IP Views

Copyright Registration of Literary or Illustrative Works
September 20, 2007
By: Jonathan Q. Perez

The case of Pearl & Dean (Phil.), Inc. v. Shoemart, Inc. and North Edsa Marketing, Inc. (G.R. No. , August 15, 2003)

What is the scope of copyright protection on works that depict actual objects? Is protection confined to the work alone or does it extend to the object described or illustrated in it?

The Case:

Pearl & Dean, Inc. (P&D) is a corporation engaged in the manufacture of advertising display units called light boxes. The light boxes were derived from technical drawings, which were registered with the National Library. P&D obtained a copyright certificate for the drawings, which were classified under category "O" of the Intellectual Property Decree (P.D. 49). The category pertains to "prints, pictorial illustrations, advertising copies, labels, tags, and box wraps."

P&D negotiated with Shoemart, Inc. (SM) for the lease and installation of its light boxes in two mall branches. For some reason, SM rescinded its contract with P&D. Later, SM contracted with several entities for the construction of light boxes for its chain of stores.

In time, P&D discovered that SM installed light boxes in several of its stores; the light boxes are similar to those that P&D manufactures. Eventually, P&D demanded SM to refrain from using the subject light boxes and to remove them from its establishments. Not satisfied with SM's response to its demands, P&D sued SM for infringement of trademark and copyright, unfair competition and damages.

The trial court ruled in favor of P&D and found SM to have infringed P&D's copyright and trademark "Poster Ads". On appeal, however, the Court of Appeals reversed the trial court's ruling and declared that SM did not infringe P&D's copyright.

The Supreme Court sustained the Court of Appeals decision that there was no copyright infringement committed against P&D.

 

The Ruling:

The Supreme Court explained that:

1. While P&D obtains a copyright over technical drawings of light boxes, the copyright was obtained under the classification class "O" work.
    
2. Hence, P&D's copyright protection extended only to the technical drawings and not to the light box itself.
    
3. The light box depicted in the technical drawings is not a literary or artistic piece, which could be copyrighted under the law.
    

Clearly, the Supreme Court, in this case, clarifies that copyright protection on works that involves or depicts objects does not extend to the said objects. Copyright is strictly confined to the description or expression of the objects and not the objects themselves. Hence, if one writes something about a design on a bridge and makes an illustration of it in the same work, a subsequent construction of the bridge referred to in the work is not an infringement of the copyright over the writing or illustration.



Insights:

The Supreme Court impliedly suggests that functional creations or inventions are not subject to copyright protection and should not be registered for that purpose. While copyright registration of literary or illustrative depictions of functional creations or inventions is not discouraged, it is always advisable to secure patents for the creations or inventions subject of the copyrighted works.

Copyright registration of such kind of works with the National Library would necessarily reveal their subject creations or inventions to the public. The failure to secure the corresponding patents over the technical creations or inventions leaves them without the necessary safeguards against any actual unauthorized duplication. A patent effectively gives the inventor the right to exclude others and the exclusive right of making, selling or using the invention.

 

What is copyright?

When is copyright over a certain work obtained?

What are the works subject to copyright protection?

Is it necessary to register a work subject of copyright protection?

What is the lifespan of a copyright over a certain work?
 

Copyright is the (definition, concept). The creator of a particular work obtains copyright over it from the moment of its creation. The works that are subject of a copyright are those enumerated in Sections 172.1 and 173.1 of Republic Act No. 8293. While there is no requirement to register a copyrightable work, the law provides a mechanism for its recognition. Pursuant to Section 191 of Republic Act No. 8293, a copyrightable may be registered with the National Library but only for the purpose of completing its records.

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