1

[G.R. No. 108946. January 28, 1999.]

FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners, vs. HONORABLE

FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY

FRANCISCO, respondents.

Medel Macam del Rosario Collado and Polines for petitioners.

Angelo Medina for F. Medina, Jr.

Atienza, Tabora, del Rosario & Salvador for W. Esposo.

Francisco L. Rosario, Jr. for Casey Francisco.

De Borja Medialdea Ata Bello Guevarra & Serapio for G. Zosa.

SYNOPSIS

Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922 dated

January 28, 1971 of Rhoda and Me, a dating game show aired from 1970 to 1977. In 1973, petitioner BJPI

submitted to the National Library an addendum to its certificate of copyright specifying the show's format

and style presentation. In 1991, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN 9 an

episode of It's a Date. He immediately protested the airing of the show through a letter sent to Grabriel M.

Zosa, president and general manager of IXL Productions, Inc., the producer of It's a Date. Petitioner

Joaquin informed respondent, Zosa of a copyright toRhoda and Me and demanded that IXL discontinue

airing It's a Date. Respondent Zosa apologized to Joaquin, but continued airing the show. Zosa also sought

to register IXL's copyright to the first episode of It's a Date for which a certificate of copyright was issued

by the National Library on August 14, 1991. With these developments, petitioners herein filed a complaint

against Zosa and other RPN Channel 9 officers as a result of which an information for violation of P.D. No.

49 was filed before the Regional Trial Court of Quezon City. Zosa appealed to the Department of Justice.

The Secretary of Justice reversed the prosecutor's findings and directed the dismissal of the case. Petitioner

Joaquin filed a motion for reconsideration, but it was denied by the Secretary of Justice. Hence, this

petition. Both public and private respondents maintained that petitioners failed to establish the existence of

probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me. They

contended that BJPl's copyright covers only a specific episode of Rhosa and Me and that the formats or

concepts of dating game shows were not covered by the copyright protection under P.D. No. 49.

The Supreme Court ruled that BJPI's copyright covered audio-visual recordings of every episode of Rhoda

and Me, as falling within the class of works mentioned in P.D. No. 49. The copyright, however, does not

extend to the general concept or format of its dating game show. Accordingly, by the very nature of the

subject of petitioner BJPI's copyright, the investigating prosecutor should have been given the opportunity

to compare the videotapes of the two shows. Mere description by words of the general format of the two

dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable

to the determination of the existence of probable cause. The petition was therefore dismissed. SEIDAC

SYLLABUS

1. REMEDIAL LAW; CRIMINAL PROCEDURE; PRELIMINARY INVESTIGATION; AUTHORITY OF THE STATE

PROSECUTOR, SUBJECT TO THE CONTROL OF THE SECRETARY OF JUSTICE. — A preliminary investigation

falls under the authority of the state prosecutor who is given by law the power to direct and control criminal

actions. He is, however, subject to the control of the Secretary of Justice. Thus, Rule 112, Sec. 4 of the

Revised Rules of Criminal Procedure, provides: SEC. 4. Duty of investigating fiscal. — If the investigating

fiscal finds cause to hold the respondent for trial, he shall prepare the resolution and corresponding

2

information. He shall certify under oath that he, or as shown by the record, an authorized officer, has

personally examined the complainant and his witnesses, that there is reasonable ground to believe that a

crime has been committed and that the accused is probably guilty thereof, that the accused was informed

of the complaint and of the evidence submitted against him and that he was given an opportunity to submit

controverting evidence. Otherwise, he shall recommend dismissal of the complaint. In either case, he shall

forward the records of the case to the provincial or city fiscal or chief state prosecutor within five (5) days

from his resolution. The latter shall take appropriate action thereon within ten (10) days from receipt

thereof, immediately informing the parties of said action. No complaint or information may be filed or

dismissed by an investigating fiscal without the prior written authority approval of the provincial or city

fiscal or chief state prosecutor. Where the investigating assistant fiscal recommends the dismissal of the

case but his findings are reversed by the provincial or city fiscal or chief state prosecutor on the ground

that a probable cause exists, the latter may, by himself, file the corresponding information against the

respondent or direct any other assistant fiscal or state prosecutor to do so, without conducting another

preliminary investigation. If upon petition by a proper party, the Secretary of Justice reverses the resolution

of the provincial or city fiscal or chief state prosecutor, he shall direct the fiscal concerned to file the

corresponding information without conducting another preliminary investigation or to dismiss or move for

dismissal of the complaint or information. In reviewing resolutions of prosecutors, the Secretary of Justice is

not precluded from considering errors, although unassigned, for the purpose of determining whether there

is probable cause for filing cases in court. He must make his own finding of probable cause and is not

confined to the issues raised by the parties during preliminary investigation. Moreover, his findings are not

subject to review unless shown to have been made with grave abuse.

2. COMMERCIAL LAW; INTELLECTUAL PROPERTY LAW; COPYRIGHT; CONSTRUED. — 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 the statute. 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. Since . . . copyright in published works is

purely a statutory creation, a copyright may be obtained only for a work falling within the statutory

enumeration or description. Regardless of the historical viewpoint, it is authoritatively settled in the United

States that there is no copyright except that which is both created and secured by act of Congress. . . . P.D.

No. 49, Section 2, in enumerating what are subject to copyright, refers to finished works and not to

concepts. The copyright does not extend to an idea, procedure, process, system, method of operation,

concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or

embodied in such work. Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:

SEC. 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172 and 173, no

protection shall extend, under this law, to any idea, procedure, system, method or operation, concept,

principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in

a work; news of the day and other miscellaneous facts having the character of mere items of press

information; or any official text of a legislative, administrative or legal nature, as well as any official

translation thereof.

3. ID.; ID.; ID.; FORMAT OR MECHANICS OF A TELEVISION SHOW IS NOT INCLUDED IN THE LIST OF

PROTECTED WORKS. — To begin with, the format of a show is not copyrightable. Section 2 of P.D. No. 49,

otherwise known as the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to

copyright protection, to wit: Section 2. The rights granted by this Decree shall, from the moment of

creation, subsist with respect to any of the following classes of works: (A) Books, including composite and

cyclopedic works, manuscripts, directories, and gazetteers; (B) Periodicals, including pamphlets and

newspaper. (C) Lectures, sermons, addresses, dissertations prepared for oral delivery; (D) Letters; (E)

Dramatic or dramatico-musical compositions; choreographic works and entertainments in dumb shows, the

3

acting form of which is fixed in writing or otherwise; (F) Musical compositions, with or without words; (G)

Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art; models

or designs for works of art; (H) Reproductions of work of art; (I) Original ornamental designs or models for

articles of manufacture, whether or not patentable, and other works of applied art; (J) Maps, plans,

sketches, and charts; (K) Drawings or plastic works of a scientific or technical character; (L) Photographic

works and works produced by a process analogous to photography; lantern slides; (M) Cinematographic

works and works produced by a process analogous to cinematography or any process for making audio-

visual recordings; (N) Computer programs; (O) Prints, pictorial illustrations advertising copies, labels, tags,

and box wraps; (P) Dramatizations, translations, adaptions, abridgements, arrangements and other

alterations of literary, musical or artistic works or of works of the Philippine government as herein defined,

which shall be protected as provided in Section 8 of this Decree; (Q) Collections of literary, scholarly, or

artistic works or of works referred to in Section 9 of this Decree which by reason of the selection and

arrangement of their contents constitute intellectual creations, the same to be protected as such in

accordance with Section 8 of this Decree; (R) Other literary, scholarly, scientific and artistic works. This

provision is substantially the same as Section 172 of the INTELLECTUAL PROPERTY CODE OF THE

PHILIPPINES (R.A. No. 8293). The format or mechanics of a television show is not included in the list of

protected works in Section 2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be

extended to cover them. ETDAaC

D E C I S I O N

MENDOZA, J p:

This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice, dated

August 12, 1992, in Criminal Case No. Q-92-27854, entitled "Gabriel Zosa, et al. v. City Prosecutor of

Quezon City and Francisco Joaquin, Jr.," and its resolution, dated December 3, 1992, denying petitioner

Joaquin's motion for reconsideration. LLphil

Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated

January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of

copyright specifying the show's format and style of presentation.

On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN

Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc. (IXL). On July 18, 1991,

he wrote a letter to private respondent Gabriel M. Zosa, president and general manager of IXL, informing

Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue airing It's a Date.

In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and requested a

meeting to discuss a possible settlement. IXL, however, continued airing It's a Date, prompting petitioner

Joaquin to send a second letter on July 25, 1991 in which he reiterated his demand and warned that, if IXL

did not comply, he would endorse the matter to his attorneys for proper legal action.

Meanwhile, private respondent Zosa sought to register IXL's copyright to the first episode of It's a Date for

which it was issued by the National Library a certificate of copyright on August 14, 1991.

Upon complaint by petitioners, an information for violation of P.D. No. 49 was filed against private

respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe Medina,

and Casey Francisco, in the Regional Trial Court of Quezon City where it was docketed as Criminal Case No.

4

92-27854 and assigned to Branch 104 thereof. However, private respondent Zosa sought a review of the

resolution of the Assistant City Prosecutor before the Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City

Prosecutor's findings and directed him to move for the dismissal of the case against private respondents. 1

Petitioner Joaquin filed a motion for reconsideration, but his motion was denied by respondent Secretary of

Justice on December 3, 1992. Hence, this petition. Petitioners contend that:

1. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he invoked

non-presentation of the master tape as being fatal to the existence of probable cause to prove

infringement, despite the fact that private respondents never raised the same as a controverted issue.

2. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he arrogated

unto himself the determination of what is copyrightable — an issue which is exclusively within the

jurisdiction of the regional trial court to assess in a proper proceeding.

Both public and private respondents maintain that petitioners failed to establish the existence of probable

cause due to their failure to present the copyrighted master videotape of Rhoda and Me. They contend that

petitioner BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or concepts

of dating game shows are not covered by copyright protection under P. D. No. 49.

Non-Assignment of Error

Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda

and Me was not raised in issue by private respondents during the preliminary investigation and, therefore, it

was error for the Secretary of Justice to reverse the investigating prosecutor's finding of probable cause on

this ground.

A preliminary investigation falls under the authority of the state prosecutor who is given by law the power

to direct and control criminal actions. 2 He is, however, subject to the control of the Secretary of

Justice. Thus, Rule 112, §4 of the Revised Rules of Criminal Procedure, provides:

SEC. 4. Duty of investigating fiscal. — If the investigating fiscal finds cause to hold the respondent for trial,

he shall prepare the resolution and corresponding information. He shall certify under oath that he, or as

shown by the record, an authorized officer, has personally examined the complainant and his witnesses,

that there is reasonable ground to believe that a crime has been committed and that the accused is

probably guilty thereof, that the accused was informed of the complaint and of the evidence submitted

against him and that he was given an opportunity to submit controverting evidence. Otherwise, he shall

recommend dismissal of the complaint.

In either case, he shall forward the records of the case to the provincial or city fiscal or chief state

prosecutor within five (5) days from his resolution. The latter shall take appropriate action thereon within

ten (10) days from receipt thereof, immediately informing the parties of said action.

No complaint or information may be filed or dismissed by an investigating fiscal without the prior written

authority or approval of the provincial or city fiscal or chief state prosecutor.

Where the investigating assistant fiscal recommends the dismissal of the case but his findings are reversed

by the provincial or city fiscal or chief state prosecutor on the ground that a probable cause exists, the

latter may, by himself, file the corresponding information against the respondent or direct any other

assistant fiscal or state prosecutor to do so, without conducting another preliminary investigation. cda

5

If upon petition by a proper party, the Secretary of Justice reverses the resolution of the provincial or city

fiscal or chief state prosecutor, he shall direct the fiscal concerned to file the corresponding information

without conducting another preliminary investigation or to dismiss or move for dismissal of the complaint or

information.

In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering errors,

although unassigned, for the purpose of determining whether there is probable cause for filing cases in

court. He must make his own finding of probable cause and is not confined to the issues raised by the

parties during preliminary investigation. Moreover, his findings are not subject to review unless shown to

have been made with grave abuse.

Opinion of the Secretary of Justice

Petitioners contend, however, that the determination of the question whether the format or mechanics of a

show is entitled to copyright protection is for the court, and not the Secretary of Justice, to make. They

assail the following portion of the resolution of the respondent Secretary of Justice:

[T]he essence of copyright infringement is the copying, in whole or in part, of copyrightable materials as

defined and enumerated in Section 2 of P.D. No. 49. Apart from the manner in which it is actually

expressed, however, the idea of a dating game show is, in the opinion of this Office, a non-copyrightable

material. Ideas, concepts, formats, or schemes in their abstract form clearly do not fall within the class of

works or materials susceptible of copyright registration as provided in PD. No. 49. 3(Emphasis added.)

It is indeed true that the question whether the format or mechanics of petitioners' television show is

entitled to copyright protection is a legal question for the court to make. This does not, however, preclude

respondent Secretary of Justice from making a preliminary determination of this question in resolving

whether there is probable cause for filing the case in court. In doing so in this case, he did not commit any

grave error.

Presentation of Master Tape

Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the master

videotape should have been presented in order to determine whether there was probable cause for

copyright infringement. They contend that 20th Century Fox Film Corporation v. Court of Appeals, 4 on

which respondent Secretary of Justice relied in reversing the resolution of the investigating prosecutor, is

inapplicable to the case at bar because in the present case, the parties presented sufficient evidence which

clearly establish "linkages between the copyrighted show 'Rhoda and Me' and the infringing TV show 'It's a

Date.'" 5

The case of 20th Century Fox Film Corporation involved raids conducted on various videotape outlets

allegedly selling or renting out "pirated" videotapes. The trial court found that the affidavits of NBI agents,

given in support of the application for the search warrant, were insufficient without the master tape.

Accordingly, the trial court lifted the search warrants it had previously issued against the defendants. On

petition for review, this Court sustained the action of the trial court and ruled: 6

The presentation of the master tapes of the copyrighted films from which the pirated films were allegedly

copied, was necessary for the validity of search warrants against those who have in their possession the

pirated films. The petitioner's argument to the effect that the presentation of the master tapes at the time

of application may not be necessary as these would be merely evidentiary in nature and not determinative

of whether or not a probable cause exists to justify the issuance of the search warrants is not meritorious.

The court cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes

that it owns.

6

The application for search warrants was directed against video tape outlets which allegedly were engaged

in the unauthorized sale and renting out of copyrighted films belonging to the petitioner pursuant to P.D.

49.

The essence of a copyright infringement is the similarity or at least substantial similarity of the purported

pirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted films

to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether

the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the pirated

films must be established to satisfy the requirements of probable cause. Mere allegations as to the

existence of the copyrighted films cannot serve as basis for the issuance of a search warrant.

This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of Appeals 7 in which it was

held:

In fine, the supposed pronunciamento in said case regarding the necessity for the presentation of the

master tapes of the copyrighted films for the validity of search warrants should at most be understood to

merely serve as a guidepost in determining the existence of probable cause in copyright infringement

cases where there is doubt as to the true nexus between the master tape and the pirated copies. An

objective and careful reading of the decision in said case could lead to no other conclusion than that said

directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright

infringement cases. . . . 8

In the case at bar, during the preliminary investigation, petitioners and private respondents presented

written descriptions of the formats of their respective televisions shows, on the basis of which the

investigating prosecutor ruled:

As may [be] gleaned from the evidence on record, the substance of the television productions

complainant's "RHODA AND ME" and Zosa's "IT'S A DATE" is that two matches are made between a male

and a female, both single, and the two couples are treated to a night or two of dining and/or dancing at the

expense of the show. The major concepts of both shows is the same. Any difference appear mere

variations of the major concepts.

That there is an infringement on the copyright of the show "RHODA AND ME" both in content and in the

execution of the video presentation are established because respondent's "IT'S A DATE" is practically an

exact copy of complainant's "RHODA AND ME" because of substantial similarities as follows, to wit:

"RHODA AND ME" "IT'S A DATE"

Set 1 Set 1

a. Unmarried participant a. same

of one gender (searcher)

appears on one side of a

divider, while three (3)

unmarried participants

of the other gender are

on the other side of the

divider. This arrangement

is done to ensure

7

that the searcher does

not see the searchees.

b. Searcher asks a question b. same

to be answered by each of

the searchees. The purpose

is to determine who among

the searchees is the most

compatible with the searcher.

c. Searcher speculates on the c. same

match to the searchee.

d. Selection is made by the d. Selection is

use of compute (sic) methods, based on the

or by the way questions are answer of the

answered, or similar methods. Searchees.

Set 2 Set 2

Same as above with the genders same

of the searcher and searchees

interchanged. 9

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to

copyright protection. It is their position that the presentation of a point-by-point comparison of the formats

of the two shows clearly demonstrates the nexus between the shows and hence establishes the existence

of probable cause for copyright infringement. Such being the case, they did not have to produce the master

tape.

To begin with, the format of a show is not copyrightable. Section 2 of P.D. No. 49, 10 otherwise known as

the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright

protection, to wit: LLphil

Section 2. The rights granted by this Decree shall, from the moment of creation, subsist with respect to any

of the following classes of works:

(A) Books, including composite and cyclopedic works, manuscripts, directories, and gazetteers;

(B) Periodicals, including pamphlets and newspapers;

(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;

(D) Letters;

(E) Dramatic or dramatico-musical compositions; choreographic works and entertainments in dumb shows,

the acting form of which is fixed in writing or otherwise;

(F) Musical compositions, with or without words;

8

(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and other works of art;

models or designs for works of art;

(H) Reproductions of a work of art;

(I) Original ornamental designs or models for articles of manufacture, whether or not patentable, and other

works of applied art;

(J) Maps, plans, sketches, and charts;

(K) Drawings or plastic works of a scientific or technical character;

(L) Photographic works and works produced by a process analogous to photography; lantern slides;

(M) Cinematographic works and works produced by a process analogous to cinematography or any process

for making audio-visual recordings;

(N) Computer programs;

(O) Prints, pictorial illustrations advertising copies, labels, tags, and box wraps;

(P) Dramatizations, translations, adaptations, abridgements, arrangements and other alterations of literary,

musical or artistic works or of works of the Philippine government as herein defined, which shall be

protected as provided in Section 8 of this Decree.

(Q) Collections of literary, scholarly, or artistic works or of works referred to in Section 9 of this Decree

which by reason of the selection and arrangement of their contents constitute intellectual creations, the

same to be protected as such in accordance with Section 8 of this Decree.

(R) Other literary, scholarly, scientific and artistic works.

This provision is substantially the same as §172 of the INTELLECTUAL PROPERTY CODE OF THE

PHILIPPINES (R.A. No. 8293). 11 The format or mechanics of a television show is not included in the list of

protected works in §2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be

extended to cover them.

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 the statute. 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. 12

Since . . . copyright in published works is purely a statutory creation, a copyright may be obtained only for

a work falling within the statutory enumeration or description. 13

Regardless of the historical viewpoint, it is authoritatively settled in the United States that there is no

copyright except that which is both created and secured by act of Congress . . . 14

P.D. No. 49, §2, in enumerating what are subject to copyright, refers to finished works and not to concepts.

The copyright does not extend to an idea, procedure, process, system, method of operation, concept,

principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in

such work.15 Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:

SEC. 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172 and 173, no

protection shall extend, under this law, to any idea, procedure, system, method or operation, concept,

principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in

a work; news of the day and other miscellaneous facts having the character of mere items of press

9

information; or any official text of a legislative, administrative or legal nature, as well as any official

translation thereof.

What then is the subject matter of petitioners' copyright? This Court is of the opinion that petitioner BJPI's

copyright covers audio-visual recordings of each episode ofRhoda and Me, as falling within the class of

works mentioned in P.D. 49, §2(M), to wit:

Cinematographic works and works produced by a process analogous to cinematography or any process for

making audio-visual recordings;

The copyright does not extend to the general concept or format of its dating game show. Accordingly, by

the very nature of the subject of petitioner BJPI's copyright, the investigating prosecutor should have the

opportunity to compare the videotapes of the two shows.

Mere description by words of the general format of the two dating game shows is insufficient; the

presentation of the master videotape in evidence was indispensable to the determination of the existence of

probable cause. As aptly observed by respondent Secretary of Justice:

A television show includes more than mere words can describe because it involves a whole spectrum of

visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely

describing the general copyright/format of both dating game shows. 16

WHEREFORE, the petition is hereby DISMISSED.

SO ORDERED.

||| (Joaquin, Jr. v. Drilon, G.R. No. 108946, [January 28, 1999], 361 PHIL 900-916)

[G.R. No. L-36402. March 16, 1987.]

FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiff-

appellant, vs. BENJAMIN TAN, defendant-appellee.

Lichauco, Picazo & Agcaoili Law Office for plaintiff-appellant.

Ramon A. Nieves for defendant-appellee.

D E C I S I O N

PARAS, J p:

An appeal was made to the Court of Appeals docketed as CA-G.R. No. 46373-R ** entitled Filipino Society

of Composers, Authors, Publishers, Inc., Plaintiff-Appellant v. Benjamin Tan, Defendant-Appellee, from the

decision of the Court of First Instance of Manila, Branch VII in Civil Case No. 71222 *** "Filipino Society of

Composers, Authors and Publishers, Inc., Plaintiff v. Benjamin Tan, Defendant," which had dismissed

plaintiffs' complaint without special pronouncement as to costs. cdphil

The Court of Appeals, finding that the case involves pure questions of law, certified the same to the

Supreme Court for final determination (Resolution, CA-G.R. No. 46373-R, Rollo, p. 36; Resolution of the

Supreme Court of February 16, 1973 in L-36402, Rollo, p. 38).

The undisputed facts of this case are as follows:

Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organized under the

Corporation Law of the Philippines and registered with the Securities and Exchange Commission. Said

10

association is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa

Iyo," "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."

On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda Foundation and

Restaurant" where a combo with professional singers, hired to play and sing musical compositions to

entertain and amuse customers therein, were playing and singing the above-mentioned compositions

without any license or permission from the appellant to play or sing the same.

Accordingly, appellant demanded from the appellee payment of the necessary license fee for the playing

and singing of aforesaid compositions but the demand was ignored.

Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement of copyright

against defendant-appellee for allowing the playing in defendant-appellee's restaurant of said songs

copyrighted in the name of the former. LexLib

Defendant-appellee, in his answer, countered that the complaint states no cause of action. While not

denying the playing of said copyrighted compositions in his establishment, appellee maintains that the mere

singing and playing of songs and popular tunes even if they are copyrighted do not constitute an

infringement (Record on Appeal, p. 11; Resolution, CA-G.R. NO. 46373-R, Rollo, pp. 32-36) under the

provisions of Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature).

The lower court, finding for the defendant, dismissed the complaint (Record on Appeal, p. 25).

Plaintiff appealed to the Court of Appeals which as already stated certified the case to the Supreme Court

for adjudication on the legal question involved. (Resolution, Court of Appeals, Rollo, p. 36; Resolution of the

Supreme Court of February 18, 1973, Rollo, p. 38).

In its brief in the Court of Appeals, appellant raised the following Assignment of Errors:

I

THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THE APPELLANT WERE

IN THE NATURE OF PUBLIC PROPERTY WHEN THEY WERE COPYRIGHTED OR REGISTERED.

II

THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THE APPELLANT WERE

PLAYED AND SUNG IN THE SODA FOUNTAIN AND RESTAURANT OF THE APPELLEE BY INDEPENDENT

CONTRACTORS AND ONLY UPON THE REQUEST OF CUSTOMERS.

III

THE LOWER COURT ERRED IN HOLDING THAT THE PLAYING AND SINGING OF COPYRIGHTED MUSICAL

COMPOSITIONS IN THE SODA FOUNTAIN AND RESTAURANT OF THE APPELLEE ARE NOT PUBLIC

PERFORMANCES FOR PROFIT OF THE SAID COMPOSITIONS WITHIN THE MEANING AND

CONTEMPLATION OF THE COPYRIGHT LAW.

IV

THE LOWER COURT ERRED IN NOT HOLDING THAT THE APPELLEE IS LIABLE TO THE APPELLANT FOR

FOUR (4) SEPARATE INFRINGEMENTS. (Brief for Appellant, pp. A and B).

The petition is devoid of merit. Cdpr

The principal issues in this case are whether or not the playing and signing of musical compositions which

have been copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of

11

the defendant-appellee constitute a public performance for profit within the meaning and contemplation of

the Copyright Law of the Philippines; and assuming that there were indeed public performances for profit,

whether or not appellee can be held liable therefor.

Appellant anchors its claim on Section 3(c) of the Copyright Law which provides:

"SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusive right:

xxx xxx xxx

(c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in any manner or by any

method whatever for profit or otherwise; if not reproduced in copies for sale, to sell any manuscripts or any

record whatsoever thereof;

xxx xxx xxx"

It maintains that playing or singing a musical composition is universally accepted as performing the musical

composition and that playing and singing of copyrighted music in the soda fountain and restaurant of the

appellee for the entertainment of the customers although the latter do not pay for the music but only for

the food and drink constitute performance for profit under the Copyright Law (Brief for the Appellant, pp.

1925).

We concede that indeed there were "public performances for profit."

The word 'perform' as used in the Act has been applied to "One who plays a musical composition on a

piano, thereby producing in the air sound waves which are heard as music . . . and if the instrument he

plays on is a piano plus a broadcasting apparatus, so that waves are thrown out, not only upon the air, but

upon the other, then also he is performing the musical composition." (Buck, et al. v. Duncan, et al.; Same

v. Jewell-La Salle Realty Co., 32F. 2d. Series 367).

In relation thereto, it has been held that "The playing of music in dine and dance establishment which was

paid for by the public in purchases of food and drink constituted 'performance for profit' within a Copyright

Law," (Buck, et al. v. Russon, No. 4489 25 F. Supp. 317). Thus, it has been explained that while it is

possible in such establishments for the patrons to purchase their food and drinks and at the same time

dance to the music of the orchestra, the music is furnished and used by the orchestra for the purpose of

inducing the public to patronize the establishment and pay for the entertainment in the purchase of food

and drinks. The defendant conducts his place of business for profit, and it is public; and the music is

performed for profit (Ibid., p. 319). In a similar case, the Court ruled that "The Performance in a restaurant

or hotel dining room, by persons employed by the proprietor, of a copyrighted musical composition, for the

entertainment of patrons, without charge for admission to hear it, infringes the exclusive right of the owner

of the copyright." (Herbert v. Shanley Co.; John Church Co. v. Hillard Hotel Co., et al., 242 U.S. 590-591).

In delivering the opinion of the Court in said two cases, Justice Holmes elaborated thus: prcd

"If the rights under the copyright are infringed only by a performance where money is taken at the door,

they are very imperfectly protected. Performances not different in kind from those of the defendants could

be given that might compete with and even destroy the success of the monopoly that the law intends the

plaintiffs to have. It is enough to say that there is no need to construe the statute so narrowly. The

defendants' performances are not eleemosynary. They are part of a total for which the public pays, and the

fact that the price of the whole is attributed to a particular item which those present are expected to order

is not important. It is true that the music is not the sole object, but neither is the food, which probably

could be got cheaper elsewhere. The object is a repast in surroundings that to people having limited power

of conversation or disliking the rival noise, give a luxurious pleasure not to be had from eating a silent

12

meal. If music did not pay, it would be given up. If it pays, it pays out of the public's pocket. Whether it

pays or not, the purpose of employing it is profit, and that is enough." (Ibid., p. 594).

In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the food and

drinks and apparently not for listening to the music. As found by the trial court, the music provided is for

the purpose of entertaining and amusing the customers in order to make the establishment more attractive

and desirable (Record on Appeal, p. 21). It will be noted that for the playing and singing the musical

compositions involved, the combo was paid as independent contractors by the appellant (Record on Appeal,

p. 24). It is therefore obvious that the expenses entailed thereby are added to the overhead of the

restaurant which are either eventually charged in the price of the food and drinks or to the overall total of

additional income produced by the bigger volume of business which the entertainment was programmed to

attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-

appellee's restaurant constituted performance for profit contemplated by the Copyright Law. (Act 3134 as

amended by P.D. No. 49, as amended).

Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that

the composers of the contested musical compositionswaived their right in favor of the general public when

they allowed their intellectual creations to become property of the public domain before applying for the

corresponding copyrights for the same (Brief for Defendant-Appellee, pp. 14-15) is correct. llcd

The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended,

dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the

Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things

that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or

within sixty (60) days if made elsewhere, failure of which renders such creation public property." (Santos v.

McCullough Printing Company, 12 SCRA 324-325 [1964]. Indeed, if the general public has made use of the

object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the

object to have been donated to the public domain and the same can no longer be copyrighted.

A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956

(Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration (TSN, May

28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on January 14, 1955 (Brief for

Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the year of the hearing) or

from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao

Lamang" both registered on July 10, 1966, appear to have been known and sang by the witnesses as early

as 1965 or three years before the hearing in 1968. The testimonies of the witnesses at the hearing of this

case on this subject were unrebutted by the appellant. (Ibid., pp. 28; 29 and 30).

Under the circumstances, it is clear that the musical compositions in question had long become public

property, and are therefore beyond the protection of the Copyright Law.

PREMISES CONSIDERED, the appealed decision of the Court of First Instance of Manila in Civil Case No.

71222 is hereby AFFIRMED.

SO ORDERED

||| (Filipino Society of Composers, Authors and Publishers, Inc. v. Tan, G.R. No. L-36402, [March 16, 1987],

232 PHIL 426-434)