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INTELLECTUAL PROPERTY LAW

I.

INTRODUCTION

A. Constitutional Basis
Article XII, Sec 6 National Economy and Patrimony
Sec.6. The use of property bears a social function, and all economic agents shall
contribute to the common good. Individuals and private groups, including corporations,
cooperatives, and similar collective organizations, shall have the right to own, establish,
and operate economic enterprises, subject to the duty of the State to promote
distributive justice and to intervene when the common good so demands.
Article VII, Sec 14?
Article XIV, Sec 10-18 Education, Science and Technology, Arts, Cultures, and Sports
SCIENCE AND TECHNOLOGY
Section 10. Science and technology are essential for national development and progress. The State
shall give priority to research and development, invention, innovation, and their utilization; and to
science and technology education, training, and services. It shall support indigenous, appropriate,
and self-reliant scientific and technological capabilities, and their application to the country's
productive systems and national life.
Section 11. The Congress may provide for incentives, including tax deductions, to encourage
private participation in programs of basic and applied scientific research. Scholarships, grants-in-aid,
or other forms of incentives shall be provided to deserving science students, researchers, scientists,
inventors, technologists, and specially gifted citizens.
Section 12. The State shall regulate the transfer and promote the adaptation of technology from all
sources for the national benefit. It shall encourage the widest participation of private groups, local
governments, and community-based organizations in the generation and utilization of science and
technology.
Section 13. 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.
ARTS AND CULTURE
Section 14. The State shall foster the preservation, enrichment, and dynamic evolution of a Filipino
national culture based on the principle of unity in diversity in a climate of free artistic and intellectual
expression.
Section 15. Arts and letters shall enjoy the patronage of the State. The State shall conserve,
promote, and popularize the nation's historical and cultural heritage and resources, as well as artistic
creations.
Section 16. All the country's artistic and historic wealth constitutes the cultural treasure of the nation
and shall be under the protection of the State which may regulate its disposition.

Section 17. The State shall recognize, respect, and protect the rights of indigenous cultural
communities to preserve and develop their cultures, traditions, and institutions. It shall consider
these rights in the formulation of national plans and policies.
Section 18.
1. The State shall ensure equal access to cultural opportunities through the educational
system, public or private cultural entities, scholarships, grants and other incentives, and
community cultural centers, and other public venues.
2. The State shall encourage and support researches and studies on the arts and culture.

B. Civil Code Provisions


Art. 712. Ownership is acquired by occupation and by intellectual creation.
Ownership and other real rights over property are acquired and transmitted by law, by
donation, by estate and intestate succession, and in consequence of certain contracts,
by tradition.
They may also be acquired by means of prescription. (609a)
INTELLECTUAL CREATION
Art. 721. By intellectual creation, the following persons acquire ownership:
(1) The author with regard to his literary, dramatic, historical, legal, philosophical,
scientific or other work;
(2) The composer; as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the product of his art;
(4) The scientist or technologist or any other person with regard to his discovery or
invention. (n)
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding
article, shall have the ownership of their creations even before the publication of the
same. Once their works are published, their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even
before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before
it is patented. (n)
Art. 723. Letters and other private communications in writing are owned by the person to
whom they are addressed and delivered, but they cannot be published or disseminated

without the consent of the writer or his heirs. However, the court may authorize their
publication or dissemination if the public good or the interest of justice so requires. (n)
Art. 724. Special laws govern copyright and patent. (429a)

TRADE-MARKS AND TRADE-NAMES


Art. 520. A trade-mark or trade-name duly registered in the proper government bureau or
office is owned by and pertains to the person, corporation, or firm registering the same,
subject to the provisions of special laws. (n)
Art. 521. The goodwill of a business is property, and may be transferred together with
the right to use the name under which the business is conducted. (n)
Art. 522. Trade-marks and trade-names are governed by special laws. (n)
C. Jurisprudence
Differences among copyright, trademark and patent

Ching v. Salinas, et al, G.R. No. 161295, 29 June 2005

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated
by it. Being a statutory grant, the rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the subjects and by the persons, and on
terms and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description.
The scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of
their creation.
Trademark, copyright and patents are different intellectual property rights that cannot
be interchanged with one another. A trademark is 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. In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.
Patentable inventions, on the other hand, refer to any technical solution of a problem
in any field of human activity which is new, involves an inventive step and is
industrially applicable.

A certificate of registration creates no rebuttable presumption of copyright validity


where other evidence in the record casts doubt on the question. In such a case, validity
will not be presumed.
Kho v. Court of Appeals, 379 SCRA 410 (2002) same jurisprudence

II. COPYRIGHT AND RELATED RIGHTS


A. LEGISLATIVE HISTORY OF THE LAW OF COPYRIGHT AND RELATED RIGHTS
1.
2.
3.
4.
5.
6.

Spanish Law on Intellectual Property of 1879


United States of America Copyright Law
Act No. 3134 or the Copyright Law
Presidential Decree No. 49 (took effect on 27 December 1972)
Presidential Decree No. 1988 (as amended by PD 49 by inserting Section 56)
Intellectual Property Code (took effect on 1 January 1998)

B. LAW ON COPYRIGHT
Sec 241, Intellectual Property Code (IPC)
Effectivity. This Act shall take effect on 1 January 1998. (n)
Sec 239.3, IPC
The provisions of this Act shall apply to works in which copyright protection obtained
prior to the effectivity of this Act is subsisting: Provided, That the application of this
Act shall not result in the diminution of such protection. (n)
Sec 236, IPC
Preservation of Existing Rights. Nothing herein shall adversely affect the rights
on the enforcement of rights in patents, utility models, industrial designs, marks and
works, acquired in good faith prior to the effective date of this Act. (n)
1. Definition of Copyright
CHAPTER V Copyright or Economic Rights
SECTION 177. Copyright or Economic Rights. Subject to the provisions of Chapter
VIII, copyright or economic rights shall consist of the exclusive right to carry out,
authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work; aisadc
177.3. The first public distribution of the original and each copy of the work by sale or
other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a
work embodied in a sound recording, a computer program, a compilation of data and

other materials or a musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and 177.7. Other communication to the public
of the work. (Sec. 5, P. D. No. 49a)
Rule 2, Copyright Safeguards and Regulations
Rule 2
Definition of Terms
For the purpose of these Copyright Safeguards and Regulations, the following terms are herein
defined:
Author is the natural person who has created the work;
Collective work is work which has been created by two (2) or more natural persons at the
initiative and under the direction of another with the understanding that it will be disclosed by the
latter under his own name and that contributing natural persons will not be identified;
Communication to the public or communicate to the public means the making of a work
available to the public by wire or wireless means in such a way that members of the public may
access these works from a place and time individually chosen by them;
Computer program is a set of instructions capable, when incorporated in machine-readable
medium, of causing a machine having information processing capabilities, to indicate, perform,
or achieve a particular function, task, or result;
Copyright is a right granted by statute to the author or originator of literary, scholarly, scientific,
or artistic productions, including computer programs. A copyright gives him the legal right to
determine how the work is used and to obtain economic benefits from the work. For example,
the owner of a copyright for a book or a piece of software has the exclusive rights to use, copy,
distribute, and sell copies of the work, including later editions or versions of the work. If another
person improperly uses material covered by a copyright, the copyright owner can obtain legal
relief;
Copyright Office refers to the Copyright Division of the National Library;
Copyright symbol is represented by ;
Date of publication is the earliest date when a copy of the first authorized edition of the work
was placed on sale, sold, distributed, or otherwise made available to the public, by the copyright
owner or his representative;
Decompilation means the reproduction of the code and the translation of the forms of a
computer program to achieve the inter-operability of an independently-created computer
program with other programs;
Exhibition of an audiovisual work means any form of exploitation of a work, including its
distribution in copies, its public performance, and its communication to the public, including
broadcast or rebroadcast, cable retransmission, or satellite broadcast or transmission;
Fee refers to the amount prescribed by The National Library for the issuance of a Certificate of
Registration and Deposit to claim copyright or for the filing of assignment or license, or for such
other services or transactions as may be covered by these Copyright Safeguards and
Regulations;
Performance symbol is represented by p;
Public lending is the transfer of possession of the original or a copy of a work or multimedia for a
limited period, for non-profit purposes, by an institution the services of which are available to
the public, such as a public library or archive;
Public performance is the recitation, playing, dancing, acting or any performance of the work,
either directly or by means of any device or process; in the case of an audiovisual work, the
broadcast or showing of its images in sequence and the making of the sounds accompanying it
audible; and in the case of a sound recording, the making of the recorded sounds audible at a

place or at places where persons outside the normal circle of a family and that familys closed
social acquaintances are or can be present, irrespective of whether they are or can be present
at the same place and at the same time, or at different places and/or different times, and where
the performance can be perceived without the need for communication within the meaning of
communication to the public defined above;
Published work means work which, with the consent of the author, is made available to the
public by wire or wireless means in such a way that members of the public may access the work
from a place and time individually chosen by them: Provided, That availability of such copies
has been such as to satisfy the reasonable requirements of the public, having regard to the
nature of the work;
Publisher is one who produces and makes available for circulation or distribution the published
work;
Rental is the transfer of the possession of the original or a copy of a work or multimedia for a
limited period of time, for profit-making purposes;
Reproduction is the making of one (1) or more copies of a work, including multimedia, in any
manner or form. A reprographic reproduction, as authorized under certain circumstances by the
IPC, does not include a digital or machine readable copy, but is limited to photography,
xerography and similar processes, resulting in a paper or microform copy;
Reprographic right is one exercisable anywhere to reproduce or authorize the reproduction of
the work by means of any appliance or process capable of producing multiple copies of the work
in such a form that the work may be perceived visually. Reprography and other forms of
reproduction require the permission of the copyright holder;
SAR shall refer to these Copyright Safeguards and Regulations issued pursuant to the IPC;
SCL refers to the Library of the Supreme Court of the Republic of the Philippines;
TNL refers to The National Library of the Republic of the Philippines;
TNL Director refers to the head of The National Library of the Republic of the Philippines;
Unpublished work means work that has not been disseminated, circulated or distributed to the
public prior to its registration with the Copyright Office;
Work refers to any original work, derivative work, performance of producers, sound recording,
or recording of broadcasting organizations.
Derivative work is work that is derived from another work;
Work of applied art is an artistic creation with utilitarian functions, or incorporated in a useful
article, whether made by hand or produced on an industrial scale;
Work of the Government of the Philippines is work created by an officer or employee of the
Philippine Government or any of its subdivisions and instrumentalities, including governmentowned or controlled corporations, as part of his regularly prescribed official duties.
Rules 11-12, Copyright Safeguards and Regulations
OTHER RULES ON COPYRIGHT
Rule 11
Communication to the Public of Copyrighted Works
SECTION 1. Communication to the Public of Copyrighted Work.
Communication to the public or communicate to the public, also includes point-to-point
transmission of a work, including video on demand, and providing access to an electronic
retrieval system, such as computer databases, servers, or similar electronic storage devices.
Broadcasting, rebroadcasting, retransmission by cable, and broadcast and retransmission by
satellite are all acts of communication to the public within the meaning of the IPC.
Rule 12

First Public Distribution of Work


SECTION 1. First Public Distribution of Work. An exclusive right of first distribution of work
includes all acts involving distribution, specifically including the first importation of an original
and each copy of the work into the jurisdiction of the Republic of the Philippines.

Ching v. Salinas, et al, G.R. No. 161295 (29 June 2005)


2. Standard for Copyright Protection

CHAPTER II Original Works


SECTION 172. Literary and Artistic Works.
172.1. Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the moment of
their creation and shall include in particular:
a. Books, pamphlets, articles and other writings;
b. Periodicals and newspapers;
c. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
d. Letters;
e. Dramatic or dramatico-musical compositions; choreographic works or entertainment
in dumb shows;
f. Musical compositions, with or without words;
g. Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs for works of art;
h. Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
i. Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
j. Drawings or plastic works of a scientific or technical character;
k. Photographic works including works produced by a process analogous to
photography; lantern slides;
l. Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
m. Pictorial illustrations and advertisements;
n. Computer programs; and
o. Other literary, scholarly, scientific and artistic works.
172.2. Works are protected by the sole fact of their creation, irrespective of their mode or
form of expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No.
49a) cda
Ching Kian Chuan v. CA, 363 SCRA 142 (2001)
A person to be entitled to a copyright must be the original creator of the work. He
must have created it by his own skill, labor and judgment without directly copying or
evasively imitating the work of another.
-Novelty is not required for a work to be copyrightable.

Originality is both a constitutional and statutory requirement for copyright protection.


A work is original if it is (1) independently created by the author, and (2) possesses
some minimal degree of creativity.
Sambar v. Levi Strauss, 378 SCRA 364 (2002)
To be entitled to copyright, the thing being copyrighted must be original, created by
the author through his own skill, labor and judgment, without directly copying or
evasively imitating the work of another.
1wph i1

The cancellation of petitioners copyright was justified because petitioners copyright


cannot prevail over respondents registration in the Principal Register of Bureau of
Patents, Trademarks, and Technology Transfer.

3. Vesting of Copyright
Santos v. McCullough Printing Co., 12 SCRA 321 (1964)
As a general proposition, there can be no dispute that the artist acquires ownership
of the product of his art. At the time of its creation, he has the absolute dominion
over it. To help the author protect his rights the copyright law was enacted.
In intellectual creations, a distinction must be made between two classes of property
rights; the fact of authorship and the right to publish and/or distribute copies of the
creation. With regard to the first, i.e. the fact of authorship, the artist cannot be
divested of the same. In other words, he may sell the right to print hundred of his
work yet the purchaser of said right can never be the author of the creation.
It is the second right, i.e., the right to publish, republish, multiply and/or distribute
copies of the intellectual creation which the state, through the enactment of the
copyright law, seeks to protect. The author or his assigns or heirs may have the
work copyrighted and once this is legally accomplished any infringement of the
copyright will render the infringer liable to the owner of the copyright.
The provision of the Civil Code, notwithstanding. Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended dated September 18, 1947) entitled "Rules of
Practice in the Philippines Patent Office relating to the Registration of Copyright Claims"
promulgated pursuant to Republic Act 165, provides, among others, that an intellectual
creation should be copyrighted thirty (30) days after its publication, if made in Manila, or
within sixty (60) day's if made elsewhere, failure of which renders such creation public
property.
In the case at bar, even as of this moment, there is no copyright for the design in
question. When the purpose is a limited publication, but the effect is general publication,
irrevocable rights thereupon become vested in the public, in consequence of which
enforcement of the restriction becomes impossible (Nutt vs. National Institute, 31 F [2d]
236). It has been held that the effect of offering for sale a dress, for example
manufactured in accordance with an original design which is not protected by either a
copyright or a patent, is to divest the owner of his common law rights therein by virtue of
the publication of a 'copy' and thereafter anyone is free to copy the design or the dress

(Fashion Originators Guild of America v. Federal Trade Commission, 114 F [2d] 80).
When Ambassador Neri distributed 800 copies of the design in controversy, the plaintiff
lost control of his design and the necessary implication was that there had been a general
publication, there having been no showing of a clear indication that a limited publication
was intended.
The author of a literary composition has a light to the first publication thereof. He has a
right to determine whether it shall be published at all, and if published, when, where, by
whom, and in what form. This exclusive right is confined to the first publication. When
once published, it is dedicated to the public, and the author loses the exclusive right to
control subsequent publication by others, unless the work is placed under the protection of
the copyright law. (See II Tolentino's Comments on the Civil Code, p. 433, citing Wright v.
Eisle 83 N.Y. Supp. 887.)
Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987)
If the general public has made use of the object sought to be copyrighted for thirty (30)
days prior to the copyright application the law deems the object to have been donated to
the public domain and the same can no longer be copyrighted.
Unilever Philippines (PRC) v. CA, GR No. 119280, 10 August 2006
Section 2 of PD 49 stipulates that the copyright for a work or intellectual creation subsists from the
moment of its creation. Accordingly, the creator acquires copyright for his work right upon its creation.
The intellectual creators exercise and enjoyment of copyright for his work and the protection given by
law to him is not contingent or dependent on any formality or registration.

Sec 2, PD 49
Section 2. The Rights granted by this Decree shall, from the moment of creation, subsist with
respect to any of the following classes of works:
(A) Books, including composite and encyclopedic works, manuscripts, directories,
and gazetteers;
(B) Periodicals, including pamphlets and newspapers;
(C) Lectures, sermons, addresses, dissertations prepared for oral delivery;
(D) Letters;
(E) Dramatic or dramatico-musical compositions; choreographic works and
entertainments in dumb shows, the acting form of which is fixed in writing or
otherwise;
(F) Musical compositions, with or without words;
(G) Works of drawing, painting, architecture, sculpture, engraving, lithography, and
other works of art; models or designs for works of art;

(H) Reproductions of a work of art;


(I) Original ornamental designs or models for articles of manufacture, whether or not
patentable, and other works of applied art;
(J) Maps, plans, sketches, and charts;
(K) Drawings, or plastic works of a scientific or technical character;
(L) Photographic works and works produced by a process analogous to photography;
lantern slides;
(M) Cinematographic works and works produced by a process analogous to
cinematography or any process for making audio-visual recordings;
(N) Computer programs;
(O) Prints, pictorial, illustration, advertising copies, labels, tags, and box wraps;
(P) Dramatization, translations, adaptations, abridgements, arrangements and other
alterations of literary, musical or artistic works or of works of the Philippine
Government as herein defined, which shall be protected as provided in Section 8 of
this Decree.
(Q) Collection of literary, scholarly, or artistic works or of works referred to in Section
9 of this Decree which by reason of the selection and arrangement of their contents
constitute intellectual creations, the same to be protected as such in accordance with
Section 8 of this Decree.
(R) Other literary, scholarly, scientific and artistic works.

Art 5 (2), Berne Convention for the Protection of Literary and Artistic Works

(2) The enjoyment and the exercise of these rights shall not be subject to any
formality; such enjoyment and such exercise shall be independent of the
existence of protection in the country of origin of the work. Consequently, apart
from the provisions of this Convention, the extent of protection, as well as the
means of redress afforded to the author to protect his rights, shall be governed
exclusively by the laws of the country where protection is claimed.

Section 172 and 172.2 IPC


172.2. Works are protected by the sole fact of their creation, irrespective of their mode
or form of expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No.
49a) cda
Rule 7,Sec 2-4, Copyright Safeguards and Regulations

SECTION 2. Effects of Registration and Deposit of Work. The registration and


deposit of the work is purely for recording the date of registration and deposit of the work
and shall not be conclusive as to copyright ownership or the term of copyrights or the
rights of the copyright owner, including neighboring rights.
SECTION 3. Effect of Non-Registration and Deposit. If, within three (3) weeks after
receipt by the copyright owner of a written demand from TNL and/or SCL for the deposit
of a work listed in Rule 5 Sec. 4 of this SAR, the required copies are not delivered and
the fee for registration and deposit is not paid, the copyright owner, his assignee, or his
agent shall be liable to pay a fine equivalent to the required fee per month of delay and to
pay to TNL and SCL the amount of the retail price of the best edition of the work.
SECTION 4. Other Laws. Upon issuance of a certificate of deposit, the copyright
owner shall be exempt from making additional deposits of the work with TNL or the SCL
under other laws.

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