COPYRIGHT

G.R. No. 108946 January 28, 1999 FRANCISCO G. JOAQ IN, JR., an! "J PRO# CTIONS, INC., petitioners, vs. HONORA"$% FRAN&$IN #RI$ON, GA"RI%$ 'OSA, (I$$IA) %SPOSO, F%$IP% )%#INA, JR., an! CAS%Y FRANCISCO, respondents. )%N#O'A, J.: This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice, dated August 12, 1992, in Criminal Case o. !"92"2#$%&, entitled '(a)riel *osa, et al. v. Cit+ Prosecutor of !ue,on Cit+ and -rancisco Joa.uin, Jr.,' and its resolution, dated Decem)er /, 1992, den+ing petitioner Joa.uin0s motion for reconsideration. Petitioner 1J Productions, 2nc. 31JP24 is the holder5grantee of Certificate of Cop+right o. 6922, dated Januar+ 2$, 19#1, of Rhoda and Me, a dating game sho7 aired from 19#8 to 19##. 9n June 2$, 19#/, petitioner 1JP2 su)mitted to the ational :i)rar+ an addendum to its certificate of cop+right specif+ing the sho70s format and st+le of presentation. 9n Jul+ 1&, 1991, 7hile 7atching television, petitioner -rancisco Joa.uin, Jr., president of 1JP2, sa7 on ;P Channel 9 an episode of It's a Date, 7hich 7as produced )+ 2<: Productions, 2nc. 32<:4. 9n Jul+ 1$, 1991, he 7rote a letter to private respondent (a)riel 6. *osa, president and general manager of 2<:, informing *osa that 1JP2 had a cop+right to Rhoda and Me and demanding that 2<: discontinue airing It's a Date. 2n a letter, dated Jul+ 19, 1991, private respondent *osa apologi,ed to petitioner Joa.uin and re.uested a meeting to discuss a possi)le settlement. 2<:, ho7ever, continued airing 2t0s a Date, prompting petitioner Joa.uin to send a second letter on Jul+ 2%, 1991 in 7hich he reiterated his demand and 7arned that, if 2<: did not compl+, he 7ould endorse the matter to his attorne+s for proper legal action. 6ean7hile, private respondent *osa sought to register 2<:0s cop+right to the first episode of 2t0s a Date for 7hich it 7as issued )+ the ational :i)rar+ a certificate of cop+right August 1&, 1991. =pon complaint of petitioners, an information for violation of P.D. o. &9 7as filed against private respondent *osa together 7ith certain officers of ;P Channel 9, namel+, >illiam ?sposo, -elipe 6edina, and Case+ -rancisco, in the ;egional Trial Court of !ue,on Cit+ 7here it 7as docketed as Criminal Case o. 92"2#$%& and assigned to 1ranch 18& thereof. @o7ever, private respondent *osa sought a revie7 of the resolution of the Assistant Cit+ Prosecutor )efore the Department of Justice. 9n August 12, 1992, respondent Aecretar+ of Justice -ranklin 6. Drilon reversed the Assistant Cit+ Prosecutor0s findings and directed him to move for the dismissal of the case against private respondents. 1 Petitioner Joa.uin filed a motion for reconsideration, )ut his motion denied )+ respondent Aecretar+ of Justice on Decem)er /, 1992. @ence, this petition. Petitioners

contend thatB 1. The pu)lic respondent gravel+ a)used his discretion amounting to lack of Curisdiction D 7hen he invoked non" presentation of the master tape as )eing fatal to the eEistence of pro)a)le cause to prove infringement, despite the fact that private respondents never raised the same as a controverted issue. 2. The pu)lic respondent gravel+ a)used his discretion amounting to lack of Curisdiction 7hen he arrogated unto himself the determination of 7hat is cop+righta)le D an issue 7hich is eEclusivel+ 7ithin the Curisdiction of the regional trial court to assess in a proper proceeding. 1oth pu)lic and private respondents maintain that petitioners failed to esta)lish the eEistence of pro)a)le cause due to their failure to present the cop+righted master videotape of Rhoda and Me. The+ contend that petitioner 1JP20s cop+right covers onl+ a specific episode of Rhoda and Me and that the formats or concepts of dating game sho7s are not covered )+ cop+right protection under P.D. o. &9. on"Assignment of ?rror. Petitioners claim that their failure to su)mit the cop+righted master videotape of the television sho7 ;hoda and 6e 7as not raised in issue )+ private respondents during the preliminar+ investigation and, therefore, it 7as error for the Aecretar+ of Justice to reverse the investigating prosecutor0s finding of pro)a)le cause on this ground. A preliminar+ investigation falls under the authorit+ of the state prosecutor 7ho is given )+ la7 the po7er to direct and control criminal actions. 2 @e is, ho7ever, su)Cect to the control of the Aecretar+ of Justice. Thus, ;ule 112, F& of the ;evised ;ules of Criminal Procedure, providesB Aec. &. Duty of investigating fiscal. D 2f the investigating fiscal finds cause to hold the respondent for trial, he shall prepare the resolution and corresponding information. @e shall certif+ under oath that he, or as sho7n )+ the record, an authori,ed officer, has personall+ eEamined the complainant and his 7itnesses, that there is reasona)le ground to )elieve that a crime has )een committed and that the accused is pro)a)l+ guilt+ thereof, that the accused 7as informed of the complaint and of the evidence su)mitted against him and that he 7as given an opportunit+ to su)mit controverting evidence. 9ther7ise, he shall recommend dismissal of the complaint. 2n either case, he shall for7ard the records of the case to the provincial or cit+ fiscal or chief state prosecutor 7ithin five 3%4 da+s from his resolution. The latter shall take appropriate action thereon ten 3184 da+s from receipt thereof, immediatel+ informing the parties of said action. o complaint or information ma+ )e filed or dismissed )+ an investigating fiscal 7ithout the prior 7ritten authorit+ or approval of the provincial or cit+ fiscal or chief state prosecutor. >here the investigating assistant fiscal recommends the dismissal of the case )ut his findings are reversed )+ the provincial or cit+ fiscal or chief state prosecutor on the ground that a pro)a)le cause eEists, the latter ma+, )+ himself, file the corresponding information against the respondent

or direct an+ other assistant fiscal or state prosecutor to do so, 7ithout conducting another preliminar+ investigation. 2f upon petition )+ a proper part+, the Aecretar+ of Justice reverses the resolution of the provincial or cit+ fiscal or chief state prosecutor, he shall direct the fiscal concerned to file the corresponding information 7ithout conducting another preliminar+ investigation or to dismiss or move for dismissal of the complaint or information. 2n revie7ing resolutions of prosecutors, the Aecretar+ of Justice is not precluded from considering errors, although unassigned, for the purpose of determining 7hether there is pro)a)le cause for filing cases in court. @e must make his o7n finding, of pro)a)le cause and is not confined to the issues raised )+ the parties during preliminar+ investigation. 6oreover, his findings are not su)Cect to revie7 unless sho7n to have )een made 7ith grave a)use. 9pinion of the Aecretar+ of Justice Petitioners contend, ho7ever, that the determination of the .uestion 7hether the format or mechanics of a sho7 is entitled to cop+right protection is for the court, and not the Aecretar+ of Justice, to make. The+ assail the follo7ing portion of the resolution of the respondent Aecretar+ of JusticeB GTHhe essence of cop+right infringement is the cop+ing, in 7hole or in part, of cop+righta)le materials as defined and enumerated in Aection 2 of PD. o. &9. 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 noncopyrighta le material! Ideas, concepts, formats, or schemes in their a stract form clearly do not fall within the class of wor"s or materials suscepti le of copyright registration as provided in #D! $o! %&. * 3?mphasis added.4 2t is indeed true that the .uestion 7hether the format or mechanics of petitioners television sho7 is entitled to cop+right protection is a legal .uestion for the court to make. This does not, ho7ever, preclude respondent Aecretar+ of Justice from making a preliminar+ determination of this .uestion in resolving 7hether there is pro)a)le cause for filing the case in court. 2n doing so in this case, he did not commit an+ grave error. Presentation of 6aster Tape Petitioners claim that respondent Aecretar+ of Justice gravel+ a)used his discretion in ruling that the master videotape should have )een predented in order to determine 7hether there 7as pro)a)le cause for cop+right infringement. The+ contend that '(th )entury *ox *ilm )orporation v! )ourt of Appeals, 4 on 7hich respondent Aecretar+ of Justice relied in reversing the resolution of the investigating prosecutor, is inapplica)le to the case at )ar )ecause in the present case, the parties presented sufficient evidence 7hich clearl+ esta)lish 'linkage )et7een the cop+right sho7 ';hoda and 6e' and the infringing TI sho7 '2t0s a Date.' + The case of 28th Centur+ -oE -ilm Corporation involved raids conducted on various videotape outlets allegedll+ selling or renting out 'pirated' videotapes. The trial court found that the affidavits of 12 agents, given in support of the application for the search 7arrant, 7ere insufficient 7ithout the master tape. Accordingl+, the trial court lifted the search 7arrants it had previousl+ issued against the defendants. 9n petition for revie7, this Court sustained the action of the trial court and ruledB 6 The presentation of the master tapes of the cop+righted films from 7hich

the pirated films 7ere allegedl+ copied, 7as necessar+ for the validit+ of search 7arrants against those 7ho have in their possession the pirated films. The petitioner0s argument to the effect that the presentation of the master tapes at the time of application ma+ not )e necessar+ as these 7ould )e merel+ evidentiar+ in nature and not determinative of 7hether or not a pro)a)le cause eEists to Custif+ the issuance of the search 7arrants is not meritorious. The court cannot presume that duplicate or copied tapes 7ere necessaril+ reproduced from master tapes that it o7ns. The application for search 7arrants 7as directed against video tape outlets 7hich allegedl+ 7ere engaged in the unauthori,ed sale and renting out of cop+righted films )elonging to the petitioner pursuant to P.D. &9. The essence of a cop+right infringement is the similarit+ or at least su)stantial similarit+ of the purported pirated 7orks to the cop+righted 7ork. @ence, the applicant must present to the court the cop+righted films to compare them 7ith the purchased evidence of the video tapes allegedl+ pirated to determine 7hether the latter is an unauthori,ed reproduction of the former. This linkage of the cop+righted films to the pirated films must )e esta)lished to satisf+ the re.uirements of pro)a)le cause. 6ere allegations as to the eEistence of the cop+righted films cannot serve as )asis for the issuance of a search 7arrant. This ruling 7as .ualified in the later case of )olum ia #ictures, Inc! v! )ourt of Appeals , in 7hich it 7as heldB 2n fine, the supposed pronunciamento in said case regarding the necessit+ for the presentation of the master tapes of the cop+righted films for the validit+ of search 7arrants should at most )e understood to merel+ serve as a guidepost in determining the eEistence of pro)a)le cause in cop+right infringement cases where there is dou t as to the true nexus etween the master tape and the printed copies. An o)Cective and careful reading of the decision in said case could lead to no other conclusion than that said directive 7as hardl+ intended to )e a s7eeping and infleEi)le re.uirement in all or similar cop+right infringement cases. . . 8 2n the case at )ar during the preliminar+ investigation, petitioners and private respondents presented 7ritten descriptions of the formats of their respective televisions sho7s, on the )asis of 7hich the investigating prosecutor ruledB As ma+ G)eH gleaned from the evidence on record, the su)stance of the television productions complainant0s ';@9DA A D 6?' and *osa0s '2T0A A DAT?' is that t7o matches are made )et7een a male and a female, )oth single, and the t7o couples are treated to a night or t7o of dining and5or dancing at the eEpense of the sho7. The maCor concepts of )oth sho7s is the same. An+ difference appear mere variations of the maCor concepts. That there is an infringement on the cop+right of the sho7 ';@9DA A D 6?' )oth in content and in the eEecution of the video presentation are esta)lished )ecause respondent0s '2T0A A DAT?' is practicall+ an eEact cop+ of complainant0s ';@9DA A D 6?' )ecause of su)stantial similarities as follo7s, to 7itB

;@9DA A D 6? Aet 1 a. =nmarried participant of one gender 3searcher4 appears on one side of a divider, 7hile three 3/4 unmarried participants of the other gender are on the other side of the divider. This arrangement is done to ensure that the searcher does not see the searchees. ). Aearcher asks a .uestion to )e ans7ered )+ each of the searchees. The purpose is to determine 7ho among the searchees is the most compati)le 7ith the searcher. c. Aearcher speculates on the match to the searchee. d. Aelection is made )+ the use of compute 3sic4 methods, or )+ the 7a+ .uestions are ans7ered, or similar methods. Aet 2 Aame as a)ove 7ith the genders of the searcher and searchees interchanged. 9

'2T0A A DAT?' Aet 1 a. same

). same

c. same d. Aelection is )ased on the ans7er of the Aearchees. Aet 2 same

Petitioners assert that the format of Rhoda and Me is a product of ingenuit+ and skill and is thus entitled to cop+right protection. 2t is their position that the presentation of a point" )+"point comparison of the formats of the t7o sho7s clearl+ demonstrates the neEus )et7een the sho7s and hence esta)lishes the eEistence of pro)a)le cause for cop+right infringement. Auch )eing the case, the+ did not have to produce the master tape. To )egin 7ith the format of a sho7 is not cop+righta)le. Aection 2 of P.D. o. &9, 10 other7ise kno7n as the D?C;?? 9 2 T?::?CT=A: P;9P?;TJ, enumerates the classes of 7ork entitled to cop+right protection, to 7itB Aec. 2. The rights granted )+ this Decree shall, from the moment of creation, su)sist 7ith respect to an+ of the follo7ing classes of 7orksB 3A4 1ooks, including composite and c+clopedic 7orks, manuscripts, directories, and ga,etteersB 314 Periodicals, including pamphlets and ne7spapersK 3C4 :ectures, sermons, addresses, dissertations prepared for oral deliver+K 3D4 :ettersK 3?4 Dramatic or dramatico"musical compositionsK choreographic 7orks and entertainments in dum) sho7s, the acting form of 7hich is fiEed in 7riting or other7iseK 3-4 6usical compositions, 7ith or 7ithout 7ordsK

3(4 >orks of dra7ing, painting, architecture, sculpture, engraving, lithograph+, and other 7orks of artK models or designs for 7orks of artK 3@4 ;eproductions of a 7ork of artK 324 9riginal ornamental designs or models for articles of manufacture, 7hether or not patenta)le, and other 7orks of applied artK 3J4 6aps, plans, sketches, and chartsK 3L4 Dra7ings or plastic 7orks of a scientific or technical characterK 324 Photographic 7orks and 7orks produced )+ a process analogous to photograph+ lantern slidesK 364 Cinematographic 7orks and 7orks produced )+ a process analogous to cinematograph+ or an+ process for making audio"visual recordingsK 3 4 Computer programsK 394 Prints, pictorial illustrations advertising copies, la)els tags, and )oE 7rapsK 3P4 Dramati,ations, translations, adaptations, a)ridgements, arrangements and other alterations of literar+, musical or artistic 7orks or of 7orks of the Philippine government as herein defined, 7hich shall )e protected as provided in Aection $ of this Decree. 3!4 Collections of literar+, scholarl+, or artistic 7orks or of 7orks referred to in Aection 9 of this Decree 7hich )+ reason of the selection and arrangement of their contents constitute intellectual creations, the same to )e protected as such in accordance 7ith Aection $ of this Decree. 3;4 9ther literar+, scholarl+, scientific and artistic 7orks. This provision is su)stantiall+ the same as F1#2 of the 2 T?::?CT=A: P;9P?;TJ C9D? 9- P@2:2PP2 ?A 3;.A. o. $29/4. 11 The format or mechanics of a television sho7 is not included in the list of protected 7orks in F2 of P.D. o. &9. -or this reason, the protection afforded )+ the la7 cannot )e eEtended to cover them. Cop+right, in the strict sense of the term, is purel+ a statutor+ right. 2t is a ne7 or independent right granted )+ the statute, and not simpl+ a pre" eEisting right regulated )+ the statute. 1eing a statutor+ grant, the rights are onl+ such as the statute confers, and ma+ )e o)tained and enCo+ed onl+ 7ith respect to the su)Cects and )+ the persons and on terms and conditions specified in the statute. 12 Aince . . . cop+right in pu)lished 7orks is purel+ a statutor+ creation, a cop+right ma+ )e o)tained onl+ for a 7ork falling 7ithin the statutor+ enumeration or description. 1* ;egardless of the historical vie7point, it is authoritativel+ settled in the =nited Atates that there is no cop+right eEcept that 7hich is )oth created and secured )+ act of Congress . . . . . 14 P.D. o. &9, F2, in enumerating 7hat are su)Cect to cop+right, refers to finished 7orks and not to concepts. The cop+right does not eEtend to an idea, procedure, process, s+stem, method of operation, concept, principle, or discover+, regardless of the form in 7hich it is descri)ed, eEplained, illustrated, or em)odied in such 7ork. 1+Thus, the ne7 2 T?::?CT=A: P;9P?;TJ C9D? 9- T@? P@2:2PP2 ?A providesB

Aec. 1#%. +nprotected ,u -ect Matter. D ot7ithstanding the provisions of Aections 1#2 and 1#/, no protection shall eEtend, under this la7, to an+ idea, procedure, s+stem, method or operation, concept, principle, discover+ or mere data as such, even if the+ are eEpressed, eEplained, illustrated or em)odied in a 7orkK ne7s of the da+ and other miscellaneous facts having the character of mere items of press informationK or an+ official teEt of a legislative, administrative or legal nature, as 7ell as an+ official translation thereof. >hat then is the su)Cect matter of petitioners0 cop+rightM This Court is of the opinion that petitioner 1JP20s cop+right covers audio"visual recordings of each episode of Rhoda and Me, as falling 7ithin the class of 7orks mentioned in P.D. &9, F2364, to 7itB Cinematographic 7orks and 7orks produced )+ a process analogous to cinematograph+ or an+ process for making audio"visual recordingsK The cop+right does not eEtend to the general concept or format of its dating game sho7. Accordingl+, )+ the ver+ nature of the su)Cect of petitioner 1JP20s cop+right, the investigating prosecutor should have the opportunit+ to compare the videotapes of the t7o sho7s. 6ere description )+ 7ords of the general format of the t7o dating game sho7s is insufficientK the presentation of the master videotape in evidence 7as indispensa)le to the determination of the eEistence of pro)a)le cause. As aptl+ o)served )+ respondent Aecretar+ of JusticeB A television sho7 includes more than mere 7ords can descri)e )ecause it involves a 7hole spectrum of visuals and effects, video and audio, such that no similarit+ or dissimilarit+ ma+ )e found )+ merel+ descri)ing the general cop+right5format of )oth dating game sho7s. >@?;?-9;?, the petition is here)+ D2A62AA?D A9 9;D?;?D../wphi.!n0t #uno, 1uisum ing and 2uena, 33!, concur! 2ellosillo, 3!, too" no part! Foo-no-./ 1 Petition, AnneE A, p. &K Rollo, p. 2#.. 2 Aangguniang 1a+an of 1atac, 2locos orte v. Al)ano, 2N8 AC;A %N1 3199N4 / Petition, AnneE 1, pp. 1"2K Rollo, pp. 2$"29. & 1N& AC;A N%% 319$$4. % Petition, p. 1#K Rollo, p. 1$. N Id., at NN/"NN&. # 2N1 AC;A 1&& 3199N4. $ Id., 1#/. 9 Petition AnneE '('K Rollo, pp. &&"&%. 18 Promulgated on ovem)er 1&, 19#2. 11 ?ffective on Januar+ 1, 199$.

Aec. 1#2. 4iterary and Artistic 5or"s. D 1#2.1. :iterar+ and artistic 7orks, hereinafter referred to as '7orks', are original intellectual creations in the literar+ and artistic domain protected from the moment of their creation and shall include in particularB 3a4 1ooks, pamphlets, articles and other 7ritingsK 3)4 Periodicals and ne7spapersK 3c4 :ectures, sermons, addresses, dissertations prepared for oral deliver+ 7hether or not reduced in 7riting or other material formK 3d4 :ettersK 3e4 Dramatic or dramatico"musical compositionsK choreographic 7orks or entertainment in dum) sho7sK 3f4 6usical compositions, 7ith or 7ithout 7ordsK 3g4 >orks of dra7ing, painting, architecture, sculpture, engraving, lithograph+ or other 7orks of artK models or designs for 7orks of artK 3h4 9riginal ornamental designs or models for articles of manufacture, 7hether or not registra)le as an industrial design and other 7orks of applied artK 3i4 2llustrations, maps, plans, sketches, charts and three"dimensional 7orks relative to geograph+, topograph+, architecture or scienceK 3C4 Dra7ings or plastic 7orks of a scientific or technical characterK 3k4 Photographic 7orks including 7orks produced )+ a process analogous to photograph+K lantern slidesK 3l4 Audiovisual 7orks and cinematographic 7orks and 7orks produced )+ a process analogous to cinematograph+ or an+ process for making audio" visual recordingK 3m4 Pictorial illustrations and advertisementsK 3n4 Computer programsK and 3o4 9ther literar+, scholarl+, scientific and artistic 7orks. 12 1$ C.J.A. 1N1. 1/ Id!, at 1N%. 1& @9;AC? (. 1A::, :A> 9- C9PJ;2(@T A D :2T?;A;J P;9P?;TJ &% 319&&4. 1% ?2: 199;ATJ , C9PJ;2(@T :A> 2% 319$14. 1N Comment of Pu)lic ;espondent, p. 9K Rollo, p. 1%2. 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 G.R. No. 1*1+22 Ju1y 19, 1999 PACITA I. HA"ANA, A$ICIA $. CINCO an! JO2ITA N. F%RNAN#O, petitioners,

vs. F%$ICI#A# C. RO"$%S an! GOO#(I$$ TRA#ING CO., INC., respondents. PAR#O, J.: The case )efore us is a petition for revie7 on certiorari 1 to set aside the 3a4 decision or the Court of Appeals 2, and 3)4 the resolution den+ing petitioners0 motion for reconsideration, * in 7hich the appellate court affirmed the trial court0s dismissal of the complaint for infringement and5or unfair competition and damages )ut deleted the a7ard for attorne+0s fees../wphi.!n0t The facts are as follo7sB Petitioners are authors and cop+right o7ners of dul+ issued certificates of cop+right registration covering their pu)lished 7orks, produced through their com)ined resources and efforts, entitled C9::?(? ? (:2A@ -9; T9DAJ 3C?T for )revit+4, 1ooks 1 and 2, and >9;L199L -9; C9::?(? -;?A@6A ? (:2A@, Aeries 1. ;espondent -elicidad ;o)les and (ood7ill Trading Co., 2nc. are the author5pu)lisher and distri)utor5seller of another pu)lished 7ork entitled 'D?I?:9P2 ( ? (:2A@ P;9-2C2? CJ' 3D?P for )revit+4, 1ooks 1 and 2 319$% edition4 7hich )ook 7as covered )+ cop+rights issued to them. 2n the course of revising their pu)lished 7orks, petitioners scouted and looked around various )ookstores to check on other teEt)ooks dealing 7ith the same su)Cect matter. 1+ chance the+ came upon the )ook of respondent ;o)les and upon perusal of said )ook the+ 7ere surprised to see that the )ook 7as strikingl+ similar to the contents, scheme of presentation, illustrations and illustrative eEamples in their o7n )ook, C?T. After an itemi,ed eEamination and comparison of the t7o )ooks 3C?T and D?P4, petitioners found that several pages of the respondent0s )ook are similar, if not all together a cop+ of petitioners0 )ook, 7hich is a case of plagiarism and cop+right infringement. Petitioners then made demands for damages against respondents and also demanded that the+ cease and desist from further selling and distri)uting to the general pu)lic the infringed copies of respondent ;o)les0 7orks. @o7ever, respondents ignored the demands, hence, on Jul+ #, 19$$K petitioners filed 7ith the ;egional Trial Court, 6akati, a complaint for '2nfringement and5or unfair competition 7ith damages' 4 against private respondents. + 2n the complaint, petitioners alleged that in 19$%, respondent -elicidad C. ;o)les )eing su)stantiall+ familiar 7ith the contents of petitioners0 7orks, and 7ithout securing their permission, lifted, copied, plagiari,ed and5or transposed certain portions of their )ook C?T. The teEtual contents and illustrations of C?T 7ere literall+ reproduced in the )ook D?P. The plagiarism, incorporation and reproduction of particular portions of the )ook C?T in the )ook D?P, 7ithout the authorit+ or consent of petitioners, and the misrepresentations of respondent ;o)les that the same 7as her original 7ork and concept adversel+ affected and su)stantiall+ diminished the sale of the petitioners0 )ook and caused them actual damages )+ 7a+ of unreali,ed income. Despite the demands of the petitioners for respondents to desist from committing further acts of infringement and for respondent to recall D?P from the market, respondents refused. Petitioners asked the court to order the su)mission of all copies of the )ook D?P, together 7ith the molds, plates and films and other materials used in its printing

destro+ed, and for respondents to render an accounting of the proceeds of all sales and profits since the time of its pu)lication and sale. ;espondent ;o)les 7as impleaded in the suit )ecause she authored and directl+ committed the acts of infringement complained of, 7hile respondent (ood7ill Trading Co., 2nc. 7as impleaded as the pu)lisher and Coint co"o7ner of the cop+right certificates of registration covering the t7o )ooks authored and caused to )e pu)lished )+ respondent ;o)les 7ith o)vious connivance 7ith one another. 9n Jul+ 2#, 19$$, respondent ;o)les filed a motion for a )ill of particulars 6 7hich the trial court approved on August 1#, 19$$. Petitioners complied 7ith the desired particulari,ation, and furnished respondent ;o)les the specific portions, inclusive of pages and lines, of the pu)lished and cop+righted )ooks of the petitioners 7hich 7ere transposed, lifted, copied and plagiari,ed and5or other7ise found their 7a+ into respondent0s )ook. 9n August 1, 19$$, respondent (ood7ill Trading Co., 2nc. filed its ans7er to the complaint , and alleged that petitioners had no cause of action against (ood7ill Trading Co., 2nc. since it 7as not priv+ to the misrepresentation, plagiarism, incorporation and reproduction of the portions of the )ook of petitionersK that there 7as an agreement )et7een (ood7ill and the respondent ;o)les that ;o)les guaranteed (ood7ill that the materials utili,ed in the manuscript 7ere her o7n or that she had secured the necessar+ permission from contri)utors and sourcesK that the author assumed sole responsi)ilit+ and held the pu)lisher 7ithout an+ lia)ilit+. 9n ovem)er 2$, 19$$, respondent ;o)les filed her ans7er 8, and denied the allegations of plagiarism and cop+ing that petitioners claimed. ;espondent stressed that 314 the )ook D?P is the product of her independent researches, studies and eEperiences, and 7as not a cop+ of an+ eEisting valid cop+righted )ookK 324 D?P follo7ed the scope and se.uence or s+lla)us 7hich are common to all ?nglish grammar 7riters as recommended )+ the Association of Philippine Colleges of Arts and Aciences 3APCAA4, so an+ similarit+ )et7een the respondents )ook and that of the petitioners 7as due to the orientation of the authors to )oth 7orks and standards and s+lla)usK and 3/4 the similarities ma+ )e due to the authors0 eEercise of the 'right to fair use of cop+rigthed materials, as guides.' ;espondent interposed a counterclaim for damages on the ground that )ad faith and malice attended the filing of the complaint, )ecause petitioner @a)ana 7as professionall+ Cealous and the )ook D?P replaced C?T as the official teEt)ook of the graduate studies department of the -ar ?astern =niversit+. 9 During the pre"trial conference, the parties agreed to a stipulation of facts 10 and for the trial court to first resolve the issue of infringement )efore disposing of the claim for damages. After the trial on the merits, on April 2/, 199/, the trial court rendered its Cudgment finding thusB >@?;?-9;?, premises considered, the court here)+ orders that the complaint filed against defendants -elicidad ;o)les and (ood7ill Trading Co., 2nc. shall )e D2A62AA?DK that said plaintiffs solidaril+ reim)urse defendant ;o)les for P28,888.88 attorne+0s fees and defendant (ood7ill for P%,888.88 attorne+0s fees. Plaintiffs are lia)le for cost of suit. 2T 2A A9 9;D?;?D. Done in the Cit+ of 6anila this 2/rd da+ of April, 199/.

3s5t4 6A;I2? ;. A1;A@A6 A2 (A9 Assisting Judge A. C. Adm. 9rder o. 12&"92 11 9n 6a+ 1&, 199/, petitioners filed their notice of appeal 7ith the trial court 12, and on Jul+ 19, 199/, the court directed its )ranch clerk of court to for7ard all the records of the case to the Court of Appeals. 1* 2n the appeal, petitioners argued that the trial court completel+ disregarded their evidence and full+ su)scri)ed to the arguments of respondent ;o)les that the )ooks in issue 7ere purel+ the product of her researches and studies and that the copied portions 7ere inspired )+ foreign authors and as such not su)Cect to cop+right. Petitioners also assailed the findings of the trial court that the+ 7ere animated )+ )ad faith in instituting the complaint. 14 9n June 2#, 199#, the Court of Appeals rendered Cudgment in favor of respondents ;o)les and (ood7ill Trading Co., 2nc. The relevant portions of the decision stateB 2t must )e noted, ho7ever, that similarit+ of the allegedl+ infringed 7ork to the author0s or proprietor0s cop+righted 7ork does not of itself esta)lish cop+right infringement, especiall+ if the similarit+ results from the fact that )oth 7orks deal 7ith the same su)Cect or have the same common source, as in this case. Appellee ;o)les has full+ eEplained that the portion or material of the )ook claimed )+ appellants to have )een copied or lifted from foreign )ooks. Ahe has dul+ proven that most of the topics or materials contained in her )ook, 7ith particular reference to those matters claimed )+ appellants to have )een plagiari,ed 7ere topics or matters appearing not onl+ in appellants and her )ooks )ut also in earlier )ooks on College ?nglish, including foreign )ooks, e.i. ?dmund 1urke0s 'Apeech on Conciliation', 1oerigs0 'Competence in ?nglish' and 1roughton0s, '?dmund 1urke0s Collection.' EEE EEEEEE Appellant0s reliance on the last paragraph on Aection 22 is misplaced. 2t must )e emphasi,ed that the+ failed to prove that their )ooks 7ere made sources )+ appellee. 1+ The Court of Appeals 7as of the vie7 that the a7ard of attorne+s0 fees 7as not proper, since there 7as no )ad faith on the part of petitioners @a)ana et al. in instituting the action against respondents. 9n Jul+ 12, 199#, petitioners filed a motion for reconsideration, 16 ho7ever, the Court of Appeals denied the same in a ;esolution 1, dated ovem)er 2%, 199#. @ence, this petition. 2n this appeal, petitioners su)mit that the appellate court erred in affirming the trial court0s decision. Petitioners raised the follo7ing issuesB 314 7hether or not, despite the apparent teEtual, thematic and se.uential similarit+ )et7een D?P and C?T, respondents committed no cop+right infringementK 324 7hether or not there 7asanimusfurandi on the part of respondent 7hen the+ refused to 7ithdra7 the copies of C?T from the market despite notice to 7ithdra7 the sameK and 3/4 7hether or not respondent ;o)les a)used a 7riter0s

right to fair use, in violation of Aection 11 of Presidential Decree o. &9. 18 >e find the petition impressed 7ith merit. The complaint for cop+right infringement 7as filed at the time that Presidential Decree o. &9 7as in force. At present, all la7s dealing 7ith the protection of intellectual propert+ rights have )een consolidated and as the la7 no7 stands, the protection of cop+rights is governed )+ ;epu)lic Act o. $29/. ot7ithstanding the change in the la7, the same principles are reiterated in the ne7 la7 under Aection 1##. 2t provides for the cop+ or economic rights of an o7ner of a cop+right as follo7sB Aec. 1##. )opy or 6conomic rights. D Au)Cect to the provisions of chapter I222, cop+right or economic rights shall consist of the eEclusive right to carr+ out, authori,e or prevent the follo7ing actsB 1##.1 ;eproduction of the 7ork or su stanlial portion of the 7orkK 1##.2 Dramati,ation, translation, adaptation, a)ridgement, arrangement or other transformation of the 7orkK 1##./ The first pu)lic distri)ution of the original and each cop+ of the 7ork )+ sale or other forms of transfer of o7nershipK 1##.& ;ental of the original or a cop+ of an audiovisual or cinematographic 7ork, a 7ork em)odied in a sound recording, a computer program, a compilation of data and other materials or a musical 7ork in graphic form, irrespective of the o7nership of the original or the cop+ 7hich is the su)Cect of the rentalK 3n4 1##.% Pu)lic displa+ of the original or cop+ of the 7orkK 1##.N Pu)lic performance of the 7orkK and 1##.# 9ther communication to the pu)lic of the 7ork 19 The la7 also provided for the limitations on cop+right, thusB Aec. 1$&.1 4imitations on copyright. D ot7ithstanding the provisions of Chapter I, the follo7ing acts shall not constitute infringement of cop+rightB 3a4 the recitation or performance of a 7ork, once it has )een la7full+ made accessi)le to the pu)lic, if done privatel+ and free of charge or if made strictl+ for a charita)le or religious institution or societ+K GAec. 18314, P.D. o. &9H 3)4 The making of .uotations from a pu)lished 7ork if the+ are compati)le 7ith fair use and onl+ to the eEtent Custified for the purpose, including .uotations from ne7spaper articles and periodicals in the form of press summariesK #rovided, that the source and the name of the author, if appearing on the 7ork are mentionedK 3Aec. 11 third par. P.D. &94 EEE EEEEEE 3e4 7he inclusion of a wor" in a pu lication, )roadcast, or other communication to the pu)lic, sound recording of film, if such inclusion is made )+ 7a+ of illustration for teaching purposes and is compati)le 7ith fair useB#rovided, 7hat the source and the name of the author, if

appearing in the wor" is mentionedK 20 2n the a)ove .uoted provisions, '7ork' has reference to literar+ and artistic creations and this includes )ooks and other literar+, scholarl+ and scientific 7orks. 21 A perusal of the records +ields several pages of the )ook D?P that are similar if not identical 7ith the teEt of C?T. 9n page &8& of petitioners0 1ook 1 of College ?nglish for Toda+, the authors 7roteB Items in dates and addressesB @e died on 6onda+, April 1%, 19#%. 6iss ;e+es lives in 21& Taft Avenue, 6anila 22 9n page #/ of respondents 1ook 1 Developing ?nglish Toda+, the+ 7roteB @e died on 6onda+, April 2%, 19#%. 6iss ;e+es address is 21& Taft Avenue 6anila 2* 9n Page 2%8 of C?T, there is this eEample on parallelism or repetition of sentence structures, thusB The proposition is peace. ot peace through the medium of 7arK not peace to )e hunted through the la)+rinth of intricate and endless negotiationsK not peace to arise out of universal discord, fomented from principle, in all parts of the empireK not peace to depend on the Curidical determination of perpleEing .uestions, or the precise marking of the )oundar+ of a compleE government. 2t is simple peaceK sought in its natural course, and in its ordinar+ haunts. 2t is peace sought in the spirit of peace, and laid in principles purel+ pacific. D ?dmund 1urke, 'Apeech on Criticism.' 24 9n page 188 of the )ook D?P 2+, also in the topic of parallel structure and repetition, the same eEample is foundintoto. The onl+ difference is that petitioners ackno7ledged the author ?dmund 1urke, and respondents did not. 2n several other pages 26 the treatment and manner of presentation of the topics of D?P are similar if not a rehash of that contained in C?T. >e )elieve that respondent ;o)les0 act of lifting from the )ook of petitioners su)stantial portions of discussions and eEamples, and her failure to ackno7ledge the same in her )ook is an infringement of petitioners0 cop+rights. >hen is there a su)stantial reproduction of a )ookM 2t does not necessaril+ re.uire that the entire cop+righted 7ork, or even a large portion of it, )e copied. 2f so much is taken that the value of the original 7ork is su)stantiall+ diminished, there is an infringement of cop+right and to an inCurious eEtent, the 7ork is appropriated. 2, 2n determining the .uestion of infringement, the amount of matter copied from the cop+righted 7ork is an important consideration. To constitute infringement, it is not necessar+ that the 7hole or even a large portion of the 7ork shall have )een copied. 2f so much is taken that the value of the original is sensi)l+ diminished, or the la)ors of the original author are su)stantiall+ and to an inCurious eEtent appropriated )+ another, that is sufficient in point of la7 to constitute pirac+. 28 The essence of intellectual pirac+ should )e essa+ed in conceptual terms in order to

underscore its gravit+ )+ an appropriate understanding thereof. 2nfringement of a cop+right is a trespass on a private domain o7ned and occupied )+ the o7ner of the cop+right, and, therefore, protected )+ la7, and infringement of cop+right, or pirac+, 7hich is a s+non+mous term in this connection, consists in the doing )+ an+ person, 7ithout the consent of the o7ner of the cop+right, of an+thing the sole right to do 7hich is conferred )+ statute on the o7ner of the cop+right.29 The respondents0 claim that the copied portions of the )ook C?T are also found in foreign )ooks and other grammar )ooks, and that the similarit+ )et7een her st+le and that of petitioners can not )e avoided since the+ come from the same )ackground and orientation ma+ )e true. @o7ever, in this Curisdiction under Aec 1$& of ;epu)lic Act $29/ it is provided thatB :imitations on Cop+right. ot7ithstanding the provisions of Chapter I, the follo7ing shall not constitute infringement of cop+rightB EEE EEEEEE 3c4 The making of .uotations from a pu)lished 7ork if the+ are compati)le 7ith fair use and onl+ to the eEtent Custified for the purpose, including .uotations from ne7spaper articles and periodicals in the form of press summariesB #rovided, That the source and the name of the author, if appearing on the 7ork, are mentioned. A cop+ of a pirac+ is an infringement of the original, and it is no defense that the pirate, in such cases, did not kno7 7hether or not he 7as infringing an+ cop+rightK he at least kne7 that 7hat he 7as cop+ing 7as not his, and he copied at his peril. *0 The neEt .uestion to resolve is to 7hat eEtent can cop+ing )e inCurious to the author of the )ook )eing copied. 2s it enough that there are similarities in some sections of the )ooks or large segments of the )ooks are the sameM 2n the case at )ar, there is no .uestion that petitioners presented several pages of the )ooks C?T and D?P that more or less had the same contents. 2t ma+ )e correct that the )ooks )eing grammar )ooks ma+ contain materials similar as to some technical contents 7ith other grammar )ooks, such as the segment a)out the 'Author Card'. @o7ever, the numerous pages that the petitioners presented sho7ing similarit+ in the st+le and the manner the )ooks 7ere presented and the identical eEamples can not pass as similarities merel+ )ecause of technical consideration. The respondents claim that their similarit+ in st+le can )e attri)uted to the fact that )oth of them 7ere eEposed to the APCAA s+lla)us and their respective academic eEperience, teaching approach and methodolog+ are almost identical )ecause the+ 7ere of the same )ackground. @o7ever, 7e )elieve that even if petitioners and respondent ;o)les 7ere of the same )ackground in terms of teaching eEperience and orientation, it is not an eEcuse for them to )e identical even in eEamples contained in their )ooks. The similarities in eEamples and material contents are so o)viousl+ present in this case. @o7 can similar5identical eEamples not )e considered as a mark of cop+ingM >e consider as an indicia of guilt or 7rongdoing the act of respondent ;o)les of pulling out from (ood7ill )ookstores the )ook D?P upon learning of petitioners0 complaint 7hile pharisaicall+ den+ing petitioners0 demand. 2t 7as further noted that 7hen the )ook D?P 7as re"issued as a revised version, all the pages cited )+ petitioners to contain portion of their )ook College ?nglish for Toda+ 7ere eliminated.

2n cases of infringement, cop+ing alone is not 7hat is prohi)ited. The cop+ing must produce an 'inCurious effect'. @ere, the inCur+ consists in that respondent ;o)les lifted from petitioners0 )ook materials that 7ere the result of the latter0s research 7ork and compilation and misrepresented them as her o7n. Ahe circulated the )ook D?P for commercial use did not ackno7ledged petitioners as her source. @ence, there is a clear case of appropriation of cop+righted 7ork for her )enefit that respondent ;o)les committed. Petitioners0 7ork as authors is the product of their long and assiduous research and for another to represent it as her o7n is inCur+ enough. 2n cop+righting )ooks the purpose is to give protection to the intellectual product of an author. This is precisel+ 7hat the la7 on cop+right protected, under Aection 1$&.1 3)4. !uotations from a pu)lished 7ork if the+ are compati)le 7ith fair use and onl+ to the eEtent Custified )+ the purpose, including .uotations from ne7spaper articles and periodicals in the form of press summaries are allo7ed provided that the source and the name of the author, if appearing on the 7ork, are mentioned. 2n the case at )ar, the least that respondent ;o)les could have done 7as to ackno7ledge petitioners @a)ana et.al. as the source of the portions of D?P. The final product of an author0s toil is her )ook. To allo7 another to cop+ the )ook 7ithout appropriate ackno7ledgment is inCur+ enough. >@?;?-9;?, the petition is here)+ (;A T?D. The decision and resolution of the Court of Appeals in CA"(. ;. CI o. &&8%/ are A?T AA2D?. The case is ordered remanded to the trial court for further proceedings to receive evidence of the parties to ascertain the damages caused and sustained )+ petitioners and to render decision in accordance 7ith the evidence su)mitted to it. A9 9;D?;?D. 8apunan and 9nares-,antiago, 33!, concur! Davide, 3r!, )!3!, I dissent, please see dissenting opinion! Melo, 3!, no part, personal reason! S.3ara-. O34n4on/ #A2I#%, JR., C.J., dissenting opinionB 2 am una)le to Coin the maCorit+ vie7. -rom the follo7ing factual and procedural antecedents, 2 find no alternative )ut to sustain )oth the trial court and the Court of Appeals. 9n 12 Jul+ 19$$, @A1A A, et al. filed 7ith the trial court a complaint for infringement and unfair competition, 7ith damages against private respondent -elicidad C. ;o)les 3hereafter ;91:?A4 and her pu)lisher and distri)utor, (ood7ill Trading Co., 2nc. 3hereafter (99D>2::4. The case 7as docketed as Civil Case o. $$"1/1#. @A1A A, et al. averred in their complaint that the+ 7ere the co"authors and Coint cop+right o7ners of their pu)lished 7orks College ?nglish for Toda+, 1ooks 1 and 2 3hereafter C?T4 and >ork)ook for College -reshman ?nglish, Aeries 1 1K the+ discovered that ;91:?A0 o7n pu)lished 7orks, Developing ?nglish Proficienc+, 1ooks 1 and 2, 3hereafter D?P4, pu)lished and distri)uted in 19$%, eEhi)ited an uncann+ resem)lance, if not outright ph+sical similarit+, to C?T as to content, scheme, se.uence of topics and ideas, manner of presentation and illustrative eEamplesK the plagiarism, incorporation and reproduction of particular portions of C?T into D?P could not )e

gainsaid since ;91:?A 7as su)stantiall+ familiar 7ith C?T and the teEtual asportation 7as accomplished 7ithout their authorit+ and5or consentK ;91:?A and (99D>2:: Cointl+ misrepresented D?P 3over 7hich the+ shared cop+right o7nership4 'as the former0s original pu)lished 7orks and conceptK' and 'not7ithstanding formal demands made . . . to cease and desist from the sale and distri)ution of D?P, G;91:?A and (99D>2::H persistentl+ failed and refused to compl+ there7ith.' @A1A A et al. then pra+ed for the court toB 314 order the su)mission and thereafter the destruction of all copies of D?P, together 7ith the molds, plates, films and other materials used in the printing thereofK 324 re.uire ;91:?A and (99D>2:: to render an accounting of the sales of the 'infringing 7orks from the time of its 3sic4 inceptive pu)lication up to the time of Cudgment, as 7ell as the amount of sales and profits . . . derivedK' and 3/4 to enCoin ;91:?A and (99D>2:: to solidaril+ pa+ actual, moral and eEemplar+ damages, as 7ell as attorne+0s fees and eEpenses of litigation. 2n its Ans7er, (99D>2:: denied culpa)ilit+ since 'it had no kno7ledge or information sufficient to form a )elief as to the allegations of plagiarism, incorporation and reproduction' and hence 'could not )e priv+ to the same, if 3there 7ere4 an+K' and that in an Agreement 7ith co"defendant ;91:?A, the latter 7ould )e solel+ responsi)le for acts of plagiarism or violations of cop+right or an+ other la7, to the eEtent of ans7ering for an+ and all damages (99D>2:: ma+ suffer. (99D>2:: also interposed a compulsor+ counterclaim against PAC2TA, et al. and a crossclaim against its co"defendant anchored on the aforementioned Agreement. 2n her ans7er, ;91:?A asserted thatB 314 D?P 7as the eEclusive product of her independent research, studies and eEperienceK 324 D?P, particularl+ the segments 7here the alleged literal similitude appeared, 7ere admittedl+ influenced or inspired )+ earlier treatises, mostl+ )+ foreign authorsK )ut that 'influences and5or inspirations from other 7riters' like the methodolog+ and techni.ues as to presentation, teaching concept and design, research and orientation 7hich she emplo+ed, fell 7ithin the am)it of general information, ideas, principles of general or universal kno7ledge 7hich 7ere commonl+ and customaril+ understood as incapa)le of private and eEclusive use, appropriation or cop+rightK and 3/4 her 7orks 7ere the result of the legitimate and reasona)le eEercise of an author0s 'right to fair use of even cop+righted materials as GaH guide.' Ahe further claimed that her various national and regional professional activities in general education, language and literature, as 7ell as her teaching eEperience in graduate and post graduate education 7ould o)viate the remotest possi)ilit+ of plagiarism. ;91:?A like7ise suggested that an+ similarit+ )et7een D?P and C?T as regards scope and se.uence could )e attri)uted to 'the orientation of the authors to the scope and se.uence or s+lla)us D 7hich incorporates standards kno7n among ?nglish grammar )ook 7riters D of the su)Cect"matter for 1asic Communication Arts recommended )+ the Association of Philippine Colleges of Arts and Aciences 3APCAA4.' >hile the s+lla)us 7as admittedl+ adopted in D?P, she claimed to have treated .uite differentl+ in D?P the ver+ ideas, techni.ues or principles eEpressed in C?T such that neither teEt)ook could )e considered a cop+ or plagiarism of the other. At the pre"trial conference, the parties agreed to a stipulation of facts 2 and for the court to first resolve the issue of infringement )efore disposing of the claims for damages. After trial on the merits, the trial court rendered its decision in favor of defendants, the dispositive portion of 7hich readsB >@?;?-9;?, premises considered, the Court here)+ orders that the complaint filed against defendants -elicidad ;o)les and (ood7ill Trading Co., 2nc. shall )e D2A62AA?DB that said plaintiffs solidaril+ reim)urse

defendant ;o)les for P28,888.88 attorne+0s fees and defendant (ood7ill for P%,888.88 attorne+0s fees. Plaintiffs are lia)le for costs of suit. 2T 2A A9 9;D?;?D. * oting that the la7 applica)le to the case 7as Presidential Decree o. &9, 4 the trial court found that @A1A A, et al. failed to discharge their onus of proving that ;91:?A and (99D>2:: committed acts constituting cop+right infringement. 6oreover, the trial court found that 'the cause of action or acts complained of G7ereH not covered )+ said decree' as Aection 18 thereof )arred authors of 7orks alread+ la7full+ made accessi)le to the pu)lic from prohi)iting the reproductions, translations, adaptations, recitation and performance of the same, 7hile Aection 11 allo7ed the utili,ation of reproductions, .uotations and eEcerpts of such 7orks. The trial court thus agreed 7ith ;91:?A that 'the complained acts G7ereH of general and universal kno7ledge and use 7hich plaintiffs cannot claim originalit+ or seek redress to the la7 for protection' and o)served that D?P and C?T had the same sources, consisting chiefl+ of earlier 7orks, mostl+ foreign )ooks. (99D>2::0s crossclaim against ;91:?A, counterclaim against @A1A A, et al. as 7ell as ;91:?A0 compulsor+ counterclaim against (99D>2:: 7ere all dismissed for lack of factual and legal )ases. @A1A A, et al. appealed to the Court of Appeals. The case 7as docketed as CA"(.;. CI o. &&8%/. 1efore said court @A1A A, et al., in the main, argued that the trial court totall+ disregarded their evidence and merel+ su)scri)ed to ;91:?A0 arguments. The Court of Appeals, ho7ever, like7ise disposed of the controvers+ in favor of ;91:?A and (99D>2::. + @o7ever, the Court of Appeals modified the trial court0s decision )+ reversing the a7ard for attorne+0s fees. 2t held that the good faith and sincerit+ of @A1A A, et al. in commencing the action negated the )asis therefor. Their motion for reconsideration having )een denied for 7ant of cogent reasons, @A1A A, et al., instituted this petition. The+ claim that the Court of Appeals committed reversi)le error in failing to appreciateB 314 the insupera)le evidence and facts admitted and proved demonstrating plagiarism or pirac+ and instead afforded full 7eight and credit to ;91:?A0 matriE of general, h+pothetical and s7eeping statements and5or defensesK 324 ;91:?A0 and (99D>2::0s animofurandi or intent to appropriate or cop+ C?T 7ith the non"removal of the damaging copies of D?P from the )ookstores despite notice to 7ithdra7 the sameK and 3/4 the fact that ;91:?A a)used a 7riter0s right to fair use, in violation of Aection 11 of P.D. o. &9. 6 The+ invoke 4a"taw v. #aglinawan , 7hich, the+ theori,e is on all fours 7ith the case at )ar. ;91:?A contends that appeal )+ certiorari does not lie in this case for the challenged decision and the trial court0s Cudgment 7ere ampl+ supported )+ evidence, pertinent la7s and Curisprudence. @ence, her counterclaim for moral damages should, therefore, )e granted or for us to order the remand of the case to the trial court for reception of evidence on damages. (99D>2::, on its part, stood pat on its disclaimer, 7ith the assertion that no proof 7as ever introduced. that it co"authored D?P or that it singl+ or in ca)al 7ith ;91:?A committed an+ act constituting cop+right infringement. The core issue then is 7hether or not the Court of Appeals erred in affirming the trial court0s Cudgment that despite the apparent teEtual, thematic and se.uential similarit+ )et7een D?P and C?T, no cop+right 7as committed )+ ;91:?A and (99D>2::. >hile the complaint, in Civil Case o. $$"1/1# 7as filed during the effectivit+ of P.D. o. &9, the provisions of the ne7 intellectual propert+ la7, ;.A. o. $29/, 8 nevertheless )ears significance here. 2t took effect on 1 Januar+ 199$, )ut its Aection 2/9./ clearl+

states that its provisions shall appl+ to 7orks in 7hich cop+right protection o)tained prior to the effectivit+ of the Act su)sists, provided, ho7ever, that the application of the Act shall not result in the diminution of such protection. Also, the philosoph+ )ehind )oth statutes as 7ell as the essential principles of cop+right protection and cop+right infringement have, to a certain eEtent, remained the same. A cop+right ma+ )e accuratel+ defined as the right granted )+ statute to the proprietor of an intellectual production to its eEclusive use and enCo+ment to the eEtent specified in the statute. 9 =nder Aection 1## of ;.A. o. $29/, 10the cop+ or economic right 3cop+right and economic right are used interchangea)l+ in the statute4 consists of the eEclusive right to carr+ out, authori,e or prevent the follo7ing actsB 1##.1 ;eproduction of the 7ork or su)stantial portion of the 7orkK 1##.2 Dramati,ation, translation, adaptation, a)ridgment, arrangement or other transformation of the 7orkK 1##./ The first pu)lic distri)ution of the original and each cop+ of the 7ork )+ sale or other forms of transfer of o7nershipK 1##.& ;ental of the original or a cop+ of an audiovisual or cinematographic 7ork, a 7ork em)odied in a sound recording, a computer program, a compilation of data and other materials or a musical 7ork in graphic form, irrespective of the o7nership of the original or the cop+ 7hich is the su)Cect of the rentalK 1##.% Pu)lic displa+ of the original or a cop+ of the 7orkK 1##.N Pu)lic performance of the 7orkK and 1##.# 9ther communication to the pu)lic of the 7ork. 'The 7ork,' as repeatedl+ mentioned, refers to the literar+ and artistic 7orks defined as original intellectual creations in the literar+ and artistic domain protected from the moment of their creation and enumerated in Aection 1#2.1, 7hich includes )ooks and other literar+, scholarl+, scientific and artistic 7orks. 11 Atripped in the meantime of its indisputa)le social and )eneficial functions, 12 the use of intellectual propert+ or creations should )asicall+ promote the creator or author0s personal and economic gain. @ence, the cop+right protection eEtended to the creator should ensure his attainment of some form of personal satisfaction and economic re7ard from the 7ork he produced. >ithout conceding the suita)ilit+ of :akta7 as precedent, the Court there .uoted 6anresa and eEplainedB @e 7ho 7rites a )ook, or carves a statute, or makes an invention, has the a)solute right to reproduce or sell it, Cust as the o7ner of the land has the a)solute right to sell it or its fruits. 1ut 7hile the o7ner of the land, )+ selling it and its fruits, perhaps full+ reali,es all its economic value, )+ receiving its )enefits and utilities, 7hich are represented for eEample, )+ the price, on the other hand the author of a )ook, statue or invention does not reap all the )enefits and advantages of his o7n propert+ )+ disposing of it, for the most important form of reali,ing the economic advantages of a )ook, statue or invention, consists in the right to reproduce it in similar or like copies, ever+one of 7hich serves to give to the person reproducing them all the conditions 7hich the original re.uires in order to give the author the full enCo+ment thereof. 2f the author of a )ook, after its pu)lication, cannot prevent its reproduction )+ an+ person 7ho ma+ 7ant

to reproduce it, then the propert+ right granted him is reduced to a ver+ insignificant thing and the effort made in the production of the )ook is in no 7a+ re7arded. 1* The eEecution, therefore, of an+ one or more of the eEclusive rights conferred )+ la7 on a cop+right o7ner, 7ithout his consent, constitutes cop+right infringement. 2n essence, cop+right infringement, kno7n in general as 'pirac+,' is a trespass on a domain o7ned and occupied )+ a cop+right o7nerK it is violation of a private right protected )+ la7.14 >ith the invasion of his propert+ rights, a cop+right o7ner is naturall+ entitled to seek redress, enforce and hold accounta)le the defrauder or usurper of said economic rights. o7, did ;91:?A and (99D>2:: infringe upon the cop+right of @A1A A et al. )+ pu)lishing D?P, 7hich the latter alleged to )e a reproduction, or in the least, a su)stantial reproduction of C?TM 1oth the trial court and respondent court found in the negative. 2 su)mit the+ 7ere correct. To constitute infringement, the usurper must have copied or appropriated the 'original' 7ork of an author or cop+right proprietorK 1+ a)sent cop+ing, there can )e no infringement of cop+right. 16 2n turn, a 7ork is deemed )+ la7 an original if the author created it )+ his o7n skill, la)or and Cudgment. 1, 9n its part, a cop+ is that 7hich comes so near to the original so as to give to ever+ person seeing it the idea created )+ the original. 2t has )een held that the test of cop+right infringement is 7hether an ordinar+ o)server comparing the 7orks can readil+ see that one has )een copied from the other. 18 A visual comparison of the portions of C?T 19 CuEtaposed against certain pages of D?P, 20 7ould inescapa)l+ lead to a conclusion that there is a discerni)le similarit+ )et7een the t7oK ho7ever, as correctl+ assessed )+ respondent court and the lo7er court, no conclusion, can )e dra7n that D?P, in legal contemplation, is a cop+ of C?T. >as D?P a su)stantial reproduction of C?TM To constitutes a su)stantial reproduction, it is not necessar+ that the entire cop+righted 7ork, or even a large portion of it, )e copied, if so much is taken that the value of the original is su)stantiall+ diminished, or if the la)ors of the original author are su)stantiall+, and to an inCurious eEtent, appropriated. 21 1ut the similarit+ of the )ooks here does not amount to an appropriation of a su)stantial portion of C?T. 2f the eEistence of su)stantial similarities does not of itself esta)lish infringement, 22 mere similarities 3not su)stantial similarities4 in some sections of the )ooks in .uestion decisivel+ militate against a claim for infringement 7here the similarities had )een convincingl+ esta)lished as proceeding from a num)er of reasons and5or factors. 1. As )oth )ooks are grammar )ooks, the+ inevita)l+ deal 7ith the same su)Cects t+picall+ and ordinaril+ treated )+ 7riters of such genre, 2* e.g., s+stem of )ook classification, the different kinds of card catalogs and their entries, use of punctuation marks, paragraphs, the characteristics of an effective paragraph, language structure, different parts of a )ook, etc. These standard su)Cects fall 7ithin the domain of ideas, concepts, universal and general kno7ledge that have, as admitted )+ the protagonists here, )een in eEistence for .uite a long time. 24 As such, @A1A A, et al. cannot demand monopol+, )+ 7a+ of eEample, in the use of the recogni,ed li)rar+ classification s+stems 3De7e+ Decimal A+stem and the :i)rar+ of Congress A+stem4, or ho7 a )ook can )e divided into parts 3frontispiece, title page, cop+right page, preface, ta)le of contents, etc.4 or to the different headings used in a card catalogue 3title card, author card and su)Cect card4, since these are of common or general kno7ledge. ?ven in this Curisdiction, no protection can )e eEtended to such an idea, procedure, s+stem method or operation, concept, principle, discover+ or mere data, even if eEpressed, eEplained, illustrated or

em)odied in a 7ork. 2+ 2. As found )+ respondent court, C?T and D?P had common sources and materials, 26 such that the particular portions claimed to have )een lifted and literall+ reproduced also appeared in earlier 7orks, mostl+ )+ foreign authors. This is clear from the testimon+ of petitioner Dr. Pacita @a)anaB ! :et0s clarif+ +our position Dra. @a)ana. >hen defendants test 3sic4 sho7ed 18 7ords similar to +ours, +ou so concluded it 7as 3sic4 copied from +ours )ut 7hen 2 pointed out to +ou same 3sic4 7ords contained in the earlier )ook of >ills then +ou earlier in +our test in +our )ook 3sic4 +ou refused to admit that it 7as copied from >ills. A Jes, sir. >e have never D all /% 7ords 7ere copied from there. ! 1ut 7hat 2 am asking ho7 could +ou conclude that )+ Cust similarit+ of 18 7ords of defendants 7ords that 7as copied from +ours GsicH and 7hen 2 point out to +ou the similarit+ of that same 7ords from the 7ords earlier than +ours 3sic4 +ou refused to admit that +ou copiedM A 2 7ould like to change the final statement no7 that in the case of defendant ;o)les +ou pointed out her source ver+ clear. Ahe copied it from that )ook )+ >ills. ! Ao, she did not cop+ it from +oursM A Alright, ma+)e she did not cop+ it )ut definitel+ it is a pattern of plagerism GsicH. 2, /. Aimilarit+ in orientation and st+le can like7ise )e attri)uted to the eEposure of the authors to the APCAA s+lla)us and their respective academic eEperience, teaching approaches and methodolog+. 2t is not farfetched that the+ could have even influenced each other as teEt)ook 7riters. ;91:?A and Dr. Pacita @a)ana 7ere facult+ mem)ers of the 2nstitute of ?nglish of the -ar ?astern =niversit+ from 19N& to 19#&. 28 1oth 7ere ardent students, researchers, lecturers, teEt)ook 7riters and teachers of ?nglish and grammar. The+ even used to )e on friendl+ terms 7ith each other, to the eEtent that Dr. @a)ana admitted that ;91:?A assisted the former in the preparation of her doctoral dissertation. (iven their near"identical academic and professional )ackground, it is natural the+ 7ould use man+ eEpressions and definitions peculiar to teaching ?nglish grammar. 2t comes therefore 7ith no surprise that there are similarities in some parts of the rival )ooks. 2ndeed, it is difficult to conceive ho7 7riters on the same su)Cect matter can ver+ 7ell avoid resorting to common sources of information and materials and emplo+ing similar eEpressions and terms peculiar to the su)Cect the+ are treating. 29 To illustrate, an eEcerpt from page 21 of C?T readsB Author Card The author card is the main entr+ card. 2t contains 1. the author0s complete name on the first line, surname first, 7hich ma+ )e follo7ed )+ the date of his )irth and death if he is no longer livingK 2. the title of the )ook, and the su)title, if there is oneK

/. the edition, if it is not the firstK &. the translator or illustrator, if there is an+K %. the imprint 7hich includes the pu)lisher, the place and date of pu)licationK N. the collation composed of the num)er of pages, volume, illustrations, and the si,e of the )ookK #. the su)Cects 7ith 7hich the )ook deals GsicHK $. the call num)er on the upper left"hand corner. ames )eginning 7ith 6c, or 6 are filed in the card catalog as though spelled out as 6AC, for eEample 6c(ra7 D 6ac(ra7. The same is true of At. and Aaint. >hile a portion of D?P found on page 1$ 7hich discusses the author card providesB The author card is the main entr+ card containingB 1. the author0s complete name on the first line, surname first, 7hich ma+ )e follo7ed )+ the date of his )irth and death if he is no longer livingK 2. the title of the )ook, and the su)title if there is oneK /. the edition, if it is not the firstK &. the translator or illustrator, if an+K %. the imprint 7hich includes the pu)lisher, the place and date of pu)licationK N. the collation, composed of the num)er of pages, volume, illustrations, and the si,e of the )ookK #. the su)Cect 7ith 7hich the )ook dealsK and $. the call num)er on the upper"left hand corner. ames )eginning 7ith 6C, or 6 are filed in the card catalog considered spelled out as 6AC, for eEampleB 6cleod"6acleod. This is true also of At. and Aaint. The entries found in an author card, having )een developed over .uite sometime, are eEpectedl+ uniform. @ence, @A1A A et al. and ;91:?A 7ould have no choice )ut to articulate the terms particular to the entries in an identical manner. 2 thus find that the ruling of the respondent court is totall+ supported )+ the evidence on record. 9f doctrinal persuasion is the principle that factual determinations of the Court of Appeals and the trial court are conclusive and )inding upon this Court, and the latter 7ill not, as a rule, distur) these findings unless compelling and cogent reasons necessitate a reeEamination, if not a reversal, of the same. *0 Tested against this Curisprudential canon, to su)Cect the challenged decision of the Court of Appeals to further scrutin+ 7ould )e superfluous, if not, improvident. 2 am not persuaded )+ the claim of @A1A A, et al. that :akta7 is on all fours 7ith and hence applica)le to the case at )ar. There, this Court disposed that defendant, 7ithout the consent of and causing irrepara)le damage to :akta7, reproduced the latter0s literar+ 7ork Diccionario@isapano"Tagalog, and improperl+ copied the greater part thereof in the

7ork DiccionariongLastila"Tagalog pu)lished )+ defendant, in violation of Article # of the :a7 of 18 Januar+ 1$#9 on 2ntellectual Propert+. This Court anchored its decision on the follo7ing o)servationsB 314 G9H the 2/,%N8 Apanish 7ords in the defendant0s dictionar+ . . . onl+ /,18$ 7ords are the defendant0s o7n, or, 7hat is the same thing, the defendant has added onl+ this num)er of 7ords to those that are in the plaintiff0s dictionar+, he having reproduced or copied the remaining 28,&%2 7ordsK 324 GTHhe defendant also literall+ reproduced and copied for the Apanish 7ords in his dictionar+, the e.uivalents, definitions and different meanings in Tagalog, given in plaintiffs dictionar+, having reproduced, as to some 7ords, ever+thing that appears in the plaintiff0s dictionar+ for similar Apanish 7ords, although as to some he made some additions of his o7n. Aaid copies and reproductions are numerous. . .K 3/4 GTHhe printer0s errors in the plaintiff0s dictionar+ as to the eEpression of some 7ords in Apanish as 7ell as their e.uivalents in Tagalog are also reproduced, a fact 7hich sho7s that the defendant, in preparing his dictionar+, literall+ copied those Apanish 7ords and their meanings and e.uivalents in Tagalog from the plaintiff0s dictionar+. *1 Plainl+, the rationale in :akta7 does not appl+ in this case. -irst, aside from an isolated accounting of the num)er of 7ords supposedl+ usurped in a segment of D?P from C?T, *2 the records do not disclose that all the 7ords allegedl+ copied 7ere tallied and that the 7ords thus tallied 7ere numerous enough to support a finding of cop+ing. Aecond, as alread+ conceded, 7hile there is an identit+ in the manner )+ 7hich some of the ideas and concepts 7ere articulated, this prescinded from various factors alread+ elucidated. 1esides, ;91:?A0 testimon+ that she made an independent investigation or research of the original 7orks or authors she consulted 7as unre)uttedK ** for germane here is the .uestion of 7hether the alleged infringer could have o)tained the same information )+ going to the same source )+ her o7n independent research. *4 ;91:?A convinced the trial court and the Court of Appeals on thisK thus, 7e are )ound )+ this factual determination, as like7ise eEplained earlier. Third, reproduction of the printer0s errors or the author0s )lunders and inaccuracies in the infringing cop+ does notipso facto constitute cop+ing or plagiarism or infringement, )ut it is conceded that the+ are telltale signs that infringement might have )een committed. *+ @o7ever, the records do not reveal this to )e the case. -ourth, the la7 on intellectual propert+ violated in :akta7 7as a 7orld and time apart from ;.A. o. $29/ or even P.D. o. &9. Thus, under Article # of the :a7 of 18 Januar+ 1$#9, the Court ruled that no)od+ could reproduce another person0s 7ork 7ithout the o7ner0s consent, even merel+ to annotate or add an+thing to it, or improve an+ edition thereof. The more recent la7s on intellectual propert+, ho7ever, recogni,e recent advancements in technolog+ transfer and information dissemination. The+ thus allo7 the use of cop+righted materials if compati)le 7ith fair use and to the eEtent Custified for the purpose. 2n particular, the ne7 la7s sanction the fair use of cop+righted 7ork for criticism, comment, ne7s reporting, teaching including multiple copies for classroom use, scholarship, research and similar purposes. *6 -urther, the limitations of the eEclusive use of cop+righted materials under Aections 18 and 11 of P.D. o. &9 in consonance 7ith the principle of fair use have )een reproduced and incorporated in the ne7 la7. *, All told, :akta7 is inapplica)le../wphi.!n0t -air use has )een defined as a privilege to use the cop+righted material in a reasona)le manner 7ithout the consent of the cop+right o7ner or as cop+ing the theme or ideas

rather than their eEpression. *8 o .uestion of fair or unfair use arises ho7ever, if no cop+ing is proved to )egin 7ith. This is in consonance 7ith the principle that there can )e no infringement if there 7as no cop+ing. *9 2t is onl+ 7here some form of cop+ing has )een sho7n that it )ecomes necessar+ to determine 7hether it has )een carried to an 'unfair,' that is, illegal, eEtent. 40Conse.uentl+, there is no reason to address the issue of 7hether ;91:?A a)used a 7riter0s right to fair use 7ith the ascertainment that D?P 7as not a cop+ or a su)stantial cop+ of C?T. >@?;?-9;?, 2 vote to D? J the petition and to A--2;6 the challenged decision of 2# June 199# of the Court of Appeals. S.3ara-. O34n4on/ #A2I#%, JR., C.J., dissenting opinionB 2 am una)le to Coin the maCorit+ vie7. -rom the follo7ing factual and procedural antecedents, 2 find no alternative )ut to sustain )oth the trial court and the Court of Appeals. 9n 12 Jul+ 19$$, @A1A A, et al. filed 7ith the trial court a complaint for infringement and unfair competition, 7ith damages against private respondent -elicidad C. ;o)les 3hereafter ;91:?A4 and her pu)lisher and distri)utor, (ood7ill Trading Co., 2nc. 3hereafter (99D>2::4. The case 7as docketed as Civil Case o. $$"1/1#. @A1A A, et al. averred in their complaint that the+ 7ere the co"authors and Coint cop+right o7ners of their pu)lished 7orks College ?nglish for Toda+, 1ooks 1 and 2 3hereafter C?T4 and >ork)ook for College -reshman ?nglish, Aeries 1 1K the+ discovered that ;91:?A0 o7n pu)lished 7orks, Developing ?nglish Proficienc+, 1ooks 1 and 2, 3hereafter D?P4, pu)lished and distri)uted in 19$%, eEhi)ited an uncann+ resem)lance, if not outright ph+sical similarit+, to C?T as to content, scheme, se.uence of topics and ideas, manner of presentation and illustrative eEamplesK the plagiarism, incorporation and reproduction of particular portions of C?T into D?P could not )e gainsaid since ;91:?A 7as su)stantiall+ familiar 7ith C?T and the teEtual asportation 7as accomplished 7ithout their authorit+ and5or consentK ;91:?A and (99D>2:: Cointl+ misrepresented D?P 3over 7hich the+ shared cop+right o7nership4 'as the former0s original pu)lished 7orks and conceptK' and 'not7ithstanding formal demands made . . . to cease and desist from the sale and distri)ution of D?P, G;91:?A and (99D>2::H persistentl+ failed and refused to compl+ there7ith.' @A1A A et al. then pra+ed for the court toB 314 order the su)mission and thereafter the destruction of all copies of D?P, together 7ith the molds, plates, films and other materials used in the printing thereofK 324 re.uire ;91:?A and (99D>2:: to render an accounting of the sales of the 'infringing 7orks from the time of its 3sic4 inceptive pu)lication up to the time of Cudgment, as 7ell as the amount of sales and profits . . . derivedK' and 3/4 to enCoin ;91:?A and (99D>2:: to solidaril+ pa+ actual, moral and eEemplar+ damages, as 7ell as attorne+0s fees and eEpenses of litigation. 2n its Ans7er, (99D>2:: denied culpa)ilit+ since 'it had no kno7ledge or information sufficient to form a )elief as to the allegations of plagiarism, incorporation and reproduction' and hence 'could not )e priv+ to the same, if 3there 7ere4 an+K' and that in an Agreement 7ith co"defendant ;91:?A, the latter 7ould )e solel+ responsi)le for acts of plagiarism or violations of cop+right or an+ other la7, to the eEtent of ans7ering for an+ and all damages (99D>2:: ma+ suffer. (99D>2:: also interposed a compulsor+ counterclaim against PAC2TA, et al. and a crossclaim against its co"defendant anchored on the aforementioned Agreement.

2n her ans7er, ;91:?A asserted thatB 314 D?P 7as the eEclusive product of her independent research, studies and eEperienceK 324 D?P, particularl+ the segments 7here the alleged literal similitude appeared, 7ere admittedl+ influenced or inspired )+ earlier treatises, mostl+ )+ foreign authorsK )ut that 'influences and5or inspirations from other 7riters' like the methodolog+ and techni.ues as to presentation, teaching concept and design, research and orientation 7hich she emplo+ed, fell 7ithin the am)it of general information, ideas, principles of general or universal kno7ledge 7hich 7ere commonl+ and customaril+ understood as incapa)le of private and eEclusive use, appropriation or cop+rightK and 3/4 her 7orks 7ere the result of the legitimate and reasona)le eEercise of an author0s 'right to fair use of even cop+righted materials as GaH guide.' Ahe further claimed that her various national and regional professional activities in general education, language and literature, as 7ell as her teaching eEperience in graduate and post graduate education 7ould o)viate the remotest possi)ilit+ of plagiarism. ;91:?A like7ise suggested that an+ similarit+ )et7een D?P and C?T as regards scope and se.uence could )e attri)uted to 'the orientation of the authors to the scope and se.uence or s+lla)us D 7hich incorporates standards kno7n among ?nglish grammar )ook 7riters D of the su)Cect"matter for 1asic Communication Arts recommended )+ the Association of Philippine Colleges of Arts and Aciences 3APCAA4.' >hile the s+lla)us 7as admittedl+ adopted in D?P, she claimed to have treated .uite differentl+ in D?P the ver+ ideas, techni.ues or principles eEpressed in C?T such that neither teEt)ook could )e considered a cop+ or plagiarism of the other. At the pre"trial conference, the parties agreed to a stipulation of facts 2 and for the court to first resolve the issue of infringement )efore disposing of the claims for damages. After trial on the merits, the trial court rendered its decision in favor of defendants, the dispositive portion of 7hich readsB >@?;?-9;?, premises considered, the Court here)+ orders that the complaint filed against defendants -elicidad ;o)les and (ood7ill Trading Co., 2nc. shall )e D2A62AA?DB that said plaintiffs solidaril+ reim)urse defendant ;o)les for P28,888.88 attorne+0s fees and defendant (ood7ill for P%,888.88 attorne+0s fees. Plaintiffs are lia)le for costs of suit. 2T 2A A9 9;D?;?D. * oting that the la7 applica)le to the case 7as Presidential Decree o. &9, 4 the trial court found that @A1A A, et al. failed to discharge their onus of proving that ;91:?A and (99D>2:: committed acts constituting cop+right infringement. 6oreover, the trial court found that 'the cause of action or acts complained of G7ereH not covered )+ said decree' as Aection 18 thereof )arred authors of 7orks alread+ la7full+ made accessi)le to the pu)lic from prohi)iting the reproductions, translations, adaptations, recitation and performance of the same, 7hile Aection 11 allo7ed the utili,ation of reproductions, .uotations and eEcerpts of such 7orks. The trial court thus agreed 7ith ;91:?A that 'the complained acts G7ereH of general and universal kno7ledge and use 7hich plaintiffs cannot claim originalit+ or seek redress to the la7 for protection' and o)served that D?P and C?T had the same sources, consisting chiefl+ of earlier 7orks, mostl+ foreign )ooks. (99D>2::0s crossclaim against ;91:?A, counterclaim against @A1A A, et al. as 7ell as ;91:?A0 compulsor+ counterclaim against (99D>2:: 7ere all dismissed for lack of factual and legal )ases. @A1A A, et al. appealed to the Court of Appeals. The case 7as docketed as CA"(.;. CI o. &&8%/. 1efore said court @A1A A, et al., in the main, argued that the trial court totall+ disregarded their evidence and merel+ su)scri)ed to ;91:?A0 arguments. The

Court of Appeals, ho7ever, like7ise disposed of the controvers+ in favor of ;91:?A and (99D>2::. + @o7ever, the Court of Appeals modified the trial court0s decision )+ reversing the a7ard for attorne+0s fees. 2t held that the good faith and sincerit+ of @A1A A, et al. in commencing the action negated the )asis therefor. Their motion for reconsideration having )een denied for 7ant of cogent reasons, @A1A A, et al., instituted this petition. The+ claim that the Court of Appeals committed reversi)le error in failing to appreciateB 314 the insupera)le evidence and facts admitted and proved demonstrating plagiarism or pirac+ and instead afforded full 7eight and credit to ;91:?A0 matriE of general, h+pothetical and s7eeping statements and5or defensesK 324 ;91:?A0 and (99D>2::0s animofurandi or intent to appropriate or cop+ C?T 7ith the non"removal of the damaging copies of D?P from the )ookstores despite notice to 7ithdra7 the sameK and 3/4 the fact that ;91:?A a)used a 7riter0s right to fair use, in violation of Aection 11 of P.D. o. &9. 6 The+ invoke 4a"taw v. #aglinawan , 7hich, the+ theori,e is on all fours 7ith the case at )ar. ;91:?A contends that appeal )+ certiorari does not lie in this case for the challenged decision and the trial court0s Cudgment 7ere ampl+ supported )+ evidence, pertinent la7s and Curisprudence. @ence, her counterclaim for moral damages should, therefore, )e granted or for us to order the remand of the case to the trial court for reception of evidence on damages. (99D>2::, on its part, stood pat on its disclaimer, 7ith the assertion that no proof 7as ever introduced. that it co"authored D?P or that it singl+ or in ca)al 7ith ;91:?A committed an+ act constituting cop+right infringement. The core issue then is 7hether or not the Court of Appeals erred in affirming the trial court0s Cudgment that despite the apparent teEtual, thematic and se.uential similarit+ )et7een D?P and C?T, no cop+right 7as committed )+ ;91:?A and (99D>2::. >hile the complaint, in Civil Case o. $$"1/1# 7as filed during the effectivit+ of P.D. o. &9, the provisions of the ne7 intellectual propert+ la7, ;.A. o. $29/, 8 nevertheless )ears significance here. 2t took effect on 1 Januar+ 199$, )ut its Aection 2/9./ clearl+ states that its provisions shall appl+ to 7orks in 7hich cop+right protection o)tained prior to the effectivit+ of the Act su)sists, provided, ho7ever, that the application of the Act shall not result in the diminution of such protection. Also, the philosoph+ )ehind )oth statutes as 7ell as the essential principles of cop+right protection and cop+right infringement have, to a certain eEtent, remained the same. A cop+right ma+ )e accuratel+ defined as the right granted )+ statute to the proprietor of an intellectual production to its eEclusive use and enCo+ment to the eEtent specified in the statute. 9 =nder Aection 1## of ;.A. o. $29/, 10the cop+ or economic right 3cop+right and economic right are used interchangea)l+ in the statute4 consists of the eEclusive right to carr+ out, authori,e or prevent the follo7ing actsB 1##.1 ;eproduction of the 7ork or su)stantial portion of the 7orkK 1##.2 Dramati,ation, translation, adaptation, a)ridgment, arrangement or other transformation of the 7orkK 1##./ The first pu)lic distri)ution of the original and each cop+ of the 7ork )+ sale or other forms of transfer of o7nershipK 1##.& ;ental of the original or a cop+ of an audiovisual or cinematographic 7ork, a 7ork em)odied in a sound recording, a computer program, a compilation of data and other materials or a musical 7ork in graphic form, irrespective of the o7nership of the original or the cop+ 7hich is the su)Cect of the rentalK

1##.% Pu)lic displa+ of the original or a cop+ of the 7orkK 1##.N Pu)lic performance of the 7orkK and 1##.# 9ther communication to the pu)lic of the 7ork. 'The 7ork,' as repeatedl+ mentioned, refers to the literar+ and artistic 7orks defined as original intellectual creations in the literar+ and artistic domain protected from the moment of their creation and enumerated in Aection 1#2.1, 7hich includes )ooks and other literar+, scholarl+, scientific and artistic 7orks. 11 Atripped in the meantime of its indisputa)le social and )eneficial functions, 12 the use of intellectual propert+ or creations should )asicall+ promote the creator or author0s personal and economic gain. @ence, the cop+right protection eEtended to the creator should ensure his attainment of some form of personal satisfaction and economic re7ard from the 7ork he produced. >ithout conceding the suita)ilit+ of :akta7 as precedent, the Court there .uoted 6anresa and eEplainedB @e 7ho 7rites a )ook, or carves a statute, or makes an invention, has the a)solute right to reproduce or sell it, Cust as the o7ner of the land has the a)solute right to sell it or its fruits. 1ut 7hile the o7ner of the land, )+ selling it and its fruits, perhaps full+ reali,es all its economic value, )+ receiving its )enefits and utilities, 7hich are represented for eEample, )+ the price, on the other hand the author of a )ook, statue or invention does not reap all the )enefits and advantages of his o7n propert+ )+ disposing of it, for the most important form of reali,ing the economic advantages of a )ook, statue or invention, consists in the right to reproduce it in similar or like copies, ever+one of 7hich serves to give to the person reproducing them all the conditions 7hich the original re.uires in order to give the author the full enCo+ment thereof. 2f the author of a )ook, after its pu)lication, cannot prevent its reproduction )+ an+ person 7ho ma+ 7ant to reproduce it, then the propert+ right granted him is reduced to a ver+ insignificant thing and the effort made in the production of the )ook is in no 7a+ re7arded. 1* The eEecution, therefore, of an+ one or more of the eEclusive rights conferred )+ la7 on a cop+right o7ner, 7ithout his consent, constitutes cop+right infringement. 2n essence, cop+right infringement, kno7n in general as 'pirac+,' is a trespass on a domain o7ned and occupied )+ a cop+right o7nerK it is violation of a private right protected )+ la7.14 >ith the invasion of his propert+ rights, a cop+right o7ner is naturall+ entitled to seek redress, enforce and hold accounta)le the defrauder or usurper of said economic rights. o7, did ;91:?A and (99D>2:: infringe upon the cop+right of @A1A A et al. )+ pu)lishing D?P, 7hich the latter alleged to )e a reproduction, or in the least, a su)stantial reproduction of C?TM 1oth the trial court and respondent court found in the negative. 2 su)mit the+ 7ere correct. To constitute infringement, the usurper must have copied or appropriated the 'original' 7ork of an author or cop+right proprietorK 1+ a)sent cop+ing, there can )e no infringement of cop+right. 16 2n turn, a 7ork is deemed )+ la7 an original if the author created it )+ his o7n skill, la)or and Cudgment. 1, 9n its part, a cop+ is that 7hich comes so near to the original so as to give to ever+ person seeing it the idea created )+ the original. 2t has )een held that the test of cop+right infringement is 7hether an ordinar+ o)server comparing the 7orks can readil+ see that one has )een copied from the other. 18 A visual comparison of the portions of C?T 19 CuEtaposed against certain pages

of D?P, 20 7ould inescapa)l+ lead to a conclusion that there is a discerni)le similarit+ )et7een the t7oK ho7ever, as correctl+ assessed )+ respondent court and the lo7er court, no conclusion, can )e dra7n that D?P, in legal contemplation, is a cop+ of C?T. >as D?P a su)stantial reproduction of C?TM To constitutes a su)stantial reproduction, it is not necessar+ that the entire cop+righted 7ork, or even a large portion of it, )e copied, if so much is taken that the value of the original is su)stantiall+ diminished, or if the la)ors of the original author are su)stantiall+, and to an inCurious eEtent, appropriated. 21 1ut the similarit+ of the )ooks here does not amount to an appropriation of a su)stantial portion of C?T. 2f the eEistence of su)stantial similarities does not of itself esta)lish infringement, 22 mere similarities 3not su)stantial similarities4 in some sections of the )ooks in .uestion decisivel+ militate against a claim for infringement 7here the similarities had )een convincingl+ esta)lished as proceeding from a num)er of reasons and5or factors. 1. As )oth )ooks are grammar )ooks, the+ inevita)l+ deal 7ith the same su)Cects t+picall+ and ordinaril+ treated )+ 7riters of such genre, 2* e.g., s+stem of )ook classification, the different kinds of card catalogs and their entries, use of punctuation marks, paragraphs, the characteristics of an effective paragraph, language structure, different parts of a )ook, etc. These standard su)Cects fall 7ithin the domain of ideas, concepts, universal and general kno7ledge that have, as admitted )+ the protagonists here, )een in eEistence for .uite a long time. 24 As such, @A1A A, et al. cannot demand monopol+, )+ 7a+ of eEample, in the use of the recogni,ed li)rar+ classification s+stems 3De7e+ Decimal A+stem and the :i)rar+ of Congress A+stem4, or ho7 a )ook can )e divided into parts 3frontispiece, title page, cop+right page, preface, ta)le of contents, etc.4 or to the different headings used in a card catalogue 3title card, author card and su)Cect card4, since these are of common or general kno7ledge. ?ven in this Curisdiction, no protection can )e eEtended to such an idea, procedure, s+stem method or operation, concept, principle, discover+ or mere data, even if eEpressed, eEplained, illustrated or em)odied in a 7ork. 2+ 2. As found )+ respondent court, C?T and D?P had common sources and materials, 26 such that the particular portions claimed to have )een lifted and literall+ reproduced also appeared in earlier 7orks, mostl+ )+ foreign authors. This is clear from the testimon+ of petitioner Dr. Pacita @a)anaB ! :et0s clarif+ +our position Dra. @a)ana. >hen defendants test 3sic4 sho7ed 18 7ords similar to +ours, +ou so concluded it 7as 3sic4 copied from +ours )ut 7hen 2 pointed out to +ou same 3sic4 7ords contained in the earlier )ook of >ills then +ou earlier in +our test in +our )ook 3sic4 +ou refused to admit that it 7as copied from >ills. A Jes, sir. >e have never D all /% 7ords 7ere copied from there. ! 1ut 7hat 2 am asking ho7 could +ou conclude that )+ Cust similarit+ of 18 7ords of defendants 7ords that 7as copied from +ours GsicH and 7hen 2 point out to +ou the similarit+ of that same 7ords from the 7ords earlier than +ours 3sic4 +ou refused to admit that +ou copiedM A 2 7ould like to change the final statement no7 that in the case of defendant ;o)les +ou pointed out her source ver+

clear. Ahe copied it from that )ook )+ >ills. ! Ao, she did not cop+ it from +oursM A Alright, ma+)e she did not cop+ it )ut definitel+ it is a pattern of plagerism GsicH. 2, /. Aimilarit+ in orientation and st+le can like7ise )e attri)uted to the eEposure of the authors to the APCAA s+lla)us and their respective academic eEperience, teaching approaches and methodolog+. 2t is not farfetched that the+ could have even influenced each other as teEt)ook 7riters. ;91:?A and Dr. Pacita @a)ana 7ere facult+ mem)ers of the 2nstitute of ?nglish of the -ar ?astern =niversit+ from 19N& to 19#&. 28 1oth 7ere ardent students, researchers, lecturers, teEt)ook 7riters and teachers of ?nglish and grammar. The+ even used to )e on friendl+ terms 7ith each other, to the eEtent that Dr. @a)ana admitted that ;91:?A assisted the former in the preparation of her doctoral dissertation. (iven their near"identical academic and professional )ackground, it is natural the+ 7ould use man+ eEpressions and definitions peculiar to teaching ?nglish grammar. 2t comes therefore 7ith no surprise that there are similarities in some parts of the rival )ooks. 2ndeed, it is difficult to conceive ho7 7riters on the same su)Cect matter can ver+ 7ell avoid resorting to common sources of information and materials and emplo+ing similar eEpressions and terms peculiar to the su)Cect the+ are treating. 29 To illustrate, an eEcerpt from page 21 of C?T readsB Author Card The author card is the main entr+ card. 2t contains 1. the author0s complete name on the first line, surname first, 7hich ma+ )e follo7ed )+ the date of his )irth and death if he is no longer livingK 2. the title of the )ook, and the su)title, if there is oneK /. the edition, if it is not the firstK &. the translator or illustrator, if there is an+K %. the imprint 7hich includes the pu)lisher, the place and date of pu)licationK N. the collation composed of the num)er of pages, volume, illustrations, and the si,e of the )ookK #. the su)Cects 7ith 7hich the )ook deals GsicHK $. the call num)er on the upper left"hand corner. ames )eginning 7ith 6c, or 6 are filed in the card catalog as though spelled out as 6AC, for eEample 6c(ra7 D 6ac(ra7. The same is true of At. and Aaint. >hile a portion of D?P found on page 1$ 7hich discusses the author card providesB The author card is the main entr+ card containingB 1. the author0s complete name on the first line, surname first, 7hich ma+ )e follo7ed )+ the date of his )irth and death if he is no longer livingK 2. the title of the )ook, and the su)title if there is oneK /. the edition, if it is not the firstK

&. the translator or illustrator, if an+K %. the imprint 7hich includes the pu)lisher, the place and date of pu)licationK N. the collation, composed of the num)er of pages, volume, illustrations, and the si,e of the )ookK #. the su)Cect 7ith 7hich the )ook dealsK and $. the call num)er on the upper"left hand corner. ames )eginning 7ith 6C, or 6 are filed in the card catalog considered spelled out as 6AC, for eEampleB 6cleod"6acleod. This is true also of At. and Aaint. The entries found in an author card, having )een developed over .uite sometime, are eEpectedl+ uniform. @ence, @A1A A et al. and ;91:?A 7ould have no choice )ut to articulate the terms particular to the entries in an identical manner. 2 thus find that the ruling of the respondent court is totall+ supported )+ the evidence on record. 9f doctrinal persuasion is the principle that factual determinations of the Court of Appeals and the trial court are conclusive and )inding upon this Court, and the latter 7ill not, as a rule, distur) these findings unless compelling and cogent reasons necessitate a reeEamination, if not a reversal, of the same. *0 Tested against this Curisprudential canon, to su)Cect the challenged decision of the Court of Appeals to further scrutin+ 7ould )e superfluous, if not, improvident. 2 am not persuaded )+ the claim of @A1A A, et al. that :akta7 is on all fours 7ith and hence applica)le to the case at )ar. There, this Court disposed that defendant, 7ithout the consent of and causing irrepara)le damage to :akta7, reproduced the latter0s literar+ 7ork Diccionario@isapano"Tagalog, and improperl+ copied the greater part thereof in the 7ork DiccionariongLastila"Tagalog pu)lished )+ defendant, in violation of Article # of the :a7 of 18 Januar+ 1$#9 on 2ntellectual Propert+. This Court anchored its decision on the follo7ing o)servationsB 314 G9H the 2/,%N8 Apanish 7ords in the defendant0s dictionar+ . . . onl+ /,18$ 7ords are the defendant0s o7n, or, 7hat is the same thing, the defendant has added onl+ this num)er of 7ords to those that are in the plaintiff0s dictionar+, he having reproduced or copied the remaining 28,&%2 7ordsK 324 GTHhe defendant also literall+ reproduced and copied for the Apanish 7ords in his dictionar+, the e.uivalents, definitions and different meanings in Tagalog, given in plaintiffs dictionar+, having reproduced, as to some 7ords, ever+thing that appears in the plaintiff0s dictionar+ for similar Apanish 7ords, although as to some he made some additions of his o7n. Aaid copies and reproductions are numerous. . .K 3/4 GTHhe printer0s errors in the plaintiff0s dictionar+ as to the eEpression of some 7ords in Apanish as 7ell as their e.uivalents in Tagalog are also reproduced, a fact 7hich sho7s that the defendant, in preparing his dictionar+, literall+ copied those Apanish 7ords and their meanings and e.uivalents in Tagalog from the plaintiff0s dictionar+. *1 Plainl+, the rationale in :akta7 does not appl+ in this case. -irst, aside from an isolated accounting of the num)er of 7ords supposedl+ usurped in a segment of D?P from C?T, *2 the records do not disclose that all the 7ords allegedl+ copied 7ere tallied and

that the 7ords thus tallied 7ere numerous enough to support a finding of cop+ing. Aecond, as alread+ conceded, 7hile there is an identit+ in the manner )+ 7hich some of the ideas and concepts 7ere articulated, this prescinded from various factors alread+ elucidated. 1esides, ;91:?A0 testimon+ that she made an independent investigation or research of the original 7orks or authors she consulted 7as unre)uttedK ** for germane here is the .uestion of 7hether the alleged infringer could have o)tained the same information )+ going to the same source )+ her o7n independent research. *4 ;91:?A convinced the trial court and the Court of Appeals on thisK thus, 7e are )ound )+ this factual determination, as like7ise eEplained earlier. Third, reproduction of the printer0s errors or the author0s )lunders and inaccuracies in the infringing cop+ does notipso facto constitute cop+ing or plagiarism or infringement, )ut it is conceded that the+ are telltale signs that infringement might have )een committed. *+ @o7ever, the records do not reveal this to )e the case. -ourth, the la7 on intellectual propert+ violated in :akta7 7as a 7orld and time apart from ;.A. o. $29/ or even P.D. o. &9. Thus, under Article # of the :a7 of 18 Januar+ 1$#9, the Court ruled that no)od+ could reproduce another person0s 7ork 7ithout the o7ner0s consent, even merel+ to annotate or add an+thing to it, or improve an+ edition thereof. The more recent la7s on intellectual propert+, ho7ever, recogni,e recent advancements in technolog+ transfer and information dissemination. The+ thus allo7 the use of cop+righted materials if compati)le 7ith fair use and to the eEtent Custified for the purpose. 2n particular, the ne7 la7s sanction the fair use of cop+righted 7ork for criticism, comment, ne7s reporting, teaching including multiple copies for classroom use, scholarship, research and similar purposes. *6 -urther, the limitations of the eEclusive use of cop+righted materials under Aections 18 and 11 of P.D. o. &9 in consonance 7ith the principle of fair use have )een reproduced and incorporated in the ne7 la7. *, All told, :akta7 is inapplica)le. -air use has )een defined as a privilege to use the cop+righted material in a reasona)le manner 7ithout the consent of the cop+right o7ner or as cop+ing the theme or ideas rather than their eEpression. *8 o .uestion of fair or unfair use arises ho7ever, if no cop+ing is proved to )egin 7ith. This is in consonance 7ith the principle that there can )e no infringement if there 7as no cop+ing. *9 2t is onl+ 7here some form of cop+ing has )een sho7n that it )ecomes necessar+ to determine 7hether it has )een carried to an 'unfair,' that is, illegal, eEtent. 40Conse.uentl+, there is no reason to address the issue of 7hether ;91:?A a)used a 7riter0s right to fair use 7ith the ascertainment that D?P 7as not a cop+ or a su)stantial cop+ of C?T../wphi.!n0t >@?;?-9;?, 2 vote to D? J the petition and to A--2;6 the challenged decision of 2# June 199# of the Court of Appeals. Foo-no-./ 1 ;ule &%, 199# ;ules of Civil Procedure. 2 2n CA"(. ;. CI o. &&8%/, promulgated on June 2#, 199#, J. Tu.uero, ponente, JJ. :una and @ofilena, concurring, Rollo, pp. 2$"/%. / Rollo, p. &/. & 9riginal ;ecord Iol. 2, Complaint, pp. 1"#. % Docketed as Civil Case o. $$"1/1# and assigned to 1ranch /N. N 9riginal ;ecord Iol. 2, 6otion for 1ill of Particulars, pp. /8"/1. # I id, Ans7er, pp. //"/9. $ 9riginal ;ecord, Iol. 2, Ans7er, pp. 1/&"1/9.

9 I id., pp. 1/#"1/$. 18 I id., pp. 28%"28N. 11 9riginal ;ecord, Iol. 2, Judgment, pp. &1%"&/%. 12 I id., otice of Appeal, p. &/N. 1/ Docketed as CA"(.;. CI o. &&8%/. 1& CA Rollo, 1rief for Plaintiffs"Appellants Pacita 2. @a)ana, Alicia :. Cinco and Pacita . -ernando, pp. &1"98, &#, &$, &9. 1% Decision, )+ Justice Artemio (. Tu.uero, ponente, concurred in )+ J. Artemon D. :una and J. @ector :. @ofilena, CA Rollo, p. N. 1N CA Rollo, pp. 19$"28/. 1# I id., p. 2/N. 1$ Rollo, Petition, p. 18. 19 2ntellectual Propert+ Code of the Philippines 3;epu)lic Act o. $29/4, p. %1. 28 2ntellectual Propert+ Code of the Philippines, ;epu)lic Act o. $29/, pp. %%" %N. 21 Aec. 1#2, 2ntellectual Propert+ Code of the Philippines. 22 Iolume 2, 9riginal ;ecord, ?Eh. A"1, p. 211. 2/ I id., ?Eh. A"2, p. 21%. 2& Iolume 1, 9riginal ;ecord, AnneE '*', p. $9. 2% I id, AnneE 'I' p. 111. 2N Page 2& of C?T as to eEamples 2, 9, 11, and 1& also found on p. // of D?PK similarit+ in techni.ue and presentation on page 1% of C?T and page 2# of D?PK on page 1$, 28 and 21 of C?T and page 29 of D?PK on page #& of C?T and page $N of D?P, 9riginal ;ecord, Iolume 1, ?Ehi)its pp. #/, 91, 9/, 9N and 9#. 2# 1$ Am Jur 2D 18& citing 6a,er v. Atein, /&# =A 21$, 9$ : ed N/8, #& A Ct &N8, reh den /&# =A 9&9, 9$ : ed 189N, #& A Ct N/# G19%/H. 2$ Colum)ia Pictures 2nc. vs. Court of Appeals, 2N1 AC;A 1&&, 1$&, citing 1$ CJA, Cop+right and :iterar+ Propert+, Aec 9&, 21#, 21$. 29 1$ CJA, Cop+right and :iterar+ Propert+, Aec. 98, 212K 1$ Am Jur 2D, Cop+right and :iterar+ Propert+, Aec. 18N, /91"/92. /8 I id. DAI2D?, J;., C.J., dissenting opinionK 1 9riginal ;ecord 39;4, 18"12. The certificates of cop+right registration for the three )ooks 7ere dated / August 19#N, 1/ 9cto)er 19## and 1# Jul+ 19#/, respectivel+. 2 9;, 28%"28N. / 9;, &1%"&/%. The decision 7as rendered )+ 6arvie ;. A)raham Aingson, Assisting Judge per A.C. Adm. 9rder o. 12&"92. & ?ntitled Decree on the Protection of 2ntellectual Propert+, promulgated on 1& ovem)er 19#2.

% Per Associate Justice ArtemioTu.uero, J.K 7ith Artemon D. :una and @ector :. @ofilena, JJ., concurring. N Aec. 11. To an eEtend 3sic4 compati)le 7ith fair practice and Custified )+ the scientific, critical, informator+ or educational purpose, it shall )e permissi)le to make .uotations or eEcerpts from a 7ork alread+ la7full+ made accessi)le to the pu)lic. Auch .uotations ma+ )e utili,ed in their original form or in translation. e7s items, editorials, and articles on current political, social, economic, scientific or religious topic ma+ )e reproduced )+ the press or )roadcast, unless the+ contain or are accompanied )+ a notice that their reproduction or pu)lication is reserved. 2n case of musical 7orks, parts of little eEtent ma+ also )e reproduced. !uotations and eEcerpts as 7ell as reproductions shall al7a+s )e accompanied )+ an ackno7ledgment of the source and name of author, if his name appears thereon. # && Phil $%% G191$H. $ ?ntitled An Act Prescri)ing the 2ntellectual Propert+ Code and ?sta)lishing the 2ntellectual Propert+ 9ffice, Providing for its Po7ers and -unctions, and -or 9ther Purposes. 9 1$ C.J.A. Cop+right and :iterar+ Propert+ F1 3hereafter 1$ C.J.A.4. 18 Aimilar rights 7ere granted under P.D. o. &9, thusB Aec. %. Cop+right shall consist in the eEclusive rightB 3A4 To print, reprint, pu)lish, cop+, distri)ute, multipl+, sell and make photographs, photo"engravings, and pictorial illustrations of the 7orksK 314 To make an+ translation or other version or eEtracts or arrangements or adaptations thereofK to dramati,e it if it )e a non" dramatic 7orkK to convert it into a non"dramatic 7ork if it )e a dramaK to complete or eEecute it if it )e a model or designK 3C4 To eEhi)it, perform, represent, produce, or reproduce the 7ork in an+ manner or )+ an+ method 7hatever for profit or other7iseK if not reproduced in copies for sale, to sell an+ manuscript or an+ record 7hatsoever thereofK 3D4 To make an+ other use or disposition of the 7ork consistent 7ith the la7s of the land. 11 Aec. 1#2. :iterar+ and Artistic >orks. D 1#2.1 :iterar+ and artistic 7orks, hereinafter referred to as '7orks,' are original intellectual creations in the literar+ and artistic domain protected from the moment of their creation and shall include in particularB 3a4 1ooks, pamphlets, articles and other 7ritingsK 3)4 Periodicals and ne7spapersK 3c4 :ectures, sermons, addresses, dissertations prepared for oral deliver+, 7hether or not reduced in 7riting or other material formK 3d4 :ettersK 3e4 Dramatic or dramatico"musical compositionsK choreographic

7orks or entertainment in dum) sho7sK 3d4 6usical compositions, 7ith or 7ithout 7ordsK 3g4 >orks of dra7ing, painting, architecture, sculpture, engraving, lithograph+ or other 7orks of artK models or designs for 7orks of artK 3h4 9riginal ornamental designs or models for articles of manufacture, 7hether or not registra)le as an industrial design, and other 7orks of applied artK 3i4 2llustrations, maps, plans, sketches, charts and three" dimensional 7orks relative to geograph+, topograph+, architecture or scienceK 3C4 Dra7ings or plastic 7orks of a scientific or technical characterK 3k4 Photographic 7orks including 7orks produced )+ a process analogous to photograph+K lantern slidesK 3l4 Audiovisual 7orks and cinematographic 7orks and 7orks produced )+ a process analogous to cinematograph+ or an+ process for making audio"visual recordingsK 3m4 Pictorial illustrations and advertisementsK 3n4 Computer programsK and 3o4 9ther literar+, scholarl+, scientific and artistic 7orks. 12 The use of intellectual propert+ )ears a social function. To this end, the Atate shall promote the diffusion of kno7ledge and information for the promotion of national development and progress and the common good. 3Aection 2 of ;A $29/4 -urther, the social interest in cop+right lies in the adCustment of t7o o)CectivesB the encouraging of individuals to intellectual la)or )+ assuring them of Cust re7ards, and )+ securing to societ+ of the largest )enefits of their products. The histor+ of the concept reflects our progress in the mechanical communications, our ideas of propert+ and the functions of the state, and our changing social ethics. 2 A;T=;9 6. T9:? T2 9, T@? C2I2: C9D? 9- T@? P@2:2PP2 ?A %1# G1992H. 1/ ,upra note # at $N&"$N%. 1& ,ee Colum)ia Pictures, 2nc. v. Court of Appeals, 2N1 AC;A 1&&, 1$/"1$& G199NH citing 1$ C.J.A. F98K 1$ A6 J=; 2D, Cop+right and :iterar+ Propert+, F18N 3hereinafter 1$ A6 J=; 2D4. 1% ,ee 1$ A6 J=; 2D F181 citing >eit,enkorn v. :esser, &8 Cal 2d ##$, 2%N P2d 9&# G19%/H. The test of originalit+ is not 7hether the 7ork 7as entirel+ ne7, )ut 7hether it 7as the result of independent effort or cop+ing. 1$ A6 J=; 2D F 181 citing Aheldon v. 6etro"(old7+n Pictures Corp., 3CA2 J4 $1 -2d &9, cert den 29$ =A NN9, $8 : ed 1/92, %N A Ct $/% G19/NHK (olding v. ;.L.9. Pictures, 2nc., /% Cal 2d N98, 221 P2d 9% G19%8H. 1N 1$ A6 J=; 2D, F 18& citing 6a,er v. Atein, /&# =A 21$, 9$ : ed N/8, #& A Ct &N8, reh den /&# =A 9&9, 9$ : ed 189N, #& A Ct N/# G19%/H. 1# ,ee Dorse+ v. 9ld Auret+ :. 2ns. Co., 3CA294 9$ -2d $#2 G19/$H. 1$ A)iva v. >ein)erger 3C.A.4, N2 9( /#$&, /#$# G19N&H citing /& CJ.A. F/& and

1# =.A.C.A. F181K :e7is v. Lroger Co., 189 -. Aupp. &$& G19%2H. 19 ?Ehi)its '2' to '2"2%' or AnneEes 'A' to 'AA' of the 1ill of Particulars. 28 ?Ehi)its 'J' to 'J"21' or AnneEes '11 to >>' of the 1ill of Particulars. 21 ,ee 1$ A6 J=; 2D F18$ citing =niversal Pictures Co. v. @arold :lo+d Corp., 3CA9 Cal4 1N2 -2d /%& G19&#HK Toksvig v. 1ruce Pu). Co., 3CA# >is4 1$1 -2d NN& G19%8HK Aheldon v. 6etro"(old7+n Pictures Corp., supra note 1$. 22 Id., citing T7entieth Centur+"-oE -ilm Corp. v. Atonesifer, 3CA9 Cal4 1&8 -2d %#9 G19&&H. 2/ Aimilarit+ of the alleged infringing 7ork to the author0s or proprietor0s cop+righted 7ork does not of itself esta)lish cop+right infringement, if the similarit+ results from the fact that )oth 7orks deal 7ith the same su)Cect or have the same common source. 1$ A6 J=; 2D F18# citing Dorse+ v. 9ld Auret+ :. 2ns. Co.,supra note 28. 2& Per testimon+ of Dr. Pacita @a)ana D on the s+stem of li)rar+ classification, TA , 11 Jul+ 19$9, &&"&%K on the kinds of card catalogue and their entries, TA , 11 Jul+ 19$9, %N"%$K on different parts of )ooks and their definitions, %9K uses of paragraphK uses of punctuations #%"#NK use of phonemes, graphemes and morphemes, #$. Per testimon+ of -elicidad ;o)les D TA , /1 August 19$9, 18" 22. 2% Aec. 1#% of ;A $29/. 2N ,ee note 2NK ,ee Court of Appeals0 decision, N. 2# TA , 1 August 19$9, 2&"2N. 2$ TA , 29 June 19$9, 2N D Dr. Pacita @a)ana entered -?= as facult+ mem)er in 19%# and left the same in 19#&K TA , 2$ August 19$9, / D -?:2C2DAD )ecame a facult+ mem)er of -?= in 19N& up to time the testimon+ 7as taken. 29 ,ee Aimms v. Atanton, C.C. Cal #% -. N G1$9NH. /8 ,ee (o)onseng, Jr. v. Court of Appeals, 2&N AC;A &%#, &N$ G199NH. /1 ,upra note 18 at $N8. /2 TA , 1 August 19$9, 29. // Rollo, 1%9K TA , 2$ August 19$9, 2/"2&. /& ,ee 1$ A6 J=; 2D F18& citing 9rgel v. Clark 1oardman Co., 3CA 2 J4 /81 -2d 119, cert den /#1 =A $1#, 9 : ed 2d %$, $/ A Ct /1 G19N2HK ?isenschiml v. -a7cett Pu)lications, 2nc., 3CA# 2224 2&N -2d %9$, cert den /%% =A 98#, 2 : ed 2N2, #$ A Ct //& G19%#HK Toksvig v. 1ruce Pu)lishing Co., supra note 2&. /% 9ne of the most significant evidences of infringement eEists in the presence, in an alleged infringing 7ork, of the same errors and peculiarities that are to )e found in the 7ork said to )e infringed. ,ee 1$ A6 J=; 2D F18# citing Callaghan v. 6+ers, 12$ =A N1#, /2 : ed %&#, 9 A Ct 1## G1$$$HK >.@. Anderson Co. v. 1ald7in :a7 Pu). Co., 3CAN 9hio4 2# -2d $2 G192$HK Je7eler0s Circular Pu). Co. v. Le+stone Pu). Co., 3CA24 2$1 - $/, 2N A:; %#1, cert den 2%9 =A %$1, NN : ed 18#&, &2 A Ct &N& G1922H. /N ,ee Aection 1$% of ;A $29/. /# ,ee Aections 1$& O 1$&.1 of ;A $29/.

/$ ,ee 1$ A6 J=; 2D F189 citing Toksvig v. 1ruce Pu). Co., supra note 2&K 1rad)ur+ v. Colum)ia 1roadcasting A+stem, 2nc., 3CA9 Cal4 2$# -2d &#$, cert den /N$ =A $81, # : ed 2d 1%, $2 A Ct 19 G19N1HK Ahipman v. ;.L.9. ;adio Pictures, 2nc., 3CA2 J4 188 -2d %// G19/$H. /9 ,upra note 19. &8 1$ C.J.A. F9&"9&). 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 G.R. No. 11+,+8 )ar56 19, 2002 %$I#A# C. &HO, doing )usiness under the name and st+le of &%C COS)%TICS $A"ORATORY, petitioner, vs. HON. CO RT OF APP%A$S, S ))%R2I$$% G%N%RA$ )%RCHAN#ISING an! CO)PANY, and ANG TIA) CHAY, respondents. #% $%ON, JR., J.: 1efore us is a petition for revie7 on certiorari of the Decision1 dated 6a+ 2&, 199/ of the Court of Appeals setting aside and declaring as null and void the 9rders2 dated -e)ruar+ 18, 1992 and 6arch 19, 1992 of the ;egional Trial Court, 1ranch 98, of !ue,on Cit+ granting the issuance of a 7rit of preliminar+ inCunction. The facts of the case are as follo7sB 9n Decem)er 28, 1991, petitioner ?lidad C. Lho filed a complaint for inCunction and damages 7ith a pra+er for the issuance of a 7rit of preliminar+ inCunction, docketed as Civil Case o. !"91"1892N, against the respondents Aummerville (eneral 6erchandising and Compan+ 3Aummerville, for )revit+4 and AngTiamCha+. The petitioner0s complaint alleges that petitioner, doing )usiness under the name and st+le of L?C Cosmetics :a)orator+, is the registered o7ner of the cop+rights )hin )hun ,u and Oval *acial )ream )ontainer:)ase, as sho7n )+ Certificates of Cop+right ;egistration o. 8"1/%$ and o. 8"/N#$K that she also has patent rights on)hin )hun ,u ; Device and )hin )hun ,u for medicated cream after purchasing the same from !uintin Cheng, the registered o7ner thereof in the Aupplemental ;egister of the Philippine Patent 9ffice on -e)ruar+ #, 19$8 under ;egistration Certificate o. &%29K that respondent Aummerville advertised and sold petitioner0s cream products under the )rand name )hin )hun ,u, in similar containers that petitioner uses, there)+ misleading the pu)lic, and resulting in the decline in the petitioner0s )usiness sales and incomeK and, that the respondents should )e enCoined from allegedl+ infringing on the cop+rights and patents of the petitioner. The respondents, on the other hand, alleged as their defense that Aummerville is the eEclusive and authori,ed importer, re"packer and distri)utor of )hin )hun ,u products manufactured )+ Ahun Ji -actor+ of Tai7anK that the said Tai7anese manufacturing compan+ authori,ed Aummerville to register its trade name )hin )hun ,u Medicated )ream 7ith the Philippine Patent 9ffice and other appropriate governmental agenciesK that L?C Cosmetics :a)orator+ of the petitioner o)tained the cop+rights through

misrepresentation and falsificationK and, that the authorit+ of !uintin Cheng, assignee of the patent registration certificate, to distri)ute and market )hin )hun ,u products in the Philippines had alread+ )een terminated )+ the said Tai7anese 6anufacturing Compan+. After due hearing on the application for preliminar+ inCunction, the trial court granted the same in an 9rder dated -e)ruar+ 18, 1992, the dispositive portion of 7hich readsB ACC9;D2 (:J, the application of plaintiff ?lidad C. Lho, doing )usiness under the st+le of L?C Cosmetic :a)orator+, for preliminar+ inCunction, is here)+ granted. Conse.uentiall+, plaintiff is re.uired to file 7ith the Court a )ond eEecuted to defendants in the amount of five hundred thousand pesos 3P%88,888.884 to the effect that plaintiff 7ill pa+ to defendants all damages 7hich defendants ma+ sustain )+ reason of the inCunction if the Court should finall+ decide that plaintiff is not entitled thereto. A9 9;D?;?D./ The respondents moved for reconsideration )ut their motion for reconsideration 7as denied )+ the trial court in an 9rder dated 6arch 19, 1992.& 9n April 2&, 1992, the respondents filed a petition for certiorari 7ith the Court of Appeals, docketed as CA"(.;. AP o. 2#$8/, pra+ing for the nullification of the said 7rit of preliminar+ inCunction issued )+ the trial court. After the respondents filed their repl+ and almost a month after petitioner su)mitted her comment, or on August 1& 1992, the latter moved to dismiss the petition for violation of Aupreme Court Circular o. 2$"91, a circular prohi)iting forum shopping. According to the petitioner, the respondents did not state the docket num)er of the civil case in the caption of their petition and, more significantl+, the+ did not include therein a certificate of non"forum shopping. The respondents opposed the petition and su)mitted to the appellate court a certificate of non"forum shopping for their petition. 9n 6a+ 2&, 199/, the appellate court rendered a Decision in CA"(.;. AP o. 2#$8/ ruling in favor of the respondents, the dispositive portion of 7hich readsB >@?;?-9;?, the petition is here)+ given due course and the orders of respondent court dated -e)ruar+ 18, 1992 and 6arch 19, 1992 granting the 7rit of preliminar+ inCunction and den+ing petitioners0 motion for reconsideration are here)+ set aside and declared null and void. ;espondent court is directed to forth7ith proceed 7ith the trial of Civil Case o. !"91"1892N and resolve the issue raised )+ the parties on the merits. A9 9;D?;?D.% 2n granting the petition, the appellate court ruled thatB The registration of the trademark or )randname 'Chin Chun Au' )+ L?C 7ith the supplemental register of the 1ureau of Patents, Trademarks and Technolog+ Transfer cannot )e e.uated 7ith registration in the principal register, 7hich is dul+ protected )+ the Trademark :a7../wphi.!n0t EEE EEE EEE As ratiocinated in :a Chemise :acoste, A.A. vs. -ernande,, 129 AC;A /#/, /9/B ';egistration in the Aupplemental ;egister, therefore, serves as notice that the registrant is using or has appropriated the trademark. 1+ the ver+ fact that the trademark cannot as +et )e on guard and there are certain defects, some o)stacles 7hich the use must still overcome )efore he can

claim legal o7nership of the mark or ask the courts to vindicate his claims of an eEclusive right to the use of the same. 2t 7ould )e deceptive for a part+ 7ith nothing more than a registration in the Aupplemental ;egister to posture )efore courts of Custice as if the registration is in the Principal ;egister. The reliance of the private respondent on the last sentence of the Patent office action on application Aerial o. /89%& that 0registrants is presumed to )e the o7ner of the mark until after the registration is declared cancelled0 is, therefore, misplaced and grounded on shak+ foundation. The supposed presumption not onl+ runs counter to the precept em)odied in ;ule 12& of the ;evised ;ules of Practice )efore the Philippine Patent 9ffice in Trademark Cases )ut considering all the facts ventilated )efore us in the four interrelated petitions involving the petitioner and the respondent, it is devoid of factual )asis. As even in cases 7here presumption and precept ma+ factuall+ )e reconciled, 7e have held that the presumption is re)utta)le, not conclusive, 3People v. :im @oa, (.;. o. :"18N12, 6a+ /8, 19%$, =nreported4. 9ne ma+ )e declared an unfair competitor even if his competing trademark is registered 3Parke, Davis O Co. v. Liu -oo O Co., et al., N8 Phil 92$K :a Je)ana Co. v. chuaAecoO Co., 1& Phil %/&4.'N The petitioner filed a motion for reconsideration. This she follo7ed 7ith several motions to declare respondents in contempt of court for pu)lishing advertisements notif+ing the pu)lic of the promulgation of the assailed decision of the appellate court and stating that genuine )hin )hun ,u products could )e o)tained onl+ from Aummerville (eneral 6erchandising and Co. 2n the meantime, the trial court 7ent on to hear petitioner0s complaint for final inCunction and damages. 9n 9cto)er 22, 199/, the trial court rendered a Decision# )arring the petitioner from using the trademark Chin Chun Au and upholding the right of the respondents to use the same, )ut recogni,ing the cop+right of the petitioner over the oval shaped container of her )eaut+ cream. The trial court did not a7ard damages and costs to an+ of the parties )ut to their respective counsels 7ere a7arded Aevent+"-ive Thousand Pesos 3P#%,888.884 each as attorne+0s fees. The petitioner dul+ appealed the said decision to the Court of Appeals. 9n June /, 199&, the Court of Appeals promulgated a ;esolution$ den+ing the petitioner0s motions for reconsideration and for contempt of court in CA"(.;. AP o. 2#$8/. @ence, this petition anchored on the follo7ing assignment of errorsB 2 ;?AP9 D? T @9 9;A1:? C9=;T 9- APP?A:A C9662TT?D (;AI? A1=A? 9- D2AC;?T29 A69= T2 ( T9 :ACL 9- J=;2AD2CT29 2 -A2:2 ( T9 ;=:? 9 P?T2T29 ?;0A 69T29 T9 D2A62AA. 22 ;?AP9 D? T @9 9;A1:? C9=;T 9- APP?A:A C9662TT?D (;AI? A1=A? 9- D2AC;?T29 A69= T2 ( T9 :ACL 9- J=;2AD2CT29 2 ;?-=A2 ( T9 P;96PT:J ;?A9:I? P?T2T29 ?;0A 69T29 -9; ;?C9 A2D?;AT29 . 222

2 D?:AJ2 ( T@? ;?A9:=T29 9- P?T2T29 ?;0A 69T29 -9; ;?C9 A2D?;AT29 , T@? @9 9;A1:? C9=;T 9- APP?A:A D? 2?D P?T2T29 ?;0A ;2(@T T9 A??L T26?:J APP?::AT? ;?:2?- A D I29:AT?D P?T2T29 ?;0A ;2(@T T9 D=? P;9C?AA. 2I ;?AP9 D? T @9 9;A1:? C9=;T 9- APP?A:A C9662TT?D (;AI? A1=A? 9- D2AC;?T29 A69= T2 ( T9 :ACL 9- J=;2AD2CT29 2 -A2:2 ( T9 C2T? T@? P;2IAT? ;?AP9 D? TA 2 C9 T?6PT.9 The petitioner faults the appellate court for not dismissing the petition on the ground of violation of Aupreme Court Circular o. 2$"91. Also, the petitioner contends that the appellate court violated Aection N, ;ule 9 of the ;evised 2nternal ;ules of the Court of Appeals 7hen it failed to rule on her motion for reconsideration 7ithin ninet+ 3984 da+s from the time it is su)mitted for resolution. The appellate court ruled onl+ after the lapse of three hundred fift+"four 3/%&4 da+s, or on June /, 199&. 2n dela+ing the resolution thereof, the appellate court denied the petitioner0s right to seek the timel+ appellate relief. -inall+, petitioner descri)es as ar)itrar+ the denial of her motions for contempt of court against the respondents. >e rule in favor of the respondents. Pursuant to Aection 1, ;ule %$ of the ;evised ;ules of Civil Procedure, one of the grounds for the issuance of a 7rit of preliminar+ inCunction is a proof that the applicant is entitled to the relief demanded, and the 7hole or part of such relief consists in restraining the commission or continuance of the act or acts complained of, either for a limited period or perpetuall+. Thus, a preliminar+ inCunction order ma+ )e granted onl+ 7hen the application for the issuance of the same sho7s facts entitling the applicant to the relief demanded.18 This is the reason 7h+ 7e have ruled that it must )e sho7n that the invasion of the right sought to )e protected is material and su)stantial, that the right of complainant is clear and unmistaka)le, and, that there is an urgent and paramount necessit+ for the 7rit to prevent serious damage.11 2n the case at )ar, the petitioner applied for the issuance of a preliminar+ inCunctive order on the ground that she is entitled to the use of the trademark on )hin )hun ,u and its container )ased on her cop+right and patent over the same. >e first find it appropriate to rule on 7hether the cop+right and patent over the name and container of a )eaut+ cream product 7ould entitle the registrant to the use and o7nership over the same to the eEclusion of others. Trademark, cop+right and patents are different intellectual propert+ rights that cannot )e interchanged 7ith one another. A trademark is an+ visi)le sign capa)le of distinguishing the goods 3trademark4 or services 3service mark4 of an enterprise and shall include a stamped or marked container of goods.12 2n relation thereto, a trade name means the name or designation identif+ing or distinguishing an enterprise.1/ 6ean7hile, the scope of a cop+right is confined to literar+ and artistic 7orks 7hich are original intellectual creations in the literar+ and artistic domain protected from the moment of their creation.1& Patenta)le inventions, on the other hand, refer to an+ technical solution of a pro)lem in an+ field of human activit+ 7hich is ne7, involves an inventive step and is industriall+ applica)le.1% Petitioner has no right to support her claim for the eEclusive use of the su)Cect trade name and its container. The name and container of a )eaut+ cream product are proper su)Cects of a trademark inasmuch as the same falls s.uarel+ 7ithin its definition. 2n order to )e entitled to eEclusivel+ use the same in the sale of the )eaut+ cream product, the

user must sufficientl+ prove that she registered or used it )efore an+)od+ else did. The petitioner0s cop+right and patent registration of the name and container 7ould not guarantee her the right to the eEclusive use of the same for the reason that the+ are not appropriate su)Cects of the said intellectual rights. Conse.uentl+, a preliminar+ inCunction order cannot )e issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the eEclusion of others, not having proven that she has registered a trademark thereto or used the same )efore an+one did. >e cannot like7ise overlook the decision of the trial court in the case for final inCunction and damages. The dispositive portion of said decision held that the petitioner does not have trademark rights on the name and container of the )eaut+ cream product. The said decision on the merits of the trial court rendered the issuance of the 7rit of a preliminar+ inCunction moot and academic not7ithstanding the fact that the same has )een appealed in the Court of Appeals. This is supported )+ our ruling in La Vista Association, Inc. v. Court of Appeals1N, to 7itB )onsidering that preliminary in-unction is a provisional remedy which may e granted at any time after the commencement of the action and efore -udgment when it is esta lished that the plaintiff is entitled to the relief demanded and only when his complaint shows facts entitling such reliefs xxx and it appearing that the trial court had already granted the issuance of a final in-unction in favor of petitioner in its decision rendered after trial on the merits xxx the )ourt resolved to Dismiss the instant petition having een rendered moot and academic! An in-unction issued y the trial court after it has already made a clear pronouncement as to the plaintiff's right thereto, that is, after the same issue has een decided on the merits, the trial court having appreciated the evidence presented, is proper, notwithstanding the fact that the decision rendered is not yet final EEE. 1eing an ancillar+ remed+, the proceedings for preliminar+ inCunction cannot stand separatel+ or proceed independentl+ of the decision rendered on the merit of the main case for inCunction. The merit of the main case having )een alread+ determined in favor of the applicant, the preliminar+ determination of its non"eEistence ceases to have an+ force and effect. 3italics supplied4 4a <ista categoricall+ pronounced that the issuance of a final inCunction renders an+ .uestion on the preliminar+ inCunctive order moot and academic despite the fact that the decision granting a final inCunction is pending appeal. Conversel+, a decision den+ing the applicant"plaintiff0s right to a final inCunction, although appealed, renders moot and academic an+ o)Cection to the prior dissolution of a 7rit of preliminar+ inCunction. The petitioner argues that the appellate court erred in not dismissing the petition for certiorari for non"compliance 7ith the rule on forum shopping. >e disagree. -irst, the petitioner improperl+ raised the technical o)Cection of non"compliance 7ith Aupreme Court Circular o. 2$"91 )+ filing a motion to dismiss the petition for certiorari filed in the appellate court. This is prohi)ited )+ Aection N, ;ule NN of the ;evised ;ules of Civil Procedure 7hich provides that '324n petitions for certiorari )efore the Aupreme Court and the Court of Appeals, the provisions of Aection 2, ;ule %N, shall )e o)served. 1efore giving due course thereto, the court ma+ re.uire the respondents to file their comment to, and not a motion to dismiss, the petition EEE 3italics supplied4'. Aecondl+, the issue 7as raised one month after petitioner had filed her ans7er5comment and after private respondent had replied thereto. =nder Aection 1, ;ule 1N of the ;evised ;ules of Civil Procedure, a motion to dismiss shall )e filed 7ithin the time for )ut )efore filing the ans7er to the complaint or pleading asserting a claim. Ahe therefore could no longer su)mit a motion to dismiss nor raise defenses and o)Cections not included in the

ans7er5comment she had earlier tendered. Thirdl+, su)stantial Custice and e.uit+ re.uire this Court not to revive a dissolved 7rit of inCunction in favor of a part+ 7ithout an+ legal right thereto merel+ on a technical infirmit+. The granting of an inCunctive 7rit )ased on a technical ground rather than compliance 7ith the re.uisites for the issuance of the same is contrar+ to the primar+ o)Cective of legal procedure 7hich is to serve as a means to dispense Custice to the deserving part+. The petitioner like7ise contends that the appellate court undul+ dela+ed the resolution of her motion for reconsideration. 1ut 7e find that petitioner contri)uted to this dela+ 7hen she filed successive contentious motions in the same proceeding, the last of 7hich 7as on 9cto)er 2#, 199/, necessitating counter"manifestations from private respondents 7ith the last one )eing filed on ovem)er 9, 199/. onetheless, it is 7ell"settled that non"o)servance of the period for deciding cases or their incidents does not render such Cudgments ineffective or void.1# >ith respect to the purported damages she suffered due to the alleged dela+ in resolving her motion for reconsideration, 7e find that the said issue has like7ise )een rendered moot and academic )+ our ruling that she has no right over the trademark and, conse.uentl+, to the issuance of a 7rit of preliminar+ inCunction../wphi.!n0t -inall+, 7e rule that the Court of Appeals correctl+ denied the petitioner0s several motions for contempt of court. There is nothing contemptuous a)out the advertisements complained of 7hich, as regards the proceedings in CA"(.;. AP o. 2#$8/ merel+ announced in plain and straightfor7ard language the promulgation of the assailed Decision of the appellate court. 6oreover, pursuant to Aection & of ;ule /9 of the ;evised ;ules of Civil Procedure, the said decision nullif+ing the inCunctive 7rit 7as immediatel+ eEecutor+. >@?;?-9;?, the petition is #%NI%#. The Decision and ;esolution of the Court of Appeals dated 6a+ 2&, 199/ and June /, 199&, respectivel+, are here)+ AFFIR)%#. >ith costs against the petitioner. A9 9;D?;?D. 2ellosillo, Mendo=a, 1uisum ing, and 2uena, 33!, concur.

Foo-no-.
1

Penned )+ Associate Justice ;icardo P. (alve,, and concurred in )+ Associate Justices 6anuel 6. @errera and Asaali A. 2snani, inth DivisionK ;ollo, pp. /N"&8.
2 / & % N # $ 9

Penned )+ Judge A)raham P. IeraK CA ;ollo, pp. 12"1$. CA ;ollo, pp. 12"1#. CA ;ollo, p. 1$. ;ollo, p. /9. ;ollo, pp. /$"/9. ;ollo, pp. 19, 2&1. ;ollo, pp. &2"&/. ;ollo, p. 21. Aection &, ;ule %$, ;evised ;ules of Civil Procedure. A+ v. Court of Appeals, /1/ AC;A /2$ 319994.

18 11

12 1/ 1& 1% 1N

Aection 121.1, ;epu)lic Act Aection 121./, ;epu)lic Act.

o. $29/. o. $29/.

Aection 1#2, ;epu)lic Act o. $29/. Aection 21, ;epu)lic Act o. $29/. o. #11%8

2#$ AC;A &9$, %8N .uoting Aolid @omes, 2nc. v. :A Iista, (.;. dated April 28, 19$$ 3unpu)lished4.
1#

De ;oma v. Court of Appeals, 1%2 AC;A 28%, 289 319$#4.

0000000000000000000000000000000000000000000000000000000000000000000 00000000000 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 G.R. No. 16129+ Jun. 29, 200+ J%SSI% G. CHING, petitioner, vs. (I$$IA) ). SA$INAS, SR., (I$$IA) ). SA$INAS, JR., JOS%PHIN% $. SA$INAS, J%NNIF%R Y. SA$INAS, A$ONTO SO$AI)AN SA$$%, JOHN %RIC I. SA$INAS, NO%$ ). YA" T 7"oar! o8 #4r.5-or/ an! O8845.r/ o8 (I$A(AR% PRO# CT CORPORATION9, respondents. D?C2A29 CA$$%JO, SR., J.: This petition for revie7 on certiorari assails the Decision1 and ;esolution2 of the Court of Appeals 3CA4 in CA"(.;. AP o. #8&11 affirming the Januar+ /, 2882 and -e)ruar+ 1&, 2882 9rders/ of the ;egional Trial Court 3;TC4 of 6anila, 1ranch 1, 7hich .uashed and set aside Aearch >arrant os. 81"2&81 and 81"2&82 granted in favor of petitioner Jessie (. Ching. Jessie (. Ching is the o7ner and general manager of Jeshicris 6anufacturing Co., the maker and manufacturer of a =tilit+ 6odel, descri)ed as ':eaf Apring ?+e 1ushing for Automo)ile' made up of plastic. 9n Aeptem)er &, 2881, Ching and Joseph Ju 7ere issued )+ the ational :i)rar+ Certificates of Cop+right ;egistration and Deposit of the said 7ork descri)ed therein as ':eaf Apring ?+e 1ushing for Automo)ile.'& 9n Aeptem)er 28, 2881, Ching re.uested the ational 1ureau of 2nvestigation 3 124 for police5investigative assistance for the apprehension and prosecution of illegal manufacturers, producers and5or distri)utors of the 7orks.% After due investigation, the 12 filed applications for search 7arrants in the ;TC of 6anila against >illiam Aalinas, Ar. and the officers and mem)ers of the 1oard of Directors of >ila7are Product Corporation. 2t 7as alleged that the respondents therein reproduced and distri)uted the said models penali,ed under Aections 1##.1 and 1##./ of ;epu)lic Act 3;.A.4 o. $29/. The applications sought the sei,ure of the follo7ingB a.4 =ndetermined .uantit+ of :eaf spring e+e )ushing for automo)ile that are made up of plastic pol+prop+leneK

).4 =ndetermined .uantit+ of :eaf spring e+e )ushing for automo)ile that are made up of pol+vin+l chloride plasticK c.4 =ndetermined .uantit+ of Iehicle )earing cushion that is made up of pol+vin+l chloride plasticK d.4 =ndetermined .uantit+ of Dies and Cigs, patterns and flasks used in the manufacture5fa)rication of items a to dK e.4 ?vidences of sale 7hich include deliver+ receipts, invoices and official receipts.N The ;TC granted the application and issued Aearch >arrant os. 81"2&81 and 81"2&82 for the sei,ure of the aforecited articles.# 2n the inventor+ su)mitted )+ the 12 agent, it appears that the follo7ing articles5items 7ere sei,ed )ased on the search 7arrantsB :eaf Apring e+e )ushing a4 Plastic Pol+prop+lene " C198 2# P " C2&8 rear &8 P " C2&8 front &1 P 1A( 1 )4 Pol+vin+l Chloride Plastic " C198 1/ P c4 Iehicle )earing cushion " center )earing cushion 11 P 1udder for C198 mold $ P Diesel 6old a4 6old for spring e+e )ushing rear 1 set )4 6old for spring e+e )ushing front 1 set c4 6old for spring e+e )ushing for C198 1 set d4 6old for C2&8 rear 1 piece of the set e4 6old for spring e+e )ushing for :/88 2 sets f4 6old for leaf spring e+e )ushing C198 7ith metal 1 set g4 6old for vehicle )earing cushion 1 set$ The respondents filed a motion to .uash the search 7arrants on the follo7ing groundsB 2. The cop+right registrations 7ere issued in violation of the 2ntellectual Propert+ Code on the ground thatB a4 the su)Cect matter of the registrations are not artistic or literar+K )4 the su)Cect matter of the registrations are spare parts of automo)iles meaning Q there 3sic4 are original parts that the+ are designed to replace. @ence, the+ are not original.9 The respondents averred that the 7orks covered )+ the certificates issued )+ the ational :i)rar+ are not artistic in natureK the+ are considered automotive spare parts and pertain to technolog+. The+ aver that the models are not original, and as such are the proper su)Cect of a patent, not cop+right.18

2n opposing the motion, the petitioner averred that the court 7hich issued the search 7arrants 7as not the proper forum in 7hich to articulate the issue of the validit+ of the cop+rights issued to him. Citing the ruling of the Court inMalaloan v! )ourt of Appeals,11 the petitioner stated that a search 7arrant is merel+ a Cudicial process designed )+ the ;ules of Court in anticipation of a criminal case. =ntil his cop+right 7as nullified in a proper proceeding, he enCo+s rights of a registered o7ner5holder thereof. 9n Januar+ /, 2882, the trial court issued an 9rder12 granting the motion, and .uashed the search 7arrant on its finding that there 7as no pro)a)le cause for its issuance. The court ruled that the 7ork covered )+ the certificates issued to the petitioner pertained to solutions to technical pro)lems, not literar+ and artistic as provided in Article 1#2 of the 2ntellectual Propert+ Code. @is motion for reconsideration of the order having )een denied )+ the trial courtRs 9rder of -e)ruar+ 1&, 2882, the petitioner filed a petition for certiorari in the CA, contending that the ;TC had no Curisdiction to delve into and resolve the validit+ of the cop+right certificates issued to him )+ the ational :i)rar+. @e insisted that his 7orks are covered )+ Aections 1#2.1 and 1#2.2 of the 2ntellectual Propert+ Code. The petitioner averred that the cop+right certificates are prima facie evidence of its validit+, citing the ruling of the =nited Atates Court of Appeals in 5ildlife 6xpress )orporation v! )arol 5right ,ales, Inc!1/ The petitioner asserted that the respondents failed to adduce evidence to support their motion to .uash the search 7arrants. The petitioner noted that respondent >illiam Aalinas, Jr. 7as not )eing honest, as he 7as a)le to secure a similar cop+right registration of a similar product from the ational :i)rar+ on Januar+ 1&, 2882. 9n Aeptem)er 2N, 288/, the CA rendered Cudgment dismissing the petition on its finding that the ;TC did not commit an+ grave a)use of its discretion in issuing the assailed order, to 7itB 2t is settled that preliminaril+, there must )e a finding that a specific offense must have )een committed to Custif+ the issuance of a search 7arrant. 2n a num)er of cases decided )+ the Aupreme Court, the same is eEplicitl+ provided, thusB 'The pro)a)le cause must )e in connection 7ith one specific offense, and the Cudge must, )efore issuing the 7arrant, personall+ eEamine in the form of searching .uestions and ans7ers, in 7riting and under oath, the complainant and an+ 7itness he ma+ produce, on facts personall+ kno7n to them and attach to the record their s7orn statements together 7ith an+ affidavit su)mitted. '2n the determination of pro)a)le cause, the court must necessaril+ resolve 7hether or not an offense eEists to Custif+ the issuance or .uashal of the search 7arrant.' 2n the instant case, the petitioner is pra+ing for the reinstatement of the search 7arrants issued, )ut su)se.uentl+ .uashed, for the offense of <iolation of )lass Designation of )opyrighta le 5or"s under ,ection .>>!. in relation to ,ection .>>!? of Repu lic Act @'&?, 7hen the o)Cects su)Cect of the same, are patentl+ not cop+righta)le. 2t is 7orth+ to state that the 7orks protected under the :a7 on Cop+right areB literar+ or artistic 7orks 3Aec. 1#24 and derivative 7orks 3Aec. 1#/4. The :eaf Apring ?+e 1ushing and Iehicle 1earing Cushion fall on neither classification. Accordingl+, if, in the first place, the item su)Cect of the petition is not entitled to )e protected )+ the la7 on cop+right, ho7 can there )e an+ violationM1& The petitionerRs motion for reconsideration of the said decision suffered the same fate. The petitioner forth7ith filed the present petition for revie7 on certiorari, contending that the revocation of his cop+right certificates should )e raised in a direct action and not in a

search 7arrant proceeding. The petitioner posits that even assuming ex argumenti that the trial court ma+ resolve the validit+ of his cop+right in a proceeding to .uash a search 7arrant for allegedl+ infringing items, the ;TC committed a grave a)use of its discretion 7hen it declared that his 7orks are not cop+righta)le in the first place. @e claims that ;.A. o. $29/, other7ise kno7n as the 2ntellectual Propert+ Code of the Philippines, 7hich took effect on Januar+ 1, 199$, provides in no uncertain terms that cop+right protection automaticall+ attaches to a 7ork )+ the sole fact of its creation, irrespective of its mode or form of eEpression, as 7ell as of its content, .ualit+ or purpose.1% The la7 gives a non" inclusive definition of '7ork' as referring to original intellectual creations in the literar+ and artistic domain protected from the moment of their creationK and includes original ornamental designs or models for articles of manufacture, 7hether or not registra)le as an industrial design and other 7orks of applied art under Aection 1#2.13h4 of ;.A. o. $29/.lawphil!net As such, the petitioner insists, not7ithstanding the classification of the 7orks as either literar+ and5or artistic, the said la7, like7ise, encompasses 7orks 7hich ma+ have a )earing on the utilit+ aspect to 7hich the petitionerRs utilit+ designs 7ere classified. 6oreover, according to the petitioner, 7hat the Cop+right :a7 protects is the authorRs intellectual creation, regardless of 7hether it is one 7ith utilitarian functions or incorporated in a useful article produced on an industrial scale. The petitioner also maintains that the la7 does not provide that the intended use or use in industr+ of an article eligi)le for patent )ars or invalidates its registration under the :a7 on Cop+right. The test of protection for the aesthetic is not )eaut+ and utilit+, )ut art for the cop+right and invention of original and ornamental design for design patents.1N 2n like manner, the fact that his utilit+ designs or models for articles of manufacture have )een eEpressed in the field of automotive parts, or )ased on something alread+ in the pu)lic domain does not automaticall+ remove them from the protection of the :a7 on Cop+right.1# The petitioner faults the CA for ignoring Aection 21$ of ;.A. o. $29/ 7hich gives the same presumption to an affidavit eEecuted )+ an author 7ho claims cop+right o7nership of his 7ork. The petitioner adds that a finding of pro)a)le cause to Custif+ the issuance of a search 7arrant means merel+ a reasona)le suspicion of the commission of the offense. 2t is not e.uivalent to a)solute certaint+ or a finding of actual and positive cause.1$ @e assists that the determination of pro)a)le cause does not concern the issue of 7hether or not the alleged 7ork is cop+righta)le. @e maintains that to Custif+ a finding of pro)a)le cause in the issuance of a search 7arrant, it is enough that there eEists a reasona)le suspicion of the commission of the offense. The petitioner contends that he has in his favor the )enefit of the presumption that his cop+right is validK hence, the )urden of overturning this presumption is on the alleged infringers, the respondents herein. 1ut this )urden cannot )e carried in a hearing on a proceeding to .uash the search 7arrants, as the issue therein is 7hether there 7as pro)a)le cause for the issuance of the search 7arrant. The petitioner concludes that the issue of pro)a)le cause should )e resolved 7ithout invalidating his cop+right. 2n their comment on the petition, the respondents aver that the 7ork of the petitioner is essentiall+ a technical solution to the pro)lem of 7ear and tear in automo)iles, the su)stitution of materials, i!e!, from ru))er to plastic matter of pol+vin+l chloride, an oil resistant soft teEture plastic material strong enough to endure pressure )rought a)out )+

the vi)ration of the counter )earing and thus )rings )ushings. Auch 7ork, the respondents assert, is the su)Cect of cop+right under Aection 1#2.1 of ;.A. o. $29/. The respondents posit that a technical solution in an+ field of human activit+ 7hich is novel ma+ )e the su)Cect of a patent, and not of a cop+right. The+ insist that the certificates issued )+ the ational :i)rar+ are onl+ certifications that, at a point in time, a certain 7ork 7as deposited in the said office. -urthermore, the registration of cop+rights does not provide for automatic protection. Citing Aection 21$.23)4 of ;.A. o. $29/, the respondents aver that no cop+right is said to eEist if a part+ categoricall+ .uestions its eEistence and legalit+. 6oreover, under Aection 2, ;ule # of the 2mplementing ;ules of ;.A. o. $29/, the registration and deposit of 7ork is not conclusive as to cop+right outla+ or the time of cop+right or the right of the cop+right o7ner. The respondents maintain that a cop+right eEists onl+ 7hen the 7ork is covered )+ the protection of ;.A. o. $29/. The petition has no merit. The ;TC had Curisdiction to delve into and resolve the issue 7hether the petitionerRs utilit+ models are cop+righta)le and, if so, 7hether he is the o7ner of a cop+right over the said models. 2t )ears stressing that upon the filing of the application for search 7arrant, the ;TC 7as dut+")ound to determine 7hether pro)a)le cause eEisted, in accordance 7ith Aection &, ;ule 12N of the ;ules of Criminal ProcedureB A?C. &. ReAuisite for issuing search warrant! Q A search 7arrant shall not issue )ut upon pro)a)le cause in connection 7ith one specific offense to )e determined personall+ )+ the Cudge after eEamination under oath or affirmation of the complainant and the 7itnesses he ma+ produce, and, particularl+, descri)ing the place to )e searched and the things to )e sei,ed. 2n ,olid 7riangle ,ales )orporation v! 7he ,heriff of R7) 1), 2r! &?,19 the Court held that in the determination of pro)a)le cause, the court must necessaril+ resolve 7hether or not an offense eEists to Custif+ the issuance of a search 7arrant or the .uashal of one alread+ issued )+ the court. 2ndeed, pro)a)le cause is deemed to eEist onl+ 7here facts and circumstances eEist 7hich could lead a reasona)l+ cautious and prudent man to )elieve that an offense has )een committed or is )eing committed. 1esides, in Aection /, ;ule 12N of the ;ules of Criminal Procedure, a search 7arrant ma+ )e issued for the search and sei,ure of personal propert+ 3a4 su)Cect of the offenseK 3)4 stolen or em)e,,led and other proceeds or fruits of the offenseK or 3c4 used or intended to )e used as the means of committing an offense. The ;TC is mandated under the Constitution and ;ules of Criminal Procedure to determine pro)a)le cause. The court cannot a)dicate its constitutional o)ligation )+ refusing to determine 7hether an offense has )een committed.28 The a)sence of pro)a)le cause 7ill cause the outright nullification of the search 7arrant.21 -or the ;TC to determine 7hether the crime for infringement under ;.A. o. $29/ as alleged in an application is committed, the petitioner"applicant 7as )urdened to prove that 3a4 respondents Jessie Ching and Joseph Ju 7ere the o7ners of cop+righted materialK and 3)4 the cop+righted material 7as )eing copied and distri)uted )+ the respondents. Thus, the o7nership of a valid cop+right is essential.22 97nership of cop+righted material is sho7n )+ proof of originalit+ and cop+righta)ilit+. 1+ originalit+ is meant that the material 7as not copied, and evidences at least minimal creativit+K that it 7as independentl+ created )+ the author and that it possesses at least same minimal degree of creativit+.2/ Cop+ing is sho7n )+ proof of access to cop+righted material and su)stantial similarit+ )et7een the t7o 7orks.2& The applicant must thus

demonstrate the eEistence and the validit+ of his cop+right )ecause in the a)sence of cop+right protection, even original creation ma+ )e freel+ copied.2% 1+ re.uesting the 12 to investigate and, if feasi)le, file an application for a search 7arrant for infringement under ;.A. o. $29/ against the respondents, the petitioner there)+ authori,ed the ;TC 3in resolving the application4, to delve into and determine the validit+ of the cop+right 7hich he claimed he had over the utilit+ models. The petitioner cannot seek relief from the ;TC )ased on his claim that he 7as the cop+right o7ner over the utilit+ models and, at the same time, repudiate the courtRs Curisdiction to ascertain the validit+ of his claim 7ithout running afoul to the doctrine of estoppel. To discharge his )urden, the applicant ma+ present the certificate of registration covering the 7ork or, in its a)sence, other evidence.2N A cop+right certificate provides prima facie evidence of originalit+ 7hich is one element of cop+right validit+. 2t constitutes prima facie evidence of )oth validit+ and o7nership2# and the validit+ of the facts stated in the certificate.2$ The presumption of validit+ to a certificate of cop+right registration merel+ orders the )urden of proof. The applicant should not ordinaril+ )e forced, in the first instance, to prove all the multiple facts that underline the validit+ of the cop+right unless the respondent, effectivel+ challenging them, shifts the )urden of doing so to the applicant.29 2ndeed, Aection 21$.2 of ;.A. o. $29/ providesB 21$.2. 2n an action under this ChapterB 3a4 Cop+right shall )e presumed to su)sist in the 7ork or other su)Cect matter to 7hich the action relates if the defendant does not put in issue the .uestion 7hether cop+right su)sists in the 7ork or other su)Cect matterK and 3)4 >here the su)sistence of the cop+right is esta)lished, the plaintiff shall )e presumed to )e the o7ner of the cop+right if he claims to )e the o7ner of the cop+right and the defendant does not put in issue the .uestion of his o7nership. A certificate of registration creates no re)utta)le presumption of cop+right validit+ 7here other evidence in the record casts dou)t on the .uestion. 2n such a case, validit+ 7ill not )e presumed./8 To discharge his )urden of pro)a)le cause for the issuance of a search 7arrant for violation of ;.A. o. $29/, the petitioner"applicant su)mitted to the ;TC Certificate of Cop+right ;egistration os. 2881"19# and 2881"28& dated Aeptem)er /, 2881 and Aeptem)er &, 2881, respectivel+, issued )+ the ational :i)rar+ covering 7ork identified as :eaf Apring ?+e 1ushing for Automo)ile and Iehicle 1earing Cushion )oth classified under Aection 1#2.13h4 of ;.A. o. $29/, to 7itB A?C. 1#2. 4iterary and Artistic 5or"s! Q 1#2.1. :iterar+ and artistic 7orks, hereinafter referred to as '7orks,' are original intellectual creations in the literar+ and artistic domain protected from the moment of their creation and shall include in particularB ... 3h4 9riginal ornamental designs or models for articles of manufacture, 7hether or not registra)le as an industrial design, and other 7orks of applied art. ;elated to the provision is Aection 1#1.18, 7hich provides that a '7ork of applied art' is an artistic creation 7ith utilitarian functions or incorporated in a useful article, 7hether made )+ hand or produced on an industrial scale. 1ut, as gleaned from the specifications appended to the application for a cop+right certificate filed )+ the petitioner, the said :eaf Apring ?+e 1ushing for Automo)ile is merel+ a utilit+ model descri)ed as comprising a generall+ c+lindrical )od+ having a co"

aEial )ore that is centrall+ located and provided 7ith a perpendicular flange on one of its ends and a c+lindrical metal Cacket surrounding the peripheral 7alls of said )od+, 7ith the )ushing made of plastic that is either pol+vin+l chloride or pol+prop+lene./1 :ike7ise, the Iehicle 1earing Cushion is illustrated as a )earing cushion comprising a generall+ semi"circular )od+ having a central hole to secure a conventional )earing and a pluralit+ of ridges provided therefore, 7ith said cushion )earing )eing made of the same plastic materials./2 Plainl+, these are not literar+ or artistic 7orks. The+ are not intellectual creations in the literar+ and artistic domain, or 7orks of applied art. The+ are certainl+ not ornamental designs or one having decorative .ualit+ or value. 2t )ears stressing that the focus of cop+right is the usefulness of the artistic design, and not its marketa)ilit+. The central in.uir+ is 7hether the article is a 7ork of art.// >orks for applied art include all original pictorials, graphics, and sculptural 7orks that are intended to )e or have )een em)odied in useful article regardless of factors such as mass production, commercial eEploitation, and the potential availa)ilit+ of design patent protection./& As gleaned from the description of the models and their o)Cectives, these articles are useful articles 7hich are defined as one having an intrinsic utilitarian function that is not merel+ to portra+ the appearance of the article or to conve+ information. 2ndeed, 7hile 7orks of applied art, original intellectual, literar+ and artistic 7orks are cop+righta)le, useful articles and 7orks of industrial design are not./% A useful article ma+ )e cop+righta)le onl+ if and onl+ to the eEtent that such design incorporates pictorial, graphic, or sculptural features that can )e identified separatel+ from, and are capa)le of eEisting independentl+ of the utilitarian aspects of the article. >e agree 7ith the contention of the petitioner 3citing Aection 1#1.18 of ;.A. o. $29/4, that the authorRs intellectual creation, regardless of 7hether it is a creation 7ith utilitarian functions or incorporated in a useful article produced on an industrial scale, is protected )+ cop+right la7. @o7ever, the la7 refers to a '7ork of applied art 7hich is an artistic creation.' 2t )ears stressing that there is no cop+right protection for 7orks of applied art or industrial design 7hich have aesthetic or artistic features that cannot )e identified separatel+ from the utilitarian aspects of the article./N -unctional components of useful articles, no matter ho7 artisticall+ designed, have generall+ )een denied cop+right protection unless the+ are separa)le from the useful article./# 2n this case, the petitionerRs models are not 7orks of applied art, nor artistic 7orks. The+ are utilit+ models, useful articles, al)eit 7ith no artistic design or value. Thus, the petitioner descri)ed the utilit+ model as follo7sB :?A- AP;2 ( ?J? 1=A@2 ( -9; A=T96912:? Lno7n )ushings inserted to leaf"spring e+e to hold leaf"springs of automo)ile are made of hard ru))er. These ru))er )ushings after a time, upon su)Cecting them to so much or intermittent pressure 7ould eventuall+ 7ore 3sic4 out that 7ould cause the 7o))ling of the leaf spring. The primar+ o)Cect of this utilit+ model, therefore, is to provide a leaf"spring e+e )ushing for automo)ile that is made up of plastic. Another o)Cect of this utilit+ model is to provide a leaf"spring e+e )ushing for automo)iles made of pol+vin+l chloride, an oil resistant soft teEture plastic or pol+prop+lene, a hard plastic, +et )oth causes cushion to the leaf spring, +et strong enough to endure pressure )rought a)out )+ the up and do7n movement of said leaf spring. Jet, an o)Cect of this utilit+ model is to provide a leaf"spring e+e )ushing for automo)iles

that has a much longer life span than the ru))er )ushings. Atill an o)Cect of this utilit+ model is to provide a leaf"spring e+e )ushing for automo)iles that has a ver+ simple construction and can )e made using simple and ordinar+ molding e.uipment. A further o)Cect of this utilit+ model is to provide a leaf"spring e+e )ushing for automo)ile that is supplied 7ith a metal Cacket to reinforce the plastic e+e )ushing 7hen in engaged 7ith the steel material of the leaf spring. These and other o)Cects and advantages 7ill come to vie7 and )e understood upon a reading of the detailed description 7hen taken in conCunction 7ith the accompan+ing dra7ings. -igure 1 is an eEploded perspective of a leaf"spring e+e )ushing according to the present utilit+ modelK -igure 2 is a sectional vie7 taken along line 2"2 of -ig. 1K -igure / is a longitudinal sectional vie7 of another em)odiment of this utilit+ modelK -igure & is a perspective vie7 of a third em)odimentK and -igure % is a sectional vie7 thereof. ;eferring no7 to the several vie7s of the dra7ings 7herein like reference numerals designated same parts throughout, there is sho7n a utilit+ model for a leaf"spring e+e )ushing for automo)ile generall+ designated as reference numeral 18. Aaid leaf"spring e+e )ushing 18 comprises a generall+ c+lindrical )od+ 11 having a co" aEial )ore 12 centrall+ provided thereof. As sho7n in -igs. 1 and 2, said leaf"spring e+e )ushing 18 is provided 7ith a perpendicular flange 1/ on one of its ends and a c+lindrical metal Cacket 1& surrounding the peripheral 7alls 1% of said )od+ 11. >hen said leaf"spring )ushing 18 is installed, the metal Cacket 1& acts 7ith the leaf"spring e+e 3not sho7n4, 7hich is also made of steel or cast steel. 2n effect, the )ushing 18 7ill not )e directl+ in contact 7ith steel, )ut rather the metal Cacket, making the life of the )ushing 18 longer than those 7ithout the metal Cacket. 2n -igure 2, the )ushing 18 as sho7n is made of plastic, prefera)l+ pol+vin+l chloride, an oil resistant soft teEture plastic or a hard pol+prop+lene plastic, )oth are capa)le to endure the pressure applied thereto, and, in effect, 7ould lengthen the life and replacement therefor. -igure /, on the other hand, sho7s the 7alls 1N of the co"aEial )ore 12 of said )ushing 18 is inserta)l+ provided 7ith a steel tu)e 1# to reinforce the inner portion thereof. This steel tu)e 1# accommodates or engages 7ith the leaf"spring )olt 3not sho7n4 connecting the leaf spring and the automo)ileRs chassis. -igures & and % sho7 another em)odiment 7herein the leaf e+e )ushing 18 is elongated and c+lindrical as to its construction. Aaid another em)odiment is also made of pol+prop+lene or pol+vin+l chloride plastic material. The steel tu)e 1# and metal Cacket 1& ma+ also )e applied to this em)odiment as an option thereof./$ I?@2C:? 1?A;2 ( C=A@29 Lno7n )earing cushions inserted to )earing housings for vehicle propeller shafts are made of hard ru))er. These ru))er )ushings after a time, upon su)Cecting them to so much or intermittent pressure 7ould eventuall+ )e 7orn out that 7ould cause the

7o))ling of the center )earing. The primar+ o)Cect of this utilit+ model therefore is to provide a vehicle")earing cushion that is made up of plastic. Another o)Cect of this utilit+ model is to provide a vehicle )earing cushion made of pol+vin+l chloride, an oil resistant soft teEture plastic material 7hich causes cushion to the propellerRs center )earing, +et strong enough to endure pressure )rought a)out )+ the vi)ration of the center )earing. Jet, an o)Cect of this utilit+ model is to provide a vehicle")earing cushion that has a much longer life span than ru))er )ushings. Atill an o)Cect of this utilit+ model is to provide a vehicle )earing cushion that has a ver+ simple construction and can )e made using simple and ordinar+ molding e.uipment. These and other o)Cects and advantages 7ill come to vie7 and )e understood upon a reading of the detailed description 7hen taken in conCunction 7ith the accompan+ing dra7ings. -igure 1 is a perspective vie7 of the present utilit+ model for a vehicle")earing cushionK and -igure 2 is a sectional vie7 thereof. ;eferring no7 to the several vie7s of the dra7ing, 7herein like reference numeral designate same parts throughout, there is sho7n a utilit+ model for a vehicle")earing cushion generall+ designated as reference numeral 18. Aaid )earing cushion 18 comprises of a generall+ semi"circular )od+ 11, having central hole 12 to house a conventional )earing 3not sho7n4. As sho7n in -igure 1, said )od+ 11 is provided 7ith a pluralit+ of ridges 1/ 7hich serves reinforcing means thereof. The su)Cect )earing cushion 18 is made of pol+vin+l chloride, a soft teEture oil and chemical resistant plastic material 7hich is strong, dura)le and capa)le of enduring severe pressure from the center )earing )rought a)out )+ the rotating movement of the propeller shaft of the vehicle./9 A utilit+ model is a technical solution to a pro)lem in an+ field of human activit+ 7hich is ne7 and industriall+ applica)le. 2t ma+ )e, or ma+ relate to, a product, or process, or an improvement of an+ of the aforesaid.&8?ssentiall+, a utilit+ model refers to an invention in the mechanical field. This is the reason 7h+ its o)Cect is sometimes descri)ed as a device or useful o)Cect.&1 A utilit+ model varies from an invention, for 7hich a patent for invention is, like7ise, availa)le, on at least three aspectsB first, the re.uisite of 'inventive step'&2 in a patent for invention is not re.uiredK second, the maEimum term of protection is onl+ seven +ears&/ compared to a patent 7hich is t7ent+ +ears,&& )oth reckoned from the date of the applicationK and third, the provisions on utilit+ model dispense 7ith its su)stantive eEamination&% and prefer for a less complicated s+stem. 1eing plain automotive spare parts that must conform to the original structural design of the components the+ seek to replace, the :eaf Apring ?+e 1ushing and Iehicle 1earing Cushion are not ornamental. The+ lack the decorative .ualit+ or value that must characteri,e authentic 7orks of applied art. The+ are not even artistic creations 7ith incidental utilitarian functions or 7orks incorporated in a useful article. 2n actualit+, the personal properties descri)ed in the search 7arrants are mechanical 7orks, the principal function of 7hich is utilit+ sans an+ aesthetic em)ellishment. either are 7e to regard the :eaf Apring ?+e 1ushing and Iehicle 1earing Cushion as included in the catch"all phrase 'other literar+, scholarl+, scientific and artistic 7orks' in

Aection 1#2.13a4 of ;.A. o. $29/. Appl+ing the principle of e-usdem generis 7hich states that '7here a statute descri)es things of a particular class or kind accompanied )+ 7ords of a generic character, the generic 7ord 7ill usuall+ )e limited to things of a similar nature 7ith those particularl+ enumerated, unless there )e something in the conteEt of the state 7hich 7ould repel such inference,'&N the :eaf Apring ?+e 1ushing and Iehicle 1earing Cushion are not cop+righta)le, )eing not of the same kind and nature as the 7orks enumerated in Aection 1#2 of ;.A. o. $29/. o cop+right granted )+ la7 can )e said to arise in favor of the petitioner despite the issuance of the certificates of cop+right registration and the deposit of the :eaf Apring ?+e 1ushing and Iehicle 1earing Cushion. 2ndeed, in3oaAuin, 3r! v! Drilon&# and #earl ; Dean B#hil!C, Incorporated v! ,hoemart, Incorporated,&$ the Court ruled thatB Cop+right, in the strict sense of the term, is purel+ a statutor+ right. 2t is a ne7 or independent right granted )+ the statute, and not simpl+ a pre"eEisting right regulated )+ it. 1eing a statutor+ grant, the rights are onl+ such as the statute confers, and ma+ )e o)tained and enCo+ed onl+ 7ith respect to the su)Cects and )+ the persons, and on terms and conditions specified in the statute. Accordingl+, it can cover onl+ the 7orks falling 7ithin the statutor+ enumeration or description. That the 7orks of the petitioner ma+ )e the proper su)Cect of a patent does not entitle him to the issuance of a search 7arrant for violation of cop+right la7s. 2n 8ho v! )ourt of Appeals&9 and #earl ; Dean B#hil!C, Incorporated v! ,hoemart, Incorporated,%8 the Court ruled that 'these cop+right and patent rights are completel+ distinct and separate from one another, and the protection afforded )+ one cannot )e used interchangea)l+ to cover items or 7orks that exclusively pertain to the others.' The Court eEpounded further, thusB Trademark, cop+right and patents are different intellectual propert+ rights that cannot )e interchanged 7ith one another. A trademark is an+ visi)le sign capa)le of distinguishing the goods 3trademark4 or services 3service mark4 of an enterprise and shall include a stamped or marked container of goods. 2n relation thereto, a trade name means the name or designation identif+ing or distinguishing an enterprise. 6ean7hile, the scope of a cop+right is confined to literar+ and artistic 7orks 7hich are original intellectual creations in the literar+ and artistic domain protected from the moment of their creation. Patenta)le inventions, on the other hand, refer to an+ technical solution of a pro)lem in an+ field of human activit+ 7hich is ne7, involves an inventive step and is industriall+ applica)le. The petitioner cannot find solace in the ruling of the =nited Atates Aupreme Court in Ma=er v! ,tein%1 to )uttress his petition. 2n that case, the artifacts involved in that case 7ere statuettes of dancing male and female figures made of semi"vitreous china. The controvers+ therein centered on the fact that although cop+righted as '7orks of art,' the statuettes 7ere intended for use and used as )ases for ta)le lamps, 7ith electric 7iring, sockets and lampshades attached. The issue raised 7as 7hether the statuettes 7ere cop+right protected in the =nited Atates, considering that the cop+right applicant intended primaril+ to use them as lamp )ases to )e made and sold in .uantit+, and carried such intentions into effect. At that time, the Cop+right 9ffice interpreted the 1989 Cop+right Act to cover 7orks of artistic craftsmanship insofar as their form, )ut not the utilitarian aspects, 7ere concerned. After revie7ing the histor+ and intent of the =A Congress on its cop+right legislation and the interpretation of the cop+right office, the =A Aupreme Court declared that the statuettes 7ere held cop+righta)le 7orks of art or models or designs for 7orks of art. The @igh Court ruled thatB

'>orks of art 3Class (4 Q 3a4 Q In Deneral! This class includes 7orks of artistic craftsmanship, in so far as their form )ut not their mechanical or utilitarian aspects are concerned, such as artistic Ce7elr+, enamels, glass7are, and tapestries, as 7ell as all 7orks )elonging to the fine arts, such as paintings, dra7ings and sculpture. S' Ao 7e have a contemporaneous and long"continued construction of the statutes )+ the agenc+ charged to administer them that 7ould allo7 the registration of such a statuette as is in .uestion here.%2 The @igh Court 7ent on to state that 'GtHhe dichotom+ of protection for the aesthetic is not )eaut+ and utilit+ )ut art for the cop+right and the invention of original and ornamental design for design patents.' Aignificantl+, the cop+right office promulgated a rule to implement 6a,er to 7itB S G2Hf 'the sole intrinsic function of an article is its utilit+, the fact that the 7ork is uni.ue and attractivel+ shaped 7ill not .ualif+ it as a 7ork of art.' 2n this case, the )ushing and cushion are not 7orks of art. The+ are, as the petitioner himself admitted, utilit+ models 7hich ma+ )e the su)Cect of a patent. IN $IGHT OF A$$ TH% FOR%GOING, the instant petition is here)+ D? 2?D for lack of merit. The assailed Decision and ;esolution of the Court of Appeals in CA"(.;. AP o. #8&11 are A--2;6?D. Aearch >arrant os. 81"2&81 and 81"2&82 issued on 9cto)er 1%, 2881 are A =::?D A D A?T AA2D?. Costs against the petitioner. A9 9;D?;?D. Puno, 3Chairman4, Austria"6artine,, Tinga, and Chico" a,ario, JJ., concur.

Foo-no-./
1

Penned )+ Associate Justice Amelita (. Tolentino, 7ith Associate Justices ?lo+ ;. 1ello, Jr. 3retired4 and Arturo D. 1rion, concurringK Rollo, pp. 1#"2&.
2 / & % N # $ 9

Rollo, pp. /1"/2. Penned )+ Acting Presiding Judge Antonio 6. ?ugenio, Jr. CA Rollo, pp. 2$"/&. Id! at &#. CA Rollo, p. %&. Id! at %&"N1. Id! at N$. CA Rollo, p. #8. Id! at #/"#%. (.;. o. 18&$#9, N 6a+ 199&, 2/2 AC;A 2&9. Rollo, pp. 22"2/. 1$ -./d %82. Rollo, p. 2/. Aection 1#2.2, ;epu)lic Act o. $29/. Citing Amador, Iicente 1., Cop+right =nder the 2ntellectual Propert+ Code,

18 11 12 1/ 1& 1% 1N

199$ ed., p. 12$, citing Ma=erv! ,tein, /&# =.A. 281 319%&4.
1#

$orma Ri on ; 7rimming v! 4ittle, +nited ,tates )ourt of Appeals, *ifth )ircuit, o. 9&"N8/$9, 2# April 199%.
1$

)olum ia #ictures, Inc! v! )ourt of Appeals, D!R! $o! ..(?.@, 2$ August 199N, 2N1 AC;A 1&&.
19 28 21

(.;. I id!

o. 1&&/89, 2/ ovem)er 2881, /#8 AC;A &91.

Repu lic of the #hilippines v! ,andigan ayan, D!R! $os! ..'>(@-(&, 29 6arch 199N, 2%% AC;A &/$.
22

*eist #u lications, Inc! v! Rural 7elephone ,ervice )ompany, &99 =.A. /&8K 111 A.Ct. 12$2 319914.
2/

Donald 2ruce )ompany v! 2!D! Multi-)omm! )orporation, 9N& -.Aupp. 2N% 3199#4.
2& 2% 2N 2#

Apple 2arrel #roductions, Inc! v! R!D! 2eard, #/8 -.2d /$& 319$&4. Durnham Industries, Inc! v! 7omy )orporation, N/8 -.2d 98% 319$84. Apple 2arrel #roductions, Inc! v! R!D! 2eard, supra!

Midway Manufacturing )orporation v! 2andai-America, Inc!, %&N -.Aupp. 12% 319$24K 4a"edreams v! ,teve 7aylor, 9/2 -.2d 118/ 319914.
2$ 29 /8 /1 /2 // /& /% /N /# /$ /9 &8 &1

Durnham Industries, Inc! v! 7omy )orporation, supra! 2arnhart, Inc! v! 6conomy )over )orporation, ##/ -.2d &11 319$%4. I idK Midway Manufacturing )orporation v! 2andai-America, Inc!, supra! Rollo, p. $N. Id! at 9&. #ivot #ort International, Inc! v! )harlene #roducts, Inc!, /#2 -.2d 91/ 3288&4. Day 7oys, Inc! v! 2uddy 4! )orporation, #8/ -.2d 9#8 319$/4. #ivot #ort International, Inc! v! )harlene #roducts, Inc!, supra! I idK D2) of $ew 9or" v! Merit Diamond )orporation, #N$ -.Aupp. &1& 319914. $orris Industries, Inc! v! I77 )orporation, N9N -.2d 91$ 319$/4. Rollo, pp. $&"$#. Rollo, pp. 9/"9&. Aection 189.13a4 and 3)4 in relation to Aection 21 of ;epu)lic Act o. $29/.

Amador, Iicente 1., Patents =nder The 2ntellectual Propert+ Code, 2881 ed., p. #%1.
&2

An invention involves an inventive step if, having regard to prior art, it is not o)vious to a person skilled in the art at the time of the filing date or priorit+ date of the application claiming the invention. 3Aection 2N, ;epu)lic Act o. $29/4.
&/ && &%

Aection 189./, supra! Aection %&, supra! Aections 18$ to 111 of ;epu)lic Act o. $29/ state the rule on utilit+ models

and grant of a patent thereforB A?C. 18$. Applica ility of #rovisions Relating to #atents! Q 18$.1 Au)Cect to Aection 189, the provisions governing patents shall appl+, mutatis mutandis, to the registration of utilit+ models. 18$.2. >here the right to a patent conflicts 7ith the right to a utilit+ model registration in the case referred to in Aection 29, the said provisions shall appl+ as if the 7ord 'patent' 7ere replaced )+ the 7ords 'patent or utilit+ model registration.' 3Aec. %%, ;.A. o. 1N%a4 A?C. 189. ,pecial #rovisions Relating to +tility Models! Q 189.1. 3a4 An invention .ualifies for registration as a utilit+ model if it is ne7 and industriall+ applica)le. 3)4 Aection 21, 'Patenta)le 2nventions,' shall appl+ eEcept the reference to inventive step as a condition of protection. 189.2. Aections &/ to &9 shall not appl+ in the case of applications for registration of a utilit+ model. 189./. A utilit+ model registration shall eEpire, 7ithout an+ possi)ilit+ of rene7al, at the end of the seventh +ear after the date of the filing of the application. 189.&. 2n proceedings under Aections N1 to N&, the utilit+ model registration shall )e canceled on the follo7ing groundsB 3a4 That the claimed invention does not .ualif+ for registration as a utilit+ model and does not meet the re.uirements of registra)ilit+, in particular having regard to Au)section 189.1 and Aections 22, 2/, 2& and 2#K 3)4 That the description and the claims do not compl+ 7ith the prescri)ed re.uirementsK 3c4 That an+ dra7ing 7hich is necessar+ for the understanding of the invention has not )een furnishedK 3d4 That the o7ner of the utilit+ model registration is not the inventor or his successor in title. 3Aecs. %%, %N and %#, ;.A. o. 1N%a4 A?C. 118. )onversion of #atent Applications or Applications for +tility Model Registration! Q 118.1 At an+ time )efore the grant or refusal of a patent, an applicant for a patent ma+, upon pa+ment of the prescri)ed fee, convert his application into an application for registration of a utilit+ model, 7hich shall )e accorded the filing date of the initial application. An application ma+ )e converted onl+ once. 118.2 At an+ time )efore the grant or refusal of a utilit+ model registration, an applicant for a utilit+ model registration ma+, upon pa+ment of the prescri)ed fee, convert his application into a patent application, 7hich shall

)e accorded the filing date of the initial application. 3Aec. %$, ;.A. o. 1N%a4 A?C. 111. #rohi ition against *iling of #arallel Applications! Q An applicant ma+ not file t7o 324 applications for the same su)Cect, one for utilit+ model registration and the other for the grant of a patent 7hether simultaneousl+ or consecutivel+. 3Aec. %9, ;.A. o. 1N%a4
&N

Aee 8apisananngmgaManggagawasa Dovernment ,ervice Insurance ,ystem B8MDC v! )ommission on Audit, D!R! $o! .E(>F&, /1 August 288&, &/# AC;A /#1, citing #hilippine 2as"et all Association v! )ourt of Appeals, //# AC;A /%$ 328884K $ational #ower )orporation v! Angas, (.;. os. N822%"2N, $ 6a+ 1992, 28$ AC;A %&2K )e u Institute of 7echnology v! Ople, (.;. o. :"%$$#8, 1$ Decem)er 19$#, 1%N AC;A N29K Ollada v! )ourt of 7ax Appeals, 99 Phil. N8& 319%N4K Murphy, Morris ; )o! v! )ollector of )ustoms, 11 Phil. &%N 3198$4.
&# &$ &9 %8 %1 %2

(.;. (.;. (.;. ,upra!

o. 18$9&N, 2$ Januar+ 1999, /82 AC;A 22%. o. 1&$222, 1% August 288/, &89 AC;A 2/1. o. 11%#%$, 19 6arch 2882, /#9 AC;A &18.

#& A.Ct. &N8K /&# =.A. 281.

Dreat $orthern Ry! )o! v! +nited ,tates, /1% =.A. 2N2, 2#%, N2 A.Ct. %29, %/&, $N :.?d. $/N.

0000000000000000000000000000000000000000000000000000000000000000000 00000000000 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 499 .S. *40 719919 F%IST P "$ICATIONS, INC. :. R RA$ T%$%PHON% S%R2IC% CO., INC. o. $9"1989. Su3r.;. Cour- o8 -6. n4-.! S-a-./. Argued Januar+ 9, 1991. Decided 6arch 2#, 1991. C?;T29;A;2 T9 T@? = 2T?D ATAT?A C9=;T 9- APP?A:A -9; T@? T? T@ C2;C=2T /&1T/&1 8yler8no e argued the cause and filed )riefs for petitioner. 9; delivered the opinion of the Court. 3ames M! )aplinger, 3r!, argued the cause and filed a )rief for respondent.GTH /&2T/&2 J=AT2C? 90C9 This case re.uires us to clarif+ the eEtent of cop+right protection availa)le to telephone director+ 7hite pages.

I ;ural Telephone Aervice Compan+, 2nc., is a certified pu)lic utilit+ that provides telephone service to several communities in north7est Lansas. 2t is su)Cect to a state regulation that re.uires all telephone companies operating in Lansas to issue annuall+ an updated telephone director+. Accordingl+, as a condition of its monopol+ franchise, ;ural pu)lishes a t+pical telephone director+, consisting of 7hite pages and +ello7 pages. The 7hite pages list in alpha)etical order the names of ;ural0s su)scri)ers, together 7ith their to7ns and telephone num)ers. The +ello7 pages list ;ural0s )usiness su)scri)ers alpha)eticall+ )+ categor+ and feature classified advertisements of various si,es. ;ural distri)utes its director+ free of charge to its su)scri)ers, )ut earns revenue )+ selling +ello7 pages advertisements. -eist Pu)lications, 2nc., is a pu)lishing compan+ that speciali,es in area"7ide telephone directories. =nlike a t+pical /&/T/&/ director+, 7hich covers onl+ a particular calling area, -eist0s area"7ide directories cover a much larger geographical range, reducing the need to call director+ assistance or consult multiple directories. The -eist director+ that is the su)Cect of this litigation covers 11 different telephone service areas in 1% counties and contains &N,$#$ 7hite pages listingsDcompared to ;ural0s approEimatel+ #,#88 listings. :ike ;ural0s director+, -eist0s is distri)uted free of charge and includes )oth 7hite pages and +ello7 pages. -eist and ;ural compete vigorousl+ for +ello7 pages advertising. As the sole provider of telephone service in its service area, ;ural o)tains su)scri)er information .uite easil+. Persons desiring telephone service must appl+ to ;ural and provide their names and addressesK ;ural then assigns them a telephone num)er. -eist is not a telephone compan+, let alone one 7ith monopol+ status, and therefore lacks independent access to an+ su)scri)er information. To o)tain 7hite pages listings for its area"7ide director+, -eist approached each of the 11 telephone companies operating in north7est Lansas and offered to pa+ for the right to use its 7hite pages listings. 9f the 11 telephone companies, onl+ ;ural refused to license its listings to -eist. ;ural0s refusal created a pro)lem for -eist, as omitting these listings 7ould have left a gaping hole in its area"7ide director+, rendering it less attractive to potential +ello7 pages advertisers. 2n a decision su)se.uent to that 7hich 7e revie7 here, the District Court determined that this 7as precisel+ the reason ;ural refused to license its listings. The refusal 7as motivated )+ an unla7ful purpose 'to eEtend its monopol+ in telephone service to a monopol+ in +ello7 pages advertising.' Rural 7elephone ,ervice )o! v. *eist #u lications, Inc!, #/# -. Aupp. N18, N22 3Lan. 19984. =na)le to license ;ural0s 7hite pages listings, -eist used them 7ithout ;ural0s consent. -eist )egan )+ removing several thousand listings that fell outside the geographic range of its area"7ide director+, then hired personnel to investigate the &,9/% that remained. These emplo+ees verified /&&T/&& the data reported )+ ;ural and sought to o)tain additional information. As a result, a t+pical -eist listing includes the individual0s street addressK most of ;ural0s listings do not. ot7ithstanding these additions, ho7ever, 1,/89 of the &N,$#$ listings in -eist0s 19$/ director+ 7ere identical to listings in ;ural0s 19$2" 19$/ 7hite pages. App. %& 3U 1%"1N4, %#. -our of these 7ere fictitious listings that ;ural had inserted into its director+ to detect cop+ing. ;ural sued for cop+right infringement in the District Court for the District of Lansas taking the position that -eist, in compiling its o7n director+, could not use the information contained in ;ural0s 7hite pages. ;ural asserted that -eist0s emplo+ees 7ere o)liged to travel door"to"door or conduct a telephone surve+ to discover the same information for

themselves. -eist responded that such efforts 7ere economicall+ impractical and, in an+ event, unnecessar+ )ecause the information copied 7as )e+ond the scope of cop+right protection. The District Court granted summar+ Cudgment to ;ural, eEplaining that 'GcHourts have consistentl+ held that telephone directories are cop+righta)le' and citing a string of lo7er court decisions. NN/ -. Aupp. 21&, 21$ 319$#4. 2n an unpu)lished opinion, the Court of Appeals for the Tenth Circuit affirmed 'for su)stantiall+ the reasons given )+ the district court.' App. to Pet. for Cert. &a, Cudgt. order reported at 91N -. 2d #1$ 319984. >e granted certiorari, &9$ =. A. $8$ 319984, to determine 7hether the cop+right in ;ural0s director+ protects the names, to7ns, and telephone num)ers copied )+ -eist. II A This case concerns the interaction of t7o 7ell"esta)lished propositions. The first is that facts are not cop+righta)leK the other, that compilations of facts generall+ are. ?ach of these propositions possesses an impecca)le pedigree. That there can )e no valid cop+right in facts is universall+ understood. The most fundamental aEiom of cop+right la7 is that /&%T/&% 'GnHo author ma+ cop+right his ideas or the facts he narrates.' Garper ; Row, #u lishers, Inc! v.$ation 6nterprises, &#1 =. A. %/9, %%N 319$%4. ;ural 7isel+ concedes this point, noting in its )rief that 'GfHacts and discoveries, of course, are not themselves su)Cect to cop+right protection.' 1rief for ;espondent 2&. At the same time, ho7ever, it is )e+ond dispute that compilations of facts are 7ithin the su)Cect matter of cop+right. Compilations 7ere eEpressl+ mentioned in the Cop+right Act of 1989, and again in the Cop+right Act of 19#N. There is an undenia)le tension )et7een these t7o propositions. 6an+ compilations consist of nothing )ut ra7 dataD i! e!, 7holl+ factual information not accompanied )+ an+ original 7ritten eEpression. 9n 7hat )asis ma+ one claim a cop+right in such a 7orkM Common sense tells us that 188 uncop+righta)le facts do not magicall+ change their status 7hen gathered together in one place. Jet cop+right la7 seems to contemplate that compilations that consist eEclusivel+ of facts are potentiall+ 7ithin its scope. The ke+ to resolving the tension lies in understanding 7h+ facts are not cop+righta)le. The sine Aua non of cop+right is originalit+. To .ualif+ for cop+right protection, a 7ork must )e original to the author. Aee Garper ; Row, supra, at %&#"%&9. 9riginal, as the term is used in cop+right, means onl+ that the 7ork 7as independentl+ created )+ the author 3as opposed to copied from other 7orks4, and that it possesses at least some minimal degree of creativit+. 1 6. immerO D. immer, Cop+right FF 2.81GAH, G1H 319984 3hereinafter immer4. To )e sure, the re.uisite level of creativit+ is eEtremel+ lo7K even a slight amount 7ill suffice. The vast maCorit+ of 7orks make the grade .uite easil+, as the+ possess some creative spark, 'no matter ho7 crude, hum)le or o)vious' it might )e. Id!, F 1.8$GCHG1H. 9riginalit+ does not signif+ novelt+K a 7ork ma+ )e original even though it closel+ resem)les other 7orks so long as the similarit+ is fortuitous, not the result of cop+ing. To illustrate, /&NT/&N assume that t7o poets, each ignorant of the other, compose identical poems. either 7ork is novel, +et )oth are original and, hence, cop+righta)le. Aee ,heldon v. Metro-Doldwyn #ictures )orp!, $1 -. 2d &9, %& 3CA2 19/N4. 9riginalit+ is a constitutional re.uirement. The source of Congress0 po7er to enact cop+right la7s is Article 2, F $, cl. $, of the Constitution, 7hich authori,es Congress to 'securGeH for limited Times to Authors . . . the eEclusive ;ight to their respective >ritings.' 2n t7o decisions from the late 19th centur+D7he 7rade-Mar" )ases, 188 =. A. $2

31$#94K and 2urrow-Diles 4ithographic )o! v. ,arony, 111 =. A. %/ 31$$&4Dthis Court defined the crucial terms 'authors' and '7ritings.' 2n so doing, the Court made it unmistaka)l+ clear that these terms presuppose a degree of originalit+. 2n 7he 7rade-Mar" )ases, the Court addressed the constitutional scope of '7ritings.' -or a particular 7ork to )e classified 'under the head of 7ritings of authors,' the Court determined, 'originalit+ is re.uired.' 188 =. A., at 9&. The Court eEplained that originalit+ re.uires independent creation plus a modicum of creativit+B 'G>Hhile the 7ord writings ma+ )e li)erall+ construed, as it has )een, to include original designs for engraving, prints, Oc., it is onl+ such as are original, and are founded in the creative po7ers of the mind. The 7ritings 7hich are to )e protected are the fruits of intellectual la or, em)odied in the form of )ooks, prints, engravings, and the like.' I id! 3emphasis in original4. 2n 2urrow-Diles, the Court distilled the same re.uirement from the Constitution0s use of the 7ord 'authors.' The Court defined 'author,' in a constitutional sense, to mean 'he to 7hom an+thing o7es its originK originatorK maker.' 111 =. A., at %$ 3internal .uotation marks omitted4. As in 7he 7rade-Mar" )ases, the Court emphasi,ed the creative component of originalit+. 2t descri)ed cop+right as )eing limited to 'original intellectual conceptions of the author,' 111 =. A., at %$, and stressed the importance of re.uiring an author 7ho accuses another of infringement to prove 'the eEistence /&#T/&# of those facts of originalit+, of intellectual production, of thought, and conception.' Id!, at %9"N8. The originalit+ re.uirement articulated in 7he 7rade-Mar" )ases and 2urrowDiles remains the touchstone of cop+right protection toda+. Aee Doldstein v. )alifornia, &12 =. A. %&N, %N1"%N2 319#/4. 2t is the ver+ 'premise of cop+right la7.' Miller v. +niversal )ity ,tudios, Inc!, N%8 -. 2d 1/N%, 1/N$ 3CA% 19$14. :eading scholars agree on this point. As one pair of commentators succinctl+ puts itB 'The originalit+ re.uirement is constitutionally mandated for all 7orks.' Patterson O Jo+ce, 6onopoli,ing the :a7B The Acope of Cop+right Protection for :a7 ;eports and Atatutor+ Compilations, /N =C:A :. ;ev. #19, #N/, n. 1%% 319$94 3emphasis in original4 3hereinafter Patterson O Jo+ce4. Accord, id!, at #%9"#N8, and n. 1&8K immer F 1.8NGAH 3'G9Hriginalit+ is a statutor+ as 7ell as a constitutional re.uirement'4K id!, F 1.8$GCHG1H 3'GAH modicum of intellectual la)or . . . clearl+ constitutes an essential constitutional element'4. 2t is this )edrock principle of cop+right that mandates the la70s seemingl+ disparate treatment of facts and factual compilations. ' o one ma+ claim originalit+ as to facts.' Id!, F 2.11GAH, p. 2"1%#. This is )ecause facts do not o7e their origin to an act of authorship. The distinction is one )et7een creation and discover+B The first person to find and report a particular fact has not created the factK he or she has merel+ discovered its eEistence. To )orro7 from 2urrow-Diles,one 7ho discovers a fact is not its 'maker' or 'originator.' 111 =. A., at %$. 'The discoverer merel+ finds and records.' immer F 2.8/G?H. Census takers, for eEample, do not 'create' the population figures that emerge from their effortsK in a sense, the+ cop+ these figures from the 7orld around them. Denicola, Cop+right in Collections of -actsB A Theor+ for the Protection of onfiction :iterar+ >orks, $1 Colum. :. ;ev. %1N, %2% 319$14 3hereinafter Denicola4. Census data therefore do not trigger cop+right )ecause these data are not 'original' in the constitutional sense. immer /&$T/&$ F 2.8/G?H. The same is true of all factsD scientific, historical, )iographical, and ne7s of the da+. 'GTHhe+ ma+ not )e cop+righted and are part of the pu)lic domain availa)le to ever+ person.' Miller, supra, at 1/N9. -actual compilations, on the other hand, ma+ possess the re.uisite originalit+. The compilation author t+picall+ chooses 7hich facts to include, in 7hat order to place them, and ho7 to arrange the collected data so that the+ ma+ )e used effectivel+ )+ readers.

These choices as to selection and arrangement, so long as the+ are made independentl+ )+ the compiler and entail a minimal degree of creativit+, are sufficientl+ original that Congress ma+ protect such compilations through the cop+right la7s. immer FF 2.11GDH, /.8/K Denicola %2/, n. /$. Thus, even a director+ that contains a)solutel+ no protecti)le 7ritten eEpression, onl+ facts, meets the constitutional minimum for cop+right protection if it features an original selection or arrangement. Aee Garper ; Row, &#1 =. A., at %&#. Accord, immer F /.8/. This protection is su)Cect to an important limitation. The mere fact that a 7ork is cop+righted does not mean that ever+ element of the 7ork ma+ )e protected. 9riginalit+ remains the sine Aua non of cop+rightK accordingl+, cop+right protection ma+ eEtend onl+ to those components of a 7ork that are original to the author. Patterson O Jo+ce $88" $82K (ins)urg, Creation and Commercial IalueB Cop+right Protection of >orks of 2nformation, 98 Colum. :. ;ev. 1$N%, 1$N$, and n. 12 319984 3hereinafter (ins)urg4. Thus, if the compilation author clothes facts 7ith an original collocation of 7ords, he or she ma+ )e a)le to claim a cop+right in this 7ritten eEpression. 9thers ma+ cop+ the underl+ing facts from the pu)lication, )ut not the precise 7ords used to present them. 2n Garper ; Row, for eEample, 7e eEplained that President -ord could not prevent others from cop+ing )are historical facts from his auto)iograph+, see &#1 =. A., at %%N" %%#, )ut that he could prevent others from cop+ing his 'su)Cective descriptions and portraits of pu)lic figures.' /&9T/&9 Id!, at %N/. >here the compilation author adds no 7ritten eEpression )ut rather lets the facts speak for themselves, the eEpressive element is more elusive. The onl+ conceiva)le eEpression is the manner in 7hich the compiler has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the 7ork are eligi)le for cop+right protection. Aee Patr+, Cop+right in Compilations of -acts 3or >h+ the '>hite Pages' Are ot Cop+righta)le4, 12 Com. O :a7 /#, N& 3Dec. 19984 3hereinafter Patr+4. o matter ho7 original the format, ho7ever, the facts themselves do not )ecome original through association. Aee Patterson O Jo+ce ##N. This inevita)l+ means that the cop+right in a factual compilation is thin. ot7ithstanding a valid cop+right, a su)se.uent compiler remains free to use the facts contained in another0s pu)lication to aid in preparing a competing 7ork, so long as the competing 7ork does not feature the same selection and arrangement. As one commentator eEplains itB 'G Ho matter ho7 much original authorship the 7ork displa+s, the facts and ideas it eEposes are free for the taking . . . . GTHhe ver+ same facts and ideas ma+ )e divorced from the conteEt imposed )+ the author, and restated or reshuffled )+ second comers, even if the author 7as the first to discover the facts or to propose the ideas.' (ins)urg 1$N$. 2t ma+ seem unfair that much of the fruit of the compiler0s la)or ma+ )e used )+ others 7ithout compensation. As Justice 1rennan has correctl+ o)served, ho7ever, this is not 'some unforeseen )+product of a statutor+ scheme.' Garper ; Row, &#1 =. A., at %$9 3dissenting opinion4. 2t is, rather, 'the essence of cop+right,' i id!, and a constitutional re.uirement. The primar+ o)Cective of cop+right is not to re7ard the la)or of authors, )ut 'GtHo promote the Progress of Acience and useful Arts.' Art. 2, F $, cl. $. Accord, 7wentieth )entury Music )orp!v. Ai"en, &22 =. A. 1%1, 1%N 319#%4. To this end, cop+right assures authors the right to their original /%8T/%8 eEpression, )ut encourages others to )uild freel+ upon the ideas and information conve+ed )+ a 7ork. Garper ; Row, supra, at %%N"%%#. This principle, kno7n as the idea5eEpression or fact5eEpression dichotom+, applies to all 7orks of authorship. As applied to a factual compilation, assuming the a)sence of original 7ritten eEpression, onl+ the compiler0s selection and arrangement ma+ )e protectedK the ra7 facts ma+ )e copied at 7ill. This result is neither

unfair nor unfortunate. 2t is the means )+ 7hich cop+right advances the progress of science and art. This Court has long recogni,ed that the fact5eEpression dichotom+ limits severel+ the scope of protection in fact")ased 7orks. 6ore than a centur+ ago, the Court o)servedB 'The ver+ o)Cect of pu)lishing a )ook on science or the useful arts is to communicate to the 7orld the useful kno7ledge 7hich it contains. 1ut this o)Cect 7ould )e frustrated if the kno7ledge could not )e used 7ithout incurring the guilt of pirac+ of the )ook.' 2a"er v. ,elden, 181 =. A. 99, 18/ 31$$84. >e reiterated this point in Garper ; RowH 'G Ho author ma+ cop+right facts or ideas. The cop+right is limited to those aspects of the 7orkDtermed VeEpression0Dthat displa+ the stamp of the author0s originalit+. 'GCHop+right does not prevent su)se.uent users from cop+ing from a prior author0s 7ork those constituent elements that are not originalDfor eEample . . . facts, or materials in the pu)lic domainDas long as such use does not unfairl+ appropriate the author0s original contri)utions.' &#1 =. A., at %&#"%&$ 3citation omitted4. This, then, resolves the doctrinal tensionB Cop+right treats facts and factual compilations in a 7holl+ consistent manner. -acts, 7hether alone or as part of a compilation, are not original and therefore ma+ not )e cop+righted. A factual compilation is eligi)le for cop+right if it features an original selection or arrangement of facts, )ut the cop+right is limited to /%1T/%1 the particular selection or arrangement. 2n no event ma+ cop+right eEtend to the facts themselves. " As 7e have eEplained, originalit+ is a constitutionall+ mandated prere.uisite for cop+right protection. The Court0s decisions announcing this rule predate the Cop+right Act of 1989, )ut am)iguous language in the 1989 Act caused some lo7er courts temporaril+ to lose sight of this re.uirement. The 1989 Act em)odied the originalit+ re.uirement, )ut not as clearl+ as it might have. Aee immer F 2.81. The su)Cect matter of cop+right 7as set out in FF / and & of the Act. Aection & stated that cop+right 7as availa)le to 'all the 7ritings of an author.' /% Atat. 18#N. 1+ using the 7ords '7ritings' and 'author'Dthe same 7ords used in Article 2, F $, of the Constitution and defined )+ the Court in 7he 7rade-Mar" )ases and 2urrow-Diles Dthe statute necessaril+ incorporated the originalit+ re.uirement articulated in the Court0s decisions. 2t did so implicitl+, ho7ever, there)+ leaving room for error. Aection / 7as similarl+ am)iguous. 2t stated that the cop+right in a 7ork protected onl+ 'the cop+righta)le component parts of the 7ork.' 2t thus stated an important cop+right principle, )ut failed to identif+ the specific characteristicDoriginalit+Dthat determined 7hich component parts of a 7ork 7ere cop+righta)le and 7hich 7ere not. 6ost courts construed the 1989 Act correctl+, not7ithstanding the less"than"perfect statutor+ language. The+ understood from this Court0s decisions that there could )e no cop+right 7ithout originalit+. Aee Patterson O Jo+ce #N8"#N1. As eEplained in the immer treatiseB 'The 1989 Act neither defined originalit+, nor even eEpressl+ re.uired that a 7ork )e Voriginal0 in order to command protection. @o7ever, the courts uniforml+ inferred the re.uirement from the fact that cop+right protection ma+ onl+ )e claimed )+ Vauthors0. . . . 2t 7as reasoned that since an author is Vthe . . . /%2T/%2 creator, originator0 it follo7s that a 7ork is not the product of an author unless the 7ork is original.' immer F 2.81 3footnotes omitted4 3citing cases4. 1ut some courts misunderstood the statute. Aee, e! g!, 4eon v. #acific 7elephone ;

7elegraph )o!, 91 -. 2d &$& 3CA9 19/#4K 3eweler's )ircular #u lishing )o! v. 8eystone #u lishing )o!,2$1 -. $/ 3CA2 19224. These courts ignored FF / and &, focusing their attention instead on F % of the Act. Aection %, ho7ever, 7as purel+ technical in natureB 2t provided that a person seeking to register a 7ork should indicate on the application the t+pe of 7ork, and it listed 1& categories under 7hich the 7ork might fall. 9ne of these categories 7as 'G)Hooks, including composite and c+clopWdic 7orks, directories, ga,etteers, and other compilations.' F %3a4. Aection % did not purport to sa+ that all compilations 7ere automaticall+ cop+righta)le. 2ndeed, it eEpressl+ disclaimed an+ such function, pointing out that 'the su)Cect"matter of cop+right GiHs defined in section four.' evertheless, the fact that factual compilations 7ere mentioned specificall+ in F % led some courts to infer erroneousl+ that directories and the like 7ere cop+righta)le per se,'7ithout an+ further or precise sho7ing of originalDpersonalDauthorship.' (ins)urg 1$9%. 6aking matters 7orse, these courts developed a ne7 theor+ to Custif+ the protection of factual compilations. Lno7n alternativel+ as 's7eat of the )ro7' or 'industrious collection,' the underl+ing notion 7as that cop+right 7as a re7ard for the hard 7ork that 7ent into compiling facts. The classic formulation of the doctrine appeared in 3eweler's )ircular #u lishing )o!, 2$1 -., at $$B 'The right to cop+right a )ook upon 7hich one has eEpended la)or in its preparation does not depend upon 7hether the materials 7hich he has collected consist or not of matters 7hich are pu)liciCuris, or 7hether such materials sho7 literar+ skill or originality, either in thought or in language, or an+thing more than industrious /%/T/%/ collection. The man 7ho goes through the streets of a to7n and puts do7n the names of each of the inha)itants, 7ith their occupations and their street num)er, ac.uires material of 7hich he is the author' 3emphasis added4. The 's7eat of the )ro7' doctrine had numerous fla7s, the most glaring )eing that it eEtended cop+right protection in a compilation )e+ond selection and arrangementDthe compiler0s original contri)utionsDto the facts themselves. =nder the doctrine, the onl+ defense to infringement 7as independent creation. A su)se.uent compiler 7as 'not entitled to take one 7ord of information previousl+ pu)lished,' )ut rather had to 'independentl+ 7orGkH out the matter for himself, so as to arrive at the same result from the same common sources of information.' Id!,at $$"$9 3internal .uotation marks omitted4. 'A7eat of the )ro7' courts there)+ esche7ed the most fundamental aEiom of cop+right la7Dthat no one ma+ cop+right facts or ideas. Aee Millerv. +niversal )ity ,tudios, Inc!, N%8 -. 2d, at 1/#2 3critici,ing 's7eat of the )ro7' courts )ecause 'ensurGingH that later 7riters o)tain the facts independentl+ . . . is precisel+ the scope of protection given . . . cop+righted matter, and the la7 is clear that facts are not entitled to such protection'4. Decisions of this Court appl+ing the 1989 Act make clear that the statute did not permit the 's7eat of the )ro7' approach. The )est eEample is International $ews ,ervice v! Associated #ress, 2&$ =. A. 21% 3191$4. 2n that decision, the Court stated unam)iguousl+ that the 1989 Act conferred cop+right protection onl+ on those elements of a 7ork that 7ere original to the author. 2nternational e7s Aervice had conceded taking ne7s reported )+ Associated Press and pu)lishing it in its o7n ne7spapers. ;ecogni,ing that F % of the Act specificall+ mentioned 'Vperiodicals, including ne7spapers,0' F %3)4, the Court ackno7ledged that ne7s articles 7ere cop+righta)le. Id!, at 2/&. 2t flatl+ reCected, ho7ever, the notion that the cop+right in an article eEtended to /%&T/%& the factual information it containedB 'GTHhe ne7s elementD the information respecting current events contained in the literar+ productionDis not the

creation of the 7riter, )ut is a report of matters that ordinaril+ are pu lici-urisI it is the histor+ of the da+.' I id!GTH >ithout a dou)t, the 's7eat of the )ro7' doctrine flouted )asic cop+right principles. Throughout histor+, cop+right la7 has 'recogni,eGdH a greater need to disseminate factual 7orks than 7orks of fiction or fantas+.' Garper ; Row, &#1 =. A., at %N/. Accord, (orman, -act or -anc+B The 2mplications for Cop+right, 29 J. Cop+right Aoc. %N8, %N/ 319$24. 1ut 's7eat of the )ro7' courts took a contrar+ vie7K the+ handed out proprietar+ interests in facts and declared that authors are a)solutel+ precluded from saving time and effort )+ rel+ing upon the facts contained in prior 7orks. 2n truth, 'GiHt is Cust such 7asted effort that the proscription against the cop+right of ideas and facts . . . GisH designed to prevent.' Rosemont 6nterprises, Inc! v. Random Gouse, Inc!, /NN -. 2d /8/, /18 3CA2 19NN4, cert. denied, /$% =. A. 1889 319N#4. 'Protection for the fruits of such research . . . ma+ in certain circumstances )e availa)le under a theor+ of unfair competition. 1ut to accord cop+right protection on this )asis alone distorts )asic cop+right principles in that it creates a monopol+ in pu)lic domain materials 7ithout the necessar+ Custification of protecting and encouraging the creation of V7ritings0 )+ Vauthors.0' immer F /.8&, p. /"2/ 3footnote omitted4. C 'A7eat of the )ro7' decisions did not escape the attention of the Cop+right 9ffice. >hen Congress decided to over"haul the cop+right statute and asked the Cop+right 9ffice to stud+ eEisting pro)lems, see Mills Music, Inc! v. ,nyder, &N9 =. A. 1%/, 1%9 319$%4, the Cop+right 9ffice promptl+ recommended /%%T/%% that Congress clear up the confusion in the lo7er courts as to the )asic standards of cop+righta)ilit+. The ;egister of Cop+rights eEplained in his first report to Congress that 'originalit+' 7as a ')asic re.uisitGeH' of cop+right under the 1989 Act, )ut that 'the a)sence of an+ reference to Goriginalit+H in the statute seems to have led to misconceptions as to 7hat is cop+righta)le matter.' ;eport of the ;egister of Cop+rights on the (eneral ;evision of the =. A. Cop+right :a7, $#th Cong., 1st Aess., p. 9 3@. Judiciar+ Comm. Print 19N14. The ;egister suggested making the originalit+ re.uirement eEplicit. I id! Congress took the ;egister0s advice. 2n enacting the Cop+right Act of 19#N, Congress dropped the reference to 'all the 7ritings of an author' and replaced it 7ith the phrase 'original 7orks of authorship.' 1# =. A. C. F 1823a4. 2n making eEplicit the originalit+ re.uirement, Congress announced that it 7as merel+ clarif+ing eEisting la7B 'The t7o fundamental criteria of cop+right protection GareH originalit+ and fiEation in tangi)le form . . . . The phrase Voriginal 7orks of authorship,0 7hich is purposel+ left undefined, is intended to incorporate 7ithout change the standard of originality esta lished y the courts under the present J.&(&K copyright statute!L @. ;. ;ep. o. 9&"1&#N, p. %1 319#N4 3emphasis added4 3hereinafter @. ;. ;ep.4K A. ;ep. o. 9&"&#/, p. %8 319#%4 3emphasis added4 3hereinafter A. ;ep.4. This sentiment 7as echoed )+ the Cop+right 9fficeB '9ur intention here is to maintain the esta lished standards of originalit+. . . .' Aupplementar+ ;eport of the ;egister of Cop+rights on the (eneral ;evision of =. A. Cop+right :a7, $9th Cong., 1st Aess., pt. N, p. / 3@. Judiciar+ Comm. Print 19N%4 3emphasis added4. To ensure that the mistakes of the 's7eat of the )ro7' courts 7ould not )e repeated, Congress took additional measures. -or eEample, F / of the 1989 Act had stated that cop+right protected onl+ the 'cop+righta)le component parts' of a 7ork, )ut had not identified originalit+ as the )asis for distinguishing /%NT/%N those component parts that 7ere cop+righta)le from those that 7ere not. The 19#N Act deleted this section and replaced it 7ith F 1823)4, 7hich identifies specificall+ those elements of a 7ork for 7hich cop+right is not availa)leB '2n no case does cop+right protection for an original 7ork of

authorship eEtend to an+ idea, procedure, process, s+stem, method of operation, concept, principle, or discover+, regardless of the form in 7hich it is descri)ed, eEplained, illustrated, or em)odied in such 7ork.' Aection 1823)4 is universall+ understood to prohi)it an+ cop+right in facts. Garper ; Row, supra, at %&#, %%N. Accord, immer F 2.8/G?H 3e.uating facts 7ith 'discoveries'4. As 7ith F 1823a4, Congress emphasi,ed that F 1823)4 did not change the la7, )ut merel+ clarified itB 'Aection 1823)4 in no 7a+ enlarges or contracts the scope of cop+right protection under the present la7. 2ts purpose is to restate . . . that the )asic dichotom+ )et7een eEpression and idea remains unchanged.' @. ;. ;ep., at %#K A. ;ep., at %&. Congress took another step to minimi,e confusion )+ deleting the specific mention of 'directories . . . and other compilations' in F % of the 1989 Act. As mentioned, this section had led some courts to conclude that directories 7ere cop+righta)le per se and that ever+ element of a director+ 7as protected. 2n its place, Congress enacted t7o ne7 provisions. -irst, to make clear that compilations 7ere not cop+righta)le per se, Congress provided a definition of the term 'compilation.' Aecond, to make clear that the cop+right in a compilation did not eEtend to the facts themselves, Congress enacted F 18/. The definition of 'compilation' is found in F 181 of the 19#N Act. 2t defines a 'compilation' in the cop+right sense as 'a 7ork formed )+ the collection and assem)ling of preeEisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting 7ork as a 7hole constitutes an original 7ork of authorship' 3emphasis added4. /%#T/%# The purpose of the statutor+ definition is to emphasi,e that collections of facts are not cop+righta)le per se! 2t conve+s this message through its tripartite structure, as emphasi,ed a)ove )+ the italics. The statute identifies three distinct elements and re.uires each to )e met for a 7ork to .ualif+ as a cop+righta)le compilationB 314 the collection and assem)l+ of pre"eEisting material, facts, or dataK 324 the selection, coordination, or arrangement of those materialsK and 3/4 the creation, )+ virtue of the particular selection, coordination, or arrangement, of an 'original' 7ork of authorship. 'GTHhis tripartite conCunctive structure is self"evident, and should )e assumed to Vaccuratel+ eEpress the legislative purpose.0' Patr+ %1, .uoting Mills Music, &N9 =. A., at 1N&. At first glance, the first re.uirement does not seem to tell us much. 2t merel+ descri)es 7hat one normall+ thinks of as a compilationDa collection of pre"eEisting material, facts, or data. >hat makes it significant is that it is not the sole re.uirement. 2t is not enough for cop+right purposes that an author collects and assem)les facts. To satisf+ the statutor+ definition, the 7ork must get over t7o additional hurdles. 2n this 7a+, the plain language indicates that not ever+ collection of facts receives cop+right protection. 9ther7ise, there 7ould )e a period after 'data.' The third re.uirement is also illuminating. 2t emphasi,es that a compilation, like an+ other 7ork, is cop+righta)le onl+ if it satisfies the originalit+ re.uirement 3'an original 7ork of authorship'4. Although F 182 states plainl+ that the originalit+ re.uirement applies to all 7orks, the point 7as emphasi,ed 7ith regard to compilations to ensure that courts 7ould not repeat the mistake of the 's7eat of the )ro7' courts )+ concluding that fact")ased 7orks are treated differentl+ and measured )+ some other standard. As Congress eEplained it, the goal 7as to 'make plain that the criteria of cop+righta)le su)Cect matter stated in section 182 appl+ 7ith full force to 7orks . . . containing preeEisting material.' @. ;. ;ep., at %#K A. ;ep., at %%. /%$T/%$ The ke+ to the statutor+ definition is the second re.uirement. 2t instructs courts

that, in determining 7hether a fact")ased 7ork is an original 7ork of authorship, the+ should focus on the manner in 7hich the collected facts have )een selected, coordinated, and arranged. This is a straightfor7ard application of the originalit+ re.uirement. -acts are never original, so the compilation author can claim originalit+, if at all, onl+ in the 7a+ the facts are presented. To that end, the statute dictates that the principal focus should )e on 7hether the selection, coordination, and arrangement are sufficientl+ original to merit protection. ot ever+ selection, coordination, or arrangement 7ill pass muster. This is plain from the statute. 2t states that, to merit protection, the facts must )e selected, coordinated, or arranged 'in such a 7a+' as to render the 7ork as a 7hole original. This implies that some '7a+s' 7ill trigger cop+right, )ut that others 7ill not. Aee Patr+ %#, and n. #N. 9ther7ise, the phrase 'in such a 7a+' is meaningless and Congress should have defined 'compilation' simpl+ as 'a 7ork formed )+ the collection and assem)l+ of preeEisting materials or data that are selected, coordinated, or arranged.' That Congress did not do so is dispositive. 2n accordance 7ith 'the esta)lished principle that a court should give effect, if possi)le, to ever+ clause and 7ord of a statute,' Mos"al v. +nited ,tates, &9$ =. A. 18/, 189"118 319984 3internal .uotation marks omitted4, 7e conclude that the statute envisions that there 7ill )e some fact")ased 7orks in 7hich the selection, coordination, and arrangement are not sufficientl+ original to trigger cop+right protection. As discussed earlier, ho7ever, the originalit+ re.uirement is not particularl+ stringent. A compiler ma+ settle upon a selection or arrangement that others have usedK novelt+ is not re.uired. 9riginalit+ re.uires onl+ that the author make the selection or arrangement independentl+ 3i! e!, 7ithout cop+ing that selection or arrangement from another 7ork4, and that it displa+ some minimal level of creativit+. Presuma)l+, /%9T/%9 the vast maCorit+ of compilations 7ill pass this test, )ut not all 7ill. There remains a narro7 categor+ of 7orks in 7hich the creative spark is utterl+ lacking or so trivial as to )e virtuall+ noneEistent. Aee generall+2leistein v. Donaldson 4ithographing )o!, 1$$ =. A. 2/9, 2%1 3198/4 3referring to 'the narro7est and most o)vious limits'4. Auch 7orks are incapa)le of sustaining a valid cop+right. immer F 2.81G1H. ?ven if a 7ork .ualifies as a cop+righta)le compilation, it receives onl+ limited protection. This is the point of F 18/ of the Act. Aection 18/ eEplains that 'GtHhe su)Cect matter of cop+right . . . includes compilations,' F 18/3a4, )ut that cop+right protects onl+ the author0s original contri)utionsDnot the facts or information conve+edB 'The cop+right in a compilation . . . eEtends onl+ to the material contri)uted )+ the author of such 7ork, as distinguished from the preeEisting material emplo+ed in the 7ork, and does not impl+ an+ eEclusive right in the preeEisting material.' F 18/3)4. As F 18/ makes clear, cop+right is not a tool )+ 7hich a compilation author ma+ keep others from using the facts or data he or she has collected. 'The most important point here is one that is commonl+ misunderstood toda+B cop+right. . . has no effect one 7a+ or the other on the cop+right or pu)lic domain status of the preeEisting material.' @. ;. ;ep., at %#K A. ;ep., at %%. The 1989 Act did not re.uire, as 's7eat of the )ro7' courts mistakenl+ assumed, that each su)se.uent compiler must start from scratch and is precluded from rel+ing on research undertaken )+ another. Aee, e! g!, 3eweler's )ircular #u lishing )o!, 2$1 -., at $$"$9. ;ather, the facts contained in eEisting 7orks ma+ )e freel+ copied )ecause cop+right protects onl+ the elements that o7e their origin to the compilerDthe selection, coordination, and arrangement of facts. 2n summar+, the 19#N revisions to the Cop+right Act leave no dou)t that originalit+, not 's7eat of the )ro7,' is the /N8T/N8 touchstone of cop+right protection in directories and

other fact")ased 7orks. or is there an+ dou)t that the same 7as true under the 1989 Act. The 19#N revisions 7ere a direct response to the Cop+right 9ffice0s concern that man+ lo7er courts had misconstrued this )asic principle, and Congress emphasi,ed repeatedl+ that the purpose of the revisions 7as to clarif+, not change, eEisting la7. The revisions eEplain 7ith painstaking clarit+ that cop+right re.uires originalit+, F 1823a4K that facts are never original, F 1823)4K that the cop+right in a compilation does not eEtend to the facts it contains, F 18/3)4K and that a compilation is cop+righta)le onl+ to the eEtent that it features an original selection, coordination, or arrangement, F 181. The 19#N revisions have proven largel+ successful in steering courts in the right direction. A good eEample is Miller v. +niversal )ity ,tudios, Inc!, N%8 -. 2d, at 1/N9" 1/#8B 'A cop+right in a director+ . . . is properl+ vie7ed as resting on the originalit+ of the selection and arrangement of the factual material, rather than on the industriousness of the efforts to develop the information. Cop+right protection does not eEtend to the facts themselves, and the mere use of information contained in a director+ 7ithout a su)stantial cop+ing of the format does not constitute infringement' 3citation omitted4. Additionall+, the Aecond Circuit, 7hich almost #8 +ears ago issued the classic formulation of the 's7eat of the )ro7' doctrine in 3eweler's )ircular #u lishing )o!, has no7 full+ repudiated the reasoning of that decision. Aee, e! g!,*inancial Information, Inc! v. Moody's Investors ,ervice, Inc!, $8$ -. 2d 28&, 28# 3CA2 19$N4,cert. denied, &$& =. A. $28 319$#4K *inancial Information, Inc! v. Moody's Investors ,ervice, Inc!, #%1 -. 2d %81, %18 3CA2 19$&4 3 e7man, J., concurring4K Goehling v. +niversal )ity ,tudios, Inc!, N1$ -. 2d 9#2, 9#9 3CA2 19$84. ?ven those scholars 7ho )elieve that 'industrious collection' should )e re7arded seem to recogni,e that this is )e+ond the scope of eEisting cop+right la7. Aee Denicola %1N 3'GTHhe ver+ voca)ular+ of cop+right is ill /N1T/N1 suited to anal+,ing propert+ rights in 7orks of nonfiction'4K id!, at %28"%21, %2%K (ins)urg 1$N#, 1$#8. III There is no dou)t that -eist took from the 7hite pages of ;ural0s director+ a su)stantial amount of factual information. At a minimum, -eist copied the names, to7ns, and telephone num)ers of 1,/89 of ;ural0s su)scri)ers. ot all cop+ing, ho7ever, is cop+right infringement. To esta)lish infringement, t7o elements must )e provenB 314 o7nership of a valid cop+right, and 324 cop+ing of constituent elements of the 7ork that are original. Aee Garper ; Row, &#1 =. A., at %&$. The first element is not at issue hereK -eist appears to concede that ;ural0s director+, considered as a 7hole, is su)Cect to a valid cop+right )ecause it contains some fore7ord teEt, as 7ell as original material in its +ello7 pages advertisements. Aee 1rief for Petitioner 1$K Pet. for Cert. 9. The .uestion is 7hether ;ural has proved the second element. 2n other 7ords, did -eist, )+ taking 1,/89 names, to7ns, and telephone num)ers from ;ural0s 7hite pages, cop+ an+thing that 7as 'original' to ;uralM Certainl+, the ra7 data does not satisf+ the originalit+ re.uirement. ;ural ma+ have )een the first to discover and report the names, to7ns, and telephone num)ers of its su)scri)ers, )ut this data does not 'o7GeH its origin0' to ;ural. 2urrow-Diles, 111 =. A., at %$. ;ather, these )its of information are uncop+righta)le factsK the+ eEisted )efore ;ural reported them and 7ould have continued to eEist if ;ural had never pu)lished a telephone director+. The originalit+ re.uirement 'ruleGsH out protecting . . . names, addresses, and telephone num)ers of 7hich the plaintiff )+ no stretch of the imagination could )e called the author.' Patterson O Jo+ce ##N. ;ural essentiall+ concedes the point )+ referring to the names, to7ns, and telephone num)ers as 'preeEisting material.' 1rief for ;espondent 1#. Aection 18/3)4 states

eEplicitl+ /N2T/N2 that the cop+right in a compilation does not eEtend to 'the preeEisting material emplo+ed in the 7ork.' The .uestion that remains is 7hether ;ural selected, coordinated, or arranged these uncop+righta)le facts in an original 7a+. As mentioned, originalit+ is not a stringent standardK it does not re.uire that facts )e presented in an innovative or surprising 7a+. 2t is e.uall+ true, ho7ever, that the selection and arrangement of facts cannot )e so mechanical or routine as to re.uire no creativit+ 7hatsoever. The standard of originalit+ is lo7, )ut it does eEist. Aee Patterson O Jo+ce #N8, n. 1&& 3'>hile this re.uirement is sometimes characteri,ed as modest, or a lo7 threshold, it is not 7ithout effect'4 3internal .uotation marks omittedK citations omitted4. As this Court has eEplained, the Constitution mandates some minimal degree of creativit+, see 7he 7rade-Mar" )ases, 188 =. A., at 9&K and an author 7ho claims infringement must prove 'the eEistence of . . . intellectual production, of thought, and conception.' 2urrow-Diles, supra, at %9"N8. The selection, coordination, and arrangement of ;ural0s 7hite pages do not satisf+ the minimum constitutional standards for cop+right protection. As mentioned at the outset, ;ural0s 7hite pages are entirel+ t+pical. Persons desiring0 telephone service in ;ural0s service area fill out an application and ;ural issues them a telephone num)er. 2n preparing its 7hite pages, ;ural simpl+ takes the data provided )+ its su)scri)ers and lists it alpha)eticall+ )+ surname. The end product is a garden"variet+ 7hite pages director+, devoid of even the slightest trace of creativit+. ;ural0s selection of listings could not )e more o)viousB 2t pu)lishes the most )asic informationDname, to7n, and telephone num)erDa)out each person 7ho applies to it for telephone service. This is 'selection' of a sort, )ut it lacks the modicum of creativit+ necessar+ to transform mere selection into cop+righta)le eEpression. ;ural eEpended sufficient effort /N/T/N/ to make the 7hite pages director+ useful, )ut insufficient creativit+ to make it original. >e note in passing that the selection featured in ;ural0s 7hite pages ma+ also fail the originalit+ re.uirement for another reason. -eist points out that ;ural did not trul+ 'select' to pu)lish the names and telephone num)ers of its su)scri)ersK rather, it 7as re.uired to do so )+ the Lansas Corporation Commission as part of its monopol+ franchise. Aee #/# -. Aupp., at N12. Accordingl+, one could plausi)l+ conclude that this selection 7as dictated )+ state la7, not )+ ;ural. or can ;ural claim originalit+ in its coordination and arrangement of facts. The 7hite pages do nothing more than list ;ural0s su)scri)ers in alpha)etical order. This arrangement ma+, technicall+ speaking, o7e its origin to ;uralK no one disputes that ;ural undertook the task of alpha)eti,ing the names itself. 1ut there is nothing remotel+ creative a)out arranging names alpha)eticall+ in a 7hite pages director+. 2t is an age"old practice, firml+ rooted in tradition and so commonplace that it has come to )e eEpected as a matter of course. Aee 1rief for 2nformation 2ndustr+ Association et al. as Amici )uriae 18 3alpha)etical arrangement 'is universall+ o)served in directories pu)lished )+ local eEchange telephone companies'4. 2t is not onl+ unoriginal, it is practicall+ inevita)le. This time"honored tradition does not possess the minimal creative spark re.uired )+ the Cop+right Act and the Constitution. >e conclude that the names, to7ns, and telephone num)ers copied )+ -eist 7ere not original to ;ural and therefore 7ere not protected )+ the cop+right in ;ural0s com)ined 7hite and +ello7 pages director+. As a constitutional matter, cop+right protects onl+ those constituent elements of a 7ork that possess more than a de minimis .uantum of creativit+. ;ural0s 7hite pages, limited to )asic su)scri)er information and arranged

alpha)eticall+, fall short of the mark. As a statutor+ matter, 1# =. A. C. F 181 does not afford protection /N&T/N& from cop+ing to a collection of facts that are selected, coordinated, and arranged in a 7a+ that utterl+ lacks originalit+. (iven that some 7orks must fail, 7e cannot imagine a more likel+ candidate. 2ndeed, 7ere 7e to hold that ;ural0s 7hite pages pass muster, it is hard to )elieve that an+ collection of facts could fail. 1ecause ;ural0s 7hite pages lack the re.uisite originalit+, -eist0s use of the listings cannot constitute infringement. This decision should not )e construed as demeaning ;ural0s efforts in compiling its director+, )ut rather as making clear that cop+right re7ards originalit+, not effort. As this Court noted more than a centur+ ago, 'Vgreat praise ma+ )e due to the plaintiffs for their industr+ and enterprise in pu)lishing this paper, +et the la7 does not contemplate their )eing re7arded in this 7a+.0' 2a"er v. ,elden, 181 =. A., at 18%. The Cudgment of the Court of Appeals is Reversed! J=AT2C? 1:ACL6= concurs in the Cudgment. GTH 1riefs of amici curiae urging reversal 7ere filed for the Association of orth American Director+ Pu)lishers et al. )+ 7heodore )ase 5hitehouseI for the 2nternational Association of Cross ;eference Director+ Pu)lishers )+Richard D! Drauer and 8athleen Mc)ree 4ewisI and for the Third"Class 6ail Association )+ Ian D! <olner! 1riefs of amici curiae urging affirmance 7ere filed for Ameritech et al. )+ Michael 8! 8ellogg, )harles Rothfeld, Douglas 3! 8ir", 7homas #! Gester, and Garlan ,herwatI for the Association of American Pu)lishers, 2nc., )+Ro ert D! ,ugarman and R! 2ruce RichI for (T? Corp. )+ 8ir" 8! <an 7ine, Richard M! )ahill, and 6dward R! ,u lettI for the ational Telephone Cooperative Association )+ 4! Marie Duillory and David )ossonI for the =nited Atates Telephone Association )+ Richard 3! Rappaport and 8eith #! ,choene ergerI and for >est Pu)lishing Co. )+ <ance 8! Opperman and 3ames 6! ,chat=! 1riefs of amici curiae 7ere filed for 1ellsouth Corp. )+ Anthony 2! As"ew, Ro ert 6! Richards, 5alter G! Alford,and <incent 4! ,grossoI for the Direct 6arketing Association, 2nc., )+ Ro ert 4! ,hermanI for @aines and Co., 2nc., )+ 3eremiah D! McAuliffe, 2ernard A! 2ar"en, and 6ugene DressmanI and for the 2nformation 2ndustr+ Association et al. )+ ,teven 3! Metalit= and Angela 2urnett! GTH The Court ultimatel+ rendered Cudgment for Associated Press on non"cop+right grounds that are not relevant here. Aee 2&$ =. A., at 2/%, 2&1"2&2.

0000000000000000000000000000000000000000000000000000000000000000000 00000000000 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 FONO2ISA, INC., P1a4n-488<A33.11an-, :. CH%RRY A CTION, INC.= R456ar! P41.>ar!, (.#. )4-56.11, )ar>ar.- )4-56.11, #.8.n!an-/<A33.11../.

o. 9&"1%#1#. n4-.! S-a-./ Cour- o8 A33.a1/, N4n-6 C4r5u4-. Argued and Au)mitted ovem)er 1/, 199%. Decided Januar+ 2%, 199N. 2N8T2N8 Craig ?. :ind)erg, J. Craig >illiams, Callahan, 1laine O >illiams, 2rvine, California, for Plaintiff"Appellant. Atephen ;. Corn7ell and 1ruce >illiam Lelle+, 6cCormick, 1arsto7, Aheppard, >a+teOCarruth, -resno, California, for Defendants"Appellees. Anthon+ 6. Leats, :arr+ >. 6c-arland, ;e)ecca 2. :o)l, 1aker O @ostetler, :os Angeles, California, for the 2nternational Anticounterfeiting Coalition, 2nc. as amicus curiae in support of plaintiff"appellant. ;ussell J. -rackman, argued, and ;o)ert C. >elsh, 6itchell, Ail)er)erg OLnupp, :os Angeles, CaliforniaK Jose *orrilla Jr., *orrilla :a7 Corporation, 2rvine, CaliforniaK David A. (auntlett and :eo ?. :und)erg, Jr., (auntlettO Associates, 2rvine, CaliforniaK Craig ?. :ind)erg, formerl+ of Callahan O(auntlett, 2rvine, California, for Plaintiff"Appellant -onovisa, 2nc. ;o)ert C. >elsh and ;ussell J. -rackman, 6itchell, Ail)er)erg OLnupp, :os Angeles, California, for the ;ecording 2ndustr+ Association of America, 2nc., as amicus curiae in support of Plaintiff"Appellant. 1eforeB AC@;9?D?; and A:A;C9 , Circuit Judges, and PA Judge. AC@;9?D?;, Circuit JudgeB This is a cop+right and trademark enforcement action against the operators of a s7ap meet, sometimes called a flea market, 7here third"part+ vendors routinel+ sell counterfeit recordings that infringe on the plaintiff0s cop+rights and trademarks. The district court dismissed on the pleadings, holding that the plaintiffs, as a matter of la7, could not maintain an+ cause of action against the s7ap meet for sales )+ vendors 7ho leased 2N1T2N1 its premises. The district court0s decision is pu)lished. *onovisa Inc! v! )herry Auction, Inc!, $&# -.Aupp. 1&92 3?.D.Cal.199&4. >e reverse. Background The plaintiff and appellant is -onovisa, 2nc., a California corporation that o7ns cop+rights and trademarks to :atin5@ispanic music recordings. -onovisa filed this action in district court against defendant"appellee, Cherr+ Auction, 2nc., and its individual operators 3collectivel+ 'Cherr+ Auction'4. -or purposes of this appeal, it is undisputed that Cherr+ Auction operates a s7ap meet in -resno, California, similar to man+ other s7ap meets in this countr+ 7here customers come to purchase various merchandise from individual vendors. ,ee generally, *lea Mar"et Owner ,ued for 7rademar" Infringement, & o. / J. Proprietar+ ;ts. 22 319924. The vendors pa+ a dail+ rental fee to the s7ap meet operators in eEchange for )ooth space. Cherr+ Auction supplies parking, conducts advertising and retains the right to eEclude an+ vendor for an+ reason, at an+ time, and thus can eEclude vendors for patent and trademark infringement. 2n addition, Cherr+ Auction receives an entrance fee from each customer 7ho attends the s7ap meet. There is also no dispute for purposes of this appeal that Cherr+ Auction and its operators 7ere a7are that vendors in their s7ap meet 7ere selling counterfeit recordings in violation of -onovisa0s trademarks and cop+rights. 2ndeed, it is alleged that in 1991, the -resno Count+ Aheriff0s Department raided the Cherr+ Auction s7ap meet and sei,ed ?;,GTH District Court

more than /$,888 counterfeit recordings. The follo7ing +ear, after finding that vendors at the Cherr+ Auction s7ap meet 7ere still selling counterfeit recordings, the Aheriff sent a letter notif+ing Cherr+ Auction of the on"going sales of infringing materials, and reminding Cherr+ Auction that the+ had agreed to provide the Aheriff 7ith identif+ing information from each vendor. 2n addition, in 199/, -onovisa itself sent an investigator to the Cherr+ Auction site and o)served sales of counterfeit recordings. -onovisa filed its original complaint in the district court on -e)ruar+ 2%, 199/, and on 6arch 22, 199&, the district court granted defendants0 motion to dismiss pursuant to -ederal ;ule of Civil Procedure 123)43N4. 2n this appeal, -onovisa does not challenge the district court0s dismissal of its claim for direct cop+right infringement, )ut does appeal the dismissal of its claims for contri)utor+ cop+right infringement, vicarious cop+right infringement and contri)utor+ trademark infringement. The cop+right claims are )rought pursuant to 1# =.A.C. FF 181 et seA! Although the Cop+right Act does not eEpressl+ impose lia)ilit+ on an+one other than direct infringers, courts have long recogni,ed that in certain circumstances, vicarious or contri)utor+ lia)ilit+ 7ill )e imposed. ,ee,ony )orp! of America v! +niversal )ity ,tudios, Inc!, &N& =.A. &1#, &/%, 18& A.Ct. ##&, #$%, #$ :.?d.2d %#& 319$&4 3eEplaining that 'vicarious lia)ilit+ is imposed in virtuall+ all areas of the la7, and the concept of contri)utor+ infringement is merel+ a species of the )roader pro)lem of identif+ing circumstances in 7hich it is Cust to hold one individuall+ accounta)le for the actions of another'4. Aimilar principles have also )een applied in the trademark field. ,ee Inwood 4a oratories v! Ives 4a oratories, &%N =.A. $&&, $&&"&N, 182 A.Ct. 21$2, 21$&, #2 :.?d.2d N8N 319$24. The Aeventh Circuit, for eEample, has upheld the imposition of lia)ilit+ for contri)utor+ trademark infringement against the o7ners of a flea market similar to the s7ap meet operated )+ Cherr+ Auction. Gard Roc" )afe 4icensing )orp! v! )oncession ,ervices, Inc!, 9%% -.2d 11&/ 3#th Cir. 19924. The district court in this case, ho7ever, eEpressl+ reCected the Aeventh Circuit0s reasoning on the contri)utor+ trademark infringement claim. Contri)utor+ and vicarious cop+right infringement, ho7ever, 7ere not addressed in Gard Roc" )afe, making this the first case to reach a federal appeals court raising issues of contri)utor+ and vicarious cop+right infringement in the conteEt of s7ap meet or flea market operations. >e anal+,e each of the plaintiff0s claims in turn. Vicarious Copyright Infringement The concept of vicarious cop+right lia)ilit+ 7as developed in the Aecond Circuit as an 2N2T2N2outgro7th of the agenc+ principles of respondeat superior. The landmark case on vicarious lia)ilit+ for sales of counterfeit recordings is ,hapiro, 2ernstein and )o! v! G!4! Dreen )o!, /1N -.2d /8& 32d Cir.19N/4. 2n ,hapiro, the court 7as faced 7ith a cop+right infringement suit against the o7ner of a chain of department stores 7here a concessionaire 7as selling counterfeit recordings. oting that the normal agenc+ rule of respondeat superior imposes lia)ilit+ on an emplo+er for cop+right infringements )+ an emplo+ee, the court endeavored to fashion a principle for enforcing cop+rights against a defendant 7hose economic interests 7ere intert7ined 7ith the direct infringer0s, )ut 7ho did not actuall+ emplo+ the direct infringer. The ,hapiro court looked at the t7o lines of cases it perceived as most clearl+ relevant. 2n one line of cases, the landlord"tenant cases, the courts had held that a landlord 7ho lacked kno7ledge of the infringing acts of its tenant and 7ho eEercised no control over the leased premises 7as not lia)le for infringing sales )+ its tenant. ,ee e!g! Deutsch v! Arnold, 9$ -.2d N$N 32d Cir.19/$4K c!f! *romont v! Aeolian )o!, 2%& -. %92

3A.D. .J.191$4. 2n the other line of cases, the so"called 'dance hall cases,' the operator of an entertainment venue 7as held lia)le for infringing performances 7hen the operator 314 could control the premises and 324 o)tained a direct financial )enefit from the audience, 7ho paid to enCo+ the infringing performance. ,ee e!g!2uc" v! 3ewell-4a-,alle Realty )o!, 2$/ =.A. 191, 19$"199, %1 A.Ct. &18, &11"12, #% :.?d. 9#1 319/14K Dreamland 2all Room, Inc! v! ,hapiro, 2ernstein ; )o!, /N -.2d /%& 3#th Cir.19294. -rom those t7o lines of cases, the ,hapiro court determined that the relationship )et7een the store o7ner and the concessionaire in the case )efore it 7as closer to the dance"hall model than to the landlord"tenant model. 2t imposed lia)ilit+ even though the defendant 7as una7are of the infringement. ,hapiro deemed the imposition of vicarious lia)ilit+ neither undul+ harsh nor unfair )ecause the store proprietor had the po7er to cease the conduct of the concessionaire, and )ecause the proprietor derived an o)vious and direct financial )enefit from the infringement./1N -.2d at /8#. The test 7as more clearl+ articulated in a later Aecond Circuit case as follo7sB 'even in the a)sence of an emplo+er"emplo+ee relationship one ma+ )e vicariousl+ lia)le if he has the right and a)ilit+ to supervise the infringing activit+ and also has a direct financial interest in such activities.' Dershwin #u lishing )orp! v! )olum ia Artists Management, Inc!, &&/ -.2d 11%9, 11N2 32d Cir.19#14. ,ee also / 6elville immerO David immer, immer on Cop+right F 128&3A4G1H, at 12#8"#2 3199%4. The most recent and comprehensive discussion of the evolution of the doctrine of vicarious lia)ilit+ for cop+right infringement is contained in Judge Leeton0s opinion in #olygram Intern! #u !, Inc! v! $evada:7ID, Inc!, $%% -.Aupp. 1/1& 3D.6ass.19$&4. The district court in this case agreed 7ith defendant Cherr+ Auction that -onovisa did not, as a matter of la7, meet either the control or the financial )enefit prong of the vicarious cop+right infringement test articulated in Dershwin, supra! ;ather, the district court concluded that )ased on the pleadings, 'Cherr+ Auction neither supervised nor profited from the vendors0 sales.' $&# -.Aupp. at 1&9N. 2n the district court0s vie7, 7ith respect to )oth control and financial )enefit, Cherr+ Auction 7as in the same position as an a)sentee landlord 7ho has surrendered its eEclusive right of occupanc+ in its leased propert+ to its tenants. This analog+ to a)sentee landlord is not in accord 7ith the facts as alleged in the district court and 7hich 7e, for purposes of appeal, must accept. The allegations )elo7 7ere that vendors occupied small )ooths 7ithin premises that Cherr+ Auction controlled and patrolled. According to the complaint, Cherr+ Auction had the right to terminate vendors for an+ reason 7hatsoever and through that right had the a)ilit+ to control the activities of vendors on the premises. 2n addition, Cherr+ Auction promoted the s7ap meet and controlled the access of customers to the s7ap meet area. 2n terms of control, the allegations )efore us are strikingl+ similar to those in ,hapiro and Dershwin! 2n ,hapiro, for eEample, the court focused on the formal licensing agreement )et7een defendant department store and the direct infringer"concessionaire. There, the concessionaire selling the )ootleg recordings had a 2N/T2N/ licensing agreement 7ith the department store 3@.:. (reen Compan+4 that re.uired the concessionaire and its emplo+ees to 'a)ide )+, o)serve and o)e+ all regulations promulgated from time to time )+ the @.:. (reen Compan+,' and @.:. (reen Compan+ had the 'unrevie7a)le discretion' to discharge the concessionaires0 emplo+ees. /1N -.2d at /8N. 2n practice, @.:. (reen Compan+ 7as not activel+ involved in the sale of records and the concessionaire controlled and supervised the individual emplo+ees. Id! evertheless, @.:. (reen0s a)ilit+ to police its concessionaire D 7hich parallels Cherr+ Auction0s a)ilit+

to police its vendors under Cherr+ Auction0s similarl+ )road contract 7ith its vendors D 7as sufficient to satisf+ the control re.uirement. Id! at /8$. 2n Dershwin, the defendant lacked the formal, contractual a)ilit+ to control the direct infringer. evertheless, )ecause of defendant0s 'pervasive participation in the formation and direction' of the direct infringers, including promoting them 3i.e. creating an audience for them4, the court found that defendants 7ere in a position to police the direct infringers and held that the control element 7as satisfied. &&/ -.2d at 11N/. As the promoter and organi,er of the s7ap meet, Cherr+ Auction 7ields the same level of control over the direct infringers as did the Dershwindefendant. ,ee also #olygram, $%% -.Aupp. at 1/29 3finding that the control re.uirement 7as satisfied )ecause the defendant 314 could control the direct infringers through its rules and regulationsK 324 policed its )ooths to make sure the regulations 7ere follo7edK and 3/4 promoted the sho7 in 7hich direct infringers participated4. The district court0s dismissal of the vicarious lia)ilit+ claim in this case 7as therefore not Custified on the ground that the complaint failed to allege sufficient control. >e neEt consider the issue of financial )enefit. The plaintiff0s allegations encompass man+ su)stantive )enefits to Cherr+ Auction from the infringing sales. These include the pa+ment of a dail+ rental fee )+ each of the infringing vendorsK a direct pa+ment to Cherr+ Auction )+ each customer in the form of an admission fee, and incidental pa+ments for parking, food and other services )+ customers seeking to purchase infringing recordings. Cherr+ Auction nevertheless contends that these )enefits cannot satisf+ the financial )enefit prong of vicarious lia)ilit+ )ecause a commission, directl+ tied to the sale of particular infringing items, is re.uired. The+ ask that 7e restrict the financial )enefit prong to the precise facts presented in ,hapiro, 7here defendant @.:. (reen Compan+ received a 18 or 12 per cent commission from the direct infringers0 gross receipts. Cherr+ Auction points to the lo7 dail+ rental fee paid )+ each vendor, discounting all other financial )enefits flo7ing to the s7ap meet, and asks that 7e hold that the s7ap meet is materiall+ similar to a mere landlord. The facts alleged )+ -onovisa, ho7ever, reflect that the defendants reap su)stantial financial )enefits from admission fees, concession stand sales and parking fees, all of 7hich flo7 directl+ from customers 7ho 7ant to )u+ the counterfeit recordings at )argain )asement prices. The plaintiff has sufficientl+ alleged direct financial )enefit. 9ur conclusion is fortified )+ the continuing line of cases, starting 7ith the dance hall cases, imposing vicarious lia)ilit+ on the operator of a )usiness 7here infringing performances enhance the attractiveness of the venue to potential customers. 2n #olygram, for eEample, direct infringers 7ere participants in a trade sho7 7ho used infringing music to communicate 7ith attendees and to cultivate interest in their 7ares. $%% -.Aupp. at 1//2. The court held that the trade sho7 participants 'derived a significant financial )enefit from the attention' that attendees paid to the infringing music. Id!I ,ee also *amous Music )orp! v! 2ay ,tate Garness Gorse Racing and 2reeding Ass'n, %%& -.2d 121/, 121& 31st Cir.19##4 3race track o7ner vicariousl+ lia)le for )and that entertained patrons 7ho 7ere not 'a)sor)ed in 7atching the races'4K,hapiro, /1N -.2d at /8# 3dance hall cases hold proprietor lia)le 7here infringing 'activities provide the proprietor 7ith a source of customers and enhanced income'4. 2n this case, the sale of pirated recordings at the Cherr+ Auction s7ap meet is a 'dra7' for customers, as 7as 2N&T2N&the performance of pirated music in the dance hall cases and their progen+.

Plaintiffs have stated a claim for vicarious cop+right infringement. Contri utory Copyright Infringement Contri)utor+ infringement originates in tort la7 and stems from the notion that one 7ho directl+ contri)utes to another0s infringement should )e held accounta)le. ,ee ,ony v! +niversal )ity,&N& =.A. at &1#, 18& A.Ct. at ##&"##NK 1 iel1oorst+n, 1oorst+n 9n Cop+right F 18.8NG2H, at 18"21 3199&4 3'2n other 7ords, the common la7 doctrine that one 7ho kno7ingl+ participates in or furthers a tortious act is Cointl+ and severall+ lia)le 7ith the prime tortfeasor, is applica)le under cop+right la7'4. Contri)utor+ infringement has )een descri)ed as an outgro7th of enterprise lia)ilit+, see / immer F 128&GaHG2H, at 12#%K Demetriades v! 8aufmann, N98 -.Aupp. 2$9, 292 3A.D. .J.19$$4, and imposes lia)ilit+ 7here one person kno7ingl+ contri)utes to the infringing conduct of another. The classic statement of the doctrine is inDershwin, &&/ -.2d 11%9, 11N2B 'G9Hne 7ho, 7ith kno7ledge of the infringing activit+, induces, causes or materiall+ contri)utes to the infringing conduct of another, ma+ )e held lia)le as a Vcontri)utor+0 infringer.' ,ee also +niversal )ity ,tudios v! ,ony )orp! of America, N%9 -.2d 9N/, 9#% 39th Cir.19$14, rev'd on other grounds, &N& =.A. &1#, 18& A.Ct. ##&, #$ :.?d.2d %#& 319$&4 3adopting Dershwin in this circuit4. There is no .uestion that plaintiff ade.uatel+ alleged the element of kno7ledge in this case. The disputed issue is 7hether plaintiff ade.uatel+ alleged that Cherr+ Auction materiall+ contri)uted to the infringing activit+. >e have little difficult+ in holding that the allegations in this case are sufficient to sho7 material contri)ution to the infringing activit+. 2ndeed, it 7ould )e difficult for the infringing activit+ to take place in the massive .uantities alleged 7ithout the support services provided )+ the s7ap meet. These services include, inter alia, the provision of space, utilities, parking, advertising, plum)ing, and customers. @ere again Cherr+ Auction asks us to ignore all aspects of the enterprise descri)ed )+ the plaintiffs, to concentrate solel+ on the rental of space, and to hold that the s7ap meet provides nothing more. Jet Cherr+ Auction activel+ strives to provide the environment and the market for counterfeit recording sales to thrive. 2ts participation in the sales cannot )e termed 'passive,' as Cherr+ Auction 7ould prefer. The district court apparentl+ took the vie7 that contri)ution to infringement should )e limited to circumstances in 7hich the defendant 'eEpressl+ promoted or encouraged the sale of counterfeit products, or in some manner protected the identit+ of the infringers.' $&# -.Aupp. 1&92, 1&9N. (iven the allegations that the local sheriff la7full+ re.uested that Cherr+ Auction gather and share )asic, identif+ing information a)out its vendors, and that Cherr+ Auction failed to compl+, the defendant appears to .ualif+ 7ithin the last portion of the district court0s o7n standard that posits lia)ilit+ for protecting infringers0 identities. 6oreover, 7e agree 7ith the Third Circuit0s anal+sis in )olum ia #ictures Industries, Inc! v! Aveco, Inc!, $88 -.2d %9 3/rd Cir.19$N4 that providing the site and facilities for kno7n infringing activit+ is sufficient to esta)lish contri)utor+ lia)ilit+. ,ee 2 >illiam -. Patr+, Cop+right :a7 O Practice 11&# 3'6erel+ providing the means for infringement ma+ )e sufficient' to incur contri)utor+ cop+right lia)ilit+4. Contri utory !rademark Infringement Just as lia)ilit+ for cop+right infringement can eEtend )e+ond those 7ho actuall+ manufacture or sell infringing materials, our la7 recogni,es lia)ilit+ for conduct that assists others in direct trademark infringement. 2n Inwood 4a oratories, &%N =.A. $&&, 182 A.Ct. 21$2, the Court said that contri)utor+ trademark lia)ilit+ is applica)le if defendant 314 intentionall+ induces another to infringe on a trademark or 324 continues to

suppl+ a product kno7ing that the recipient is using the product to engage in trademark infringement. Inwood at $%&"%%, 182 A.Ct. at 21$$"$9. As Cherr+ Auction points out, the Inwood case involved a manufacturerdistri)utor, 2N%T2N% and theInwood standard has generall+ )een applied in such cases. The Court in Inwood, ho7ever, laid do7n no limiting principle that 7ould re.uire defendant to )e a manufacturer or distri)utor. The defendant in Inwood distri)uted drugs to a pharmacist, kno7ing that the pharmacist 7as misla)eling the drugs 7ith a protected trademark rather than a generic la)el. 2n this case, plaintiffs correctl+ point our that 7hile Cherr+ Auction is not alleged to )e suppl+ing the recordings themselves, it is suppl+ing the necessar+ marketplace for their sale in su)stantial .uantities. 2n Gard Roc" )afe, 9%% -.2d 11&/, the Aeventh Circuit applied the Inwood test for contri)utor+ trademark lia)ilit+ to the operator of a flea market. 2n that case, there 7as no proof that the flea market had actual kno7ledge of the sale )+ vendors of counterfeit @ard ;ock Cafe trademark merchandise, )ut the court held that contri)utor+ lia)ilit+ could )e imposed if the s7ap meet 7as '7illfull+ )lind' to the ongoing violations. Gard Roc" )afe, 9%% -.2d at 11&9. 2t o)served that 7hile trademark infringement lia)ilit+ is more narro7l+ circumscri)ed than cop+right infringement, the courts nevertheless recogni,e that a compan+ 'is responsi)le for the torts of those it permits on its premises Vkno7ing or having reason to kno7 that the other is acting or 7ill act tortiousl+....0' Id! Auoting ;estatement 3Aecond4 of Torts F $##3c4 Ocmt. d 319#94. Gard Roc" )afe's application of the Inwood test is soundK a s7ap meet can not disregard its vendors0 )latant trademark infringements 7ith impunit+. Thus, -onovisa has also stated a claim for contri)utor+ trademark infringement. The Cudgment of the district court is ;?I?;A?D and the case is ;?6A D?D -9; -=;T@?; P;9C??D2 (A. GTH @onora)le 97en 6. Panner, Aenior =nited Atates District Judge for the District of 9regon, sitting )+ designation. ????????????????????????????????????? 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 0000000000000000000000000000000000000000000000000000000000000000000 00000000000 (I$$IA)S :. CRICHTON )CA G.o88r.y T. (I$$IA)S, P1a4n-488<A33.11an-, :. )456a.1 CRICHTON= A18r.! A. &no38, In5.= Ran!o; Hou/., In5.= n4:.r/a1 C4-y S-u!4o/, In5.= )CA, In5.= A;@14n %n-.r-a4n;.n-, In5.= S-.:.n S34.1@.r>= #a:4! &o.33, #.8.n!an-/<A33.11../. No.12**, #o5A.- 94<,9+1. Ar>u.! A3r41 2, 1996. << )ay 22, 1996 1efore 9AL?A, >2 T?; and CA:A1;?A2, Circuit Judges.

Jerome ;. @alperin, e7 Jork Cit+ 3(u+ A. @alperin, L+le 6allar+@alperin, @alperin Llein O@alperin, of counsel4, for Plaintiff"Appellant.;ichard Danna+, e7 Jork Cit+ 3David 9. Carson, Ach7a) (old)erg Price O Danna+, of counsel4, for Defendants" Appellees. (eoffre+ T. >illiams 3X>illiamsY4 appeals a summar+ Cudgment of the =nited Atates District Court for the Aouthern District of e7 Jork, :a7rence 6. 6cLenna, Judge, entered August 2%, 199&, in favor of Appellees 6ichael Crichton, Alfred A. Lnopf, 2nc., ;andom @ouse, 2nc., =niversal Cit+ Atudios, 2nc., 6CA, 2nc., Am)lin ?ntertainment, 2nc., Ateven Apiel)erg, and David Loepp, on >illiams0s claim of cop+right infringement. $N8 -.Aupp. 1%$ 3A.D. .J.199&4. >illiams asserts that the district court erred in concluding that >illiams0s 7orks and the Appellees0 7orks 7ere not su)stantiall+ similar. -or the reasons set forth )elo7, 7e affirm the Cudgment of the district court. 1ACL(;9= D This is an action for cop+right infringement under the Cop+right Act of 19#N, as amended, 1# =.A.C. FF181 et se.. 3199&4, and for an accounting of profits. >illiams claims that the Appellees0 novel and movie Jurassic Park 3together, the XJurassic Park 7orksY4 infringe upon children0s stories that he authored and cop+righted. 2n revie7ing the facts underl+ing this summar+ Cudgment motion, 7e construe the evidence in the light most favora)le to >illiams, the non"moving part+. Dela7are O @udson ;+. Co. v. Consolidated ;ail Corp., 982 -.2d 1#&, 1## 32d Cir.19984, cert. denied, %88 =.A. 92$, 111 A.Ct. 28&1, 11& :.?d.2d 12% 319914. 1et7een 19$% and 19$$, >illiams created and pu)lished four original cop+righted 7orks of fiction for childrenB 314 Dinosaur >orld, pu)lished in 19$% 3X1ook 2Y4K 324 :ost in Dinosaur >orld, pu)lished in 19$# 3X1ook 22Y4K 3/4 ?Eplorers in Dinosaur >orld, pu)lished in 19$$ 3X1ook 222Y4K and 3&4 Aa)er ToothB A Dinosaur >orld Adventure, pu)lished in 19$$ 3X1ook 2IY4 3together, XDinosaur >orld )ooksY4. >illiams or his agent applied for and 7as issued a Certificate of ;egistration )+ the ;egister of Cop+rights for 1ook 2 in Decem)er 19$$ 3registration num)er T<"1"9NN"1%/4K 1ook 22 in August 199/ 3T<"/"%9$"9&/4K 1ook 222 in 6arch 19$$ 3T<"2"29&"N114K and 1ook 2I in ovem)er 19$$ 3T<"2"%&1"NN24. ?ach of the four )ooks is an adventure stor+ for children that takes place in XDinosaur >orld,Y descri)ed in >illiams0s )rief as Xan imaginar+ present da+ man"made animal park for dinosaurs and other pre"historic animals 7here ordinar+ people can, in presumed safet+, visit, tour and o)serve the creatures in a natural )ut hi"tech controlled ha)itat.Y 1ooks 2 and 2I are simple stories of children visiting and touring Dinosaur >orld. >illiams concedes that these t7o )ooks, read alone or together, are not infringed upon )+ the Jurassic Park 7orks, though there are a fe7 similarities.1 >e 7ill focus, then, on the similarities )et7een 1ooks 22 and 222 and the Jurassic Park 7orks. As a determination of su)stantial similarit+ re.uires a Xdetailed eEamination of the 7orks

themselves,Y >alker v. Time :ife -ilms, 2nc., #$& -.2d &&, &9 32d Cir.4, cert. denied, &#N =.A. 11%9, 18N A.Ct. 22#$, 98 :.?d.2d #21 319$N4, 7e 7ill summari,e each 7ork at issue. :ost in Dinosaur >orld :ost in Dinosaur >orld is thirt+ pages long. The stor+ opens 7ith the 6cDunn famil+ preparing for a trip to Dinosaur >orld. Joung Tim is Xdressed for adventure,Y though his mother reminds him, XG7He0re Cust going to Dinosaur >orld, Tim. ot to the Cungle or someplace dangerous.Y Tim, his sister 6ar+, and 6r. and 6rs. 6cDunn pile into the car and set off for Dinosaur >orld. -rom this opening scene, a mood of adventure and perhaps even danger is created. Tim )rings a survival kit along 7ith him, and 6r. 6cDunn comments upon Tim0s desire to see the Xscariest animal in the park,Y the allosaur. The setting of Dinosaur >orld enhances the mood. 2t is descri)ed as a place 7ith tall pines rising overhead, along 7ith eEotic ferns, ginkgo and monke+ pu,,le treesK giant pterosaurs and pteranodons circling in the )lue sk+, their eerie, high"pitched s.ueals carr+ing across the distanceK roars, grunts and gro7ls coming from deep in the forest, made )+ 7ho"kno7s"7hat"kind of 7ild creaturesK rum)lings and puffs of gre+ smoke and steam curling from the top of a small volcano. After the famil+ arrives at Dinosaur >orld, the+ )u+ tickets and receive a map and a radio guide that can ans7er .uestions a)out the animals in the park. The+ discuss 7hether to visit the urser+ or proceed directl+ to the T";eE ?Epress, a train shaped like a t+rannosaurus reE that tours Dinosaur >orld. Tim is eager to )oard the T";eE ?Epress, )ut the other 6cDunns 7ant to go to the urser+. As Tim0s father sa+s, XTim, it 7on0t take )ut a fe7 minutes, and 20m sure there0ll )e plent+ of eEciting things for +ou to do toda+.Y The narration continuesB X:ittle did 6r. 6cDunn kno7 ho7 true that 7as.Y >hile discussing the da+0s plans, the famil+ is surprised to see a )rachiosaur, Xthe )iggest land animal that ever lived,Y eating leaves from the tops of the trees. The famil+ then enters the urser+, a X7arm and humidY glass"roofed )uilding, and vie7s protoceratops hatchlings and eggs. eEt, the 6cDunns proceed to the T";eE ?Epress. Tim purchases a XAupertourY ticket, allo7ing him to ride the train through each of the geologic periods in 7hich dinosaurs livedB the Triassic, Jurassic, and Cretaceous eras. The rest of the famil+ purchases tickets onl+ for the Triassic era. XAfter that Tim 7ould )e on his o7n. @e 7as ver+ eEcited.Y During the trip through the Triassic period, the train passes )+ the shore of the Dinosaur Aea 7here it is approached )+ a shrieking, t7ent+"five foot nothosaur. Aeveral train passengers scream as the nothosaur comes Xcloser and closer, until Tim could hear him

)reathe and see 7ater dripping from his needle"sharp teeth.Y >hen the nothosaur suddenl+ slips )ack into the sea, Tim is left Xa little frightened and 7ondering ho7 much eEcitement the rest of the trip 7ould )ring.Y At the end of the Triassic tour, Tim0s famil+ disem)arks, his father 7arningB This is +our first trip here, so )e ver+ careful not to lose +our guide. >hatever +ou need to kno7, Cust ask. And remem)er, no matter 7hat happens, don0t get off the train. >atching his famil+ disappear from sight, Tim Xcouldn0t help feeling Cust a little lonesome as he continued his adventure.Y The tour continues into the Jurassic period. As Tim leans out the train 7indo7 to get a )etter vie7 of several diplodocus 7ading in a s7amp, he Xdid something that 7ould change his 7hole da+YB he knocked the radio guide out of the 7indo7. X2t clattered do7n the em)ankment )+ the side of the tracks and came to rest almost under the tail of a huge stegosaurY Tim clim)s out of the train to retrieve the guide, taking the opportunit+ to touch the Xthick and 7rinkledY skin of the stegosaur, that rattled its tail Xominousl+Y at the intrusion, )ut then continued eating a plant. As Tim picks up the guide, he hears the T";eE ?Epress leave the area 7ithout him. X>ithout an+ 7arning, he 7as alone"lost in the middle of Dinosaur >orld.Y As Tim stands alone on the train tracks, 7ith several dinosaurs staring at him and distant roars sounding in the distance, the radio guide sputters )ack to life, and 7arns Xho7 fast can +ou runM +ou don0t 7ant to get caught out here 7hen the allosaur,,,),,tssstrtgrrE.Y @earing the 7arning, Tim )egins to think a)out the allosaur, an animal Xthat stood over t7ent+ feet tall, had teeth like steak knives and a disposition like a )ucket of rattlesnakes.Y XG Ho7 Dinosaur >orld seemed m+sterious. Atrange. Perhaps even dangerous.Y >alking on his o7n, Tim encounters a lost )a)+ parasaurolophus, a duck)ill dinosaur. Tim feeds it, and the dinosaur follo7s him through the park. An allosaur then emerges from the trees and chases Tim and the )a)+ dinosaur. Tim Xcould feel the allosaur0s )reath hot on his neck.Y Tim and the )a)+ dinosaur escape into the Dinosaur Aea, Cust ahead of the allosaur 7hich X7as furious at seeing his dinner Cust out of reach.Y After the )a)+ dinosaur is safel+ returned to its mother, another roaring dinosaur comes out of the distanceB the T";eE ?Epress, returning to take Tim )ack to his parents. ?Eplorers in Dinosaur >orld ?Eplorers in Dinosaur >orld, also thirt+ pages long, is intended for children approEimatel+ eleven +ears old. The stor+ centers on t7o si)lings, Peter and >end+. Peter, a dinosaur enthusiast, is disma+ed 7hen his sister 7ins a radio station contest to spend a 7eekend previe7ing XDinosaur >orld0s ne7est attraction"Pangaea"the island of

m+ster+ in the middle of Dinosaur Aea.Y 1+ promising to do >end+0s chores for a +ear, Peter convinces >end+ to let him accompan+ her on the trip. >hen the+ arrive at Dinosaur >orld, Peter and >end+ are met )+ their guide for the 7eekend, Jake Du6el, a designer of Pangaea. The trio sets off for the )oat dock and Jake eEplains the tasks of all the uniformed 7orkers the+ see on the 7a+B 2t takes a lot of people to run a place this )ig. ?ngineers for the T";eE ?Epress trains, guides for group tours keepers 7ho help in the urser+ feeding the )a)+ dinosaurs, gardeners to take care of all the plants and flo7ers and a staff of scientists 7ho spend time stud+ing the animals. Pangaea, a)out a half"mile from the mainland, appears Xghostl+ and m+sterious.Y As he loads the )oat, Jake checks the children0s gear, including a radio. Peter tells >end+, XG7He need it to call for help if 7e get into an+ trou)le.Y Jake adds, XDinosaur >orld is full of surprises, not trou)le. Atill, +ou can0t )e too carefulY As the+ cross the Dinosaur Aea, the group is pursued )+ an elasmosaur, a large, serpent"like creature. The elasmosaur arches over the )oat, flashing its sharp teeth. -ortunatel+, the creature )ecomes distracted )+ other pre+, and Peter, >end+, and Jake escape harm. After the elasmosaur incident, the )oat0s engine fails and Jake )egins to ro7 the final distance to Pangaea. Another sea dinosaur, a Xterri)leY and XmassiveY kronosaur, threatens the trio, )ut the+ are a)le to lasso a passing sea turtle that pulls the )oat .uickl+ across the 7ater to Pangaea. The kronosaur roars Xin frustration and angerY as it 7atches Xits )reakfast escape.Y 9n Pangaea, Xa 7orld impossi)l+ old and, at the same time, 7ondrousl+ ne7,Y the group first see an apatosaur X)igger than a moving van.Y Then, a saltopus Xno )igger than a catY runs )+ Xon its hind legs, )ent over, )alancing itself 7ith its long tail.Y After this introduction to the animals of the island, the group 7alks into the center of the X)reathtakingl+ )eautifulY island. Jake 7arns Peter and >end+ a)out the deinon+chus, carnivorous dinosaurs that Xrun like the 7ind, hunt in packs like 7olves, are al7a+s hungr+ and have eEtremel+ long, sharp cla7s.Y Jake reassures them that Xthere are special fences that keep dangerous dinosaurs from 7andering into the areas 7here 7e0ll )e going.Y After a night camping on the island, during 7hich Jake tells the children man+ dinosaur tales and the children keep a 7atchful e+e on the forest )e+ond the campsite, Jake receives a 7arning on the porta)le radioB G;adioHB Aecurit+ reports a )reak in the perimeter fencing on the east side of the lake. GJakeHB @o7 )ad is it, 6ain 1aseM

G;adioHB 1ad enough. Tracking computers indicate a pack of deinon+chus is on the loose, and Jake the+0re heading +our 7a+. Auggest +ou make for the chopper pad. >e have a )ird on its 7a+ no7. Jou should have plent+ of time to make it. Do +ou cop+M GJakeHB >e0re on our 7a+ Jou heard him. :et0s go, kids. As the+ rush to the helicopter pad, an ank+losaur, a )on+"plated dinosaur 7ith a clu)"like tail, )locks their path. -rom )ehind, a pack of deinon+chus approaches. To avoid confrontation, the trio veers into the forest. As the+ 7atch, the ank+losaur fights off the deinon+chus 7ith its po7erful tail. The group then reaches the helicopter pad and departs from Pangaea. Jurassic Park, The ovel Jurassic Park is a &88"page novel 7ritten for an adult audience. As one 7ould eEpect from its length, it is a complicated stor+ full of man+ plot t7ists. The )asic plot outline is as follo7sB =nregulated genetic engineering firms are making leaps and )ounds in the field hoping for financial gains. The developing technolog+, ho7ever, can have disastrous conse.uences. 9ne firm, 2n(en, suffered some sort of pro)lem in the genetics 7ork it performed on a remote island off Costa ;ica. Though much of the affair has gone unreported, a fe7 people are 7illing to reveal the events of the X2n(en 2ncident.Y The tale is the stor+ of Jurassic Park. John @ammond, 2n(en0s founder, has attempted to create a dinosaur ,oo on the volcanic 2sla u)lar, )+ cloning dinosaurs using D A eEtracted from the remains of )lood"gorged mos.uitos preserved in am)er. The park, 7hich is set to open in a +ear, has fifteen different species of dinosaurs, over t7o hundred animals in all, in a computer" controlled environment com)ining state"of"the"art electronic and )iological technologies. Aeveral of the dinosaur species are carnivorous, the most vicious )eing the t+rannosaurus reE and the velociraptors, medium"si,ed carnivores that hunt in packs. Aeveral pro)lems, among them the escape of small procompsognathid dinosaurs to the mainland and the death of three 2sla u)lar 7orkmen killed )+ velociraptors, have made the investors nervous a)out the venture0s success. @ammond is forced to )ring a team of specialists to the island to inspect the safet+ of the ,oo. The inspection team consists of Dr. Alan (rant, a paleontologist, Dr. ?llie Aattler, a paleo)otanist, 2an 6alcolm, a mathematician, and Dennis edr+, a computer scientist. 6alcolm )elieves in chaos theor+, a primar+ theme of the novel, 7hich posits that even simple s+stems engage in compleE and highl+ unpredicta)le )ehavior. @e has insisted since first learning of the dinosaur ,oo that such a proCect 7ould )ring nothing )ut disaster.

9n the island, the group first encounters )rachiosaurs eating from the tops of trees. After this innocuous incident, the group travels to the island0s head.uarters, 7here the+ soon discover some of the ,oo0s potential pro)lems. 2n the nurser+, the+ learn that the dinosaurs have )een geneticall+ engineered not to reproduce. Jet (rant later finds in the Cungle a velociraptor eggshell fragment, leading him to suspect the dinosaurs have overcome their infertilit+. These fears are confirmed 7hen the group learns that the electronic trackers that monitor the creatures indicate that there are several more dinosaurs on the island than 7ere placed there )+ 2n(en. Also trou)ling is Aattler0s discover+ of some poisonous plant species on the island. -inall+, the reader learns that Dennis edr+ has )ecome a sp+ for 1ios+n, a rival genetics firm. edr+ agrees to steal several dinosaur em)r+os for 1ios+n in eEchange for Z1.% million. These incidents foreshado7 additional pro)lems the island ,oo 7ill soon suffer. @ammond0s grandchildren, Tim and AleEis, arrive at the island. Although @ammond has ostensi)l+ )rought his grandchildren so that the+ ma+ enCo+ a sneak"peek at the dinosaurs, their real function is to convince the investors that the ,oo is safe enough for children and 7ill )e eEtremel+ lucrative. The inspection team and the children set off 7ith a guide to tour the park in automated To+ota :and Cruisers that run on a track. A pre"recorded program runs inside the cars, eEplaining the island0s inha)itants to the group as the+ tour. The tour progresses until a storm develops. Aurve+ing the island, the tour guide sees that small velociraptors have )oarded a suppl+ )oat leaving for Costa ;ica. The group attempts to 7arn the )oat )+ radio, )ut communications are do7n. The reader learns that edr+ has shut do7n all the communications and securit+ s+stems on the island in order to escape undetected 7ith the stolen em)r+os. As he rushes to a )oat dock, edr+ is caught in the storm and eventuall+ violentl+ killed )+ a dilophosaur on the loose. 6ean7hile, the :and Cruisers carr+ing the inspection team and the children have stalled. A t+rannosaurus reE attacks, tossing the children0s vehicle over a precipice and mauling 6alcolm. The tour group leader is soon killed )+ a )a)+ t+rannosaurus reE, though the children, (rant, and the others manage to escape. A t+rannosaurus reE chases a stampeding herd of dinosaurs. :ater, the t+rannosaurus reE attacks (rant and the children as the+ tr+ to escape )+ raft on a river, )ut the creature )ecomes distracted )+ other dinosaurs on land and the raft avoids disaster. The raft is then dive")om)ed )+ a pterodact+l that nearl+ flies off 7ith one of the children. ?ventuall+, the group makes it )ack to the head.uarters, 7here Aattler, @ammond, and others are tr+ing to restore order to the island. 6alcolm also is rescued and )rought to head.uarters, though he is severel+ inCured. 1ecause the electric fences that usuall+ separate the dinosaurs have )een shut off, the

dinosaurs are roaming free throughout the island. Ielociraptors hunting in packs attack man+ people, killing some and narro7l+ missing others. The children are attacked )+ a pack 7hile hiding in the head.uarter0s cafeteria, )ut the+ manage to trick the velociraptors into entering a giant free,er. ?ventuall+, some of the attacking velociraptors are killed )+ poison, though man+ more remain in a nest that the surviving group of people attempts to destro+. During this tumult, time has elapsed and no7 onl+ an hour remains to contact the suppl+ )oat and 7arn it of its deadl+ cargo )efore it reaches Costa ;ica. Just as the )oat is a)out to reach shore, and 7ith the help of Tim0s computer kno7ledge, the+ make contact 7ith the suppl+ )oat. The )oat0s cre7 kills the velociraptors. (rant, Aattler, the children, and others then contact Costa ;ican rescuers. 6alcolm, near death, argues 7ith @ammond that the park 7as doomed to failure from the )eginning. @ammond stalks off, and is soon killed and eaten )+ procompsognathids. 6alcolm also dies, succum)ing to his inCuries.2 As (rant, Aattler, the children, and the remaining island survivors escape )+ Costa ;ican ational (uard helicopter, 2sla u)lar is )om)ed and the ,oo is destro+ed. An epilogue informs us, ho7ever, that some creatures have reached the mainland and appear to )e migrating. Jurassic Park, the 6ovie The movie version of Jurassic Park is Cust over t7o hours in length. :ike most film adaptations, it eliminates man+ of the novel0s details and some scenes are cut, such as the velociraptors on the suppl+ )oat. The chaos theor+ and genetic engineering themes of the novel are truncated. Aome material is added, such as the inevita)le @oll+7ood love interest )et7een Dr. (rant and Dr. Aattler. The children0s ages are reversed, and the sister )ecomes the more competent of the t7o. Aome characters are eliminated or com)ined, and some character traits, nota)l+ those of 6alcolm and @ammond, are softened. 6alcolm and @ammond also have the good fortune to survive in the movie version. @ammond concedes at the end of the film that the ,oo is a disaster, though the actual destruction of the island is not depicted in the movie, leaving the audience 7ith a more am)iguous ending. D2AC=AA29 >illiams argues that the district court erred in granting summar+ Cudgment to the Appellees on the ground that there is no su)stantial similarit+ )et7een the Dinosaur >orld )ooks and the Jurassic Park 7orks. Aummar+ Cudgment is mandated 7hen Xthere is no genuine issue as to an+ material fact and the moving part+ is entitled to a Cudgment as a matter of la7.Y -ed.;.Civ.P. %N3c4. A court must determine X7hether the evidence presents a sufficient disagreement to

re.uire su)mission to a Cur+ or 7hether it is so one"sided that one part+ must prevail as a matter of la7.Y Anderson v. :i)ert+ :o))+, 2nc., &## =.A. 2&2, 2%1"%2, 18N A.Ct. 2%8%, 2%12, 91 :.?d.2d 282 319$N4K see also CeloteE Corp. v. Catrett, &## =.A. /1#, /22, 18N A.Ct. 2%&$, 2%%2, 91 :.?d.2d 2N% 319$N4. >e revie7 de novo the district court0s grant of summar+ Cudgment in favor of the Appellees. Arica 2nst., 2nc. v. Palmer, 9#8 -.2d 18N#, 18#1 32d Cir.19924. To esta)lish cop+right infringement, Xt7o elements must )e provenB 314 o7nership of a valid cop+right, and 324 cop+ing of constituent elements of the 7ork that are original.Y -eist Pu)lications, 2nc. v. ;ural Tel. Aerv. Co., &99 =.A. /&8, /N1, 111 A.Ct. 12$2, 129N, 11/ :.?d.2d /%$ 319914. The parties do not dispute that >illiams o)tained valid cop+rights in the Dinosaur >orld )ooks. Therefore, in order to prevail, >illiams must sho7 that the Appellees copied the Dinosaur >orld )ooks. 2n the a)sence of direct evidence, cop+ing is proven )+ sho7ing X3a4 that the defendant had access to the cop+righted 7ork and 3)4 the su)stantial similarit+ of protecti)le material in the t7o 7orks.Y Lregos v. Associated Press, / -./d N%N, NN2 32d Cir.199/4, cert. denied, %18 =.A. 1112, 11& A.Ct. 18%N, 12# :.?d.2d /#N 3199&4K :aure+ssens v. 2dea (roup, 2nc., 9N& -.2d 1/1, 1/9"&8 32d Cir.19924. -or purposes of the summar+ Cudgment motion, the Appellees have conceded that the+ had access to >illiams0s )ooks. This case thus turns upon the second part of the testB 7hether, in the e+es of the average la+ o)server, the Jurassic Park 7orks are su)stantiall+ similar to the protecti)le eEpression in the Dinosaur >orld )ooks. Aee -isher"Price, 2nc. v. >ell"6ade To+ 6fg. Corp., 2% -./d 119, 12/ 32d Cir.199&4. 2f Xthe similarit+ concerns onl+ noncop+righta)le elements of plaintiff 7ork,Y or Xno reasona)le trier of fact could find the 7orks su)stantiall+ similar,Y summar+ Cudgment is appropriate. >alker v. Time :ife -ilms, 2nc., #$& -.2d &&, &$ 32d Cir.4, cert. denied, &#N =.A. 11%9, 18N A.Ct. 22#$, 98 :.?d.2d #21 319$N4K see also Arica 2nst., 9#8 -.2d at 18#2. 2t is Xa principle fundamental to cop+right la7Y that Xa cop+right does not protect an idea, )ut onl+ the eEpression of an idea.Y Lregos, / -./d at NN/K >arner 1ros. 2nc. v. American 1roadcasting Cos., #28 -.2d 2/1, 2/9"&8 32d Cir.19$/4. Aimilarl+, scenes a faire, se.uences of events that Xnecessaril+ result from the choice of a setting or situation,Y do not enCo+ cop+right protection. >alker, #$& -.2d at %8. The distinction )et7een an idea and its eEpression is an elusive one. Judge :earned @and provided the guiding principle to this often impenetra)le in.uir+ in ichols v. =niversal Pictures Corp., &% -.2d 119, 121 32d Cir.19/84, cert. denied, 2$2 =.A. 982, %1 A.Ct. 21N, #% :.?d. #9% 319/14B =pon an+ 7ork, a great num)er of patterns of increasing generalit+ 7ill fit e.uall+ 7ell, as more and more of the incident is left out. The last ma+ perhaps )e no more than the most general statement of 7hat the G7orkH is a)out, and at times might consist onl+ of its titleK )ut there is a point in this series of a)stractions 7here the+ are no longer protected, since other7ise the GauthorH could prevent the use of his [ideas,R to 7hich, apart from

their eEpression, his propert+ is never eEtended. Professor Chafee further defined the )oundar+ )et7een idea and eEpression, stating that Xprotection covers the [patternR of the 7ork the se.uence of events and the development of the interpla+ of characters.Y *echariah Chafee, ;eflections on the :a7 of Cop+right, &% Colum.:.;ev. %8/, %1/ 319&%4K see generall+ / 6elville 1. immerO David immer, immer on Cop+right F1/.8/GAH 3199%4. ?Eamples aid us in appl+ing these a)stract principles. 2n 6attel, 2nc. v. A,rak"@am7a+ 2nt0l, 2nc., #2& -.2d /%#, /N8 32d Cir.19$/4 3per curiam4, 7e found that a %15212 inch >arlord doll did not infringe upon a %15212 inch 6asters of the =niverse doll )ecause, though the dolls looked remarka)l+ similar, the similarities all 7ere attri)uta)le to the unprotecti)le idea of Xa superhuman muscleman crouching in 7hat since eanderthal times has )een a traditional fighting pose.Y >e found that protecti)le eEpression might onl+ arise from the 7a+ the t7o dolls emphasi,ed the idea, such as )+ accentuating certain muscle groups instead of others. 2d. An eEample of unprotecti)le scenes a faire can )e found in >alker, #$& -.2d at %8, regarding stories of police 7ork in the 1ronE. >e said that XGeHlements such as drunks, prostitutes, vermin and derelict cars 7ould appear in an+ realistic 7ork a)out policemen in the Aouth 1ronE,Y and thus are unprotecti)le scenes a faire. Aimilarl+, XGfHoot chases and the morale pro)lems of policemen, not to mention the familiar figure of the 2rish cop, are venera)le and often"recurring themes of police fiction,Y not in and of themselves entitled to cop+right protection. 2d. As the court said in 1erkic v. Crichton, #N1 -.2d 12$9, 129& 39th Cir.4, cert. denied, &#& =.A. $2N, 18N A.Ct. $%, $$ :.?d.2d N9 319$%4, XGtHhe common use of such stock merel+ reminds us that in @oll+7ood, as in the life of men generall+, there is onl+ rarel+ an+thing ne7 under the sun.Y >hen 7e determine that a 7ork contains )oth protecti)le and unprotecti)le elements, 7e must take care to in.uire onl+ 7hether Xthe protecti)le elements, standing alone, are su)stantiall+ similar.Y Lnit7aves, 2nc. v. :oll+togs :td., #1 -./d 99N, 1882 32d Cir.199%4K see also -isher"Price, 2% -./d at 12/. >e also must recogni,e that dissimilarit+ )et7een some aspects of the 7orks 7ill not automaticall+ relieve the infringer of lia)ilit+, for Xno copier ma+ defend the act of plagiarism )+ pointing out ho7 much of the cop+ he has not pirated.Y ;ogers v. Loons, 9N8 -.2d /81, /8$ 32d Cir.4, cert. denied, %8N =.A. 9/&, 11/ A.Ct. /N%, 121 :.?d.2d 2#$ 319924. 2t is onl+ 7hen the similarities )et7een the protected elements of plaintiff0s 7ork and the allegedl+ infringing 7ork are of Xsmall import .uantitativel+ or .ualitativel+Y that the defendant 7ill )e found innocent of infringement. 2d.K see also / immer on Cop+rights, supra, F1/.8/G1HG1HGaH. To appl+ the la7 to the dispute )efore us, 7e eEamine the similarities in such aspects as the total concept and feel, theme, characters, plot, se.uence, pace, and setting of the Dinosaur >orld )ooks and the Jurassic Park 7orks. Aee >alker, #$& -.2d at &$K 1erkic, #N1 -.2d at 1292K ;e+her v. Children0s Television >orkshop, %// -.2d $#, 91 32d Cir.4,

cert. denied, &29 =.A. 9$8, 9# A.Ct. &92, %8 :.?d.2d %$$ 319#N4K (reen v. :indse+, $$% -.Aupp. &N9, &$1"$2 3A.D. .J.19924, aff0d, 9 -./d 1%/# 32d Cir.199/4, cert. denied, %18 =.A. 1282, 11& A.Ct. 1/1$, 12# :.?d.2d NN# 3199&4. @aving revie7ed )oth parties0 7orks in detail, 7e find that nearl+ all the similarities )et7een the 7orks arise from noncop+righta)le elements, and thus the district court correctl+ concluded that the 7orks are not su)stantiall+ similar. Consideration of the total concept and feel of a 7ork, rather than specific in.uir+ into plot and character development, is especiall+ appropriate in an infringement action involving children0s 7orks, )ecause children0s 7orks are often less compleE than those aimed at an adult audience. ;e+her, %// -.2d at 91. @ere, the total concept and feel of the t7o 7orks differ su)stantiall+. The Jurassic Park 7orks are high"tech horror stories 7ith villainous characters and gruesome )loodshed. 1ooks 22 and 222 of the Dinosaur >orld series, )+ contrast, are adventure stories and, although suspenseful in places, have happ+ endings. The threats and danger in 1ooks 22 and 222 do not arise )ecause of the evils of humansK rather, the threats eEist )ecause of the 7ild nature of dinosaurs and are intended to educate children a)out the )ehavior of these no7"eEtinct creatures. The total concept and feel of the Jurassic Park 7orks is of a 7orld out of control, 7hile >illiams0s Dinosaur >orld is 7ell under control. Turning to specific similarities in the theme, setting, characters, time se.uence, plot, and pace, 7e also find that the Appellees0 7orks are not su)stantiall+ similar to the Dinosaur >orld )ooks. An+ similarit+ in the theme of the parties0 7orks relates to the unprotecti)le idea of a dinosaur ,oo. 9nce one goes )e+ond this level of a)straction, the similarit+ in themes disappears. The Jurassic Park 7orks involve genetic engineering, ego, greed, and the conse.uences of man0s hu)ris in )elieving that nature can )e controlled. o similar themes are evident in an+ of the Dinosaur >orld )ooks. The settings of the parties0 7orks also do not give rise to a finding of su)stantial similarit+. >hile )oth the Dinosaur >orld )ooks and the Jurassic Park 7orks share a setting of a dinosaur ,oo or adventure park, 7ith electrified fences, automated tours, dinosaur nurseries, and uniformed 7orkers, these settings are classic scenes a faire that flo7 from the uncop+righta)leconcept of a dinosaur ,oo. Thus, though perhaps su)stantiall+ similar, the settings are not protecti)le. >illiams, ho7ever, points to the setting of 1ook 222 on the island of Pangaea, a lush volcanic island not +et open to the pu)lic, and argues that this setting is a protecti)le eEpression of the dinosaur ,oo idea. >e disagree, finding )oth that Pangaea and 2sla u)lar are distinct from one another 3one is a man"made theme park attraction, the other a remote natural island4 and that placing dinosaurs on a prehistoric island far from the mainland amounts to no more than a scene a faire in a dinosaur adventure stor+. >illiams contends that the children in 1ook 222, Peter and >end+, and the children in the Jurassic Park 7orks, Tim and AleEis, along 7ith the respective guides Jake Du6el and Dr. (rant, are su)stantiall+ similar. 2t is true that )oth Peter and Tim are dinosaur

enthusiasts, that )oth groups of children are si)lings, and that )oth guides are intelligent. :ike7ise, 7e recogni,e that in )oth 7orks the characters spend the night in the dinosaur ,oo and escape from dangerous dinosaurs )+ helicopter through the com)ined 7it of the children and adults. These similarities, ho7ever, do not suggest infringement. As Judge :earned @and advised, Xthe less developed the characters, the less the+ can )e cop+rightedK that is the penalt+ an author must )ear for marking them too indistinctl+.Y ichols, &% -.2d at 121. Auch can )e said of Peter, >end+, and Jake, all of 7hom are much less developed than their alleged counterparts. Aetting that aside, ho7ever, the characters still do not appear su)stantiall+ similar. >hen one looks )e+ond the superficial similarities in the characters, man+ differences emerge, including the motivations for the characters0 trip to the dinosaur parks, the skills and credentials of the characters, and their interpersonal relationships. As a result, 7e find that no reasona)le o)server 7ould find su)stantial similarit+ )et7een the characters of the 7orks at issue. -inall+, an eEamination of the time se.uence, pace, and plot of the parties0 7orks reveals no infringement. 1ook 22 takes place in the space of a da+K 1ook 222, in a t7ent+"four hour period. The Jurassic Park 7orks, )+ contrast, involve a much longer timeline. Although the pace of the parties0 7orks are similar, )oth .uickl+ moving from scene to scene, 7e agree 7ith the district court that the pace, 7ithout more, does not create an issue of overall su)stantial similarit+ )et7een the 7orks. The plot, or se.uence of events, of the 7orks like7ise is not su)stantiall+ similar. Although >illiams points to several specific instances of similarit+,/ 7e agree 7ith the district court that such lists are Xinherentl+ su)Cective and unrelia)le,Y particularl+ 7here Xthe list emphasi,es random similarities scattered throughout the 7orks.Y :itchfield v. Apiel)erg, #/N -.2d 1/%2, 1/%N 39th Cir.19$&4, cert. denied, &#8 =.A. 18%2, 18% A.Ct. 1#%/, $& :.?d.2d $1# 319$%4. Auch a scattershot approach cannot support a finding of su)stantial similarit+ )ecause it fails to address the underl+ing issueB 7hether a la+ o)server 7ould consider the 7orks as a 7hole su)stantiall+ similar to one another. Aee >alker, #$& -.2d at %8K 1urroughs v. 6etro"(old7+n"6a+er, 2nc., N$/ -.2d N18, N2& 32d Cir.19$24. Additionall+, even those scenes that appear similar in their a)stract description prove to )e .uite dissimilar once eEamined in an+ detail. -or eEample, in )oth 1ook 222 and the Jurassic Park movie, the characters escape deadl+, pack"hunting dinosaurs 3deinon+chus and velociraptors, respectivel+4 7hen another dinosaur 3an ank+losaur and a t+rannosaurus reE, respectivel+4 intervenes. @o7ever, the 1ook 222 dinosaurs are not purposefull+ hunting the human characters as the velociraptors are in the movie. 2n 1ook 222, the intervening dinosaur is unsuspecting, non"threatening, )ut 7ell"armored, 7hereas the t+rannosaurus reE in the movie is itself a marauding )east that has terrori,ed the characters throughout much of the action. The final scene of the movie, sho7ing the t+rannosaurus reE roaring over the fallen velociraptors in the lo))+ of the

island0s head.uarters, surrounded )+ a prehistoric skeleton of a dinosaur and )anner that reads X>hen Dinosaurs ;uled the ?arthY s+m)oli,es the theme of man0s hu)ris and emphasi,es that nature cannot )e controlled. An anal+sis of this scene and others leads us to conclude that a finding of su)stantial similarit+ cannot )e supported. >hen 7e consider the com)ined elements of the Dinosaur >orld )ooks and compare them to the Jurassic Park 7orks, 7e hold that a la+ o)server 7ould not find su)stantial similarities )et7een the protecti)le material of these 7orks. >e must emphasi,e one final point. >illiams rightl+ points out that his )ooks, 7ritten for a +oung audience, deserve cop+right protection as much as 7orks created for an adult audience. >illiams fears that unless he prevails, children0s )ook authors ever+7here 7ill )e stripped of the protection of cop+right )ecause adult )ook authors 7ill )e a)le to point to the greater compleEit+ of their 7orks as evidence that no infringement has occurred. >e ans7er >illiams0s concern in t7o 7a+s. -irst, the cop+right la7 is to )e uniforml+ applied across a variet+ of media and audiencesK see, e.g., Amith v. :ittle, 1ro7n O Co., 2&% -.Aupp. &%1 3A.D. .J.19N%4 3adult"audience 7ork allegedl+ infringed )+ children0s 7ork4, aff0d, /N8 -.2d 92$ 32d Cir.19NN4K ;ogers, 9N8 -.2d at /8$, /12 3photograph allegedl+ infringed )+ sculpture4K @organ v. 6acmillan, 2nc., #$9 -.2d 1%#, 1N2 32d Cir.19$N4 3)allet choreograph+ allegedl+ infringed )+ photographs of )allet4. The la7 takes into account >illiams0s concern )+ re.uiring the la+ o)server to focus on similarities rather than differences 7hen evaluating a 7ork. 9nl+ 7hen the similarities are insu)stantial or unprotecti)le 7ill a claim fail. Aecond, >illiams0s claim fails here largel+ )ecause the similar parts of the parties0 7orks are unprotecti)le scenes a faire or trivial, scattered details. >e kno7 of man+ stories 7ritten for children that are more detailed in characteri,ation and plot than >illiams0s )ooks, and like7ise can think of several adult novels that are less original. The claim 7ould )e e.uall+ 7eak if the Jurassic Park 7orks had preceded the Dinosaur >orld )ooks, and the Appellees had attempted to sue >illiams. Thus, it is not the distinction )et7een children0s )ooks and adult )ooks, )ut rather the degree of similarit+ )et7een these particular dinosaur adventure stories that compels our holding in this case. C9 C:=A29 -or the foregoing reasons, 7e affirm the district court0s grant of summar+ Cudgment in favor of the Appellees. -99T 9T?A 1. These similarities areB in 1ook 2, an initial encounter )et7een visitors and dinosaurs Xsmaller than a chickenY and a stampede of dinosaurs running from a t+rannosaurus reEK and in 1ook 2I, the use of an automated ca)le car ride through Dinosaur >orld.

2. >hat seems to us a clear case of death is made more am)iguous )+ the se.uel to Jurassic Park, a novel entitled The :ost >orld, 7here 6alcolm is again a central character. /. These includeB encounters 7ith small dinosaurs in 1ooks 2, 222, and the Jurassic Park novelK encounters 7ith )rachiosaurs in 1ook 22 and the Jurassic Park movieK visits to dinosaur nurseries in )oth 1ook 22 and the Jurassic Park 7orksK tours 7ith automated vehicles and recorded guides in 1ooks 22, 2I and the Jurassic Park 7orksK stranded characters encountering ferocious dinosaurs in 1ook 22 and the Jurassic Park 7orksK characters in )oats )eing pursued )+ dinosaurs in 1ook 222 and the Jurassic Park novelK dinosaurs escaping from paddock fences in )oth 1ook 222 and the Jurassic Park 7orksK and characters escaping pack"hunting dinosaurs through the intervention of another dinosaur and a helicopter in 1ook 222 and the Jurassic Park movie. 9AL?A, Aenior Circuit JudgeB