Laktao vs. Paglinawan

Reproduction of another person's work without the owner's consent violates the Law on Intellectual Property even if the reproduction is not an "improper copy" — it is enough that the work has been reproduced without consent, even merely to annotate, add something to it, or improve any edition thereof.

The parties were both authors of Spanish-Tagalog dictionaries published in Manila. The plaintiff published his dictionary in 1889, during the Spanish regime, when the Law of January 10, 1879 on Intellectual Property was in force in the Philippine Islands, having been extended there by royal decree of May 5, 1887 and published in the Gaceta de Manila on June 15, 1887. The defendant published his dictionary in 1913, after the change of sovereignty from Spain to the United States. The dispute concerned whether the later dictionary reproduced the earlier one without the plaintiff's consent, and whether the plaintiff's rights under the Spanish law survived the change of sovereignty.

Pedro Serrano Laktaw was the registered owner and author of a literary work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary), published in Manila in 1889 by the printing establishment La Opinion. Mamerto Paglinawan later published his own work entitled Diccionariong Kastila-Tagalog (Spanish-Tagalog Dictionary), printed in the same city in 1913 by the press El Progreso.

On February 20, 1915, Laktaw filed a complaint in the Court of First Instance of the City of Manila alleging that Paglinawan, without his consent, reproduced his literary work and improperly copied the greater part thereof in the later dictionary. The complaint alleged that this act violated article 7 of the Law of January 10, 1879 on Intellectual Property, caused irreparable injuries to the plaintiff, who was surprised when, on publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary), he learned of the fact, and occasioned damages of $10,000. Laktaw prayed that the defendant be ordered to withdraw from sale all stock of the later work and to pay the sum of $10,000 with costs. Paglinawan answered with a general denial of each and every allegation and prayed for absolution.

After trial, the court on August 20, 1915 rendered judgment absolving the defendant, on the ground that a comparison of the two dictionaries did not show that the defendant's work was an improper copy of the plaintiff's, which had been published and offered for sale for about twenty-five years or more. The trial court had chosen at random some words from the dictionaries in making its comparison. The trial court also expressed the view that dictionaries "have to be made with the aid of others" and should be "common property for all who may desire to write a new dictionary," likening a dictionary to a pasture ground from which anyone could take whatever he needed.

Upon a complete and minute comparison of the two works, the Supreme Court found that of the 23,560 Spanish words in the defendant's dictionary, only 3,108 were the defendant's own, the remaining 20,452 words having been reproduced or copied from the plaintiff's dictionary. The defendant also literally reproduced the equivalents, definitions, and different meanings in Tagalog given in the plaintiff's dictionary, and even the printer's errors appearing in the plaintiff's work, a fact showing that the defendant literally copied those words and their meanings. The plaintiff's certificate of registration of his property rights, issued in 1890, had been lost during the revolution against Spain, and no trace of its issuance could be obtained in the Division of Archives of the Executive Bureau, but the first page of the dictionary bore the words "Es propiedad del autor" (All rights reserved), and the plaintiff had obtained the permission of the Governor-General on November 24, 1889 to print and publish the dictionary after examination by the permanent committee of censors.

• Reproduction of the Work: The appellant contended that the lower court erred in not declaring that the defendant had reproduced the plaintiff's work.
• Violation of Article 7: The appellant contended that the defendant had violated article 7 of the Law of January 10, 1879 on Intellectual Property.

• General Denial: The defendant denied generally each and every allegation of the complaint and prayed the court to absolve him from the complaint.
• No Improper Copy: The trial court, whose judgment the defendant defended on appeal, found that the defendant's dictionary was not an improper copy of the plaintiff's, and reasoned that dictionaries should be common property for all who may desire to write a new dictionary.

• Reproduction of the Work: Whether the defendant reproduced the plaintiff's literary work.
• Violation of Article 7: Whether such reproduction violated article 7 of the Law of January 10, 1879 on Intellectual Property.

• Reproduction of the Work: Yes. A complete and minute comparison showed that 20,452 of the 23,560 Spanish words in the defendant's dictionary were copied and reproduced from the plaintiff's dictionary, along with the Tagalog equivalents, definitions, and even the printer's errors.
• Violation of Article 7: Yes. Article 7 prohibits any reproduction of another's work without the owner's consent, even merely to annotate, add something to it, or improve any edition thereof; it is not necessary that the work be an "improper copy" of a previously published work.

• Reproduction of the Work: The trial court's conclusion was based on a random and incomplete comparison of some words from the dictionaries, and was therefore inaccurate and not well founded. A complete comparison, guided by the defendant's own memorandum enumerating the words in his dictionary but not in the plaintiff's, and by the plaintiff's notes detailing the terms copied in relation to each letter of the alphabet, showed that of the 23,560 Spanish words in the defendant's dictionary, only 3,108 were the defendant's own, the remaining 20,452 having been reproduced or copied from the plaintiff's dictionary. The defendant also literally reproduced the equivalents, definitions, and different meanings in Tagalog given in the plaintiff's dictionary, and even the printer's errors, which fact showed that the defendant, in preparing his dictionary, literally copied those Spanish words and their meanings and equivalents in Tagalog from the plaintiff's dictionary. The defendant's substitution of "voy a Tayabas" for the plaintiff's "voy a Bulacan" in the example for the preposition a did not show the absence of copying, but rather the opposite, for one who intends to imitate the work of another tries to make it appear that there is some difference between the original and the imitation.

• Violation of Article 7: Article 7 provides that nobody may reproduce another person's work without the owner's consent, even merely to annotate or add anything to it, or improve any edition thereof. Therefore, in order for the article to be violated, it is not necessary, as the trial court seemed to have understood, that a work should be an improper copy of another work previously published; it is enough that another's work has been reproduced without the consent of the owner. The trial court's idea that dictionaries should be common property was erroneous, for although words are not the property of anybody, their definitions, the examples that explain their sense, and the manner of expressing their different meanings may constitute a special work, as stated by Danvilla y Collado, the author of the Law of January 10, 1879, and as held by the correctional court of the Seine on August 16, 1864. The plaintiff's property right to his dictionary was recognized and granted by article 7, in connection with article 2, of the law, and the law was in force in the Islands when the dictionary was published in 1889. Although the plaintiff's certificate of registration had been lost during the revolution, the words "Es propiedad del autor" on the first page of the dictionary, taken together with the permission granted by the Governor-General on November 24, 1889 to print and publish the dictionary after examination by the permanent committee of censors, constituted sufficient proof of compliance with article 36 of the law, not overcome by any evidence on the part of the defendant. Even assuming the law ceased to operate upon the termination of Spanish sovereignty, the plaintiff's property right, having vested under the law, could not be deprived merely because the law was no longer in force, for article 13 of the Treaty of Paris of December 10, 1898 declared that rights to literary, artistic, and industrial properties acquired by subjects of Spain in the ceded territories shall continue to be respected. The property right would be illusory if the author could not prevent reproduction without his consent and enforce his right through the courts.

• Copyright Protection for Dictionaries — Although words are not the property of anybody, their definitions, the examples that explain their sense, and the manner of expressing their different meanings may constitute a special work protected by intellectual property law. The Court applied this principle to hold that the plaintiff's dictionary was protected property under article 7, in connection with article 2, of the Law of January 10, 1879, and that the defendant's reproduction of 20,452 words with their Tagalog equivalents and even the printer's errors constituted a violation.

• Reproduction Without Consent — Article 7 of the Law of January 10, 1879 prohibits any reproduction of another's work without the owner's consent, even merely to annotate, add something to it, or improve any edition thereof; it is not necessary to show that the work is an "improper copy" of a previously published work. The Court applied this to find a violation, rejecting the trial court's view that a dictionary should be common property for all who desire to write a new dictionary.

• Vested Rights Survive Change of Sovereignty — Intellectual property rights acquired under Spanish law continue to be respected after the change of sovereignty, as declared in article 13 of the Treaty of Paris of December 10, 1898, which provided that rights to literary, artistic, and industrial properties acquired by subjects of Spain in the ceded territories at the time of the exchange of ratifications shall continue to be respected. The Court applied this to hold that the plaintiff's right under the 1879 law remained enforceable notwithstanding the law's cessation upon the termination of Spanish sovereignty.

• "Therefore, in order that said article may be violated, it is not necessary, as the court below seems to have understood, that a work should be an improper copy of another work previously published. It is enough that another's work has been reproduced without the consent of the owner, even though it be only to annotate, add something to it, or improve any edition thereof." — This passage states the ratio decidendi: the controlling interpretation of article 7, rejecting the trial court's requirement of an "improper copy."

• "The protection of the law cannot be denied to the author of a dictionary, for although words are not the property of anybody, their definitions, the example that explain their sense, and the manner of expressing their different meanings, may constitute a special work." — Quoted from Danvilla y Collado, this passage establishes the doctrinal basis for extending copyright protection to dictionaries.

• "Such idea is very erroneous, especially in relation to the Law of Intellectual Property." — The Court's rejection of the trial court's "pasture ground" analogy, which had treated dictionaries as common property.

• "If the author of a book, after its publication, cannot prevent its reproduction by any person who may want to reproduce it, then the property right granted him is reduced to a very insignificant thing and the effort made in the production of the book is no way rewarded." — Quoted from Manresa, this passage articulates the rationale for the exclusive right of reproduction and the necessity of judicial enforcement.

• Danvilla y Collado, La Propiedad Intelectual (1st ed., p. 362) — Cited as authoritative commentary by the author of the Law of January 10, 1879, supporting the proposition that dictionaries are entitled to legal protection.

• Correctional Court of the Seine, Aug. 16, 1864 — Cited as a foreign precedent holding that a dictionary constitutes property, provided that the greater part of the words contain new meanings, which may belong only to the first person who published them.

• Manresa, Commentaries on the Civil Code (vol. 3, pp. 616, 633, 3d ed.) — Cited for the proposition that the concrete statement of the right to literary property is found in the doctrine that nobody may reproduce another's work without the consent of its owner, and for the rationale that the right to reproduce is the most important form of realizing the economic advantages of a book.

• Treaty of Paris, Dec. 10, 1898, art. 13 — Cited as controlling international law providing that rights to literary, artistic, and industrial properties acquired by subjects of Spain in the ceded territories shall continue to be respected after the change of sovereignty.

• Article 7, Law of January 10, 1879 on Intellectual Property — The central provision prohibiting reproduction of another's work without the owner's consent, even merely to annotate, add, or improve an edition; the Court held this provision was violated by the defendant's reproduction of the plaintiff's dictionary.

• Article 2, Law of January 10, 1879 — Recognized the exclusive right of the author, who is the absolute owner of his own work, to produce it; cited in connection with article 7 as the basis of the plaintiff's property right.

• Article 36, Law of January 10, 1879 — The prerequisite to the enjoyment of the benefits of the law; the Court found sufficient proof of compliance through the words "Es propiedad del autor" on the first page of the dictionary and the Governor-General's permission of November 24, 1889.

• Article 56, Law of January 10, 1879 — Provided that the law took effect in the Islands six months after its promulgation or publication; the Court noted this to establish that the law was in force when the plaintiff's dictionary was published in 1889.

• Article 428, Civil Code — Provided that the author of a literary, scientific, or artistic work has the right to exploit it and dispose thereof at will; cited to support the author's exclusive right of reproduction.

• Article 13, Treaty of Paris, Dec. 10, 1898 — Declared that rights to literary, artistic, and industrial properties acquired by subjects of Spain in the ceded territories shall continue to be respected; applied to hold that the plaintiff's vested right survived the change of sovereignty.

Arellano, C.J., Torres, and Street, JJ., concurred. Carson and Malcolm, JJ., concurred in the result.