May 18, 2016
Bengzon Negre Untalan scored another significant victory before the Supreme Court in Sison Olaño, et al. vs. Lim Eng Co, G.R. No. 195835, a decision promulgated on 14 March 2016.
In 2004, respondent Lim Eng Co. (LEC) filed a complaint for copyright infringement against petitioners Sison Olaño, Sergio Ong, Marilyn Go and Jap Fuk Hai, the directors of Metrotech Steel Industries, Inc. (Metrotech). BNU represented Metrotech’s directors before the Department of Justice, the C.A., and the S.C.
LEC claimed copyright over “hatch doors” based on Certificate of Copyright Registration and Deposit Nos. I-2004-13 and I-2004-14 covering illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science and Certificate of Copyright Registration and Deposit Nos. H-2004-566 and H-2004-567 covering plans/drawings for “original” ornamental designs or models for articles of manufacture. LEC alleged that Metrotech manufactured hatch doors for a construction project by copying its plans/drawings.
Metrotech’s directors admitted the manufacturing of hatch doors but denied the commission of copyright infringement. Metrotech contended that the manufacturing of hatch doors per se is not copyright infringement because LEC’s copyright protection did not extend to the objects depicted in the illustrations and plans. Further, the directors argued that there is no artistic or ornamental expression in hatch doors which would make it copyrightable.
The Supreme Court found that Metrotech’s directors are not guilty of copyright infringement. Ownership of valid copyrighted material by complainant is one of the essential elements of copyright infringement under RA 8293.
Valid copyrighted material must be shown by proof of originality and copyrightability. The SC ruled that LEC’s Certificate of Registration Nos. I-2004-13 and I-2004-14 cover only the hatch door sketches/drawings and not the actual hatch door they depict. The SC further ruled that the hatch door has no element of design which may be separated from its utilitarian function. Therefore, the hatch door is an object of utility, and not an artistic creation. It is not eligible for copyright.
Citing the case of Ching v Salinas that works of applied art, original intellectual, literary and artistic works are copyrightable while useful articles and works of industrial designs are not. Useful articles may be copyrightable only if their aesthetic or artistic features can be independently identified from their utilitarian aspects.