Title
Supreme Court
Olano vs. Lim Eng Co.
Case
G.R. No. 195835
Decision Date
Mar 14, 2016
LEC accused Metrotech of copyright infringement over hatch door designs for a high-end project. Supreme Court ruled hatch doors lacked artistic elements, dismissing claims as functional objects are not copyrightable.

Case Summary (G.R. No. 195835)

Petitioner and Respondent Roles

• Petitioners fabricated and installed hatch doors on floors 23–41 of the Project.
• Respondent originally supplied designs, secured a subcontract for floors 7–22, and registered copyrights on shop plans and ornamental models.

Key Dates

• July 16, 2002–January 15, 2004: Submission and approval of final shop drawings by LEC.
• June 24 to July 6, 2004: LEC demands cessation, deposits drawings at National Library, obtains Certificates of Registration Nos. 1–2004–13, 1–2004–14 (plans) and H‐2004‐566, H‐2004‐567 (ornamental models).
• August 13, 2004: NBI‐assisted search, confiscation of Metrotech’s doors; DOJ complaint filed.
• August 18, 2005 to May 25, 2006: Successive DOJ resolutions dismissing, then finding probable cause, then again dismissing for lack of probable cause.
• July 9, 2010 & February 24, 2011: Court of Appeals annuls DOJ dismissal and reinstates finding of probable cause.
• March 14, 2016: Supreme Court decision under review.

Applicable Law

• 1987 Constitution (separation of powers; limited judicial review of executive discretion).
• Republic Act No. 8293 (Intellectual Property Code of the Philippines):
– Section 172(i): copyrightable subject matter includes “illustrations, maps, plans, sketches…architectural works.”
– Section 172(h): “original ornamental designs or models for articles of manufacture.”
– Section 177.1 & Section 216: acts constituting copyright infringement.
• Rules of Court, Rule 45 (certiorari).

Factual Background

LEC designed, copyrighted, and first installed interior and exterior hatch doors for a high‐end condominium. Metrotech later fabricated similar doors based on contractor‐provided drawings. LEC alleged infringement, sought investigative action, and initiated DOJ proceedings.

Preliminary Investigation and DOJ Resolutions

  1. Investigating Prosecutor (Aug 18, 2005): dismissed for lack of evidence that hatch doors themselves were within the registered plans or ornamental models.
  2. DOJ First Review (Nov 16, 2005): denied review.
  3. DOJ Second Review (Jan 27, 2006): reversed dismissal, found probable cause based on alleged artistic features.
  4. DOJ Final Resolution (Mar 10 & May 25, 2006): granted petitioners’ reconsideration, held no probable cause due to purely utilitarian nature of doors.

Court of Appeals Findings

The CA held that the DOJ’s shifting conclusions evidenced grave abuse of discretion. Applying a broad view of probable cause, it reinstated the finding that petitioners likely infringed both the plans and ornamental models by reproducing LEC’s designs without consent.

Issue for Supreme Court Review

Whether the Court of Appeals correctly annulled the DOJ’s dismissal for lack of probable cause, and whether the DOJ committed grave abuse of discretion in determining the absence of probable cause.

Supreme Court Ruling

The Supreme Court reversed the CA, reinstating the DOJ resolutions dismissing the complaint. It held that:
• Judicial review of the Secretary of Justice’s probable‐cause finding is limited to grave abuse of discretion.
• Inconsistent DOJ resolutions, standing alone, do not establish such abuse absent a gross misapprehension of facts.

Legal Reasoning

  1. Grave Abuse Standard: courts may only overturn executive probable‐cause determinations if exercised in a capricious, arbitrary manner betraying jurisdictional failure.
  2. Copyright Elements: infringement requires (a) valid ownership of a copyrighted work and (b) proof of unauthorized reproduction.
  3. Scope of Registration:
    – Certificates 1‐2004‐13/14 cover only the dr

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