INTELLECTUAL PROPERTY LAW

(Republic Act No. 8293, as

amended by RA No. 10372)
ATTY. KENNERLY ALBERT R. MALINAO, CPA
UNIVERSITY OF MINDANAO
COLLEGE OF ACCOUNTING EDUCATION
 RATIONALE BEHIND THE INTELLECTUAL
PROPERTY LAW
1. The Intellectual Property Law/Code (“IPC”) gives life to Sec. 13, Article
XIV of the 1987 Philippine Constitution which mandates that the State
shall protect and secure the exclusive rights of scientists, inventors,
artists and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people, for such period as
may be provided by law.
2. The State recognizes that an effective intellectual and industrial property
system is vital to the development of domestic and creative activity,
facilitates transfers of technology and attracts foreign investments; and
ensures market access for our products (IPC, Sec. 2).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 2

 STATE POLICIES OF THE IPC
1. To protect and secure the exclusive rights of scientists, inventors, artists,
and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people, for such periods as provided
in this Act.
2. To promote the diffusion of knowledge and information for the
promotion of national development and progress and the common
good.
3. To streamline administrative procedures of registering patents,
trademarks, and copyright, to liberalize the registration on the transfer
of technology, and to enhance the enforcement of intellectual property
rights in the Philippines.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 3

INTELLECTUAL PROPERTY RIGHTS UNDER THE IPC
1. Copyright
2. Related rights of copyright
3. Trademark and service marks
4. Geographic indications
5. Industrial designs
6. Patents
7. Lay-out designs (topographies or 3D) of integrated circuits
8. Protection of undisclosed information

ATTY. KENNERLY ABLERT R. MALINAO, CPA 4

 PATENTS v. TRADEMARKS v. COPYRIGHT
TRADEMARKS /
PATENTS COPYRIGHT
TRADENAMES

is a grant issued by the

government to an inventor, any visible sign capable of it is a right granted by
designer, or maker, the right to distinguishing the goods statute to the author or
exclude others from making, (trademark) or services originator of literary,
using, or selling his invention, (service mark) of an scholarly, scientific, or
deisgn, or utility model within enterprise and shall include a artistic productions,
the country for a specific term, in stamped or marked container including computer
exchange for his patentable of goods. programs.
disclosure.

Ex. Original Iphone Ex. McDonalds Ex. Books,

ATTY. KENNERLY ABLERT R. MALINAO, CPA 5
 PATENTS, definition of terms
1. Patent – is a grant issued by the government to an inventor, designer, or maker, the
right to exclude others from making, using, or selling his invention, deisgn, or utility
model within the country for a specific term, in exchange for his patentable disclosure.
1. The term of patent shall be 20 years from the filing date of the application.
2. Utility Model – it is a protection option, with is designed to protect innovations that
are not sufficiently inventive to meet the inventive threshold required for standard
patent applications. It may be any useful machine, implement, tools, product,
composition, process, improvement or part of the same. That is of practical utility,
novelty and industrial applicability. It is entitled to 7 years of protection from the date
of filing, with no possibility of renewal.
3. Industrial Design – it is any composition of lines or colors or any 3D form, whether or
not associated with lines or colors, provided that such composition or form gives a
special appearance to and can serve as pattern for an industrial product or handicraft.
It shall be valid for 5 years from the filing date of the application. It may be renewed for
not more than 2 consecutive periods of 5 years each, by paying the renewal fee.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 6

 ELEMENTS OF A PATENT
1. Novelty – An invention shall not be considered new if it forms part of a prior
art.
1. Prior Art:
1. Everything which has been made available to the public anywhere in the world, before the filing date or
the priority date of the application claiming the invention, and
2. Those already covered by an earlier application.
2. Inventive step –
General Rule: An invention involves an inventive step if, having regard to prior art, it
is not obvious to a person skilled in the art at the time of the filing date or priority
date of the application claiming the invention.
Exception: In the case of drugs and medicines, there is no inventive step if the
invention results from the mere discovery of a new form or new property of a
known substance which does not result in the enhancement of the known efficacy
of that substance.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 7

 ELEMENTS OF A PATENT

3. Industrial applicability – An invention that can be produced and used in

any industry shall be industrially applicable, meaning, an invention must
not be merely theoretical but also has a practical purpose. If the
invention is a product, it should be able to produce a product and if the
invention is a process, it should be able to layout a process.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 8

 DOCTRINE OF PREJUDICIAL DISCLOSURE
The right to patent arises from application date. If the inventor voluntarily discloses his creation
such as by offering it for sale, the world is free to copy and use it with impunity. Ideas, once
disclosed to the public without the protection of a valid patent, are subject to appropriation
without significant restraint (Pearl & Dean, Inc v. Shoemart, Inc. 409 SCRA 231, August 15, 2003).

General Rule: When a work has already been made available to the public, it shall be non-
patentable for absence of novelty.
Exception: Non-prejudicial disclosure – The disclosure of information contained in the
application during the 12-months preceding the filing date or the priority date of the application
shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by:
1. The inventor,
2. A patent office and the information was contained (a) in another application filed by the inventor and
should not have been disclosed by the office, or (b) in an application filed without the knowledge or
consent of the inventor by a third party which obtained the information directly or indirectly from the
inventor, or
3. A 3rd party which obtained the information directly or indirectly from the inventor.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 9

PATENTABLE AND NON-PATENTABLE INVENTIONS
Patentable Inventions – Any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable shall be
patentable. It may be, or may relate to, a product or process, or an improvement of
any of the foregoing.
Non-patentable inventions – the following shall be excluded from patent
protection:
1. Discoveries, scientific theories and mathematical methods,
2. Schemes, rules and methods of performing mental acts, playing games, or doing
business, and programs for computers,
3. Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body.
4. Plant varieties or animal breeds or essentially biological process for the production of
plants and animals,
5. Aesthetic creations
6. Anything which is contrary to public order or morality.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 10

RIGHT TO A PATENT, FIRST TO FILE RULE AND
RIGHT OF PRIORITY/PRIORITY CLAIM
The right to a patent
1. The right to a patent belong s to the inventor, his heirs, or assigns.
2. When two or more persons having jointly made an invention, the right to a patent shall
belong to them jointly.
“First to File Rule”
1. If two or more persons separately made the same invention, priority shall be given to the
one who filed first.
“Right of Priority/Priority Claim” – an application made locally when an earlier application is
filed abroad. The process shall be:
1. A Claim of Priority based on an earlier filing date abroad shall be filed here.
2. A local application filed within 12 months from priority date (date of foreign application for
patent).
3. Certified copy of priority application and English translation thereof within 6 months from
the filing date.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 11

 COMMISSIONED INVENTIONS
General Rule: the person who commissioned the work shall own the patent.
Exception: unless otherwise provided in the contract or agreement.

In case the employee made the invention in the course of his employment
contract, the patent shall belong to:
1. The employee – if the inventive activity is not part of his regular duties
even if the employee uses the time, facilities and materials of the
employer, or
2. The employer – if the invention is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 12

 EXCLUSIVE PATENT RIGHTS

1. Where the subject matter of a patent is a product – to restrain, to

prohibit and prevent any unauthorized person or entity from making,
using, offering for sale, selling or importing that product.
2. Where the subject matter of a patent is a process – to restrain, to
prohibit and prevent any unauthorized person from using the process,
and from manufacturing, dealing in, using, selling, or offering for sale or
importing any product obtained directly or indirectly from such process.
3. The right to assign, or transfer by succession the patent, and
4. Right to conclude licensing contracts for the same.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 13

 PRIOR USER

1. Not withstanding the exclusivity of rights mentioned, any prior user, who,
in good faith was using the invention or has undertaken serious
preparations to use the invention in his enterprise or business, before
the filing date or priority date of the application on which a patent is
granted, shall have the right to continue the use thereof as envisaged in
such preparations within the territory where the patent produces its
effect.
2. The right of the prior user may only be transferred or assigned together
with his enterprise or business, or that part of his enterprise of business
in which the use or preparations for use have been made (Sec. 73, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 14

 USE OF INVENTION BY GOVERNMENT

A Government agency or third person authorized by the Government may

exploit the invention even without agreement of the patent owner where:

1. The public interest, in particular, national security, nutrition, health or

the development of other sectors, as determined by the appropriate
agency of the Government, so requires, or
2. A judicial or administrative body has determined that the manner of
exploitation, by the owner of the patent or his licensee is anti-
cooperative.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 15

 PATENT INFRINGEMENT
The making, using, offering for sale, selling, or importing a patented product or a
product obtained directly or indirectly from a patented process, or the use of a
patented process without the authorization of the patentee constitutes patent
infringement.
Kinds of Infringement:
1. Literal Infringement
1. Exactness Rule – the item that is being sold, made or used conforms exactly to the
patent claim of another.
2. Addition Rule – one makes, uses or sells an item that has all the elements of the patent
claim of another plus other elements.
2. Doctrine of Equivalents: with some modification and change but
SUBSTANTIALLY THE SAME:
1. Function
2. Ways/Means/Principle or Mode of Operation
3. Result

ATTY. KENNERLY ABLERT R. MALINAO, CPA 16

 DOCTRINE OF EQUIVALENTS

1. The Doctrine of Equivalents provides that an infringement also takes place when a
device appropriates a prior invention by incorporating its innovative concept and,
although with some modification and change, performs substantially the same result.
2. Identity of result does not amount to infringement of patent unless the invention being
questioned operates in substantially the same way or by substantially the same means
as the patented ones. In other words, the principle or mode of operation must be the
same or substantially the same.
3. The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such
equivalency test are met.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 17

 REMEDIES OF PATENTEE IN CASE OF PATENT
INFRINGEMENT

1. Civil action to recover damages plus attorney’s fees and other expenses of litigation or
reasonable royalty.
2. Injunction for the protection of rights.
3. The court may in its discretion, order that the infringing goods, materials and
implements predominantly used in the infringement be disposed of outside the
channels of commerce or destroyed, without compensation.
4. Criminal Action for Repetition of Infringement: if the infringement is repeated by the
infringer or by anyone in connivance with him after the finality of the judgment of the
court against the infringer.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 18

 GROUNDS FOR COMPULSORY LICENSING
1. National emergency / circumstances of extreme urgency
2. Public interest, in particular, national security, nutrition, health or the development of
other vital sectors of the national economy as determined by the appropriate agency of
the Government, so requires,
3. Where a judicial or administrative body has determined that the manner of exploitation
by the owner of the patent or his licensee is anti-competitive,
4. In case of public non-commercial use of the patent by the patentee, without
satisfactory reasons,
5. If the patented invention is not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory reasons,
6. Where the demand for patented drugs and medicines is not being met to an adequate
extent, and
7. Manufacture and export of drugs and medicines to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector to address public health problems.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 19

 What is a Trademark?

Any visible sign capable of distinguishing the goods (trademark)

or services (service mark) of an enterprise and shall include a
stamped or marked container of goods.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 20

 What is a Trade Name?
• Trade name is the name or designation identifying or
distinguishing an enterprise (Sec.121.3, IPC).

• It is any individual name or surname, firm name, device, or

word used by manufacturers, industrialists, merchants,
and others to identify their businesses, vocations or
occupations (Converse Rubber Corp., v. Universal Rubber
Products, Inc. GR No. L-27090, January 8, 1987).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 21

 What are the basic principles of trademark
registration?
The basic principles of trademark registration are as follows:
1. The right to the mark is separate and distinct from the
business using such mark (Sec. 149.1, IPC);
2. The right of registration belongs to the owner of the mark
(Unno Commercial Enterprises, Inc. v. General Milling
Corp., GR No. L-28554, February 28, 1983);
3. The rights to a mark shall be acquired through
registration made validly in accordance with the
provisions of IPC (Sec. 122, IPC).
1. A certificate of registration shall remain in force for 19 years
and may be renewed for another 10 years at its expiration.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 22

 What is Madrid Protocol?

The Madrid Protocol offers trademark owners the possibility

to have his trademark protected in several countries by
simply filing one application directly with his own national or
regional trademark office (Madrid System for International
Registration of Trademarks, 1979).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 23

 What is the effect of registration?

The effect of registration is that the registrant acquires

exclusive right to use the same in connection with the goods
or services and those that are related thereto.

However, registration is only an administrative act,

declaratory of a pre-existing right that does not itself perfect
a trademark. It is actual use which perfects a trademark
(Sec. 122, IPC; Sterling Products Int’l, Inc. v. Farbenfabriken
Bayer, GR No. L-19906, April 30, 1969).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 24

 Is prior use or actual use of a mark in the
Philippines required before registration?
No, Prior use is not required before registration. However,
there must be an actual use after registration. The applicant
or registrant shall file regularly a declaration of actual use
(DAU) of the mark (Sec. 124.2 and 145, IPC).

The DAU is filed in two instances:

1. Within 3 years from the filing date of the application (Sec.
142.2, IPC) and
2. Within 1 year from the 5th anniversary of the date of
registration of the mark (Sec. 145, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 25

 What are marks which cannot be registered?
The following marks are non-registrable:
1. Generic marks for goods or services;
2. Indication that have become Customary to trade;
3. Descriptive marks
4. Deceptive or misleading trademarks;
5. Marks considered to be Contrary to public order or morality;
6. Flags, armorial bearings, official hallmarks, and emblems of states and international organizations;
7. Marks which falsely suggest a connection with persons, living or dead, institutions, beliefs or national
symbols;
8. Marks relating to Particular persons;
9. Shapes;
10. Geographical marks or geographical descriptive marks;
11. Colors (unless defined by a given form);
12. Names and images of Famous people;
13. Surname marks;
14. Signature of a person;
15. Well-known marks;
16. Marks identical with a registered mark;
17. Marks covered by Protection treaties, and
18. Marks which are non-registrable by Express provision of Law 9Sec. 123.1, IPC)

ATTY. KENNERLY ABLERT R. MALINAO, CPA 26

 What are the exceptions to the rule on
descriptive marks?
General Rule: descriptive name, word or phrase of the characteristic,
quality or composition of an article cannot be registered as trademark or
tradename.
Exceptions: the following are the exceptions
1. If used in a Fanciful manner – it is invented for the sole purpose of
functioning as a trademark and has no other meaning than acting as
a mark.
2. If used as an Arbitrary mark – it is utilized as a device having a
common meaning that has no relation to the goods or the services
being sold.
3. If used as part of Composite mark – consist of two or more elements
or combination of words, phrases, designs, symbols, or color
schemes, and
4. If it acquired a Secondary meaning.
ATTY. KENNERLY ABLERT R. MALINAO, CPA 27
 What does “secondary meaning” mean?

“Secondary meaning” means that a word or phrase originally

incapable of exclusive appropriation with reference to an article in
the market might nevertheless have been used for so long and so
exclusive by one producer that, in the trade and to that branch of
purchasing public, the word or phrase has come to mean that the
article was his property.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 28

 Explain the Priority Right under the law on
Trademarks, Service Marks and Tradenames
An application for registration of a mark filed in the Philippines by any
person who is a national or who is domiciled or has a real and effective
industrial establishment in a country which is a party to any convention,
treaty or agreement relating to intellectual property rights or the
repression of unfair competition, to which the Philippines by law, and
who previously duly filed an application for registration of the same mark
in one of those countries shall be considered as filed as of the day the
application was first filed in the foreign country. (Sec. 131.1, IPC).

Note: No registration of a mark in the Philippines by reason described

above shall be granted until such mark has been registered in the
country of origin of the applicant (Sec. 131.2, IPC).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 29
 What is trademark infringement?
Infringement is the use of the trademark/trade name without the
consent of the trademark/trade name owner, of any reproduction,
counterfeit, copy, or colorable imitation of any registered trademark
or trade name in connection with the sale, offering for sale, or
advertising of any goods, business, services, or in connection with
such business, or reproduce, counterfeit, copy, or colorably imitate
any such mark or trade name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles, or advertisements intended to be
used upon or in connection with such goods, business, or services
(Esso Standard Eastern, Inc. v. CA, supra).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 30
 What are the elements of Trademark
Infringement?

To establish trademark infringement, the following elements must

be shown:
1. The validity of the owner’s mark,
2. The owner’s ownership of the mark, and
3. The use of the mark or its colorable imitation by the alleged
infringer results in the “likelihood of confusion” (McDonald’s
Corporation v. L.C. Bik Mak Burger, Inc., GR No. 143993,
August 18, 2004).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 31

 Is fraud necessary to commit trademark
infringement?

No, an action for infringement may be initiated and maintained

without proof of anything more than the right to the exclusive use of
the registered mark or trade name and that the defendant has
violated it. No allegation or proof of fraud or intent to defraud is
necessary (Compania General de Tabacos v. Alhambra Cigar, Co.
GR No. L-11490, October 14, 1916).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 32

 As a general rule, only registered trademark can be
subject to a complaint for trademark infringement,
what is the exception?
General Rule: Only registered trademark, trade name, and service marks
are protected against infringement or unauthorized use by another or
others (Asia Brewery, Inc. v. CA).
Exception: Under Article 6 of the Paris Convention, to which the
Philippines is a party, the parties to the convention undertake, among
others, to prohibit use of a trademark which constitute a reproduction,
imitation or translation, that is liable to create confusion, when used for
identical or similar goods.
Thus, all that is required for infringement to be present is that the mark is
well-known internationally and used in the Philippines for identical or
similar goods whether or not the mark is registered or used in the
Philippines (Fredco Manufacturing v. Hardvard, GR No. 185917, June 1,
2011).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 33
 Explain the concept of Colorable Imitation

Colorable imitation means such similarity in form, content, words,

sound, meaning, special arrangement or general appearance of the
mark or trade name with that of the other mark or trade name, in
their overall presentation or in their essential, substantive or
distinctive parts as would likely mislead or confuse persons in the
ordinary course of purchasing the genuine article (Etepha A.G. v.
Director of Patents and Westmont Pharmaceuticals, Inc., GR No. L-
20635, March 31, 1996).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 34

 What are the tests in confusion of goods or
services?
The tests are the Dominancy Test and Holistic / Totality Test
In Dominancy Test:
1. Focuses on the similarity of the main, essential, dominant, or
prevalent features of a mark.
2. Relies on visual, aural, and connotative comparisons, and overall
impressions between the two trademarks.
3. The test is whether there is similarity of the prevalent features of the
competing trademarks which might cause confusion and deception
and thus constitute infringement.
Note: Exact duplication or imitation is not necessary. (Del Monte Corp. v.
CA).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 35
 What are the tests in confusion of goods or
services?
The tests are the Dominancy Test and Holistic / Totality Test

In Holistic/Totality Test:
1. Mandates that the entirety of the marks in question must be
considered in determining confusing similarity.
2. Relies on close visual comparison.
3. The test is whether the general confusion made by the article upon
the eye of the casual purchaser who is unsuspicious and off his
guard, is such as to likely result in confounding it with the original.

Note: Comparison of the words is not the only determinant factor (Del
Monte Corp. v. CA).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 36
 What is unfair competition?

Unfair competition is the passing off or attempting to pass off upon

the public of the goods or business of one person as the goods or
business of another with the end and probable effect of deceiving
the public (Superior Commercial Enterprises, Inc. v. Kunnan
Enterprises, Ltd, GR No. 169974, April 20, 2010).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 37

 What are the essential elements of unfair
competition?

The essential elements of unfair competition are:

1. That the offender is engaged in the manufacture of goods,
dealing of goods, business or service;
2. That he employs deception or any other means contrary to good
faith; and
3. That the means employed shall be used to pass off his goods or
services for those of one having established such good will or
shall commit acts calculated to purchase the same result 9Sec.
168.2, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 38

 What is a copyright?

• Copyright is a right over literary and artistic works which are

original intellectual creations in the literary and artistic domain
protected from the moment of creation (Kho v. CA, GR No.
115758, March 19, 2002).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 39

 What is considered original works / intellectual
creations in the literary and artistic domain?
The following are considered as original works:
1. Books, pamphlets, articles and other writings;
2. Periodicals and newspapers (pure reports no longer find protection
under the law, but a column or published comment will. When
newspapers and periodicals include work enjoying copyrights, the work
so included continue to enjoy the rights for the duration proper to
them);
3. Lectures, sermons, addresses, dissertations prepared for oral delivery,
whether or not reduced in writing or other material form;
4. Letters;
5. Dramatic or dramatico-musical compositions, choreographic works, or
entertainment in dumb shows;
ATTY. KENNERLY ABLERT R. MALINAO, CPA 40
 What is considered original works / intellectual
creations in the literary and artistic domain?
The following are considered as original works:
6. Musical compositions with or without words;
7. Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art, models or designs for works of art;
8. Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art;
9. Illustrations, maps, plans, sketches, charts and 3D works relative to
geography, topography, architecture or science;
10. Drawings or plastic works of a scientific or technical character;
ATTY. KENNERLY ABLERT R. MALINAO, CPA 41
 What is considered original works / intellectual
creations in the literary and artistic domain?
The following are considered as original works:
11. Photographic works including works produced by a process analogous
to photography; lantern slides;
12. Audiovisual works and cinematographic works and works produced by a
process analogous to cinematography or any process for making
audiovisual recordings;
13. Pictorial illustration and advertisements;
14. Computer programs, and
15. Other literary, scholarly, scientific and artistic works (Sec. 172, IPC).
Note: Protection commences from the moment of creation, irrespective of
the mode or form of expression, as well as the content, quality or purpose.
ATTY. KENNERLY ABLERT R. MALINAO, CPA 42
 What are derivative works?

The following are derivative works which shall also be protected by copyright:
1. Dramatizations, translations, adaptations, abridgments, arrangements and
other alterations of literary or artistic works, and
2. Collections of literary, scholarly or artistic works, and compilations of data
and other materials which are original by reason of the selection or
coordination or arrangement of their contents.

The above shall be protected as a new work: Provided however, that such new
work shall not affect the force of any subsisting copyright upon the original work
employed or any part thereof, or be constructed to imply any right to such use of
the original work, or to secure or extend copyright in such original work.
ATTY. KENNERLY ABLERT R. MALINAO, CPA 43
 What are non-copyrightable works?
The works which are not protected (cannot be protected by copyright)
are as follows:
1. Pleadings;
2. Idea, procedure, system, method or operation, concept, principle,
discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work (Sec. 175, IPC);
3. News of the day and other miscellaneous facts having the
character of mere items of press information (Sec. 175, IPC);
4. Decisions of courts and tribunals;
5. Any official text of a legislative, administrative or legal nature, as
well as official translation thereof (Sec. 175, IPC); and
6. Any work of the Government of the Philippines.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 44

 What are the rights conferred to a copyright
owner?

1. Copyright or Economic rights (Sec. 177, IPC),

2. Moral rights (Sec. 193, IPC),
3. Right to participate in the gross proceeds of the sale or lease
of the original work or Droit De Suite (Sec. 200, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 45

 Distinguish Economic Rights of a Copyright
holder from His Moral Rights
Economic rights allow the owner to derive financial reward from
the use of his work by others.

Moral rights allow the author to take certain actions to preserve

the personal link between himself and the work, but they must be
asserted. Moral rights, unlike economic rights remain with the
author even after he has transferred or assigned to another
“other rights of copyright”.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 46

What constitute copyright or economic rights?

Copyright or economic rights are exclusive to the following rights:

1. Reproduction of the work or substantial portion of the work;
2. Derivative right;
3. Distribution right;
4. Rental and lending right;
5. Right of communication to the public;
6. Public performance right, and
7. Droit de suite or Resale right.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 47

 What constitutes moral right?

The following are the moral rights:

1. Paternity right, i.e. the right to be identified or the right of
attribution;
2. Right to withhold publication;
3. Right to disclosure;
4. Integrity right, i.e. the right to object to derogatory treatment
of the work; and
5. Right against false attribution of a work (Sec. 193, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 48

 What is Droit de Suite?

• Droite de Suite means “art proceeds right”. It is the artist’s

resale right, which requires that a percentage resale price of an
artistic work is paid to the author.
• It is the inalienable right to receive to the extent of 5% of the
gross proceeds of the sale or lease of a work (Sec. 200, IPC).
• This right is exercisable even after the author’s death, provided
the work is still in copyright.

ATTY. KENNERLY ABLERT R. MALINAO, CPA 49

 What works not covered by droit de suite?

The works not covered by Droit de suite are the following:

1. Prints;
2. Etchings;
3. Engravings;
4. Works of applied art; and
5. Works wherein the author primarily derives gain from the
proceeds of reproductions (Sec. 201, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 50

 Discuss rules on ownership of copyright:
1. Single Creator: Author of the work, his heirs or assigns (Sec. 178.1, IPC);
2. Joint Creator:
1. If work consist of unidentifiable parts – co-authors jointly as co-owners, unless there is
agreement to the contrary (Sec. 178.2, IPC).
2. If work consist of identifiable parts – author of each part owns the part that he has
created (Sec. 178.2, IPC).
3. Employee's Creation:
1. If the creation is part of his regular duties – employer owns the creation, unless there is
agreement to the contrary (Sec. 178.3, IPC).
2. If it is not part of his regular duties – employee, even if he uses the time, facilities and
materials of the employer. (Sec. 178.3, IPC)
4. Commissioned Work:
1. The work itself – belongs to the person commissioning (Sec. 178.4, IPC).
2. The copyright – belongs to the creator, unless there is a written stipulation to the
contrary (Sec. 178.4, IPC).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 51
 Discuss rules on ownership of copyright (to
whom it belongs):
5. Cinematographic Works:
1. For exhibition purposes – the producer (Sec. 178.5, IPC)
2. For all other purposes – producer, author of the scenario, composer, film
director, author of the work (Sec. 178.5, IPC)
6. Anonymous and pseudonymous works: Publishers are deemed
representatives of the author, unless:
1. The contrary appears, or
2. Pseudonyms or adopted name leaves no doubt as to the author’s identity; or
author discloses his identity (Sec. 179, IPC).
7. Collective Works – Contributor is deemed to have waived his right,
unless he expressly reserves it (Sec. 196, IPC).
8. Letters – it belongs to the Writer.
ATTY. KENNERLY ABLERT R. MALINAO, CPA 52
 Doctrine of Fair Use
(What is the doctrine of fair use?)
• The doctrine of fair use is a privilege of persons other than the owner of the
copyright to use the copyrighted material in a reasonable manner without his
consent, notwithstanding the monopoly granted to the owner by the copyright.

• Examples of this doctrine are:

1. Criticizing, commenting, and news reporting;
2. Using a work for instructional purposes, including producing multiple copies
for classroom use, for scholarship, research and similar purposes, and
3. Decompilation or the reproduction of the code and translation of the forms
of the computer program to achieve the inter-operability of an
independently created computer program with other computer programs
(Sec. 185, IPC).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 53
 What is the test to determine whether use is fair
or not?

It is necessary to determine the:

1. Purpose and character of the use;
2. Amount and substantiality of the portions used;
3. Nature of the copyrighted work, and
4. Effect of the use upon the potential market of the copyrighted work
(Sec. 185, IPC).

ATTY. KENNERLY ABLERT R. MALINAO, CPA 54

 What is copyright infringement
Copyright infringement consist of the doing by any person, without the
consent of the owner of the copyright, of anything the sole right to do
which is conferred by the statute on the owner of the copyright (Columbia
Pictures, Inc. v. CA).

To constitute copyright infringement, it is not necessary that the whole or

even a large portion of the work shall have been copied. IF so much is
taken that the value of the original work is substantially diminished or the
labors of the original author are substantially and to an injurious extent
appropriated by another, there is sufficient basis in point of law to
constitute piracy (Habana v. Robles, GR No. 131522, July 19, 1999).
ATTY. KENNERLY ABLERT R. MALINAO, CPA 55