Ipnotes - Copyright

IP NOTES from the syllabus of Atty. Ma.
Karla Ilagan
D. COPYRIGHTS
Sometime in 1989, Pearl and Dean, received reports that
exact copies of its light boxes were installed at SM City and
PEARL AND DEAN (PHIL.), INC. vs. SHOEMART, INC. &
in the fastfood section of SM Cubao. Upon investigation,
NORTH EDSA MARKETING, INC. (2003)
Pearl and Dean found out that aside from the two reported
FACTS: Petitioner Pearl and Dean (Phil.), Inc. is a SM branches, light boxes similar to those it manufactures
corporation engaged in the manufacture of advertising were also installed in two other SM stores. It further
display units simply referred to as light boxes. These units discovered that respondent North Edsa Marketing Inc.
utilize specially printed posters sandwiched between plastic (NEMI), through its marketing arm, Prime Spots Marketing
sheets and illuminated with back lights. Services, was set up primarily to sell advertising space in
lighted display units located in SMI's different branches.
Pearl and Dean was able to secure a Certificate of Pearl and Dean noted that NEMI is a sister company of
Copyright Registration dated January 20, 1981 over these SMI.
illuminated display units. The advertising light boxes were
marketed under the trademark "Poster Ads". In the light of its discoveries, Pearl and Dean sent a letter
dated December 11, 1991 to both SMI and NEMI enjoining
The application for registration of the trademark was filed them to cease using the subject light boxes and to remove
with the Bureau of Patents, Trademarks and Technology the same from SMI's establishments. It also demanded the
Transfer on June 20, 1983, but was approved only on discontinued use of the trademark "Poster Ads," and the
September 12, 1988, per Registration No. 41165. From payment to Pearl and Dean of compensatory damages in
1981 to about 1988, Pearl and Dean employed the services the amount of P20,000,000.00.
of Metro Industrial Services to manufacture its advertising
displays. Instant case
Sometime in 1985, Pearl and Dean negotiated with Upon receipt of the demand letter, SMI suspended the
respondent Shoemart, Inc. (SMI) for the lease and leasing of two hundred twenty-four (224) light boxes and
installation of the light boxes in SM City North Edsa. Since NEMI took down its advertisements for "Poster Ads" from
SM City North Edsa was under construction at that time, the lighted display units in SMI's stores. Claiming that both
SMI offered as an alternative, SM Makati and SM Cubao, to SMI and NEMI failed to meet all its demands, Pearl and
which Pearl and Dean agreed. Only the contract for SM Dean filed this instant case for infringement of trademark
Makati, was signed. On October 4, 1985, Vergara wrote and copyright, unfair competition, and damages.
Abano inquiring about the other contract and reminding
SMI’S CONTENTIONS: In denying the charges hurled
him that their agreement for installation of light boxes was
against it, SMI maintained that:
also for SM Cubao.
• it independently developed its poster panels using
SMI's house counsel informed Pearl and Dean that it was
commonly known techniques and available technology,
rescinding the contract for SM Makati due to non-
without notice of or reference to Pearl and Dean's
performance of the terms thereof. In his reply dated
copyright.
February 17, 1986, Vergara protested the unilateral action
of SMI, saying it was without basis. In the same letter, he • the registration of the mark "Poster Ads" was only for
pushed for the signing of the contract for SM Cubao. stationeries such as letterheads, envelopes, and the like.
Two years later, Metro Industrial Services, the company • Pearl and Dean is not entitled to the reliefs prayed for in
formerly contracted by Pearl and Dean to fabricate its its complaint since its advertising display units contained
display units, offered to construct light boxes for no copyright notice, in violation of Section 27 of P.D. 49.
Shoemart's chain of stores. SMI approved the proposal and
ten light boxes were subsequently fabricated by Metro PETITIONER’S CONTENTION: SMI infringed on Pearl and
Industrial for SMI. After its contract with Metro Industrial Dean’s copyright over the light boxes when SMI had the
was terminated, SMI engaged the services of EYD Rainbow units manufactured by Metro and EYD Rainbow Advertising
Advertising Corporation to make the light boxes. Some 300 for its own account.
units were fabricated in 1991. These were delivered on a
staggered basis and installed at SM Megamall and SM City.
IP NOTES from the syllabus of Atty. Ma. Karla Ilagan
Petitioner's position was premised on its belief that its The strict application of the law's enumeration in Section 2
copyright over the engineering drawings extended ipso prevents us from giving petitioner even a little leeway, that
facto to the light boxes depicted or illustrated in said is, even if its copyright certificate was entitled "Advertising
drawings. Display Units." What the law does not include, it excludes,
and for the good reason: the light box was not a literary or
ISSUE: Whether or not the copyright over the drawings artistic piece which could be copyrighted under the
extended to the light boxes depicted or illustrated in the copyright law. And no less clearly, neither could the lack of
drawings. – NO statutory authority to make the light box copyrightable be
remedied by the simplistic act of entitling the copyright
RULING: The Court agreed with the CA that the copyright
certificate issued by the National Library as "Advertising
was limited to the drawings.
Display Units."
First, petitioner's application for a copyright certificate – as
In fine, if SMI and NEMI reprinted Pearl and Dean's
well as Copyright Certificate No. PD-R2588 issued by the
technical drawings for sale to the public without license
National Library on January 20, 1981 – clearly stated that it
from Pearl and Dean, then no doubt they would have been
was for a class "O" work under Section 2 (O) of P.D. 49 (The
guilty of copyright infringement. But this was not the case.
Intellectual Property Decree) which was the statute then
SMI's and NEMI's acts complained of by Pearl and Dean
prevailing. Said Section 2 expressly enumerated the works
were to have units similar or identical to the light box
subject to copyright:
illustrated in the technical drawings manufactured by
Section 2. The rights granted by this Decree shall, from the Metro and EYD Rainbow Advertising, for leasing out to
moment of creation, subsist with respect to any of the different advertisers. This was not an infringement of
following works: petitioner's copyright over the technical drawings.
xxxxxxxxx What can be the subject of copyright
(O) Prints, pictorial illustrations, advertising copies, labels, During the trial, the president of Pearl and Dean himself
tags, and box wraps; admitted that the light box was neither a literary not an
artistic work but an "engineering or marketing invention”.
xxxxxxxxx
There appeared to be some confusion regarding what
Although petitioner's copyright certificate was entitled ought or ought not to be the proper subjects of copyrights,
"Advertising Display Units" (which depicted the box-type patents and trademarks. In the leading case of Kho v. Court
electrical devices), its claim of copyright infringement of Appeals, the Court ruled that these three legal rights –
cannot be sustained. patents , copyrights, and trademarks – are completely
distinct and separate from one another and cannot be
Rule: Copyright, in the strict sense of the term, is purely a
interchanged with one another, and the protection
statutory right. Being a mere statutory grant, the rights are
afforded by one cannot be used interchangeably to cover
limited to what the statute confers. It may be obtained and
items or works that exclusively pertain to the others:
enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the …A trademark is any visible sign capable of distinguishing
statute. Accordingly, it can cover only the works falling the goods (trademark) or services (service mark) of an
within the statutory enumeration or description. enterprise and shall include a stamped or marked container
of goods.
In this case: Pearl and Dean secured its copyright under the
classification class "O" work. This being so, petitioner's In relation thereto, a trade name means the name or
copyright protection extended only to the technical designation identifying or distinguishing an enterprise.
drawings within the category of "pictorial illustrations” and
not to the light box itself because the latter was not at all in Meanwhile, the scope of a copyright is confined to literary
the category of "prints, pictorial illustrations, advertising and artistic works which are original intellectual creations
copies, labels, tags and box wraps."
in the literary and artistic domain protected from the the patent registration certificate, to distribute
moment of their creation. and market Chin Chun Su products in the
Philippines had already been terminated by the
Patentable inventions, on the other hand, refer to any said Taiwanese Manufacturing Company.
technical solution of a problem in any field of human Recall that Kho applied for the issuance of a preliminary
activity which is new, involves an inventive step and is injunctive order on the ground that she is entitled to the
industrially applicable. use of the trademark on Chin Chun Su and its container
based on her copyright and patent over the same.
KHO VS. COURT OF APPEALS ISSUE: WON the copyright and patent over the name and
container of a beauty cream product would entitle the
FACTS: Dec. 20, 1991- Kho filed a complaint for injunction
registrant to the use and ownership over the same to the
and damages against the respondents Summerville and
exclusion of others. – NO.
Ang Tiam Chay.
RULING: Trademark, copyright and patents are different
-Kho (doing business under the name and style of
intellectual property rights that cannot be interchanged
KEC Cosmetics Laboratory) alleged that it is the
with one another.
registered owner of the copyrights Chin Chun Su
and Oval Facial Cream Container/Case, as shown A trademark is any visible sign capable of distinguishing
by Certificates of Copyright Registration No. 0- the goods (trademark) or services (service mark) of an
1358 and No. 0-3678; enterprise and shall include a stamped or marked container
-that she also has patent rights on Chin Chun Su of goods. In relation thereto, a trade name means the
& Device and Chin Chun Su for medicated cream name or designation identifying or distinguishing an
after purchasing the same from Quintin Cheng, enterprise.
the registered owner thereof in the Supplemental
Register of the PPO on February 7, 1980 under Meanwhile, the scope of a copyright is confined to literary
Registration Certificate No. 4529; and artistic works which are original intellectual creations in
-that Summerville advertised and sold petitioner's the literary and artistic domain protected from the moment
cream products under the brand name Chin Chun of their creation.
Su, in similar containers that Kho uses, thereby
Patentable inventions, on the other hand, refer to any
misleading the public, and resulting in the decline
technical solution of a problem in any field of human
in the its business sales and income; and,
activity which is new, involves an inventive step and is
-that the respondents should be enjoined from
industrially applicable.
allegedly infringing on the copyrights and patents
of the petitioner.
Kho has no right to support her claim for the exclusive use
The respondents, on the other hand, alleged as their
of the subject trade name and its container. The name and
defense that:
container of a beauty cream product are proper subjects of
a trademark inasmuch as the same falls squarely within its
-Summerville is the exclusive and authorized
definition.
importer, re-packer and distributor of Chin Chun
Su products manufactured by Shun Yi Factory of
In order to be entitled to exclusively use the same in the
Taiwan;
sale of the beauty cream product, the user must sufficiently
-that the said Taiwanese manufacturing company
prove that she registered or used it before anybody else
authorized Summerville to register its trade name
did.
Chin Chun Su Medicated Cream with the
Philippine Patent Office and other appropriate Kho’s copyright and patent registration of the name and
governmental agencies; container would not guarantee her the right to the
-that KEC Cosmetics Laboratory of the petitioner exclusive use of the same for the reason that they are not
obtained the copyrights through appropriate subjects of the said intellectual rights.
misrepresentation and falsification; and,
-that the authority of Quintin Cheng, assignee of Consequently, a preliminary injunction order cannot be
the patent registration certificate, to distribute issued for the reason that Kho has not proven that she has
and market Chin Chun Su products in the a clear right over the said name and container to the
a clear right over the said name and container to the ISSUE: Whether or not the issuance of a writ of preliminary
exclusion of others, not having proven that she has injunction (enjoining Unilever from using and airing certain
registered a trademark thereto or used the same before television commercials for its laundry products claimed to
anyone did. be identical or similar to its “double tug” or “tac-tac” key
visual) was proper. YES
UNILEVER PHILIPPINES (PRC), INC. vs. COURT OF
RULING: Section 2, Presidential Decree 49 stipulates that
APPEALS
the copyright for a work or intellectual creation subsists
FACTS: Proctor and Gamble Philippines or P&GP from the moment of its creation. The creator acquires
(respondent) filed a complaint for injunction with damages copyright for his work right upon its creation.
and a prayer for temporary restraining order and/or writ of
IN THIS CASE:
preliminary injunction against Unilever (petitioner).
• The Supreme Court noted that Unilever did not deny that
P&G Allegations:
the questioned TV advertisements are substantially similar
• Since 1982, a P&G subsidiary in Italy used a key visual in to P&GPs “double tug” or “tac-tac” key visual.
the advertisement of its laundry detergent and bleaching
• But the Court observed that Unilever’s contention is that
products, known as the “double-tug” or “tac-tac” wherein
P&GP is not entitled to any protection because it has not
the fabric is being held by both hands and stretched
registered with the National Library the very TV
sideways.
commercials which it claims have been infringed by
• Since then, P&G has used this “tac-tac” key visual in the Unilever.
advertisement of its products such as in the television
The Supreme Court disagreed to such contention. Contrary
commercial in Italy for “Ace” entitled “Kite.”
to such, the intellectual creator’s exercise and enjoyment of
• This key visual is also used in the Philippines. copyright for his work and the protection given by law to
him is not contingent or dependent on any formality or
• In 1993, Unilever blatantly disregarded the P&GP’s registration. But rather, P&G acquired copyright of its work
intellectual property rights when it started airing a 60- right upon its creation.
second television commercial “TVC” of its “Breeze
Powerwhite” laundry product called “Porky.” Therefore, taking the material allegations of P&GP, for
purposes of determining whether preliminary injunction
• The said TVC included a stretching visual presentation should be issued during the pendency of the case, P&GP is
and sound effects almost identical or substantially similar entitled to the injunctive relief prayed for in its Complaint.
to P&GPs “tac-tac” key visual.
As alleged in the Complaint P&GP is a subsidiary of Procter
• In 1994, P&G aired in the Philippines the same “Kite” and Gamble Company (P&G) for which the “double tug” or
television advertisement it used in Italy, merely dubbing “tac-tac” key visual was conceptualized or created. In that
the Italian language with Filipino for the same product capacity, P&GP used the said TV advertisement in the
“Ace” bleaching liquid. Philippines to promote its products. As such subsidiary,
P&GP is definitely within the protective mantle of the
• Unilever filed a Complaint with the Advertising Board of
statute (Sec. 6, PD 49).
the Philippines to prevent P&GP from airing “Kite”
television advertisement.
1. COPYRIGHTABLE WORKS
The judge issued an order granting the temporary
restraining order, and for the writ of preliminary injunction SECTION 171. Definitions. — For the purpose of this Act,
which the Unilever opposed on the ground that P&GP has the following terms have the following meaning:
no Certificates of Copyright Registration with respect to its
“double-tug” or “tac-tac” key visual unlike to that of 171.1. "Author" is the natural person who has created the
Unilever. work;
171.2. A "collective work" is a work which has been created original or a copy of a work or a sound recording for a
by two (2) or more natural persons at the initiative and limited period of time, for profit-making purposes;
under the direction of another with the understanding that
it will be disclosed by the latter under his own name and 171.9. "Reproduction" is the making of one (1) or more
that contributing natural persons will not be identified; copies of a work or a sound recording in any manner or
form (Sec. 41 (E), P.D. No. 49 a);
171.3. "Communication to the public" or "communicate to
the public" means the making of a work available to the 171.10.A "work of applied art" is an artistic creation with
public by wire or wireless means in such a way that utilitarian functions or incorporated in a useful article,
members of the public may access these works from a whether made by hand or produced on an industrial scale;
place and time individually chosen by them;
171.11.A "work of the Government of the Philippines" is a
171.4. A "computer" is an electronic or similar device work created by an officer or employee of the Philippine
having information-processing capabilities, and a Government or any of its subdivisions and
"computer program" is a set of instructions expressed in instrumentalities, including government-owned or
words, codes, schemes or in any other form, which is controlled corporations as a part of his regularly prescribed
capable when incorporated in a medium that the computer official duties.
can read, of causing the computer to perform or achieve a
SECTION 181. Copyright and Material Object. — The
particular task or result;
copyright is distinct from the property in the material
171.5. "Public lending" is the transfer of possession of the object subject to it. Consequently, the transfer or
original or a copy of a work or sound recording for a assignment of the copyright shall not itself constitute a
limited period, for non-profit purposes, by an institution transfer of the material object. Nor shall a transfer or
the services of which are available to the public, such as assignment of the sole copy or of one or several copies of
public library or archive; the work imply transfer or assignment of the copyright.
(Sec. 16, P.D. No. 49)
171.6. "Public performance", in the case of a work other
A. ORIGINAL WORKS
than an audiovisual work, is the recitation, playing, dancing,
acting or otherwise performing the work, either directly or SECTION 172. Literary and Artistic Works. —
by means of any device or process; in the case of an
172.1. Literary and artistic works, hereinafter referred to as
audiovisual work, the showing of its images in sequence
"works", are original intellectual creations in the literary and
and the making of the sounds accompanying it audible;
artistic domain protected from the moment of their
and, in the case of a sound recording, making the recorded
creation and shall include in particular:
sounds audible at a place or at places where persons
outside the normal circle of a family and that family's
a. Books, pamphlets, articles and other writings;
closest social acquaintances are or can be present,
b. Periodicals and newspapers;
irrespective of whether they are or can be present at the
c. Lectures, sermons, addresses, dissertations prepared for
same place and at the same time, or at different places
oral delivery, whether or not reduced in writing or other
and/or at different times, and where the performance can
material form;
be perceived without the need for communication within
d. Letters;
the meaning of Subsection 171.3;
e. Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb shows;
171.7. "Published works" means works, which, with the
f. Musical compositions, with or without words;
consent of the authors, are made available to the public by
g. Works of drawing, painting, architecture, sculpture,
wire or wireless means in such a way that members of the
engraving, lithography or other works of art; models or
public may access these works from a place and time
designs for works of art;
individually chosen by them: Provided, That availability of
h. Original ornamental designs or models for articles of
such copies has been such, as to satisfy the reasonable
manufacture, whether or not registrable as an industrial
requirements of the public, having regard to the nature of
design, and other works of applied art;
the work;
i. Illustrations, maps, plans, sketches, charts and three-
171.8. "Rental" is the transfer of the possession of the dimensional works relative to geography, topography,
original or a copy of a work or a sound recording for a architecture or science;
architecture or science; search warrants against respondent Salinas, alleged to be
j. Drawings or plastic works of a scientific or technical reproducing and distributing said models in violation of
character; the IP Code. Respondent moved to quash the warrants on
k. Photographic works including works produced by a the ground that petitioner’s work is not artistic in nature
process analogous to photography; lantern slides; and is a proper subject of a patent, not copyright.
l. Audiovisual works and cinematographic works and works Petitioner insists that the IP Code protects a work from the
produced by a process analogous to cinematography or moment of its creation regardless of its nature or purpose.
any process for making audio-visual recordings; The trial court quashed the warrants. Petitioner argues that
m. Pictorial illustrations and advertisements; the copyright certificates over the model are prima facie
n. Computer programs; and evidence of its validity. CA affirmed the trial court’s
o. Other literary, scholarly, scientific and artistic works. decision.
172.2. Works are protected by the sole fact of their ISSUES: (1) Whether or not petitioner’s model is an artistic
creation, irrespective of their mode or form of expression, work subject to copyright protection.
as well as of their content, quality and purpose. (Sec. 2, P.D.
(2) Whether or not petitioner is entitled to copyright
No. 49a) cda
protection on the basis of the certificates of registration
A1. DOCTRINE OF CONCEPTUAL SEPARABILITY issued to it.
If a pictorial, graphic or sculptural work is a "useful article", RULING:

it is copyrighted only if its aesthetic features are separable
(1) NO. As gleaned from the specifications appended to the
from its utilitarian features.
application for a copyright certificate filed by the
A useful article is an article having an intrinsic utilitarian
petitioner, the said Leaf Spring Eye Bushing for Automobile
function that is not merely to portray the appearance of
and Vehicle Bearing Cushion are merely utility models. As
the article or to convey information.
gleaned from the description of the models and their
They must be separable from the functional aspect to be
objectives, these articles are useful articles which are
copyrighted.
defined as one having an intrinsic utilitarian function that is
There are several different tests available for conceptual
not merely to portray the appearance of the article or to
separability:
convey information. Plainly, these are not literary or artistic
1. 1st Test – Primary Use test, asks how is the thing
works. They are not intellectual creations in the literary and
primarily used: art or function?
artistic domain, or works of applied art. They are certainly
2. 2nd Test – Marketable as Art test, asks can the article
not ornamental designs or one having decorative quality or
be sold as art, whether functional or not. This test does not
value. Indeed, while works of applied art, original
have much backing, as almost anything can be sold as art.
intellectual, literary and artistic works are copyrightable,
3. 3rd Test – Temporal Displacement, asks could an
useful articles and works of industrial design are not.
individual conceptualize the article as art without
conceptualizing functionality at the same time. Doctrine of Conceptual Separability: A useful article may be
4. Denicola Test – Copyrightability should ultimately copyrightable only if and only to the extent that such
depend on the extent to which the work reflects the artistic design incorporates pictorial, graphic, or sculptural features
expression inhibited by functional consideration. If that can be identified separately from, and are capable of
something came to have a pleasing shape because there existing independently of the utilitarian aspects of the
were functional considerations, the artistic aspect was article.
constrained by those concerns.
In this case, the bushing and cushion are not works of art.
CHING VS. SALINAS, SR., They are, as the petitioner himself admitted, utility models
which may be the subject of a patent.
FACTS: Petitioner Ching is a maker and manufacturer of a
utility model, Leaf Spring Eye Bushing for Automobile, for (2) NO. No copyright granted by law can be said to arise in
which he holds certificates of copyright registration. favor of the petitioner despite the issuance of the
Petitioner’s request to the NBI to apprehend and prosecute certificates of copyright registration and the deposit of the
illegal manufacturers of his work led to the issuance of Leaf Spring Eye Bushing and Vehicle Bearing Cushion.
Indeed, in Joaquin, Jr. v. Drilon and Pearl & Dean (Phil.),
Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Said article provides:
Indeed, in Joaquin, Jr. v. Drilon and Pearl & Dean (Phil.),
Incorporated v. Shoemart, Incorporated, the Court ruled Nobody may reproduce another person's work without the
that: owner's consent, even merely to annotate or add anything
to it, or improve any edition thereof.
Copyright, in the strict sense of the term, is purely a
statutory right. It is a new or independent right granted by Therefore, in order that said article may be violated, it is
the statute, and not simply a pre-existing right regulated not necessary, that a work should be an improper copy of
by it. Being a statutory grant, the rights are only such as the another work previously published. It is enough that
statute confers, and may be obtained and enjoyed only another's work has been reproduced without the consent
with respect to the subjects and by the persons, and on of the owner, even though it be only to annotate, add
terms and conditions specified in the statute. Accordingly, something to it, or improve any edition thereof.
it can cover only the works falling within the statutory
ISSUE: Whether or not Paglinawan is guilty of
enumeration or description.
infringement. - YES
Ownership of copyrighted material is shown by proof of
RULING: The CFI is of the view that the reproduction of
originality and copyrightability. To discharge his burden,
another's dictionary without the owner's consent does not
the applicant may present the certificate of registration
constitute a violation of the Law of Intellectual Property
covering the work or, in its absence, other evidence. A
because dictionaries have to be made with the aid of
copyright certificate provides prima facie evidence of
others, and they are improved by the increase of words.
originality which is one element of copyright validity. It
constitutes prima facie evidence of both validity and
The protection of the law cannot be denied to the author
ownership and the validity of the facts stated in the
of a dictionary, for although words are not the property of
certificate.
anybody, their definitions, the example that explain their
sense, and the manner of expressing their different
LAKTAW VS. PAGLINAWAN
meanings, may constitute a special work.
FACTS: Pedro Laktaw was the registered owner of a literary
From the evidences presented, it was shown that out of
work entitled Diccionario Hispano Tagalog (Spanish-
23,560 Spanish words in Paglinawan’s dictionary, 20,452
Tagalog Dictionary) published in 1889 by the La Opinion.
words were copied from Laktaw. Paglinawan also literally
Mamerto Paglinawan, without consent of the Laktaw,
reproduced and copied for the Spanish words in his
reproduced the said literary work, improperly copied the
dictionary, the equivalents, definitions and different
greater part thereof in the work published by him entitled
meanings in Tagalog, given in Pedro's dictionary although
Diccionariong Kastila-Tagalog (Spanish- Tagalog
as to some he made some additions of his own. The
Dictionary).
printer's errors in Laktaw’s dictionary as to the expression
Paglinawan’s act, which is a violation of Article 7 of the Law of some words in Spanish as well as their equivalents in
of January 10, 1879, on Intellectual Property, caused Tagalog are also reproduced in Paglinawan’s.
irreparable injuries to Laktaw amounting to $ 10,000.00.
Laktaw, cannot be denied the legal protection which he
Paglinawan denied Laktaw’s allegation and prayed that CFI
seeks, and which is based on the fact that the dictionary
absolve him which the court did. The ground of the CFI's
published by him in 1889 is his property — said property
decision is that a comparison of Pedro's dictionary with
right being recognized and having been granted by article
that of Mamerto does not show that the latter is an
7, in connection with article 2, of said law.
improper copy of the former, which has been published
and offered for sale by Pedro for about twenty-five years or Additional Notes:
more.
The Law of January 10, 1879, on Intellectual Property, in
Laktaw contends that the court erred in not declaring force in Philippines when the Laktaw's dictionary was
Paglinawan to have reproduced his work and that edited and published in 1889. Even considering that said
Paglinawan had violated article 7 of the Law, on Intellectual Law, ceased to operate in the Philippines, upon the
Property. termination of Spanish sovereignty and the substitution
thereof by US, the right of Laktaw to invoke said law in
support of the action instituted by him in the present case
support of the action instituted by him in the present case employed or any part thereof, or be construed to imply any
cannot be disputed. right to such use of the original works, or to secure or
extend copyright in such original works. (Sec. 8, P.D. 49; Art.
Indeed the property right recognized and protected by the 10, TRIPS)
Law of January 10, 1879, on Intellectual Property, would be
illusory if, by reason of the fact that said law is no longer in 2. NON-COPYRIGHTABLE WORKS
force as a consequence of the change of sovereignty of the
Philippines, the author of a work, who has the exclusive SECTION 175. Unprotected Subject Matter. —
right to reproduce it, could not prevent another person Notwithstanding the provisions of Sections 172 and 173,
from so doing without his consent, and could not enforce no protection shall extend, under this law, to any idea,
this right through the courts of justice. procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are
MANRESA: expressed, explained, illustrated or embodied in a work;
news of the day and other miscellaneous facts having the
He who writes a book, or carves a statue, or makes an character of mere items of press information; or any official
invention, has the absolute right to reproduce or sell it, just text of a legislative, administrative or legal nature, as well
as the owner of land has the absolute right to sell it or its as any official translation thereof. (n)
fruits. But while the owner of land, by selling it and its
fruits, perhaps fully realizes all its economic value, by SECTION 176. Works of the Government. —
receiving its benefits and utilities, which are presented, for 176.1. No copyright shall subsist in any work of the
example, by the price, on the other hand the author of a Government of the Philippines. However, prior approval of
book, statue or invention, does not reap all the benefits the government agency or office wherein the work is
and advantages of his own property by disposing of it, for created shall be necessary for exploitation of such work for
the most important form of realizing the economic profit. Such agency or office may, among other things,
advantages of a book, statue or invention, consists in the impose as a condition the payment of royalties. No prior
right to reproduce it in similar or like copies, everyone of approval or conditions shall be required for the use for any
which serves to give to the person reproducing them all purpose of statutes, rules and regulations, and speeches,
the conditions which the original requires in order to give lectures, sermons, addresses, and dissertations,
the author the full enjoyment thereof. If the author of a pronounced, read or rendered in courts of justice, before
book, after its publication, cannot prevent its reproduction administrative agencies, in deliberative assemblies and in
by any person who may want to reproduce it, then the meetings of public character. (Sec. 9, first par., P.D. No. 49)
property right granted him is reduced to a very 176.2. The author of speeches, lectures, sermons,
insignificant thing and the effort made in the production of addresses, and dissertations mentioned in the preceding
the book is no way rewarded. paragraphs shall have the exclusive right of making a
collection of his works. (n)
B. DERIVATIVE WORKS 176.3. Notwithstanding the foregoing provisions, the
Government is not precluded from receiving and holding
SECTION 173. Derivative Works. —
copyrights transferred to it by assignment, bequest or
173.1. The following derivative works shall also be
otherwise; nor shall publication or republication by the
protected by copyright:
Government in a public document of any work in which
a. Dramatizations, translations, adaptations, abridgments,
copyright is subsisting be taken to cause any abridgment
arrangements, and other alterations of literary or artistic
or annulment of the copyright or to authorize any use or
works; and
appropriation of such work without the consent of the
b. Collections of literary, scholarly or artistic works, and
copyright owner. (Sec. 9, third par., P.D. No. 49)
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) JOAQUIN ET AL VS. HON. DRILON ET AL
173.2. The works referred to in paragraphs (a) and (b) of
FACTS:
Subsection 173.1 shall be protected as new works: Provided
however, That such new work shall not affect the force of • BJ Productions, Inc. (BJPI) is the holder/grantee of
any subsisting copyright upon the original works Certificate of Copyright No. M922, dated January 28, 1971,
of Rhoda and Me, a dating game show aired from 1970 to The essence of a copyright infringement is the similarity or
1977. at least substantial similarity of the purported pirated
works to the copyrighted work. Hence, the applicant must
• On June 28, 1973, BJPI submitted to the National Library present to the court the copyrighted films to compare
an addendum to its certificate of copyright specifying the them with the purchased evidence of the video tapes
show’s format and style of presentation. allegedly pirated to determine whether the latter is an
unauthorized reproduction of the former. This linkage of
• On July 14, 1991, while watching television, Francisco
the copyrighted films to the pirated films must be
Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an
established to satisfy the requirements of probable cause.
episode of It’s a Date, which was produced by IXL
Mere allegations as to the existence of the copyrighted
Productions, Inc. (IXL).
films cannot serve as basis for the issuance of a search
• On July 18, 1991, he wrote a letter to Gabriel M. Zosa, warrant.
president and general manager of IXL, informing Zosa that
ISSUE:
BJPI had a copyright to Rhoda and Me and demanding that
IXL discontinue airing It’s a Date. 1. Whether or not the format of the show is copyrightable.
– NO
• In a letter, dated July 19, 1991,Zosa apologized to Joaquin
and requested a meeting to discuss a possible settlement. 2. Whether or not there was a need to produce the master
IXL, however, continued airing It’s a Date, prompting tape to establish the existence of probable cause for
Joaquin to send a second letter on July 25, 1991 in which copyright infringement. – YES
he reiterated his demand and warned that, if IXL did not
comply, he would endorse the matter to his attorneys for RULING:
proper legal action.
1. To begin with, the format of a show is not copyrightable.
• Meanwhile, Zosa sought to register IXL’s copyright to the
first episode of It’s a Date for which it was issued by the Section 2 of P.D. No. 49, 10 otherwise known as the
National Library a certificate of copyright on August 14, DECREE ON INTELLECTUAL PROPERTY, enumerates the
1991. classes of work entitled to copyright protection, to wit:
SECTION 2. The rights granted by this Decree shall, from

• On August 12, 1992, the Secretary of Justice directed the
the moment of creation, subsist with respect to any of
dismissal of the case against Zosa.
the following classes of works:
(A)Books, including composite and cyclopedic works,
JOAQUIN’S CONTENTIONS:
manuscripts, directories, and gazetteers;
(B)Periodicals, including pamphlets and newspapers;
• Joaquin claims that the master videotape should have
(C)Lectures, sermons, addresses, dissertations prepared
been presented in order to determine whether there was
for oral delivery;
probable cause for copyright infringement.
(D)Letters;
(E)Dramatic or dramatico-musical compositions;
• They contend that 20th Century Fox Film Corporation v.
choreographic works and entertainments in dumb
Court of Appeals, is inapplicable to the case at bar because shows, the acting form of which is fixed in writing or
in the present case, the parties presented sufficient otherwise;
evidence which clearly establish "linkages between the (F)Musical compositions, with or without words;
copyrighted show ‘Rhoda and Me’ and the infringing TV (G)Works of drawing, painting, architecture, sculpture,
show ‘It’s a Date.’ engraving, lithography, and other works of art; models
or designs for works of art;
The case of 20th Century Fox Film Corporation involved (H)Reproductions of a work of art;
raids conducted on various videotape outlets allegedly (I)Original ornamental designs or models for
selling or renting out "pirated" videotapes. The trial court articles of manufacture, whether or not
found that the affidavits of NBI agents, given in support of patentable, and other works of applied art;
the application for the search warrant, were insufficient (J)Maps, plans, sketches, and charts;
without the master tape. (K)Drawings or plastic works of a scientific or
technical character;
(L) Photographic works and works produced by a
(L)Photographic works and works produced by a new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
process analogous to photography; lantern slides; provides:
(M)Cinematographic works and works produced by a
process analogous to cinematography or any process SECTION 175. Unprotected Subject Matter. —
for making audio-visual recordings; Notwithstanding the provisions of Sections 172 and 173,
(N)Computer programs;
no protection shall extend, under this law, to any idea,
(O)Prints, pictorial illustrations advertising copies, labels,
procedure, system, method or operation, concept,
tags, and box wraps;
(P)Dramatizations, translations, adaptations, principle, discovery or mere data as such, even if they are
abridgments, arrangements and other alterations of expressed, explained, illustrated or embodied in a work;
literary, musical or artistic works or of works of the news of the day and other miscellaneous facts having the
Philippine government as herein defined, which shall be character of mere items of press information; or any official
protected as provided in Section 8 of this Decree. text of a legislative, administrative or legal nature, as well
(Q)Collections of literary, scholarly, or artistic works or of as any official translation thereof.
works referred to in Section 9 of this Decree which by
reason of the selection and arrangement of their What then is the subject matter of petitioners’ copyright?
contents constitute intellectual creations, the same to be
protected as such in accordance with Section 8 of this This Court is of the opinion that petitioner BJPI’s copyright
Decree. covers audio-visual recordings of each episode of Rhoda
(R)Other literary, scholarly, scientific and artistic works.
and Me, as falling within the class of works mentioned in
This provision is substantially the same as §172 of the
P.D. 49, §2(M)
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A.
No. 8293). The copyright does not extend to the general concept or
format of its dating game show. Accordingly, by the very
The format or mechanics of a television show is not
nature of the subject of petitioner BJPI’s copyright, the
included in the list of protected works in §2 of P.D. No. 49.
investigating prosecutor should have the opportunity to
For this reason, the protection afforded by the law cannot
compare the videotapes of the two shows.
be extended to cover them.
Mere description by words of the general format of the two
Copyright, in the strict sense of the term, is purely a
dating game shows is insufficient; the presentation of the
statutory right.
master videotape in evidence was indispensable to the
determination of the existence of probable cause.
It is a new or independent right granted by the statute, and
not simply a pre-existing right regulated by the statute.
Being a statutory grant, the rights are only such as the 3. RIGHTS OF COPYRIGHT OWNER
statute confers, and may be obtained and enjoyed only
with respect to the subjects and by the persons, and on SECTION 174. Published Edition of Work. — In addition
terms and conditions specified in the statute. to the right to publish granted by the author, his heirs, or
assigns, the publisher shall have a copyright consisting
Since . . . copyright in published works is purely a statutory merely of the right of reproduction of the typographical
creation, a copyright may be obtained only for a work arrangement of the published edition of the work. (n)
falling within the statutory enumeration or description.
SECTION 177. Copyright or Economic Rights. — Subject
Regardless of the historical viewpoint, it is authoritatively to the provisions of Chapter VIII, copyright or economic
settled in the United States that there is no copyright rights shall consist of the exclusive right to carry out,
except that which is both created and secured by act of authorize or prevent the following acts:
Congress . . 177.1. Reproduction of the work or substantial portion of
the work;
P.D. No. 49, §2, in enumerating what are subject to
177.2. Dramatization, translation, adaptation, abridgment,
copyright, refers to finished works and not to concepts. The
arrangement or other transformation of the work; aisadc
copyright does not extend to an idea, procedure, process,
177.3. The first public distribution of the original and each
system, method of operation, concept, principle, or
copy of the work by sale or other forms of transfer of
discovery, regardless of the form in which it is described,
ownership;
explained, illustrated, or embodied in such work. Thus, the
new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
177.4. Rental of the original or a copy of an audiovisual or SECTION 213. Term of Protection. —
cinematographic work, a work embodied in a sound 213.1. Subject to the provisions of Subsections 213.2 to
recording, a computer program, a compilation of data and 213.5, the copyright in works under Sections 172 and 173
other materials or a musical work in graphic form, shall be protected during the life of the author and for fifty
irrespective of the ownership of the original or the copy (50) years after his death. This rule also applies to
which is the subject of the rental; (n) posthumous works. (Sec. 21, first sentence, P.D. No. 49a)
177.5. Public display of the original or a copy of the work; 213.2. In case of works of joint authorship, the economic
177.6. Public performance of the work; and rights shall be protected during the life of the last surviving
177.7. Other communication to the public of the work. (Sec. author and for fifty (50) years after his death. (Sec. 21,
5, P. D. No. 49a) second sentence, P.D. No. 49)
213.3. In case of anonymous or pseudonymous works, the
SECTION 193. Scope of Moral Rights. — The author of a copyright shall be protected for fifty (50) years from the
work shall, independently of the economic rights in Section date on which the work was
177 or the grant of an assignment or license with respect first lawfully published: Provided, That where, before the
to such right, have the right: expiration of the said period, the author's identity is
193.1. To require that the authorship of the works be revealed or is no longer in doubt, the provisions of
attributed to him, in particular, the right that his name, as Subsections 213.1. and 213.2 shall apply, as the case may
far as practicable, be indicated in a prominent way on the be: Provided, further, That such works if not published
copies, and in connection with the public use of his work; before shall be protected for fifty (50) years counted from
193.2. To make any alterations of his work prior to, or to the making of the work. (Sec. 23, P.D. No. 49)
withhold it from publication; 213.4. In case of works of applied art the protection shall
193.3. To object to any distortion, mutilation or other be for a period of twenty-five (25) years from the date of
modification of, or other derogatory action in relation to, making. (Sec. 24(B), P.D. No. 49a)
his work which would be prejudicial to his honor or 213.5. In case of photographic works, the protection shall
reputation; and be for fifty (50) years from publication of the work and, if
193.4. To restrain the use of his name with respect to any unpublished, fifty (50) years from the making. (Sec. 24(C),
work not of his own creation or in a distorted version of his P.D. 49a)
work. (Sec. 34, P.D. No. 49) 213.6. In case of audio-visual works including those
produced by process analogous to photography or any
process for making audio-visual recordings, the term shall
SECTION 196. Contribution to Collective Work. — When
be fifty (50) years from date of publication and, if
an author contributes to a collective work, his right to have
unpublished, from the date of making. (Sec. 24(C), P.D. No.
his contribution attributed to him is deemed waived unless
49a)
he expressly reserves it. (Sec. 37, P.D. No. 49)
SECTION 200. Sale or Lease of Work. — In every sale or SECTION 214. Calculation of Term. — The term of
lease of an original work of painting or sculpture or of the protection subsequent to the death of the author provided
original manuscript of a writer or composer, subsequent to in the preceding Section shall run from the date of his
the first disposition thereof by the author, the author or his death or of publication, but such terms shall always be
heirs shall have an inalienable right to participate in the deemed to begin on the first day of January of the year
gross proceeds of the sale or lease to the extent of five following the event which gave rise to them. (Sec. 25, P.D.
percent (5%). This right shall exist during the lifetime of the No. 49)
author and for fifty (50) years after his death. (Sec. 31, P.D.
No. 49) SECTION 194. Breach of Contract. — An author cannot
be compelled to perform his contract to create a work or
SECTION 201. Works Not Covered. — The provisions of for the publication of his work already in existence.
this Chapter shall not apply to prints, etchings, engravings, However, he may be held liable for damages for breach of
works of applied art, or works of similar kind wherein the such contract. (Sec. 35, P.D. No. 49)
author primarily derives gain from the proceeds of
reproductions. (Sec. 33, P.D. No. 49)
SECTION 195. Waiver of Moral Rights. — An author may creator's death shall be held in trust for and remitted to his
waive his rights mentioned in Section 193 by a written heirs, and in default of the heirs, shall belong to the
instrument, but no such waiver shall be valid where its government. (Sec. 40, P. D. No. 49)
effects is to permit another:
195.1. To use the name of the author, or the title of his SECTION 221. Points of Attachment for Works under
work, or otherwise to make use of his reputation with Sections 172 and 173. —
respect to any version or adaptation of his work which, 221.1. The protection afforded by this Act to copyrightable
because of alterations therein, would substantially tend to works under Sections 172 and 173 shall apply to:
injure the literary or artistic reputation of another author; a. Works of authors who are nationals of, or have their
or habitual residence in, the Philippines;
195.2. To use the name of the author with respect to a b. Audio-visual works the producer of which has his
work he did not create. (Sec. 36, P.D. No. 49) headquarters or habitual residence in the Philippines;
c. Works of architecture erected in the Philippines or other
SECTION 197. Editing, Arranging and Adaptation of artistic works incorporated in a building or other structure
Work. — In the absence of a contrary stipulation at the located in the Philippines;
time an author licenses or permits another to use his work, d. Works first published in the Philippines; and
the necessary editing, arranging or adaptation of such e. Works first published in another country but also
work, for publication, broadcast, use in a motion picture, published in the Philippines within thirty days, irrespective
dramatization, or mechanical or electrical reproduction in of the nationality or residence of the authors.
accordance with the reasonable and customary standards 221.2. The provisions of this Act shall also apply to works
or requirements of the medium in which the work is to be that are to be protected by virtue of and in accordance
used, shall not be deemed to contravene the author's with any international convention or other international
rights secured by this chapter. Nor shall complete agreement to which the Philippines is a party. (n)
destruction of a work unconditionally transferred by the
author be deemed to violate such rights. (Sec. 38, P.D. No. 4. RULES ON OWNERSHIP OF
49) COPYRIGHT
SECTION 198. Term of Moral Rights. — SECTION 178. Rules on Copyright Ownership. —
198.1. The rights of an author under this chapter shall last Copyright ownership shall be governed by the following
during the lifetime of the author and for fifty (50) years rules:
after his death and shall not be assignable or subject to 178.1. Subject to the provisions of this section, in the case
license. The person or persons to be charged with the of original literary and artistic works, copyright shall belong
posthumous enforcement of these rights shall be named in to the author of the work;
writing to be filed with the National Library. In default of 178.2. In the case of works of joint authorship, the co-
such person or persons, such enforcement shall devolve authors shall be the original owners of the copyright and in
upon either the author's heirs, and in default of the heirs, the absence of agreement, their rights shall be governed
the Director of the National Library. by the rules on co-ownership. If, however, a work of joint
198.2. For purposes of this Section, "Person" shall mean authorship consists of parts that can be used separately
any individual, partnership, corporation, association, or and the author of each part can be identified, the author of
society. The Director of the National Library may prescribe each part shall be the original owner of the copyright in the
reasonable fees to be charged for his services in the part that he has created;
application of provisions of this Section. (Sec. 39, P.D. No. 178.3. In the case of work created by an author during and
49) in the course of his employment, the copyright shall
belong to:
SECTION 199. Enforcement Remedies. — Violation of a. The employee, if the creation of the object of copyright
any of the rights conferred by this Chapter shall entitle is not a part of his regular duties even if the employee uses
those charged with their enforcement to the same rights the time, facilities and materials of the employer.
and remedies available to a copyright owner. In addition, b. The employer, if the work is the result of the
damages which may be availed of under the Civil Code performance of his regularly-assigned duties, unless there
may also be recovered. Any damage recovered after the is an agreement, express or implied, to the contrary.
creator's death shall be held 178.4. In the case of a work commissioned by a person
178.4. In the case of a work commissioned by a person SECTION 181. Copyright and Material Object. — The
other than an employer of the author and who pays for it copyright is distinct from the property in the material
and the work is made in pursuance of the commission, the object subject to it. Consequently, the transfer or
person who so commissioned the work shall have assignment of the copyright shall not itself constitute a
ownership of the work, but the copyright thereto shall transfer of the material object. Nor shall a transfer or
remain with the creator, unless there is a written stipulation assignment of the sole copy or of one or several copies of
to the contrary; the work imply transfer or assignment of the copyright.
(Sec. 16, P.D. No. 49)
178.5. In the case of audiovisual work, the copyright shall
belong to the producer, the author of the scenario, the
composer of the music, the film director, and the author of 5. LIMITATIONS ON COPYRIGHT
the work so adapted. However, subject to contrary or other
stipulations among the creators, the producer shall exercise
SECTION 184. Limitations on Copyright. —
the copyright to an extent required for the exhibition of the
work in any manner, except for the right to collect 184.1. Notwithstanding the provisions of Chapter V, the
performing license fees for the performance of musical following acts shall not constitute infringement of
compositions, with or without words, which are copyright:
incorporated into the work; and
a. The recitation or performance of a work, once it has
been lawfully made accessible to the public, if done
178.6. In respect of letters, the copyright shall belong to
privately and free of charge or if made strictly for a
the writer subject to the provisions of Article 723 of the charitable or religious institution or society; (Sec. 10(1), P.D.
Civil Code. (Sec. 6, P.D. No. 49a) No. 49)
b. The making of quotations from a published work if they

SECTION 179. Anonymous and Pseudonymous Works.
are compatible with fair use and only to the extent justified
— For purposes of this Act, the publishers shall be deemed
for the purpose, including quotations from newspaper
to represent the authors of articles and other writings articles and periodicals in the form of press summaries:
published without the names of the authors or under Provided, That the source and the name of the author, if
pseudonyms, unless the contrary appears, or the appearing on the work, are mentioned; (Sec. 11, third par.,
pseudonyms or adopted name leaves no doubt as to the P.D. No. 49)
author's identity, or if the author of the anonymous works
c. The reproduction or communication to the public by
discloses his identity. (Sec. 7, P.D. 49) cdtai
mass media of articles on current political, social,
economic, scientific or religious topic, lectures, addresses
SECTION 180. Rights of Assignee. — and other works of the same nature, which are delivered in
public if such use is for information purposes and has not
180.1. The copyright may be assigned in whole or in part. been expressly reserved: Provided, That the source is
Within the scope of the assignment, the assignee is entitled clearly indicated; (Sec. 11, P.D. No. 49)
to all the rights and remedies which the assignor had with
d. The reproduction and communication to the public of
respect to the copyright.
literary, scientific or artistic works as part of reports of
current events by means of photography, cinematography
180.2. The copyright is not deemed assigned inter vivos in
or broadcasting to the extent necessary for the purpose;
whole or in part unless there is a written indication of such
(Sec. 12, P.D. No. 49)
intention.
e. The inclusion of a work in a publication, broadcast, or
180.3. The submission of a literary, photographic or artistic other communication to the public, sound recording or
work to a newspaper, magazine or periodical for film, if such inclusion is made by way of illustration for
publication shall constitute only a license to make a single teaching purposes and is compatible with fair use:
publication unless a greater right is expressly granted. If Provided, That the source and of the name of the author, if
appearing in the work, are mentioned;
two (2) or more persons jointly own a copyright or any part
thereof, neither of the owners shall be entitled to grant f. The recording made in schools, universities, or
licenses without the prior written consent of the other educational institutions of a work included in a broadcast
owner or owners. (Sec. 15, P.D. No. 49a) for the use of such schools, universities or educational
institutions: Provided, That such recording must be deleted SECTION 187. Reproduction of Published Work. —
within a reasonable period after they were first broadcast: 187.1. Notwithstanding the provision of Section 177, and
Provided, further, That such recording may not be made subject to the provisions of Subsection 187.2, the private
from audiovisual works which are part of the general
reproduction of a published work in a single copy, where
cinema repertoire of feature films except for brief excerpts
the reproduction is made by a natural person exclusively
of the work;
for research and private study, shall be permitted, without
g. The making of ephemeral recordings by a broadcasting the authorization of the owner of copyright in the work.
organization by means of its own facilities and for use in its
own broadcast; cdt 187.2. The permission granted under Subsection 187.1 shall
h. The use made of a work by or under the direction or not extend to the reproduction of:
control of the Government, by the National Library or by a. A work of architecture in the form of building or other
educational, scientific or professional institutions where construction;
such use is in the public interest and is compatible with fair b. An entire book, or a substantial part thereof, or of a
use; musical work in graphic form by reprographic means;
c. A compilation of data and other materials;
i. The public performance or the communication to the
public of a work, in a place where no admission fee is d. A computer program except as provided in Section 189;
charged in respect of such public performance or and
communication, by a club or institution for charitable or e. Any work in cases where reproduction would
educational purpose only, whose aim is not profit making, unreasonably conflict with a normal exploitation of the
subject to such other limitations as may be provided in the work or would otherwise unreasonably prejudice the
Regulations; (n)
legitimate interests of the author. (n)
j. Public display of the original or a copy of the work not
made by means of a film, slide, television image or
SECTION 188. Reprographic Reproduction by Libraries.
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, 188.1. Notwithstanding the provisions of Subsection 177.6,
given away or otherwise transferred to another person by any library or archive whose activities are not for profit
the author or his successor in title; and may, without the authorization of the author of copyright
owner, make a single copy of the work by reprographic
k. Any use made of a work for the purpose of any judicial
reproduction:
proceedings or for the giving of professional advice by a
legal practitioner. a. Where the work by reason of its fragile character or rarity
cannot be lent to user in its original form;
184.2. The provisions of this section shall be interpreted in b. Where the works are isolated articles contained in
such a way as to allow the work to be used in a manner composite works or brief portions of other published works
which does not conflict with the normal exploitation of the
and the reproduction is necessary to supply them, when
work and does not unreasonably prejudice the right
this is considered expedient, to persons requesting their
holder's legitimate interests.
loan for purposes of research or study instead of lending
the volumes or booklets which contain them; and
SECTION 186. Work of Architecture. — Copyright in a
c. Where the making of such a copy is in order to preserve
work of architecture shall include the right to control the
and, if necessary in the event that it is lost, destroyed or
erection of any building which reproduces the whole or a
rendered unusable, replace a copy, or to replace, in the
substantial part of the work either in its original form or in
permanent collection of another similar library or archive, a
any form recognizably derived from the original: Provided,
copy which has been lost, destroyed or rendered unusable
That the copyright in any such work shall not include the
and copies are not available with the publisher.
right to control the reconstruction or rehabilitation in the
same style as the original of a building to which that
188.2. Notwithstanding the above provisions, it shall not be
copyright relates. (n)
permissible to produce a volume of a work published in
several volumes or to produce missing tomes or pages of
magazines or similar works, unless the volume, tome or
part is out of stock: Provided, That every library which, by
law, is entitled to receive copies of a printed work, shall be
entitled, when special reasons so require, to reproduce a
entitled, when special reasons so require, to reproduce a baggage belonging to persons or families arriving from
copy of a published work which is considered necessary for foreign countries and are not intended for sale: Provided,
the collection of the library but which is out of stock. (Sec. That such copies do not exceed three (3).
13, P.D. 49a)
190.2. Copies imported as allowed by this Section may not
SECTION 189. Reproduction of Computer Program. — lawfully be used in any way to violate the rights of owner
189.1. Notwithstanding the provisions of Section 177, the the copyright or annul or limit the protection secured by
reproduction in one (1) back-up copy or adaptation of a this Act, and such unlawful use shall be deemed an
computer program shall be permitted, without the infringement and shall be punishable as such without
authorization of the author of, or other owner of copyright prejudice to the proprietor's right of action.
in, a computer program, by the lawful owner of that
computer program: Provided, That the copy or adaptation 190.3. Subject to the approval of the Secretary of Finance,
is necessary for: the Commissioner of Customs is hereby empowered to
a. The use of the computer program in conjunction with a make rules and regulations for preventing the importation
computer for the purpose, and to the extent, for which the of articles the importation of which is prohibited under this
computer program has been obtained; and Section and under treaties and conventions to which the
b. Archival purposes, and, for the replacement of the Philippines may be a party and for seizing and condemning
lawfully owned copy of the computer program in the event and disposing of the same in case they are discovered after
that the lawfully obtained copy of the computer program is they have been imported. (Sec. 30, P.D. No. 49)
lost, destroyed or rendered unusable.
189.2. No copy or adaptation mentioned in this Section
shall be used for any purpose other than the ones
determined in this Section, and any such copy or A. DOCTRINE OF FAIR USE
adaptation shall be destroyed in the event that continued
possession of the copy of the computer program ceases to
SECTION 185. Fair Use of a Copyrighted Work. —
be lawful.
185.1. The fair use of a copyrighted work for criticism,
189.3. This provision shall be without prejudice to the
comment, news reporting, teaching including multiple
application of Section 185 whenever appropriate. (n)
copies for classroom use, scholarship, research, and similar
purposes is not an infringement of copyright.
SECTION 190. Importation for Personal Purposes. — Decompilation, which is understood here to be the
190.1. Notwithstanding the provision of Subsection 177.6, reproduction of the code and translation of the forms of
but subject to the limitation under the Subsection 185.2, the computer program to achieve the inter-operability of
the importation of a copy of a work by an individual for his an independently created computer program with other
personal purposes shall be permitted without the programs may also constitute fair use. In determining
authorization of the author of, or other owner of copyright whether the use made of a work in any particular case is
in, the work under the following circumstances: aisadc fair use, the factors to be considered shall include:
a. When copies of the work are not available in the a. The purpose and character of the use, including whether
Philippines and: such use is of a commercial nature or is for non-profit
i. Not more than one (1) copy at one time is imported for educational purposes;
strictly individual use only; or b. The nature of the copyrighted work;
ii. The importation is by authority of and for the use of the c. The amount and substantiality of the portion used in
Philippine Government; or relation to the copyrighted work as a whole; and
iii. The importation, consisting of not more than three (3) d. The effect of the use upon the potential market for or
such copies or likenesses in any one invoice, is not for sale value of the copyrighted work.
but for the use only of any religious, charitable, or
educational society or institution duly incorporated or 185.2. The fact that a work is unpublished shall not by itself
registered, or is for the encouragement of the fine arts, or bar a finding of fair use if such finding is made upon
for any state school, college, university, or free public consideration of all the above factors.
library in the Philippines.
b. When such copies form parts of libraries and personal
baggage belonging to persons or families arriving from
ABS-CBN BROADCASTING CORP. VS. PHILIPPINE Circular No. 04-08-88; that the must-carry rule under the
MULTI-MEDIA SYSTEM, INC. ET Memorandum Circular is a valid exercise of police power.
FACTS: Petitioner ABS-CBN Broadcasting Corporation ISSUE: Whether or not PMSI violated its broadcaster’s
(ABS-CBN) is licensed under the laws of the Republic of the rights.
Philippines to engage in television and radio
broadcasting.4 It broadcasts television programs by RULING: NO.
wireless means to Metro Manila and nearby provinces, and
PMSI is not guilty of infringement of ABS-CBN’s copyright
by satellite to provincial stations through Channel 2 on
under Section 177 of the IP Code which states that
Very High Frequency (VHF) and Channel 23 on Ultra High
copyright or economic rights shall consist of the exclusive
Frequency (UHF).
right to carry out, authorize or prevent the public
Respondent Philippine Multi-Media System, Inc. (PMSI) is performance of the work (Section 177.6), and other
the operator of Dream Broadcasting System. It delivers communication to the public of the work (Section 177.7).
digital direct-to-home (DTH) television via satellite to its
The court defined broadcasting as - the transmission by
subscribers all over the Philippines.
wireless means for the public reception of sounds or of
PMSI was granted a legislative franchise under Republic Act images or of representations thereof; such transmission by
No. 86305 on May 7, 1998 and was given a Provisional satellite is also ‘broadcasting’ where the means for
Authority by the National Telecommunications Commission decrypting are provided to the public by the broadcasting
(NTC) on February 1, 2000 to install, operate and maintain organization or with its consent.
a nationwide DTH satellite service.
rebroadcasting - the simultaneous broadcasting by one
Subsequently, ABS-CBN demanded for PMSI to cease and broadcasting organization of the broadcast of another
desist from rebroadcasting Channels 2 and 23. PMSI broadcasting organization.
replied that the rebroadcasting was in accordance with the
The Director-General of the IPO correctly found that PMSI
authority granted it by NTC and its obligation under NTC
is not engaged in rebroadcasting and thus cannot be
Memorandum Circular No. 4-08-88, Section 6.2 of which
considered to have infringed ABS-CBN’s broadcasting
requires all cable television system operators operating in a
rights and copyright.
community within Grade “A” or “B” contours to carry the
television signals of the authorized television broadcast The transmission contemplated under Section 202.7 of the
stations. IP Code presupposes that the origin of the signals is the
broadcaster. Hence, a program that is broadcasted is
Thereafter, negotiations ensued between the parties in an
attributed to the broadcaster. In the same manner, the
effort to reach a settlement; however, the negotiations
rebroadcasted program is attributed to the rebroadcaster.
were terminated.
In the case at hand, PMSI is not the origin nor does it claim
On May 13, 2002, ABS-CBN filed with the IPO a complaint to be the origin of the programs broadcasted by the ABS-
for “Violation of Laws Involving Property Rights. It alleged CBN. PMSI did not make and transmit on its own but
that PMSI’s unauthorized rebroadcasting of Channels 2 and merely carried the existing signals of the ABS-CBN. When
23 infringed on its broadcasting rights and copyright. PMSI subscribers view ABS-CBN programs in Channels 2
and 23, they know that the origin thereof was the ABS-
Subsequently, PMSI filed with the Bureau of Legal Affairs CBN.
(BLA) a Manifestation reiterating that it is subject to the
must-carry rule under Memorandum Circular No. 04-08-88. The Appellants transmission of signals via its DTH satellite
television service cannot be considered within the purview
ABS-CBN contends that PMSI’s unauthorized of broadcasting.
rebroadcasting of Channels 2 and 23 is an infringement of
its broadcasting rights and copyright under the Intellectual It must be emphasized that the law on copyright is not
Property Code (IP Code). absolute. The IP Code provides that:
PMSI, on the other hand, argue that PMSI’s rebroadcasting Sec. 184. Limitations on Copyright. - 184.1.
of Channels 2 and 23 is sanctioned by Memorandum Notwithstanding the provisions of Chapter V, the following
Circular No. 04-08-88; that the must-carry rule under the acts shall not constitute infringement of copyright:
acts shall not constitute infringement of copyright: for allowing the playing of said songs copyrighted in the
name of FilSoc.
(h) The use made of a work by or under the direction or
control of the Government, by the National Library or by TAN’S CONTENTIONS:
educational, scientific or professional institutions where
such use is in the public interest and is compatible with fair It maintains that playing or singing a musical composition
use; is universally accepted as performing the musical
composition and that playing and singing of copyrighted
The carriage of ABS-CBN’s signals by virtue of the must- music in the soda fountain and restaurant of Tan for the
carry rule in Memorandum Circular No. 04-08-88 is under entertainment of the customers although the latter do not
the direction and control of the government though the pay for the music but only for the food and drink constitute
NTC which is vested with exclusive jurisdiction to supervise, performance for profit under the Copyright Law.
regulate and control telecommunications and broadcast
services/facilities in the Philippines. The imposition of the ISSUES:
must-carry rule is within the NTC’s power to promulgate
1. Whether or not the playing and signing of musical
rules and regulations, as public safety and interest may
compositions which have been copyrighted under the
require, to encourage a larger and more effective use of
provisions of the Copyright Law (Act 3134) the Tan’s
communications, radio and television broadcasting
establishment constitute a public performance for profit
facilities, and to maintain effective competition among
within the meaning and contemplation of the Copyright
private entities in these activities whenever the Commission
Law of the Philippines- YES
finds it reasonably feasible.
2. Assuming that there were indeed public performances
Further, as correctly observed by the Court of Appeals, the
for profit, whether or not Tan can be held liable therefor.
must-carry rule as well as the legislative franchises granted
NO
to both ABS-CBN and PMSI are in consonance with state
policies enshrined in the Constitution, specifically Sections RULING: We concede that indeed there were "public
9, 17, and 24 of Article II on the Declaration of Principles performances for profit. "
and State Policies.
The word "perform" as used in the Act has been applied to
FILIPINO SOCIETY OF COMPOSERS, AUTHORS, AND "One who plays a musical composition on a piano, thereby
PUBLISHERS, INC. VS. TAN producing in the air sound waves which are heard as
music ... and if the instrument he plays on is a piano plus a
FACTS: Filipino Society of Composers (FilSoc) is a non- broadcasting apparatus, so that waves are thrown out, not
profit association of authors, composers and publishers only upon the air, but upon the other, then also he is
who is the owner of certain musical compositions among performing the musical composition."
which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw
Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The In relation thereto, it has been held that "The playing of
Nearness Of You." music in dine and dance establishment which was paid for
by the public in purchases of food and drink constituted
Benjamin Tan is the operator of a restaurant known as "performance for profit" within a Copyright Law."
"Alex Soda Foundation and Restaurant" where a combo
with professional singers, hired to play and sing musical Nevertheless, appellee cannot be said to have infringed
compositions, were playing and singing the above- upon the Copyright Law. Tan’s allegation that the
mentioned compositions without any license or permission composers of the contested musical compositions waived
from the FilSoc to play or sing the same. their right in favor of the general public when they allowed
their intellectual creations to become property of the
Accordingly, FilSoc demanded payment from Tan of the public domain before applying for the corresponding
necessary license fee for the playing and singing of copyrights for the same.
aforesaid compositions but the demand was ignored.
The Supreme Court has ruled that "Paragraph 33 of Patent
Hence, on November 7, 1967, FilSoc filed a complaint with Office Administrative Order No. 3 (as amended, dated
the lower court for infringement of copyright against Tan September 18, 1947) entitled 'Rules of Practice in the
for allowing the playing of said songs copyrighted in the Philippines Patent Office relating to the Registration of
Philippines Patent Office relating to the Registration of the first presidential debate in Mindanao; TV5, Philippine
Copyright Claims' provides among other things that an Star, and Businessworld sponsored the second phase of
intellectual creation should be copyrighted thirty (30) days presidential debate in the Visayas; ABS-CBN and Manila
after its publication, if made in Manila, or within the (60) Bulletin will sponsor the presidential debate to be held in
days if made elsewhere, failure of which renders such Luzon; and the lone vice-presidential debate will be
creation public property." sponsored by CNN, Business Mirror, and Rappler. Petitioner
alleged that the draft MOA permitted online streaming,
Indeed, if the general public has made use of the object provided proper attribution is given the Lead Network.
sought to be copyrighted for thirty (30) days prior to the
copyright application the law deems the object to have On 12 January 2016, Rappler was informed that the MOA
been donated to the public domain and the same can no signing was scheduled the following day. Rappler
longer be copyrighted. communicated with Bautista its concerns regarding certain
provisions of the MOA particularly regarding online
A careful study of the records reveals that the song "Dahil streaming and the imposition of a maximum limit of two
Sa Iyo" which was registered on April 20, 1956 became minutes of debate excerpts for news reporting. Bautista
popular in radios, juke boxes, etc. long before registration assured petitioner that its concerns will be addressed
while the song "The Nearness Of You" registered on afterwards, but it has to sign the MOA because time was of
January 14, 1955 had become popular twenty five (25) the essence. However, after the MOA has been executed by
years prior to 1968, or from 1943 and the songs "Sapagkat Rappler and other media entities, Rappler received no
Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both response from Bautista despite the several communications
registered on July 10, 1966, appear to have been known it made.
and sang by the witnesses as early as 1965 or three years
before the hearing in 1968. ISSUE: WON Rappler may live stream the debate in its
entirety
Under the circumstances, it is clear that the musical
compositions in question had long become public RULING: YES.
property, and are therefore beyond the protection of the
Copyright Law. Petitioner's demand to exercise the right to live stream the
debates is a contractual right of petitioner under the MOA.
Under Part VI (C), paragraph 19 of the MOA, the Lead
RAPPLER, INC. VS. ANDRES D. BAUTISTA
Networks are expressly mandated to "allow the debates
they have produced to be shown or streamed on other
FACTS: On 21 September 2015, Andres Bautista, the
websites," but "subject to copyright conditions or separate
Chairman of the Comelec, called for a meeting with various
negotiations with the Lead Networks." The use of the word
media outlets to discuss the "PiliPinas 2016 Debates," for
"or" means that compliance with the "copyright conditions"
presidential and vice-presidential candidates, which the
is sufficient for petitioner to exercise its right to live stream
COMELEC was organizing. Bautista proposed that Rappler
the debates in its website.
and Google, Inc. be in charge of online and social media
engagement.
The "copyright conditions" refer to the limitations on
copyright as provided under Section 184.1 (c) of the IPC
On 22 September 2015, Rappler sent a proposed draft for
which provides:
broadcast pool guidelines to COMELEC and the KBP. A
broadcast pool has a common audio and video feed of the
(c) The reproduction or communication to the public by
debates, and the cost will be apportioned among those
mass media of articles on current political, social,
needing access to the same.
economic, scientific or religious topic, lectures, addresses
and other works of the same nature, which are delivered in
On 19 October 2015, another meeting was held at the
public if such use is for information purposes and has not
COMELEC office to discuss a draft MOA on the debates. In
been expressly reserved; Provided, That the source is
the draft, Rappler and Google's participation were dropped
clearly indicated
in favor of the online outlets owned by the Lead Networks.
After the meeting, the representatives of the Lead
Under this provision, the debates fall under "addresses and
Networks drew lots to determine who will host each leg of
the debates. GMA and Philippine Daily Inquirer sponsored
the first presidential debate in Mindanao; TV5, Philippine
other works of the same nature." Thus, the copyright the live audio of the debates - now forms part of the public
conditions for the debates are: domain. There is now freedom of the press to report or
publicly disseminate the live audio of the debates.
(1) the reproduction or communication to the public
by mass media of the debates is for information purposes; In fact, the MOA recognizes the right of other mass media
entities, not parties to the MOA, to reproduce the debates
(2) the debates have not been expressly reserved by subject only to the same copyright conditions. The
the Lead Networks (copyright holders); and freedom of the press to report and disseminate the live
audio of the debates, subject to compliance with Section
(3) the source is clearly indicated.
184. l (c) of the IPC, can no longer be infringed or subject
Condition 1 is complied because the live streaming by to prior restraint. Such freedom of the press to report and
petitioner is obviously for information purposes. disseminate the live audio of the debates is now protected
and guaranteed under Section 4, Article III of the
Condition 2 is also complied because Part VI (C), paragraph Constitution, which provides that "No law shall be passed
19 of the MOA expressly "allow[s] the debates to be shown abridging the freedom of the press."
or streamed on other websites," including petitioner's
website. This means that the "reproduction or Furthermore, the political nature of the national debates
communication (of the debates) to the public by mass and the public's interest in the wide availability of the
media has not been expressly reserved" or withheld. information for the voters' education certainly justify
allowing the debates to be shown or streamed in other
Condition 3 is complied by clearly indicating and websites for wider dissemination, in accordance with the
acknowledging that the source of the debates is one or MOA.
more of the Lead Networks.
Therefore, the debates should be allowed to be live
Part VI (C), paragraph 19 of the MOA, which expressly streamed on other websites, including Rappler's, as
allows the debates produced by the Lead Networks to be expressly mandated in Part VI (C), paragraph 19 of the
shown or streamed on other websites, clearly means that MOA. Bautista, as representative of the COMELEC which
the Lead Networks have not "expressly reserved" or provides over-all supervision under the MOA, including the
withheld the use of the debate audio for online streaming. power to "resolve issues that may arise among the parties
involved in the organization of the debates," should be
In short, the MOA expressly allows the live streaming of the
directed by this Court to implement Part VI (C), paragraph
debates subject only to compliance with the "copyright
19 of the MOA, which allows the debates to be shown or
conditions." Once petitioner complies with the copyright
live streamed unaltered on petitioner's and other websites
conditions, petitioner can exercise the right to live stream
subject to the copyright condition that the source is clearly
the audio of the debates as expressly allowed by the MOA.
indicated.
Under the MOA, the Lead Networks are mandated to

promote the debates for maximum audience. The MOA
6. COPYRIGHT INFRINGEMENT
recognizes the public function of the debates and the need
for the widest possible dissemination of the debates. The
SECTION 216. Remedies for Infringement. —
MOA has not reserved or withheld the reproduction of the
debates to the public but has in fact expressly allowed the 216.1. Any person infringing a right protected under this
reproduction of the debates "subject to copyright law shall be liable:
conditions." Thus, petitioner may live stream the debate in
its entirety by complying with the "copyright conditions," a. To an injunction restraining such infringement. The court
may also order the defendant to desist from an
including the condition that "the source is clearly
infringement, among others, to prevent the entry into the
indicated" and that there will be no alteration, which means channels of commerce of imported goods that involve an
that the streaming will include the proprietary graphics infringement, immediately after customs clearance of such
used by the Lead Networks. goods.
Once the conditions imposed under Section 184.1 (c) of the b. Pay to the copyright proprietor or his assigns or heirs
IPC are complied with, the information - in this case the live such actual damages, including legal costs and other
audio of the debates - now forms part of the public
expenses, as he may have incurred due to the infringement that the copyright owner has suffered by reason of the
as well as the profits the infringer may have made due to infringement.
such infringement, and in proving profits the plaintiff shall
be required to prove sales only and the defendant shall be 217.3. Any person who at the time when copyright subsists
required to prove every element of cost which he claims, in a work has in his possession an article which he knows,
or, in lieu of actual damages and profits, such damages or ought to know, to be an infringing copy of the work for
which to the court shall appear to be just and shall not be the purpose of:
regarded as penalty.
a. Selling, letting for hire, or by way of trade offering or
c. Deliver under oath, for impounding during the pendency exposing for sale, or hire, the article; cdasia
of the action, upon such terms and conditions as the court
may prescribe, sales invoices and other documents b. Distributing the article for purpose of trade, or for any
evidencing sales, all articles and their packaging alleged to other purpose to an extent that will prejudice the rights of
infringe a copyright and implements for making them. the copyright owner in the work; or
d. Deliver under oath for destruction without any c. Trade exhibit of the article in public, shall be guilty of an
compensation all infringing copies or devices, as well as all offense and shall be liable on conviction to imprisonment
plates, molds, or other means for making such infringing and fine as above mentioned. (Sec. 29, P.D. No. 49a)
copies as the court may order.
SECTION 219. Presumption of Authorship. —
e. Such other terms and conditions, including the payment
of moral and exemplary damages, which the court may 219.1. The natural person whose name is indicated on a
deem proper, wise and equitable and the destruction of work in the usual manner as the author shall, in the
infringing copies of the work even in the event of acquittal absence of proof to the contrary, be presumed to be the
in a criminal case. author of the work. This provision shall be applicable even
if the name is a pseudonym, where the pseudonym leaves
216.2. In an infringement action, the court shall also have no doubt as to the identity of the author.
the power to order the seizure and impounding of any
article which may serve as evidence in the court 219.2. The person or body corporate whose name appears
proceedings. (Sec. 28, P.D. No. 49a) on an audio-visual work in the usual manner shall, in the
absence of proof to the contrary, be presumed to be the
SECTION 217. Criminal Penalties. — maker of said work. (n)
217.1. Any person infringing any right secured by SECTION 220. International Registration of Works. —
provisions of Part IV of this Act or aiding or abetting such
infringement shall be guilty of a crime punishable by: A statement concerning a work, recorded in an
international register in accordance with an international
a. Imprisonment of one (1) year to three (3) years plus a treaty to which the Philippines is or may become a party,
fine ranging from Fifty thousand pesos (P50,000) to One shall be construed as true until the contrary is proved
hundred fifty thousand pesos (P150,000) for the first except:
offense.
220.1. Where the statement cannot be valid under this Act
b. Imprisonment of three (3) years and one (1) day to six (6) or any other law concerning intellectual property.
years plus a fine ranging from One hundred fifty thousand
pesos (P150,000) to Five hundred thousand pesos 220.2. Where the statement is contradicted by another
(P500,000) for the second offense. statement recorded in the international register. (n)
c. Imprisonment of six (6) years and one (1) day to nine (9) SECTION 226. Damages. — No damages may be
years plus a fine ranging from Five hundred thousand recovered under this Act after four (4) years from the time
pesos (P500,000) to One million five hundred thousand the cause of action arose. (Sec. 58, P.D. No. 49)
pesos (P1,500,000) for the third and subsequent offenses.
ABS-CBN CORPORATION VS. GOZON, ET AL
d. In all cases, subsidiary imprisonment in cases of
insolvency.
FACTS: The controversy arose from GMA-7’s news
217.2. In determining the number of years of imprisonment coverage on the homecoming of Filipino overseas worker
and the amount of fine, the court shall consider the value and hostage victimAngelo dela Cruz. Respondents are
of the infringing materials that the defendant has produced officers and employees of GMA Network, Inc. (GMA-7).
or manufactured and the damage They are: Felipe Gozon (Gozon), GMA-7 President; Gilberto
R. Duavit, Jr. (Duavit, Jr.), Executive Vice-President; Marissa C. Agra (Secretary Agra) issued the Resolution (Agra
L. Flores (Flores), Vice-President for News and Public Resolution) that reversed the Gonzalez Resolution and
Affairs; Jessica A. Soho (Soho), Director for News; Grace found probable cause to charge Dela Peña-Reyes and
Déla Peña-Reyes (Dela Peña-Reyes), Head of News and Manalastas for violation of the Intellectual Property Code.
Public Affairs; John Oliver Manalastas ‘(Manalastas),
Program Manager; and others. As summarized by the Court Respondents assailed the Agra Resolution through the
of Appeals Overseas Filipino worker Angelo dela Cruz was Petition for Certiorari with prayer for issuance of a
kidnapped by Iraqi militants and as a condition for his temporary restraining order and/or Writ of Preliminary
release, a demand was made for the withdrawal of Filipino Injunction before the Court of Appeals. In the Resolution,
troops in Iraq. After negotiations, he was released by his the Court of Appeals granted the temporary restraining
captors and was scheduled to return to the country in the order preventing the Department of Justice from enforcing
afternoon. Occasioned by said homecoming and the public the Agra Resolution.
interest it generated, both GMA Network, Inc and
ABS-CBN’s Motion for Reconsideration was denied. It then
[petitioner] made their respective broadcasts and coverage
filed its Petition for Review before this court assailing the
of the live event.
Decision and Resolution of the Court of Appeals.
ABS-CBN “conducted live audio-video coverage of and
ISSUE: Whether or not the said news footage is
broadcasted the arrival of Angelo dela Cruz at the Ninoy
copyrightable under the law. -YES.
Aquino International Airport (NAIA) and the subsequent
press conference.” ABS-CBN allowed Reuters Television RULING: The Intellectual Property Code is clear about the
Service (Reuters) to air the footages it had taken earlier rights afforded to authors of various kinds of work. Under
under a special embargo agreement. the Code, “works are protected by the sole fact of their
creation, irrespective of their mode or form of expression,
under the special embargo agreement, No other Philippine
as well as of their content, quality and purpose.” These
subscriber of Reuters would be allowed to use ABS-CBN
include “[audio-visual works and cinematographic works
footage without the latter’s consent. GMA-7 subscribes to
and works produced by a process analogous to
both Reuters and Cable News Network (CNN). It received a
cinematography or any process for making audiovisual
live video feed of the coverage of Angelo dela Cruz’s arrival
recordings.”
from Reuters.
It is true that under Section 175 of the Intellectual Property
GMA-7 immediately carried the live newsfeed in its
Code, “news of the day and other miscellaneous facts
program “Flash Report,” together with its live broadcast.
having the character of mere items of press information”
Allegedly, GMA7 did not receive any notice or was not
are considered unprotected subject matter. However, the
aware that Reuters was airing footages of ABS-CBN.
Code does not state that expression of the news of the day,
GMA-7’s news control room staff saw neither the “No particularly when it underwent a creative process, is not
Access Philippines” notice nor a notice that the video feed entitled to protection.
was under embargo in favor of ABS-CBN.
News or the event itself is not copyrightable. However, an
Assistant City Prosecutor Dindo Venturanza issued the event can be captured and presented in a specific medium.
Resolution finding probable cause to indict Dela Peña- As recognized by this court in Joaquin, television “involves
Reyes and Manalastas. Consequently, the Information for a whole spectrum of visuals and effects, video and audio.”
violation of the Intellectual Property Code was filed. News coverage in television involves framing shots, using
images, graphics, and sound effects. It involves creative
Respondents filed the Petition for Review before the process and originality. Television news footage is an
Department of Justice. Department of Justice Secretary expression of the news. In this case, respondents admitted
Raul M. Gonzalez (Secretary Gonzalez) ruled in favor of that the material under review — which is the subject of
respondents and held that good faith may be raised as a the controversy — is an exact copy of the original.
defense in the case. Respondents did not subject ABS-CBN’s footage to any
editing of their own. The news footage did not undergo
Both parties moved for reconsideration of the Gonzalez any transformation where there is a need to track elements
Resolution. Department of Justice Acting Secretary Alberto of the original.
COLUMBIA PICTURES ET AL VS. COURT OF APPEALS 2. Was Sunshine Home Video liable for infringement? Yes!
FACTS: Columbia Pictures filed a formal complaint with the RULING: The 20th Century Fox ruling cannot be
NBI for violation of PD No. 49, as amended, against various retroactively applied to the instant case to justify the
video establishments in Metro Manila including Sunshine quashal of Search Warrant. Columbia' consistent position
Home Video. that the order of the lower court of September 5, 1988
denying the motion to lift the order of search warrant was
Upon the execution of the service warrant, NBI Agents properly issued, there having been satisfactory compliance
found and seized various video tapes of duly copyrighted with the then prevailing standards under the law for
motion pictures/films owned or exclusively distributed by determination of probable cause, is indeed well taken. The
Columbia. lower court could not possibly have expected more
evidence from Columbia in their application for a search
The master tapes of the copyrighted films from which the
warrant other than what the law and jurisprudence, then
pirated films were allegedly copies, were never presented
existing and judicially accepted, required with respect to
in the proceedings for the issuance of the search warrants
the finding of probable cause.
in question. The orders of the Court granting the search
warrants were set aside. More to the point, it is felt that the reasonableness of the
added requirement in 20th Century Fox calling for the
Columbia appealed the order of the RTC granting Sunshine
production of the master tapes of the copyrighted films for
Home Video's MR, thus lifting the search warrant which it
determination of probable cause in copyright infringement
had theretofore issued, to the CA. As stated at the outset,
cases needs revisiting and clarification.
said appeal was dismissed and the MR thereof was denied.
Hence, this petition was brought to this Court particularly We feel that the rationale behind the doctrine is that the
challenging the validity of CA's retroactive application of pirated copies as well as the master tapes, unlike the other
the ruling in 20th Century Fox Film Corporation vs. CA, et types of personal properties which may be seized, were
al., in dismissing Columbia' appeal and upholding the available for presentation to the court at the time of the
quashal of the search warrant by the RTC. application for a search warrant to determine the existence
of the linkage of the copyrighted films with the pirated
20th Century Fox vs. CA (August 19, 1988) Determination of
ones. Thus, there is no reason not the present them.
probable cause to support the issuance of a search warrant
in copyright infringement cases involving videograms, the In fine, the supposed pronouncement in said case
production of the master tape for comparison with the regarding the necessity for the presentation of the master
allegedly pirate copies is necessary. tapes of the copyrighted films for the validity of search
warrants should at most be understood to merely serve as
Columbia argued that any search warrant so issued in
a guidepost in determining the existence of probable cause
accordance with all applicable legal requirements is valid,
in copyright infringement cases where there is doubt as to
for the lower court could not possibly have been expected
the true nexus between the master tape and the pirated
to apply, as the basis for a finding of probable cause for
copies.
the issuance of a search warrant in copyright infringement
cases involving videograms, a pronouncement which was It is evidently incorrect to suggest, as the ruling in 20th
not existent at the time of such determination, on Century Fox may appear to do, that in copyright
December 14, 1987, that is, the doctrine in the 20th infringement cases, the presentation of master tapes of the
Century Fox case that was promulgated only on August 19, copyrighted films is always necessary to meet the
1988, or over eight months later. requirement of probable cause and that, in the absence
thereof, there can be no finding of probable cause for the
CA: Upheld the retroactive application of the 20th Century
issuance of a search warrant.
Fox ruling by the RTC in resolving Columbia' MR in favor of
the quashal of the search warrant. Accordingly, to restrict the exercise of discretion by a judge
by adding a particular requirement (the presentation of
ISSUES:
master tapes, as intimated by 20th Century Fox) not
1. Should the master tapes be presented in order to provided nor implied in the law for a finding of probable
determine probable cause? No! cause is beyond the realm of judicial competence or
statesmanship. There is, to repeat, no law or rule which
statesmanship. There is, to repeat, no law or rule which circulation or public exhibition any of the abovementioned
requires that the existence of probable cause is or should articles, without the written consent of the owner or his
be determined solely by a specific kind of evidence. Surely, assignee; and,
this could not have been contemplated by the framers of
the Constitution, and we do not believe that the Court (3) directly or indirectly offering or making available for a
intended the statement in 20th Century Fox regarding fee, rental, or any other form of compensation any
master tapes as the dictum for all seasons and reasons in equipment, machinery, paraphernalia or any material with
infringement cases. the knowledge that such equipment, machinery,
paraphernalia or material will be used by another to
In the case at bar, it can be gleaned from the records that reproduce, without the consent of the owner, any
the lower court followed the prescribed procedure for the phonograph record, disc, wire, tape, film or other article on
issuance of a search warrant. which sounds, motion pictures or other audio-visual
recordings may be transferred, and which provide distinct
As correctly pointed out by Columbia, a blind espousal of bases for criminal prosecution, being crimes independently
the requisite of presentation of the master tapes in punishable under Presidential Decree No. 49, as amended,
copyright infringement cases, as the prime determinant of aside from the act of infringing or aiding or abetting such
probable cause, is too exacting and impracticable a infringement under Section 29.
requirement to be complied with in a search warrant
application which, it must not be overlooked, is only an The RTC's finding that Sunshine Home Video committed
ancillary proceeding. Further, on realistic considerations, a acts in blatant transgression of PD 49all the more bolsters
strict application of said requirement militates against the its findings of probable cause, which determination can be
elements of secrecy and speed which underlie covert reached even in the absence of master tapes by the judge
investigative and surveillance operations in police in the exercise of sound discretion. The executive concern
enforcement campaigns against all forms of criminality, and resolve expressed in the foregoing amendments to the
considering that the master tapes of a motion picture decree for the protection of intellectual property rights
required to be presented before the court consists of should be matched by corresponding judicial vigilance and
several reels contained in circular steel casings which, activism, instead of the apathy of submitting to
because of their bulk, will definitely draw attention, unlike technicalities in the face of ample evidence of guilt.
diminutive objects like video tapes which can be easily
concealed. With hundreds of titles being pirated, this The essence of intellectual piracy should be essayed in
onerous and tedious imposition would be multiplied a conceptual terms in order to underscore its gravity by an
hundredfold by judicial fiat, discouraging and preventing appropriate understanding thereof. Infringement of a
legal recourses in foreign jurisdictions. copyright is a trespass on a private domain owned and
occupied by the owner of the copyright, and, therefore,
The amendment to Section 56 of PD 49 by Presidential protected by law, and infringement of copyright, or piracy,
Decree No. 1987, which should here be publicized which is a synonymous term in this connection, consists in
judicially, brought about the revision of its penalty the doing by any person, without the consent of the owner
structure and enumerated additional acts considered of the copyright, of anything the sole right to do which is
violative of said decree on intellectual property, namely: conferred by statute on the owner of the copyright.
(1) directly or indirectly transferring or causing to be A copy of a piracy is an infringement of the original, and it
transferred any sound recording or motion picture or other is no defense that the pirate, in such cases, did not know
audio-visual works so recorded with intent to sell, lease, what works he was indirectly copying, or did not know
publicly exhibit or cause to be sold, leased or publicly whether or not he was infringing any copyright; he at least
exhibited, or to use or cause to be used for profit such knew that what he was copying was not his, and he copied
articles on which sounds, motion pictures, or other audio- at his peril. In determining the question of infringement,
visual works are so transferred without the written consent the amount of matter copied from the copyrighted work is
of the owner or his assignee; an important consideration. To constitute infringement, it is
not necessary that the whole or even a large portion of the
(2) selling, leasing, distributing, circulating, publicly work shall have been copied. If so much is taken that the
exhibiting, or offering for sale, lease, distribution, or value of the original is sensibly diminished, or the
possessing for the purpose of sale, lease, distribution,
circulation or public exhibition any of the abovementioned
labors of the original author are substantially and to an HABANA ET AL VS. ROBLES ET AL
injurious extent appropriated by another, that is sufficient
in point of law to constitute a piracy. The question of FACTS: PACITA I. HABANA, ALICIA L. CINCO and JOVITA N.
whether there has been an actionable infringement of a FERNANDO: are authors and copyright owners of duly
literary, musical, or artistic work in motion pictures, radio or issued certificates of copyright registration covering their
television being one of fact, it should properly be published works, COLLEGE ENGLISH FOR TODAY (CET for
determined during the trial. That is the stage calling for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE
conclusive or preponderating evidence, and not the FRESHMAN ENGLISH, Series 1.
summary proceeding for the issuance of a search warrant
Felicidad Robles and Goodwill Trading Co., Inc. are the
wherein both lower courts erroneously require the master
author/publisher and distributor/seller of another
tapes.
published work entitled "DEVELOPING ENGLISH
Accordingly, the certifications from the Copyright Section PROFICIENCY" (DEP for brevity), Books 1 and 2 (1985
of the National Library, presented as evidence by Sunshine edition) which book was covered by copyrights issued to
Home Video to show non-registration of some of the films them.
of Columbia, assume no evidentiary weight or significance
In the course of revising their published works PACITA I.
whatsoever.
HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO
Furthermore, a closer review of PD 49 reveals that even scouted and looked around various bookstores to check on
with respect to works which are required under Section 26 other textbooks dealing with the same subject matter. By
thereof to be registered and with copies to deposited with chance they came upon the book of Robles and upon
the National Library, such as books, including composite perusal of said book they were surprised to see that the
and cyclopedic works, manuscripts, directories and book was strikingly similar to the contents, scheme of
gazetteers; and periodicals, including pamphlets and presentation, illustrations and illustrative examples in their
newspapers; lectures, sermons, addresses, dissertations own book, CET.
prepared for oral delivery; and letters, the failure to comply
After an itemized examination and comparison of the two
with said requirements does not deprive the copyright
books (CET and DEP), found that several pages of the book
owner of the right to sue for infringement. Such non-
are similar, if not all together a copy of petitioners' book,
compliance merely limits the remedies available to him and
which is a case of plagiarism and copyright infringement.
subjects him to the corresponding sanction.
Action instituted: "Infringement and/or unfair competition
The reason for this is expressed in Section 2 of the decree
with damages"
which prefaces its enumeration of copyrightable works with
the explicit statement that "the rights granted under this ISSUE: Whether or not there is an Infringement and/or
Decree shall, from the moment of creation, subsist with unfair competition - YES
respect to any of the following classes of works." This
means that under the present state of the law, the RULING: We find the petition impressed with merit.
copyright for a work is acquired by an intellectual creator
The complaint for copyright infringement was filed at the
from the moment of creation even in the absence of
time that Presidential Decree No. 49 was in force. At
registration and deposit. As has been authoritatively
present, all laws dealing with the protection of intellectual
clarified:
property rights have been consolidated and as the law now
The court upholds the validity of Search Warrant and said stands, the protection of copyrights is governed by
court is DIRECTED to take and expeditiously proceed with Republic Act No. 8293.
such appropriate proceedings as may be called for in this
Sections 117 and section 184.1: "work" has reference to
case.
literary and artistic creations and this includes books and
other literary, scholarly and scientific works.
IN THIS CASE: A perusal of the records yields several pages

of the book DEP that are similar if not identical with the
text of CET. We believe that respondent Robles' act of
lifting from the book of PACITA I. HABANA, ALICIA L.
lifting from the book of PACITA I. HABANA, ALICIA L. appearing on the work, are mentioned.
CINCO and JOVITA N. FERNANDO substantial portions of
discussions and examples, and her failure to acknowledge A copy of a piracy is an infringement of the original, and it
the same in her book is an infringement of petitioners' is no defense that the pirate, in such cases, did not know
copyrights. whether or not he was infringing any copyright; he at least
knew that what he was copying was not his, and he copied
When is there a substantial reproduction of a book? It does at his peril.
not necessarily require that the entire copyrighted work, or
even a large portion of it, be copied. If so much is taken The next question to resolve is to what extent can copying
that the value of the original work is substantially be injurious to the author of the book being copied. Is it
diminished, there is an infringement of copyright and to an enough that there are similarities in some sections of the
injurious extent, the work is appropriated. books or large segments of the books are the same?
In determining the question of infringement, the amount of IN THIS CASE: There is no question that PACITA I. HABANA,
matter copied from the copyrighted work is an important ALICIA L. CINCO and JOVITA N. FERNANDO presented
Intellectual Property (IP) Case Digests | 2 Sanchez Roman | several pages of the books CET and DEP that more or less
Page 15 consideration. To constitute infringement, it is not had the same contents. It may be correct that the books
necessary that the whole or even a large portion of the being grammar books may contain materials similar as to
work shall have been copied. If so much is taken that the some technical contents with other grammar books, such
value of the original is sensibly diminished, or the labors of as the segment about the "Author Card". However, the
the original author are substantially and to an injurious numerous pages that the PACITA I. HABANA, ALICIA L.
extent appropriated by another, that is sufficient in point of CINCO and JOVITA N. FERNANDO presented showing
law to constitute piracy. similarity in the style and the manner the books were
presented and the identical examples cannot pass as
The essence of intellectual piracy should be essayed in similarities merely because of technical consideration.
conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a We believe that even if PACITA I. HABANA, ALICIA L.
copyright is a trespass on a private domain owned and CINCO and JOVITA N. FERNANDO and Felicidad Robles
occupied by the owner of the copyright, and, therefore, and Goodwill Trading Co., Inc were of the same
protected by law, and infringement of copyright, or piracy, background in terms of teaching experience and
which is a synonymous term in this connection, consists in orientation, it is not an excuse for them to be identical even
the doing by any person, without the consent of the owner in examples contained in their books. The similarities in
of the copyright, of anything the sole right to do which is examples and material contents are so obviously present in
conferred by statute on the owner of the copyright. this case. How can similar/identical examples not be
considered as a mark of copying?
IN THIS CASE: The Felicidad Robles and Goodwill Trading
Co., Inc claim that the copied portions of the book CET are We consider as an indicia of guilt or wrongdoing the act of
also found in foreign books and other grammar books, and respondent Robles of pulling out from Goodwill
that the similarity between her style and that of petitioners bookstores the book DEP upon learning of petitioners'
can not be avoided since they come from the same complaint while pharisaically denying petitioners' demand.
background and orientation may be true. However, in this It was further noted that when the book DEP was re-issued
jurisdiction under Sec 184 of Republic Act 8293 it is as a revised version, all the pages cited by petitioners to
provided that: Limitations on Copyright. Notwithstanding contain portion of their book College English for Today
the provisions of Chapter V, the following shall not were eliminated.
constitute infringement of copyright:
In cases of infringement, copying alone is not what is
(c) The making of quotations from a published work if they prohibited. The copying must produce an "injurious effect".
are compatible with fair use and only to the extent justified
Here, the injury consists in that respondent Robles lifted
for the purpose, including quotations from newspaper
from petitioners' book materials that were the result of the
articles and periodicals in the form of press summaries:
latter's research work and compilation and misrepresented
Provided, That the source and the name of the author, if
them as her own. She circulated the book DEP for
appearing on the work, are mentioned. A copy of a piracy
is an infringement of the original, and it is no defense that
commercial use and did not acknowledge petitioners as The Agreement also authorized Microsoft and Beltron to
her source. terminate the contract if the other fails to comply with any
of the Agreement's provisions. Microsoft terminated the
Hence, there is a clear case of appropriation of copyrighted Agreement effective 22 June 1995 for Beltron's non-
work for her benefit that respondent Robles committed. payment of royalties.
Petitioners' work as authors is the product of their long and
assiduous research and for another to represent it as her Later, Microsoft learned that respondents were illegally
own is injury enough. In copyrighting books the purpose is copying and selling Microsoft software. Consequently,
to give protection to the intellectual product of an author. Microsoft hired the services of Pinkerton Consulting
Services (“PCS”), a private investigative firm and sought the
This is precisely what the law on copyright protected, under assistance of the National Bureau of Investigation (“NBI”).
Section 184.1 (b). Quotations from a published work if they PCS employee Sacriz and NBI agent Samiano posed as
are compatible with fair use and only to the extent justified representatives of a computer shop and bought a central
by the purpose, including quotations from newspaper processing unit (“CPU”) and software in a read-only
articles and periodicals in the form of press summaries are memory (“ROM”) format from respondents. The CPU
allowed provided that the source and the name of the contained preinstalled Microsoft Windows software and
author, if appearing on the work, are mentioned. the CDROMs, encased in plastic containers with Microsoft
packaging, also contained Microsoft software. Sacriz and
In the case at bar, the least that respondent Robles could
Samiano were not given the Microsoft end user license
have done was to acknowledge petitioners Habana et. al.
agreements, user’s manuals, registration cards or
as the source of the portions of DEP. The final product of
certificates of authenticity for the articles they purchased.
an author's toil is her book. To allow another to copy the
The receipt issued to Sacriz and Samiano for the CPU and
book without appropriate acknowledgment is injury
monitor bore the heading “T.M.T.C. (PHILS.) INC. BELTRON
enough.
COMPUTER.”
WHEREFORE, the petition is hereby GRANTED. The decision
Microsoft applied for search warrants against respondents
and resolution of the Court of Appeals are SET ASIDE. The
in the Regional Trial Court–Manila which was granted by
case is ordered remanded to the trial court for further
the court. The NBI searched the premises of Beltron and
proceedings to receive evidence of the parties to ascertain
TMTC and seized several computer-related hardware,
the damages caused and sustained by petitioners and to
software, accessories, and paraphernalia. Among these
render decision in accordance with the evidence submitted
were 2,831 pieces of CD-ROMs containing Microsoft
to it.
software.
Microsoft then charged respondents before the

Department of Justice ("DOJ") with copyright infringement
NBI-MICROSOFT CORPORATION VS. HWANG and unfair competition. Microsoft alleged that respondents
illegally copied and sold Microsoft software.
FACTS: Microsoft Corporation (“Microsoft”) is a foreign
corporation who owns the copyright and trademark Respondents denied the charges against them. They
Microsoft Software. Microsoft and Beltron, represented by alleged that Microsoft’s real intention in filing the
Benito Keh and Yvonne Keh, entered into a Licensing complaint was to pressure Beltron to pay its alleged unpaid
Agreement. Wherein, Microsoft authorized Beltron, for a royalties, thus Microsoft should have filed a collection suit
fee, to: instead of a criminal complaint and that TMTC bought the
confiscated 59 boxes of MSDOSCDs from a Microsoft
(i) xxx reproduce and install no more than one (1) copy of
dealer in Singapore. Meanwhile, respondents moved to
[Microsoft] software on each Customer System hard disk or
quash the search warrants which was partially granted by
Read Only Memory ("ROM"); and
the RTC. Microsoft sought reconsideration but the RTC
(ii) xxx distribute directly or indirectly and license copies of denied Microsoft's motion. RTC held that the search
the Product (reproduced as per Section 2(a)(i) and/or warrants applied for by complainant were merely used as a
acquired from Authorized Replicator or Authorized leverage for the collection of the alleged monetary
Distributor) in object code form to end users. obligation of the respondents.
On appeal, the CA granted Microsoft's appeal and set aside

On appeal, the CA granted Microsoft's appeal and set aside The counterfeit CDROMs bought from respondents were
the RTC Orders. However, the DOJ State Prosecutor “installer” CDROMs containing Microsoft software only or
recommended the dismissal of Microsoft's complaint for both Microsoft and non-Microsoft software. The copying of
lack of merit and insufficiency of evidence. the genuine Microsoft software to produce these fake
CDROMs and their distribution are illegal even if the copier
ISSUE: Whether or not respondents is guilty of copyright ordistributor is a Microsoft licensee. These articles are
infringement and unfair competition. – YES. counterfeit per se because Microsoft does not (and could
not have authorized anyone to) produce such CD-ROMs.
RULING: Section 539 of PD 49 (“Section 5”) enumerates
As far as these installer CDROMs are concerned, the
the rights vested exclusively on the copyright owner.
Agreement is immaterial to the determination of
Contrary to the DOJ’s ruling, the gravamen of copyright
respondents’ liability for copyright infringement and unfair
infringement is not merely the unauthorized
competition.
“manufacturing” ofintellectual works but rather the
unauthorizedperformance of any of theacts covered by The Court finds that the 12 CDROMs and the CPU with
Section 5. Hence, any person who performs any of the acts preinstalled Microsoft software Sacriz and Samiano bought
under Section 5 without obtaining the copyright owner’s from respondents and the 2,831 Microsoft CDROMs seized
prior consent renders himself civilly and criminally liable for from respondents suffice to support a finding of probable
copyright infringement. cause to indict respondents for copyright infringement
under Section 5(A) in relation to Section 29 of PD 49 for
Significantly, under Section 5(A), a copyright owner
unauthorized copying and selling of protected intellectual
isvested with the exclusive right to “copy, distribute,
works.
multiply, and sell” his intellectual works.
The illegality of the “non-installer” CDROMs purchased
On the other hand, the elements of unfair competition
from respondents and of the Microsoft software
under Article 189(1) of the Revised Penal Code are:
preinstalled in the CPU is shown by the absence of the
1. That the offender gives his goods the general standard features accompanying authentic Microsoft
appearance of the goods of another manufacturer or products.
dealer;
The counterfeit “non-installer” CDROMs bought from
2. That the general appearance is shown in the (1) goods respondents also suffice to support a finding of probable
themselves, or in the (2) wrapping of their packages, or in cause to indict respondents for unfair competition under
the (3) device or words therein, or in (4) any other feature Article 189(1) of the Revised Penal Code for passing off
of their appearance; Microsoft products. From the pictures of the CDROMs’
packaging, one cannot distinguish them from the
3. That the offender offers to sell or sells those goods or packaging of CDROMs containing genuine Microsoft
gives other persons a chance or opportunity to do the software. Such replication, coupled with the similarity of
same with a like purpose; and content of these fake CDROMs and the CDROMs with
genuine Microsoft software, implies intent to deceive.
4. That there is actual intent to deceive the public or
defraud a competitor. The element of intent to deceive Respondents’ contention that the 12 CDROMs purchased
may be inferred from the similarity of the goods or their cannot be traced to them because the receipt for these
appearance. articles does not indicate its source is unavailing. The
receipt in question should be taken together with
Being the copyright and trademark owner of Microsoft
Microsoft’s claim that Sacriz and Samiano bought the
software, Microsoft acted well within its rights in filing the
CDROMs from respondents. Together, these considerations
complaint based on the incriminating evidence obtained
point to respondents as the vendor of the counterfeit
from respondents. Hence, it was highly irregular for the
CDROMs.
DOJ to hold, based on the RTC Order that Microsoft sought
the issuance of Search Warrants and by inference, the filing Being a mere reproducer/installer of one Microsoft
of the complaint merely to pressure Beltron to pay its software copy on each customer’s hard disk or ROM,
overdue royalties to Microsoft. Beltron could only have acquired the hundreds of
Microsoft CDROMs found in respondents’ possession from
The counterfeit CDROMs bought from respondents were
Microsoft distributors or replicators. However, respondents
Microsoft distributors or replicators. However, respondents owner of plans/drawings for interior and exterior hatch
make no such claim. What respondents contend is that doors.
these CDROMs were left to them for safekeeping. But
neither is this claim tenable for lack of substantiation. This copyright pertains to class work "I" under Section 172
These circumstances give rise to the reasonable inference of Republic Act (R.A.) No. 8293, The Intellectual Property
that respondents mass produced the CDROMs in question Code of the Philippines, which covers "illustrations, maps,
without securing Microsoft’s prior authorization. plans, sketches, charts and three-dimensional works
relative to geography, topography, architecture or science."
OLANO ET AL VS. CO On December 9, 2004, LEC was issued another Certificate

of Copyright Registration and Deposit showing that it is the
FACTS: Olano et al are the officers and/or directors of
registered owner of plans/drawings for interior and exterior
Metrotech Steel Industries, Inc. (Metrotech).
hatch doors which is classified under Section 172(h) of R.A.
Lim Eng Co (respondent), on the other hand, is the No. 8293 as "original ornamental designs or models for
Chairman of LEC Steel Manufacturing Corporation (LEC), a articles of manufacture, whether or not registrable as an
company which specializes in architectural metal industrial design, and other works of applied art."
manufacturing.
ISSUE: WON there was copyright infringement by
Sometime in 2002, LEC was invited by the architects of the Metrotech. NO
Manansala Project (Project) to submit design/drawings and
RULING: Copyright infringement is thus committed by any
specifications for interior and exterior hatch doors.
person who shall use original literary or artistic works, or
After a series of consultations and revisions, the final shop derivative works, without the copyright owner's consent in
plans/drawings were submitted by LEC on January 15, 2004 such a manner as to violate the foregoing copy and
and thereafter copied and transferred to the title block of economic rights. For a claim of copyright infringement to
Ski-First Balfour Joint Venture (SKI-FB), the Project's prevail, the evidence on record must demonstrate:
contractor, and then stamped approved for construction
(1) ownership of a validly copyrighted material by the
on February 3, 2004.
complainant; and
LEC was thereafter subcontracted by SKI-FB, to
(2) infringement of the copyright by the respondent.
manufacture and install interior and exterior hatch doors
for the 7th to 22nd floors of the Project based on the final While both elements subsist in the records, they did not
shop plans/drawings. simultaneously concur so as to substantiate infringement
of LEC's two sets of copyright registrations.
Sometime thereafter, LEC learned that Metrotech was also
subcontracted to install interior and exterior hatch doors The respondent failed to substantiate the alleged
for the Project's 23rd to 41st floors. reproduction of the drawings/sketches of hatch doors
copyrighted. There is no proof that the respondents
On June 24, 2004, LEC demanded Metrotech to cease from
reprinted the copyrighted sketches/drawings of LEC's hatch
infringing its intellectual property rights.
doors. What were discovered instead were finished and
Metrotech, however, insisted that no copyright unfinished hatch doors. Such Certificates of Registration
infringement was committed because the hatch doors it pertain to class work "I" under Section 172 of R.A. No. 8293
manufactured were patterned in accordance with the which covers "illustrations, maps, plans, sketches, charts
drawings provided by SKI-FB. and three-dimensional works relative to geography,
topography, architecture or science." As such, LEC's
On July 2, 2004, LEC deposited with the National Library copyright protection there under covered only the hatch
the final shop plans/drawings of the designs and door sketches/drawings and not the actual hatch door they
specifications for the interior and exterior hatch doors of depict.
the Project.
As the Court held in Pearl and Dean (Philippines),
On July 6, 2004, LEC was issued a Certificate of Copyright Incorporated v. Shoemart, Incorporated: Copyright, in the
Registration and Deposit showing that it is the registered strict sense of the term, is purely a statutory right. Being a
owner of plans/drawings for interior and exterior hatch mere statutory grant, the rights are limited to what the
strict sense of the term, is purely a statutory right. Being a from a company named Pemko and are not original
mere statutory grant, the rights are limited to what the creations of LEC. From the foregoing description, it is clear
statute confers. It may be obtained and enjoyed only with that the hatch doors were not artistic works within the
respect to the subjects and by the persons, and on terms meaning of copyright laws. A copyrightable work refers to
and conditions specified in the statute. Accordingly, it can literary and artistic works defined as original intellectual
cover only the works falling within the statutory creations in the literary and artistic domain.
enumeration or description.
2. A hatch door, by its nature is an object of utility. It is
Since the hatch doors cannot be considered as either defined as a small door, small gate or an opening that
illustrations, maps, plans, sketches, charts and three- resembles a window equipped with an escape for use in
dimensional works relative to geography, topography, case of fire or emergency. It is thus by nature, functional
architecture or science, to be properly classified as a and utilitarian serving as egress access during emergency.
copyrightable class "I" work, what was copyrighted were It is not primarily an artistic creation but rather an object of
their sketches/drawings only, and not the actual hatch utility designed to have aesthetic appeal. It is intrinsically a
doors themselves. useful article, which, as a whole, is not eligible for
copyright.
To constitute infringement, the usurper must have copied
or appropriated the original work of an author or copyright In the present case, LEC's hatch doors bore no design
proprietor, absent copying, there can be no infringement elements that are physically and conceptually separable,
of copyright independent and distinguishable from the hatch door itself.
"Unlike a patent, a copyright gives no exclusive right to the The allegedly distinct set of hinges and distinct jamb, were
art disclosed; protection is given only to the expression of related and necessary hence, not physically or conceptually
the idea — not the idea itself." separable from the hatch door's utilitarian function as an
apparatus for emergency egress. Without them, the hatch
Anent, LEC's Certificate of Registration that cover the door will not function.
interior and exterior hatch doors, the Court finds that the
ownership thereof was not established by the evidence on Being articles of manufacture already in existence, they
record because the element of copyrightability is absent. cannot be deemed as original creations.
"Ownership of copyrighted material is shown by proof of As earlier stated, valid copyright ownership denotes
originality and copyrightability.” originality of the copyrighted material.
While it is true that where the complainant presents a Originality means that the material was not copied,
copyright certificate in support of the claim of evidences at least minimal creativity and was
infringement, the validity and ownership of the copyright is independently created by the author. It connotes
presumed. This presumption, however, is rebuttable and it production as a result of independent labor.
cannot be sustained where other evidence in the record
casts doubt on the question of ownership, as in the instant LEC did not produce the door jambs and hinges; it bought
case. or acquired them from suppliers and thereafter affixed
them to the hatch doors. No independent original creation
Here, evidence negating originality and copyrightability as can be deduced from such acts.
elements of copyright ownership was satisfactorily
proffered against LEC's certificate of registration.
The following averments were not successfully rebuffed by 7. RELATED RIGHTS

LEC:
SECTION 202. Definitions. — For the purpose of this Act,
1. The hinges on LEC's "hatch doors" have no ornamental
the following terms shall have the following meanings:
or artistic value. In fact, they are just similar to hinges
found in truck doors that had been in common use since 202.1. "Performers" are actors, singers, musicians, dancers,
the 1960's. The gaskets on LEC's "hatch doors", aside from and other persons who act, sing, declaim, play in, interpret,
not being ornamental or artistic, were merely procured or otherwise perform literary and artistic work;
from a company named Pemko and are not original
202.2. "Sound recording" means the fixation of the sounds 203.2. The right of authorizing the direct or indirect
of a performance or of other sounds, or representation of reproduction of their performances fixed in sound
sound, other than in the form of a fixation incorporated in recordings, in any manner or form;
a cinematographic or other audiovisual work;
203.3. Subject to the provisions of Section 206, the right of
202.3. An "audiovisual work or fixation" is a work that authorizing the first public distribution of the original and
consists of a series of related images which impart the copies of their performance fixed in the sound recording
impression of motion, with or without accompanying through sale or rental or other forms of transfer of
sounds, susceptible of being made visible and, where ownership;
accompanied by sounds, susceptible of being made
audible; 203.4. The right of authorizing the commercial rental to the
public of the original and copies of their performances
202.4. "Fixation" means the embodiment of sounds, or of fixed in sound recordings, even after distribution of them
the representations thereof, from which they can be by, or pursuant to the authorization by the performer; and
perceived, reproduced or communicated through a device;
203.5. The right of authorizing the making available to the
202.5. "Producer of a sound recording" means the person, public of their performances fixed in sound recordings, by
or the legal entity, who or which takes the initiative and has wire or wireless means, in such a way that members of the
the responsibility for the first fixation of the sounds of a public may access them from a place and time individually
performance or other sounds, or the representation of chosen by them. (Sec. 42, P.D. No. 49a)
sounds; cd
SECTION 204. Moral Rights of Performers. —
202.6. "Publication of a fixed performance or a sound
recording" means the offering of copies of the fixed 204.1. Independently of a performer's economic rights, the
performance or the sound recording to the public, with the performer, shall, as regards his live aural performances or
consent of the right holder: Provided, That copies are performances fixed in sound recordings, have the right to
offered to the public in reasonable quality; claim to be identified as the performer of his performances,
except where the omission is dictated by the manner of the
202.7. "Broadcasting" means the transmission by wireless use of the performance, and to object to any distortion,
means for the public reception of sounds or of images or mutilation or other modification of his performances that
of representations thereof; such transmission by satellite is would be prejudicial to his reputation.
also "broadcasting" where the means for decrypting are
provided to the public by the broadcasting organization or 204.2. The rights granted to a performer in accordance with
with its consent; Subsection 203.1 shall be maintained and exercised fifty
(50) years after his death, by his heirs, and in default of
202.8. "Broadcasting organization" shall include a natural heirs, the government, where protection is claimed. (Sec.
person or a juridical entity duly authorized to engage in 43, P.D. No. 49)
broadcasting; and
SECTION 205. Limitation on Right. —
202.9. "Communication to the public of a performance or a
sound recording" means the transmission to the public, by 205.1. Subject to the provisions of Section 206, once the
any medium, otherwise than by broadcasting, of sounds of performer has authorized the broadcasting or fixation of
a performance or the representations of sounds fixed in a his performance, the provisions of Sections 203 shall have
sound recording. For purposes of Section 209, no further application.
"communication to the public" includes making the sounds
or representations of sounds fixed in a sound recording 205.2. The provisions of Section 184 and Section 185 shall
audible to the public. apply mutatis mutandis to performers. (n)
SECTION 206. Additional Remuneration for Subsequent

SECTION 203. Scope of Performers' Rights. — Subject to Communications or Broadcasts. — Unless otherwise
the provisions of Section 212, performers shall enjoy the provided in the contract, in every communication to the
following exclusive rights: public or broadcast of a performance subsequent to the
first communication or broadcast thereof by the
203.1. As regards their performances, the right of
broadcasting organization, the performer shall be entitled
authorizing:
to an additional remuneration equivalent to at least five
a. The broadcasting and other communication to the public percent (5%) of the original compensation he or she
of their performance; and received for the first communication or broadcast. (n)
b. The fixation of their unfixed performance.

SECTION 207. Contract Terms. — Nothing in this Chapter
SECTION 207. Contract Terms. — Nothing in this Chapter 208.3. The right to authorize the commercial rental to the
shall be construed to deprive performers of the right to public of the original and copies of their sound recordings,
agree by contracts on terms and conditions more favorable even after distribution by them by or pursuant to
for them in respect of any use of their performance. (n) authorization by the producer. (Sec. 46, P.D. No. 49a)
SECTION 209. Communication to the Public. — If a

sound recording published for commercial purposes, or a
SECTION 215. Term of Protection for Performers,
reproduction of such sound recording, is used directly for
Producers and Broadcasting Organizations. —
broadcasting or for other communication to the public, or
215.1. The rights granted to performers and producers of is publicly performed with the intention of making and
sound recordings under this law shall expire: enhancing profit, a single equitable remuneration for the
performer or performers, and the producer of the sound
a. For performances not incorporated in recordings, fifty recording shall be paid by the user to both the performers
(50) years from the end of the year in which the and the producer, who, in the absence of any agreement
performance took place; and shall share equally. (Sec. 47, P.D. No. 49a)
b. For sound or image and sound recordings and for

performances incorporated therein, fifty (50) years from the SECTION 223. Points of Attachment for Sound
end of the year in which the recording took place. Recordings. — The provisions of this Act on the protection
of sound recordings shall apply to:
215.2. In case of broadcasts, the term shall be twenty (20)
years from the date the broadcast took place. The 223.1. Sound recordings the producers of which are
extended term shall be applied only to old works with nationals of the Philippines; and
subsisting protection under the prior law. (Sec. 55, P.D. No.
223.2. Sound recordings that were first published in the
49a)
Philippines. (n)
SECTION 222. Points of Attachment for Performers. —

The provisions of this Act on the protection of performers
C. BROADCASTING ORGANIZATIONS
shall apply to:
222.1. Performers who are nationals of the Philippines; SECTION 211. Scope of Right. — Subject to the
provisions of Section 212, broadcasting organizations shall
222.2. Performers who are not nationals of the Philippines
enjoy the exclusive right to carry out, authorize or prevent
but whose performances:
any of the following acts:
a. Take place in the Philippines; or
211.1. The rebroadcasting of their broadcasts;
b. Are incorporated in sound recordings that are protected
211.2. The recording in any manner, including the making
under this Act; or
of films or the use of video tape, of their broadcasts for the
c. Which has not been fixed in sound recording but are purpose of communication to the public of television
carried by broadcast qualifying for protection under this broadcasts of the same; and
Act. (n)
211.3. The use of such records for fresh transmissions or for
fresh recording. (Sec. 52, P.D. No. 49)
B. PRODUCERS OF SOUND RECORDINGS
SECTION 208. Scope of Right. — Subject to the SECTION 224. Points of Attachment for Broadcasts. —
provisions of Section 212, producers of sound recordings
shall enjoy the following exclusive rights: 224.1. The provisions of this Act on the protection of
broadcasts shall apply to:
208.1. The right to authorize the direct or indirect
reproduction of their sound recordings, in any manner or a. Broadcasts of broadcasting organizations the
form; the placing of these reproductions in the market and headquarters of which are situated in the Philippines; and
the right of rental or lending;
b. Broadcasts transmitted from transmitters situated in the
208.2. The right to authorize the first public distribution of Philippines.
the original and copies of their sound recordings through
224.2. The provisions of this Act shall also apply to
sale or rental or other forms of transferring ownership; and
performers who, and to producers of sound recordings
and broadcasting organizations which, are to be protected

and broadcasting organizations which, are to be protected by the Office, the Director General shall be
by virtue of and in accordance with any international subject to the supervision of the Secretary of
convention or other international agreement to which the Trade and Industry;
Philippines is a party. (n)
b. Exercise exclusive appellate jurisdiction over all
decisions rendered by the Director of Legal
8. INTELLECTUAL PROPERTY OFFICE Affairs, the Director of Patents, the Director of
Trademarks, and the Director of the
SECTION 6. The Organizational Structure of the IPO. — Documentation, Information and Technology
6.1. The Office shall be headed by a Director General who Transfer Bureau. The decisions of the Director
shall be assisted by two (2) Deputies Director General in the exercise of his appellate
General. jurisdiction in respect of the decisions of the
6.2. The Office shall be divided into six (6) Bureaus, each of Director of Patents, and the Director of
which shall be headed by a Director and assisted Trademarks shall be appealable to the Court
by an Assistant Director. These Bureaus are: of Appeals in accordance with the Rules of
a. The Bureau of Patents; Court; and those in respect of the decisions
b. The Bureau of Trademarks; of the Director of Documentation,
c. The Bureau of Legal Affairs; Information and Technology Transfer Bureau
d. The Documentation, Information and shall be appealable to the Secretary of Trade
Technology Transfer Bureau; and Industry; and
e. The Management Information System and EDP c. Exercise original jurisdiction to resolve disputes
Bureau; and relating to the terms of a license involving the
f. The Administrative, Financial and Personnel author's right to public performance or other
Services Bureau. communication of his work. The decisions of
6.3. The Director General, Deputies Director General, the Director General in these cases shall be
Directors and Assistant Directors shall be appealable to the Secretary of Trade and
appointed by the President, and the other officers Industry.
and employees of the Office by the Secretary of 7.2. Qualifications. — The Director General and the
Trade and Industry, conformably with and under Deputies Director General must be natural born
the Civil Service Law. (n) citizens of the Philippines, at least thirty-five (35)
years of age on the day of their appointment,
SECTION 7. The Director General and Deputies Director holders of a college degree, and of proven
General. — competence, integrity, probity and independence:
7.1. Functions. — The Director General shall exercise the Provided, That the Director General and at least
following powers and functions: one (1) Deputy Director General shall be members
a. Manage and direct all functions and activities of of the Philippine Bar who have engaged in the
the Office, including the promulgation of practice of law for at least ten (10) years: Provided
rules and regulations to implement the further, That in the selection of the Director
objectives, policies, plans, programs and General and the Deputies Director General,
projects of the Office: Provided, That in the consideration shall be given to such qualifications
exercise of the authority to propose policies as would result, as far as practicable, in the
and standards in relation to the following: balanced representation in the Directorate
(1) the effective, efficient, and economical General of the various fields of intellectual
operations of the Office requiring statutory property.
enactment; 7.3. Term of Office. — The Director General and the
(2) coordination with other agencies of Deputies Director General shall be appointed by
government in relation to the enforcement of the President for a term of five (5) years and shall
intellectual property rights; be eligible for reappointment only once: Provided,
(3) the recognition of attorneys, agents, or That the first Director General shall have a first
other persons representing applicants or term of seven (7) years. Appointment to any
other parties before the Office; and vacancy shall be only for the unexpired term of
(4) the establishment of fees for the filing and the predecessor.
processing of an application for a patent, 7.4. The Office of the Director General. — The Office of the
utility model or industrial design or mark or a Director General shall consist of the Director
collective mark, geographic indication and General and the Deputies Director General, their
other marks of ownership, and for all other immediate staff and such Offices and Services that
services performed and materials furnished the Director General will set up to support directly
the Office of the Director General. (n)
SECTION 8. The Bureau of Patents. — imposed. Such voluntary
The Bureau of Patents shall have the following functions: assurance may include one or
8.1. Search and examination of patent applications and the more of the following:
grant of patents; 1. An assurance to comply
8.2. Registration of utility models, industrial designs, and with the provisions of
integrated circuits; and the intellectual
8.3. Conduct studies and researches in the field of patents property law violated;
in order to assist the Director General in formulating 2. An assurance to refrain
policies on the administration and examination of patents. from engaging in
(n) unlawful and unfair
acts and practices
SECTION 9. The Bureau of Trademarks. — The Bureau of subject of the formal
Trademarks shall have the following functions: cd investigation;
9.1. Search and examination of the applications for the
registration of marks, geographic indications and
other marks of ownership and the issuance of the 3. An assurance to recall,
certificates of registration; and replace, repair, or
9.2. Conduct studies and researches in the field of refund the money
trademarks in order to assist the Director General value of defective
in formulating policies on the administration and goods distributed in
examination of trademarks. (n) commerce; and
4. An assurance to
SECTION 10. The Bureau of Legal Affairs. — The Bureau reimburse the
of Legal Affairs shall have the following functions: complainant the
10.1. Hear and decide opposition to the application for expenses and costs
registration of marks; cancellation of trademarks; incurred in prosecuting
subject to the provisions of Section 64, the case in the Bureau
cancellation of patents, utility models, and of Legal Affairs. The
industrial designs; and petitions for compulsory Director of Legal
licensing of patents; Affairs may also
10.2. require the respondent
a. Exercise original jurisdiction in administrative to submit periodic
complaints for violations of laws involving compliance reports
intellectual property rights: Provided, That its and file a bond to
jurisdiction is limited to complaints where the guarantee compliance
total damages claimed are not less than Two of his undertaking;
hundred thousand pesos (P200,000): iii. The condemnation or seizure of
Provided further, That availment of the products which are subject of
provisional remedies may be granted in the offense. The goods seized
accordance with the Rules of Court. The hereunder shall be disposed of
Director of Legal Affairs shall have the power in such manner as may be
to hold and punish for contempt all those deemed appropriate by the
who disregard orders or writs issued in the Director of Legal Affairs, such as
course of the proceedings. (n) by sale, donation to distressed
b. After formal investigation, the Director for Legal local governments or to
Affairs may impose one (1) or more of the charitable or relief institutions,
following administrative penalties: exportation, recycling into other
i. The issuance of a cease and goods, or any combination
desist order which shall specify thereof, under such guidelines
the acts that the respondent as he may provide;
shall cease and desist from and iv. The forfeiture of paraphernalia
shall require him to submit a and all real and personal
compliance report within a properties which have been
reasonable time which shall be used in the commission of the
fixed in the order; offense;
ii. The acceptance of a voluntary v. The imposition of administrative
assurance of compliance or fines in such amount as deemed
discontinuance as may be reasonable by the Director of
imposed. Such voluntary Legal Affairs, which shall in no
administrative fines in such 11.4. Establish working relations with research and
amount as deemed reasonable development institutions as well as with local and
by the Director of Legal Affairs, international intellectual property professional
which shall in no case be less groups and the like;
than Five thousand pesos 11.5. Perform state-of-the-art searches;
(P5,000) nor more than One 11.6. Promote the use of patent information as an effective
hundred fifty thousand pesos tool to facilitate the development of technology in
(P150,000). In addition, an the country;
additional fine of not more than 11.7. Provide technical, advisory, and other services relating
One thousand pesos (P1,000) to the licensing and promotion of technology, and
shall be imposed for each day carry out an efficient and effective program for
of continuing violation; technology transfer; and
vi. The cancellation of any permit, 11.8. Register technology transfer arrangements, and settle
license, authority, or registration disputes involving technology transfer payments.
which may have been granted (n) cdta
by the Office, or the suspension
of the validity thereof for such SECTION 12. The Management Information Services
period of time as the Director of and EDP Bureau. — The Management Information
Legal Affairs may deem Services and EDP Bureau shall:
reasonable which shall not 12.1. Conduct automation planning, research and
exceed one (1) year; development, testing of systems, contracts with
vii. The withholding of any permit, firms, contracting, purchase and maintenance of
license, authority, or registration equipment, design and maintenance of systems,
which is being secured by the user consultation, and the like; and
respondent from the Office; 12.2. Provide management information support and service
viii. The assessment of damages; to the Office. (n)
ix. Censure; and
x. Other analogous penalties or SECTION 13. The Administrative, Financial and Human
sanctions. (Secs. 6, 7, 8, and 9, Resource Development Service Bureau. —
Executive Order No. 913 13.1. 13.1. The Administrative Service shall:
[1983]a) a. Provide services relative to procurement and
10.3. The Director General may by Regulations establish the allocation of supplies and equipment,
procedure to govern the implementation of this transportation, messengerial work, cashiering,
Section. (n) payment of salaries and other Office's
obligations, office maintenance, proper safety
SECTION 11. The Documentation, Information and and security, and other utility services; and
Technology Transfer Bureau. — comply with government regulatory
The Documentation, Information and Technology Transfer requirements in the areas of performance
Bureau shall have the following functions: appraisal, compensation and benefits,
11.1. Support the search and examination activities of the employment records and reports;
Office through the following activities: b. Receive all applications filed with the Office and
a. Maintain and upkeep classification systems collect fees therefore; and
whether they be national or international c. Publish patent applications and grants,
such as the International Patent Classification trademark applications, and registration of
(IPC) system; marks, industrial designs, utility models,
b. Provide advisory services for the determination geographic indication, and lay-out-designs of
of search patterns; integrated circuits registrations.
c. Maintain search files and search rooms and 13.2. The Patent and Trademark Administration Services
reference libraries; and shall perform the following functions among
d. Adapt and package industrial property others:
information. a. Maintain registers of assignments, mergings,
11.2. Establish networks or intermediaries or regional licenses, and bibliographic on patents and
representatives; trademarks;
11.3. Educate the public and build awareness on intellectual b. Collect maintenance fees, issue certified copies
property through the conduct of seminars and of documents in its custody and perform
lectures, and other similar activities; similar other activities; and
11.4. Establish working relations with research and c. Hold in custody all the applications filed with
development institutions as well as with local and the office, and all patent grants, certificate of
international intellectual property professional registrations issued by the office, and the like.
registrations issued by the office, and the like. SECTION 15. Special Technical and Scientific Assistance.
13.3. The Financial Service shall formulate and manage a — The Director General is empowered to obtain the
financial program to ensure availability and assistance of technical, scientific or other qualified officers
proper utilization of funds; provide for an effective and employees of other departments, bureaus, offices,
monitoring system of the financial operations of agencies and instrumentalities of the Government,
the Office; and including corporations owned, controlled or operated by
13.4. The Human Resource Development Service shall the Government, when deemed necessary in the
design and implement human resource consideration of any matter submitted to the Office relative
development plans and programs for the to the enforcement of the provisions of this Act. (Sec. 3,
personnel of the Office; provide for present and R.A. No. 165a)
future manpower needs of the organization;
maintain high morale and favorable employee SECTION 16. Seal of Office. — The Office shall have a
attitudes towards the organization through the seal, the form and design of which shall be approved by
continuing design and implementation of the Director General. (Sec. 4, R.A. No. 165a)
employee development programs. (n)
SECTION 17. Publication of Laws and Regulations. —
SECTION 14. Use of Intellectual Property Rights Fees by The Director General shall cause to be printed and make
the IPO. — available for distribution, pamphlet copies of this Act, other
14.1. For a more effective and expeditious implementation pertinent laws, executive orders and information circulars
of this Act, the Director General shall be relating to matters within the jurisdiction of the Office. (Sec.
authorized to retain, without need of a separate 5, R.A. No. 165a)
approval from any government agency, and
subject only to the existing accounting and SECTION 18. The IPO Gazette. — All matters required to
auditing rules and regulations, all the fees, fines, be published under this Act shall be published in the
royalties and other charges, collected by the Office's own publication to be known as the IPO Gazette.
Office under this Act and the other laws that the (n)
Office will be mandated to administer, for use in
its operations, like upgrading of its facilities, SECTION 19. Disqualification of Officers and Employees
equipment outlay, human resource development, of the Office. — All officers and employees of the Office
and the acquisition of the appropriate office shall not apply or act as an attorney or patent agent of an
space, among others, to improve the delivery of application for a grant of patent, for the registration of a
its services to the public. This amount, which shall utility model, industrial design or mark nor acquire, except
be in addition to the Office's annual budget, shall by hereditary succession, any patent or utility model,
be deposited and maintained in a separate design registration, or mark or any right, title or interest
account or fund, which may be used or disbursed therein during their employment and for one (1) year
directly by the Director General. thereafter. (Sec. 77, R.A. No. 165a)
9. JURISDICTION
14.2. After five (5) years from the coming into force of this
Act, the Director General shall, subject to the A. Jurisdiction of Intellectual Property Office
approval of the Secretary of Trade and Industry,
determine if the fees and charges mentioned in SECTION 7. The Director General and Deputies Director
Subsection 14.1 hereof that the Office shall collect General. —
are sufficient to meet its budgetary requirements.
If so, it shall retain all the fees and charges it shall 7.1. Functions. — The Director General shall exercise the
collect under the same conditions indicated in following powers and functions:
said Subsection 14.1 but shall forthwith, cease to
receive any funds from the annual budget of the b. Exercise exclusive appellate jurisdiction over all decisions
National Government; if not, the provisions of said rendered by the Director of Legal Affairs, the Director of
Subsection 14.1 shall continue to apply until such Patents, the Director of Trademarks, and the Director of the
time when the Director General, subject to the Documentation, Information and Technology Transfer
approval of the Secretary of Trade and Industry, Bureau. The decisions of the Director General in the
certifies that the above-stated fees and charges exercise of his appellate jurisdiction in respect of the
the Office shall collect are enough to fund its decisions of the Director of Patents, and the Director of
operations. Trademarks shall be appealable to the Court of Appeals in
accordance with the Rules of Court; and those in respect of
the decisions of the Director of Documentation,
Information and Technology Transfer Bureau shall be
SECTION 15. Special Technical and Scientific Assistance. — appealable to the Secretary of Trade and Industry; and
appealable to the Secretary of Trade and Industry; and also require the respondent to submit periodic compliance
reports and file a bond to guarantee compliance of his
undertaking;
SECTION 9. The Bureau of Trademarks. — The Bureau of
Trademarks shall have the following functions:
iii. The condemnation or seizure of products which are
subject of the offense. The goods seized hereunder shall be
9.1. Search and examination of the applications for the
disposed of in such manner as may be deemed appropriate
registration of marks, geographic indications and other
by the Director of Legal Affairs, such as by sale, donation to
marks of ownership and the issuance of the certificates of
distressed local governments or to charitable or relief
registration; and
institutions, exportation, recycling into other goods, or any
combination thereof, under such guidelines as he may
SECTION 10. The Bureau of Legal Affairs. — The Bureau
provide;
of Legal Affairs shall have the following functions:
iv. The forfeiture of paraphernalia and all real and personal
10.1. Hear and decide opposition to the application for
properties which have been used in the commission of the
registration of marks; cancellation of trademarks; subject to
offense;
the provisions of Section 64, cancellation of patents, utility
models, and industrial designs; and petitions for v. The imposition of administrative fines in such amount as
compulsory licensing of patents; deemed reasonable by the Director of Legal Affairs, which
shall in no case be less than Five thousand pesos (P5,000)
10.2.
nor more than One hundred fifty thousand pesos
(P150,000). In addition, an additional fine of not more than
a. Exercise original jurisdiction in administrative complaints
One thousand pesos (P1,000) shall be imposed for each
for violations of laws involving intellectual property rights:
day of continuing violation;
Provided, That its jurisdiction is limited to complaints
where the total damages claimed are not less than Two
vi. The cancellation of any permit, license, authority, or
hundred thousand pesos (P200,000): Provided further, That
registration which may have been granted by the Office, or
availment of the provisional remedies may be granted in
the suspension of the validity thereof for such period of
accordance with the Rules of Court. The Director of Legal
time as the Director of Legal Affairs may deem reasonable
Affairs shall have the power to hold and punish for
which shall not exceed one (1) year;
contempt all those who disregard orders or writs issued in
the course of the proceedings. (n) vii. The withholding of any permit, license, authority, or
registration which is being secured by the respondent from
b. After formal investigation, the Director for Legal Affairs
the Office;
may impose one (1) or more of the following
administrative penalties: viii. The assessment of damages;
i. The issuance of a cease and desist order which shall ix. Censure; and
specify the acts that the respondent shall cease and desist
from and shall require him to submit a compliance report x. Other analogous penalties or sanctions. (Secs. 6, 7, 8, and
within a reasonable time which shall be fixed in the order; 9, Executive Order No. 913 [1983]a)
ii. The acceptance of a voluntary assurance of compliance 10.3. The Director General may by Regulations establish the
or discontinuance as may be imposed. Such voluntary procedure to govern the implementation of this Section.
assurance may include one or more of the following: (n)
1. An assurance to comply with the provisions of the

SECTION 11. The Documentation, Information and
intellectual property law violated;
Technology Transfer Bureau. — The Documentation,
2. An assurance to refrain from engaging in unlawful and Information and Technology Transfer Bureau shall have the
unfair acts and practices subject of the formal investigation; following functions:
3. An assurance to recall, replace, repair, or refund the 11.8. Register technology transfer arrangements, and settle
money value of defective goods distributed in commerce; disputes involving technology transfer payments. (n) cdta
and
4. An assurance to reimburse the complainant the expenses

and costs incurred in prosecuting the case in the Bureau of
Legal Affairs. The Director of Legal Affairs may also require
the respondent to submit periodic compliance reports and
file a bond to guarantee compliance of his undertaking;

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IP NOTES from the syllabus of Atty. Ma.

xxxxxxxxx What can be the subject of copyright

If a pictorial, graphic or sculptural work is a "useful article", RULING:

SECTION 2. The rights granted by this Decree shall, from

b. The making of quotations from a published work if they

Under the MOA, the Lead Networks are mandated to

IN THIS CASE: A perusal of the records yields several pages

Microsoft then charged respondents before the

On appeal, the CA granted Microsoft's appeal and set aside

OLANO ET AL VS. CO On December 9, 2004, LEC was issued another Certificate

The following averments were not successfully rebuffed by 7. RELATED RIGHTS

SECTION 206. Additional Remuneration for Subsequent

b. The fixation of their unfixed performance.

SECTION 209. Communication to the Public. — If a

b. For sound or image and sound recordings and for

SECTION 222. Points of Attachment for Performers. —

and broadcasting organizations which, are to be protected

1. An assurance to comply with the provisions of the

4. An assurance to reimburse the complainant the expenses

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