. Leonen, Second Division].
[110] Agreement On Trade Related Aspects of Intellectual Property Rights, art. 9, par. 2.
[111] DEBORAH E. BOUCHOUX, INTELLECTUAL PROPERTY THE LAW OF TRADEMARKS, COPYRIGHTS, PATENTS, AND TRADE SECRETS 199 (4TH ED., 2012).
[112] 755 Phil. 709 (2015) [Per J. Leonen, Second Division].
[113] Id. at 741-744.
[114] 361 Phil. 900 (1999) [Per J. Mendoza, January 8, 1999].
[115] Id. at 912.
[116] Id. at 912-914.
[117] Id. at 912.
[118] Id.
[119] Id. at 915.
[120] Id. at 30-31.
[121] Id.
[122] Pres. Decree No. 49, sec. 6, pars. 2 and 3:
Section 6. Where the work is commissioned by a person who is not
the employer of the creator and who pays or agrees to pay for it and
the work is made in pursuance of the commission, the person who so
commissioned the work shall have ownership of it but the copyright
thereto shall belong in joint ownership to him and the creator, unless
there is a stipulation to the contrary.
[123] Pres. Decree No. 49, sec. 6, par. 2.
[124] Republic Act No. 8293 (1997), sec. 178.3 provides:
Section 178. Rules on Copyright Ownership. – Copyright ownership shall be governed by the following rules:
178.3. In the case of work created by an author during and in the course of his employment, the copyright shall belong to:
(a) The employee, if the creation of the object of copyright is not a
part of his regular duties even if the employee uses the time,
facilities and materials of the employer.
(b) The employer, if the work is the result of the performance of
his regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary[.]
[125] Pres. Decree No, 49, sec. 6, par. 3:
Section 6. Where the work is commissioned by a person who is not
the employer of the creator and who pays or agrees to pay for it and
the work is made in pursuance of the commission, the person who so
commissioned the work shall have ownership of it but the copyright
thereto shall belong in joint ownership to him and the creator, unless
there is a stipulation to the contrary.
[126] Rep. Act No. 8293 (1997). sec. 171.4 provides:
Section 178. Rules on Copyright Ownership. – Copyright ownership shall be governed by the following rules:
. . . .
178.4. In the case of a work commissioned by a person other than
an employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work
shall have ownership of the work, but the copyright thereto shall remain
with the creator, unless there is a written stipulation to the
contrary[.]
[127] Rollo, p. 18.
[128] Pres. Decree No. 49 (1972), sec. 15.