Intellectual Property

1. Copyright
A. General Principles of Intellectual Property It is a legal concept that gives the creator of original work exclusive rights to
it, usually for a limited period of time. It is literally “the right to copy”, but
1. Natural Rights Perspective (Labor Theory) also gives the copyright holder the right to be credited for work, to determine
Similar difficulties afflict efforts to apply labor theory to intellectual who may adapt the work to other forms, to determine who may perform the
property. The problems begin at the threshold. As was true of utilitarianism, work, to benefit financially from the work, and other related rights.
it is not altogether clear that the labor theory supports any sort of intellectual-
property law. The source of the difficulty is ambiguity in Locke's original 2. Trademarks
rationale for property rights – from which this entire theory springs. Why A distinctive mark of authenticity through which the merchandise of a
exactly should labor upon a resource held "in common" entitle the laborer to a particular producer or manufacturer may be distinguished from that of others,
property right in the resource itself? Scattered in Chapter 5 of the Second and its sole function is to designate distinctively the origin of the products to
Treatise can be found six related but distinguishable answers to that question. which it is attached.
a and inventors the carrot of monopoly power and (b) the aggregate
losses generated by such a system of incentives (the consumer surplus 3. Patents
sacrificed when authors and inventors price their creations above the marginal It is a set of exclusive rights granted by a State to an inventor or his assignee
costs of producing them, the "administrative costs" of interpreting and for a fixed period of time in exchange for a disclosure of an invention.
enforcing intellectual-property rights, etc.) In rougher terms, incentive theory
urges a lawmaker to establish or increase intellectual-property protection when D. Philippine Laws
doing so would help consumers by stimulating creativity more than it would
hurt them by constricting their access to intellectual products or raising their 1. Article 721 of the Civil Code
taxes. By intellectual creation, the following persons acquire ownership:
1. The author with regard to his literary, dramatic, historical, legal.
B. Constitutional Basis Philosophical, scientific or other work;
2. The composer, as to his musical composition;
1. US Constitution, Article 1, Sec. 8 (8 IP Clause) 3. The painter, sculptor, or other artist, with respect to the product of his art;
Clause 8. To promote the Progress of Science and useful Arts, by 4. The scientist or technologist or any other person with regard to discovery or
securing for limited Times to Authors and Inventors the exclusive Right to invention.
their respective Writings and Discoveries;
2. Article 722 of the Civil Code
2. Philippine Constitution, Article XIV, Section 13 The author and the composer, mentioned in Nos. 1 and 2 of the preceding
The State shall protect and secure the exclusive rights of scientists, article, shall have the ownership of their creations even before the publication
inventors, artists, and other gifted citizens to their intellectual property and of the same. Once their works are published, their rights are governed by the
creations, particularly when beneficial to the people, for such period as may Copyright laws.
be provided by law. The painter, sculptor or other artist shall have dominion over the product
of his art even before it copyrighted.
C. Modes of Intellectual Property (Definitions)
 The scientist or technologist has the ownership of his discovery or
invention even before it is patented. Section 4. Definitions. - 4.1. The term "intellectual property rights" consists
3. Article 1625 of the Civil Code of:
An assignment of a credit, right or action shall produce no effect as a) Copyright and Related Rights;
against third person, unless it appear in a public instrument, or the instrument b) Trademarks and Service Marks;
is recorded in the Registry of Property in case the assignment involves real c) Geographic Indications;
property. d) Industrial Designs;
e) Patents;
RA 8293 f) Layout-Designs (Topographies) of Integrated Circuits; and
Section 1. Title. - This Act shall be known as the "Intellectual Property Code g) Protection of Undisclosed Information (n, TRIPS).
of the Philippines."
4.2. The term "technology transfer arrangements" refers to contracts or
Section 2. Declaration of State Policy. - The State recognizes that an effective agreements involving the transfer of systematic knowledge for the
intellectual and industrial property system is vital to the development of manufacture of a product, the application of a process, or rendering of a service
domestic and creative activity, facilitates transfer of technology, attracts including management contracts; and the transfer, assignment or licensing of
foreign investments, and ensures market access for our products. It shall all forms of intellectual property rights, including licensing of computer
protect and secure the exclusive rights of scientists, inventors, artists and other software except computer software developed for mass market.
gifted citizens to their intellectual property and creations, particularly when 4.3. The term "Office" refers to the Intellectual Property Office created by this
beneficial to the people, for such periods as provided in this Act. Act.
4.4. The term "IPO Gazette" refers to the gazette published by the Office under
The use of intellectual property bears a social function. To this end, the State this Act. (n)
shall promote the diffusion of knowledge and information for the promotion
of national development and progress and the common good. Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To
It is also the policy of the State to streamline administrative procedures of administer and implement the State policies declared in this Act, there is
registering patents, trademarks and copyright, to liberalize the registration on hereby created the Intellectual Property Office (IPO) which shall have the
the transfer of technology, and to enhance the enforcement of intellectual following functions:
property rights in the Philippines. (n)
a) Examine applications for grant of letters patent for inventions and
Section 3. International Conventions and Reciprocity. - Any person who is a register utility models and industrial designs;
national or who is domiciled or has a real and effective industrial establishment
in a country which is a party to any convention, treaty or agreement relating to b) Examine applications for the registration of marks, geographic
intellectual property rights or the repression of unfair competition, to which indication, integrated circuits;
the Philippines is also a party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the extent necessary to give c) Register technology transfer arrangements and settle disputes
effect to any provision of such convention, treaty or reciprocal law, in addition involving technology transfer payments covered by the provisions of
to the rights to which any owner of an intellectual property right is otherwise Part II, Chapter IX on Voluntary Licensing and develop and
entitled by this Act. (n) implement strategies to promote and facilitate technology transfer;
 when incorporated in a medium that the computer can read, of causing the
d) Promote the use of patent information as a tool for technology computer to perform or achieve a particular task or result;
development;
171.5. "Public lending" is the transfer of possession of the original or a copy
e) Publish regularly in its own publication the patents, marks, utility of a work or sound recording for a limited period, for non-profit purposes, by
models and industrial designs, issued and approved, and the an institution the services of which are available to the public, such as public
technology transfer arrangements registered; library or archive;

f) Administratively adjudicate contested proceedings affecting 171.6. "Public performance", in the case of a work other than an audiovisual
intellectual property rights; and work, is the recitation, playing, dancing, acting or otherwise performing the
work, either directly or by means of any device or process; in the case of an
g) Coordinate with other government agencies and the private sector audiovisual work, the showing of its images in sequence and the making of the
efforts to formulate and implement plans and policies to strengthen the sounds accompanying it audible; and, in the case of a sound recording, making
protection of intellectual property rights in the country. the recorded sounds audible at a place or at places where persons outside the
normal circle of a family and that family's closest social acquaintances are or
5.2. The Office shall have custody of all records, books, drawings, can be present, irrespective of whether they are or can be present at the same
specifications, documents, and other papers and things relating to intellectual place and at the same time, or at different places and/or at different times, and
property rights applications filed with the Office. (n) where the performance can be perceived without the need for communication
within the meaning of Subsection 171.3;
Section 171. Definitions. - For the purpose of this Act, the following terms
have the following meaning: 171.7. "Published works" means works, which, with the consent of the authors,
are made available to the public by wire or wireless means in such a way that
171.1. "Author" is the natural person who has created the work; members of the public may access these works from a place and time
individually chosen by them: Provided, That availability of such copies has
171.2. A "collective work" is a work which has been created by two (2) or been such, as to satisfy the reasonable requirements of the public, having
more natural persons at the initiative and under the direction of another with regard to the nature of the work;
the understanding that it will be disclosed by the latter under his own name
and that contributing natural persons will not be identified; 171.8. "Rental" is the transfer of the possession of the original or a copy of a
work or a sound recording for a limited period of time, for profit-making
171.3. "Communication to the public" or "communicate to the public" means purposes;
the making of a work available to the public by wire or wireless means in such
a way that members of the public may access these works from a place and 171.9. "Reproduction" is the making of one (1) or more copies of a work or a
time individually chosen by them; sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a);

171.4. A "computer" is an electronic or similar device having information- 171.10. A "work of applied art" is an artistic creation with utilitarian functions
processing capabilities, and a "computer program" is a set of instructions or incorporated in a useful article, whether made by hand or produced on an
expressed in words, codes, schemes or in any other form, which is capable industrial scale;
171.11. A "work of the Government of the Philippines" is a work created by 172.2. Works are protected by the sole fact of their creation, irrespective of
an officer or employee of the Philippine Government or any of its subdivisions their mode or form of expression, as well as of their content, quality and
and instrumentalities, including government-owned or controlled corporations purpose. (Sec. 2, P.D. No. 49a)
as a part of his regularly prescribed official duties.
E. Copyright Act of 1976 [17 US 102 (a)]
CHAPTER II Copyright protection subsists, in accordance with this title, in original
ORIGINAL WORKS works of authorship fixed in any tangible medium of expression, now known
or later developed, from which they can be perceived, reproduced, or otherwise
Section 172. Literary and Artistic Works. - 172.1. Literary and artistic works, communicated, either directly or with the aid of a machine or device. Works
hereinafter referred to as "works", are original intellectual creations in the of authorship include the following categories:
literary and artistic domain protected from the moment of their creation and (1) literary works;
shall include in particular: (2) musical works, including any accompanying words;
(a) Books, pamphlets, articles and other writings; (3) dramatic works, including any accompanying music;
(b) Periodicals and newspapers; (4) pantomimes and choreographic works;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, (5) pictorial, graphic, and sculptural works;
whether or not reduced in writing or other material form; (6) motion pictures and other audiovisual works;
(d) Letters; (7) sound recordings; and
(e) Dramatic or dramatico-musical compositions; choreographic works or (8) architectural works.
entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography F. Cases
or other works of art; models or designs for works of art; 1. Santos vs McCullough Printing Company
(h) Original ornamental designs or models for articles of manufacture, whether Facts:
or not registrable as an industrial design, and other works of applied art; This is an action for damages based on the provisions of Articles 721
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works and 722 of the Civil Code of the Philippines, allegedly on the unauthorized
relative to geography, topography, architecture or science; use, adoption and appropriation by the defendant company of plaintiff's
(j) Drawings or plastic works of a scientific or technical character; intellectual creation or artistic design for a Christmas Card. The design depicts
(k) Photographic works including works produced by a process analogous to "a Philippine rural Christmas time scene consisting of a woman and a child in
photography; lantern slides; a nipa hut adorned with a star-shaped lantern and a man astride a carabao,
(l) Audiovisual works and cinematographic works and works produced by a beside a tree, underneath which appears the plaintiff's pen name, Malang."
process analogous to cinematography or any process for making audio-visual The complaint alleges that plaintiff Mauro Malang Santos designed
recordings; for former Ambassador Felino Neri, for his personal Christmas Card greetings
(m) Pictorial illustrations and advertisements; for the year 1959, the artistic motif in question. The following year the
(n) Computer programs; and defendant McCullough Printing Company, without the knowledge and
(o) Other literary, scholarly, scientific and artistic works. authority of plaintiff, displayed the very design in its album of Christmas cards
and offered it for sale, for a price. For such unauthorized act of defendant,
plaintiff suffered moral damages to the tune of P16,000.00, because it has
 placed plaintiff's professional integrity and ethics under serious question and Filipino Society is the owner of certain musical compositions among
caused him grave embarrassment before Ambassador Neri. He further prayed which are the songs entitled: Dahil Sa’yo, Sapagkat Ikaw ay Akin, Sapagkat
for the additional sum of P3,000.00 by way of attorney's fee. Kami ay Tao lamang and the Nearness of You.
Tan is the operator of a restaurant where a combo with professional
Issue: singers, hired to play and sing musical compositions to entertain and amuse
Whether Santos is entitled for protection, notwithstanding the fact that customers therein, were playing and singing the above mentioned
he has not copyrighted his design. compositions without any license or permission from the appellant to play or
sing the same.
Ruling: FS demanded payment of necessary license fee but the demand was
No. ignored, hence, they filed a complaint for infringement of copyright against
The lower court dismisses the complaint which the Supreme Court Tan.
affirmed.
Santos did not choose to protect his intellectual creation by a copyright. Issue:
The fact that the design was used in the Christmas card of Ambassador Neri Whether Tan is liable for infringement of copyright.
who distributed 800 copies thereof among his friends during the Christmas
season of 1959, shows the same was published. Ruling:
Unless satisfactory explained a delay in applying for a copyright, of No.
more than 30 days from the date of its publication, converts the property to one The composers of the contested musical compositions waived their
of public domain. rights in favor of the general public when they allowed their intellectual
Since the name of the author appears in each of the alleged infringing creations to become property of the public domain before applying or the
copies of intellectual creation, the defendant may not be said to have pirated corresponding copyrights for the same.
the work nor guilty of plagiarism. Consequently, the complaint does not state
a cause of action against the defendant. 3. Bayanihan Music vs BMG
The Supreme Court held that Santos is not entitled to a protection. Facts:
Rules of Practice in the Philippine Patent Office relating to the Jose Mari Chan entered into a contract with petitioner Bayanihan,
Registration of Copyright Claims. whereunder Chan assigned Bayanihan all his rights. Interests and participation
“An intellectual creation should be copyrighted 30 days after its over his musical composition “Can We Just Stop and Talk a While” and other
publication, if made in Manila, or within 60 days if made elsewhere, failure of musical composition “Afraid for Love to Fade”. Bayanihan applied for and
which renders such creation public property.” was granted a certificate of Copyright Registration.
When the purpose is limited publication, but the effect is general Without knowledge and consent of Bayanihan, Chan authorized his co-
publication, irrevocable rights thereupon become vested in the public, in respondent BMG records to record and distribute the aforementioned musical
consequence of which enforcement of the restriction becomes impossible. compositions in a then recently released album of singer Lea Salonga.
Bayanihan filed with RTC QC complaint against Chan and BMG for
2. Filipino Society of composers, authors and publishers, Inc. vs Tan violation of 216 RA 8293.
Facts:
Issue:
Whether Chan and BMG liable.
 Trademark is any visible sign capable of distinguishing the goods
Ruling: (Trademark) or services (Service mark) of an enterprise and shall include a
No. stamped or marked container of goods.
Chan, the composer and author of the lyrics of the two songs, is Copyright is confined to literary and artistic works which are original
protected by the mere fact alone that he is the creator thereof. intellectual creations in the literary and artistic domain protected from the
IP CODE. 172. 2. Works are protected by the sole fact of their creation, moment of their creation.
irrespective of their mode or form of expression, as well as their content, Patentable inventions refer to any technical solution of a problem in
quality and purpose. any field of human activity which is new, involves an inventive step and
industrially applicable.
4. Kho vs Court of Appeals
Facts: 5. Unilever vs P&G
Kho of KEC Cosmetics Laboratory is the registered owner of the Facts:
Copyrights Chin Chun Sua / Oral Facial Cream / Case and Patent rights of P & G filed a complaint for injunction with damages. A P & G
Chin Chun Su and Device and Chin Chun Su for medicated cream. subsidiary in Italy used a key visual in the advertisement of its laundry
Summerville is the exclusive and authorized importer, re-packer and detergent and bleaching products. This key visual known as the “Double Tug”
distributor of Chin Chun Su products. or “tac tac” demonstration.
Respondent Summerville advertised and sold petitioner’s cream Unilever, started airing its “Breeze PowerWhite” laundry product
products under the brand name Chin Chun Su, in similar containers that called “Porky”. The said TVC included a stretching visual presentation and
petitioner uses, thereby misleading the public, and resulting in the decline in sound effects almost identical or substantially identical or substantially similar
the petitioner’s business sales and income; and, that the respondents should be to P&G’s “tac tac” key visual.
enjoined from allegedly infringing on the copyrights and patents of the
petitioner. Issue:
Trial Court granted preliminary injunction by KEC. Whether P&G is entitled for the relief which is to enjoin the petitioner from
Court of Appeals set aside and declare null and void. airing said TVC.
(Petitioner has copyright Registration for advertisement while P&G has none.
Issue:
Whether the copyright and patent over the name and container of a Ruling:
beauty cream product would entitle the registrant to use and ownership over Yes.
the same to the exclusion of others. Section 2. PD 49 stipulates that the copyright for a work or intellectual
creation subsists from the moment of its creation. Accordingly, the creator
Ruling: acquires copyright for his work right upon its creation.
No.
Petitioner has no right to support her claim for the exclusive use of the Section 173. Derivative Works. - 173.1. The following derivative works shall
subject trade name and its container. The name and container of a beauty cream also be protected by copyright:
product are proper subjects of a trademark inasmuch as the same falls squarely (a) Dramatizations, translations, adaptations, abridgments, arrangements, and
within its definition. other alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of data
and other materials which are original by reason of the selection or
coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P.D. No.
49)

173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1
shall be protected as new works: Provided however, That such new work shall
not affect the force of any subsisting copyright upon the original works
employed or any part thereof, or be construed to imply any right to such use of
the original works, or to secure or extend copyright in such original works.
(Sec. 8, P.D. 49; Art. 10, TRIPS)

Article 10 (Agreement on Trade-Related Aspects of Intellectual Property

Rights)
Computer Programs and Compilations of Data
1. Computer programs, whether in source or object code, shall be protected as
literary works under the Berne Convention (1971).
2. Compilations of data or other material, whether in machine readable or other
form, which by reason of the selection or arrangement of their contents
constitute intellectual creations shall be protected as such. Such protection,
which shall not extend to the data or material itself, shall be without prejudice
to any copyright subsisting in the data or material itself.

Section 174. Published Edition of Work. - In addition to the right to publish

granted by the author, his heirs, or assigns, the publisher shall have a copyright
consisting merely of the right of reproduction of the typographical
arrangement of the published edition of the work. (n)