A survey of Philippine copyright cases

Unlike in the United States, we only have a handful of Supreme Court decisions that deal with copyright. Although copyright laws have been in force for more than half a century, copyright remains scant of judicial doctrines and interpretations. But in light of the recent proliferation of piracy and digital copying and the recent enactment of the Optical Media Act (Republic Act No. 9239), an overview of the current state of Philippine jurisprudence on copyright will help in understanding the problem.

The cases of Filipino Society of Composers, Authors, and Publishers vs. Tan [16 March 1987, 148 SCRA 461] and Santos vs. McCullough Printing Company [31 October 1964, 12 SCRA 321] involved the old requirement of prior registration before a creation can be covered by copyright protection. In the Filipino Society case, the OPM songs played by a combo in a restaurant were deemed public property for failure of their composers to register them within 30 days after their respective initial releases. The Supreme Court said that the performance of the said songs by the combo could have constituted infringement since it was found that they were being paid for their performances (derived from a portion of the restaurant’s profits) and that they were done without the prior consent of the composers. In the Santos case, involving the alleged unauthorized use of a Malang painting as a cover design of a Christmas card catalogue, the Supreme Court also held that the painting became public property for failure to register it within the prescribed period.

The case of Philippine Education Company, Inc. vs. Sotto and Alindada [29 January 1929, 52 Phil 680] also applied the old rule with respect to notice of copyright. Under the old law, it is required that the first publication of an article should contain a notice of copyright, if copyright is already acquired prior to publication, or a notice that publication of the same is reserved. In this case, the article in question did not contain any of the required notices, but only a notice that "all rights thereto were reserved". The Supreme Court ruled that said notice substantially complied with the requirement in order to be entitled to copyrigth protection.

Unlike our old copyright laws, Republic Act No. 8293 or the Intellectual Property Code (IP Code) does not require that a literary or artistic work be registered or that a notice of copyright be indicated in order to become entitled to copyright protection. It is enough that an original work be created since, under the law, copyright vests from the moment of creation.

Most of our copyright cases enunciate rules with respect to remedies of copyright holders and enforcement of copyright claims. The Supreme Court has ruled in the cases of Columbia Pictures, Inc. vs. Court of Appeals [28 August 1996, 261 SCRA 144] and Columbia Pictures vs. Court of Appeals [20 September 1996, 262 SCRA 219] that the presentation of master tapes is not a sine qua non requirement for the issuance of a search warrant in video piracy cases, provided that there is no doubt as to the true nexus between the master tape and the pirated copies. In the later Columbia Pictures case, it was held that the presentation of the master tapes of the copyrighted films should, at most, be understood to merely serve as a guidepost in determining the existence of probable cause in copyright cases. This further clarified the earlier SC rulings in 20th Century Fox Film Corporation vs. Court of Appeals [19 August 1995, 164 SCRA 655] and Columbia Pictures, Inc. vs. Court of Appeals [06 October 1994, 237 SCRA 367].

The case of Phoenix Publishing House, Inc. vs. Ramos [GR No. L-32339, 29 March 1988] laid down the rule that a copyright holder should not be penalized in litigating his rightful claims by payment of attorney’s fees as part of the damages awarded to the other party if said claims were subsequently dismissed.

There are several cases decided by the Supreme Court concerning the right of foreign trademark and/or copyright holders to cancel a local copyright registration. In the case of United Feature Syndicate vs. Munsingwear Creation Manufacturing Company [GR No. 76193, 09 November 1989], the Court ruled in favor of United Feature Syndicate as the holder of several trademark and copyright registrations in various countries over the mark and image "Charlie Brown", although it does not possess any copyright or trademark registration in the Philippines. The case of Sambar vs. Levi Strauss & Company [GR No. 132604, 06 March 2002] involved the back pocket design of a Levi Strauss denim over which it has a Philippine trademark registration. In Levi’s action to cancel a local copyright registration, the Supreme Court ruled in favor of Levi’s, holding that the locally copyrighted design sought to be cancelled lacks originality since it closely resembles the Levi Strauss trademark. In this case, it was shown that, due to the close resemblance of the back pockets, many ordinary consumers were misled into believing that a denim is a Levi Strauss product when in fact it is not. There is a similar ruling in the case of Wilson Ong Ching Kian Chuan vs. Court of Appeals [GR No. 130360, 15 August 2001] concerning the design of a plastic packaging of vermicelli noodles.

With respect to the subject matter covered by copyright, the cases of Joaquin Jr. vs. Drilon [GR No. 108946, 28 January 1999, 302 SCRA 225] and Kho vs. Court of Appeals [GR No. 115758, 19 March 2002] are relevant and instructive. The Supreme Court, in the Kho case, defined the proper subject of copyright protection, that is, works which are original intellectual creations in the literary and artistic domain, and held that the name and container of a beauty product are not copyrightable, but are proper subjects of trademark. The Court ordered the cancellation of the local copyright registration over the same in the light of a prior foreign trademark registration.

The Joaquin case tackled the issue of whether or not the format of a television show, i.e., a dating game, is a proper subject of copyright. The Supreme Court answered in the negative, finding that under the old law (Presidential Decree 49), a format of a television show is not included in the enumeration of the classes of work entitled to copyright protection. Said enumeration, which is substantially similar to those contained in the present IP Code, refers to finished works and not to concepts. 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 embodied. The Court further ruled that copyright does not extend to the general concept or format of a dating game show. Also, the Court pointed out that although the issue of whether a material is copyrightable or not is a legal question, the Secretary of Justice can make a preliminary determination with respect to such matter.

(The author is an Associate of Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW). He may be contacted at tel. #; 830-8000; Fax # 894-4697; email: [email protected])