RIGHTS OF THE TRADENAME OWNER 

G.R. No. 96161 February 21, 1992

PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS, INC. and PHILIPS INDUSTRIAL DEVELOPMENT, INC., petitioners, 
vs.
COURT OF APPEALS, SECURITIES & EXCHANGE COMMISSION and STANDARD PHILIPS CORPORATION, respondents.

MELENCIO-HERRERA, J.:

Petitioner Philips Export B.V. (PEBV), a foreign corporation organized under the laws of the Netherlands, although not engaged in business
here, is the registered owner of the trademarks PHILIPS and PHILIPS SHIELD EMBLEM. Petitioners Philips Electrical Lamps, Inc. (Philips
Electrical, for brevity) and Philips Industrial Developments, Inc. (Philips Industrial, for short), authorized users of the trademarks PHILIPS and
PHILIPS SHIELD EMBLEM, were incorporated on 29 August 1956 and 25 May 1956, respectively. All petitioner corporations belong to the
PHILIPS Group of Companies.

Respondent Standard Philips Corporation (Standard Philips), on the other hand, was issued a Certificate of Registration by respondent Commission
on 19 May 1982.

On 24 September 1984, Petitioners filed a letter complaint with the Securities & Exchange Commission (SEC) asking for the cancellation of
the word "PHILIPS" from Private Respondent's corporate name in view of the prior registration with the Bureau of Patents of the trademark
"PHILIPS" and the logo "PHILIPS SHIELD EMBLEM" in the name of Petitioner, PEBV, and the previous registration of Petitioners Philips
Electrical and Philips Industrial with the SEC.

Petitioners filed with the SEC, on 6 February 1985, a Petition (SEC Case No. 2743) praying for the issuance of a Writ of Preliminary Injunction,
alleging, among others, that Private Respondent's use of the word PHILIPS amounts to an infringement and clear violation of Petitioners'
exclusive right to use the same considering that both parties engage in the same business.

Claim of respondent: Private Respondent countered that Petitioner PEBV has no legal capacity to sue; that its use of its corporate name is not at all
similar to Petitioners' trademark PHILIPS when considered in its entirety; and that its products consisting of chain rollers, belts, bearings and cutting
saw are grossly different from Petitioners' electrical products.

SEC Hearing Officer, on 27 September 1985, ruled against the issuance of such Writ. CA affirmed SEC decision and concluded that "private
respondents' products consisting of chain rollers, belts, bearings and cutting saw are unrelated and non-competing with petitioners'
products i.e. electrical lamps such that consumers would not in any probability mistake one as the source or origin of the product of the other."

ISSUE: WON respondent’s use of the word PHILIPS amount to a violation of petitioners’ exclusive right to use the same

RULING: YES. ORDERING the Securities and Exchange Commission to amend private respondent's Articles of Incorporation by deleting the word
PHILIPS from the corporate name of private respondent.

The general rule as to corporations is that each corporation must have a name by which it is to sue and be sued and do all legal acts. The name of a
corporation in this respect designates the corporation in the same manner as the name of an individual designates the person; and the right to use its
corporate name is as much a part of the corporate franchise as any other privilege granted.

Our own Corporation Code, in its Section 18, expressly provides that:

No corporate name may be allowed by the Securities and Exchange Commission if the proposed name is identical or deceptively
or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive,
confusing or contrary to existing law. Where a change in a corporate name is approved, the commission shall issue an amended
certificate of incorporation under the amended name. (Emphasis supplied)

To come within its scope, two requisites must be proven, namely:

(1) that the complainant corporation acquired a prior right over the use of such corporate name; and
(2) the proposed name is either:
(a) identical; or
(b) deceptively or confusingly similar
to that of any existing corporation or to any other name already protected by law; or
(c) patently deceptive, confusing or contrary to existing law.

(1) that the complainant corporation acquired a prior right over the use of such corporate name; and

The right to the exclusive use of a corporate name with freedom from infringement by similarity is determined by priority of adoption (1 Thompson,
p. 80 citing Munn v. Americana Co., 82 N. Eq. 63, 88 Atl. 30; San Francisco Oyster House v. Mihich, 75 Wash. 274, 134 Pac. 921). In this regard,
there is no doubt with respect to Petitioners' prior adoption of' the name ''PHILIPS" as part of its corporate name. Petitioners Philips Electrical and
Philips Industrial were incorporated on 29 August 1956 and 25 May 1956, respectively, while Respondent Standard Philips was issued a Certificate
of Registration on 12 April 1982, twenty-six (26) years later

(2) the proposed name is (b) deceptively or confusingly similar

The second requisite no less exists in this case. In determining the existence of confusing similarity in corporate names, the test is whether the
similarity is such as to mislead a person, using ordinary care and discrimination.. While the corporate names of Petitioners and Private Respondent
are not identical, a reading of Petitioner's corporate names, to wit: PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS, INC. and PHILIPS
INDUSTRIAL DEVELOPMENT, INC., inevitably leads one to conclude that "PHILIPS" is, indeed, the dominant word in that all the companies
affiliated or associated with the principal corporation, PEBV, are known in the Philippines and abroad as the PHILIPS Group of Companies.

Respondents maintain, however, that Petitioners did not present an iota of proof of actual confusion or deception of the public much less a single
purchaser of their product who has been deceived or confused or showed any likelihood of confusion. It is settled, however, that proof of actual
confusion need not be shown. It suffices that confusion is probably or likely to occur (6 Fletcher [Perm Ed], pp. 107-108, enumerating a long line of
cases).
It may be that Private Respondent's products also consist of chain rollers, belts, bearing and the like, while petitioners deal principally with electrical
products. It is significant to note, however, that even the Director of Patents had denied Private Respondent's application for registration of the
trademarks "Standard Philips & Device" for chain, rollers, belts, bearings and cutting saw. That office held that PEBV, "had shipped to its
subsidiaries in the Philippines equipment, machines and their parts which fall under international class where "chains, rollers, belts, bearings and
cutting saw," the goods in connection with which Respondent is seeking to register 'STANDARD PHILIPS' . . . also belong" ( Inter Partes Case No.
2010, June 17, 1988, SEC Rollo).

Furthermore, the records show that among Private Respondent's primary purposes in its Articles of Incorporation (Annex D, Petition p. 37, Rollo) are
the following:

To buy, sell, barter, trade, manufacture, import, export, or otherwise acquire, dispose of, and deal in and deal with any kind of
goods, wares, and merchandise such as but not limited to plastics, carbon products, office stationery and supplies, hardware
parts, electrical wiring devices, electrical component parts, and/or complement of industrial, agricultural or commercial
machineries, constructive supplies, electrical supplies and other merchandise which are or may become articles of commerce
except food, drugs and cosmetics and to carry on such business as manufacturer, distributor, dealer, indentor, factor,
manufacturer's representative capacity for domestic or foreign companies. (emphasis ours)

For its part, Philips Electrical also includes, among its primary purposes, the following:

To develop manufacture and deal in electrical products, including electronic, mechanical and other similar products . . . (p. 30,
Record of SEC Case No. 2743)

Given Private Respondent's aforesaid underlined primary purpose, nothing could prevent it from dealing in the same line of business of
electrical devices, products or supplies which fall under its primary purposes.

In allowing Private Respondent the continued use of its corporate name, the SEC maintains that the corporate names of Petitioners PHILIPS
ELECTRICAL LAMPS. INC. and PHILIPS INDUSTRIAL DEVELOPMENT, INC. contain at least two words different from that of the corporate
name of respondent STANDARD PHILIPS CORPORATION, which words will readily identify Private Respondent from Petitioners and vice-versa.

True, under the Guidelines in the Approval of Corporate and Partnership Names formulated by the SEC, the proposed name "should not be similar to
one already used by another corporation or partnership. If the proposed name contains a word already used as part of the firm name or style of a
registered company; the proposed name must contain two other words different from the company already registered" (Emphasis ours). It is then
pointed out that Petitioners Philips Electrical and Philips Industrial have two words different from that of Private Respondent's name.

What is lost sight of, however, is that PHILIPS is a trademark or trade name which was registered as far back as 1922. Petitioners, therefore, have the
exclusive right to its use which must be free from any infringement by similarity. A corporation has an exclusive right to the use of its name, which
may be protected by injunction upon a principle similar to that upon which persons are protected in the use of trademarks and tradenames. Notably,
too, Private Respondent's name actually contains only a single word, that is, "STANDARD", different from that of Petitioners inasmuch as the
inclusion of the term "Corporation" or "Corp." merely serves the Purpose of distinguishing the corporation from partnerships and other business
organizations.
RIGHTS OF THE TRADENAME OWNER 

G.R. No. 169504 : March 3, 2010

COFFEE PARTNERS, INC., Petitioner, v. SAN FRANCISCO COFFEE & ROASTERY, INC., Respondent.

Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It
registered with the Securities and Exchange Commission (SEC) in January 2001. It has a franchise agreement with Coffee Partners Ltd. (CPL)
for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such as "SAN FRANCISCO COFFEE. "

Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered with the SEC in May 1995. It registered the
business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with the Department of Trade and Industry (DTI) in June 1995.
Respondent had since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willys, and other coffee companies.

In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc.
(BCCPI). BCCPI engaged in the processing, roasting, and wholesale selling of coffee. Respondent later embarked on a project study of setting up
coffee carts in malls and other commercial establishments in Metro Manila.

In June 2001, respondent discovered that petitioner was about to open a coffee shop under the name "SAN FRANCISCO COFFEE" in Libis,
Quezon City. According to respondent, petitioners shop caused confusion in the minds of the public as it bore a similar name and it also engaged in
the business of selling coffee. Respondent sent a letter to petitioner demanding that the latter stop using the name "SAN FRANCISCO COFFEE."

In its answer, petitioner denied the allegations in the complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO) applications for
registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000. Petitioner maintained its mark
could not be confused with respondents trade name because of the notable distinctions in their appearances. Petitioner argued respondent stopped
operating under the trade name "SAN FRANCISCO COFFEE" when it formed a joint venture with Boyd Coffee USA. Petitioner contended
respondent did not cite any specific acts that would lead one to believe petitioner had, through fraudulent means, passed off its mark as that of
respondent, or that it had diverted business away from respondent.

Mr. David Puyat, president of petitioner corporation, testified that the coffee shop in Libis, Quezon City opened sometime in June 2001 and that
another coffee shop would be opened in Glorietta Mall, Makati City

BLA ruled in favor of the respondent. The office of the Director General -IPO reversed BLA decision and found that respondent had stopped using
its trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001
when it opened its first coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade name in good faith and a prior user who
had stopped using such trade name, it would be inequitable to rule in favor of the latter.

CA reversed the decision and reinstated BLA decision.

CLAIM Of PETITIONER: Petitioner contends that when a trade name is not registered, a suit for infringement is not available.

ISSUE: WON petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with the Intellectual Property Office (IPO)

RULING: YES. Decision of CA is affirmed.

Coming now to the main issue, in Prosource International, Inc. v. Horphag Research Management SA, This Court laid down what constitutes
infringement of an unregistered trade name, thus: 

1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need
not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or
services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended
to be used upon or in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as
to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing
trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. 1

Applying either the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents
"SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant
features of respondents trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale or retail. The
likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation.
In this case, the consuming public will likely be confused as to the source of the coffee being sold at petitioners coffee shops. Petitioners argument
that "San Francisco" is just a proper name referring to the famous city in California and that "coffee" is simply a generic term, is untenable.
Respondent has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration
of the business name with the DTI in 1995. Thus, respondents use of its trade name from then on must be free from any infringement by similarity.
Of course, this does not mean that respondent has exclusive use of the geographic word "San Francisco" or the generic word "coffee." Geographic or
generic words are not, per se, subject to exclusive appropriation. It is only the combination of the words "SAN FRANCISCO COFFEE," which is
respondents trade name in its coffee business, that is protected against infringement on matters related to the coffee business to avoid confusing or
deceiving the public.
STANDARD FOR COPYRIGHT PROTECTION

THIRD DIVISION

G.R. No. 195835, March 14, 2016

SISON OLAÑO, SERGIO T. ONG, MARILYN O. GO, AND JAP FUK HAI, Petitioners, v. LIM ENG CO, Respondent.

FACTS: The petitioners are the officers and/or directors of Metrotech Steel Industries, Inc. (Metrotech).6 Lim Eng Co (respondent), on the other
hand, is the Chairman of LEC Steel Manufacturing Corporation (LEC), a company which specializes in architectural metal manufacturing. 7

Sometime in 2002, LEC was invited by the architects of the Manansala Project (Project) to submit design/drawings and specifications for interior and
exterior hatch doors. LEC complied by submitting on July 16, 2002. After a series of consultations and revisions, the final shop plans/drawings were
submitted by LEC on January 15, 2004 and thereafter copied and transferred to the title block of Ski-First Balfour Joint Venture (SKI-FB), the
Project's contractor, and then stamped approved for construction on February 3, 2004.

LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and exterior hatch doors for the 7 th to 22nd floors of the Project based
on the final shop plans/drawings.

Sometime thereafter, LEC learned that Metrotech was also subcontracted to install interior and exterior hatch doors for the Project's 23 rd to 41st floors.

On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech, however, insisted that no
copyright infringement was committed because the hatch doors it manufactured were patterned in accordance with the drawings provided
by SKI-FB.

On July 6, 2004, LEC was issued a Certificate of Copyright Registration and Deposit showing that it is the registered owner of plans/drawings for
interior and exterior hatch doors under Registration Nos. 1-2004-13 and 1-2004-14, respectively. 14 This copyright pertains to class work "I" under
Section 172 of Republic Act (R.A.) No. 8293, The Intellectual Property Code of the Philippines, which covers "illustrations, maps, plans, sketches,
charts and three-dimensional works relative to geography, topography, architecture or science."

CLAIM OF PETITIONERS: averred that the hatch doors they manufactured were functional inventions that are proper subjects of patents and that
the records of the Intellectual Property Office reveal that there is no patent, industrial design or utility model registration on LEC's hatch doors.
Metrotech further argued that the manufacturing of hatch doors  per se is not copyright infringement because copyright protection does not extend to
the objects depicted in the illustrations and plans. Moreover, there is no artistic or ornamental expression embodied in the subject hatch doors that
would subject them to copyright protection.19

The DOJ issued a resolution in favor of the petitioner and dismissing respondent’s complaint. CA reversed DOJ resolution by granting the petition in
finding for probable cause and reinstated the complaint.

ISSUE: WON the manufacturing of hatch doors per se does not fall within the purview of copyright infringement because copyright protection does
not extend to the objects depicted in the illustrations and plans

RULING: NO. Decision is reversed and set aside. The complaint for copyright infringement is dismissed.

A copyright refers to "the right granted by a statute to the proprietor of an intellectual production to its exclusive use and enjoyment to the extent
specified in the statute."49 Under Section 177 of R.A. No. 8293, the Copyright or Economic Rights consist of the exclusive right to carry out,
authorize or prevent the following acts:

177.1  Reproduction of the work or substantial portion of the work;

177.2 Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3 The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
177.4  Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program,
a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy
which is the subject of the rental;
177.5  Public display of the original or a copy of the work;
177.6 Public performance of the work; and
177.7 Other communication to the public of the work.

Copyright infringement is thus committed by any person who shall use original literary or artistic works, or derivative works, without the copyright
owner's consent in such a manner as to violate the foregoing copy and economic rights. For a claim of copyright infringement to prevail, the evidence
on record must demonstrate: (1) ownership of a validly copyrighted material by the complainant; and (2) infringement of the copyright by the
respondent.50

While both elements subsist in the records, they did not simultaneously concur so as to substantiate infringement of LEC's two sets of copyright
registrations.

The respondent failed to substantiate the alleged reproduction of the drawings/sketches of hatch doors copyrighted under Certificate of Registration
Nos. 1-2004-13 and 1-2004-14. There is no proof that the respondents reprinted the copyrighted sketches/drawings of LEC's hatch doors. The raid
conducted by the NBI on Metrotech's premises yielded no copies or reproduction of LEC's copyrighted sketches/drawings of hatch doors. What were
discovered instead were finished and unfinished hatch doors.

Certificate of Registration Nos. 1-2004-13 and 1-2004-14 pertain to class work "I" under Section 172 of R.A. No. 8293 which covers "illustrations,
maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science." 51 As such, LEC's copyright
protection there under covered only the hatch door sketches/drawings and not the actual hatch door they depict.52

Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science, to be properly classified as a copyrightable class "I" work, what was copyrighted were their sketches/drawings
only, and not the actual hatch doors themselves. To constitute infringement, the usurper must have copied or appropriated the original work of an
author or copyright proprietor, absent copying, there can be no infringement of copyright. 55

"Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea
itself."56

The respondent claimed that the petitioners committed copyright infringement when they fabricated/manufactured hatch doors identical to those
installed by LEC. The petitioners could not have manufactured such hatch doors in substantial quantities had they not reproduced the copyrighted
plans/drawings submitted by LEC to SK1-FB. This insinuation, without more, does not suffice to establish probable cause for infringement against
the petitioners.

Anent, LEC's Certificate of Registration Nos. H-2004-566 and H-2004-567, the Court finds that the ownership thereof was not established by the
evidence on record because the element of copyrightability is absent.

"Ownership of copyrighted material is shown by proof of originality and copyrightability." 58 While it is true that where the complainant presents a
copyright certificate in support of the claim of infringement, the validity and ownership of the copyright is presumed. This presumption, however, is
rebuttable and it cannot be sustained where other evidence in the record casts doubt on the question of ownership, 59 as in the instant case.

Moreover, "[t]he 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." 60

Here, evidence negating originality and copyrightability as elements of copyright ownership was satisfactorily proffered against LEC's
certificate of registration.

Being articles of manufacture already in existence, they cannot be deemed as original creations. As earlier stated, valid copyright ownership denotes
originality of the copyrighted material. Originality means that the material was not copied, evidences at least minimal creativity and was
independently created by the author.70It connotes production as a result of independent labor. 71 LEC did not produce the door jambs and hinges; it
bought or acquired them from suppliers and thereafter affixed them to the hatch doors. No independent original creation can be deduced from such
acts.

WHEREFORE, premises considered, the petition is hereby GRANTED. The Decision dated July 9, 2010 and Resolution dated February 24, 2011
of the Court of Appeals in CA-G.R. SP No. 95471 are REVERSED and SET ASIDE. The Resolutions dated March 10, 2006 and May 25, 2006 of
the Department of Justice in I.S. No. 2004-925 dismissing the complaint for copyright infringement are REINSTATED.
WHEN DOES COPYRIGHT VEST

G.R. No. 165306 September 20, 2005

MANLY SPORTWEAR MANUFACTURING, INC., Petitioners, 

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

YNARES-SANTIAGO, J.:

FACTS: 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. RTC granted the motion to quash and declared the search warrant 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. CA affirmed RTC decision

ISSUE: WON the certificates of registration issued to petitioner is proof of its ownership

RULING: NO. Petition is denied. CA decision affirmed.

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. 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.

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.

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.
DEPOSIT OF COPYRIGHTABLE MATERIALS

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.

CALLEJO, SR., J.:

FACTS: 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.”

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. 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.

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for the seizure of the aforecited articles

Leaf Spring eye bushing: a) Plastic Polypropylene; b) Polyvinyl Chloride Plastic; c) Vehicle bearing cushion and Diesel Mold

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

The trial court subsequently quashed the warrants that were issued. The RTC as affirmed by the CA ruled that 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.

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.

ISSUE: WON the petitioner’s utility models are copyrightable

RULING: NO. Decision affirmed.

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.
Copying is shown by proof of access to copyrighted material and substantial similarity between the two works. 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.

To discharge his burden, the applicant may present the certificate of registration covering the work or, in its absence, other evidence. 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. 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. 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.

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. 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. 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. 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.

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. 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. Functional
components of useful articles, no matter how artistically designed, have generally been denied copyright protection unless they are separable from the
useful article.

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:

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.