EN BANC

[G.R. No. 110318. August 28, 1996]

COLUMBIA PICTURE, INC., ORION PICTURE CORPORATION, PARAMOUNT
PICTURE CORPORATION, T!ENTIET" CENTUR# $O% $ILM
CORPORATION, UNITE& ARTIT CORPORATION, UNI'ERAL CIT#
TU&IO, INC., T"E !ALT &INE# COMPAN#, ()* !ARNER
BROT"ER, INC., petitioners, vs. COURT O$ APPEAL, UN"INE
"OME 'I&EO, INC. ()* &ANILO A. PELIN&ARIO, respondents.
& E C I I O N
REGALA&O, J.+
Before us is a petition for review on certiorari of the decision of the Court of
Appeals
[1]
promulgated on July 22 1!!2 and its resolution
[2]
of "ay 1# 1!!$
denying petitioners% motion for reconsideration &oth of which sustained the
order
[$]
of the 'egional (rial Court Branch 1$$ "a)ati "etro "anila dated
Novem&er 22 1!** for the +uashal of ,earch -arrant No. */0#1$ earlier issued per
its own order
[2]
on ,eptem&er 1 1!** for violation of ,ection 13 of 4residential
5ecree No. 2! as amended otherwise )nown as the 65ecree on the 4rotection of
7ntellectual 4roperty.8
(he material facts found &y respondent appellate court are as follows9
Complainants thru counsel lodged a formal complaint with the National Bureau
of 7nvestigation for violation of 45 No. 2! as amended and sought its assistance in
their anti0:lm piracy drive. Agents of the NB7 and private researchers made discreet
surveillance on various video esta&lishments in "etro "anila including ,unshine
;ome <ideo 7nc. =,unshine for &revity> owned and operated &y 5anilo A. 4elindario
with address at No. 3 "ayfair Center "agallanes "a)ati "etro "anila.
?n Novem&er 12 1!*/ NB7 ,enior Agent @auro C. 'eyes applied for a search
warrant with the court a quo against ,unshine see)ing the seiAure among others of
pirated video tapes of copyrighted :lms all of which were enumerated in a list
attached to the applicationB and television sets video cassettes andCor laser disc
recordings e+uipment and other machines and paraphernalia used or intended to &e
used in the unlawful eDhi&ition showing reproduction sale lease or disposition of
videograms tapes in the premises a&ove descri&ed. 7n the hearing of the
application NB7 ,enior Agent @auro C. 'eyes upon +uestions &y the court a quo
reiterated in su&stance his averments in his aEdavit. ;is testimony was
corro&orated &y another witness "r. 'ene C. BaltaAar. Atty. 'ico <. 5omingo%s
deposition was also ta)en. ?n the &asis of the aEdavits and depositions of NB7
,enior Agent @auro C. 'eyes 'ene C. BaltaAar and Atty. 'ico <. 5omingo ,earch
-arrant No */0#1$ for violation of ,ection 13 of 45 No. 2! as amended was issued
&y the court a quo.
(he search warrant was served at a&out 1921 p.m. on 5ecem&er 12 1!*/ to
,unshine andCor their representatives. 7n the course of the search of the premises
indicated in the search warrant the NB7 Agents found and seiAed various video
tapes of duly copyrighted motion picturesC:lms owned or eDclusively distri&uted &y
private complainants and machines e+uipment television sets paraphernalia
materials accessories all of which were included in the receipt for properties
accomplished &y the raiding team. Copy of the receipt was furnished andCor
tendered to "r. 5anilo A. 4elindario registered owner0proprietor of ,unshine ;ome
<ideo.
?n 5ecem&er 13 1!*/ a 6'eturn of ,earch -arrant8 was :led with the Court.
A 6"otion (o @ift the ?rder of ,earch -arrant8 was :led &ut was later denied for
lac) of merit =p. 2*# 'ecords>.
A "otion for reconsideration of the ?rder of denial was :led. (he
court a quo granted the said motion for reconsideration and Fusti:ed it in this
manner9
67t is undisputed that the master tapes of the copyrighted :lms from which the
pirated :lms were allegedly copies =sic> were never presented in the proceedings
for the issuance of the search warrants in +uestion. (he orders of the Court
granting the search warrants and denying the urgent motion to lift order of search
warrants were therefore issued in error. Conse+uently they must &e set aside.8 =p.
1$ Appellant%s Brief>
[1]
4etitioners thereafter appealed the order of the trial court granting private
respondents% motion for reconsideration thus lifting the search warrant which it had
therefore issued to the Court of Appeals. As stated at the outset said appeal was
dismissed and the motion for reconsideration thereof was denied. ;ence this
petition was &rought to this Court particularly challenging the validity of respondent
court%s retroactive application of the ruling in 20th Century Fox Film Corporation vs.
Court of Appeals, et al.
[3]
in dismissing petitioners% appeal and upholding the
+uashal of the search warrant &y the trial court.
I
7nceptively we shall settle the procedural considerations on the matter of and
the challenge to petitioners% legal standing in our courts they &eing foreign
corporations not licensed to do &usiness in the 4hilippines.
4rivate respondents aver that &eing foreign corporations petitioners should
have such license to &e a&le to maintain an action in 4hilippine courts. 7n so
challenging petitioners% personality to sue private respondents point to the fact that
petitioners are the copyright owners or owners of eDclusive rights of distri&ution in
the 4hilippines of copyrighted motion pictures or :lms and also to the appointment
of Atty. 'ico <. 5omingo as their attorney0in0fact as &eing constitutive of 6doing
&usiness in the 4hilippines8 under ,ection 1=f> =1> and =2> 'ule 1 of the 'ules of the
Board of 7nvestments. As foreign corporations doing &usiness in the 4hilippines
,ection 1$$ of Batas 4am&ansa Blg. 3* or the Corporation Code of the 4hilippines
denies them the right to maintain a suit in 4hilippine courts in the a&sence of a
license to do &usiness. Conse+uently they have no right to as) for the issuance of
a search warrant.
[/]
7n refutation petitioners Gatly deny that they are doing &usiness in the
4hilippines
[*]
and contend that private respondents have not adduced evidence to
prove that petitioners are doing such &usiness here as would re+uire them to &e
licensed &y the ,ecurities and EDchange Commission other than averments in the
+uoted portions of petitioners% 6?pposition to Hrgent "otion to @ift ?rder of ,earch
-arrant8 dated April 2* 1!** and Atty. 'ico <. 5omingo%s aEdavit of 5ecem&er 12
1!*/. "oreover an eDclusive right to distri&ute a product or the ownership of such
eDclusive right does not conclusively prove the act of doing &usiness nor esta&lish
the presumption of doing &usiness.
[!]
(he Corporation Code provides9
,ec. 1$$. Doing business without a license. I No foreign corporation transacting
&usiness in the 4hilippines without a license or its successors or assigns shall &e
permitted to maintain or intervene in any action suit or proceeding in any court or
administrative agency of the 4hilippinesB &ut such corporation may &e sued or
proceeded against &efore 4hilippine courts or administrative tri&unals on any valid
cause of action recogniAed under 4hilippine laws.
(he o&tainment of a license prescri&ed &y ,ection 121 of the Corporation Code
is not a condition precedent to the maintenance of any )ind of action in 4hilippine
courts &y a foreign corporation. ;owever under the afore+uoted provision no
foreign corporation shall &e permitted to transact &usiness in the 4hilippines as this
phrase is understood under the Corporation Code unless it shall have the license
re+uired &y law and until it complies with the law in transacting &usiness here it
shall not &e permitted to maintain any suit in local courts.
[1#]
As thus interpreted
any foreign corporation not doing &usiness in the 4hilippines may maintain an
action in our courts upon any cause of action provided that the su&Fect matter and
the defendant are within the Furisdiction of the court. 7t is not the a&sence of the
prescri&ed license &ut 6doing &usiness8 in the 4hilippines without such license
which de&ars the foreign corporation from access to our courts. 7n other words
although a foreign corporation is without license to transact &usiness in the
4hilippines it does not follow that it has no capacity to &ring an action. ,uch
license is not necessary if it is not engaged in &usiness in the 4hilippines.
[11]
,tatutory provisions in many Furisdictions are determinative of what constitutes
6doing &usiness8 or 6transacting &usiness8 within that forum in which case said
provisions are controlling there. 7n others where no such de:nition or +uali:cation is
laid down regarding acts or transactions falling within its purview the +uestion rests
primarily on facts and intent. 7t is thus held that all the com&ined acts of a foreign
corporation in the ,tate must &e considered and every circumstance is material
which indicates a purpose on the part of the corporation to engage in some part of
its regular &usiness in the ,tate.
[12]
No general rule or governing principles can &e laid down as to what constitutes
6doing8 or 6engaging in8 or 6transacting8 &usiness. Each case must &e Fudged in
the light of its own peculiar environmental circumstances.
[1$]
(he true tests
however seem to &e whether the foreign corporation is continuing the &ody or
su&stance of the &usiness or enterprise for which it was organiAed or whether it has
su&stantially retired from it and turned it over to another.
[12]
As a general proposition upon which many authorities agree in principle su&Fect
to such modi:cations as may &e necessary in view of the particular issue or of the
terms of the statute involved it is recogniAed that a foreign corporation is 6doing8
6transacting8 6engaging in8 or 6carrying on8 &usiness in the ,tate when and
ordinarily only when it has entered the ,tate &y its agents and is there engaged in
carrying on and transacting through them some su&stantial part of its ordinary or
customary &usiness usually continuous in the sense that it may &e distinguished
from merely casual sporadic or occasional transactions and isolated acts.
[11]
(he Corporation Code does not itself de:ne or categoriAe what acts constitute
doing or transacting &usiness in the 4hilippines. Jurisprudence has however held
that the term implies a continuity of commercial dealings and arrangements and
contemplates to that eDtent the performance of acts or wor)s or the eDercise of
some of the functions normally incident to or in progressive prosecution of the
purpose and su&Fect of its organiAation.
[13]
(his traditional case law de:nition has evolved into a statutory de:nition
having &een adopted with some +uali:cations in various pieces of legislation in our
Furisdiction.
Jor instance 'epu&lic Act No. 1211
[1/]
provides9
,EC(7?N 1. Denitions an! scope of this Act. I =1> D D DB and the phrase 6doing
&usiness8 shall include soliciting orders purchases service contracts opening
oEces whether called 6liaison8 oEces or &ranchesB appointing representatives or
distri&utors who are domiciled in the 4hilippines or who in any calendar year stay in
the 4hilippines for a period or periods totalling one hundred eighty days or moreB
participating in the management supervision or control of any domestic &usiness
:rm entity or corporation in the 4hilippinesB and any other act or acts that imply a
continuity of commercial dealings or arrangements and contemplate to that eDtent
the performance of acts or wor)s or the eDercise of some of the functions normally
incident to and in0progressive prosecution of commercial gain or of the purpose
and o&Fect of the &usiness organiAation.
4residential 5ecree No. 1/*!
[1*]
in Article 31 thereof de:nes 6doing &usiness8
to include soliciting orders purchases service contracts opening oEces whether
called 6liaison8 oEces or &ranchesB appointing representatives or distri&utors who
are domiciled in the 4hilippines or who in any calendar year stay in the 4hilippines
for a period or periods totalling one hundred eighty days or moreB participating in
the management supervision or control of any domestic &usiness :rm entity or
corporation in the 4hilippines and any other act or acts that imply a continuity of
commercial dealings or arrangements and contemplate to that eDtent the
performance of acts or wor)s or the eDercise of some of the functions normally
incident to and in progressive prosecution of commercial gain or of the purpose
and o&Fect of the &usiness organiAation.
(he implementing rules and regulations of said presidential decree conclude the
enumeration of acts constituting 6doing &usiness8 with a catch0all de:nition thus9
,ec. 1=g>. K5oing Business% shall &e any act or com&ination of acts enumerated in
Article 31 of the Code. 7n particular Kdoing &usiness% includes9
DDD DDD DDD
=1#> Any other act or acts which imply a continuity of commercial dealings or
arrangements and contemplate to that eDtent the performance of acts or wor)s or
the eDercise of some of the functions normally incident to or in the progressive
prosecution of commercial gain or of the purpose and o&Fect of the &usiness
organiAation.
Jinally 'epu&lic Act No. /#22
[1!]
em&odies such concept in this wise9
,EC. $. Denitions. I As used in this Act9
DDD DDD DDD
=d> the phrase 6doing &usiness shall include soliciting orders service
contracts opening oEces whether called Kliaison% oEces or &ranchesB appointing
representatives or distri&utors domiciled in the 4hilippines or who in any calendar
year stay in the country for a period or periods totalling one hundred eight=y> =1*#>
days or moreB participating in the management supervision or control of any
domestic &usiness :rm entity or corporation in the 4hilippinesB and any other act
or acts that imply a continuity of commercial dealings or arrangements and
contemplate to that eDtent the performance of acts or wor)s or the eDercise of
some of the functions normally incident to and in progressive prosecution of
commercial gain or of the purpose and o&Fect of the &usiness
organiAation9 "rovi!e! however (hat the phrase 6doing &usiness8 shall not &e
deemed to include mere investment as a shareholder &y a foreign entity in
domestic corporations duly registered to do &usiness andCor the eDercise of rights
as such investorsB nor having a nominee director or oEcer to represent its interests
in such corporationB nor appointing a representative or distri&utor domiciled in the
4hilippines which transacts &usiness in its own name and for its own account.
Based on Article 1$$ of the Corporation Code and gauged &y such statutory
standards petitioners are not &arred from maintaining the present action. (here is
no showing that under our statutory or case law petitioners are doing transacting
engaging in or carrying on &usiness in the 4hilippines as would re+uire o&tention of
a license &efore they can see) redress from our courts. No evidence has &een
oLered to show that petitioners have performed any of the enumerated acts or any
other speci:c act indicative of an intention to conduct or transact &usiness in the
4hilippines.
Accordingly the certi:cation issued &y the ,ecurities and EDchange
Commission
[2#]
stating that its records do not show the registration of petitioner :lm
companies either as corporations or partnerships or that they have &een licensed to
transact &usiness in the 4hilippines while undenia&ly true is of no conse+uence to
petitioners% right to &ring action in the 4hilippines. <erily no record of such
registration &y petitioners can &e eDpected to &e found for as aforestated said
foreign :lm corporations do not transact or do &usiness in the 4hilippines and
therefore do not need to &e licensed in order to ta)e recourse to our courts.
Although ,ection 1=g> of the 7mplementing 'ules and 'egulations of the
?mni&us 7nvestments Code lists among others I
=1> ,oliciting orders purchases =sales> or service contracts. Concrete
and speci:c solicitations &y a foreign :rm or &y an agent of such foreign :rm not
acting independently of the foreign :rm amounting to negotiations or :Ding of the
terms and conditions of sales or service contracts regardless of where the contracts
are actually reduced to writing shall constitute doing &usiness even if the
enterprise has no oEce or :Ded place of &usiness in the 4hilippines. (he
arrangements agreed upon as to manner time and terms of delivery of the goods or
the transfer of title thereto is immaterial. A foreign :rm which does &usiness
through the middlemen acting in their own names such as indentors commercial
&ro)ers or commission merchants shall not &e deemed doing &usiness in the
4hilippines. But such indentors commercial &ro)ers or commission merchants shall
&e the ones deemed to &e doing &usiness in the 4hilippines.
=2> Appointing a representative or distri&utor who is domiciled in the
4hilippines unless said representative or distri&utor has an independent status i.e.
it transacts &usiness in its name and for its own account and not in the name or for
the account of a principal. (hus where a foreign :rm is represented in the
4hilippines &y a person or local company which does not act in its name &ut in the
name of the foreign :rm the latter is doing &usiness in the 4hilippines.
as acts constitutive of 6doing &usiness8 the fact that petitioners are admittedly
copyright owners or owners of eDclusive distri&ution rights in the 4hilippines of
motion pictures or :lms does not convert such ownership into an indicium of doing
&usiness which would re+uire them to o&tain a license &efore they can sue upon a
cause of action in local courts.
Neither is the appointment of Atty. 'ico <. 5omingo as attorney0in0fact of
petitioners with eDpress authority pursuant to a special power of attorney inter
alia I
(o lay criminal complaints with the appropriate authorities and to provide evidence
in support of &oth civil and criminal proceedings against any person or persons
involved in the criminal infringement of copyright or concerning the unauthoriAed
importation duplication eDhi&ition or distri&ution of any cinematographic wor)=s> I
:lms or video cassettes I of which D D D is the owner of copyright or the owner of
eDclusive rights of distri&ution in the 4hilippines pursuant to any agreement=s>
&etween D D D and the respective owners of copyright in such cinematographic
wor)=s> to initiate and prosecute on &ehalf of D D D criminal or civil actions in the
4hilippines against any person or persons unlawfully distri&uting eDhi&iting selling
or oLering for sale any :lms or video cassettes of which D D D is the owner of
copyright or the owner of eDclusive rights of distri&ution in the 4hilippines pursuant
to any agreement=s> &etween D D D and the respective owners of copyright in such
wor)s.
[21]
tantamount to doing &usiness in the 4hilippines. -e fail to see how eDercising one%s
legal and property rights and ta)ing steps for the vigilant protection of said rights
particularly the appointment of an attorney0in0fact can &e deemed &y and of
themselves to &e doing &usiness here.
As a general rule a foreign corporation will not &e regarded as doing &usiness in
the ,tate simply &ecause it enters into contracts with residents of the ,tate where
such contracts are consummated outside the ,tate.
[22]
7n fact a view is ta)en that a
foreign corporation is not doing &usiness in the state merely &ecause sales of its
product are made there or other &usiness furthering its interests is transacted there
&y an alleged agent whether a corporation or a natural person where such
activities are not under the direction and control of the foreign corporation &ut are
engaged in &y the alleged agent as an independent &usiness.
[2$]
7t is generally held that sales made to customers in the ,tate &y an independent
dealer who has purchased and o&tained title from the corporation to the products
sold are not a doing of &usiness &y the corporation.
[22]
@i)ewise a foreign corporation
which sells its products to persons styled 6distri&uting agents8 in the ,tate for
distri&ution &y them is not doing &usiness in the ,tate so as to render it su&Fect to
service of process therein where the contract with these purchasers is that they
shall &uy eDclusively from the foreign corporation such goods as it manufactures
and shall sell them at trade prices esta&lished &y it.
[21]
7t has moreover &een held that the act of a foreign corporation in engaging an
attorney to represent it in a Jederal court sitting in a particular ,tate is not doing
&usiness within the scope of the minimum contact test.
[23]
-ith much more reason
should this doctrine apply to the mere retainer of Atty. 5omingo for legal protection
against contingent acts of intellectual piracy.
7n accordance with the rule that 6doing &usiness8 imports only acts in
furtherance of the purposes for which a foreign corporation was organiAed it is held
that the mere institution and prosecution or defense of a suit particularly if the
transaction which is the &asis of the suit too) place out of the ,tate do not amount
to the doing of &usiness in the ,tate. (he institution of a suit or the removal thereof
is neither the ma)ing of a contract nor the doing of &usiness within a constitutional
provision placing foreign corporations licensed to do &usiness in the ,tate under the
same regulations limitations and lia&ilities with respect to such acts as domestic
corporations. "erely engaging in litigation has &een considered as not a suEcient
minimum contact to warrant the eDercise of Furisdiction over a foreign corporation.
[2/]
As a consideration aside we have perforce to comment on private respondents%
&asis for arguing that petitioners are &arred from maintaining suit in the
4hilippines. Jor allegedly &eing foreign corporations doing &usiness in the
4hilippines without a license private respondents repeatedly maintain in all their
pleadings that petitioners have there&y no legal personality to &ring an action
&efore 4hilippine courts.
[2*]
Among the grounds for a motion to dismiss under the 'ules of Court are lac) of
legal capacity to sue
[2!]
and that the complaint states no cause of action.
[$#]
@ac) of
legal capacity to sue means that the plaintiL is not in the eDercise of his civil rights
or does not have the necessary +uali:cation to appear in the case or does not have
the character or representation he claims.
[$1]
?n the other hand a case is
dismissi&le for lac) of personality to sue upon proof that the plaintiL is not the real
party0in0interest hence grounded on failure to state a cause of action.
[$2]
(he term
6lac) of capacity to sue8 should not &e confused with the term 6lac) of personality
to sue.8 -hile the former refers to a plaintiL%s general disa&ility to sue such as on
account of minority insanity incompetence lac) of Furidical personality or any
other general dis+uali:cations of a party the latter refers to the fact that the
plaintiL is not the real party0 in0interest. Correspondingly the :rst can &e a ground
for a motion to dismiss &ased on the ground of lac) of legal capacity to sueB
[$$]
whereas the second can &e used as a ground for a motion to dismiss &ased on
the fact that the complaint on the face thereof evidently states no cause of action.
[$2]
Applying the a&ove discussion to the instant petition the ground availa&le for
&arring recourse to our courts &y an unlicensed foreign corporation doing or
transacting &usiness in the 4hilippines should properly &e 6lac) of capacity to sue8
not 6lac) of personality to sue.8 Certainly a corporation whose legal rights have
&een violated is undenia&ly such if not the only real party0in0interest to &ring suit
thereon although for failure to comply with the licensing re+uirement it is not
capacitated to maintain any suit &efore our courts.
@astly on this point we reiterate this Court%s reFection of the common
procedural tactics of erring local companies which when sued &y unlicensed foreign
corporations not engaged in &usiness in the 4hilippines invo)e the latter%s
supposed lac) of capacity to sue. (he doctrine of lac) of capacity to sue &ased on
failure to :rst ac+uire a local license is &ased on considerations of pu&lic policy. 7t
was never intended to favor nor insulate from suit unscrupulous esta&lishments or
nationals in case of &reach of valid o&ligations or violations of legal rights of
unsuspecting foreign :rms or entities simply &ecause they are not licensed to do
&usiness in the country.
[$1]
II
-e now proceed to the main issue of the retroactive application to the present
controversy of the ruling in 20th Century Fox Film Corporation vs. Court of Appeals,
et al. promulgated on August 1! 1!**
[$3]
that for the determination of pro&a&le
cause to support the issuance of a search warrant in copyright infringement cases
involving videograms the production of the master tape for comparison with the
allegedly pirated copies is necessary.
4etitioners assert that the issuance of a search warrant is addressed to the
discretion of the court su&Fect to the determination of pro&a&le cause in accordance
with the procedure prescri&ed therefor under ,ections $ and 2 of 'ule 123. As of
the time of the application for the search warrant in +uestion the controlling
criterion for the :nding of pro&a&le cause was that enunciated in #urgos vs. Chief of
$ta%
[$/]
stating that9
4ro&a&le cause for a search warrant is de:ned as such facts and circumstances
which would lead a reasona&ly discrete and prudent man to &elieve that an oLense
has &een committed and that the o&Fects sought in connection with the oLense are
in the place sought to &e searched.
According to petitioners after complying with what the law then re+uired the
lower court determined that there was pro&a&le cause for the issuance of a search
warrant and which determination in fact led to the issuance and service on
5ecem&er 12 1!*/ of ,earch -arrant No. */0#1$. 7t is further argued that any
search warrant so issued in accordance with all applica&le legal re+uirements is
valid for the lower court could not possi&ly have &een eDpected to apply as the
&asis for a :nding of pro&a&le cause for the issuance of a search warrant in
copyright infringement cases involving videograms a pronouncement which was
not eDistent at the time of such determination on 5ecem&er 12 1!*/ that is the
doctrine in the 20th Century Fox case that was promulgated only on August 1!
1!** or over eight months later.
4rivate respondents predicta&ly argue in support of the ruling of the Court of
Appeals sustaining the +uashal of the search warrant &y the lower court on the
strength of that 20th Century Fox ruling which they claim goes into the very
essence of pro&a&le cause. At the time of the issuance of the search warrant
involved here although the 20th Century Fox case had not yet &een decided
,ection 2 Article 777 of the Constitution and ,ection $ 'ule 123 of the 1!*1 'ules on
Criminal 4rocedure em&odied the prevailing and governing law on the matter. (he
ruling in 20th Century Fox was merely an application of the law on pro&a&le
cause. ;ence they posit that there was no law that was retrospectively applied
since the law had &een there all along. (o refrain from applying the 20th Century
Fox ruling which had supervened as a doctrine promulgated at the time of the
resolution of private respondents% motion for reconsideration see)ing the +uashal of
the search warrant for failure of the trial court to re+uire presentation of the master
tapes prior to the issuance of the search warrant would have constituted grave
a&use of discretion.
[$*]
'espondent court upheld the retroactive application of the 20th Century
Fox ruling &y the trial court in resolving petitioners% motion for reconsideration in
favor of the +uashal of the search warrant on this renovated thesis9
And whether this doctrine should apply retroactively it must &e noted that in the
2#th Century JoD case the lower court +uashed the earlier search warrant it
issued. ?n certiorari the ,upreme Court aErmed the +uashal on the ground among
others that the master tapes or copyrighted :lms were not presented for
comparison with the purchased evidence of the video tapes to determine whether
the latter is an unauthoriAed reproduction of the former.
7f the lower court in the Century JoD case did not +uash the warrant it is ?ur view
that the ,upreme Court would have invalidated the warrant Fust the same
considering the very strict re+uirement set &y the ,upreme Court for the
determination of Kpro&a&le cause% in copyright infringement cases as enunciated in
this 2#th Century JoD case. (his is so &ecause as was stated &y the ,upreme Court
in the said case the master tapes and the pirated tapes must &e presented
for comparison to satisfy the requirement of &probable cause.' ,o it goes &ac) to the
very eDistence of pro&a&le cause. D D D
[$!]
"indful as we are of the rami:cations of the doctrine of stare !ecisis and the
rudiments of fair play it is our considered view that the 20th Century Fox ruling
cannot &e retroactively applied to the instant case to Fustify the +uashal of ,earch
-arrant No. */0#1$. ;erein petitioners% consistent position that the order of the
lower court of ,eptem&er 1 1!** denying therein defendants% motion to lift the
order of search warrant was properly issued there having &een satisfactory
compliance with the then prevailing standards under the law for determination of
pro&a&le cause is indeed well ta)en. (he lower court could not possi&ly have
eDpected more evidence from petitioners in their application for a search warrant
other than what the law and Furisprudence then existing an! (u!icially accepte!
re+uired with respect to the :nding of pro&a&le cause.
Article 2 of the Civil Code provides that 6=l>aws shall have no retroactive eLect
unless the contrary is provided. Correlatively Article * of the same Code declares
that 6=F>udicial decisions applying the laws or the Constitution shall form part of the
legal system of the 4hilippines.8
Jurisprudence in our system of government cannot &e considered as an
independent source of lawB it cannot create law.
[2#]
-hile it is true that Fudicial
decisions which apply or interpret the Constitution or the laws are part of the legal
system of the 4hilippines still they are not laws. Judicial decisions though not laws
are nonetheless evidence of what the laws mean and it is for this reason that they
are part of the legal system of the 4hilippines.
[21]
Judicial decisions of the ,upreme
Court assume the same authority as the statute itself.
[22]
7nterpreting the afore+uoted correlated provisions of the Civil Code and in light
of the a&ove dis+uisition this Court emphatically declared in Co vs. Court of
Appeals, et al.
[2$]
that the principle of prospectivity applies not only to original
amendatory statutes and administrative rulings and circulars &ut also and properly
so to Fudicial decisions. ?ur holding in the earlier case of "eople vs.
)ubinal
[22]
echoes the rationale for this Fudicial declaration vi*.9
5ecisions of this Court although in themselves not laws are nevertheless evidence
of what the laws mean and this is the reason why under Article * of the New Civil
Code 6Judicial decisions applying or interpreting the laws or the Constitution shall
form part of the legal system.8 (he interpretation upon a law &y this Court
constitutes in a way a part of the law as of the date that the law was originally
passed since this Court%s construction merely esta&lishes the contemporaneous
legislative intent that the law thus construed intends to eLectuate. (he settled rule
supported &y numerous authorities is a restatement of the legal maDim 6legis
interpretation legis vim obtinet8 I the interpretation placed upon the written law &y
a competent court has the force of law. D D D &ut when a doctrine of this Court is
overruled and a diLerent view is adopted the new !octrine shoul! be applie!
prospectively, an! shoul! not apply to parties who ha! relie! on the ol! !octrine
an! acte! on the faith thereof. D D D. =,tress supplied>.
(his was forcefully reiterated in $pouses #en*onan vs. Court of Appeals, et al.
[21]
where the Court eDpounded9
D D D. But while our decisions form part of the law of the land they are also su&Fect
to Article 2 of the Civil Code which provides that 6laws shall have no retroactive
eLect unless the contrary is provided.8 (his is eDpressed in the familiar legal
maDimum lex prospicit, non respicit the law loo)s forward not &ac)ward. (he
rationale against retroactivity is easy to perceive. (he retroactive application of a
law usually divests rights that have already &ecome vested or impairs the
o&ligations of contract and hence is unconstitutional =Jrancisco v. CerteAa $ ,C'A
131 [1!31]>. (he same consideration underlies our rulings giving only prospective
eLect to decisions enunciating new doctrines. D D D.
(he reasoning &ehind $enarillos vs. +ermosisima
[23]
that Fudicial interpretation of
a statute constitutes part of the law as of the date it was originally passed since the
Court%s construction merely esta&lishes the contemporaneous legislative intent that
the interpreted law carried into eLect is all too familiar. ,uch Fudicial doctrine does
not amount to the passage of a new law &ut consists merely of a construction or
interpretation of a pre0eDisting one and that is precisely the situation o&taining in
this case.
7t is conse+uently clear that a Fudicial interpretation &ecomes a part of the law
as of the date that law was originally passed su&Fect only to the +uali:cation that
when a doctrine of this Court is overruled and a diLerent view is adopted and more
so when there is a reversal thereof the new doctrine should &e applied
prospectively and should not apply to parties who relied on the old doctrine and
acted in good faith.
[2/]
(o hold otherwise would &e to deprive the law of its +uality of
fairness and Fustice then if there is no recognition of what had transpired prior to
such adFudication.
[2*]
(here is merit in petitioners% impassioned and well0founded argumentation9
(he case of 2#th Century JoD Jilm Corporation vs. Court of Appeals et al. 132 ,C'A
311 =August 1! 1!**> =hereinafter 2#th Century JoD> was ineDistent in 5ecem&er of
1!*/ when ,earch -arrant */0#1$ was issued &y the lower court. ;ence it &oggles
the imagination how the lower court could &e eDpected to apply the formulation of
2#th Century JoD in :nding pro&a&le cause when the formulation was yet non0
eDistent.
DDD DDD DDD
7n short the lower court was convinced at that time after conducting searching
eDamination +uestions of the applicant and his witnesses that 6an oLense had &een
committed and that the o&Fects sought in connection with the oLense =were> in the
place sought to &e searched8 =Burgos v. Chief of ,taL et al. 1$$ ,C'A *##>. 7t is
indisputa&le therefore that at the time of the application or on 5ecem&er 12
1!*/ the lower court did not commit any error nor did it fail to comply with any
legal re+uirement for the valid issuance of search warrant.
D D D. =->e &elieve that the lower court should &e considered as having followed the
re+uirements of the law in issuing ,earch -arrant No. */0#1$. (he search warrant
is therefore valid and &inding. 7t must &e noted that nowhere is it found in the
allegations of the 'espondents that the lower court failed to apply the law as then
interprete! in ,-./. ;ence we :nd it a&surd that it is =sic> should &e seen
otherwise &ecause it is simply impossi&le to have re+uired the lower court to apply
a formulation which will only &e de:ned siD months later.
Jurthermore it is unFust and unfair to re+uire compliance with legal andCor doctrinal
re+uirements which are ineDistent at the time they were supposed to have &een
complied with.
DDD DDD DDD
D D D. 7f the lower court%s reversal will &e sustained what encouragement can &e
given to courts and litigants to respect the law and rules if they can eDpect with
reasona&le certainty that upon the passage of a new rule their conduct can still &e
open to +uestionM (his certainly &reeds insta&ility in our system of dispensing
Fustice. Jor 4etitioners who too) special eLort to redress their grievances and to
protect their property rights &y resorting to the remedies provided &y the law it is
most unfair that fealty to the rules and procedures then o&taining would &ear &ut
fruits of inFustice.
[2!]
-ithal even the proposition that the prospectivity of Fudicial decisions imports
application thereof not only to future cases &ut also to cases still ongoing or not yet
:nal when the decision was promulgated should not &e countenanced in the Fural
sphere on account of its inevita&ly unsettling repercussions. "ore to the point it is
felt that the reasona&leness of the added re+uirement in 20th Century Fox calling
for the production of the master tapes of the copyrighted :lms for determination of
pro&a&le cause in copyright infringement cases needs revisiting and clari:cation.
7t will &e recalled that the 20th Century Fox case arose from search warrant
proceedings in anticipation of the :ling of a case for the unauthoriAed sale or
renting out of copyrighted :lms in videotape format in violation of 4residential
5ecree No. 2!. 7t revolved around the meaning of pro&a&le cause within the
conteDt of the constitutional provision against illegal searches and seiAures as
applied to copyright infringement cases involving videotapes.
(herein it was ruled that I
(he presentation of master tapes of the copyrighted :lms from which the pirated
:lms were allegedly copied was necessary for the validity of search warrants
against those who have in their possession the pirated :lms. (he petitioner%s
argument to the eLect that the presentation of the master tapes at the time of
application may not &e necessary as these would &e merely evidentiary in nature
and not determinative of whether or not a pro&a&le cause eDists to Fustify the
issuance of the search warrants is not meritorious. (he court cannot presume that
duplicate or copied tapes were necessarily reproduced from master tapes that it
owns.
(he application for search warrants was directed against video tape outlets which
allegedly were engaged in the unauthoriAed sale and renting out of copyrighted
:lms &elonging to the petitioner pursuant to 4.5. 2!.
(he essence of a copyright infringement is the similarity or at least su&stantial
similarity of the purported pirated wor)s to the copyrighted wor). ;ence the
applicant must present to the court the copyrighted :lms to compare them with the
purchased evidence of the video tapes allegedly pirated to determine whether the
latter is an unauthoriAed reproduction of the former. (his lin)age of the copyrighted
:lms to the pirated :lms must &e esta&lished to satisfy the re+uirements of
pro&a&le cause. "ere allegations as to the eDistence of the copyrighted :lms cannot
serve as &asis for the issuance of a search warrant.
Jor a closer and more perspicuous appreciation of the factual antecedents
of 20th Century Fox the pertinent portions of the decision therein are +uoted
hereunder to wit9
7n the instant case the lower court lifted the three +uestioned search warrants
against the private respondents on the ground that it acted on the application for
the issuance of the said search warrants and granted it on the misrepresentations of
applicant NB7 and its witnesses that infringement of copyright or a piracy of a
particular :lm have &een committed. (hus the lower court stated in its +uestioned
order dated January 2 1!*39
6According to the movant all three witnesses during the proceedings in the
application for the three search warrants testi:ed of their own personal
)nowledge. 0et, Atty. Albino 1eyes of the 2#3 state! that the counsel or
representative of the 4wentieth Century Fox Corporation will testify on the vi!eo
cassettes that were pirate!, so that he !i! not have personal 5nowle!ge of the
allege! piracy. 4he witness #acani also sai! that the vi!eo cassettes were pirate!
without stating the manner it was pirate! an! that it was Atty. Domingo that has
5nowle!ge of that fact.
6?n the part of Atty. 5omingo he said that the re0taping of the allegedly pirated
tapes was from master tapes allegedly &elonging to the (wentieth Century JoD
&ecause according to him it is of his personal )nowledge.
6At the hearing of the "otion for 'econsideration ,enior NB7 Agent Atty. Al&ino
'eyes testi:ed that when the complaint for infringement was brought to the 2#3,
the master tapes of the allege!ly pirate! tapes were shown to him an! he ma!e
comparisons of the tapes with those purchase! by their man #acani. 6hy the
master tapes or at least the lm reels of the allege!ly pirate! tapes were not shown
to the Court !uring the application gives some misgivings as to the truth of that
bare statement of the 2#3 agent on the witness stan!.
6Again as the application and search proceedings is a prelude to the :ling of
criminal cases under 4.5. 2! the copyright infringement law and although what is
re+uired for the issuance thereof is merely the presence of pro&a&le cause that
pro&a&le cause must &e satisfactory to the Court for it is a time0honored precept
that proceedings to put a man to tas) as an oLender under our laws should &e
interpreted in strictissimi (uris against the government and li&erally in favor of the
alleged oLender.
DDD DDD DDD
6(his doctrine has never &een overturned and as a matter of fact it had &een
enshrined in the Bill of 'ights in our 1!/$ Constitution.
6$o that lac5ing in persuasive e%ect, the allegation that master tapes
were viewe! by the 2#3 an! were compare! to the purchase! an! sei*e! vi!eo
tapes from the respon!ents' establishments, it shoul! be !ismisse! as not
supporte! by competent evi!ence an! for that matter the probable cause hovers in
that grey !ebatable twilight *one between blac5 an! white resolvable in favor of
respon!ents herein.
6But the glaring fact is that KCocoon% the :rst video tape mentioned in the search
warrant was not even duly registered or copyrighted in the 4hilippines. =AnneD C of
?pposition p. 112 record.> ,o that lac)ing in the re+uisite presentation to the
Court of an alleged master tape for purposes of comparison with the purchased
evidence of the video tapes allegedly pirated and those seiAed from respondents
there was no way to determine whether there really was piracy or copying of the
:lm of the complainant (wentieth Century JoD.8
DDD DDD DDD
4he lower court, therefore, lifte! the three 789 questione! search warrants in the
absence of probable cause that the private respon!ents violate! ".D. :-. As foun!
by the court, the 2#3 agents who acte! as witnesses !i! not have personal
5nowle!ge of the sub(ect matter of their testimony which was the allege!
commission of the o%ense by the private respon!ents. ?nly the petitioner%s
counsel who was also a witness during the application for the issuance of the search
warrants stated that he had personal )nowledge that the con:scated tapes owned
&y the private respondents were pirated tapes ta)en from master tapes &elonging
to the petitioner. ;owever the lower court did not give much credence to his
testimony in view of the fact that the master tapes of the allegedly pirated tapes
were not shown to the court during the application8 =7talics ours>.
(he italiciAed passages readily eDpose the reason why the trial court therein
re+uired the presentation of the master tapes of the allegedly pirated :lms in order
to convince itself of the eDistence of pro&a&le cause under the factual milieu
peculiar to that case. 7n the case at &ar respondent appellate court itself o&served9
-e feel that the rationale &ehind the afore+uoted doctrine is that the pirated copies
as well as the master tapes unli)e the other types of personal properties which may
&e seiAed were available for presentation to the court at the time of the application
for a search warrant to determine the eDistence of the lin)age of the copyrighted
:lms with the pirated ones. (hus there is no reason not to present them =7talics
supplied for emphasis>.
[1#]
7n :ne the supposed pronunciamento in said case regarding the necessity for
the presentation of the master tapes of the copyrighted :lms for the validity of
search warrants should at most &e understood to merely serve as a guidepost in
determining the eDistence of pro&a&le cause in copyright infringement cases where
there is !oubt as to the true nexus between the master tape an! the pirate!
copies. An o&Fective and careful reading of the decision in said case could lead to
no other conclusion than that said directive was hardly intended to &e a sweeping
and inGeDi&le re+uirement in all or similar copyright infringement cases. )u!icial
!ictashould always &e construed within the factual matriD of their parturition
otherwise a careless interpretation thereof could unfairly fault the writer with the
vice of overstatement and the reader with the fallacy of undue generaliAation.
7n the case at &ar NB7 ,enior Agent @auro C. 'eyes who :led the application for
search warrant with the lower court following a formal complaint lodged &y
petitioners Fudging from his aEdavit
[11]
and his deposition
[12]
did testify on matters
within his personal )nowledge &ased on said complaint of petitioners as well as his
own investigation and surveillance of the private respondents% video rental
shop. @i)ewise Atty. 'ico <. 5omingo in his capacity as attorney0in0fact stated in
his aEdavit
[1$]
and further eDpounded in his deposition
[12]
that he personally )new of
the fact that private respondents had never &een authoriAed &y his clients to
reproduce lease and possess for the purpose of selling any of the copyrighted :lms.
Both testimonies of Agent 'eyes and Atty. 5omingo were corro&orated &y 'ene
C. BaltaAar a private researcher retained &y "otion 4ictures Association of America
7nc. ="4AA 7nc.> who was li)ewise presented as a witness during the search
warrant proceedings.
[11]
(he records clearly reGect that the testimonies of the
a&ovenamed witnesses were straightforward and stemmed from matters within
their personal )nowledge. (hey displayed none of the am&ivalence and uncertainty
that the witnesses in the 20th Century Fox case eDhi&ited. (his categorical
forthrightness in their statements among others was what initially and correctly
convinced the trial court to ma)e a :nding of the eDistence of pro&a&le cause.
(here is no originality in the argument of private respondents against the
validity of the search warrant o&viously &orrowed from 20th Century Fox that
petitioners% witnesses I NB7 Agent @auro C. 'eyes Atty. 'ico <. 5omingo and 'ene
C. BaltaAar I did not have personal )nowledge of the su&Fect matter of their
respective testimonies and that said witnesses% claim that the video tapes were
pirated without stating the manner &y which these were pirated is a conclusion of
fact without &asis.
[13]
(he diLerence it must &e pointed out is that the records in
the present case reveal that =1> there is no allegation of misrepresentation much
less a :nding thereof &y the lower court on the part of petitioners% witnessesB =2>
there is no denial on the part of private respondents that the tapes seiAed were
illegitimate copies of the copyrighted ones nor have they shown that they were
given any authority &y petitioners to copy sell lease distri&ute or circulate or at
least to oLer for sale lease distri&ution or circulation the said video tapesB and =$>
a discreet &ut eDtensive surveillance of the suspected area was underta)en &y
petitioner%s witnesses suEcient to ena&le them to eDecute trustworthy aEdavits
and depositions regarding matters discovered in the course thereof and of which
they have personal )nowledge.
7t is evidently incorrect to suggest as the ruling in 2#th Century JoD may appear
to do that in copyright infringement cases the presentation of master tapes of the
copyrighted :lms is always necessary to meet the re+uirement of pro&a&le cause
and that in the a&sence thereof there can &e no :nding of pro&a&le cause for the
issuance of a search warrant. 7t is true that such master tapes are o&Fect evidence
with the merit that in this class of evidence the ascertainment of the controverted
fact is made through demonstrations involving the direct use of the senses of the
presiding magistrate.
[1/]
,uch auDiliary procedure however does not rule out the
use of testimonial or documentary evidence depositions admissions or other
classes of evidence tending to prove the factum proban!um
[1*]
especially where the
production in court of o&Fect evidence would result in delay inconvenience or
eDpenses out of proportion to its evidentiary value.
[1!]
?f course as a general rule constitutional and statutory provisions relating to
search warrants prohi&it their issuance eDcept on a showing of pro&a&le cause
supported &y oath or aErmation. (hese provisions prevent the issuance of warrants
on loose vague or dou&tful &ases of fact and emphasiAe the purpose to protect
against all general searches.
[3#]
7ndeed Article 777 of our Constitution mandates in
,ec. 2 thereof that no search warrant shall issue eDcept upon pro&a&le cause to &e
determined personally &y the Fudge after eDamination under oath or aErmation of
the complainant and the witnesses he may produce and particularly descri&ing the
place to &e searched and the things to &e seiAedB and ,ec. $ thereof provides that
any evidence o&tained in violation of the preceding section shall &e inadmissi&le for
any purpose in any proceeding.
(hese constitutional strictures are implemented &y the following provisions of
'ule 123 of the 'ules of Court9
,ec. $. 1equisites for issuing search warrant. I A search warrant shall not issue &ut
upon pro&a&le cause in connection with one speci:c oLense to &e determined
personally &y the Fudge after eDamination under oath or aErmation of the
complainant and the witnesses he may produce and particularly descri&ing the
place to &e searched and the things to &e seiAed.
,ec. 2. ;xamination of complainant< recor!. I (he Fudge must &efore issuing the
warrant personally eDamine in the form of searching +uestions and answers in
writing and under oath the complainant and any witnesses he may produce on facts
personally )nown to them and attach to the record their sworn statements together
with any aEdavits su&mitted.
,ec. 1. 3ssuance an! form of search warrant. I 7f the Fudge is thereupon satis:ed of
the eDistence of facts upon which the application is &ased or that there is pro&a&le
cause to &elieve that they eDist he must issue the warrant which must &e
su&stantially in the form prescri&ed &y these 'ules.
(he constitutional and statutory provisions of various Furisdictions re+uiring a
showing of pro&a&le cause &efore a search warrant can &e issued are mandatory
and must &e complied with and such a showing has &een held to &e an un+uali:ed
condition precedent to the issuance of a warrant. A search warrant not &ased on
pro&a&le cause is a nullity or is void and the issuance thereof is in legal
contemplation ar&itrary.
[31]
7t &ehooves us then to review the concept of pro&a&le
cause :rstly from representative holdings in the American Furisdiction from which
we patterned our doctrines on the matter.
Although the term 6pro&a&le cause8 has &een said to have a well0de:ned
meaning in the law the term is eDceedingly diEcult to de:ne in this case with any
degree of precisionB indeed no de:nition of it which would Fustify the issuance of a
search warrant can &e formulated which would cover every state of facts which
might arise and no formula or standard or hard and fast rule may &e laid down
which may &e applied to the facts of every situation.
[32]
As to what acts constitute
pro&a&le cause seem incapa&le of de:nition.
[3$]
(here is of necessity no eDact test.
[32]
At &est the term 6pro&a&le cause8 has &een understood to mean a reasona&le
ground of suspicion supported &y circumstances suEciently strong in themselves to
warrant a cautious man in the &elief that the person accused is guilty of the oLense
with which he is chargedB
[31]
or the eDistence of such facts and circumstances as
would eDcite an honest &elief in a reasona&le mind acting on all the facts and
circumstances within the )nowledge of the magistrate that the charge made &y the
applicant for the warrant is true.
[33]
4ro&a&le cause does not mean actual and positive cause nor does it import
a&solute certainty. (he determination of the eDistence of pro&a&le cause is not
concerned with the +uestion of whether the oLense charged has &een or is &eing
committed in fact or whether the accused is guilty or innocent &ut only whether
the aEant has reasona&le grounds for his &elief.
[3/]
(he re+uirement is less than
certainty or proof, but more than suspicion or possibility.
[3*]
7n 4hilippine Furisprudence pro&a&le cause has &een uniformly de:ned as such
facts and circumstances which would lead a reasona&le discreet and prudent man
to &elieve that an oLense has &een committed and that the o&Fects sought in
connection with the oLense are in the place sought to &e searched.
[3!]
7t &eing the
duty of the issuing oEcer to issue or refuse to issue the warrant as soon as
practica&le after the application therefor is :led
[/#]
the facts warranting the
conclusion of pro&a&le cause must &e assessed at the time of such Fudicial
determination &y necessarily using legal standards then set forth in law an!
(urispru!ence, an! not those that have yet to be crafte! thereafter.
As already stated the de:nition of pro&a&le cause enunciated in #urgos, $r. vs.
Chief of $ta%, et al., supra, vis=a=vis the provisions of ,ections $ and 2 of 'ule 123
were the prevailing and controlling legal standards as they continue to &e &y which
a :nding of pro&a&le cause is tested. ,ince the proprietary of the issuance of a
search warrant is to &e determined at the time of the application therefor which in
turn must not &e too remote in time from the occurrence of the oLense alleged to
have &een committed the issuing Fudge in determining the eDistence of pro&a&le
cause can and should logically loo) to the touchstones in the laws therefore
enacted and the decisions already promulgated at the time and not to those which
had not yet even &een conceived or formulated.
7t is worth noting that neither the Constitution nor the 'ules of Court attempt to
de:ne pro&a&le cause o&viously for the purpose of leaving such matter to the
court%s discretion within the particular facts of each case. Although the Constitution
prohi&its the issuance of a search warrant in the a&sence of pro&a&le cause such
constitutional inhi&ition does not command the legislature to esta&lish a de:nition
or formula for determining what shall constitute pro&a&le cause.
[/1]
(hus Congress
despite its &road authority to fashion standards of reasona&leness for searches and
seiAures
[/2]
does not venture to ma)e such a de:nition or standard formulation of
pro&a&le cause nor categoriAe what facts and circumstances ma)e up the same
much less limit the determination thereof to and within the circumscription of a
particular class of evidence all in deference to Fudicial discretion and pro&ity.
[/$]
Accordingly to restrict the eDercise of discretion &y a Fudge &y adding a
particular re+uirement =the presentation of master tapes as intimated &y 20th
Century Fox> not provided nor implied in the law for a :nding of pro&a&le cause is
&eyond the realm of Fudicial competence or statemanship. 7t serves no purpose &ut
to stultify and constrict the Fudicious eDercise of a courtNs prerogatives and to
denigrate the Fudicial duty of determining the eDistence of pro&a&le cause to a mere
ministerial or mechanical function. (here is to repeat no law or rule which re+uires
that the eDistence of pro&a&le cause is or should &e determined solely &y a speci:c
)ind of evidence. ,urely this could not have &een contemplated &y the framers of
the Constitution and we do not &elieve that the Court intended the statement
in 20th Century Fox regarding master tapes as the dictum for all seasons and
reasons in infringement cases.
(urning now to the case at &ar it can &e gleaned from the records that the
lower court followed the prescri&ed procedure for the issuances of a search warrant9
=1> the eDamination under oath or aErmation of the complainant and his witnesses
with them particularly descri&ing the place to &e searched and the things to &e
seiAedB =2> an eDamination personally conducted &y the Fudge in the form of
searching +uestions and answers in writing and under oath of the complainant and
witnesses on facts personally )nown to themB and =$> the ta)ing of sworn
statements together with the aEdavits su&mitted which were duly attached to the
records.
(hereafter the court a quo made the following factual :ndings leading to the
issuance of the search warrant now su&Fect to this controversy9
7n the instant case the following facts have &een esta&lished9 =1> copyrighted video
tapes &earing titles enumerated in ,earch -arrant No. */0#1$ were &eing sold
leased distri&uted or circulated or oLered for sale lease distri&ution or
transferred or caused to &e transferred &y defendants at their video outlets without
the written consent of the private complainants or their assigneeB =2> recovered or
con:scated from defendantsN possession were video tapes containing copyrighted
motion picture :lms without the authority of the complainantB =$> the video tapes
originated from spurious or unauthoriAed personsB and =2> said video tapes were
eDact reproductions of the :lms listed in the search warrant whose copyrights or
distri&ution rights were owned &y complainants.
(he &asis of these facts are the aEdavits and depositions of NB7 ,enior Agent @auro
C. 'eyes Atty. 'ico <. 5omingo and 'ene C. BaltaAar. "otion 4ictures Association
of America 7nc. ="4AA> thru their counsel Atty. 'ico <. 5omingo :led a complaint
with the National Bureau of 7nvestigation against certain video esta&lishments one
of which is defendant for violation of 45 No. 2! as amended &y 45 No 1!**. Atty.
@auro C. 'eyes led a team to conduct discreet surveillance operations on said video
esta&lishments. 4er information earlier gathered &y Atty. 5omingo defendants
were engaged in the illegal sale rental distri&ution circulation or pu&lic eDhi&ition
of copyrighted :lms of "4AA without its written authority or its mem&ers. Onowing
that defendant ,unshine ;ome <ideo and its proprietor "r. 5anilo 4elindario were
not authoriAed &y "4AA to reproduce lease and possess for the purpose of selling
any of its copyrighted motion pictures he instructed his researcher "r. 'ene
BaltaAar to rent two video cassettes from said defendants on ?cto&er 21
1!*/. 'ene C. BaltaAar proceeded to ,unshine ;ome <ideo and rented tapes
containing @ittle ,hop of ;orror. ;e was issued rental slip No. 23$32 dated ?cto&er
21 1!*/ for 41#.## with a deposit of 41##.##. Again on 5ecem&er 11 1!*/ he
returned to ,unshine ;ome <ideo and rented 'o&ocop with a rental slip No. 212/1
also for 41#.##. ?n the &asis of the complaint of "4AA thru counsel Atty. @auro C.
'eyes personally went to ,unshine ;ome <ideo at No. 3 "ayfair Center "agallanes
Commercial Center "a)ati. ;is last visit was on 5ecem&er / 1!*/. (here he
found the video outlet renting leasing distri&uting video cassette tapes whose
titles were copyrighted and without the authority of "4AA.
Piven these facts a pro&a&le cause eDists. D D D.
[/2]
(he lower court su&se+uently eDecuted a volte=face despite its prior detailed
and su&stantiated :ndings &y stating in its order of Novem&er 22 1!** denying
petitioners% motion for reconsideration and +uashing the search warrant that I
D D D. (he two =2> cases have a common factual milieuB &oth involve alleged pirated
copyrighted :lms of private complainants which were found in the possession or
control of the defendants. ;ence the necessity of the presentation of the master
tapes from which the pirated :lms were allegedly copied is necessary in the instant
case to esta&lish the eDistence of pro&a&le cause.
[/1]
Being &ased solely on an unFusti:a&le and improper retroactive application of
the master tape re+uirement generated &y 20th Century Fox upon a factual
situation completely diLerent from that in the case at &ar and without anything
more this later order clearly de:es elemental fair play and is a gross reversi&le
error. 7n fact this o&servation of the Court in >a Chemise >acoste, $.A. vs.
Fernan!e*, et al. supra may Fust as easily apply to the present case9
A review of the grounds invo)ed D D D in his motion to +uash the search warrants
reveals the fact that they are not appropriate for +uashing a warrant. (hey are
matters of defense which should &e ventilated during the trial on the merits of the
case. D D D
As correctly pointed out &y petitioners a &lind espousal of the re+uisite of
presentation of the master tapes in copyright infringement cases as the prime
determinant of pro&a&le cause is too eDacting and impractica&le a re+uirement to
&e complied with in a search warrant application which it must not &e overloo)ed
is only an ancillary proceeding. Jurther on realistic considerations a strict
application of said re+uirement militates against the elements of secrecy and speed
which underlie covert investigative and surveillance operations in police
enforcement campaigns against all forms of criminality considering that the master
tapes of a motion picture re+uired to &e presented &efore the court consists of
several reels contained in circular steel casings which &ecause of their &ul) will
de:nitely draw attention unli)e diminutive o&Fects li)e video tapes which can &e
easily concealed.
[/3]
-ith hundreds of titles &eing pirated this onerous and tedious
imposition would &e multiplied a hundredfold &y Fudicial :at discouraging and
preventing legal recourses in foreign Furisdictions.
Piven the present international awareness and furor over violations in large
scale of intellectual property rights calling for transnational sanctions it &ears
calling to mind the Court%s admonition also in >a Chemise >acoste, supra that I
D D D. Judges all over the country are well advised to remem&er that court processes
should not &e used as instruments to unwittingly or otherwise aid counterfeiters
and intellectual pirates tie the hands of the law as it see)s to protect the Jilipino
consuming pu&lic and frustrate eDecutive and administrative implementation of
solemn commitments pursuant to international conventions and treaties.
III
(he amendment of ,ection 13 of 4residential 5ecree No. 2! &y 4residential
5ecree No. 1!*/
[//]
which should here &e pu&liciAed Fudicially &rought a&out the
revision of its penalty structure and enumerated additional acts considered violative
of said decree on intellectual property namely =1> directly or indirectly transferring
or causing to &e transferred any sound recording or motion picture or other audio0
visual wor)s so recorded with intent to sell lease pu&licly eDhi&it or cause to &e
sold leased or pu&licly eDhi&ited or to use or cause to &e used for pro:t such
articles on which sounds motion pictures or other audio0visual wor)s are so
transferred without the written consent of the owner or his assigneeB =2> selling
leasing distri&uting circulating pu&licly eDhi&iting or oLering for sale lease
distri&ution or possessing for the purpose of sale lease distri&ution circulation or
pu&lic eDhi&ition any of the a&ovementioned articles without the written consent of
the owner or his assigneeB and =$> directly or indirectly oLering or ma)ing availa&le
for a fee rental or any other form of compensation any e+uipment machinery
paraphernalia or any material with the )nowledge that such e+uipment machinery
paraphernalia or material will &e used &y another to reproduce without the consent
of the owner any phonograph record disc wire tape :lm or other article on which
sounds motion pictures or other audio0visual recordings may &e transferred and
which provide distinct &ases for criminal prosecution &eing crimes independently
punisha&le under 4residential 5ecree No. 2! as amended aside from the act of
infringing or aiding or a&etting such infringement under ,ection 2!.
(he trial court%s :nding that private respondents committed acts in &latant
transgression of 4residential 5ecree No. 2! all the more &olsters its :ndings of
pro&a&le cause which determination can &e reached even in the a&sence of master
tapes &y the Fudge in the eDercise of sound discretion. (he eDecutive concern and
resolve eDpressed in the foregoing amendments to the decree for the protection of
intellectual property rights should &e matched &y corresponding Fudicial vigilance
and activism instead of the apathy of su&mitting to technicalities in the face of
ample evidence of guilt.
(he essence of intellectual piracy should &e essayed in conceptual terms in
order to underscore its gravity &y an appropriate understanding
thereof. 7nfringement of a copyright is a trespass on a private domain owned and
occupied &y the owner of the copyright and therefore protected &y law and
infringement of copyright or piracy which is a synonymous term in this connection
consists in the doing &y any person without the consent of the owner of the
copyright of anything the sole right to do which is conferred &y statute on the
owner of the copyright.
[/*]
A copy of a piracy is an infringement of the original and it is no defense that the
pirate in such cases did not )now what wor)s he was indirectly copying or did not
)now whether or not he was infringing any copyrightB he at least )new that what he
was copying was not his and he copied at his peril. 7n determining the +uestion of
infringement the amount of matter copied from the copyrighted wor) is an
important consideration. (o constitute infringement it is not necessary that the
whole or even a large portion of the wor) shall have &een copied. 7f so much is
ta)en that the value of the original is sensi&ly diminished or the la&ors of the
original author are su&stantially and to an inFurious eDtent appropriated &y another
that is suEcient in point of law to constitute a piracy.
[/!]
(he +uestion of whether
there has &een an actiona&le infringement of a literary musical or artistic wor) in
motion pictures radio or television &eing one of fact
[*#]
it should properly &e
determined during the trial. (hat is the stage calling for conclusive or
preponderating evidence and not the summary proceeding for the issuance of a
search warrant wherein &oth lower courts erroneously re+uire the master tapes.
7n disregarding private respondent%s argument that ,earch -arrant No. */0#1$
is a general warrant the lower court o&served that 6it was worded in a manner that
the enumerated seiAa&le items &ear direct relation to the oLense of violation of ,ec.
13 of 45 2! as amended. 7t authoriAed only the seiAur=e> of articles used or
intended to &e used in the unlawful sale lease and other unconcerted acts in
violation of 45 2! as amended. D D D.8
[*1]
?n this point #ache an! Co., 7"hil.9, 3nc., et al. vs. 1ui*, et al.
[*2]
instructs and
enlightens9
A search warrant may &e said to particularly descri&e the things to &e seiAed when
the description therein is as speci:c as the circumstances will ordinarily allow
=4eople vs. 'u&io 1/ 4hil. $*2>B or when the description eDpresses a conclusion of
fact I not of law I &y which the warrant oEcer may &e guided in ma)ing the
search and seiAure =i!em. dissent of A&ad ,antos ).>B or when the things descri&ed
are limited to those which &ear direct relation to the oLense for which the warrant is
&eing issued =,ec. 2 'ule 123 'evised 'ules of Court>. D D D. 7f the articles desired
to &e seiAed have any direct relation to an oLense committed the applicant must
necessarily have some evidence other than those articles to prove the said
oLenseB and the articles su&Fect of search and seiAure should come in handy
merely to strengthen such evidence. D D D.
?n private respondents% averment that the search warrant was made applica&le
to more than one speci:c oLense on the ground that there are as many oLenses of
infringement as there are rights protected and therefore to issue one search
warrant for all the movie titles allegedly pirated violates the rule that a search
warrant must &e issued only in connection with one speci:c oLense the lower court
said9
D D D. As the face of the search warrant itself indicates it was issued for violation of
,ection 13 45 2! as amended only. (he speci:cations therein =in AnneD A> merely
refer to the titles of the copyrighted motion picturesC:lms &elonging to private
complainants which defendants were in controlCpossession for sale lease
distri&ution or pu&lic eDhi&ition in contravention of ,ec. 13 45 2! as amended.
[*$]
(hat there were several counts of the oLense of copyright infringement and the
search warrant uncovered several contra&and items in the form of pirated video
tapes is not to &e confused with the num&er of oLenses charged. (he search
warrant herein issued does not violate the one0speci:c0oLense rule.
7t is pointless for private respondents to insist on compliance with the
registration and deposit re+uirements under 4residential 5ecree No. 2! as
prere+uisites for invo)ing the court%s protective mantle in copyright infringement
cases. As eDplained &y the court &elow9
5efendants0movants contend that 45 2! as amended covers only producers who
have complied with the re+uirements of deposit and notice =in other words
registration> under ,ections 2! and 1# thereof. A&sent such registration as in this
case there was no right created hence no infringement under 45 2! as
amended. (his is not well0ta)en.
As correctly pointed out &y private complainants0oppositors the 5epartment of
Justice has resolved this legal +uestion as far &ac) as 5ecem&er 12 1!/* in its
?pinion No. 1!1 of the then ,ecretary of Justice <icente A&ad ,antos which stated
that ,ections 23 and 1# do not apply to cinematographic wor)s and 45 No. 2! 6had
done away with the registration and deposit of cinematographic wor)s8 and that
6even without prior registration and deposit of a wor) which may &e entitled to
protection under the 5ecree the creator can :le action for infringement of its
rights.8 ;e cannot demand however payment of damages arising from
infringement. (he same opinion stressed that 6the re+uirements of registration and
deposit are thus retained under the 5ecree not as conditions for the ac+uisition of
copyright and other rights &ut as prere+uisites to a suit for damages.8 (he
statutory interpretation of the EDecutive Branch &eing correct is entitled =to> weight
and respect.
DDD DDD DDD
5efendants0movants maintain that complainant and his witnesses led the Court to
&elieve that a crime eDisted when in fact there was none. (his is wrong. As earlier
discussed 45 2! as amended does not re+uire registration and deposit for a
creator to &e a&le to :le an action for infringement of his rights. (hese conditions
are merely pre0re+uisites to an action for damages. ,o as long as the proscri&ed
acts are shown to eDist an action for infringement may &e initiated.
[*2]
Accordingly the certi:cations
[*1]
from the Copyright ,ection of the National @i&rary
presented as evidence &y private respondents to show non0registration of some of
the :lms of petitioners assume no evidentiary weight or signi:cance whatsoever.
Jurthermore a closer review of 4residential 5ecree No. 2! reveals that even
with respect to wor)s which are re+uired under ,ection 23 thereof to &e registered
and with copies to &e deposited with the National @i&rary such as &oo)s including
composite and cyclopedic wor)s manuscripts directories and gaAetteersB and
periodicals including pamphlets and newspapersB lectures sermons addresses
dissertations prepared for oral deliveryB and letters the failure to comply with said
re+uirements does not deprive the copyright owner of the right to sue for
infringement. ,uch non0compliance merely limits the remedies availa&le to him and
su&Fects him to the corresponding sanction.
(he reason for this is eDpressed in ,ection 2 of the decree which prefaces its
enumeration of copyrighta&le wor)s with the eDplicit statement that 6the rights
granted under this 5ecree shall from the moment of creation su&sist with respect
to any of the following classes of wor)s.8 (his means that under the present state
of the law the copyright for a wor) is ac+uired &y an intellectual creator from the
moment of creation even in the a&sence of registration and deposit. As has &een
authoritatively clari:ed9
(he registration and deposit of two complete copies or reproductions of the wor)
with the National @i&rary within three wee)s after the :rst pu&lic dissemination or
performance of the wor) as provided for in ,ection 23 =4.5. No. 2! as amended> is
not for the purpose of securing a copyright of the wor) &ut rather to avoid the
penalty for non0compliance of the deposit of said two copies and in order to recover
damages in an infringement suit.
[*3]
?ne distressing o&servation. (his case has &een fought on the &asis of and its
resolution long delayed &y resort to technicalities to a virtually a&usive eDtent &y
private respondents without so much as an attempt to adduce any credi&le
evidence showing that they conduct their &usiness legitimately and fairly. (he fact
that private respondents could not show proof of their authority or that there was
consent from the copyright owners for them to sell lease distri&ute or circulate
petitioners% copyrighted :lms immeasura&ly &olsters the lower court%s initial :nding
of pro&a&le cause. (hat private respondents are licensed &y the <ideogram
'egulatory Board does not insulate them from criminal and civil lia&ility for their
unlawful &usiness practices. -hat is more deplora&le is that the reprehensi&le acts
of some unscrupulous characters have stigmatiAed the 4hilippines with an unsavory
reputation as a hu& for intellectual piracy in this part of the glo&e formerly in the
records of the Peneral Agreement on (ariLs and (rade and now of the -orld (rade
?rganiAation. ,uch acts must not &e glossed over &ut should &e denounced and
repressed lest the 4hilippines &ecome an international pariah in the glo&al
intellectual community.
!"ERE$ORE, the assailed Fudgment and resolution of respondent Court of
Appeals and necessarily inclusive of the order of the lower court dated Novem&er
22 1!** are here&y 'E<E',E5 and ,E( A,75E. (he order of the court a quo of
,eptem&er 1 1!** upholding the validity of ,earch -arrant No. */0#1$ is here&y
'E7N,(A(E5 and said court is 57'EC(E5 to ta)e and eDpeditiously proceed with
such appropriate proceedings as may &e called for in this case. (re&le costs are
further assessed against private respondents.
O OR&ERE&.