United States Supreme Court

BLEISTEIN v. DONALDSON LITHOGRAPHING CO.(1903)

No. 117
Argued: Decided: February 2, 1903
Messrs. Ansley Wilcox and Arthur Von Briesen, and Messrs. Wilcox & Miner for plaintiffs in error.

[188 U.S. 239, 246] Messrs. Edmund W. Kittredge and Joseph Wilby for defendant in error.

[188 U.S. 239, 248]

Mr. Justice Holmes delivered the opinion of the court:

This case comes here from the United States circuit court of appeals for the sixth circuit by writ of error. Act of March 3,
1891 (26 Stat. at L. 828, shap. 517, 6, U. S. Comp. Stat. 1901, pp. 549, 550). It is an action brought by the plaintiffs in error
to recover the penalties prescribed for infringements of copyrights. Rev. Stat. 4952, 4956, 4965 ( U. S. Comp. Stat. 1901,
pp. 3406, 3407, 3414), amended by act of March 3, 1891 (26 Stat. at L. 1109, chap. 565), and act of March 2, 1895 (28
Stat. at L. 965, chap. 194). The alleged infringements consisted in the copying in reduced form of three chromolithographs
prepared by employees of the plaintiffs for advertisements of a circus owned by one Wallace. Each of the three contained
a portrait of Wallace in the corner, and lettering bearing some slight relation to the scheme of decoration, indicating the
subject of the design and the fact that the reality was to be seen at the circus. One of the designs was of an ordinary ballet,
one of a number of men and women, described as the Stirk family, performing on bicycles, and one of groups of men and
women whitened to represent statues. The circuit court directed a verdict for the defendant on the ground that the
chromolithographs were not within the protection of the copyright law, and this ruling was sustained by the circuit court
of appeals. Courier Lithographing Co. v. Donaldson Lithographing Co. 44 C. C. A. 296, 104 Fed. 993.

There was evidence warranting the inference that the designs belonged to the plaintiffs, they having been produced by
persons employed and paid by the plaintiffs in their establishment to make those very things. Gill v. United States, 160
U.S. 426 , [188 U.S. 239, 249] 435, 40 L. ed. 480, 483, 16 Sup. Ct. Rep. 322; Colliery Engineer Co. v. United Correspondence
Schools Co. 94 Fed. 152; Carte v. Evans, 27 Fed. 861. It fairly might be found, also, that the copyrights were taken out in
the proper names. One of them was taken out in the name of the Courier Company and the other two in the name of the
Courier Lithographing Company. The former was the name of an unincorporated joint-stock association formed under the
laws of New York (Laws of 1894, chap. 235), and made up of the plaintiffs, the other a trade variant on that name. Scribner
v. Clark, 50 Fed. 473, 474, 475, S. C., sub nom. Belford, C. & Co. v. Scribner 144 U.S. 488 , 36 L. ed. 514, 12 Sup. Ct. Rep.
734.

Finally, there was evidence that the pietures were copyrighted before publication. There may be a question whether the
use by the defendant for Wallace was not lawful within the terms of the contract with Wallace, or a more general one as
to what rights the plaintiff reserved. But we cannot pass upon these questions as matter of law; they will be for the jury
when the case is tried again, and therefore we come at once to the ground of decision in the courts below. That ground
was not found in any variance between pleading and proof, such as was put forward in argument, but in the nature and
purpose of the designs.

We shall do no more than mention the suggestion that painting and engraving, unless for a mechanical end, are not among
the useful arts, the progress of which Congress is empowered by the Constitution to promote. The Constitution does not
limit the useful to that which satisfies immediate bodily needs. Burrow-Giles Lithographing Co. v. Sarony, 111 U.S. 53 , 28
L. ed. 349, 4 Sup. Ct. Rep. 279. It is obvious also that the plaintiff's case is not affected by the fact, if it be one, that the
pictures represent actual groups,-visible things. They seem from the testimony to have been composed from hints or
description, not from sight of a performance. But even if they had been drawn from the life, that fact would not deprive
them of protection. The opposite proposition would mean that a portrait by Velasquez or Whistler was common property
because others might try their hand on the same face. Others are free to copy the original. They are not free to copy the
copy. Blunt v. Patten, 2 Paise, 397, 400, Fed. Cas. No. 1,580. See Kelly v. [188 U.S. 239, 250] Morris, L. R. 1 Eq. 697; Morris
v. Wright, L. R. 5 Ch. 279. The copy is the personal reaction of an individual upon nature. Personality always contains
something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something
irreducible, which is one man's alone. That something he may copyright unless there is a restriction in the words of the
act.

If there is a restriction it is not to be found in the limited pretensions of these particular works. The least pretentious
picture has more originality in it than directories and the like, which may be copyrighted. Drone, Copyright, 153. See
Henderson v. Tompkins, 60 Fed. 758, 765. The amount of training required for humbler efforts than those before us is well
indicated by Ruskin. 'If any young person, after being taught what is, in polite circles, called 'drawing,' will try to copy the
commonest piece of real work,-suppose a lithograph on the title page of a new opera air, or a woodcut in the cheapest
illustrated newspaper of the day,-they will find themselves entirely beaten.' Elements of Drawing, first ed. 3. There is no
reason to doubt that these prints in their ensemble and in all their details, in their design and particular combinations of
figures, lines, and colors, are the original work of the plaintiffs' designer. If it be necessary, there is express testimony to
that effect. It would be pressing the defendant's right to the verge, if not beyond, to leave the question of originality to
the jury upon the evidence in this case, as was done in Hegeman v. Springer, 49 C. C. A. 86, 110 Fed. 374.

We assume that the construction of Rev. Stat. 4952 (U. S. Comp. Stat. 1901, p. 3406), allowing a copyright to the 'author,
designer, or proprietor . . . of any engraving, cut, print . . . [or] chromo' is affected by the act of 1874 (18 Stat. at L. 78, 79,
chap. 301, 3, U. S. Comp. Stat. 1901, p. 3412). That section provides that, 'in the construction of this act, the words
'engraving,' 'cut,' and 'print' shall be applied only to pictorial illustrations or works connected with the fine arts.' We see
no reason for taking the words 'connected with the fine arts' as qualifying anything except the word 'works,' but it would
not change our decision if we should assume further that they also qualified 'pictorial illustrations,' as the defendant
contends. [188 U.S. 239, 251] These chromolithographs are 'pictorial illustrations.' The word 'illustrations' does not mean
that they must illustrate the text of a book, and that the etchings of Rembrandt or Muller's engraving of the Madonna di
San Sisto could not be protected today if any man were able to produce them. Again, the act, however construed, does
not mean that ordinary posters are not good enough to be considered within its scope. The antithesis to 'illustrations or
works connected with the fine arts' is not works of little merit or of humble degree, or illustrations addressed to the less
educated classes; it is 'prints or labels designed to be used for any other articles of manufacture.' Certainly works are not
the less connected with the fine arts because their pictorial quality attracts the crowd, and therefore gives them a real
use,-if use means to increase trade and to help to make money. A picture is none the less a picture, and none the less a
subject of copyright, that it is used for an advertisement. And if pictures may be used to advertise soap, or the theatre, or
monthly magazines, as they are, they may be used to advertise a circus. Of course, the ballet is as legitimate a subject for
illustration as any other. A rule cannot be laid down that would excommunicate the paintings of Degas.

Finally, the special adaptation of these pictures to the advertisement of the Wallace shows does not prevent a copyright.
That may be a circumstance for the jury to consider in determining the extent of Mr. Wallace's rights, but it is not a bar.
Moreover, on the evidence, such prints are used by less pretentious exhibitions when those for whom they were prepared
have given them up.

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth
of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius
would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new
language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the
paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be
denied to [188 U.S. 239, 252] pictures which appealed to a public less educated than the judge. Yet if they command the
interest of any public, they have a commercial value,-it would be bold to say that they have not an aesthetic and
educational value,- and the taste of any public is not to be treated with contempt. It is an ultimate fact for the moment,
whatever may be our hopes for a change. That these pictures had their worth and their success is sufficiently shown by
the desire to reproduce them without regard to the plaintiffs' rights. See Henderson v. Tompkins, 60 Fed. 758, 765. We
are of opinion that there was evidence that the plaintiffs have rights entitled to the protection of the law.

The judgment of the Circuit Court of Appeals is reversed; the judgment of the Circuit Court is also reversed and the cause
remanded to that court with directions to set aside the verdict and grant a new trial.
Mr. Justice Harlan, dissenting:

Judges Lurton, Day, and Severens, of the circuit court of appeals, concurred in affirming the judgment of the district court.
Their views were thus expressed in an opinion delivered by Judge Lurton: 'What we hold is this: That if a chromo,
lithograph, or other print, engraving, or picture has no other use than that of a mere advertisement, and no value aside
from this function, it would not be promotive of the useful arts, within the meaning of the constitutional provision, to
protect the 'author' in the exclusive use thereof, and the copyright statute should not be construed as including such a
publication, if any other construction is admissible. If a mere label simply designating or describing an article to which it is
attached, and which has no value separated from the article, does not come within the constitutional clause upon the
subject of copyright, it must follow that a pictorial illustration designed and useful only as an advertisement, and having
no intrinsic value other than its function as an advertisement, must be equally without the obvious meaning of the
Constitution. [188 U.S. 239, 253] It must have some connection with the fine arts to give it intrinsic value, and that it shall
have is the meaning which we attach to the act of June 18, 1874 (18 Stat. at L. 78, chap. 301, U. S. Comp. Stat. 1901, p.
3411), amending the provisions of the copyright law. We are unable to discover anything useful or meritorious in the
design copyrighted by the plaintiffs in error other than as an advertisement of acts to be done or exhibited to the public
in Wallace's show. No evidence, aside from the deductions which are to be drawn from the prints themselves, was offered
to show that these designs had any original artistic qualities. The jury could not reasonably have found merit or value aside
from the purely business object of advertising a show, and the instruction to find for the defendant was not error. Many
other points have been urged as justifying the result reached in the court below. We find it unnecessary to express any
opinion upon them, in view of the conclusion already announced. The judgment must be affirmed.' Courier Lithographing
Co. v. Donaldson Lithographing Co. 44 C. C. A. 296, 104 Fed. 993, 996.

I entirely concur in these views, and therefore dissent from the opinion and judgment of this court. The clause of the
Constitution giving Congress power to promote the progress of science and useful arts, by securing for limited terms to
authors and inventors the exclusive right to their respective works and discoveries, does not, as I think, embrace a mere
advertisement of a circus.
G.R. No. L-11937 April 1, 1918
PEDRO SERRANO LAKTAW, plaintiff-appellant,
vs.
MAMERTO PAGLINAWAN, defendant-appellee.
Perfecto Gabriel for appellant.
Felix Ferrer and Crossfield and O'Brien for appellee.
ARAULLO, J.:
In the complaint presented in the Court of First Instance of the City of Manila on February 20, 1915, it was alleged: (1)
That the plaintiff was, according to the laws regulating literary properties, the registered owner and author of a literary
work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the
printing establishment La Opinion, and a copy of which was attached to the complaint, as Exhibit A; (2) that the defendant,
without the consent of the plaintiff, reproduced said literary work, improperly copied the greater part thereof in the work
published by him and entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), a copy of which was also
attached to the complaint as Exhibit B; (3) that said act of the defendant, which is a violation of article 7 of the Law of
January 10, 1879, on Intellectual Property, caused irreparable injuries to the plaintiff, who was surprised when, on
publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact, and (4)
that the damages occasioned to the plaintiff by the publication of defendant's work amounted to $10,000. The plaintiff
therefore prayed the court to order the defendant to withdraw from sale all stock of the work herein identified as Exhibit
B and to pay the plaintiff the sum of $10,000, with costs.
The defendant in his answer denied generally each and every allegation of the complaint and prayed the court to absolve
him from the complaint. After trial and the introduction of evidence by both parties, the court on August 20, 1915,
rendered judgment, absolving the defendant from the complaint, but without making any special pronouncement as to
costs. The plaintiff moved for a new trial on the ground that the judgment was against the law and the weight of the
evidence. Said 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 Property.
Said article provides:
Nobody may reproduce another person's work without the owner's consent, even merely to annotate or add anything to
it, or improve any edition thereof.
Therefore, in order that said article may be violated, it is not necessary, as the court below seems to have understood,
that a work should be an improper copy of another work previously published. It is enough that another's work has been
reproduced without the consent of the owner, even though it be only to annotate, add something to it, or improve any
edition thereof.
Upon making a careful and minute comparison of Exhibit A, the dictionary written and published by the plaintiff, and
Exhibit B, written and published by the defendant, and, taking into account the memorandum (fols. 55 to 59) presented
by the defendant, in which he enumerates the words and terms which, according to him, are in his dictionary but not in
that of that of the plaintiff, and viceversa, and the equivalents or definitions given by the plaintiff, as well as the new
Tagalog words which are in the dictionary of the defendant but not in that of the plaintiff; and considering the notes,
Exhibit C, first series, presented by the plaintiff, in which the terms copied by the defendant from the plaintiff's dictionary
are enumerated in detail and in relation to each letter of the alphabet and which the plaintiff's own words and terms are
set forth, with a summary, at the foot of each group of letters, which shows the number of initial Spanish words contained
in the defendant's dictionary, the words that are his own and the fact that the remaining ones are truly copied from the
plaintiff's dictionary — considering all of these facts, we come to a conclusion completely different and contrary to that
of the trial court, for said evidence clearly shows:
1. That, of the Spanish words in the defendant's dictionary, Exhibit B, which correspond to each letter of the alphabet,
those that are enumerated below have been copied and reproduced from the plaintiff's dictionary, with the exception of
those that are stated to be defendant's own.
Letter Words Defendant's
own
"A" 1,184 231
"B" 364 28
"C" 660 261
"CH" 76 10
"D" 874 231
"E" 880 301
"F" 383 152
"G" 302 111
"H" 57 64
"I" 814 328
"J" 113 25
"K" 11 11
"L" 502 94
"LL" 36 2
"M" 994 225
"N" 259 53
"Ñ" 6 2
"O" 317 67
"P" 803 358
"Q" 84 11
"R" 847 140
"S" 746 118
"T" 591 147
"U" 107 15
"V" 342 96
"X" 6 6
"Y" 24 4
"Z" 73 17
______ _____
23,560 3,108
Therefore, of the 23,560 Spanish words in the defendant's dictionary, after deducting 17 words corresponding to the
letters K and X (for the plaintiff has no words corresponding to them), only 3,108 words are the defendant's own, or, what
is the same thing, the defendant has added only this number of words to those that are in the plaintiff's dictionary, he
having reproduced or copied the remaining 20,452 words.
2. That the defendant also literally reproduced and copied for the Spanish words in his dictionary, the equivalents,
definitions and different meanings in Tagalog, given in plaintiff's dictionary, having reproduced, as to some words,
everything that appears in the plaintiff's dictionary for similar Spanish words, although as to some he made some additions
of his own. Said copies and reproductions are numerous as may be seen, by comparing both dictionaries and using as a
guide or index the defendant's memorandum and notes, first series, Exhibit C, in which, as to each word, the similarities
and differences between them are set forth in detail.
3. That the printer's errors in the plaintiff's dictionary as to the expression of some words in Spanish as well as their
equivalents in Tagalog are also reproduced, a fact which shows that the defendant, in preparing his dictionary, literally
copied those Spanish words and their meanings and equivalents in Tagalog from the plaintiff's dictionary.
The trial court has chosen at random, as is stated in the judgment appealed from, some words from said dictionaries in
making the comparison on which its conclusion is based, and consequently the conclusion reached by it must be inaccurate
and not well founded, because said comparison was not complete.
In said judgment some words of the defendant's dictionary are transcribed, the equivalents and meanings of which in
Tagalog are exactly the same as those that are given in the plaintiff's dictionary, with the exception, as to some of them,
of only one acceptation, which is the defendant's own production. And with respect to the examples used by the
defendant in his dictionary, which, according to the judgment, are not copied from the plaintiff's — the judgment referring
to the preposition a (to), in Tagalog sa — it must be noted that the defendant, in giving in his dictionary an example of
said preposition, uses the expression "voy a Tayabas" (I am going to Tayabas) instead of "voy aBulacan" (I am going to
Bulacan), as the plaintiff does in his dictionary, or what is the same thing, that one speaks of Bulacan while the other
speaks of Tayabas. This does not show 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 the example referred to, with respect to the
preposition a (to), that dissimilarity as to the province designated seems to effect the same purpose.
In the judgment appealed from, the court gives one to understand that the reproduction of another's dictionary without
the owner's consent does not constitute a violation of the Law of Intellectual Property for the court's idea of a dictionary
is stated in the decision itself, as follows:
Dictionaries have to be made with the aid of others, and they are improved by the increase of words. What may be said
of a pasture ground may be said also of a dictionary, i. e., that it should be common property for all who may desire to
write a new dictionary, and the defendant has come to this pasture ground and taken whatever he needed from it in the
exercise of a perfect right.
Such idea is very erroneous, especially in relation to the Law of Intellectual Property. Danvilla y Collado the author of the
Law of January 10, 1879, on Intellectual Property, which was discussed and approved in the Spanish Cortes, in his work
entitled La Propiedad Intelectual (page 362, 1st ed.) states with respect to dictionaries and in relation to article 7 of said
law:
The protection of the law cannot be denied to the author of a dictionary, for although words are not the property of
anybody, their definitions, the example that explain their sense, and the manner of expressing their different meanings,
may constitute a special work. On this point, the correctional court of the Seine held, on August 16, 1864, that a dictionary
constitutes property, although some of the words therein are explained by mere definitions expressed in a few lines and
sanctioned by usage, provided that the greater part of the other words contain new meanings; new meanings which
evidently may only belonged to the first person who published them.
Therefore, the plaintiff, Pedro Serrano, cannot be denied the legal protection which he seeks, and which is based on the
fact that the dictionary published by him in 1889 is his property — said property right being recognized and having been
granted by article 7, in connection with article 2, of said law — and on the further fact that said work was reproduced by
the defendant without his permission.
This law was published in the Gaceta de Madrid on January 12, 1879. It took effect in these Islands six months after its
promulgation or publication, as provided in article 56 thereof. The body of rules for the execution of said law having been
approved by royal decree of September 3, 1880, and published in the Gaceta de Madrid on September 6, 1880 and
extended to the Philippine Islands by royal decree of May 5, 1887, it was in turn published in the Gaceta de Manila, with
the approval of the Governor-General of the Islands, on June 15, 1887. Said law of January 10, 1879, and the rules for its
application, were therefore in force in these Islands when the plaintiff's dictionary was edited and published in 1889.
It appears from the evidence that although the plaintiff did not introduce at the trial the certificate of registration of his
property rights to said work which, according to said rules, was kept in the Central Government of these Islands, and was
issued to him in 1890, the same having been lost during the revolution against Spain, and no trace relative to the issuance
of said certificate being obtainable in the Division of Archives of the Executive Bureau on account of the loss of the
corresponding records, yet as in the first page of said dictionary the property right of the plaintiff was reserved by means
of the words "Es propiedad del autor" (All rights reserved), taken in connection with the permission granted him by the
Governor-General on November 24, 1889, to print and publish said dictionary, after an examination thereof by the
permanent committee of censors, which examination was made, and the necessary license granted to him, these facts
constitute sufficient proof, under the circumstances of the case, as they have not been overcome by any evidence on the
part of the defendant, showing that said plaintiff did not comply with the requirements of article 36 of said law, which
was the prerequisite to the enjoyment of the benefits thereof according to the preceding articles, among which is article
7, which is alleged in the complaint to have been violated by the defendant.
Even considering that said Law of January 10, 1879, ceased to operate in these Islands, upon the termination of Spanish
sovereignty and the substitution thereof by that of the United States of America, the right of the plaintiff to invoke said
law in support of the action instituted by him in the present case cannot be disputed. His property right to the
work Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary), published by him and edited in 1889, is recognized and
sanctioned by said law, and by virtue thereof, he had acquired a right of which he cannot be deprived merely because the
law is not in force now or is of no actual application. This conclusion is necessary to protect intellectual property rights
vested after the sovereignty of Spain was superseded by that of the United States. It was so held superseded by that of
the United States. It was so held in the Treaty of Paris of December 10, 1898, between Spain and the United States, when
it declared in article 13 thereof that the rights to literary, artistic, and industrial properties acquired by the subject of Spain
in the Island of Cuba and in Puerto Rico and the Philippines and other ceded territories, at the time of the exchange of the
ratification of said Treaty, shall continue to be respect.
In addition to what has been said, according to article 428 of the Civil Code, the author of a literary, scientific, or artistic
work, has the right to exploit it and dispose thereof at will. In relation to this right, there exists the exclusive right of the
author, who is the absolute owner of his own work, to produce it, according to article 2 of the Law of January 10, 1879,
and consequently, nobody may reproduce it, without his permission, not even to annotate or add something to it, or to
improve any edition thereof, according to article 7 of said law. Manresa, in his commentaries on article 429 of the Civil
Code (vol. 3, p. 633, 3d ed.) says that the concrete statement of the right to literary properties is found in the legal doctrine
according to which nobody may reproduce another person's work, without the consent of his owner, or even to annotate
or add something to it or to improve any edition thereof. And on page 616 of said volume, Manresa says the following:
He who writes a book, or carves a statue, or makes an invention, has the absolute right to reproduce or sell it, just as the
owner of land has the absolute right to sell it or its fruits. But while the owner of land, by selling it and its fruits, perhaps
fully realizes all its economic value, by receiving its benefits and utilities, which are presented, for example, by the price,
on the other hand the author of a book, statue or invention, does not reap all the benefits and advantages of his own
property by disposing of it, for the most important form of realizing the economic advantages of a book, statue or
invention, consists in the 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 cannot be denied that the reproduction of the plaintiff's book by the defendant has caused
damages to the former, but the amount thereof has not been determined at the trial, for the statement of the plaintiff as
to the proceeds he would have realized if he had printed in 1913 the number of copies of his work which he stated in his
declaration — a fact which he did not do because the defendant had reproduced it — was not corroborated in any way at
the trial and is based upon mere calculations made by the plaintiff himself; for which reason no pronouncement can be
made in this decision as to the indemnification for damages which the plaintiff seeks to recover.
The plaintiff having prayed, not for a permanent injunction against the defendant, as the plaintiff himself in his brief
erroneously states, but for a judgment ordering the defendant to withdraw from sale all stock of his work Diccionariong
Kastila-Tagalog (Spanish-Tagalog Dictionary), of which Exhibit B is a copy, and the suit instituted by said plaintiff being
proper, we reverse the judgment appealed from and order the defendant to withdraw from sale, as prayed for in the
complaint, all stock of his work above-mentioned, and to pay the costs of first instance. We make no special
pronouncement as to the costs of this instance. So ordered.
BRANDIR INTERNATIONAL, INC., Plaintiff-Appellant,
v.
CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co., Defendant-Appellee, and
David L. Ladd, Register of Copyrights, United States Copyright Office, Third-Party Defendant.
No. 828, Docket 86-6260.

United States Court of Appeals, Second Circuit.

Argued March 2, 1987.

Decided December 2, 1987.

Blum Kaplan, New York City (Lawrence Rosenthal, Laura E. Goldbard, Anita K. Yeung, New York City, of counsel), for
plaintiff-appellant.

Fish & Neave, New York City (Donald E. Degling, Susan Progoff, Eric M. Lee, New York City, of counsel), for defendant-
appellee.

Before OAKES and WINTER, Circuit Judges, and ZAMPANO, District Judge.[1]

OAKES, Circuit Judge:

In passing the Copyright Act of 1976 Congress attempted to distinguish between [1143] protectable "works of applied art"
and "industrial designs not subject to copyright protection." See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in
1976 U.S.Code Cong. & Admin.News 5659, 5667 (hereinafter H.R.Rep. No. 1476). The courts, however, have had difficulty
framing tests by which the fine line establishing what is and what is not copyrightable can be drawn. Once again we are
called upon to draw such a line, this time in a case involving the "RIBBON Rack," a bicycle rack made of bent tubing that is
said to have originated from a wire sculpture. (A photograph of the rack is contained in the appendix to this opinion.) We
are also called upon to determine whether there is any trademark protection available to the manufacturer of the bicycle
rack, appellant Brandir International, Inc. The Register of Copyright, named as a third-party defendant under the statute,
17 U.S.C. § 411, but electing not to appear, denied copyrightability. In the subsequent suit brought in the United States
District Court for the Southern District of New York, Charles S. Haight, Jr., Judge, the district court granted summary
judgment on both the copyright and trademark claims to defendant Cascade Pacific Lumber Co., d/b/a Columbia Cascade
Co., manufacturer of a similar bicycle rack. We affirm as to the copyright claim, but reverse and remand as to the
trademark claim.

Against the history of copyright protection well set out in the majority opinion in Carol Barnhart Inc. v. Economy Cover
Corp., 773 F.2d 411, 415-18 (2d Cir.1985), and in Denicola, Applied Art and Industrial Design: A Suggested Approach to
Copyright in Useful Articles, 67 Minn.L.Rev. 707, 709-17 (1983), Congress adopted the Copyright Act of 1976. The "works
of art" classification of the Copyright Act of 1909 was omitted and replaced by reference to "pictorial, graphic, and
sculptural works," 17 U.S.C. § 102(a)(5). According to the House Report, the new category was intended to supply "as clear
a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design." H.R.Rep. No.
1476, at 55, U.S.Code Cong. & Admin.News 1976, p. 5668. The statutory definition of "pictorial, graphic, and sculptural
works" states that "the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or
sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that
can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17
U.S.C. § 101.[2] The legislative history added gloss on the criteria of separate identity and independent existence in saying:

On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the
Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane,
ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or
conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted
under the bill.

H.R.Rep. No. 1476, at 55, U.S.Code Cong. & Admin.News 1976, p. 5668.
As courts and commentators have come to realize, however, the line Congress attempted to draw between copyrightable
art and noncopyrightable design "was neither clear nor new." Denicola, supra, 67 Minn.L.Rev. at 720. One aspect of the
distinction that has drawn considerable attention is the reference in the House Report to "physically or conceptually"
(emphasis added) separable elements. The District of Columbia Circuit in Esquire, Inc. v. Ringer, 591 F.2d 796, 803-04
(D.C.Cir.1978) (holding outdoor lighting fixtures ineligible for copyright), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59
L.Ed.2d 456 (1979), called this an "isolated reference" and gave it no significance. Professor Nimmer, however, [1144]
seemed to favor the observations of Judge Harold Leventhal in his concurrence in Esquire, who stated that "the overall
legislative policy ... sustains the Copyright Office in its effort to distinguish between the instances where the aesthetic
element is conceptually severable and the instances where the aesthetic element is inextricably interwoven with the
utilitarian aspect of the article." 591 F.2d at 807; see 1 Nimmer on Copyright § 2.08[B] at 2-93 to 2-96.2 (1986). But see
Gerber, Book Review, 26 U.C.L.A.L.Rev. 925, 938-43 (1979) (criticizing Professor Nimmer's view on conceptual
separability). Looking to the section 101 definition of works of artistic craftsmanship requiring that artistic features be
"capable of existing independently of the utilitarian aspects," Professor Nimmer queries whether that requires physical as
distinguished from conceptual separability, but answers his query by saying "[t]here is reason to conclude that it does
not." See 1 Nimmer on Copyright § 2.08[B] at 2-96.1. In any event, in Kieselstein-Cord v. Accessories by Pearl, Inc., 632
F.2d 989, 993 (2d Cir.1980), this court accepted the idea that copyrightability can adhere in the "conceptual" separation
of an artistic element. Indeed, the court went on to find such conceptual separation in reference to ornate belt buckles
that could be and were worn separately as jewelry. Kieselstein-Cord was followed in Norris Industries, Inc. v. International
Telephone & Telegraph Corp., 696 F.2d 918, 923-24 (11th Cir.), cert. denied, 464 U.S. 818, 104 S.Ct. 78, 78 L.Ed.2d 89
(1983), although there the court upheld the Register's refusal to register automobile wire wheel covers, finding no
"conceptually separable" work of art. See also Transworld Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95 (D.Del.1982)
(finding conceptual separability sufficient to support copyright in denying summary judgment on copyrightability of
eyeglass display cases).

In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), a divided panel of this circuit affirmed a district
court grant of summary judgment of noncopyrightability of four life-sized, anatomically correct human torso forms. Carol
Barnhart distinguished Kieselstein-Cord, but it surely did not overrule it. The distinction made was that the ornamented
surfaces of the Kieselstein-Cord belt buckles "were not in any respect required by their utilitarian functions," but the
features claimed to be aesthetic or artistic in the Carol Barnhart forms were "inextricably intertwined with the utilitarian
feature, the display of clothes." 773 F.2d at 419. But cf. Animal Fair, Inc. v. Amfesco Indus., Inc., 620 F.Supp. 175, 186-88
(D.Minn.1985) (holding bear-paw design conceptually separable from the utilitarian features of a slipper), aff'd mem., 794
F.2d 678 (8th Cir.1986). As Judge Newman's dissent made clear, the Carol Barnhart majority did not dispute "that
`conceptual separability' is distinct from `physical separability' and, when present, entitles the creator of a useful article
to a copyright on its design." 773 F.2d at 420.

"Conceptual separability" is thus alive and well, at least in this circuit. The problem, however, is determining exactly what
it is and how it is to be applied. Judge Newman's illuminating discussion in dissent in Carol Barnhart, see 773 F.2d at 419-
24, proposed a test that aesthetic features are conceptually separable if "the article ... stimulate[s] in the mind of the
beholder a concept that is separate from the concept evoked by its utilitarian function." Id. at 422. This approach has
received favorable endorsement by at least one commentator, W. Patry, Latman's The Copyright Law 43-45 (6th ed. 1986),
who calls Judge Newman's test the "temporal displacement" test. It is to be distinguished from other possible ways in
which conceptual separability can be tested, including whether the primary use is as a utilitarian article as opposed to an
artistic work, whether the aesthetic aspects of the work can be said to be "primary," and whether the article is marketable
as art, none of which is very satisfactory. But Judge Newman's test was rejected outright by the majority as "a standard
so ethereal as to amount to a `nontest' that would be extremely difficult, if not impossible, to administer or apply." 773
F.2d at 419 n. 5.

[1145] Perhaps the differences between the majority and the dissent in Carol Barnhart might have been resolved had they
had before them the Denicola article on Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful
Articles, supra. There, Professor Denicola points out that although the Copyright Act of 1976 was an effort "`to draw as
clear a line as possible,'" in truth "there is no line, but merely a spectrum of forms and shapes responsive in varying degrees
to utilitarian concerns." 67 Minn.L.Rev. at 741. Denicola argues that "the statutory directive requires a distinction between
works of industrial design and works whose origins lie outside the design process, despite the utilitarian environment in
which they appear." He views the statutory limitation of copyrightability as "an attempt to identify elements whose form
and appearance reflect the unconstrained perspective of the artist," such features not being the product of industrial
design. Id. at 742. "Copyrightability, therefore, should turn on the relationship between the proffered work and the
process of industrial design." Id. at 741. He suggests that "the dominant characteristic of industrial design is the influence
of nonaesthetic, utilitarian concerns" and hence concludes that copyrightability "ultimately should depend on the extent
to which the work reflects artistic expression uninhibited by functional considerations."[3] Id. To state the Denicola test
in the language of conceptual separability, if design elements reflect a merger of aesthetic and functional considerations,
the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where
design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional
influences, conceptual separability exists.

We believe that Professor Denicola's approach provides the best test for conceptual separability and, accordingly, adopt
it here for several reasons. First, the approach is consistent with the holdings of our previous cases. In Kieselstein-Cord,
for example, the artistic aspects of the belt buckles reflected purely aesthetic choices, independent of the buckles'
function, while in Carol Barnhart the distinctive features of the torsos — the accurate anatomical design and the sculpted
shirts and collars — showed clearly the influence of functional concerns. Though the torsos bore artistic features, it was
evident that the designer incorporated those features to further the usefulness of the torsos as mannequins. Second, the
test's emphasis on the influence of utilitarian concerns in the design process may help, as Denicola notes, to "alleviate the
de facto discrimination against nonrepresentational art that has regrettably accompanied much of the current analysis."
Id. at 745.[4] Finally, and perhaps most importantly, we think Denicola's test will not be too difficult to administer in
practice. The work itself will continue to give "mute testimony" of its origins. In addition, the parties will be required to
present evidence relating to the design process and the nature of the work, with the trier of fact making the determination
[1146] whether the aesthetic design elements are significantly influenced by functional considerations.

Turning now to the facts of this case, we note first that Brandir contends, and its chief owner David Levine testified, that
the original design of the RIBBON Rack stemmed from wire sculptures that Levine had created, each formed from one
continuous undulating piece of wire. These sculptures were, he said, created and displayed in his home as a means of
personal expression, but apparently were never sold or displayed elsewhere. He also created a wire sculpture in the shape
of a bicycle and states that he did not give any thought to the utilitarian application of any of his sculptures until he
accidentally juxtaposed the bicycle sculpture with one of the self-standing wire sculptures. It was not until November 1978
that Levine seriously began pursuing the utilitarian application of his sculptures, when a friend, G. Duff Bailey, a bicycle
buff and author of numerous articles about urban cycling, was at Levine's home and informed him that the sculptures
would make excellent bicycle racks, permitting bicycles to be parked under the overloops as well as on top of the
underloops. Following this meeting, Levine met several times with Bailey and others, completing the designs for the
RIBBON Rack by the use of a vacuum cleaner hose, and submitting his drawings to a fabricator complete with dimensions.
The Brandir RIBBON Rack began being nationally advertised and promoted for sale in September 1979.

In November 1982 Levine discovered that another company, Cascade Pacific Lumber Co., was selling a similar product.
Thereafter, beginning in December 1982, a copyright notice was placed on all RIBBON Racks before shipment and on
December 10, 1982, five copyright applications for registration were submitted to the Copyright Office. The Copyright
Office refused registration by letter, stating that the RIBBON Rack did not contain any element that was "capable of
independent existence as a copyrightable pictorial, graphic or sculptural work apart from the shape of the useful article."
An appeal to the Copyright Office was denied by letter dated March 23, 1983, refusing registration on the above ground
and alternatively on the ground that the design lacked originality, consisting of "nothing more than a familiar public
domain symbol." In February 1984, after the denial of the second appeal of the examiner's decision, Brandir sent letters
to customers enclosing copyright notices to be placed on racks sold prior to December 1982.

Between September 1979 and August 1982 Brandir spent some $38,500 for advertising and promoting the RIBBON Rack,
including some 85,000 pieces of promotional literature to architects and landscape architects. Additionally, since October
1982 Brandir has spent some $66,000, including full-, half-, and quarter-page advertisements in architectural magazines
such as Landscape Architecture, Progressive Architecture, and Architectural Record, indeed winning an advertising award
from Progressive Architecture in January 1983. The RIBBON Rack has been featured in Popular Science, Art and
Architecture, and Design 384 magazines, and it won an Industrial Designers Society of America design award in the spring
of 1980. In the spring of 1984 the RIBBON Rack was selected from 200 designs to be included among 77 of the designs
exhibited at the Katonah Gallery in an exhibition entitled "The Product of Design: An Exploration of the Industrial Design
Process," an exhibition that was written up in the New York Times.

Sales of the RIBBON Rack from September 1979 through January 1985 were in excess of $1,367,000. Prior to the time
Cascade Pacific began offering for sale its bicycle rack in August 1982, Brandir's sales were $436,000. The price of the
RIBBON Rack ranges from $395 up to $2,025 for a stainless steel model and generally depends on the size of the rack, one
of the most popular being the RB-7, selling for $485.

Applying Professor Denicola's test to the RIBBON Rack, we find that the rack is not copyrightable. It seems clear that [1147]
the form of the rack is influenced in significant measure by utilitarian concerns and thus any aesthetic elements cannot
be said to be conceptually separable from the utilitarian elements. This is true even though the sculptures which inspired
the RIBBON Rack may well have been — the issue of originality aside — copyrightable.

Brandir argues correctly that a copyrighted work of art does not lose its protected status merely because it subsequently
is put to a functional use. The Supreme Court so held in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), and
Congress specifically intended to accept and codify Mazer in section 101 of the Copyright Act of 1976. See H.R.Rep. No.
1476 at 54-55. The district court thus erred in ruling that, whatever the RIBBON Rack's origins, Brandir's commercialization
of the rack disposed of the issue of its copyrightability.

Had Brandir merely adopted one of the existing sculptures as a bicycle rack, neither the application to a utilitarian end nor
commercialization of that use would have caused the object to forfeit its copyrighted status. Comparison of the RIBBON
Rack with the earlier sculptures, however, reveals that while the rack may have been derived in part from one of more
"works of art," it is in its final form essentially a product of industrial design. In creating the RIBBON Rack, the designer has
clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose. These altered design
features of the RIBBON Rack, including the spacesaving, open design achieved by widening the upper loops to permit
parking under as well as over the rack's curves, the straightened vertical elements that allow in- and above-ground
installation of the rack, the ability to fit all types of bicycles and mopeds, and the heavy-gauged tubular construction of
rustproof galvanized steel, are all features that combine to make for a safe, secure, and maintenance-free system of
parking bicycles and mopeds. Its undulating shape is said in Progressive Architecture, January 1982, to permit double the
storage of conventional bicycle racks. Moreover, the rack is manufactured from 2 3/8-inch standard steam pipe that is
bent into form, the six-inch radius of the bends evidently resulting from bending the pipe according to a standard formula
that yields bends having a radius equal to three times the nominal internal diameter of the pipe.

Brandir argues that its RIBBON Rack can and should be characterized as a sculptural work of art within the minimalist art
movement. Minimalist sculpture's most outstanding feature is said to be its clarity and simplicity, in that it often takes the
form of geometric shapes, lines, and forms that are pure and free of ornamentation and void of association. As Brandir's
expert put it, "The meaning is to be found in, within, around and outside the work of art, allowing the artistic sensation to
be experienced as well as intellectualized." People who use Foley Square in New York City see in the form of minimalist
art the "Tilted Arc," which is on the plaza at 26 Federal Plaza. Numerous museums have had exhibitions of such art, and
the school of minimalist art has many admirers.

It is unnecessary to determine whether to the art world the RIBBON Rack properly would be considered an example of
minimalist sculpture. The result under the copyright statute is not changed. Using the test we have adopted, it is not
enough that, to paraphrase Judge Newman, the rack may stimulate in the mind of the reasonable observer a concept
separate from the bicycle rack concept. While the RIBBON Rack may be worthy of admiration for its aesthetic qualities
alone, it remains nonetheless the product of industrial design. Form and function are inextricably intertwined in the rack,
its ultimate design being as much the result of utilitarian pressures as aesthetic choices. Indeed, the visually pleasing
proportions and symmetricality of the rack represent design changes made in response to functional concerns. Judging
from the awards the rack has received, it would seem in fact that Brandir has achieved with the RIBBON Rack the highest
goal of modern industrial design, that is, the harmonious fusion of function and aesthetics. Thus there remains no artistic
element of the RIBBON [1148] Rack that can be identified as separate and "capable of existing independently, of, the
utilitarian aspects of the article." Accordingly, we must affirm on the copyright claim.

As to whether the configuration of Brandir's bicycle rack can be protected under either section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), or New York State unfair competition law, we are reminded that the design of a product itself may
function as its packaging or protectable trade dress. See LeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 75 (2d Cir.1985).
The district court dismissed Brandir's claims, saying that its analysis of the copyright issue was sufficient to dispose of the
Lanham Act and common law claims. The court stated "the design feature of the Ribbon Racks is clearly dictated by the
function to be performed, namely, holding up bicycles. If the steam pipes were not bent into the design, but instead
remained flat, the bicycles would not stand up, they would fall down." But as Judge Newman noted in his dissent in Carol
Barnhart, 773 F.2d at 420 n. 1, the principle of conceptual separability of functional design elements in copyright law is
different from the somewhat similar principle of functionality as developed in trademark law. For trademark purposes, he
pointed out, a design feature "has been said to be functional if it is `essential to the use or purpose of the article' or `affects
the cost or quality of the article.'" Id. (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10,
102 S.Ct. 2182, 2187 n. 10, 72 L.Ed.2d 606 (1982)); see LeSportsac, Inc. v. K mart Corp., 754 F.2d at 75-76 (trade dress of a
product is eligible for protection if it has acquired a secondary meaning and is nonfunctional).[5]

Here, the district court limited its inquiry to determining whether portions of the RIBBON Rack performed the function of
a bicycle rack. But the fact that a design feature performs a function does not make it essential to the performance of that
function; it is instead the absence of alternative constructions performing the same function that renders the feature
functional. Thus, the true test of functionality is not whether the feature in question performs a function, but whether the
feature "is dictated by the functions to be performed," Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327, 331 (2d Cir.1983)
(quoted in LeSportsac, Inc. v. K mart Corp., 754 F.2d at 76), as evidenced by available alternative constructions. See Metro
Kane Imports, Ltd. v. Rowoco, Inc., 618 F.Supp. 273, 275-76 (S.D.N.Y.1985), aff'd mem., 800 F.2d 1128 (2d Cir.1986) (finding
high-tech design of orange juice squeezer not dictated by function to be performed as there was no evidence that design
permitted juicer to be manufactured at lower price or with altered performance). There are numerous alternative bicycle
rack constructions. The nature, price, and utility of these constructions are material issues of fact not suitable for
determination by summary judgment.[6] For example, while it is true that the materials used by Brandir are standard-size
pipes, we have no way of knowing whether the particular size and weight of the pipes used is the best, the most
economical, or the only available size and weight pipe in the marketplace. We would rather think the opposite might be
the case. So, too, with the dimension of the bends being dictated by a standard formula corresponding to the pipe size; it
could be that there are many standard radii and that the particular radius of Brandir's RIBBON Rack actually required new
tooling. This issue of functionality on remand should be viewed in terms of bicycle racks generally and not one-piece
undulating bicycle racks specifically. See id. at 330-32; see also In re DC Comics, Inc., 689 F.2d 1042, 1045 (C.C.P.A.1982)
(dolls generally and not Superman dolls are the class by [1149] which functionality is determined). We reverse and remand
as to the trademark and unfair competition claims.

Judgment affirmed as to the copyright claim; reversed and remanded as to the trademark and unfair competition claims.

APPENDIX

[1150] APPENDIX

WINTER, Circuit Judge, concurring in part and dissenting in part:

Although I concur in the reversal of the district court's grant of summary judgment on the trademark and unfair
competition claims, I respectfully dissent from the majority's discussion and disposition of the copyright claim.

My colleagues, applying an adaptation of Professor Denicola's test, hold that the aesthetic elements of the design of a
useful article are not conceptually separable from [1151] its utilitarian aspects if "[f]orm and function are inextricably
intertwined" in the article, and "its ultimate design [is] as much the result of utilitarian pressures as aesthetic choices."
Applying that test to the instant matter, they observe that the dispositive fact is that "in creating the Ribbon Rack, [Levine]
has clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose." (emphasis added).
The grounds of my disagreement are that: (1) my colleagues' adaptation of Professor Denicola's test diminishes the
statutory concept of "conceptual separability" to the vanishing point; and (2) their focus on the process or sequence
followed by the particular designer makes copyright protection depend upon largely fortuitous circumstances concerning
the creation of the design in issue.

With regard to "conceptual separability," my colleagues deserve considerable credit for their efforts to reconcile Carol
Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985) with Kieselstein-Cord v. Accessories by Pearl, Inc., 632
F.2d 989 (2d Cir.1980). In my view, these cases are not reconcilable. Carol Barnhart paid only lip service to the fact that
the "conceptual separability" of an article's aesthetic utilitarian aspects may render the design of a "useful article" a
copyrightable "sculptural work." 17 U.S.C. § 101 (1982). Actually, the Carol Barnhart majority applied a test of physical
separability. They thus stated:

What distinguishes [the Kieselstein Cord] buckles from the Barnhart forms is that the ornamented surfaces of the buckles
were not in any respect required by their utilitarian functions; the artistic and aesthetic features could thus be conceived
of as having been added to, or superimposed upon, an otherwise utilitarian article. The unique artistic design was wholly
unnecessary to performance of the utilitarian function. In the case of the Barnhart forms, on the other hand, the features
claimed to be aesthetic or artistic, e.g., the life-size configuration of the breasts and the width of the shoulders are
inextricably intertwined with the utilitarian feature, the display of clothes.

773 F.2d at 419 (emphasis added). In contrast, Kieselstein-Cord focused on the fact that the belt buckles at issue could be
perceived as objects other than belt buckles:

We see in appellant's belt buckles conceptually separable sculptural elements, as apparently have the buckles' wearers
who have used them as ornamentation for parts of the body other than the waist.

632 F.2d at 993.

My colleagues' adaptation of the Denicola test tracks the Carol Barnhart approach, whereas I would adopt that taken in
Kieselstein-Cord, which allows for the copyrightability of the aesthetic elements of useful articles even if those elements
simultaneously perform utilitarian functions.[7] The latter approach received its fullest elaboration in Judge Newman's
dissent in Carol Barnhart, where he explained that "[f]or the [artistic] design features to be `conceptually separate' from
the utilitarian aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder
a concept that is separate from the concept evoked by its utilitarian function." 773 F.2d at 422 (Newman, J., dissenting).

In other words, the relevant question is whether the design of a useful article, however intertwined with the article's
utilitarian aspects, causes an ordinary reasonable observer to perceive an aesthetic concept not related to the article's
use. The answer to this question is clear in the instant case because any reasonable observer would easily view the Ribbon
Rack as an [1152] ornamental sculpture.[8] Indeed, there is evidence of actual confusion over whether it is strictly
ornamental in the refusal of a building manager to accept delivery until assured by the buyer that the Ribbon Rack was in
fact a bicycle rack. Moreover, Brandir has received a request to use the Ribbon Rack as environmental sculpture, and has
offered testimony of art experts who claim that the Ribbon Rack may be valued solely for its artistic features. As one of
those experts observed: "If one were to place a Ribbon Rack on an island without access, or in a park and surround the
work with a barrier, ... its status as a work of art would be beyond dispute."[9]

My colleagues also allow too much to turn upon the process or sequence of design followed by the designer of the Ribbon
Rack. They thus suggest that copyright protection would have been accorded "had Brandir merely adopted ... as a bicycle
rack" an enlarged version of one of David Levine's original sculptures rather than one that had wider upper loops and
straightened vertical elements. I cannot agree that copyright protection for the Ribbon Rack turns on whether Levine
serendipitously chose the final design of the Ribbon Rack during his initial sculptural musings or whether the original
design had to be slightly modified to accommodate bicycles. Copyright protection, which is intended to generate
incentives for designers by according property rights in their creations, should not turn on purely fortuitous events. For
that reason, the Copyright Act expressly states that the legal test is how the final article is perceived, not how it was
developed through various stages. It thus states in pertinent part:

the design of a useful article ... shall be considered a ... sculptural work only if, and only to the extent that, such design
incorporates ... sculptural features that can be identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article.

17 U.S.C. § 101 (1982) (emphasis added).

I therefore dissent from the decision so far as it relates to copyrightability but concur in its discussion and holding as to
the trademark and unfair competition claims.

[1] Of the United States District Court for the District of Connecticut, sitting by designation.

[2] The statute also defines "useful article" as one "having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information. An article that is normally a part of a useful article is considered a
`useful article.'" 17 U.S.C. § 101.

[3] Professor Denicola rejects the exclusion of all works created with some utilitarian application in view, for that would
not only overturn Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), on which much of the legislation is based,
but also "a host of other eminently sensible decisions, in favor of an intractable factual inquiry of questionable relevance."
67 Minn.L.Rev. at 741. He adds that "[a]ny such categorical approach would also undermine the legislative determination
to preserve an artist's ability to exploit utilitarian markets." Id. (citing 17 U.S.C. § 113(a) (1976)).

[4] We are reminded not only by Judge Gesell in the district court in Esquire, 414 F.Supp. 939, 941 (D.D.C.1976), but by
Holmes in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251-52, 23 S.Ct. 298, 300-01, 47 L.Ed. 460 (1903), by
Mazer v. Stein, 347 U.S. at 214, 74 S.Ct. at 468, and by numerous other opinions, that we judges should not let our own
view of styles of art interfere with the decisionmaking process in this area. Denicola suggests that the shape of a Mickey
Mouse telephone is copyrightable because its form is independent of function, and "[a] telephone shape owing more to
Arp, Brancusi, or Moore than Disney may be equally divorced from utilitarian influence." 67 Minn.L.Rev. at 746. This is
true, of course, of the artist Christo's "Running Fence," approved (following Professor Nimmer) as an example of
conceptual separability in Keiselstein-Cord, 632 F.2d at 993.

[5] Because the district court viewed the rack as entirely functional, it therefore did not reach the next step of determining
whether Brandir's RIBBON Rack had acquired secondary meaning by the time Cascade started to manufacture its bicycle
rack.

[6] Indeed, in addition to the numerous bicycle racks on the market, one may observe trees, awning supports, parking
meters, signs, fire plugs, and many other objects used as bicycle racks.

[7] Indeed, Kieselstein-Cord approved Professor Nimmer's example of Christo's "Running Fence" as an object whose
sculptural features were conceptually, but not physically, separable from its utilitarian aspects. 632 F.2d at 993; see 1
Nimmer on Copyright § 2.08[B] at 2-96.1 & n. 112.2 (1987). The fact that the Running Fence's aesthetic features were
"inextricably intertwined" with its functional aspects, however, creates doubt as to whether it is a copyrightable
"sculptural work" under Carol Barnhart or the instant decision.

[8] The reasonable observer may be forgiven, however, if he or she does not recognize the Ribbon Rack as an example of
minimalist art.

[9] The Copyright Office held that the Ribbon Rack was not copyrightable because it lacked originality. There may be some
merit in that view in light of the Ribbon Rack's use of standard radii. This issue, however, was not raised in defendant's
motion for summary judgment, was not addressed by the district court, and is not implicated here.
FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., 499 U.S. 340 (1991)
O'CONNOR, J., delivered the opinion of the Court, in which REHNQUIST, C. J., and WHITE, MARSHALL, STEVENS, SCALIA,
KENNEDY, and SOUTER, JJ., joined. BLACKMUN, J., concurred in the judgment.
[p*342] JUSTICE O'CONNOR delivered the opinion of the Court.

[1] This case requires us to clarify the extent of copyright protection available to telephone directory white pages.

I
[2] Rural Telephone Service Company is a certified public utility that provides telephone service to several communities in
northwest Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue
annually an updated telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical
telephone directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the names of
Rural's subscribers, together with their towns and telephone numbers. The yellow pages list Rural's business subscribers
alphabetically by category and feature classified advertisements of various sizes. Rural distributes its directory free of
charge to its subscribers, but earns revenue by selling yellow pages advertisements.

[3] Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical
[p*343] directory, which covers only a particular calling area, Feist's area-wide directories cover a much larger
geographical range, reducing the need to call directory assistance or consult multiple directories. The Feist directory that
is the subject of this litigation covers 11 different telephone service areas in 15 counties and contains 46,878 white pages
listings -- compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed free of charge and
includes both white pages and yellow pages. Feist and Rural compete vigorously for yellow pages advertising.

[4] As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons
desiring telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a
telephone number. Feist is not a telephone company, let alone one with monopoly status, and therefore lacks
independent access to any subscriber information. To obtain white pages listings for its area-wide directory, Feist
approached each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right to use its
white pages listings.

[5] Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for
Feist, as omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to
potential yellow pages advertisers. In a decision subsequent to that which we review here, the District Court determined
that this was precisely the reason Rural refused to license its listings. The refusal was motivated by an unlawful purpose
"to extend its monopoly in telephone service to a monopoly in yellow pages advertising." Rural Telephone Service Co. v.
Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).

[6] Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist began by removing several
thousand listings that fell outside the geographic range of its area-wide directory, then hired personnel to investigate the
4,935 that remained. These employees verified [p*344] the data reported by Rural and sought to obtain additional
information. As a result, a typical Feist listing includes the individual's street address; most of Rural's listings do not.
Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's 1983 directory were identical to listings
in Rural's 1982-1983 white pages. App. 54 (para. 15-16), 57.� Four of these were fictitious listings that Rural had inserted
into its directory to detect copying.

[7] Rural sued for copyright infringement in the District Court for the District of Kansas taking the position that Feist, in
compiling its own directory, could not use the information contained in Rural's white pages. Rural asserted that Feist's
employees were obliged to travel door-to-door or conduct a telephone survey to discover the same information for
themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the
information copied was beyond the scope of copyright protection. The District Court granted summary judgment to Rural,
explaining that "courts have consistently held that telephone directories are copyrightable" and citing a string of lower
court decisions. 663 F. Supp. 214, 218 (1987). In an unpublished opinion, the Court of Appeals for the Tenth Circuit
affirmed "for substantially the reasons given by the district court." App. to Pet. for Cert. 4a, judgt. order reported at 916
F. 2d 718 (1990). We granted certiorari, 498 U.S. 808 (1990), to determine whether the copyright in Rural's directory
protects the names, towns, and telephone numbers copied by Feist.

II
A
[8] This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable;
the other, that compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That
there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that
[p*345] "no author may copyright his ideas or the facts he narrates." Harper & Row, Publishers, Inc. v. Nation Enterprises,
471 U.S. 539, 556 (1985). Rural wisely concedes this point, noting in its brief that "facts and discoveries, of course, are not
themselves subject to copyright protection." Brief for Respondent 24. At the same time, however, it is beyond dispute
that compilations of facts are within the subject matter of copyright. Compilations were expressly mentioned in the
Copyright Act of 1909, and again in the Copyright Act of 1976.

[9] There is an undeniable tension between these two propositions. Many compilations consist of nothing but raw data -
- i. e., wholly factual information not accompanied by any original written expression. On what basis may one claim a
copyright in such a work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when
gathered together in one place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts
are potentially within its scope.

[10] The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright
is originality. To qualify for copyright protection, a work must be original to the author. See Harper & Row, supra, at 547-
549. Original, as the term is used in copyright, means only that the work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some minimal degree of creativity. 1 M. Nimmer & D.
Nimmer, Copyright �� 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the requisite level of creativity is extremely
low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some
creative spark, "no matter how crude, humble or obvious" it might be. Id., � 1.08[C][1]. Originality does not signify
novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not
the result of copying. To illustrate, [p*346] assume that two poets, each ignorant of the other, compose identical poems.
Neither work is novel, yet both are original and, hence, copyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81
F. 2d 49, 54 (CA2 1936).

[11] Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, � 8, cl.
8, of the Constitution, which authorizes Congress to "secure for limited Times to Authors . . . the exclusive Right to their
respective Writings." In two decisions from the late 19th Century -- The Trade-Mark Cases, 100 U.S. 82 (1879); and Burrow-
Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) -- this Court defined the crucial terms "authors" and "writings." In so
doing, the Court made it unmistakably clear that these terms presuppose a degree of originality.

[12] In The Trade-Mark Cases, the Court addressed the constitutional scope of "writings." For a particular work to be
classified "under the head of writings of authors," the Court determined, "originality is required." 100 U.S., at 94. The
Court explained that originality requires independent creation plus a modicum of creativity: "While the word writings may
be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original,
and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual
labor, embodied in the form of books, prints, engravings, and the like." Ibid. (emphasis in original).

[13] In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the word "authors." The
Court defined "author," in a constitutional sense, to mean "he to whom anything owes its origin; originator; maker." 111
U.S., at 58 (internal quotations omitted). As in The Trade-Mark Cases, the Court emphasized the creative component of
originality. It described copyright as being limited to "original intellectual conceptions of the author," ibid., and stressed
the importance of requiring an author who accuses another of infringement to prove "the existence [p*347] of those facts
of originality, of intellectual production, of thought, and conception." Id., at 59-60.
[14] The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of
copyright protection today. See Goldstein v. California, 412 U.S. 546, 561-562 (1973). It is the very "premise of copyright
law." Miller v. Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981). Leading scholars agree on this point. As one
pair of commentators succinctly puts it: "The originality requirement is constitutionally mandated for all works." Patterson
& Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA
L. Rev. 719, 763, n. 155 (1989) (emphasis in original) (hereinafter Patterson & Joyce). Accord id., at 759-760, and n. 140;
Nimmer � 1.06[A] ("originality is a statutory as well as a constitutional requirement"); id., � 1.08[C][1] ("a modicum of
intellectual labor . . . clearly constitutes an essential constitutional element").

[15] It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual
compilations. "No one may claim originality as to facts." Id., � 2.11[A], p. 2-157. This is because facts do not owe their
origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a
particular fact has not created the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one
who discovers a fact is not its "maker" or "originator." 111 U.S., at 58. "The discoverer merely finds and records." Nimmer
� 2.03[E]. Census-takers, for example, do not "create" the population figures that emerge from their efforts; in a sense,
they copy these figures from the world around them. Denicola, Copyright in Collections of Facts: A Theory for the
Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516, 525 (1981) (hereinafter Denicola). Census data therefore
do not trigger copyright because these data are not "original" in the constitutional sense. Nimmer [p*348] � 2.03[E]. The
same is true of all facts -- scientific, historical, biographical, and news of the day. "They may not be copyrighted and are
part of the public domain available to every person." Miller, supra, at 1369.

[16] Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically
chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be
used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by
the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such
compilations through the copyright laws. Nimmer �� 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a directory that
contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright
protection if it features an original selection or arrangement. See Harper & Row, 471 U.S., at 547. Accord Nimmer � 3.03.

[17] This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that
every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright
protection may extend only to those components of a work that are original to the author. Patterson & Joyce 800-802;
Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90 Colum. L. Rev. 1865, 1868,
and n. 12 (1990) (hereinafter Ginsburg). Thus, if the compilation author clothes facts with an original collocation of words,
he or she may be able to claim a copyright in this written expression. Others may copy the underlying facts from the
publication, but not the precise words used to present them. In Harper & Row, for example, we explained that President
Ford could not prevent others from copying bare historical facts from his autobiography, see 471 U.S., at 556-557, but
that he could prevent others from copying his "subjective descriptions and portraits of public figures." [p*349] Id., at 563.
Where the compilation author adds no written expression but rather lets the facts speak for themselves, the expressive
element is more elusive. The only conceivable expression is the manner in which the compiler has selected and arranged
the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for copyright
protection. See Patry, Copyright in Compilations of Facts (or Why the "White Pages" Are Not Copyrightable), 12 Com. &
Law 37, 64 (Dec. 1990) (hereinafter Patry). No matter how original the format, however, the facts themselves do not
become original through association. See Patterson & Joyce 776.

[18] This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a
subsequent compiler remains free to use the facts contained in an another's publication to aid in preparing a competing
work, so long as the competing work does not feature the same selection and arrangement. As one commentator explains
it: "No matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking . . . .
The very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by
second comers, even if the author was the first to discover the facts or to propose the ideas." Ginsburg 1868.
[19] It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As
Justice Brennan has correctly observed, however, this is not "some unforeseen byproduct of a statutory scheme." Harper
& Row, 471 U.S., at 589 (dissenting opinion). It is, rather, "the essence of copyright," ibid., and a constitutional
requirement. The primary objective of copyright is not to reward the labor of authors, but "to promote the Progress of
Science and useful Arts." Art. I, � 8, cl. 8. Accord Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To
this end, copyright assures authors the right to their original [p*350] expression, but encourages others to build freely
upon the ideas and information conveyed by a work. Harper & Row, supra, at 556-557. This principle, known as the idea-
expression or fact-expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming
the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw facts
may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the
progress of science and art.

[20] This Court has long recognized that the fact-expression dichotomy limits severely the scope of protection in fact-
based works. More than a century ago, the Court observed: "The very object of publishing a book on science or the useful
arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the
knowledge could not be used without incurring the guilt of piracy of the book." Baker v. Selden, 101 U.S. 99, 103 (1880).
We reiterated this point in Harper & Row:

"No author may copyright facts or ideas. The copyright is limited to those aspects of the work -- termed 'expression' --
that display the stamp of the author's originality.

“Copyright does not prevent subsequent users from copying from a prior author's work those constituent elements that
are not original -- for example . . . facts, or materials in the public domain -- as long as such use does not unfairly
appropriate the author's original contributions.” 471 U.S., at 547-548 (citation omitted).

[21] This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a wholly consistent
manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual
compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited
to [p*351] the particular selection or arrangement. In no event may copyright extend to the facts themselves.

B
[22] As we have explained, originality is a constitutionally mandated prerequisite for copyright protection. The Court's
decisions announcing this rule predate the Copyright Act of 1909, but ambiguous language in the 1909 Act caused some
lower courts temporarily to lose sight of this requirement.

[23] The 1909 Act embodied the originality requirement, but not as clearly as it might have. See Nimmer � 2.01. The
subject matter of copyright was set out in � 3 and � 4 of the Act. Section 4 stated that copyright was available to “all the
writings of an author.” 35 Stat. 1076. By using the words “writings” and “author” -- the same words used in Article I, � 8
of the Constitution and defined by the Court in The Trade-Mark Cases and Burrow-Giles -- the statute necessarily
incorporated the originality requirement articulated in the Court's decisions. It did so implicitly, however, thereby leaving
room for error.

[24] Section 3 was similarly ambiguous. It stated that the copyright in a work protected only “the copyrightable component
parts of the work.” It thus stated an important copyright principle, but failed to identify the specific characteristic --
originality -- that determined which component parts of a work were copyrightable and which were not.

[25] Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect statutory language. They
understood from this Court's decisions that there could be no copyright without originality. See Patterson & Joyce 760-
761. As explained in the Nimmer treatise: “The 1909 Act neither defined originality, nor even expressly required that a
work be 'original' in order to command protection. However, the courts uniformly inferred the requirement from the fact
that copyright protection may only be claimed by 'authors' . . . . It was reasoned that since an author is 'the . . . [p*352]
creator, originator' it follows that a work is not the product of an author unless the work is original.” Nimmer � 2.01
(footnotes omitted) (citing cases).
[26] But some courts misunderstood the statute. See, e. g., Leon v. Pacific Telephone & Telegraph Co., 91 F. 2d 484 (CA9
1937); Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (CA2 1922). These courts ignored � 3 and �
4, focusing their attention instead on � 5 of the Act. Section 5, however, was purely technical in nature: it provided that
a person seeking to register a work should indicate on the application the type of work, and it listed 14 categories under
which the work might fall. One of these categories was “books, including composite and cyclopedic works, directories,
gazetteers, and other compilations.” � 5(a). Section 5 did not purport to say that all compilations were automatically
copyrightable. Indeed, it expressly disclaimed any such function, pointing out that “the subject-matter of copyright is
defined in section four.” Nevertheless, the fact that factual compilations were mentioned specifically in � 5 led some
courts to infer erroneously that directories and the like were copyrightable per se, “without any further or precise showing
of original -- personal -- authorship.” Ginsburg 1895.

[27] Making matters worse, these courts developed a new theory to justify the protection of factual compilations. Known
alternatively as “sweat of the brow” or “industrious collection,” the underlying notion was that copyright was a reward
for the hard work that went into compiling facts. The classic formulation of the doctrine appeared in Jeweler's Circular
Publishing Co., 281 F., at 88:

“The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the
materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary
skill or originality, either in thought or in language, or anything more than industrious [p*353] collection. The man who
goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their
street number, acquires material of which he is the author” (emphasis added).

[28] The “sweat of the brow” doctrine had numerous flaws, the most glaring being that it extended copyright protection
in a compilation beyond selection and arrangement -- the compiler's original contributions -- to the facts themselves.
Under the doctrine, the only defense to infringement was independent creation. A subsequent compiler was “not entitled
to take one word of information previously published,” but rather had to “independently work out the matter for himself,
so as to arrive at the same result from the same common sources of information.” Id., at 88-89 (internal quotations
omitted). “Sweat of the brow” courts thereby eschewed the most fundamental axiom of copyright law -- that no one may
copyright facts or ideas. See Miller v. Universal City Studios, Inc., 650 F. 2d, at 1372 (criticizing “sweat of the brow” courts
because “ensuring that later writers obtain the facts independently . . . is precisely the scope of protection given . . .
copyrighted matter, and the law is clear that facts are not entitled to such protection”).

[29] Decisions of this Court applying the 1909 Act make clear that the statute did not permit the “sweat of the brow”
approach. The best example is International News Service v. Associated Press, 248 U.S. 215 (1918). In that decision, the
Court stated unambiguously that the 1909 Act conferred copyright protection only on those elements of a work that were
original to the author. Associated Press had conceded taking news reported by International News Service and publishing
it in its own newspapers. Recognizing that � 5 of the Act specifically mentioned “periodicals, including newspapers,” �
5(b), the Court acknowledged that news articles were copyrightable. Id., at 234. It flatly rejected, however, the notion that
the copyright in an article extended to [p*354] the factual information it contained: “The news element -- the information
respecting current events contained in the literary production -- is not the creation of the writer, but is a report of matters
that ordinarily are publici juris; it is the history of the day.” Ibid. [n1]

[30] Without a doubt, the “sweat of the brow” doctrine flouted basic copyright principles. Throughout history, copyright
law has “recognized a greater need to disseminate factual works than works of fiction or fantasy.” Harper & Row, 471
U.S., at 563. Accord Gorman, Fact or Fancy: The Implications for Copyright, 29 J. Copyright Soc. 560, 563 (1982). But “sweat
of the brow” courts took a contrary view; they handed out proprietary interests in facts and declared that authors are
absolutely precluded from saving time and effort by relying upon the facts contained in prior works. In truth, “it is just
such wasted effort that the proscription against the copyright of ideas and facts . . . [is] designed to prevent.” Rosemont
Enterprises, Inc. v. Random House, Inc., 366 F. 2d 303, 310 (CA2 1966), cert. denied, 385 U.S. 1009 (1967). “Protection for
the fruits of such research . . . may in certain circumstances be available under a theory of unfair competition. But to
accord copyright protection on this basis alone distorts basic copyright principles in that it creates a monopoly in public
domain materials without the necessary justification of protecting and encouraging the creation of 'writings' by 'authors.'”
Nimmer � 3.04, p. 3-23 (footnote omitted).

C
[31] “Sweat of the brow” decisions did not escape the attention of the Copyright Office. When Congress decided to
overhaul the copyright statute and asked the Copyright Office to study existing problems, see Mills Music, Inc. v. Snyder,
469 U.S. 153, 159 (1985), the Copyright Office promptly recommended that Congress clear up the confusion in the lower
courts as to the basic standards of copyrightability. The Register of Copyrights explained in his first report to Congress that
“originality” was a “basic requisite” of copyright under the 1909 Act, but that “the absence of any reference to [originality]
in the statute seems to have led to misconceptions as to what is copyrightable matter.” Report of the Register of
Copyrights on the General Revision of the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961).
The Register suggested making the originality requirement explicit. Ibid.

[32] Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress dropped the reference to “all
the writings of an author” and replaced it with the phrase “original works of authorship.” 17 U.S.C. � 102(a). In making
explicit the originality requirement, Congress announced that it was merely clarifying existing law: “The two fundamental
criteria of copyright protection [are] originality and fixation in tangible form . . . . The phrase 'original works of authorship,'
which is purposely left undefined, is intended to incorporate without change the standard of originality established by the
courts under the present [1909] copyright statute.” H. R. Rep. No. 94-1476, p. 51 (1976) (emphasis added) (hereinafter H.
R. Rep.); S. Rep. No. 94-473, p. 50 (1975) (emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the
Copyright Office: “Our intention here is to maintain the established standards of originality . . . .” Supplementary Report
of the Register of Copyrights on the General Revision of U.S. Copyright Law, 89th Cong., 1st Sess., Part 6, p. 3 (H. Judiciary
Comm. Print 1965) (emphasis added).

[33] To ensure that the mistakes of the “sweat of the brow” courts would not be repeated, Congress took additional
measures. For example, � 3 of the 1909 Act had stated that copyright protected only the “copyrightable component
parts” of a work, but had not identified originality as the basis for distinguishing those component parts that were
copyrightable from those that were not. The 1976 Act deleted this section and replaced it with � 102(b), which identifies
specifically those elements of a work for which copyright is not available: “In no case does copyright protection for an
original work of authorship extend to any 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.” � 102(b) is
universally understood to prohibit any copyright in facts. Harper & Row, supra, at 547, 556. Accord Nimmer � 2.03[E]
(equating facts with “discoveries”). As with � 102(a), Congress emphasized that � 102(b) did not change the law, but
merely clarified it: “Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present
law. Its purpose is to restate . . . that the basic dichotomy between expression and idea remains unchanged.” H. R. Rep.,
at 57; S. Rep., at 54.

[34] Congress took another step to minimize confusion by deleting the specific mention of “directories . . . and other
compilations” in � 5 of the 1909 Act. As mentioned, this section had led some courts to conclude that directories were
copyrightable per se and that every element of a directory was protected. In its place, Congress enacted two new
provisions. First, to make clear that compilations were not copyrightable per se, Congress provided a definition of the
term “compilation.” Second, to make clear that the copyright in a compilation did not extend to the facts themselves,
Congress enacted 17 U.S.C. � 103.

[35] The definition of “compilation” is found in � 101 of the 1976 Act. It defines a “compilation” in the copyright sense as
“a work formed by the collection and assembly of preexisting materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a whole constitutes an original work of authorship” (emphasis added).

[36] The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se. It conveys
this message through its tripartite structure, as emphasized above by the italics. The statute identifies three distinct
elements and requires each to be met for a work to qualify as a copyrightable compilation: (1) the collection and assembly
of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the
creation, by virtue of the particular selection, coordination, or arrangement, of an “original” work of authorship. “This
tripartite conjunctive structure is self-evident, and should be assumed to 'accurately express the legislative purpose.'”
Patry 51, quoting Mills Music, 469 U.S., at 164.

[37] At first glance, the first requirement does not seem to tell us much. It merely describes what one normally thinks of
as a compilation -- a collection of pre-existing material, facts, or data. What makes it significant is that it is not the sole
requirement. It is not enough for copyright purposes that an author collects and assembles facts. To satisfy the statutory
definition, the work must get over two additional hurdles. In this way, the plain language indicates that not every collection
of facts receives copyright protection. Otherwise, there would be a period after “data.”

[38] The third requirement is also illuminating. It emphasizes that a compilation, like any other work, is copyrightable only
if it satisfies the originality requirement (“an original work of authorship”). Although � 102 states plainly that the
originality requirement applies to all works, the point was emphasized with regard to compilations to ensure that courts
would not repeat the mistake of the “sweat of the brow” courts by concluding that fact-based works are treated differently
and measured by some other standard. As Congress explained it, the goal was to “make plain that the criteria of
copyrightable subject matter stated in section 102 apply with full force to works . . . containing preexisting material.” H.
R. Rep., at 57; S. Rep., at 55.

[39] The key to the statutory definition is the second requirement. It instructs courts that, in determining whether a fact-
based work is an original work of authorship, they should focus on the manner in which the collected facts have been
selected, coordinated, and arranged. This is a straightforward application of the originality requirement. Facts are never
original, so the compilation author can claim originality, if at all, only in the way the facts are presented. To that end, the
statute dictates that the principal focus should be on whether the selection, coordination, and arrangement are
sufficiently original to merit protection.

[40] Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. It states that, to
merit protection, the facts must be selected, coordinated, or arranged “in such a way” as to render the work as a whole
original. This implies that some “ways” will trigger copyright, but that others will not. See Patry 57, and n. 76. Otherwise,
the phrase “in such a way” is meaningless and Congress should have defined “compilation” simply as “a work formed by
the collection and assembly of preexisting materials or data that are selected, coordinated, or arranged.” That Congress
did not do so is dispositive. In accordance with “the established principle that a court should give effect, if possible, to
every clause and word of a statute,” Moskal v. United States, 498 U.S. 103, 109-110 (1990) (internal quotations omitted),
we conclude that the statute envisions that there will be some fact-based works in which the selection, coordination, and
arrangement are not sufficiently original to trigger copyright protection.

[41] As discussed earlier, however, the originality requirement is not particularly stringent. A compiler may settle upon a
selection or arrangement that others have used; novelty is not required. Originality requires only that the author make
the selection or arrangement independently (i. e., without copying that selection or arrangement from another work), and
that it display some minimal level of creativity. Presumably, [p*359] the vast majority of compilations will pass this test,
but not all will. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to
be virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (referring to “the
narrowest and most obvious limits”). Such works are incapable of sustaining a valid copyright. Nimmer � 2.01[B].

[42] Even if a work qualifies as a copyrightable compilation, it receives only limited protection. This is the point of � 103
of the Act. Section 103 explains that “the subject matter of copyright . . . includes compilations,” � 103(a), but that
copyright protects only the author's original contributions -- not the facts or information conveyed:

“The copyright in a compilation . . . extends only to the material contributed by the author of such work, as distinguished
from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.”
� 103(b).

[43] As � 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or
data he or she has collected. “The most important point here is one that is commonly misunderstood today: copyright . .
. has no effect one way or the other on the copyright or public domain status of the preexisting material.” H. R. Rep., at
57; S. Rep., at 55. The 1909 Act did not require, as “sweat of the brow” courts mistakenly assumed, that each subsequent
compiler must start from scratch and is precluded from relying on research undertaken by another. See, e. g., Jeweler's
Circular Publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works may be freely copied because
copyright protects only the elements that owe their origin to the compiler -- the selection, coordination, and arrangement
of facts.

[44] In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not “sweat of the brow,” is the
[p*360] touchstone of copyright protection in directories and other fact-based works. Nor is there any doubt that the
same was true under the 1909 Act. The 1976 revisions were a direct response to the Copyright Office's concern that many
lower courts had misconstrued this basic principle, and Congress emphasized repeatedly that the purpose of the revisions
was to clarify, not change, existing law. The revisions explain with painstaking clarity that copyright requires originality, �
102(a); that facts are never original, � 102(b); that the copyright in a compilation does not extend to the facts it contains,
� 103(b); and that a compilation is copyrightable only to the extent that it features an original selection, coordination, or
arrangement, � 101.

[45] The 1976 revisions have proven largely successful in steering courts in the right direction. A good example is Miller v.
Universal City Studios, Inc., 650 F. 2d, at 1369-1370: “A copyright in a directory . . . is properly viewed as resting on the
originality of the selection and arrangement of the factual material, rather than on the industriousness of the efforts to
develop the information. Copyright protection does not extend to the facts themselves, and the mere use of information
contained in a directory without a substantial copying of the format does not constitute infringement” (citation omitted).
Additionally, the Second Circuit, which almost 70 years ago issued the classic formulation of the “sweat of the brow”
doctrine in Jeweler's Circular Publishing Co., has now fully repudiated the reasoning of that decision. See, e. g., Financial
Information, Inc. v. Moody's Investors Service, Inc., 808 F. 2d 204, 207 (CA2 1986), cert. denied, 484 U.S. 820 (1987);
Financial Information, Inc. v. Moody's Investors Service, Inc., 751 F. 2d 501, 510 (CA2 1984) (Newman, J., concurring);
Hoehling v. Universal City Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those scholars who believe that “industrious
collection” should be rewarded seem to recognize that this is beyond the scope of existing copyright law. See Denicola
516 (“the very vocabulary of copyright [p*361] is ill suited to analyzing property rights in works of nonfiction”); id., at 520-
521, 525; Ginsburg 1867, 1870.

III
[46] There is no doubt that Feist took from the white pages of Rural's directory a substantial amount of factual information.
At a minimum, Feist copied the names, towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying,
however, is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original. See Harper & Row, 471 U.S., at 548. The
first element is not at issue here; Feist appears to concede that Rural's directory, considered as a whole, is subject to a
valid copyright because it contains some foreword text, as well as original material in its yellow pages advertisements. See
Brief for Petitioner 18; Pet. for Cert. 9.

[47] The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names,
towns, and telephone numbers from Rural's white pages, copy anything that was “original” to Rural? Certainly, the raw
data does not satisfy the originality requirement. Rural may have been the first to discover and report the names, towns,
and telephone numbers of its subscribers, but this data does not “'owe its origin'” to Rural. Burrow-Giles, 111 U.S., at 58.
Rather, these bits of information are uncopyrightable facts; they existed before Rural reported them and would have
continued to exist if Rural had never published a telephone directory. The originality requirement “rules out protecting . .
. names, addresses, and telephone numbers of which the plaintiff by no stretch of the imagination could be called the
author.” Patterson & Joyce 776.

[48] Rural essentially concedes the point by referring to the names, towns, and telephone numbers as “preexisting
material.” Brief for Respondent 17. Section 103(b) states explicitly [p*362] that the copyright in a compilation does not
extend to “the preexisting material employed in the work.”

[49] The question that remains is whether Rural selected, coordinated, or arranged these uncopyrightable facts in an
original way. As mentioned, originality is not a stringent standard; it does not require that facts be presented in an
innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so
mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist. See
Patterson & Joyce 760, n. 144 (“While this requirement is sometimes characterized as modest, or a low threshold, it is not
without effect”) (internal quotations omitted; citations omitted). As this Court has explained, the Constitution mandates
some minimal degree of creativity, see The Trade-Mark Cases, 100 U.S., at 94; and an author who claims infringement
must prove “the existence of . . . intellectual production, of thought, and conception.” Burrow-Giles, supra, at 59-60.

[50] The selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum constitutional
standards for copyright protection. As mentioned at the outset, Rural's white pages are entirely typical. Persons desiring
telephone service in Rural's service area fill out an application and Rural issues them a telephone number. In preparing its
white pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product
is a garden-variety white pages directory, devoid of even the slightest trace of creativity.

[51] Rural's selection of listings could not be more obvious: it publishes the most basic information -- name, town, and
telephone number -- about each person who applies to it for telephone service. This is “selection” of a sort, but it lacks
the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient
effort [p*363] to make the white pages directory useful, but insufficient creativity to make it original.

[52] We note in passing that the selection featured in Rural's white pages may also fail the originality requirement for
another reason. Feist points out that Rural did not truly “select” to publish the names and telephone numbers of its
subscribers; rather, it was required to do so by the Kansas Corporation Commission as part of its monopoly franchise. See
737 F. Supp., at 612. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.

[53] Nor can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than
list Rural's subscribers in alphabetical order. This arrangement may, technically speaking, owe its origin to Rural; no one
disputes that Rural undertook the task of alphabetizing the names itself. But there is nothing remotely creative about
arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so
commonplace that it has come to be expected as a matter of course. See Brief for Information Industry Association et al.
as Amici Curiae 10 (alphabetical arrangement “is universally observed in directories published by local exchange telephone
companies”). It is not only unoriginal, it is practically inevitable. This time-honored tradition does not possess the minimal
creative spark required by the Copyright Act and the Constitution.

[54] We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural and therefore
were not protected by the copyright in Rural's combined white and yellow pages directory. As a constitutional matter,
copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity.
Rural's white pages, limited to basic subscriber information and arranged alphabetically, fall short of the mark. As a
statutory matter, 17 U.S.C. � 101 does not afford protection [p*364] from copying to a collection of facts that are
selected, coordinated, and arranged in a way that utterly lacks originality. Given that some works must fail, we cannot
imagine a more likely candidate. Indeed, were we to hold that Rural's white pages pass muster, it is hard to believe that
any collection of facts could fail.

[55] Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement.
This decision should not be construed as demeaning Rural's efforts in compiling its directory, but rather as making clear
that copyright rewards originality, not effort. As this Court noted more than a century ago, “'great praise may be due to
the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being
rewarded in this way.'” Baker v. Selden, 101 U.S., at 105. The judgment of the Court of Appeals is

[56] Reversed.

JUSTICE BLACKMUN concurs in the judgment.

G.R. No. 130360 August 15, 2001

WILSON ONG CHING KlAN CHUAN, petitioner,

vs.
HON. COURT OF APPEALS and LORENZO TAN, respondents.

QUISUMBING, J.:

This petition for review1 seeks to annul the decision2 dated August 27, 1997 of the Court of Appeals which set aside the
resolutions3 dated October 13 and December 15, 1993 as well as the order dated March 1, 1994 of the Regional Trial
Court of Quezon City, Branch 94.4

Petitioner Wilson Ong Ching Kian Chuan ("Ong"), imports vermicelli from China National Cereals Oils and Foodstuffs Import
and Export Corporation, based in Beijing, China, under the firm name C.K.C. Trading. He repacks it in cellophane wrappers
with a design of two-dragons and the TOWER trademark on the uppermost portion. Ong acquired a Certificate of Copyright
Registration from the National Library on June 9, 1993 on the said design.

Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he imports from the same company but based
in Qingdao, China in a "nearly" identical wrapper. On September 16, 1993, Ong filed against Tan a verified complaint for
infringement of copyright with damages and prayer for temporary restraining order or writ of preliminary injunction with
the Regional Trial Court in Quezon City. Ong alleged that he was the holder of a Certificate of Copyright Registration over
the cellophane wrapper with the two-dragon design, and that Tan used an identical wrapper in his business. In his prayer
for a preliminary injunction in addition to damages, he asked that Tan be restrained from using the wrapper. He said he
would post a bond to guarantee the payment of damages resulting from the issuance of the writ of preliminary
injunction.1âwphi1.nêt

The trial court issued a temporary restraining order on the same date the complaint was filed. Tan filed an opposition to
Ong's application for a writ of preliminary injunction with counter-application for the issuance of a similar writ against
Ong. Tan alleged that Ong was not entitled to an injunction. According to Tan, Ong did not have a clear right over the use
of the trademark Pagoda and Lungkow vermicelli as these were registered in the name of CHINA NATIONAL CEREALS OIL
AND FOODSTUFFS IMPORT AND EXPORT CORPORATION, SHANDONG CEREALS AND OILS BRANCH (hereafter Ceroilfood
Shandong), based in Qingdao, China. Further, Tan averred that he was the exclusive distributor in the Philippines of the
Pagoda and Lungkow vermicelli and was solely authorized to use said trademark. He added that Ong merely copied the
two-dragon design from Ceroilfood Shandong which had the Certificates of Registration issued by different countries. He
concluded that Ong's Certificate of Copyright Registration was not valid for lack of originality.

On September 30, 1993, Ong countered Tan's opposition to the issuance of the writ of preliminary injunction.

On October 13, 1993, the could issued the writ in Ong's favor upon his filing of a P100,000.00 bond.5

Tan filed a motion to dissolve the writ of preliminary injunction, but the trial court denied it on December 15, 1993.6 The
motion for reconsideration was also denied on March 1, 1994.

Tan elevated the case to the Court of Appeals via a special civil action for certiorari with a prayer for the issuance of a TRO
and/or writ of preliminary injunction. Ong filed an opposition to Tan's prayer for an issuance of TRO and/or writ of
preliminary injunction on the ground that the trial court did not commit a grave abuse of discretion in issuing the writ in
his favor.

After oral argument, the Court of Appeals rendered a decision on August 8, 1994, setting aside the trial court's order. It
decreed:
WHEREFORE, in the petition is GIVEN, DUE COURSE, and, GRANTED. The order dated October 13, 1993 and related orders,
as well as the writ of preliminary injunction issued by the respondent court, are SET ASIDE as issued with grave abuse of
discretion. No costs.

SO ORDERED.7

Ong filed a motion for reconsideration and on January 3, 1995, the Court of Appeals modified its August 8, 1994 order as
follows:

WHEREFORE the phrase "the order dated October 13, 1993 and related orders, as well as the writ of preliminary injunction
issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion" is hereby deleted in our resolution
dated 08 August 1994. In all other respects, said resolution must be maintained.

However, let a writ of preliminary injunction be issued enjoining the herein respondents and any and all persons acting
for and in their behalf from enforcing and/or implementing the Writ of Preliminary Injunction issued on October 15, 1993
pursuant to the Resolution dated October 13, 1993 of the PUBLIC RESPONDENT in Civil Case No. Q-93-17628 entitled
"WILSON ONG CHING KIAN CHUAN, ETC. vs. LORENZO TAN, ETC." upon petitioner's filing of a bond of P200,000.00.

The Branch Clerk of Court of the RTC, Branch 94, Quezon City is directed to elevate the records of Civil Case No. 293-17128
within TEN (10) DAYS from notice.

The parties are given THIRTY (30) DAYS from notice to file their memorandum or any pertinent manifestation on the
matter, after which the case shall be considered submitted for decision.

SO ORDERED.8

Pursuant to the Court of Appeals' resolution on January 16, 1996, the parties submitted their memoranda. On August 27,
1997, the appellate court promulgated its decision, decreeing as follows:

WHEREFORE, the resolutions dated October 13, 1993 and December 15, 1993 as well as the order dated March 1, 1994 -
all in Civil Case No. Q-93-17628 are hereby SET ASIDE and our injunction heretofore issued made permanent.

IT IS SO ORDERED.9

On October 17, 1997, Ong filed the instant petition for review, claiming that the Court of Appeals committed grave and
serious errors tantamount to acting with grave abuse of discretion and/or acting without or in excess of its jurisdiction:

I. ...WHEN IT ISSUED A PERMANENT PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE RESPONDENT WHEN THE
LATTER'S RIGHT TO SUCH A RELIEF IS NOT CLEAR, DOUBTFUL AND HAS NO LEGAL OR FACTUAL BASIS.

A. CERTIFICATE OF COPYRIGHT REGISTRATION JUSTIFY ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION UNDER P.D. NO.
49.

B. ISSUANCE OF PRELIMINARY INJUNCTION MUST BE BASED ON CLEAR AND UNMISTAKABLE RIGHT WHICH PETITIONER
HAD AND WHICH RIGHT WAS INVADED BY THE PRIVATE RESPONDENT.

C. COURT OF APPEALS' DECISION OF AUGUST 8, 1994 AND ITS RESOLUTION OF JANUARY 3, 1995 RESULTS IN CONFUSION.

II. ...BY 'INTERFERING' WITH THE JUDICIAL DISCRETION OF THE TRIAL COURT.

A. RESPONDENT COURT OF APPEALS' INTERFERENCE WITH THE DISCRETION OF TRIAL COURT CONSTITUTES GRAVE ABUSE
OF DISCRETION.
III. ...BY ISSUING A WRIT OF PRELIMINARY INJUNCTION IN FAVOR OF THE PRIVATE RESPONDENT AND DISREGARDING THE
WRIT OF PRELIMINARY INJUNCTION ISSUED BY THE TRIAL COURT WHOM (SIC), UNDER THE JANUARY 13, 1995
RESOLUTION OF RESPONDENT COURT OF APPEALS, WAS JUDICIALLY HELD NOT TO HAVE COMMITTED ANY GRAVE ABUSE
OF DISCRETION IN THE ISSUANCE OF THE OCTOBER 13, 1993 AND 'RELATED ORDERS'.

A. ISSUANCE OF WRIT OF PRELIMINARY INJUNCTION ADDRESSED TO THE SOUND DISCRETION OF THE TRIAL COURT.

IV. ...WHEN IT MADE ITS OWN FINDINGS AND CONCLUSIONS, PRE-EMPTING THE TRIAL COURT AND PRE-JUDGING THE
CASE, THUS LEAVING THE TRIAL COURT WITH NOTHING TO RULE UPON.

"A. COURT OF APPEALS PREJUDGED THE CASE REMANDED TO THE TRIAL COURT

The issues for our determination are: Was the issuance of the writ of preliminary injunction proper? Was there grave
abuse of discretion committed by the Court of Appeals when it set aside the order of the trial court, then issued a judgment
touching on the merits?

Petitioner avers that the CA erred in issuing a preliminary injunction in private respondent's favor. He says, firstly, that he
is more entitled to it. He states that as holder of the Certificate of Copyright Registration of the twin-dragon design, he
has the protection of P.D. No. 49.10 Said law allows an injunction in case of infringement. Petitioner asserts that private
respondent has no registered copyright and merely relies on the trademark of his principal abroad, which insofar as
Philippine laws is concerned, cannot prevail over petitioner's copyright.

Private respondent, for his part, avers that petitioner has no "clear right" over the use of the copyrighted wrapper since
the PAGODA trademark and label were first adopted and used and have been duly registered by Ceroilfood Shandong not
only in China but in nearly 20 countries and regions worldwide. Petitioner was not the original creator of the label, but
merely copied the design of Ceroilfood Shandong. Private respondent presented copies of the certificates of copyright
registration in the name of Ceroilfood Shandong issued by at least twenty countries and regions worldwide which although
unauthenticated are, according to him, sufficient to provide a sampling of the evidence needed in the determination of
the grant of preliminary injunction.11 Private respondent alleges, that the trademark PAGODA BRAND was registered in
China on October 31, 197912 while the trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on
August 15, 1985.13

To resolve this controversy, we have to return to basics. A person to be entitled to a copyright must be the original creator
of the work. He must have created it by his own skill, labor and judgment without directly copying or evasively imitating
the work of another.14 The grant of preliminary injunction in a case rests on the sound discretion of the court with the
caveat that it should be made with extreme caution.15 Its grant depends chiefly on the extent of doubt on the validity of
the copyright, existence of infringement, and the damages sustained by such infringement.16 In our view, the copies of
the certificates of copyright registered in the name of Ceroilfood Shandong sufficiently raise reasonable doubt. With such
a doubt preliminary injunction is unavailing.17 In Medina vs. City Sheriff, Manila, 276 SCRA 133, 139 (1997), where the
complainant's title was disputed, we held that injunction was not proper.

Petitioner Ong argues that the Court of Appeals erred and contradicted itself in its January 3, 1995 Resolution, where it
deleted the phrase "the order dated October 13, 1993 and related orders, as well as the writ of preliminary injunction
issued by the respondent court, are SET ASIDE as issued with grave abuse of discretion" in its August 8, 1994 decision, and
at the same time issued a writ of preliminary injunction in Tan's favor.

Ong's claim (that the Court of Appeals In deleting the aforequoted phrase in the August 8, 1994 decision abandoned its
earlier finding of grave abuse of discretion on the part of the trial court), however, is without logical basis. The appellate
court merely restated In its own words the issue raised in the petition: from a) whether the RTC committed grave abuse
of discretion, to b) whether Tan was entitled to an injunctive relief. Then it clarified that the relief sought is a prohibition
against Ong and his agents from enforcing the writ of preliminary injunction. Properly understood, an order enjoining the
enforcement of a writ of preliminary injunction issued by the RTC in a certiorari proceeding under Rule 65 of the Rules of
Court effectively, sets aside the RTC order for being issued with grave abuse of discretion.
To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and unmistakable right and
an urgent and paramount necessity for the writ to prevent serious damage.18 From the above discussion, we find that
petitioner's right has not been clearly and unmistakably demonstrated. That right is what is in dispute and has yet to be
determined. In Developers Group of Companies, Inc. vs. Court of Appeals, 219 SCRA 715, 722-723 (1993), we held that in
the absence of proof of a legal right and the injury sustained by the plaintiff, an order of the trial court granting the
issuance of an injunctive writ will be set aside, for having been issued with grave abuse of discretion. Conformably, there
was no abuse of discretion by the Court of Appeals when it issued its own order to restrain the enforcement of the
preliminary injunction issued by the trial court.

Finally, we note that the complaint initially filed with the RTC was for infringement of copyright. The trial court's resolution
subject of Tan's petition under Rule 65 before the CA concerns the correctness of the grant of the writ of preliminary
injunction. The only issue brought before the CA involved the grave abuse of discretion allegedly committed by the trial
court in granting the writ of preliminary injunction. The Court of Appeals in declaring that the wrapper of petitioner is a
copy of Ceroilfood Shandong's wrapper went beyond that issue touched on the merits of the infringement case, which
remains to be decided by the trial court.19 In our view, it was premature for the Court of Appeals to declare that the
design of petitioner's wrapper is a copy of the wrapper allegedly registered by Ceroilfood Shandong. That matter remains
for decision after appropriate proceedings at the trial court.

WHEREFORE, the instant petition is PARTIALLY GRANTED. The prayer for a writ of preliminary injunction to prohibit Tan
from using the cellophane wrapper with two-dragon device is denied, but the finding of the respondent appellate court
that Ong's copyrighted wrapper is a copy of that of Ceroilfood Shandong is SET ASIDE for being premature. The Regional
Trial Court of Quezon City, Branch 94, is directed to proceed with the trial to determine the merits of Civil Case No. 33779
expeditiously. Let the records of this case be REMANDED to said trial court promptly.

No pronouncement as to costs.1âwphi1.nêt

SO ORDERED
G.R. No. 132604 March 6, 2002

VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises, petitioner,
vs.
LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), INC., respondents.

DECISION

QUISUMBING, J.:

This petition for review on certiorari prays for the reversal of the decision dated January 30, 1998, of the Court of Appeals
in CA-G.R. CV No. 51553. That decision affirmed the decision in Civil Case No. 88-2220 of the Regional Trial Court, Branch
66, Makati City, making permanent the writ of preliminary injunction, ordering CVS Garment and Industrial Company
(CVSGIC) and petitioner Venancio Sambar to pay private respondents jointly and solidarily the sum of ₱50,000 as
temperate and nominal damages, ₱10,000 as exemplary damages, and ₱25,000 as attorney’s fees and litigation costs, and
ordering the Director of the National Library to cancel Copyright Registration No. 1-1998 in the name of Venancio Sambar.

The facts are as follows:

On September 28, 1987, private respondents, through a letter from their legal officer, demanded that CVS Garment
Enterprises (CVSGE) desist from using their stitched arcuate design on the Europress jeans which CVSGE advertised in the
Manila Bulletin.

Atty. Benjamin Gruba, counsel of CVSGE, replied that the arcuate design on the back pockets of Europress jeans was
different from the design on the back pockets of Levi’s jeans. He further asserted that his client had a copyright on the
design it was using.

Thereafter, private respondents filed a complaint against Sambar, doing business under the name and style of CVSGE.
Private respondents also impleaded the Director of the National Library. Summons was sent to Sambar in his business
address at 161-B Iriga corner Retiro, La Loma, Quezon City.

Atty. Gruba claimed that he erroneously received the original summons as he mistook it as addressed to his client, CVSGIC.
He returned the summons and the pleadings and manifested in court that CVSGE, which was formerly doing business in
the premises, already stopped operation and CVSGIC took over CVSGE’s occupation of the premises. He also claimed he
did not know the whereabouts of Sambar, the alleged owner of CVSGE.

Thereafter, private respondents amended their complaint to include CVSGIC. When private respondents learned the
whereabouts of Sambar and CVSGE, the case was revived.

Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally known clothing
manufacturer, owns the arcuate design trademark which was registered under U.S. Trademark Registration No. 404, 248
on November 16, 1943, and in the Principal Register of trademarks with the Philippine Patent Office under Certificate of
Registration No. 20240 issued on October 8, 1973; that through a Trademark Technical Data and Technical Assistance
Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co. granted LSPI a non-exclusive license to use the arcuate
trademark in its manufacture and sale of Levi’s pants, jackets and shirts in the Philippines; that in 1983, LS&Co. also
appointed LSPI as its agent and attorney-in-fact to protect its trademark in the Philippines; and that sometime in 1987,
CVSGIC and Venancio Sambar, without the consent and authority of private respondents and in infringement and unfair
competition, sold and advertised, and despite demands to cease and desist, continued to manufacture, sell and advertise
denim pants under the brand name "Europress" with back pockets bearing a design similar to the arcuate trademark of
private respondents, thereby causing confusion on the buying public, prejudicial to private respondents’ goodwill and
property right.
In its answer, CVSGIC admitted it manufactured, sold and advertised and was still manufacturing and selling denim pants
under the brand name of "Europress", bearing a back pocket design of two double arcs meeting in the middle. However,
it denied that there was infringement or unfair competition because the display rooms of department stores where Levi’s
and Europress jeans were sold, were distinctively segregated by billboards and other modes of advertisement. CVSGIC
avers that the public would not be confused on the ownership of such known trademark as Levi’s, Jag, Europress, etc..
Also, CVSGIC claimed that it had its own original arcuate design, as evidenced by Copyright Registration No. 1-1998, which
was very different and distinct from Levi’s design. CVSGIC prayed for actual, moral and exemplary damages by way of
counterclaim.

Petitioner Venancio Sambar filed a separate answer. He denied he was connected with CVSGIC. He admitted that
Copyright Registration No. 1-1998 was issued to him, but he denied using it. He also said he did not authorize anyone to
use the copyrighted design. He counterclaimed for moral and exemplary damages and payment of attorney’s fees.

After hearing, the trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing,
advertising and selling pants with the arcuate design on their back pockets. CVSGIC and petitioner did not appear during
the October 13 and 27, 1993 hearings, when they were to present evidence. Consequently, the trial court ruled that they
waived their right to present evidence.

On May 3, 1995, the trial court rendered its decision. The dispositive portion reads:

IN VIEW OF THE FOREGOING, judgment is hereby rendered:

a) making the writ of preliminary injunction permanent;

b) ordering the defendants CVS Garment and Industrial Company and Venancio Sambar to pay the plaintiffs jointly and
solidarily the sum of P50,000.00 as temperate and nominal damages, the sum of P10,000.00 as exemplary damages, and
the sum of P25,000.00 as attorney’s fees and litigation expenses and to pay the costs.

SO ORDERED.1

Private respondents moved for a reconsideration praying for the cancellation of petitioner’s copyright registration. The
trial court granted reconsideration in its July 14, 1995 order, thus:

IN VIEW OF THE FOREGOING, judgment is hereby rendered:

a) making the writ of preliminary injunction permanent;

b) ordering the defendants CVS Garment and Industrial Company and Venancio Sambar to pay the plaintiffs jointly and
solidarily the sum of P50,000.00 as temperate and nominal damages, the sum of P10,000.00 as exemplary damages, and
the sum of P25,000.00 as attorney’s fees and litigation expenses and to pay the costs;

c) ordering the Director of the National Library to cancel the Copyright Registration No. 1-1998 issued in the name of
Venancio Sambar.2

Petitioner appealed to the Court of Appeals which on January 30, 1998 decided in favor of private respondents as follows:

WHEREFORE, the judgment appealed from is AFFIRMED in toto.

SO ORDERED.3

In this instant petition, petitioner avers that the Court of Appeals erred in:

I. ...RULING THAT THERE WAS AN INFRINGEMENT OF RESPONDENT’S ARCUATE MARK.

II. ...RULING THAT PETITIONER IS JOINTLY AND SOLIDARILY LIABLE WITH CVS GARMENTS INDUSTRIAL CORPORATION FOR
INFRINGEMENT OF RESPONDENT’S ARCUATE MARK.

III. ...IN ORDERING, THERE BEING NO INFRINGEMENT OR UNFAIR COMPETITION, THE AWARD OF DAMAGES AND
CANCELLATION OF COPYRIGHT REGISTRATION NO. 1-1998 ISSUED IN THE NAME OF PETITIONER.4

Briefly, we are asked to resolve the following issues:

1. Did petitioner infringe on private respondents’ arcuate design?

2. Must we hold petitioner solidarily liable with CVS Garments Industrial Corporation?

3. Are private respondents entitled to nominal, temperate and exemplary damages and cancellation of petitioner’s
copyright?

On the first issue, petitioner claims that he did not infringe on private respondents’ arcuate design because there was no
colorable imitation which deceived or confused the public. He cites Emerald Garment Manufacturing Corporation vs. Court
of Appeals, G.R. No. 100098, 251 SCRA 600 (1995), as authority. He disagreed with the Court of Appeals that there were
confusing similarities between Levi’s and Europress’ arcuate designs, despite the trial court’s observation of differences
in them. Petitioner maintains that although the backpocket designs had similarities, the public was not confused because
Levi’s jeans had other marks not found in Europress jeans. Further, he says Levi’s long history and popularity made its
trademark easily identifiable by the public.

In its comment, private respondents aver that the Court of Appeals did not err in ruling that there was infringement in this
case. The backpocket design of Europress jeans, a double arc intersecting in the middle was the same as Levi’s’ mark, also
a double arc intersecting at the center. Although the trial court found differences in the two designs, these differences
were not noticeable. Further, private respondents said, infringement of trademark did not require exact similarity.
Colorable imitation enough to cause confusion among the public, was sufficient for a trademark to be infringed. Private
respondents explained that in a market research they conducted with 600 respondents, the result showed that the public
was confused by Europress trademark vis the Levi’s trademark.

We find that the first issue raised by petitioner is factual. The basic rule is that factual questions are beyond the province
of this Court in a petition for review. Although there are exceptions to this rule, this case is not one of them.5 Hence, we
find no reason to disturb the findings of the Court of Appeals that Europress’ use of the arcuate design was an infringement
of the Levi’s design.

On the second issue, petitioner claims that private respondents did not show that he was connected with CVSGIC, nor did
they prove his specific acts of infringement to make him liable for damages. Again, this is a factual matter and factual
findings of the trial court, concurred in by the Court of Appeals, are final and binding on this Court.6 Both the courts below
found that petitioner had a copyright over Europress’ arcuate design and that he consented to the use of said design by
CVSGIC. We are bound by this finding, especially in the absence of a showing that it was tainted with arbitrariness or
palpable error.7 It must be stressed that it was immaterial whether or not petitioner was connected with CVSGIC. What
is relevant is that petitioner had a copyright over the design and that he allowed the use of the same by CVSGIC.

Petitioner also contends that the Court of Appeals erred when it said that he had the burden to prove that he was not
connected with CVSGIC and that he did not authorize anyone to use his copyrighted design. According to petitioner, these
are important elements of private respondents’ cause of action against him, hence, private respondents had the ultimate
burden of proof.

Pertinent is Section 1, Rule 131 of the Rules of Court8 which provides that the burden of proof is the duty of a party to
prove the truth of his claim or defense, or any fact in issue by the amount of evidence required by law. In civil cases, the
burden of proof may be on either the plaintiff or the defendant. It is on the latter, if in his answer he alleges an affirmative
defense, which is not a denial of an essential ingredient in the plaintiff’s cause of action, but is one which, if established,
will be a good defense – i.e., an "avoidance" of the claim, which prima facie, the plaintiff already has because of the
defendant’s own admissions in the pleadings.9

Petitioner’s defense in this case was an affirmative defense.1âwphi1 He did not deny that private respondents owned the
arcuate trademark nor that CVSGIC used on its products a similar arcuate design. What he averred was that although he
owned the copyright on the Europress arcuate design, he did not allow CVSGIC to use it. He also said he was not connected
with CVSGIC. These were not alleged by private respondents in their pleadings, and petitioner therefore had the burden
to prove these.

Lastly, are private respondents entitled to nominal, temperate and exemplary damages and cancellation of petitioner’s
copyright?

Petitioner insists that he had not infringed on the arcuate trademark, hence, there was no basis for nominal and temperate
damages. Also, an award of nominal damages precludes an award of temperate damages. He cites Ventanilla vs. Centeno,
G.R. No. L-14333, 1 SCRA 215 (1961) on this. Thus, he contends, assuming arguendo that there was infringement, the
Court of Appeals still erred in awarding both nominal and temperate damages.

Petitioner likewise said that the grant of exemplary damages was inconsistent with the trial court’s finding that the design
of Europress jeans was not similar to Levi’s design and that no pecuniary loss was suffered by respondents to entitle them
to such damages.

Lastly, petitioner maintains that as Europress’ arcuate design is not a copy of that of Levi’s, citing the trial court’s findings
that although there are similarities, there are also differences in the two designs, cancellation of his copyright was not
justified.

On this matter, private respondents assert that the lower courts found that there was infringement and Levi’s was entitled
to damages based on Sections 22 and 23 of RA No. 166 otherwise known as the Trade Mark Law,10 as amended, which
was the law then governing. Said sections define infringement and prescribe the remedies therefor. Further, private
respondents aver it was misleading for petitioner to claim that the trial court ruled that private respondents did not suffer
pecuniary loss, suggesting that the award of damages was improper. According to the private respondents, the trial court
did not make any such ruling. It simply stated that there was no evidence that Levi’s had suffered decline in its sales
because of the use of the arcuate design by Europress jeans. They offer that while there may be no direct proof that they
suffered a decline in sales, damages may still be measured based on a reasonable percentage of the gross sales of the
respondents, pursuant to Section 23 of the Trademark law.11

Finally, regarding the cancellation of petitioner’s copyright, private respondents deny that the trial court ruled that the
arcuate design of Europress jeans was not the same as Levi’s arcuate design jeans. On the contrary, the trial court expressly
ruled that there was similarity. The cancellation of petitioner’s copyright was justified because petitioner’s copyright can
not prevail over respondents’ registration in the Principal Register of Bureau of Patents, Trademarks, and Technology
Transfer. According to private respondents, the essence of copyright registration is originality and a copied design is
inherently non-copyrightable. They insist that registration does not confer originality upon a copycat version of a prior
design.

From the foregoing discussion, it is clear that the matters raised by petitioner in relation to the last issue are purely factual,
except the matter of nominal and temperate damages. Petitioner claims that damages are not due private respondents
and his copyright should not be cancelled because he had not infringed on Levi’s trademark. Both the trial court and the
Court of Appeals found there was infringement. Thus, the award of damages and cancellation of petitioner’s copyright are
appropriate.12 Award of damages is clearly provided in Section 23,13 while cancellation of petitioner’s copyright finds
basis on the fact that the design was a mere copy of that of private respondents’ trademark.1âwphi1 To be entitled to
copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment,
without directly copying or evasively imitating the work of another.14
However, we agree with petitioner that it was error for the Court of Appeals to affirm the award of nominal damages
combined with temperate damages15 by the Regional Trial Court of Makati. What respondents are entitled to is an award
for temperate damages, not nominal damages. For although the exact amount of damage or loss can not be determined
with reasonable certainty, the fact that there was infringement means they suffered losses for which they are entitled to
moderate damages.16 We find that the award of ₱50,000.00 as temperate damages fair and reasonable, considering the
circumstances herein as well as the global coverage and reputation of private respondents Levi Strauss & Company and
Levi Strauss (Phil.), Inc.

WHEREFORE, the decision dated January 30, 1998, of the Court of Appeals, in CA-G.R. CV No. 51553 AFFIRMING the
judgment of the Regional Trial Court of Makati, Branch 66, dated July 14, 1995, is hereby MODIFIED so that nominal
damages are deleted but the amount of P50,000 is hereby awarded only as TEMPERATE DAMAGES. In all other respects,
said judgment is hereby AFFIRMED, to wit:

a) the writ of preliminary injunction is made permanent;

b) the defendants CVS Garment and Industrial Company and Venancio Sambar are ordered also to pay the plaintiffs jointly
and solidarily the sum of ₱10,000.00 as exemplary damages, and the sum of ₱25,000.00 as attorney’s fees and litigation
expenses, and to pay the costs; and

c) the Director of the National Library is ordered to cancel the Copyright Registration No. 1-1998 issued in the name of
Venancio Sambar.

SO ORDERED.
G.R. No. 161295 June 29, 2005

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. YABUT (Board of Directors and Officers of WILAWARE PRODUCT CORPORATION),
respondents.

DECISION

CALLEJO, SR., J.:

This petition for review on certiorari assails the Decision1 and Resolution2 of the Court of Appeals (CA) in CA-G.R. SP No.
70411 affirming the January 3, 2002 and February 14, 2002 Orders3 of the Regional Trial Court (RTC) of Manila, Branch 1,
which quashed and set aside Search Warrant Nos. 01-2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a Utility
Model, described as "Leaf Spring Eye Bushing for Automobile" made up of plastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright Registration and
Deposit of the said work described therein as "Leaf Spring Eye Bushing for Automobile."4

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for police/investigative assistance for
the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works.5

After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William Salinas, Sr. and
the officers and members of the Board of Directors of Wilaware Product Corporation. It was alleged that the respondents
therein reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No.
8293. The applications sought the seizure of the following:

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of plastic polypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up of polyvinyl chloride plastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chloride plastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in the manufacture/fabrication of items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts.6

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the seizure of the aforecited
articles.7 In the inventory submitted by the NBI agent, it appears that the following articles/items were seized based on
the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene

- C190 27 }

- C240 rear 40 }

- C240 front 41 } BAG 1

b) Polyvinyl Chloride Plastic

- C190 13 }

c) Vehicle bearing cushion

- center bearing cushion 11 }

Budder for C190 mold 8 }

Diesel Mold

a) Mold for spring eye bushing rear 1 set

b) Mold for spring eye bushing front 1 set

c) Mold for spring eye bushing for C190 1 set

d) Mold for C240 rear 1 piece of the set

e) Mold for spring eye bushing for L300 2 sets

f) Mold for leaf spring eye bushing C190 with metal 1 set

g) Mold for vehicle bearing cushion 1 set8

The respondents filed a motion to quash the search warrants on the following grounds:

2. The copyright registrations were issued in violation of the Intellectual Property Code on the ground that:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaning – there (sic) are original parts that they
are designed to replace. Hence, they are not original.9

The respondents averred that the works covered by the certificates issued by the National Library are not artistic in nature;
they are considered automotive spare parts and pertain to technology. They aver that the models are not original, and as
such are the proper subject of a patent, not copyright.10

In opposing the motion, the petitioner averred that the court which issued the search warrants was not the proper forum
in which to articulate the issue of the validity of the copyrights issued to him. Citing the ruling of the Court in Malaloan v.
Court of Appeals,11 the petitioner stated that a search warrant is merely a judicial process designed by the Rules of Court
in anticipation of a criminal case. Until his copyright was nullified in a proper proceeding, he enjoys rights of a registered
owner/holder thereof.

On January 3, 2002, the trial court issued an Order12 granting the motion, and quashed the search warrant on its finding
that there was no probable cause for its issuance. The court ruled that the work covered by the certificates issued to the
petitioner pertained to solutions to technical problems, not literary and artistic as provided in Article 172 of the Intellectual
Property Code.

His motion for reconsideration of the order having been denied by the trial court’s Order of February 14, 2002, the
petitioner filed a petition for certiorari in the CA, contending that the RTC had no jurisdiction to delve into and resolve the
validity of the copyright certificates issued to him by the National Library. He insisted that his works are covered by
Sections 172.1 and 172.2 of the Intellectual Property Code. The petitioner averred that the copyright certificates are prima
facie evidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife Express Corporation v. Carol
Wright Sales, Inc.13 The petitioner asserted that the respondents failed to adduce evidence to support their motion to
quash the search warrants. The petitioner noted that respondent William Salinas, Jr. was not being honest, as he was able
to secure a similar copyright registration of a similar product from the National Library on January 14, 2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that the RTC did not commit any
grave abuse of its discretion in issuing the assailed order, to wit:

It is settled that preliminarily, there must be a finding that a specific offense must have been committed to justify the
issuance of a search warrant. In a number of cases decided by the Supreme Court, the same is explicitly provided, thus:

"The probable cause must be in connection with one specific offense, and the judge must, before issuing the warrant,
personally examine in the form of searching questions and answers, in writing and under oath, the complainant and any
witness he may produce, on facts personally known to them and attach to the record their sworn statements together
with any affidavit submitted.

"In the determination of probable cause, the court must necessarily resolve whether or not an offense exists to justify the
issuance or quashal of the search warrant."

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, but subsequently
quashed, for the offense of Violation of Class Designation of Copyrightable Works under Section 177.1 in relation to
Section 177.3 of Republic Act 8293, when the objects subject of the same, are patently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works (Sec. 172) and
derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion fall on neither classification.
Accordingly, if, in the first place, the item subject of the petition is not entitled to be protected by the law on copyright,
how can there be any violation?14

The petitioner’s motion for reconsideration of the said decision suffered the same fate. The petitioner forthwith filed the
present petition for review on certiorari, contending that the revocation of his copyright certificates should be raised in a
direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumenti that the trial court may resolve the validity of his copyright in a
proceeding to quash a search warrant for allegedly infringing items, the RTC committed a grave abuse of its discretion
when it declared that his works are not copyrightable in the first place. He claims that R.A. No. 8293, otherwise known as
the Intellectual Property Code of the Philippines, which took effect on January 1, 1998, provides in no uncertain terms
that copyright protection automatically attaches to a work by the sole fact of its creation, irrespective of its mode or form
of expression, as well as of its content, quality or purpose.15 The law gives a non-inclusive definition of "work" as referring
to original intellectual creations in the literary and artistic domain protected from the moment of their creation; and
includes original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial
design and other works of applied art under Section 172.1(h) of R.A. No. 8293.lawphil.net

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/or artistic, the said
law, likewise, encompasses works which may have a bearing on the utility aspect to which the petitioner’s utility designs
were classified. Moreover, according to the petitioner, what the Copyright Law protects is the author’s intellectual
creation, regardless of whether it is one with utilitarian functions or incorporated in a useful article produced on an
industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry of an article eligible
for patent bars or invalidates its registration under the Law on Copyright. The test of protection for the aesthetic is not
beauty and utility, but art for the copyright and invention of original and ornamental design for design patents.16 In like
manner, the fact that his utility designs or models for articles of manufacture have been expressed in the field of
automotive parts, or based on something already in the public domain does not automatically remove them from the
protection of the Law on Copyright.17

The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the same presumption to an affidavit
executed by an author who claims copyright ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search warrant means merely a reasonable
suspicion of the commission of the offense. It is not equivalent to absolute certainty or a finding of actual and positive
cause.18 He assists that the determination of probable cause does not concern the issue of whether or not the alleged
work is copyrightable. He maintains that to justify a finding of probable cause in the issuance of a search warrant, it is
enough that there exists a reasonable suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright is valid; hence, the
burden of overturning this presumption is on the alleged infringers, the respondents herein. But this burden cannot be
carried in a hearing on a proceeding to quash the search warrants, as the issue therein is whether there was probable
cause for the issuance of the search warrant. The petitioner concludes that the issue of probable cause should be resolved
without invalidating his copyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially a technical solution
to the problem of wear and tear in automobiles, the substitution of materials, i.e., from rubber to plastic matter of
polyvinyl chloride, an oil resistant soft texture plastic material strong enough to endure pressure brought about by the
vibration of the counter bearing and thus brings bushings. Such work, the respondents assert, is the subject of copyright
under Section 172.1 of R.A. No. 8293. The respondents posit that a technical solution in any field of human activity which
is novel may be the subject of a patent, and not of a copyright. They insist that the certificates issued by the National
Library are only certifications that, at a point in time, a certain work was deposited in the said office. Furthermore, the
registration of copyrights does not provide for automatic protection. Citing Section 218.2(b) of R.A. No. 8293, the
respondents aver that no copyright is said to exist if a party categorically questions its existence and legality. Moreover,
under Section 2, Rule 7 of the Implementing Rules of R.A. No. 8293, the registration and deposit of work is not conclusive
as to copyright outlay or the time of copyright or the right of the copyright owner. The respondents maintain that a
copyright exists only when the work is covered by the protection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models are copyrightable and,
if so, whether he is the owner of a copyright over the said models. It bears stressing that upon the filing of the application
for search warrant, the RTC was duty-bound to determine whether probable cause existed, in accordance with Section 4,
Rule 126 of the Rules of Criminal Procedure:

SEC. 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.

In Solid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19 the Court held that in the determination of probable
cause, the court must necessarily resolve whether or not an offense exists to justify the issuance of a search warrant or
the quashal of one already issued by the court. Indeed, probable cause is deemed to exist only where facts and
circumstances exist which could lead a reasonably cautious and prudent man to believe that an offense has been
committed or is being committed. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrant may
be issued for the search and seizure of personal property (a) subject of the offense; (b) stolen or embezzled and other
proceeds or fruits of the offense; or (c) used or intended to be used as the means of committing an offense.
The RTC is mandated under the Constitution and Rules of Criminal Procedure to determine probable cause. The court
cannot abdicate its constitutional obligation by refusing to determine whether an offense has been committed.20 The
absence of probable cause will cause the outright nullification of the search warrant.21

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in an application is
committed, the petitioner-applicant was burdened to prove that (a) respondents Jessie Ching and Joseph Yu were the
owners of copyrighted material; and (b) the copyrighted material was being copied and distributed by the respondents.
Thus, the ownership of a valid copyright is essential.22

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originality is meant that the
material was not copied, and evidences at least minimal creativity; that it was independently created by the author and
that it possesses at least same minimal degree of creativity.23 Copying is shown by proof of access to copyrighted material
and substantial similarity between the two works.24 The applicant must thus demonstrate the existence and the validity
of his copyright because in the absence of copyright protection, even original creation may be freely copied.25

By requesting the NBI to investigate and, if feasible, file an application for a search warrant for infringement under R.A.
No. 8293 against the respondents, the petitioner thereby authorized the RTC (in resolving the application), to delve into
and determine the validity of the copyright which he claimed he had over the utility models. The petitioner cannot seek
relief from the RTC based on his claim that he was the copyright owner over the utility models and, at the same time,
repudiate the court’s jurisdiction to ascertain the validity of his claim without running afoul to the doctrine of estoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work or, in its absence,
other evidence.26 A copyright certificate provides prima facie evidence of originality which is one element of copyright
validity. It constitutes prima facie evidence of both validity and ownership27 and the validity of the facts stated in the
certificate.28 The presumption of validity to a certificate of copyright registration merely orders the burden of proof. The
applicant should not ordinarily be forced, in the first instance, to prove all the multiple facts that underline the validity of
the copyright unless the respondent, effectively challenging them, shifts the burden of doing so to the applicant.29 Indeed,
Section 218.2 of R.A. No. 8293 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.

A certificate of registration creates no rebuttable presumption of copyright validity where other evidence in the record
casts doubt on the question. In such a case, validity will not be presumed.30

To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A. No. 8293, the
petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos. 2001-197 and 2001-204 dated
September 3, 2001 and September 4, 2001, respectively, issued by the National Library covering work identified as Leaf
Spring Eye Bushing for Automobile and Vehicle Bearing Cushion both classified under Section 172.1(h) of R.A. No. 8293,
to wit:

SEC. 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.

Related to the provision is Section 171.10, which provides that a "work of applied art" is an artistic creation with utilitarian
functions or incorporated in a useful article, whether made by hand or produced on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed by the petitioner, the
said Leaf Spring Eye Bushing for Automobile is merely a utility model described as comprising a generally cylindrical body
having a co-axial bore that is centrally located and provided with a perpendicular flange on one of its ends and a cylindrical
metal jacket surrounding the peripheral walls of said body, with the bushing made of plastic that is either polyvinyl chloride
or polypropylene.31 Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion comprising a generally semi-
circular body having a central hole to secure a conventional bearing and a plurality of ridges provided therefore, with said
cushion bearing being made of the same plastic materials.32 Plainly, these are not literary or artistic works. They are not
intellectual creations in the literary and artistic domain, or works of applied art. They are certainly not ornamental designs
or one having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its marketability. The central
inquiry is whether the article is a work of art.33 Works for applied art include all original pictorials, graphics, and sculptural
works that are intended to be or have been embodied in useful article regardless of factors such as mass production,
commercial exploitation, and the potential availability of design patent protection.34

As gleaned from the description of the models and their objectives, these articles are useful articles which are defined as
one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey
information. Indeed, while works of applied art, original intellectual, literary and artistic works are copyrightable, useful
articles and works of industrial design are not.35 A useful article may be copyrightable only if and only to the extent that
such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable
of existing independently of the utilitarian aspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that the author’s intellectual
creation, regardless of whether it is a creation with utilitarian functions or incorporated in a useful article produced on an
industrial scale, is protected by copyright law. However, the law refers to a "work of applied art which is an artistic
creation." It bears stressing that there is no copyright protection for works of applied art or industrial design which have
aesthetic or artistic features that cannot be identified separately from the utilitarian aspects of the article.36 Functional
components of useful articles, no matter how artistically designed, have generally been denied copyright protection unless
they are separable from the useful article.37

In this case, the petitioner’s models are not works of applied art, nor artistic works. They are utility models, useful articles,
albeit with no artistic design or value. Thus, the petitioner described the utility model as follows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hard rubber. These rubber
bushings after a time, upon subjecting them to so much or intermittent pressure would eventually wore (sic) out that
would cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing for automobile that is made up
of plastic.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made of polyvinyl chloride, an
oil resistant soft texture plastic or polypropylene, a hard plastic, yet both causes cushion to the leaf spring, yet strong
enough to endure pressure brought about by the up and down movement of said leaf spring.
Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a much longer life span
than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has a very simple
construction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that is supplied with a metal
jacket to reinforce the plastic eye bushing when in engaged with the steel material of the leaf spring.

These and other objects and advantages will come to view and be understood upon a reading of the detailed description
when taken in conjunction with the accompanying drawings.

Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utility model;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and

Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designated same parts throughout,
there is shown a utility model for a leaf-spring eye bushing for automobile generally designated as reference numeral 10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12 centrally provided
thereof.

As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange 13 on one of its ends and
a cylindrical metal jacket 14 surrounding the peripheral walls 15 of said body 11. When said leaf-spring bushing 10 is
installed, the metal jacket 14 acts with the leaf-spring eye (not shown), which is also made of steel or cast steel. In effect,
the bushing 10 will not be directly in contact with steel, but rather the metal jacket, making the life of the bushing 10
longer than those without the metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistant soft texture plastic
or a hard polypropylene plastic, both are capable to endure the pressure applied thereto, and, in effect, would lengthen
the life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 is insertably provided with a
steel tube 17 to reinforce the inner portion thereof. This steel tube 17 accommodates or engages with the leaf-spring bolt
(not shown) connecting the leaf spring and the automobile’s chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated and cylindrical as to its
construction. Said another embodiment is also made of polypropylene or polyvinyl chloride plastic material. The steel
tube 17 and metal jacket 14 may also be applied to this embodiment as an option thereof.38

VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hard rubber. These rubber
bushings after a time, upon subjecting them to so much or intermittent pressure would eventually be worn out that would
cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is made up of plastic.
Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride, an oil resistant soft
texture plastic material which causes cushion to the propeller’s center bearing, yet strong enough to endure pressure
brought about by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer life span than rubber
bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simple construction and can be
made using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of the detailed description
when taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Figure 2 is a sectional view thereof.

Referring now to the several views of the drawing, wherein like reference numeral designate same parts throughout, there
is shown a utility model for a vehicle-bearing cushion generally designated as reference numeral 10.

Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 to house a conventional
bearing (not shown). As shown in Figure 1, said body 11 is provided with a plurality of ridges 13 which serves reinforcing
means thereof.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistant plastic material which
is strong, durable and capable of enduring severe pressure from the center bearing brought about by the rotating
movement of the propeller shaft of the vehicle.39

A utility model is a technical solution to a problem in any field of human activity which is new and industrially applicable.
It may be, or may relate to, a product, or process, or an improvement of any of the aforesaid.40 Essentially, a utility model
refers to an invention in the mechanical field. This is the reason why its object is sometimes described as a device or useful
object.41 A utility model varies from an invention, for which a patent for invention is, likewise, available, on at least three
aspects: first, the requisite of "inventive step"42 in a patent for invention is not required; second, the maximum term of
protection is only seven years43 compared to a patent which is twenty years,44 both reckoned from the date of the
application; and third, the provisions on utility model dispense with its substantive examination45 and prefer for a less
complicated system.

Being plain automotive spare parts that must conform to the original structural design of the components they seek to
replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack the decorative quality or
value that must characterize authentic works of applied art. They are not even artistic creations with incidental utilitarian
functions or works incorporated in a useful article. In actuality, the personal properties described in the search warrants
are mechanical works, the principal function of which is utility sans any aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included in the catch-all phrase
"other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A. No. 8293. Applying the principle of
ejusdem generis which states that "where a statute describes things of a particular class or kind accompanied by words of
a generic character, the generic word will usually be limited to things of a similar nature with those particularly
enumerated, unless there be something in the context of the state which would repel such inference,"46 the Leaf Spring
Eye Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and nature as the works
enumerated in Section 172 of R.A. No. 8293.
No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of the certificates of
copyright registration and the deposit of the Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr.
v. Drilon47 and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated,48 the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute,
and not simply a pre-existing right regulated by it. Being a statutory grant, the rights are only such as the statute confers,
and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions
specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to the issuance of a search
warrant for violation of copyright laws. In Kho v. Court of Appeals49 and Pearl & Dean (Phil.), Incorporated v. Shoemart,
Incorporated,50 the Court ruled that "these copyright and patent rights are completely distinct and separate from one
another, and the protection afforded by one cannot be used interchangeably to cover items or works that exclusively
pertain to the others." The Court expounded further, thus:

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and
artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of
their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.

The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein51 to buttress his
petition. In that case, the artifacts involved in that case were statuettes of dancing male and female figures made of semi-
vitreous china. The controversy therein centered on the fact that although copyrighted as "works of art," the statuettes
were intended for use and used as bases for table lamps, with electric wiring, sockets and lampshades attached. The issue
raised was whether the statuettes were copyright protected in the United States, considering that the copyright applicant
intended primarily to use them as lamp bases to be made and sold in quantity, and carried such intentions into effect. At
that time, the Copyright Office interpreted the 1909 Copyright Act to cover works of artistic craftsmanship insofar as their
form, but not the utilitarian aspects, were concerned. After reviewing the history and intent of the US Congress on its
copyright legislation and the interpretation of the copyright office, the US Supreme Court declared that the statuettes
were held copyrightable works of art or models or designs for works of art. The High Court ruled that:

"Works of art (Class G) – (a) – In General. This class includes works of artistic craftsmanship, in so far as their form but not
their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well
as all works belonging to the fine arts, such as paintings, drawings and sculpture. …"

So we have a contemporaneous and long-continued construction of the statutes by the agency charged to administer
them that would allow the registration of such a statuette as is in question here.52

The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty and utility but art for
the copyright and the invention of original and ornamental design for design patents." Significantly, the copyright office
promulgated a rule to implement Mazer to wit:

… [I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique and attractively shaped will not
qualify it as a work of art."

In this case, the bushing and cushion are not works of art. They are, as the petitioner himself admitted, utility models
which may be the subject of a patent.
IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The assailed Decision and
Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED. Search Warrant Nos. 01-2401 and 01-2402
issued on October 15, 2001 are ANNULLED AND SET ASIDE. Costs against the petitioner.

SO ORDERED.
G.R. No. 165306 September 20, 2005

MANLY SPORTWEAR MANUFACTURING, INC., Petitioners,

vs.
DADODETTE ENTERPRISES AND/OR HERMES SPORTS CENTER, Respondent.

DECISION

YNARES-SANTIAGO, J.:

This petition for review on certiorari1 under Rule 45 of the Revised Rules of Civil Procedure assails the July 13, 2004
decision2 of the Court of Appeals3 in CA-G.R. SP No. 79887 and its September 15, 2004 resolution4 denying
reconsideration thereof.

The facts are as follows:

On March 14, 2003, Special Investigator Eliezer P. Salcedo of the National Bureau of Investigation (NBI) applied for a search
warrant before the Regional Trial Court (RTC) of Quezon City, based on the information that Dadodette Enterprises and/or
Hermes Sports Center were in possession of goods, the copyright of which belonged to Manly Sportswear Mfg., Inc.
(MANLY).5

After finding reasonable grounds that a violation of Sections 172 and 217 of Republic Act (RA) No. 82936 has been
committed, Judge Estrella T. Estrada of RTC-Quezon City, Branch 83, issued on March 17, 2003 Search Warrant No.
4044(03).7

Respondents thereafter moved to quash and annul the search warrant contending that the same is invalid since the
requisites for its issuance have not been complied with. They insisted that the sporting goods manufactured by and/or
registered in the name of MANLY are ordinary and common hence, not among the classes of work protected under Section
172 of RA 8293.

On June 10, 2003, the trial court granted the motion to quash and declared Search Warrant No. 4044(03) null and void
based on its finding that the copyrighted products of MANLY do not appear to be original creations and were being
manufactured and distributed by different companies locally and abroad under various brands, and therefore unqualified
for protection under Section 172 of RA 8293. Moreover, MANLY’s certificates of registrations were issued only in 2002,
whereas there were certificates of registrations for the same sports articles which were issued earlier than MANLY’s, thus
further negating the claim that its copyrighted products were original creations.8

On August 11, 2003, the trial court denied9 MANLY’s motion for reconsideration. Hence it filed a petition for certiorari10
before the Court of Appeals which was denied for lack of merit. The appellate court found that the trial court correctly
granted the motion to quash and that its ruling in the ancillary proceeding did not preempt the findings of the intellectual
property court as it did not resolve with finality the status or character of the seized items.

After denial of its motion for reconsideration on September 15, 2004, MANLY filed the instant petition for review on
certiorari raising the sole issue of whether or not the Court of Appeals erred in finding that the trial court did not gravely
abuse its discretion in declaring in the hearing for the quashal of the search warrant that the copyrighted products of
MANLY are not original creations subject to the protection of RA 8293.

We deny the petition.

The power to issue search warrants is exclusively vested with the trial judges in the exercise of their judicial function.11
As such, the power to quash the same also rests solely with them. After the judge has issued a warrant, he is not precluded
to subsequently quash the same, if he finds upon reevaluation of the evidence that no probable cause exists.
Our ruling in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 9312 is instructive, thus:

Inherent in the courts’ power to issue search warrants is the power to quash warrants already issued. In this connection,
this Court has ruled that the motion to quash should be filed in the court that issued the warrant unless a criminal case
has already been instituted in another court, in which case, the motion should be filed with the latter. The ruling has since
been incorporated in Rule 126 of the Revised Rules of Criminal Procedure[.]

In the instant case, we find that the trial court did not abuse its discretion when it entertained the motion to quash
considering that no criminal action has yet been instituted when it was filed. The trial court also properly quashed the
search warrant it earlier issued after finding upon reevaluation of the evidence that no probable cause exists to justify its
issuance in the first place. As ruled by the trial court, the copyrighted products do not appear to be original creations of
MANLY and are not among the classes of work enumerated under Section 172 of RA 8293. The trial court, thus, may not
be faulted for overturning its initial assessment that there was probable cause in view of its inherent power to issue search
warrants and to quash the same. No objection may be validly posed to an order quashing a warrant already issued as the
court must be provided with the opportunity to correct itself of an error unwittingly committed, or, with like effect, to
allow the aggrieved party the chance to convince the court that its ruling is erroneous.

Moreover, the trial court was acting within bounds when it ruled, in an ancillary proceeding, that the copyrighted products
of petitioner are not original creations. This is because in the determination of the existence of probable cause for the
issuance or quashal of a warrant, it is inevitable that the court may touch on issues properly threshed out in a regular
proceeding. In so doing, it does not usurp the power of, much less preclude, the court from making a final judicial
determination of the issues in a full-blown trial. Consequently, MANLY’s assertion that the trial court’s order quashing the
warrant preempted the finding of the intellectual property court has no legal basis.

As pertinently held in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93:13

When the court, in determining probable cause for issuing or quashing a search warrant, finds that no offense has been
committed, it does not interfere with or encroach upon the proceedings in the preliminary investigation. The court does
not oblige the investigating officer not to file an information for the court’s ruling that no crime exists is only for purposes
of issuing or quashing the warrant. This does not, as petitioners would like to believe, constitute a usurpation of the
executive function. Indeed, to shirk from this duty would amount to an abdication of a constitutional obligation.

...

... The finding by the court that no crime exists does not preclude the authorized officer conducting the preliminary
investigation from making his own determination that a crime has been committed and that probable cause exists for
purposes of filing the information.

As correctly observed by the Court of Appeals, the trial court’s finding that the seized products are not copyrightable was
merely preliminary as it did not finally and permanently adjudicate on the status and character of the seized items. MANLY
could still file a separate copyright infringement suit against the respondents because the order for the issuance or quashal
of a warrant is not res judicata.

Thus, in Vlasons Enterprises Corporation v. Court of Appeals14 we held that:

The proceeding for the seizure of property in virtue of a search warrant does not end with the actual taking of the property
by the proper officers and its delivery, usually constructive, to the court. The order for the issuance of the warrant is not
a final one and cannot constitute res judicata. Such an order does not ascertain and adjudicate the permanent status or
character of the seized property. By its very nature, it is provisional, interlocutory. It is merely the first step in the process
to determine the character and title of the property. That determination is done in the criminal action involving the crime
or crimes in connection with which the search warrant was issued. Hence, such a criminal action should be prosecuted, or
commenced if not yet instituted, and prosecuted. The outcome of the criminal action will dictate the disposition of the
seized property…
We have also ruled in Ching v. Salinas, Sr., et al.15 that:

The RTC had jurisdiction to delve into and resolve the issue whether the petitioner’s utility models are copyrightable and,
if so, whether he is the owner of a copyright over the said models. It bears stressing that upon the filing of the application
for search warrant, the RTC was duty-bound to determine whether probable cause existed, in accordance with Section 4,
Rule 126 of the Rules of Criminal Procedure[.]

Further, the copyright certificates issued in favor of MANLY constitute merely prima facie evidence of validity and
ownership. However, no presumption of validity is created where other evidence exist that may cast doubt on the
copyright validity. Hence, where there is sufficient proof that the copyrighted products are not original creations but are
readily available in the market under various brands, as in this case, validity and originality will not be presumed and the
trial court may properly quash the issued warrant for lack of probable cause.

Besides, no copyright accrues in favor of MANLY despite issuance of the certificates of registration and deposit16 pursuant
to Section 2, Rule 7 of the Copyrights Safeguards and Regulations17 which states:

Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the work is purely for recording the
date of registration and deposit of the work and shall not be conclusive as to copyright ownership or the term of the
copyrights or the rights of the copyright owner, including neighboring rights.

At most, the certificates of registration and deposit issued by the National Library and the Supreme Court Library serve
merely as a notice of recording and registration of the work but do not confer any right or title upon the registered
copyright owner or automatically put his work under the protective mantle of the copyright law. It is not a conclusive
proof of copyright ownership. As it is, non-registration and deposit of the work within the prescribed period only makes
the copyright owner liable to pay a fine.18

WHEREFORE, the petition is DENIED. The July 13, 2004 decision of the Court of Appeals in CA-G.R. SP No. 79887 and
resolution dated September 15, 2004, are AFFIRMED.

SO ORDERED.
G.R. No. 119280 August 10, 2006

UNILEVER PHILIPPINES (PRC), INC., Petitioner,

vs.
THE HONORABLE COURT OF APPEALS and PROCTER AND GAMBLE PHILIPPINES, INC., Respondents.

DECISION

CORONA, J.:

In this petition for review under Rule 45 of the Rules of Court, petitioner assails the February 24, 1995 decision 1 of the
Court of Appeals (CA) in CA-G.R. SP No. 35242 entitled "Unilever Philippines (PRC), Inc. v. Honorable Fernando V. Gorospe,
Jr. and Procter and Gamble Philippines, Inc. (P&GP)" which affirmed the issuance by the court a quo of a writ of preliminary
injunction against it. The writ enjoined petitioner from using and airing, until further orders of the court, certain television
commercials for its laundry products claimed to be identical or similar to its "double tug" or "tac-tac" key visual. 2

Petitioner alleges that the writ of preliminary injunction was issued by the trial court (and affirmed by the CA) without any
evidence of private respondent’s clear and unmistakable right to the writ. Petitioner further contends that the preliminary
injunction issued against it already disposed of the main case without trial, thus denying petitioner of any opportunity to
present evidence on its behalf.

The antecedents show that on August 24, 1994, private respondent Procter and Gamble Phils., Inc. filed a complaint for
injunction with damages and a prayer for temporary restraining order and/or writ of preliminary injunction against
petitioner Unilever, alleging that:

1.5. As early as 1982, a P&G subsidiary in Italy used a key visual in the advertisement of its laundry detergent and bleaching
products. This key visual known as the "double-tug" or "tac-tac" demonstration shows the fabric being held by both hands
and stretched sideways.

1.6. The "tac-tac" was conceptualized for P&G by the advertising agency Milano and Gray of Italy in 1982. The "tac-tac"
was used in the same year in an advertisement entitled "All aperto" to demonstrate the effect on fabrics of one of P&GP’s
products, a liquid bleach called "Ace."

xxxxxxxxx

1.7. Since then, P&G has used the "tac-tac" key visual in the advertisement of its products. In fact, in 1986, in Italy, the
"tac-tac" key visual was used in the television commercial for "Ace" entitled "Kite."

1.8. P&G has used the same distinctive "tac-tac" key visual to local consumers in the Philippines.

xxxxxxxxx

1.10. Substantially and materially imitating the aforesaid "tac-tac" key visual of P&GP and in blatant disregard of P&GP’s
intellectual property rights, Unilever on 24 July 1993 started airing a 60 second television commercial "TVC" of its "Breeze
Powerwhite" laundry product called "Porky." The said TVC included a stretching visual presentation and sound effects
almost [identical] or substantially similar to P&GP’s "tac-tac" key visual.

xxxxxxxxx

1.14. On July 15, 1994, P&GP aired in the Philippines, the same "Kite" television advertisement it used in Italy in 1986,
merely dubbing the Italian language with Filipino for the same produce "Ace" bleaching liquid which P&GP now markets
in the Philippines.
1.15. On August 1, 1994, Unilever filed a Complaint with the Advertising Board of the Philippines to prevent P&GP from
airing the "Kite" television advertisement. 3

On August 26, 1994, Judge Gorospe issued an order granting a temporary restraining order and setting it for hearing on
September 2, 1994 for Unilever to show cause why the writ of preliminary injunction should not issue. During the hearing
on September 2, 1994, P&GP received Unilever’s answer with opposition to preliminary injunction. P&GP filed its reply to
Unilever’s opposition to a preliminary injunction on September 6, 1994.

During the hearing on September 9, 1994, Judge Gorospe ordered petitioner to submit a sur-rejoinder. P&GP received
Unilever’s rejoinder to reply on September 13, 1994. The following day, on September 14, 1994, P&GP filed its sur-reply
to Unilever’s rejoinder.

On September 19, 1994, P&GP received a copy of the order dated September 16, 1994 ordering the issuance of a writ of
preliminary injunction and fixing a bond of P100,000. On the same date, P&GP filed the required bond issued by Prudential
Guarantee and Assurance, Inc.

On September 21, 1994, petitioner appealed to the CA assigning the following errors allegedly committed by the court a
quo, to wit:

PUBLIC RESPONDENT HAD ACTED WITHOUT OR IN EXCESS OF JURISDICTION AND WITH GRAVE ABUSE OF DISCRETION
AMOUNTING TO LACK OF JURISDICTION IN ISSUING THE WRIT OF PRELIMINARY INJUNCTION IN VIOLATION OF THE RULES
ON EVIDENCE AND PROCEDURE, PARTICULARLY OF SEC. 3 (a), RULE 58 OF THE REVISED RULES OF COURT AND OF THE
PREVAILING JURISPRUDENCE.

PUBLIC RESPONDENT IN ISSUING THE VOID ORDER DATED SEPTEMBER 16, 1994, HAD, IN EFFECT, ALREADY PREJUDGED
THE MERITS OF THE MAIN CASE.

PUBLIC RESPONDENT HAD ISSUED THE VOID ORDER ACCORDING RELIEF TO A NON-PARTY IN CIVIL CASE NO. 94-2434
WITHOUT JURISDICTION.

PUBLIC RESPONDENT IN ISSUING THE VOID ORDER HAD DEPRIVED PETITIONER OF SUBSTANTIVE AND PROCEDURAL DUE
PROCESS; PUBLIC RESPONDENT HAD FORECLOSED PETITIONER’S RIGHT AND THE OPPORTUNITY TO CROSS-EXAMINE
PROCTER’S WITNESSES ABAD AND HERBOSA. 4

On February 24, 1995, the CA rendered its decision finding that Judge Gorospe did not act with grave abuse of discretion
in issuing the disputed order. The petition for certiorari was thus dismissed for lack of merit.

After a careful perusal of the records, we agree with the CA and affirm its decision in toto:

Petitioner does not deny that the questioned TV advertisements are substantially similar to P&GP’s "double tug" or "tac-
tac" key visual. However, it submits that P&GP is not entitled to the relief demanded, which is to enjoin petitioner from
airing said TV advertisements, for the reason that petitioner has Certificates of Copyright Registration for which
advertisements while P&GP has none with respect to its "double-tug" or "tac-tac" key visual. In other words, it is
petitioner’s contention that P&GP is not entitled to any protection because it has not registered with the National Library
the very TV commercials which it claims have been infringed by petitioner.

We disagree. Section 2 of PD 49 stipulates that the copyright for a work or intellectual creation subsists from the moment
of its creation. Accordingly, the creator acquires copyright for his work right upon its creation.… Contrary to petitioner’s
contention, the intellectual creator’s exercise and enjoyment of copyright for his work and the protection given by law to
him is not contingent or dependent on any formality or registration. Therefore, taking the material allegations of
paragraphs 1.3 to 1.5 of P&GP’s verified Complaint in the context of PD 49, it cannot be seriously doubted that at least,
for purposes of determining whether preliminary injunction should issue during the pendency of the case, P&GP is entitled
to the injunctive relief prayed for in its Complaint.
The second ground is likewise not well-taken. As adverted to earlier, the provisional remedy of preliminary injunction will
not issue unless it is shown in the verified complaint that plaintiff is probably entitled to the relief demanded, which
consists in whole or in part in restraining the commission or continuance of the acts complained of. In view of such
requirement, the court has to make a tentative determination if the right sought to be protected exists and whether the
act against which the writ is to be directed is violative of such right. Certainly, the court’s determination as to the propriety
of issuing the writ cannot be taken as a prejudgment of the merits of the case because it is tentative in nature and the
writ may be dissolved during or after the trial if the court finds that plaintiff was not entitled to it….

xxxxxxxxx

Obviously, the determination made by the court a quo was only for purposes of preliminary injunction, without passing
upon the merits of the case, which cannot be done until after a full-blown hearing is conducted.

The third ground is patently unmeritorious. As alleged in the Complaint P&GP is a subsidiary of Procter and Gamble
Company (P&G) for which the "double tug" or "tac-tac" key visual was conceptualized or created. In that capacity, P&GP
used the said TV advertisement in the Philippines to promote its products. As such subsidiary, P&GP is definitely within
the protective mantle of the statute (Sec. 6, PD 49).

Finally, We find the procedure adopted by the court a quo to be in order….

The record clearly shows that respondent Judge followed the (procedure provided for in Section 5, Rule 58, as amended
by BP 224, and Paragraph A(8) of the Interim Rules). In fact, the court a quo set the incident for hearing on September 2,
1994, at which date petitioner was ordered to show cause why the writ should not be issued. Petitioner filed an Opposition
to the application for preliminary injunction. The same incident was again set for hearing on September 9, 1994, during
which the parties made some manifestations in support of their respective positions. Subsequent to such hearing
petitioner filed a Reply to P&GP’s Rejoinder to its Opposition. Under the foregoing circumstances, it is absurd to even
suggest that petitioner was not given its day in court in the matter of the issuance of the preliminary injunctive relief.

xxxxxxxxx

There was of course extreme urgency for the court a quo to act on plaintiff’s application for preliminary injunction. The
airing of TV commercials is necessarily of limited duration only. Without such temporary relief, any permanent injunction
against the infringing TV advertisements of which P&GP may possibly succeed in getting after the main case is finally
adjudicated could be illusory if by then such advertisements are no longer used or aired by petitioner. It is therefore not
difficult to perceive the possible irreparable damage which P&GP may suffer if respondent Judge did not act promptly on
its application for preliminary injunction. 5
Preliminary injunction is a provisional remedy intended to provide protection to parties for the preservation of their rights
or interests during the pendency of the principal action. 6 Thus, Section1, Rule 58 of the Rules of Court provides:
Section 1. Preliminary injunction defined; classes. — A preliminary injunction is an order granted at any stage of an action
or proceeding prior to the judgment or final order, requiring a party or a court, agency or a person to refrain from a
particular act or acts. It may also require the performance of a particular act or acts, in which case it shall be known as a
preliminary mandatory injunction.
Injunction is resorted to only when there is a pressing necessity to avoid injurious consequences which cannot be remedied
under any standard compensation. 7 As correctly ruled by the CA, there was an extreme urgency to grant the preliminary
injunction prayed for by P&GP considering that TV commercials are aired for a limited period of time only. In fact, this
Court takes note of the fact that the TV commercial in issue ― the Kite TV advertisement ― is no longer aired today, more
than 10 years after the injunction was granted on September 16, 1994.
The sole objective of a writ of preliminary injunction is to preserve the status quo until the merits of the case can be heard
fully. 8 A writ of preliminary injunction is generally based solely on initial and incomplete evidence. 9 Thus, it was
impossible for the court a quo to fully dispose of the case, as claimed by petitioner, without all the evidence needed for
the full resolution of the same. To date, the main case still has to be resolved by the trial court.
The issuance of a preliminary injunction rests entirely on the discretion of the court and is generally not interfered with
except in cases of manifest abuse. 10 There was no such abuse in the case at bar, especially because petitioner was given
all the opportunity to oppose the application for injunction. The fact was, it failed to convince the court why the injunction
should not be issued. Thus, in Santos v. Court of Appeals, 11 we held that no grave abuse of discretion can be attributed
to a judge or body issuing a writ of preliminary injunction where a party has not been deprived of its day in court as it was
heard and it exhaustively presented all its arguments and defenses.
WHEREFORE, the petition is hereby DENIED.
Costs against petitioner.
SO ORDERED.