October 1, 2014
Is the appearance of an engine design copyrightable? This question was answered by the Court of Appeals in the case of TLA Corporation, et al. vs. Honda Motor Company Ltd. and the National Library (CA-G.R. CV No. 98777, Aug. 5, 2014).
Intellectual property owners sometimes seek copyright protection when its product designs fail to meet the requirements under trademark and patent laws. This legal experimentation led Honda Motor Company Ltd. (Honda) to seek copyright protection for its engine designs. Under Section 172 (h) of the Intellectual Property Code (IP Code), copyright protection is available for literary and artistic works that include “original ornamental design or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art.” The National Library granted Honda several copyright registrations for its engine designs. Honda then took steps to enforce its rights by sending cease and desist letters to local distributors of other engine brand, who it believed copied the layout and color-scheme of its “copyrighted” engine designs. Instead of giving in to Honda’s demands, however, the local distributors banded together and filed a petition in the regional trial court seeking the cancellation of Honda’s copyright registrations. The distributors argued that Honda’s engine designs are not literary and artistic works, or works of applied art, which are entitled to copyright protection. In response, Honda argued that while some aspects of the engine’s designs are utilitarian and dictated by some scientific process, other aspects are purely artistic and should be considered works of art. Honda cited as an example the design feature that color-codes the various components of its general purpose engine. Honda also relied on the specifications of the general purpose engine, which were appended to its applications for copyright registrations to show that its designs had artistic value.
In reaching a decision, both the trial court and Court of Appeals relied on the Supreme Court case of Ching vs. Salinas (GR No. 161295, June 29, 2005), which explained that a useful article and industrial design may be copyrightable only if such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article. Building upon the Ching case, the Court of Appeals further explained that to be copyrightable the design must be capable of existing independently from the article itself, meaning that, at the very least, the design must be able to stand on its own in terms of decorative quality or value. In the case at bar, the Court of Appeals agreed with the trial court that the color-coded components of Honda’s engine do not meet this two-part test, and hence not copyrightable. They are not artistic creations with incidental utilitarian functions or artistic works incorporated in a useful article. Moreover, the specifications in the copyright applications merely describe the original or unique appearance of the engine, and such appearance cannot be equated to a decorative quality or artistic work. Therefore, the Court of Appeals upheld the trial court’s decision to cancel the copyright registrations for Honda’s engine designs.
Honda’s action in enforcing its copyright may have backfired, but the sky did not fall on the eligibility of all useful articles and industrial designs to obtain copyright protection. Going forward, before a court enforces a copyright registration for useful articles and industrial designs, it will employ a two-part test of separability and artistic value to determine the copyrightability of a utilitarian item.