INTELLECTUAL PROPERTY LAW OUTLINE

Introduction

1. Basis of the Intellectual Property Law (R.A. 8293, as amended)

2. Amendments to R.A. 8293, as amended
- Republic Act No. 9150 (2001)
- Republic Act No. 9502 (2008)
- Republic Act No. 10372 (2013)
- Additional legislation relating to IP Rights : Republic Act No. 10055 (2010)
3. Importance of Adopting Laws protecting Intellectual Property Rights
4. Philippine commitment to the GATT-TRIPS agreement

- Tañada vs. Angara, G.R. No. 118295, May 2, 1997

General Agreement on Tariffs and Trade (GATT) was a collection of
treaties governing access to the economies of treaty adherents with no
institutionalized body administering the agreements or dependable
system of dispute settlement.

The Philippines joined WTO as a founding member with the goal, as

articulated by President Fidel V. Ramos in two letters to the Senate of
improving "Philippine access to foreign markets, especially its major
trading partners, through the reduction of tariffs on its exports,
particularly agricultural and industrial products." The President also
saw in the WTO the opening of "new opportunities for the services sector
. . . , (the reduction of) costs and uncertainty associated with exporting . . .
, and (the attraction of) more investments into the country." Although the
Chief Executive did not expressly mention it in his letter, the Philippines
— and this is of special interest to the legal profession — will benefit from
the WTO system of dispute settlement by judicial adjudication through
the independent WTO settlement bodies called (1) Dispute Settlement
Panels and (2) Appellate Tribunal. Heretofore, trade disputes were
settled mainly through negotiations where solutions were arrived at
frequently on the basis of relative bargaining strengths, and where
naturally, weak and underdeveloped countries were at a disadvantage.

5. Did R.A. 8293 repeal existing laws on intellectual property?

- Mirpuri vs. CA, G.R. No. 114508, Nov. 19, 1999

The Intellectual Property Code took effect on January 1, 1998 and by its
express provision, repealed the Trademark Law, the Patent Law, Articles
188 and 189 of the Revised Penal Code, the Decree on Intellectual
Property, and the Decree on Compulsory Reprinting of Foreign
Textbooks. The Code was enacted to strengthen the intellectual and
industrial property system in the Philippines as mandated by the
country's accession to the Agreement Establishing the World Trade
Organization (WTO).

- Samson vs. Daway, G.R. No. 106654, July 21, 2004

SEC. 239. Repeals. – 239.1. All Acts and parts of Acts inconsistent
herewith, more particularly Republic Act No. 165, as amended; Republic
Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal
Code; Presidential Decree No. 49, including Presidential Decree No. 285,
as amended, are hereby repealed.

Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in
its entirety, otherwise, it would not have used the phrases “parts of Acts”
 and “inconsistent herewith;” and it would have simply stated “Republic
Act No. 165, as amended; Republic Act No. 166, as amended; and Articles
188 and 189 of the Revised Penal Code; Presidential Decree No. 49,
including Presidential Decree No. 285, as amended are hereby repealed.”
It would have removed all doubts that said specific laws had been
rendered without force and effect. The use of the phrases “parts of Acts”
and “inconsistent herewith” only means that the repeal pertains only to
provisions which are repugnant or not susceptible of harmonization with
R.A. No. 8293.7 Section 27 of R.A. No. 166, however, is consistent and in
harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended
to vest jurisdiction over violations of intellectual property rights with the
Metropolitan Trial Courts, it would have expressly stated so under
Section 163 thereof.

6. Intellectual Property Rights – Trademark, Copyright and Patents

- Sec. 4.1, R.A. 8293

Republic Act No. 8293 – Intellectual Property Law

Preliminary Matters

1. State Policy Declaration – Sec. 2

- Twentieth Century Music Corp. vs. Aiken, 422 U.S. 151

Aiken did not infringe upon 20th Century exclusive right, under the
Copyright Act, "[t]o perform the copyrighted work publicly for profit,"
since the radio reception did not constitute a "performance" of the
copyrighted songs.

To hold that Aiken "performed" the copyrighted works would obviously

result in a wholly unenforceable regime of copyright law, and would also
be highly inequitable, since (short of keeping his radio turned off) one in
Aiken's position would be unable to protect himself from infringement
liability. Such a ruling, moreover, would authorize the sale of an untold
number of licenses for what is basically a single rendition of a
copyrighted work, thus conflicting with the balanced purpose of the
Copyright Act of assuring the composer an adequate return for the value
of his composition while, at the same time, protecting the public from
oppressive monopolies.

The limited scope of the copyright holder's statutory monopoly, like the
limited copyright duration required by the Constitution, reflects a
balance of competing claims upon the public interest: creative work is to
be encouraged and rewarded, but private motivation must ultimately
serve the cause of promoting broad public availability of literature,
music, and the other arts. The immediate effect of our copyright law is to
secure a fair return for an "author's" creative labor. But the ultimate
aim is, by this incentive, to stimulate artistic creativity for the general
public good. "The sole interest of the United States and the primary
object in conferring the monopoly," this Court has said, "lie in the
general benefits derived by the public from the labors of authors." When
technological change has rendered its literal terms ambiguous, the
Copyright Act must be construed in light of this basic purpose.

- Feist Publication, Inc. vs. Rural Tele. Servs. Co., 499 U.S. 340, 1991

The court rule that facts are not copyrightable; the other, that
compilations of facts generally are. There can be no valid copyright in
facts is universally understood. The most fundamental axiom of copyright
 law is that "no author may copyright his ideas or the facts he narrates."
Rural wisely concedes this point, noting in its brief that "facts and
discoveries, of course, are not themselves subject to copyright
protection." However, it is beyond dispute that compilations of facts are
within the subject matter of copyright. Compilations were expressly
mentioned in the Copyright Act of 1909, and again in the Copyright Act
of 1976.

Facts are not copyrightable. The sine qua non of copyright is originality.
To qualify for copyright protection, a work must be original to the
author. See Harper Original, as the term is used in copyright, means only
that the work was independently created by the author (as opposed to
copied from other works), and that it possesses at least some minimal
degree of creativity. To be sure, the requisite level of creativity is
extremely low; even a slight amount will suffice. The vast majority of
works make the grade quite easily, as they possess some creative spark,
"no matter how crude, humble or obvious" it might be.

No one may claim originality as to facts. This is because facts do not owe
their origin to an act of authorship. The distinction is one between
creation and discovery: the first person to find and report a particular
fact has not created the fact; he or she has merely discovered its existence.
One who discovers a fact is not its "maker" or "originator." The
discoverer merely finds and records.

2. Effect on International Conventions and on Principle of Reciprocity

- Sec. 3 & 231

Section 3. International Conventions and Reciprocity. - 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 is also a party, or extends
reciprocal rights to nationals of the Philippines by law, shall be entitled to
benefits to the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise entitled by this Act.

Section 231. Reverse Reciprocity of Foreign Laws. - Any condition,

restriction, limitation, diminution, requirement, penalty or any similar
burden imposed by the law of a foreign country on a Philippine national
seeking protection of intellectual property rights in that country, shall
reciprocally be enforceable upon nationals of said country, within
Philippine jurisdiction.

- Mirpuri vs. CA, G.R. No. 114508, Nov. 19, 1999

The Convention of Paris for the Protection of Industrial Property,

otherwise known as the Paris Convention, is a multilateral treaty that
seeks to protect industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time aims
to repress unfair competition. The Convention is essentially a compact
among various countries which, as members of the Union, have pledged
to accord to citizens of the other member countries trademark and other
rights comparable to those accorded their own citizens by their domestic
laws for an effective protection against unfair competition. In short,
foreign nationals are to be given the same treatment in each of the
member countries as that country makes available to its own citizens.
 Nationals of the various member nations are thus assured of a certain
minimum of international protection of their industrial property.

3. Coverage of Intellectual Property Rights / Differences – Sec. 4.1

- Kho vs. CA, G.R. No. 115758, March 19, 2002

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. Meanwhile, 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. 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.

Kho has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream
product are proper subjects of a trademark inasmuch as the same falls
squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The
petitioner’s copyright and patent registration of the name and container
would not guarantee her right to the exclusive use of the same for the
reason that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be issued for
the reason that the petitioner has not proven that she has a clear right
over the said name and container to the exclusion of others, not having
proven that she has registered a trademark thereto or used the same
before anyone did.

- Pearl & Dean, Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15, 2003

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. Meanwhile, 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. 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.

4. The Intellectual Property Office – Sec. 5 to 16, as amended

- Pest Management Association of the Philippines vs. Fertilizer and Pesticide

Authority, G.R. No. 156041, February 21, 2007

There is no encroachment upon the powers of the IPO granted under

R.A. No. 8293, otherwise known as the Intellectual Property Code of the
Philippines. Section 5 thereof enumerates the functions of the IPO.
Nowhere in said provision does it state nor can it be inferred that the law
intended the IPO to have the exclusive authority to protect or promote
intellectual property rights in the Philippines. On the contrary,
 paragraph (g) of said Section even provides that the IPO shall
"[c]oordinate with other government agencies and the private sector
efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country." Clearly, R.A.
No. 8293 recognizes that efforts to fully protect intellectual property
rights cannot be undertaken by the IPO alone. Other agencies dealing
with intellectual property rights are, therefore, not precluded from
issuing policies, guidelines and regulations to give protection to such
rights.

Lastly, FPA emphasize that the provision on protection of proprietary

data does not usurp the functions of the Intellectual Property Office
(IPO) since a patent and data protection are two different matters. A
patent prohibits all unlicensed making, using and selling of a particular
product, while data protection accorded by the FPA merely prevents
copying or unauthorized use of an applicant's data, but any other party
may independently generate and use his own data. It is further argued
that under Republic Act No. 8293 (R.A. No. 8293), the grant of power to
the IPO to administer and implement State policies on intellectual
property is not exclusionary as the IPO is even allowed to coordinate with
other government agencies to formulate and implement plans and policies
to strengthen the protection of intellectual property rights.

- In-N-Out Burger, Inc. v. Sehwani, Incorporated and/or Benita’s Frites, Inc.,

G.R. No. 179127, December 24, 2008

Administrative proceedings are governed by the "substantial evidence

rule." A finding of guilt in an administrative case would have to be
sustained for as long as it is supported by substantial evidence that the
respondent has committed acts stated in the complaint or formal charge.
As defined, substantial evidence is such relevant evidence as a reasonable
mind may accept as adequate to support a conclusion.48 As recounted by
the IPO Director General in his decision, there is more than enough
substantial evidence to support his finding that respondents are guilty of
unfair competition.

- Phil. Pharmawealth, Inc. v. Pfizer, Inc. and Pfizer (Phil.), Inc., G.R. No.
167715, November 17, 2010

It is clear from the foregoing that the ultimate objective which

respondents seek to achieve in their separate complaints filed with the
RTC and the IPO, is to ask for damages for the alleged violation of their
right to exclusively sell Sulbactam Ampicillin products and to
permanently prevent or prohibit petitioner from selling said products to
any entity. Owing to the substantial identity of parties, reliefs and issues
in the IPO and RTC cases, a decision in one case will necessarily amount
to res judicata in the other action.

It bears to reiterate that what is truly important to consider in

determining whether forum shopping exists or not is the vexation caused
the courts and parties-litigant by a party who asks different courts and/or
administrative agencies to rule on the same or related causes and/or to
grant the same or substantially the same reliefs, in the process creating
the possibility of conflicting decisions being rendered by the different fora
upon the same issue.

Thus, the Court agrees with petitioner that respondents are indeed guilty
of forum shopping.
ADOPTION OF INTELLECTUAL PROPERTY POLICIES – Sec. 230 (New Provision
introduced by R.A. 10372)

The Laws on Copyright

1. Definitions – Sec. 171 – 171.13 as amended by R.A. 10372

2. Protection, when commenced – Sec. 172.2
3. Idea/Expression Dichotomy – Sec. 175
4. Works Protected
a. Literary or Artistic Works – Sec. 172 – 172.2

- Columbia Pictures vs. CA, 261 SCRA 144 (1996)

As correctly pointed out by private complainants-oppositors, the

Department of Justice has resolved this legal question as far back as
December 12, 1978 in its Opinion No. 191 of the then Secretary of Justice
Vicente Abad Santos which stated that Sections 26 and 50 do not apply to
cinematographic works and PD No. 49 “had done away with the
registration and deposit of cinematographic works” and that “even
without prior registration and deposit of a work which may be entitled to
protection under the Decree, the creator can file action for infringement
of its rights.” He cannot demand, however, payment of damages arising
from infringement. The same opinion stressed that “the requirements of
registration and deposit are thus retained under the Decree, not as
conditions for the acquisition of copyright and other rights, but as
prerequisites to a suit for damages.” The statutory interpretation of the
Executive Branch being correct, is entitled (to) weight and respect.

Furthermore, a closer review of Presidential Decree No. 49 reveals that

even with respect to works which are required under Section 26 thereof
to be registered and with copies to be deposited with the National
Library, such as books, including composite and cyclopedic works,
manuscripts, directories and gazetteers; and periodicals, including
pamphlets and newspapers; lectures, sermons, addresses, dissertations
prepared for oral delivery; and letters, the failure to comply with said
requirements does not deprive the copyright owner of the right to sue for
infringement. Such non-compliance merely limits the remedies available
to him and subjects him to the corresponding sanction.

The reason for this is expressed in Section 2 of the decree which prefaces
its enumeration of copyrightable works with the explicit statement that
“the rights granted under this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of works.” This means
that under the present state of the law, the copyright for a work is
acquired by an intellectual creator from the moment of creation even in
the absence of registration and deposit. As has been authoritatively
clarified:

The registration and deposit of two complete copies or reproductions of

the work with the National Library within three weeks after the first
public dissemination or performance of the work, as provided for in
Section 26 (P.D. No. 49, as amended), is not for the purpose of securing a
copyright of the work, but rather to avoid the penalty for non-compliance
of the deposit of said two copies and in order to recover damages in an
infringement suit.

- Ching vs. Salinas, G.R. No. 161295, June 29, 2005

It is worthy to state that the works protected under the Law on Copyright
are: literary or artistic works (Sec. 172) and derivative works (Sec. 173).
 The Leaf Spring Eye Bushing and Vehicle Bearing Cushion fall on
neither classification.

Being plain automotive spare parts that must conform to the original
structural design of the components they seek to replace, the Leaf Spring
Eye Bushing and Vehicle Bearing Cushion are not ornamental. They lack
the decorative quality or value that must characterize authentic works of
applied art. They are not even artistic creations with incidental utilitarian
functions or works incorporated in a useful article. In actuality, the
personal properties described in the search warrants are mechanical
works, the principal function of which is utility sans any aesthetic
embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion as included in the catch-all phrase “other literary,
scholarly, scientific and artistic works” in Section 172.1(a) of R.A. No.
8293. Applying the principle of ejusdem generis which states that “where
a statute describes things of a particular class or kind accompanied by
words of a generic character, the generic word will usually be limited to
things of a similar nature with those particularly enumerated, unless
there be something in the context of the state which would repel such
inference,”[46] the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion are not copyrightable, being not of the same kind and nature as
the works enumerated in Section 172 of R.A. No. 8293.

b. Derivative Works – Sec. 173

- Laktaw vs. Paglinawan, 44 Phil 855 (1918)

It is not necessary that a work should be an improper copy of another

work previously published. It is enough that another's work has been
reproduced without the consent of the owner, even though it be only to
annotate, add something to it, or improve any edition thereof.

c. Published Edition of Work – Sec. 174

5. Works Not Protected – Sec. 175

a. Unprotected Subject Matter – Sec. 175

- Joaquin, Jr. Vs. Drilon, 302 SCRA 225 (1999)

The essence of copyright infringement is the copying, in whole or in part,

of copyrightable materials as defined and enumerated in Section 2 of PD.
No. 49. Apart from the manner in which it is actually expressed, however,
the idea of a dating game show is, in the opinion of this Office, a non-
copyrightable material. Ideas, concepts, formats, or schemes in their
abstract form clearly do not fall within the class of works or materials
susceptible of copyright registration as provided in PD. No. 49.

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 the statute. 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.

P.D. No. 49, §2, in enumerating what are subject to copyright, refers to
finished works and not to concepts. The copyright does not extend to an
idea, procedure, process, system, method of operation, concept, principle,
 or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work.

TheCourt is of the opinion that petitioner BJPI’s copyright covers audio-

visual recordings of each episode of Rhoda and Me, as falling within the
class of works mentioned in P.D. 49, §2(M), to wit:

Cinematographic works and works produced by a process analogous to

cinematography or any process for making audio-visual recordings;

b. Works of Government – Sec. 176; 171.11

6. Copyright or Economic Rights; Ownership

a. Copyright or Economic Rights – Sec. 177

- Pearl & Dean Inc., supra

Copyright, in the strict sense of the term, is purely a statutory right. Being a
mere statutory grant, the rights are limited to what the statute confers. It
may be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute.7 Accordingly, it
can cover only the works falling within the statutory enumeration or
description.

- Filipino Society of Composer vs. Tan, 148 SCRA 461 (1987)

Nevertheless, appellee cannot be said to have infringed upon the Copyright

Law. Appellee's allegation that the composers of the contested musical
compositions waived their right in favor of the general public when they
allowed their intellectual creations to become property of the public domain
before applying for the corresponding copyrights for the same is correct.

Under the circumstances, it is clear that the musical compositions in question

had long become public property, and are therefore beyond the protection of
the Copyright Law.

- Malang Santos vs. McCullough Printing, 12 SCRA 321 (1964)

In the case at bar, even as of this moment, there is no copyright for the design
in question. We are not also prepared to accept the contention of appellant
that the publication of the design was a limited one, or that there was an
understanding that only Ambassador Neri should, have absolute right to use
the same. In the first place, if such were the condition then Ambassador Neri
would be the aggrieved party, and not the appellant. In the second place, if
there was such a limited publication or prohibition, the same was not shown
on the face of the design. 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.

b. Copyright Ownership – Sec. 178; 179; Art. 723

7. Transfer/Assignment or Licensing of Copyright – Sec. 180 to 180.5 to Sec. 182

8. Designation of Society – Sec. 183

9. Limitations of Copyright

a. Limitations on Copyright – Sec. 184; 184.1 (a) to (l); 184.2

 b. Fair Use of Copyright Work – Sec. 185 as amended

- A & M Records Inc. vs. Napster Inc. No. 00-16401 (US Court Decision)

The court then turned to the three uses Napster identified as fair use in
the conduct of its users:

1. sampling, where users make temporary copies of a work to sample it

before purchase, which the District Court found to be a commercial
use even if a user purchases the work at a later time. Sampling was
deemed to A&M Records, Inc. v Napster Inc. (2001) not be a fair use,
because the "samples" were in fact permanent and complete copies
of the desired media.

2. space-shifting, where users access a sound recording through the

Napster system that they already own in audio CD format; here the
District Court found that neither of the shifting analyses used in the
Sony or RIAA v. Diamond Multimedia cases applied in this case
because the "shifting" in neither case included or enabled
distribution. The space-shifting argument did not succeed because,
while the shift to a digital format may have been a personal storage
use, it was accompanied by making the file available to the rest of the
system's users.

3. permissive distribution of recordings by both new and established

artists who have authorized their music to be disseminated in the
Napster system, which the District Court ruled was not an infringing
use and could continue, along with chat rooms and other non-
distributory features of Napster

- Habana vs. Robles, G.R. No. 131522, July 19, 1999

This is precisely what the law on copyright protected, under Section 184.1
(b). Quotations from a published work if they are compatible with fair
use and only to the extent justified by the purpose, including quotations
from newspaper articles and periodicals in the form of press summaries
are allowed provided that the source and the name of the author, if
appearing on the work, are mentioned.

c. Work of Architecture – Sec. 186

d. Reproduction of Published Work – Sec. 187 – 87.2
e. Reprographic Reproduction by Libraries – Sec. 188
f. Reproduction of Computer Program – Sec. 189
g. Importation for Personal Purposes – Sec. 190 as amended (Sec. 190.1 & 190.2 are
already deleted by R.A. 10372)
10. Registration and Deposit with National Library and Supreme Court Library – Sec. 191
(as amended); 192; 227; 228
11. Moral Rights
a. Scope of Moral Rights – Sec. 193
b. Breach of Contract – Sec. 194
c. Waiver of Moral Rights – Sec. 195
d. Contribution to Collective Work – Sec. 196
e. Term of Moral Rights – Sec. 198 as amended; 199; 226
12. Rights to Proceed in Subsequent Transfers
a. Sale or Lease of Work – Sec. 200; 201
13. Rights of Performers, Producers of Sound Recordings and Broadcasting Organizations
a. Definitions – Sec. 202 – 202.8
b. Scope of Performers’ Rights – Sec. 203 as amended
 c. Moral Rights of Performers – Sec. 204; 204.1 as amended
d. Limitations on Performers’ Rights – Sec. 205; 205.2
e. Additional Remuneration for Subsequent – Sec. 206
f. Contract Terms – Sec. 207
g. Scope and Limitation of Right on Sound Recordings – Sec. 208 as amended; 210
h. Communication to the Public on Sound Recordings – Sec. 209
i. Scope of Right of Broadcasting Organizations – Sec. 211
j. Limitations on Rights – Sec. 212

- ABS-CBN vs. Phil. Multi-Media System Inc., G.R. No. 175769-70, Jan. 19,
2009

PMSI did not infringe on ABS-CBN’s intellectual property rights under

the IP Code.

Section 202.7 of the IP Code defines broadcasting as “the transmission by

wireless means for the public reception of sounds or of images or of
representations thereof; such transmission by satellite is also
‘broadcasting’ where the means for decrypting are provided to the public
by the broadcasting organization or with its consent.”

On the other hand, rebroadcasting as defined in Article 3(g) of the

International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations, otherwise known as the
1961 Rome Convention, of which the Republic of the Philippines is a
signatory, is “the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization.”

PMSI would not qualify as a broadcasting organization because it does

not have the aforementioned responsibilities imposed upon broadcasting
organizations, such as ABS-CBN.

ABS-CBN creates and transmits its own signals; PMSI merely carries
such signals which the viewers receive in its unaltered form. PMSI does
not produce, select, or determine the programs to be shown in Channels 2
and 23. Likewise, it does not pass itself off as the origin or author of such
programs. Insofar as Channels 2 and 23 are concerned, PMSI merely
retransmits the same in accordance with Memorandum Circular 04-08-
88. With regard to its premium channels, it buys the channels from
content providers and transmits on an as-is basis to its viewers. Clearly,
PMSI does not perform the functions of a broadcasting organization;
thus, it cannot be said that it is engaged in rebroadcasting Channels 2 and
23.

The retransmission of ABS-CBN’s signals by PMSI – which functions

essentially as a cable television – does not therefore constitute
rebroadcasting in violation of the former’s intellectual property rights
under the IP Code.

14. Term of Protection in General – Sec. 213

a. Term of Protection – Sec. 213
- Joint Authorship – Sec. 213.2
- Anonymous or Psedonymous Works – Sec. 213.3
- Works of Applied Art – Sec. 213.4
- Photographic Works – Sec. 213.5
- Audio-visual Works – Sec. 213.6
- Calculation of Terms – Sec. 214
b. Term of Protection for Performers, Producers and Broadcasting Organizations –
Sec. 215; 215.2
c.
15. Infringement
a. How committed – Sec. 216 (new provision added by R.A. 10372)
- Microsoft Corp. vs. Hwang, G.R. No. 147043, June 21, 2005

The gravamen of copyright infringement is not merely the unauthorized

"manufacturing" of intellectual works but rather the unauthorized
performance of any of the acts covered by Section 5. Hence, any person
who performs any of the acts under Section 5 without obtaining the
copyright owner’s prior consent renders himself civilly and criminally
liable for copyright infringement.

Infringement of a copyright is a trespass on a private domain owned and

occupied by the owner of the copyright, and, therefore, protected by law,
and infringement of copyright, or piracy, which is a synonymous term in
this connection, consists in 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 statute on the owner of the copyright.

Significantly, under Section 5(A), a copyright owner is vested with the

exclusive right to "copy, distribute, multiply, [and] sell" his intellectual
works.

- Microsoft Corp. vs. Maxicorp, Inc., 438 SCRA 224

Copyright infringement and unfair competition are not limited to the act
of selling counterfeit goods. They cover a whole range of acts, from
copying, assembling, packaging to marketing, including the mere offering
for sale of the counterfeit goods.

b. Remedies for Infringement – Sec. 216.1 as amended; 216.2

- Habana vs. Robles, 310 SCRA 522 (1990)

Robles’ act of lifting from the book of petitioners substantial portions of

discussions and examples, and her failure to acknowledge the same in her
book is an infringement of petitioners’ copyrights.
In cases of infringement, copying alone is not what is prohibited. The
copying must produce an “injurious effect”. Here, the injury consists in
that Robles lifted from Habana’s book materials that were the result of
the latter’s research work and compilation and misrepresented them as
her own. She circulated the book DEP for commercial use and did not
acknowledge Habana as her source.

Hence, there is a clear case of appropriation of copyrighted work for her

benefit that Robles committed. Habana’s work as authors is the product
of their long and assiduous research and for another to represent it as her
own is injury enough. In copyrighting books the purpose is to give
protection to the intellectual product of an author. This is precisely what
the law on copyright protected, under Section 184.1 (b). Quotations from
a published work if they are compatible with fair use and only to the
extent justified by the purpose, including quotations from newspaper
articles and periodicals in the form of press summaries are allowed
provided that the source and the name of the author, if appearing on the
work, are mentioned.

- Columbia Pictures Inc. vs. CA, supra

The presentation of the master tapes of the copyrighted films from which
the pirated films were allegedly copied, was necessary for the validity of
search warrants against those who have in their possession the pirated
films. The petitioner's argument to the effect that the presentation of the
 master tapes at the time of application may not be necessary as these
would be merely evidentiary in nature and not determinative of whether
or not a probable cause exists to justify the issuance of the search
warrants is not meritorious. The court cannot presume that duplicate or
copied tapes were necessarily reproduced from master tapes that it owns.

The application for search warrants was directed against video tape
outlets which allegedly were engaged in the unauthorized sale and renting
out of copyrighted films belonging to the petitioner pursuant to P.D. 49.

The essence of a copyright infringement is the similarity or at least

substantial similarity of the purported pirated works to the copyrighted
work. Hence, the applicant must present to the court the copyrighted
films to compare them with the purchased evidence of the video tapes
allegedly pirated to determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted films to the
pirated films must be established to satisfy the requirements of probable
cause. Mere allegations as to the existence of the copyrighted films cannot
serve as basis for the issuance of a search warrant.

c. Criminal Penalties – Sec. 217 as amended

d. Affidavit of Evidence – Sec. 218 as amended
e. Presumption of Authorship – Sec. 219; 219.2
- Bayanihan Music Phil., vs. BMG Records, G.R. No. 166337, March 7, 2005

The issuance of an injunctive writ if the following requisites provided for by

law are:

(1) there must be a right in esse or the existence of a right to be protected;

(2) the act against which the injunction is to be directed is a violation of
such right, the trial court threaded the correct path in denying petitioner's
prayer therefor.

f. International Registration of Works – Sec. 220

g. Disclosure of Information – Sec. 220A
16. Points of Attachment of Rights
a. For Literary and Artistic Works and Derivative Works – Sec. 221; 221.1
- Pearl & Dean Inc. vs. Shoemart Inc., G.R. No. 148222, August 15, 2003

Even as we find P & D indeed owned a valid copyright, the same could
have referred only to the technical drawings within the category of
"pictorial illustrations." It could not have possibly stretched out to
include the underlying light box. The strict application of the law’s
enumeration in Section 2 prevents us from giving petitioner even a little
leeway, that is, even if its copyright certificate was entitled "Advertising
Display Units." What the law does not include, it excludes, and for the
good reason: the light box was not a literary or artistic piece which could
be copyrighted under the copyright law. And no less clearly, neither
could the lack of statutory authority to make the light box copyrightable
be remedied by the simplistic act of entitling the copyright certificate
issued by the National Library as "Advertising Display Units.

b. For Performers – Sec. 222

c. Of Sound Recordings – Sec. 223
d. For Broadcast – Sec. 224; 224.2

The Law on Trademarks, Service Marks and Trade Names

1. Purpose of the Trademark Law
2. Historical Development
3. Definition of marks, service marks & collective marks
4. Function of a Trademark
5. Nature of a Trademark
6. Trademark vs. Tradename
7. Basis of the Right to a Mark
8. Prior Use of a Mark
9. Who may apply for a mark?
10. Registrability of a Mark
11. Identical with Prior Marks
12. Confusingly Similar Marks
13. Ordinary Purchaser
14. Confusion of Goods vs. Confusion of Business
15. Actual Confusion
16. Test of Confusingly similarity
17. Generic and Descriptive Marks
18. Doctrine of Secondary Meaning
19. Well-known marks
20. Trademark Infringement is a relative concept
21. Well-known marks
22. Trademark Dilution
23. Formal Requirement for application of registration
24. Filing date
25. Priority Right of Foreign Applicant
26. Certificate of Registration
27. Duration of the Registration
28. Rights conferred with registration
29. Limitation of rights
30. Assignment and Transfer of Application and Registration
31. License Contracts
32. Cancellation of Registration
33. Non-use of mark; when excused
34. Infringement: Elements
35. Remedies for infringement
36. Actions, Damages and Injunction for Infringement
37. Limitations to Actions for Infringement
38. Rights of foreign corporation to sue in Trademark or Service Mark Enforcement action
39. Trade Names or Business Names
40. Goods bearing infringing marks of Trade Names
41. Unfair Competition, rights, regulations and remedies
42. False Designation of Origin, False Description or Representation