Intellectual Property Law

- Governed by RA 8293 as amended by RA 10372

“NECESSITY IS THE MOTHER OF INVENTION” –Tesla

IDEA only – not an invention - has to be expressed

the 3 Social Contract Theories:

- We obey laws because we have a covenant or agreement between the people.
- It is with consent.

1. Thomas Hobbes
- true state of nature is warlike and nasty
- Man’s life is of fear and selfishness
- Man’s natural liberty must be limited and surrendered to people higher than us for them to
establish governance

2. John Locke
- Life is enjoyable and reasonable
- But property is not secured
- Man surrendered only the right to maintain order and enforce law
- Government should be valid otherwise may be overthrown
- you are considered as the author or=f your work, thus, it is appropriate that you are credited for it.

3. Jean-Jacques Rousseau
- Life is full of happiness, freedom and equality
- But life changed when the population increased and there was a rise of pleasure of time which
caused shame, envy and contempt and lead humanity to abandon its state of nature
- State is created to meet its “general will” of people which involves liberty and equality; if not,
government will be discarded

*Impact – if IP is not protected ? – monetary case , lost of credit

*Why study IP? – because it is a personal property; -a private right;

- for evidentiary purposes, only the genuine owner can identify object.

*IPR under the IP Code

1. Copyright and related rights
2. Trademarks and Service Marks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Lay-out Designs (Topographies) of Integrated Circuits (RA 9150)
7. Protection of Undisclosed Information

Legal theory on IP

What is IP ? WIPO Definition

IP refers to creations of the mind: inventions, literary and artistic works , and symbols, names,
images and designs used in commerce.

An Overview of Copyright, Patents and Trademarks

COPYRIGHT TRADEMARK & SERVICE PATENT
MARK
- law - visible sign - *came first than copyright
- originality *visual – (cause of necessity)
(we don’t have the others, eg.,
*idea only – not copyrightable olfactory sign, tactfeel?) - has to be CLEAR
- expression thru – book, film, -when applying, must disclose
(regardless of the mode) - capable of distinguishing the ALL info
good services works. - technical solution for a
- distinctiveness technical problem in any
human activity
(*the chair story)

- 3 requisites:
1. novelty
2. Inventiveness
3. industrial applicability

Pertinent Constitutional Provisions

a) Article XIV, Sec. 13 (1987 Consti) – The Benefit to the People Proviso
“The state shall protect and secure the exclusive right of scientists,
inventors, artists and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people for such period as may be provided by law.”

b) Art. XIV- Secs 10 and 12 (1987 Consti)

ARTICLE XIV
SCIENCE AND TECHNOLOGY

Section 10. Science and technology are essential for national development and progress. The
State shall give priority to research and development, invention, innovation, and their
utilization; and to science and technology education, training, and services. It shall support
indigenous, appropriate, and self-reliant scientific and technological capabilities, and their
application to the country's productive systems and national life.
 Section 12. The State shall regulate the transfer and promote the adaptation of technology
from all sources for the national benefit. It shall encourage the widest participation of private
groups, local governments, and community-based organizations in the generation and
utilization of science and technology.

c) Art. XII, Sec 6 vis a vis Sec. 2 of the IP Code

ARTICLE XII (1987 Consti)

NATIONAL ECONOMY AND PATRIMONY
Section 6. The use of property bears a social function, and all economic agents shall
contribute to the common good. xxxxx

IP Code Sec. 2. Declaration of State Policy (RA 829)

The State recognizes that an effective intellectual and industrial property system
is vital to the development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for our
products. It shall protect and secure the exclusive rights of scientists, inventors, artists
and other gifted citizens to their intellectual property and creations, particularly when
beneficial to the people, for such periods as provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall
promote the diffusion of knowledge and information for the promotion of national
development and progress and the common good.
It is also the policy of the State to streamline administrative procedures of registering
patents, trademarks and copyright, to liberalize the registration on the transfer of
technology, and to enhance the enforcement of intellectual property rights in the
Philippines. (n)

d) Art XII, Secs. 14 and 19

Section 14. The sustained development of a reservoir of national talents consisting of Filipino
scientists, entrepreneurs, professionals, managers, high-level technical manpower and
skilled workers and craftsmen in all fields shall be promoted by the State. The State shall
encourage appropriate technology and regulate its transfer for the national benefit.

Section 19. The State shall regulate or prohibit monopolies when the public interest so requires.
No combinations in restraint of trade or unfair competition shall be allowed.

Civil Law Basis –

Articles 712; 721;722; 724 of the Civil Code

Art. 712. Ownership is acquired by occupation and by intellectual creation.

Ownership and other real rights over property are acquired and transmitted by law, by
donation, by estate and intestate succession, and in consequence of certain contracts, by
tradition.
They may also be acquired by means of prescription.

Art. 721. By intellectual creation, the following persons acquire ownership:

(1) The author with regard to his literary, dramatic, historical, legal, philosophical, scientific or
other work;
 (2) The composer; as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the product of his art;
(4) The scientist or technologist or any other person with regard to his discovery or invention. (n)

Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall
have the ownership of their creations even before the publication of the same. Once their works
are published, their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even before
it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it is
patented.

Art. 723. Letters and other private communications in writing are owned by the person to whom
they are addressed and delivered, but they cannot be published or disseminated without the
consent of the writer or his heirs. However, the court may authorize their publication or
dissemination if the public good or the interest of justice so requires. (n)

Art. 724. Special laws govern copyright and patent.

Historical Basis

International Treaties/ Conventions to which the Philippines is a Signatory

1) Convention creating the WIPO
2) Uruguay Round (creating the WTO)
3) Paris Convention
4) Berne Convention
5) Budapest Treaty
6) Patent Cooperation Treaty
7) WIPO Copyright Treaty
8) Madrid Protocol

o Berne and Paris conventions had separate international secretariats to administer the
2 conventions. They were later placed under the supervision of the Swiss Federal government
with their headquarters in Berne.
o 1893, the two secretariats united and after undergoing several changes became the
United International Bureau for the Protection of Intellectual Property (BIRPI, the acronym
for the French version of the name)
o 1960 – BIRPI moved its headquarters to Geneva
o 1967 – diplomatic conference on IP in Stockholm (creation of WIPO) to succeed BIRPI
o 1974 – WIPO became a specialized agency of the UN

WIPO and WTO Relationship

- WIPO is part of UN; WTO is not.
- TRIPS – Trade Related Aspects of Intellectual Property

-US believed that issues on IP protection involves trade

- GATT (General Agreement on Tariff and Trade) is the main multilateral treaty on the
elimination of trade barriers.
- US advocated that IP issues be addressed under the auspices of GATT because it has dispute
settlement mechanism
- Developing countries opposed this because of the view that their interests would be better
protected within the framework of WIPO due to their numerical number
- Developing countries urged WIPO to draft its own treaty for a dispute resolution mechanism ( said
proposals not adopted for various reasons

- WTO and IPO has a mutually supportive relationship.

WTO has a dispute resolution mechanism, while WIPO promotes IP in developing countries. The
two concluded an agreement which took effect on Jan. 1, 1996 providing cooperation in areas such
as :
1. access
2. collection
3. translation of national laws and regulation

WTO
- 1993 – Uruguay Round of the multilateral trade negotiations under the auspices of GATT was
concluded on Dec. 15, 1993 which involved discussions for the first time on the protection of
intellectual property in relation to international trade

- countries can’t agree on the most basic issues of the agenda such as :
1.coverage of IP
2.minimum levels of protection
3.adoption by member countries of procedures for the enforcement of IPR

-discussions collapsed on 2 occasions but later paved the way for the Agreement on Trade Related
Aspects of IPR (TRIPS Agreement ) which took effect on Jan. 1, 1995
-also led to the agreement establishing the WTO, effective Jan. 1, 1995

International Treaties Protecting Copyrights

Berne Convention
– for protection of literary works, established in Aug. 1,1951.

Core Principles:
a) national treatment – treat foreigners the way you protect nationals
b) principle of automatic protection – no need to register copyrights
 c) principle of independence of protection – nationals from different states should
have protection of their own works

TRIPS Agreement
– Trade Related Aspects of IP Rights, a sub-agreement of the GATT (General Agreement on Tariff
and Trade) -

Core Principles:

a) Principle of independence of protection of Intellectual property

b) National treatment – of the IP owner
c) Most favored nation principle – treat all signatories similarly, no special
treatment should be given to any nation

Establishment of minimum standards of protection as to enforcement of IPR transnationally is

likewise embodied in the TRIPS agreement as one of its salient features

Notable Features of the TRIPS Agreement

- incorporates by reference most of the standards of protection of copyright/related rights under the
two conventions
- explicit recognition of computer software as proper subject of copyright
- explicit recognition of micro-organisms and non-biological processes for the production of plants
and animals as patentable
- includes substantial number of additional obligations on matters where the Berne and Paris
Conventions were silent or inadequate, eg :
a) adoption by member countries of procedures for enforcement of IP
b) provides a dispute resolution mechanism for member countries

IP and Economics
- Economic development
- prosperity
- market acess

Watch youtube: https://www.youtube.com/watch?v=_7lZHOxPEII

Cases
Tañada v. Angara (GR No. 118295, May 2, 1997 ) En Banc
Copyright

What is copyright?
- is the legal protection extended to the owner of an original work.
- It is really a bundle of rights to creators and authors of literary and artistic works that enable
them to control the further reproduction and use of their work even after it has left their dominion.
-

When does copyright vest?

*Principle of Automatic Protection - copyright vests from the very moment of creation. This
has been the rule since 27 December 1972 when PD 49 (Deccree on the Protection of Intellectual
Property)

- Primary objective is not to reward authors, but to promote the progress of science and useful arts
by encouraging others to build upon the ideas and information contained in a work.

- The “Benefit to the People” Proviso: Art. XIV, Sec. 13 (of 1987 Consti)
“The State shall protect and secure the exclusive rights of scientists, artists and other gifted
citizens to their intellectual property creations, particularly when beneficial to the people for
such periods as may be provided by law.

Cases:
-Ching vs. Salinas, GR No. 161295, June 29, 2005{J. Callejo, Sr.}:-
No copyright can be said to arise favor of the petitioner despite the issuance of the
certificates of copyright registration and the deposit of the Leal Spring Eye Bushing
and Vehicle Bearing Cushion.”

- Manly Sportwear Manufacturing, Inc. v. Dadodette Enterprises, GR No. 165306,

Sept. 3, 2005,{J. Ynares-Santiago}
“ At most, the certificates of registration and deposit issued by the National Library
and the Supreme Court Library serve merely as a notice of recording and registration
of the

Copyrightable Works
a) original works (literary and artistic) - (Sec. 172 (1) of RA 8293)
Section 172. Literary and Artistic Works. - Literary and artistic works, hereinafter referred to as
"works", are original intellectual creations in the literary and artistic domain protected from the moment
of their creation and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or
other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or
designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an
 industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a)

b) Derivative works (Sec. 173-174)

xxx also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments, arrangements, and 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 xxx shall be protected as new works: Provided, 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)

Non-copyrightable works
- Unprotected work – Sec 175 – 176
Section 175. Unprotected Subject Matter. – xxx no protection shall extend, under this law, to
any idea, procedure, system, method or operation, concept, principle, discovery or mere data as
such, even if they are expressed, explained, illustrated or embodied in a work; news of the day
and other miscellaneous facts having the character of mere items of press information; or any
official text of a legislative, administrative or legal nature, as well as any official translation
thereof (n)

Section 176. Works of the Government. - 176.1. No copyright shall subsist in any work of the
Government of the Philippines. However, prior approval of the government agency or office
wherein the work is created shall be necessary for exploitation of such work for profit. Such
agency or office may, among other things, impose as a condition the payment of royalties. No
prior approval or conditions shall be required for the use of any purpose of statutes, rules and
regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or
rendered in courts of justice, before administrative agencies, in deliberative assemblies and in
meetings of public character. (Sec. 9, first par., P.D. No. 49)

176.2. The author of speeches, lectures, sermons, addresses, and dissertations mentioned in the
preceding paragraphs shall have the exclusive right of making a collection of his works. (n)

176.3. Notwithstanding the foregoing provisions, the Government is not precluded from
receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall
publication or republication by the Government in a public document of any work in which
copyright is subsisting be taken to cause any abridgment or annulment of the copyright or to
 authorize any use or appropriation of such work without the consent of the copyright owner.
(Sec. 9, third par., P.D. No. 49)

*Midterm*

>Rights of Copyright Owners

a) Economic Rights (sec 177 , RA 8293)

CREATOR’S RIGHTS = Economic Rights – allows author to earn money from their work
.
Section 177. Copyright or Economic Rights. - Subject to the provisions of Chapter
VIII, copyright or economic rights shall consist of the exclusive right to carry out,
authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other
forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work
embodied in a sound recording, a computer program, a compilation of data and other materials
or a musical work in graphic form, irrespective of the ownership of the original or the copy
which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a)

FIRST SALE DOCTRINE The doctrine allows the purchaser to transfer a lawfully made copy
of the copyrighted work without permission once it has been obtained. That means that a
copyright holder’s rights to control the distribution of a particular copy end once that copy is
sold. (US law)

Exhaustion of rights, is a concept in IP law (EU) similar to first sale doctrine whereby an IP
owner will lose or "exhaust" certain rights after the first use of the subject matter which is the
subject of IPRs. A parallel import is a non-counterfeit product imported from another country
without the permission of the IP owner. Parallel imports are often referred to as grey products.

b) Moral Rights (sec 193 , RA 8293)

- help authors protect their reputation and be given attribution of their work
- maintains the personal connection of the author to his work.
 Section 193. Scope of Moral Rights. - The author of a work shall, independently of
the economic rights in Section 177 or the grant of an assignment or license with
respect to such right, have the right:

193.1. To require that the authorship of the works be attributed to him, in particular, the right
that his name, as far as practicable, be indicated in a prominent way on the copies, and in
connection with the public use of his work; PATERNITY RIGHT (lifetime right)
(the rest, below, co terminus with Economic right)

193.2. To make any alterations of his work prior to, or to withhold it from publication;
RIGHT TO MAKE ALTERATION or RIGHT OF PRIVACY

193.3. To object to any distortion, mutilation or other modification of, or other derogatory
action in relation to, his work which would be prejudicial to his honor or reputation;
INTEGRITY RIGHT

193.4. To restrain the use of his name with respect to any work not of his own creation or in a
distorted version of his work. (Sec. 34, P.D. No. 49) FALSE ATTRIBUTION

DROIT D’ AUTEUR DOCTRINE – the work is an expression or extension of

the personality of the author.

Can moral rights be waived?- Sec. 195

Section 195. Waiver of Moral Rights. - An author may waive his rights mentioned in
Section 193 (moral rights) by a written instrument, but no such waiver shall be valid where
its effects is to permit another:
195.1. To use the name of the author, or the title of his work, or otherwise to make use of his
reputation with respect to any version or adaptation of his work which, because of alterations
therein, would substantially tend to injure the literary or artistic reputation of another
author; or
195.2. To use the name of the author with respect to a work he did not create. (Sec. 36, P.D.
No. 49)

Exceptions to moral rights

• contribution to collective work –when an author contributes to a collective work, his right to
have his contribution attributed to him is deemed waived unless he expressly reserves it.
(thus, ALL RIGHTS RESERVED)
• Necessary editing, arranging or adaptation of a work for publication, broadcast, use in a
motion picture, dramatization, or mechanical or electrical reproduction in accordance with
reasonable and customary standards or requirements
• Complete destruction of a work unconditionally transferred shall not be deemed to violate
moral rights.
 c) Follow up Rights (Sec. 200, RA 8293)
Section 200. Sale or Lease of Work. - In every sale or lease of an original work of painting or sculpture
or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the
author, the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale
or lease to the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty
(50) years after his death. (Sec. 31, P.D. No. 49)

*works not covered

1. prints
2. Etchings
3. Works of applied arts
4. or similar works where the author primarily derives gain from the proceeds reproduction

d) Neighboring Rights
(Secs. 203 perfromer ,208 producers, , 211 broadcasters)
Defn. – These are rights that have developed in parallel with copyright. They protect the
contributions of others who add value in the presentation of literary and artistic works to the
public.

Section 203. Scope of Performers' Rights. - Subject to the provisions of Section 212, performers
shall enjoy the following exclusive rights:
203.1. As regards their performances, the right of authorizing:
(a) The broadcasting and other communication to the public of their performance; and
(b) The fixation of their unfixed performance.

"203.2. the right of authorizing the direct or indirect reproduction of their performances fixed in
sound recordings or audiovisual works or fixations in any manner or form;
"203.3. Subject to the provisions of Section 206, the right of authorizing the first public distribution
of the original and copies of their performance fixed in sound recordings or audiovisual works or
fixations through sale or rental of other forms of transfer of ownership;
"203.4. the right of authorizing the commercial rental to the public of the original and copies of their
performances fixed in sound recordings or audiovisual works or fixations, even after distribution of
them by, or pursuant to the authorization by the performer; and
"203.5. the right of authorizing the making available to the public of their performances fixed in
sound recordings or audiovisual works or fixations, by wire or wireless means, in such a way that
members of the public may access them from a place and time individually chosen by them. (Sec.
42, P.D. No. 49A)."

Section 208. Scope of Right. - Subject to the provisions of Section 212, producers of sound
recordings shall enjoy the following exclusive rights:
208.1. The right to authorize the direct or indirect reproduction of their sound recordings, in any
manner or form; the placing of these reproductions in the market and the right of rental or lending;
208.2. The right to authorize the first public distribution of the original and copies of their sound
recordings through sale or rental or other forms of transferring ownership; and
208.3. The right to authorize the commercial rental to the public of the original and copies of their
sound recordings, even after distribution by them by or pursuant to authorization by the producer.
(Sec. 46, P.D. No. 49a)
"208.4. the right to authorize the making available to the public of their sound recordings in such a
way that members of the public may access the sound recording from a place and at a time
individually chosen or selected by them, as well as other transmissions of a sound recording with
like effect.

Section 211. Scope of Right. - Subject to the provisions of Section 212, broadcasting organizations
shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:
211.1. The rebroadcasting of their broadcasts;
211.2. The recording in any manner, including the making of films or the use of video tape, of their
broadcasts for the purpose of communication to the public of television broadcasts of the same; and
211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49)

*3 Kinds of Neighboring Rights

 203 - PERFORMERS - actors, dancers, singers and musicians
 208 - PRODUCERS OF SOUND RECORDINGS
 211 - BROADCASTING ORGANIZATIONS

Rules on Ownership of Copyright

Limitations on Copyright
Sec 184 of RA 8293 - Limitations on Copyright. – x x x
"(1) the reproduction or distribution of published articles or materials in a specialized format exclusively for
the use of the blind, visually- and reading-impaired persons: Provided, That such copies and distribution
shall be made on a nonprofit basis and shall indicate the copyright owner and the date of the original
publication."
(a) The recitation or performance of a work, once it has been lawfully made accessible to the public, if done
privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1),
P.D. No. 49)
(b) The making of quotations from a published work if they are compatible with fair use and only to the
extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of
press summaries: Provided, That the source and the name of the author, if appearing on the work, are
mentioned; (Sec. 11, third par., P.D. No. 49)
(c) The reproduction or communication to the public by mass media of articles on current political, social,
economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are
delivered in public if such use is for information purposes and has not been expressly reserved: Provided,
That the source is clearly indicated; (Sec. 11, P.D. No. 49)
(d) The reproduction and communication to the public of literary, scientific or artistic works as part of
reports of current events by means of photography, cinematography or broadcasting to the extent necessary
for the purpose; (Sec. 12, P.D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording
or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use:
Provided, That the source and of the name of the author, if appearing in the work, are mentioned;
(f) The recording made in schools, universities, or educational institutions of a work included in a broadcast
for the use of such schools, universities or educational institutions: Provided, That such recording must be
deleted within a reasonable period after they were first broadcast: Provided, further, That such recording
may not be made from audiovisual works which are part of the general cinema repertoire of feature films
except for brief excerpts of the work;
(g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for
use in its own broadcast;
(h) The use made of a work by or under the direction or control of the Government, by the National Library
or by educational, scientific or professional institutions where such use is in the public interest and is
compatible with fair use;
(i) The public performance or the communication to the public of a work, in a place where no admission fee is
charged in respect of such public performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to such other limitations as may be
provided in the Regulations; (n)
(j) Public display of the original or a copy of the work not made by means of a film, slide, television image or
otherwise on screen or by means of any other device or process: Provided, That either the work has been
published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to
another person by the author or his successor in title; and
(k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice
by a legal practitioner.

184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a
manner which does not conflict with the normal exploitation of the work and does not unreasonably
prejudice the right holder's legitimate interests.

Doctrine of Fair Use

(Sec 185

Fair use of a copyrighted work is allowed for

1. Criticism or comment
2. News reporting
3. Teaching including limited copies for classroom use
4. Scholarship, research and similar purposes

Criteria in determining fair use

 purpose and character of the use
 nature of the copyrighted work
 amount and substantiality of the portions copied
 effect of the use upon the potential market

Rule : The more transformative the work, the lesser is the significance of other factors like
commercialism.

Concept of Fair Use

• US jurisprudence points out that the 4 fair use factors “are to be weighed together, in light of
the purposes of copyright,” and “the primary objective of copyright is not to reward the labor
of authors, but “to promote the progress of science and arts.”
• Under the first factor, which is purpose and character of the use the question to ask is
“whether the work is transformative?” and to what extent the work is transformative?

Case:
• Respondent Acuff-Rose Music, Inc., filed suit against petitioners, the members of the
rap music group 2 Live Crew and their record company, claiming that 2 Live Crew's
song, "Pretty Woman,'' infringed Acuff-Rose's copyright in Roy Orbison's rock ballad,
"Oh Pretty Woman.'' The District Court granted summary judgment for 2 Live Crew,
 holding that its song was a parody that made fair use of the original song. See
Copyright Act of 1976, 17 U. S. C. §107
• The Court of Appeals reversed and remanded, holding that the commercial nature of
the parody rendered it presumptively unfair under the first of four factors relevant
under §107; that, by taking the "heart'' of the original and making it the "heart'' of a
new work, 2 Live Crew had, qualitatively, taken too much under the third §107 factor;
and that market harm for purposes of the fourth §107 factor had been established by a
presumption attaching to commercial uses.
• Held : Live Crew's commercial parody may be a fair use within the meaning of §107.
(a) Section 107, which provides that "the fair use of a copyrighted work . . . for
purposes such as criticism [or] comment . . . is not an infringement . . . ,'' continues the
common-law tradition of fair use adjudication and requires case-by-case analysis
rather than bright-line rules. The four statutory factors are to be explored and
weighed together in light of copyright's purpose of promoting science and the arts.
• (b) Parody, like other comment and criticism, may claim fair use. Under the first of the
four §107 factors, "the purpose and character of the use, including whether
such use is of a commercial nature . . . ,'' the enquiry focuses on whether the new
work merely supersedes the objects of the original creation, or whether and to what
extent it is "transformative,'' altering the original with new expression,
meaning, or message. The more transformative the new work, the less will be the
significance of other factors, like commercialism, that may weigh against a finding of
fair use

*When you raise fair use as a defense, you admit the facts in the complaint. Therefore:
1.) Plaintiff will no longer have to prove the facts, the trial now centers on whether or not there
was fair use.
2.)It would be an inconsistent defense if you allege fair use and you allege that you were not the
one doing the infringing.

*”Decompilation” -

3 step test under the Berne Convention

Art 9 of the Berne Convention : “It is a matter of legislation for countries to permit reproduction
of works and provide limitations to the exclusive rights of a copyright owner under the following
circumstances :
Limitations are only in special cases
Limitations don’t conflict with the NEW normal exploitation of work
Limitations don’t unduly prejudice the legitimate interests of the author

The Denicola Test

in intellectual property law states that if design elements of an article reflect a merger of aesthetic
and functional considerations, the artistic aspects of the work cannot be conceptually separable
from the utilitarian aspects; thus, the article cannot be copyrighted
Merger Doctrine
• It holds that if an idea and the way to express it are so intricately tied that the ways of
expression have little possible variation, there will not be copyright infringement, lest the
copyright prevent others from expressing the same idea. The overall principle is that of the
idea-expression divide, which is that one can hold a copyright in an expression, but not in an
idea.
• “Conceptual separability” – always tied with copyright

Permitted Use
*(Sec 184, RA 9293) simplified:
1. Recitation or performance of a work once it has lawfully been made available
to the public if :
- done privately and free of charge or
- for strictly charitable or religious inst. or societies. (Sec. 184.1 a)

2. Quotations from a published work (fair use) provided there is

“Lifting from a college English workbook substantial portions of
discussions
and examples without acknowledgement is an infringement. Copying of
entire work or large portion of it is not required. If so much is taken that value of
original work is diminished, then there is infringement. (S.184. 1b)
(first 2 are justified by the informatory purpose of the use of the works)

3. reproduction or communication to the public by mass media of articles on current

political, social, economic, scientific or religious topic which are delivered in public
if such use is for information purposes and has not been expressly reserved provided
there is attribution.
(Sec. 184.1 c)

4. reproduction or communication to the public as part of reports of current

events……
(Sec. 184.1 d) (3&4 justified by the educational purpose of the use)

5. inclusion of work in a publication, broadcast …. If such inclusion is made by way

of illustration for teaching purposes (supra, e)

6. recordings in educational institutions (supra, f)

7. making of ephemeral recordings by means of its own recordings for use in its own
broadcast (supra, g)

9. use made of a work by or under the control of the government by the National
Library or by educational, scientific or professional institutions wheresuch
use is in the public interest and is compatible with fair use. (supra, h)

10. the public performance or the communication to the public of a work in a place
where no admission fee is charged… whose aim is not for profit making but for
charitable or educational purpose (supra, i)
 11. public display of the orig/copy of the work not made by means of a film, slide,
television image…. Provided that either the work has been published or the original
or copy displayed has been sold/transferred to another person.(j)

12. use of work in judicial proceedings. (supra, k)

Cases:
Sony Corporation of America Inc. et al. V. Universal City Studios, Inc. et al
The sale of the VTR's to the general public does not constitute contributory infringement of
respondents' copyrights.
the technology in question had significant non-infringing uses, and that the plaintiff was unable to
prove otherwise.
If a device is sold for a legitimate purpose and has a substantial non-infringing use, its
manufacturer will not be liable under copyright law for potential infringement by its users. - if the
product is widely used for legitimate, unobjectionable purposes, or, indeed, is merely capable of
substantial noninfringing uses.

Campbell v. Acuff- Rose Music ,` - US Court of Appeals for the 6th Circuit, March 7, 1994
The fair use doctrine "permits and requires courts to avoid rigid application of the copyright statute when, on occasion, it
would stifle the very creativity which that law is designed to foster.
We thus line up with the courts that have held that parody, like other comment or criticism, may claim fair
use under 107.

Habana vs. Robles GR No. 131522, July 19, 1999

ABS-CBN v. Gozon, G.R. No. 195956 March 11, 2015

Rappler vs. Bautista, G.R. No. 222702, April 5, 2016

ABS-CBN vs. Philippine Multi-Media System, Inc. GRN 175769- 70, January 19, 2009)

NBI-Microsoft Corp. vs. Hwang GR No. 147043, June 21, 2005 L- 76649-51, Aug 19, 1988

Pearl & Dean vs. Shoemart Inc, GR No.148222, Aug 15, 2003

Kho vs. CA, GR No. 115758, Mar. 19, 2002

Amendments in Copyright Law (RA 10372)

A. Organizational Changes
- creation of Bureau of Copyrught and Related Rigths
- visitorial and enforcement powers of IP (plain view doctrine) (before, no powers like this)
- Bureau of Copyright exec original jurisdiction to resolve disputes relating to the terms of a license
involving the author’s right to public performance OR other communication of his work.

*IP is not a pubic right.

 *Licenses:
1. Reproduction License
2. Mechanical License (music sync)
3. Synchronization License (movies)
4. Public Performance Lince (concert, music lounges, karaoke bar)

B. Third party liability for infringement

*law imputes liability to those individuals who:
- commit an infringement directly;
- (indirect)(vicarious/ contributory) benefit form the infringing act of another (person
benefitting has been given notice of the infringing activity
- knowledge of infringing activity and contribute to the infringing conduct of another.

*pirated – copied – copyright violation

*counterfeit – also copied – trademark violation

*plagiarism – claiming written academic as own.

*copyright infringement -
- they will be liable to the copyright owner for the “actual damages,
- this exemplifies the aiding and abetting (Sec 217.1 of IP Code)

*Section 218. Affidavit Evidence. –

Remedies for Infringement

(Owner may elect)
1. Actual Damages
2. Statutory Damages
3. Moral Damages (see list of court’s considerations)

*Doubling of Damges
– when Infringer circumvents effective technological

Section 216. Remedies for Infringement.

"SEC. 216. Infringement. – A person infringes a right protected under this Act when one:
"(a) Directly commits an infringement;
"(b) Benefits from the infringing activity of another person who commits an infringement if the
person
benefiting has been given notice of the infringing activity and has the right and ability to control
the
activities of the other person;
"(c) With knowledge of infringing activity, induces, causes or materially contributes to the
infringing conduct
of another
- 216.1. Any person infringing a right protected under this law shall be liable:
(a) To an injunction restraining such infringement. The court may also order the defendant to desist
from an
infringement, among others, to prevent the entry into the channels of commerce of imported goods
that
involve an infringement, immediately after customs clearance of such goods.
"(b) To pay to the copyright proprietor or his assigns or heirs such actual damages, including legal
costs and other expenses, as he may have incurred due to the infringement as well as the profits the
infringer may have made due to such infringement, and in proving profits the plaintiff shall be
required to prove sales only and the defendant shall be required to prove every element of cost
which he claims, or, in lieu of actual damages and profits, such damages which to the court shall
appear to be just and shall not be regarded as penalty: Provided, That the amount of damages to be
awarded shall be doubled against any person who:
"(i) Circumvents effective technological measures; or
"(ii) Having reasonable grounds to know that it will induce, enable, facilitate or conceal the
infringement,
remove or alter any electronic rights management information from a copy of a work, sound
recording, or
fixation of a performance, or distribute, import for distribution, broadcast, or communicate to the
public
works or copies of works without authority, knowing that electronic rights management
information has
been removed or altered without authority.
(c) Deliver under oath, for impounding during the pendency of the action, upon such terms and
conditions as
the court may prescribe, sales invoices and other documents evidencing sales, all articles and their
packaging alleged to infringe a copyright and implements for making them.
(d) Deliver under oath for destruction without any compensation all infringing copies or devices, as
well as
all plates, molds, or other means for making such infringing copies as the court may order.
(e) Such other terms and conditions, including the payment of moral and exemplary damages,
which the
court may deem proper, wise and equitable and the destruction of infringing copies of the work even
in the
event of acquittal in a criminal case.
"The copyright owner may elect, at any time before final judgment is rendered, to recover instead of
actual
damages and profits, an award of statutory damages for all infringements involved in an action in a
sum
equivalent to the filing fee of the infringement action but not less than Fifty thousand pesos
(Php50,000.00).
In awarding statutory damages, the court may consider the following factors:
"(1) the nature and purpose of the infringing act;
"(2) the flagrancy of the infringement;
"(3) Whether the defendant acted in bad faith;
"(4) the need for deterrence;
"(5) Any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement; and
"(6) Any benefit shown to have accrued to the defendant by reason of the infringement.
"In case the infringer was not aware and had no reason to believe that his acts constitute an
infringement of
copyright, the court in its discretion may reduce the award of statutory damages to a sum of not
more than
Ten thousand pesos (Php10,000.00): Provided, That the amount of damages to be awarded shall be
doubledagainst any person who:
"(i) Circumvents effective technological measures; or
"(ii) Having reasonable grounds to know that it will induce, enable, facilitate or conceal the
infringement, remove or alter any electronic rights management information from a copy of a work,
sound recording, or fixation of a performance, or distribute, import for distribution, broadcast, or
communicate to the public works or copies of works without authority, knowing that electronic
rights management information has been removed or altered without authority.
"216.2. In an infringement action, the court shall also have the power to order the seizure and
impounding of any article which may serve as evidence in the court proceedings, in accordance with
the rules on search and seizure involving violations of intellectual property rights issued by the
Supreme Court. (Sec. 28, P.D. No. 49a)

"The foregoing shall not preclude an independent suit for relief by the injured party by way of
damages, injunction, accounts or otherwise."

C. Expansion of the Fair Use Doctrine

D. Technological Protection and Rights management

Term of Copyright

Infringement and Remedies

Differentiate plagiarism from infringement

Evidentiary Considerations (Secs. 216-226)

Copyright contrasted with other industrial property

Assignments :

What are Neigboring Rights? Watch

https://www.youtube.com/watch?v=3APFX4zavjw
Copyright and Fair Use Explained by a lawyer.

Watch > https://www.youtube.com/watch?v=p5Mt-yf-OBA

What are the offices added to IPOPHL

VI. Law on Trademarks

Definitions of marks, collective marks and trade names (Sec. 121)

including Container marks under RA 623

Functions of a Mark

Concept of Origin

How Rights to a Mark are Acquired

a) under Sec. 2 of RA 166

 b) under Sec. 122 of RA 8293

c) under RA 623

How Rights to a Tradename are Acquired

Prior Use of a Mark as a Requirement

- under RA 166

- under RA 8293

- who prevails prior user under RA 166 or registrant under RA 8293

6.7 What are non-registrable marks under Sec. 123?

6.8 Misleading as to geographical origin

6.9 Indicative of quality of geographical

origin
6.10 Identical mark with respect to

a) same goods

b) dissimilar goods

c) closely related goods

- Concept of Confusion of goods vs.

Confusion of business

6.11 Tests to determine confusing

similarity between marks

a) Dominancy Test

b) Holistic Test

6.12 NICE Classification

6.13 Well-known marks – Sec 123.1 (e)

Art. 6bis of the Paris Convention

> same goods - La Chemise

 Lacoste; Mirpuri v. CA

> dissimilar goods

> Theory of Dilution

6.14 Sec. 20 of RA 166 vs. Sec. 138 of

the IP Code

6.15 Application for Registration -Secs.

124 to 143 (take note of Sec.124.2)

- Maintenance/Renewal of

registration(Sec. 146)

- Excusable non-use (Sec. 152)

6.16 Rights conferred by registration (Sec. 147-150)

6.17 Rights by third parties of names

similar to registered mark

6.18 Cancellation of Registration –

Sections 151-154

6.19 License Contracts – Section 150

6.20 Infringement and Remedies (Secs.

155-164, 166

a) Trademark Infringement

b) Damages

c) Requirement of Notice

6.21 Unfair Competition

6.22 Collective marks

6.23 Criminal penalties for infringement ,unfair competition, false

designation of origin, and false description or misrepresentation

6.24 Issues in Jurisdiction

 Recommended book of Salao ( pages 123-221 of Salao’s book)

Secs. 121-170 of the IP Code

Powerpoint presentation

VII. Law on Patents

7.1 Purpose of the Patent System

7.2 Patentable Inventions

7.3 Non-Patentable Inventions

7.4 Ownership of a Patent

(1) Right to a patent

(2) First-to-file rule

(3) Inventions created pursuant to a

Commission

(4) Right of priority

7.5 Application for a Patent

7.6 Grounds for Cancellation of a Patent

7.7 Remedy of the true and actual

Inventor

7.8 Rights Conferred by a Patent

7.9 Limitations of Patent Right

(1) Prior user

(2) Use by the Government

7.10 Utiliy Models

- Registrability

- Rights of holder
7.11 Industrial Design

7.12 Patent infringement

(1) Tests in patent infringement

(a) Literal infringement

(b) Doctrine of equivalents

(2) Civil and criminal action

(3) Prescriptive period

(4) Defenses in action for

infringement

7.13 Licensing

(1) Voluntary

(2) Compulsory

7.14 Assignment and transmission of rights

VIII. Searches and Seizures in IP Cases

8.1 Writ of Search and Seizure

8.2 Grounds for Issuance of Writ of

 Search and Seizure

8.3 Bonds and Counterbonds

Ses. 21 -84 of the IP Code

Pages 51-121 of Salao's Textbook