JESSIE G. CHING vs. WILLIAM M. SALINAS, SR., et. al.
G.R. No. 161295 June 29, 2005
FACTS:
Petitioner Ching is the owner and general manager of Jeshicris Manufacturing Co., the
maker and manufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for
Automobile" made up of plastic. On September 4, 2001, the National Library issued
Certificates of Copyright Registration and Deposit of the said work.
Ching requested the National Bureau of Investigation (NBI) for police/investigative
assistance for the apprehension and prosecution of illegal manufacturers, producers and/or
distributors of the works. After due investigation, the NBI filed applications for search
warrants in the RTC of Manila against William Salinas, Sr. and the officers and members
of the Board of Directors of Wilaware Product Corporation. It was alleged that the
respondents therein reproduced and distributed the said models penalized under Sections
177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications sought the seizure of such
products, including the evidence of sale which include delivery receipts, invoices and official
receipts. RTC granted issued the search warrant for the seizure of the articles.
The respondents contended that the copyright registrations were issued in violation of RA
8293 on the grounds that:
a) The subject matter of the registrations are not artistic or literary;
b) The subject matter of the registrations is spare parts of automobile – meaning, there
are original parts that they are designed to replace – hence, they are not original. As
such, they are the proper subject of a patent, not copyright.
Ching argued that his works are copyrightable. He insisted that notwithstanding the
classification of the works as wither literary and/or artistic, the law encompasses works
which may have a bearing on the utility aspect to which Ching’s utility designs were
classified. According to Ching, what the Copyright Law protects is the author’s intellectual
creation, regardless of whether it is one of utilitarian functions or incorporated in a useful
article produced on an industrial scale.
The trial court ruled that the works covered by the certificates issued by the National
Library are not artistic in nature. They are considered automotive spare parts and pertain
to technology. They averred that the models are not original, and as such are the proper
subject of a patent, not copyright. On appeal, CA dismissed the petition.
ISSUE: Whether the objects subject of the search warrant are not copyrightable.
HELD:
No. The petitioner’s models are not works of applied art, nor artistic works. They are utility
models, useful articles, albeit with no artistic design or value. They are not literary or
artistic works. They are not intellectual creations in the literary and artistic domain, or
works of applied art. They are certainly not ornamental designs or one having decorative
quality or value.
A utility model is a technical solution to a problem in any field of human activity which is
new and industrially applicable. It may be, or may relate to, a product, or process, or an
improvement of any of the aforesaid. Essentially, a utility model refers to an invention in
the mechanical field. This is the reason why its object is sometimes described as a device or
useful object. A utility model varies from an invention, for which a patent for invention is,
likewise, available, on at least three aspects: first, the requisite of "inventive step" in a
patent for invention is not required; second, the maximum term of protection is only seven
years compared to a patent which is twenty years both reckoned from the date of the
application; and third, the provisions on utility model dispense with its substantive
examination and prefer for a less complicated system.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a preexisting right regulated by
it. Being a statutory grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the persons, and on terms
and conditions specified in the statute. Accordingly, it can cover only the works falling
within the statutory enumeration or description. That the works of the petitioner may be
the proper subject of a patent does not entitle him to the issuance of a search warrant for
violation of copyright laws.
The focus of copyright is the usefulness of the artistic design, and not its marketability. The
central inquiry is whether the article is a work of art. Works for applied art include all
original pictorials, graphics, and sculptural works that are intended to be or have been
embodied in useful article regardless of factors such as mass production, commercial
exploitation, and the potential availability of design patent protection.
These articles are useful articles which are defined as one having an intrinsic utilitarian
function that is not merely to portray the appearance of the article or to convey information.
Indeed, while works of applied art, original intellectual, literary and artistic works are
copyrightable, useful articles and works of industrial design are not. A useful article may be
copyrightable only if and only to the extent that such design incorporates pictorial, graphic,
or sculptural features that can be identified separately from, and are capable of existing
independently of the utilitarian aspects of the article.
There is no copyright protection for works of applied art or industrial design which has
aesthetic or artistic features that cannot be identified separately from the utilitarian
aspects of the article. Functional components of useful articles, no matter how artistically
designed, have generally been denied copyright protection unless they are separable from
the useful article.
Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing
the goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright
is confined to literary and artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of
human activity which is new, involves an inventive step and is industrially applicable.
