Intellectual Property Notes and Case Doctrines
CLS Bank International
most-favored-nation treatment – any advantage/privilege/immunity granted by a
Member to the nationals of any other country shall be accorded to the nationals of all
other members.
PATENT:
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. It
may be, or may relate to, a product, or process, or an improvement of any of the
foregoing. (Sec. 21)
Novelty – an invention shall not be considered new if it forms part of a prior art.
(Sec. 23)
Prior Art – everything which has been made available to the world before the filing
date or the priority date of the application claiming the invention. (Sec. 24)
Inventions pursuant to a commission– the person who created the commissioned
work shall own the patent, unless otherwise stipulated.
Infringement by equivalence (equivalents)
-   legal method for a patent owner to file an infringement claim even though
the original product is not completely identical to the infringing product.
-   claims determine the scope of protection of the patent. A competing
product falls under the scope of protection of a patent if it fulfills all the
elements in one of the claims.
-   Every element of the original invention must have an equivalent in the
infringing invention for a claim to stand.
[Note for Patent cases, I didn’t include:
D’Arcy v. Myriad Genetics Inc., Frank v Kosoyuma, EI Dupont v. IPO
search niyo nalang hehe]
Diamond v. Chakrabarty
A live, human-made microorganism is patentable subject matter under Sec. 101.
Association for Molecular Pathology v. USPTO
-   Naturally occurring gene sequences and their natural derivative products –
not patent eligible
-   Gene sequences refined by synthetic processes to create molecules that do
not naturally occur – patent eligible
Alice Corp v.
-   Claims regarding generic computer-implemented inventions
(systems/machines/processes) such as computerized trading platforms that
deal with financial transactions – not patent-eligible.
-   Patent law should not restrain abstract ideas which may be “building blocks
of human ingenuity”
Manzano v. CA
-   In determining whether novelty or newness is negated by any prior art, only
one item of the prior art may be used at a time.
-   For anticipation to occur, the prior art must show that each element is found
either expressly or described under principles of inherency in a single prior
art reference or that claimed invention was probably known in a single prior
art device or practice.
Maguan v. CA
-   An invention is not considered new or patentable if it was known or used by
others in the Philippines before the invention thereof by the inventor named
in an application for patent for the invention
Aguas v. De Leon
Improvement of process of mosaic pre-cast tiles (not invention of the process itself)
– patentable
Graham v. John Deere Co.
Test of non-obviousness - comparison of the subject matter seeking patent protection
with prior art to determine if the subject matter as a whole would have been obvious,
at the time of the invention, to a person with ordinary skill in the art.
Phil Pharmawealth Inc. v. Pfizer, Inc.
-   Pfizer’s exclusive rights to monopolize the product subject of the Patent
only exist within the term of the patent. After this period, Pfizer no longer
possess any right of monopoly, and as such, there is no more basis for the
issuance of a restraining order or injunction.
-   the exclusive right of a patentee to make, use and sell a patented product,
article or process exist only during the term of the patent.
Impressions v Lexmark
Principle of patent exhaustion – a patent owner’s rights over a product should vanish
once the patent owner sells the product to a cosumer.
Smith Kline Beckman v. CA
When the language of its claims is clear and distinct, the patentee may not claim
anything beyond what is described in the patent.
COPYRIGHT:
Literary and artistic works – original intellectual creations in the literary and artistic
domain protected from the moment of their creation. (Sec. 172)
Derivative works – considered copyrightable and shall be protected as new works,
provided that such new work shall not affect the force of any subsisting copyright
upon the original works employed or any part thereof, or be construed as to imply
any right to such use of the original works, or to secure or extend copyright in such
original works. (Sec. 173)
Non-copyrightable works – procedures, ideas, system, method or operation, concept,
principle, discovery or mere data. (Sec. 175)
What if there are 2 authors? – rules on co-ownership will apply. But if the work
consists of parts that can be attributed separately to each author, then the author of
each part shall be the original owner of the copyright in the part he has created.
What if the work was created by the author in the course of his employment? –
Copyright belongs to employee if – creation is not part of his regular duties
Copyright belongs to employer if – work is a result of the performance of his regular
duties
Work made in pursuance of a commission – person who commissioned the work
shall have ownership of the work but copyright belongs to the creator, unless there is
stipulation to the contrary.
Factors to determine Fair Use
1.   Purpose and character of the use, including w/n such use is for non-profit or
commercial purposes
2.   Nature of the copyrighted work
3.   Amount and substantiality of the portion used in relation to the copyrighted
work as a whole
4.   The effect of the use upon the potential market value of the copyrighted
work.
Star Atletica v. Varsity Brands
Feature of a useful article; when copyrightable
-­‐   if it can be perceived as a 2 or 3-dimensional artwork that is separable from
the useful article and if it would be a protectable pictorial, graphical, or
sculptural work on its own.
-­‐   Must be able to be identified separately from the article and capable of
existing separately from the article.
Feist Publication v. Rural
-­‐   Facts are not original and cannot be copyrightable. They are part of the
public domain available to every person.
-­‐   Factual compilations on the other hand may possess the requisite
originality. Copyright on a factual compilation is limited to formatting.
-­‐   To establish copyright infringement, 2 elements must be proven:
o   Ownership of a valid copyright
o   Copying of constituent elements of the work that are original.
-­‐   In this case, only the first requisite was complied with. Second element is
absent because facts are not original!!! It is not copyrightable.
-­‐   Sweat of the brow doctrine/industrious collection – notion that copyright
was a reward for the hard work that went into compiling facts. This is
wrong because it extends copyright protection to selection and arrangement
of facts. Facts are not copyrightable.
-­‐   Originality/Original to the owner – requires independent creation and
modicum of creativity. (independently created by the author and possesses
at least some minimal degree of creativity.
ABS-CBN v. Gozon
Fair use
-­‐   exception to copyright owner’s monopoly of the work’s usage
-­‐   defined as the privilege to use the copyrighted material in a reasonable
manner without the copyright owner’s consent or by copying the material’s
theme or idea rather than its expression.
4-fold test to determine fair use:
o   purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes
o   nature of the copyrighted work
o   amount and substantiality of the portion used in relation to the
copyrighted work as a whole
o   effect of the use upon the potential market for or value of the work
transformative test - used in reviewing the purpose and character of the usage of the
copyrighted work. The court must look into whether the copy of the work adds "new
expression, meaning or message" to transform it into something else.
Meta-use - kind of use that does not necessarily transform the original work by
adding expression, meaning, or message, but only changes the purpose of the work.
Baker v. Selden
-­‐   Copyright protection for a book explaining an art or system extends only to
the author’s unique explanation of it and does not prevent others from using
the system or the forms incidentally used.
-­‐   Interpreted as allowing copying for use as opposed to copying for
explanation. (what does this even mean… not defined in the case).
Pear v. Shoemart
-­‐   Light box is not a proper subject of copyright laws. It is neither a literary
nor artistic work but an engineering or marketing invention.
Ching v. Salinas
-­‐   Utility models are not literary or artistic works, therefore not copyrightable.
-­‐   Patent instead of copyrights may be availed of when it comes to utility
models.
Olano v. Lim
-­‐   Drawings/sketches of hatch doors are not artistic works within the meaning
of copyright laws. A hatch door is an object of utility. Therefore, not
copyrightable!
Kirstsaeng v. John Wiley
first sale doctrine – defense to copyright infringement; once a tangible copy of a
work has been sold (ex. Book, dvd), the rightsholder no longer has any power over
further sales of that particular tangible copy of the work. Purchaser of the copy of a
work may do with it whatever he or she pleases, including selling the work to a third
party.
Sony Corp v. Universal Studios
-­‐   One who supplies the way to accomplish an infringing activity and
encourages that activity through advertisement is not liable for copyright
infringement.
-­‐   Protection given to copyrights is wholly statutory.
-­‐   Sale of copying equipment does not constitute “contributory infringement”
if the product is widely used for legitimate, unobjectionable purposes.
Harper & Row v. Nation Enters
-­‐   Publication of parts of a work soon to be published does not qualify fair use.
-­‐   Usually, fair use will not be one of economic competition with the
copyright holder, which is what prior publication of work is.
Habana v. Robles
-­‐   Copying of portions of a book without attribution is copyright infringement.
MGM Studios v. Grokster
Doctrine of inducement – when a distributor promotes using its device to infringe
copyright material, shown by affirmative steps to foster infringement; liable for 3rd
party infringement
Lenz v. Universal Music Corp
-­‐   Copyright holders are required to consider whether the potentially
infringing material is a fair use of a copyright before issuing a takedown
notification.
-­‐   Willful blindness doctrine –
o   situation in which a person seeks to avoid civil or criminal liability
for a wrongful act by intentionally keeping himself or herself
unaware of facts that would render him or her liable.
o   may be used w/n a copyright holder “knowingly materially
represented” that it held a good faith belief that the material is not
fair use. Willful blind defendant is one who takes deliberate actions
to avoid confirming a high probability of wrong doing.
Section 21. 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.
TRADEMARKS
Mark – 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.
Berris v. Abyadang
2 tests in determining similarity and likelihood of confusion
-­‐   Dominancy Test
o   Focuses on the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public
-­‐   Holistic or Totality Test
o   Considers the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing
similarity
Shangri-La International v. Developers Group
RA 166 was applied in this case since it was the one in force at the time
Ecole de Cuisine Manille v. Le Cordon Bleu Int’l
-­‐   Foreign marks are still afforded protection (if they are signatories in the
Paris Convention; most-favored-nation doctrine)
-­‐   Actual use not required to be in the PH -> but still need 2 mos. actual use in
the PH for registration purposes.
Matal v. Tam
-­‐   Disparagement clause prohibiting trademarks that disparage ethnic groups is
a violation of the free speech clause of the first amendment.
-­‐   The gov’t is allowed to limit its own expression but it is not allowed to limit
free speech of private persons
Abercrombie & Fitch v. Hunting World
“safari”
[see Zatarains case]
Zatarains v. Oak Grove
“fish fry and chick fry”
Potential trademark may be classified as:
1.   Generic – name of a particular genus or class of which an individual article
or service is but a member
a.   Connotes the “basic nature of articles or service” rather than the
more individualized characteristics of a particular product
b.   Can never attain trademark protection
c.   Anytime a registered trademark becomes generic, such registration
is subject to cancellation
2.   Descriptive – identifies a characteristic or quality of an article or service
a.   Ordinarily not protectable as trademarks, but may become valid
marks by acquiring secondary meaning in the minds of the
consuming public
3.   Suggestive – suggests, rather than describes, some particular characteristics
of the goods or service to which it applies and requires the consumer to
exercise the imagination in order to draw conclusion as to the nature of
goods and services.
4.   Arbitrary/fanciful – bear no relationship to the products or services to which
they are applied. Protectable w/o proof of secondary meaning.
Secondary meaning – words with an ordinary and primary meaning of their own
“may, by long use with a particular product, be known by the public as specifically
designating that product.
-­‐   In order to establish secondary meaning – plaintiff must show that the
primary significance of the term in in the minds of the consuming public is
not the product but the producer.
-­‐   Proof of secondary meaning only applies to descriptive terms.
Test for Classifying Mark as Descriptive
-­‐   Dictionary
-­‐   Imagination test – seeks to measure the relationship between the actual
words of the mark and the product to which they are applied.
-­‐   w/n competitors would be likely to need the terms used in the trademark in
describing their products
-­‐   the extent to which a term has actually been used by other marketing a
similar service or product.
Nestle v. CA
“Flavor Masters is a colorable imitation of Master Roast and Master Blends”
Colorable imitation – denotes a close imitation as to be calculated to deceive
ordinary persons as to cause him to purchase the one supposing it to be the other.
-­‐   This case applied the Dominancy test and Holistic Test.
Emerald v. CA
“Stylistic Mr. Lee is not an infringement of the Lee Jeans trademark”
-­‐   SC: not confusingly similar
-­‐   Similarities are not sufficient; there is substantial difference.
La Chemise La Coste v. Fernandez
Court recognizes rights of foreign states under the Paris Convention
In-N-Out Burgers v Sehwani
Elements of Unfair Competition:
1.   confusing similarity in the general appearance of the goods
2.   intent to deceive the public and defraud a competitor
New Kids on the Block v News America Publishing
-­‐   purpose of a trademark is for the identification of a manufacturer or of a
service-provider. It is a limited property right in a particular word, phrase,
or symbol.
Requirements for Nominative Fair Use Defense
1.   product or service in question must be one not readily identifiable
without use of trademark
2.   only so much of the trademark may be used as is reasonably necessary
to identify the product
3.   the user must do nothing that would suggest sponsorship or
endorsement by the trademark holder.
McDonalds Corp. v. L.C. Big Mak
Elements of Trademark Infringement:
1.   validity of plaintiff’s mark
2.   plaintiff’s ownership of the mark
3.   the use of the mark or its colorable imitation by the alleged infringer results
in “likelihood of confusion”
Coca-Cola Bottlers v. Gomez
Unfair competition – passing off or attempting to pass off upon the public the goods
or business of one person as the goods or business of another w/ the end
effect/probable effect of deceiving the public. Inherent elements are fraud and deceit.
-­‐   Hoarding is not considered unfair competition.
Uyco v. Lo
-­‐   Used the “made in Portugal” of another manufacturer kahit di naman totoo.
-­‐   law on trademark prohibits a person from benefiting or profiting from the
business reputation of another.
Kenneth Roy Savage v. Judge Taypin
IPR Code repealed Art. 188 and 199 of the RPC, -> trademark infringement is not a
crime anymore. Infringers not subject to a warrant.
Coffee Partners, Inc. v. San Francisco Coffee
-­‐   Non-permanent disuse of trademark is not abandonment of trademark.