Intellectual Property LawIntellectual Property CodeRA 8293, Jan. 18, 1998 Laws Repealed:

Patent Law (RA 165)

Trademark Law (RA 166)

Copyright Law (PD 49)

Articles 188 & 189 of the Revised Penal Code

Intellectual Property

Refers to creations of the mind; inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. It means legal rights which result from intellectual activity in the industrial, scientific, literary, and artistic fields. World Intellectual Property Organization Intellectual Property Handbook, 2004 There are NO property rights protected if it is mere ideas or mental conceptions. Even if expressed or embodied in a work, news of the day and others, having the character of mere items of press information or any official text, translation, or work of the government. (Law on Copyright Sec. 175.

Works under Non-patentable Inventions are also not protected by law. (Sec. 22)

Intellectual Property Rights

Copyright or Related or neighboring rights;

Protection of Undisclosed information

Industrial designs

Trademarks and Service Marks

Patents

Layout Designs (Topographies) of Integrated Circuits

Geographic Indications Sec. 4Copyright

Confined to literary or artistic works which are original creations or artistic domain protected from the moment of their creation.

Industrial Design

Any composition of lines or colors or any three-dimensional 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 handicratft (Sec. 112, IPC)

Trademark

Any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods. (Section 121.1, IPC, Elidad Kho vs. CA, GR No. 115758, March 11, 2002)

Patent Inventions

Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable (sec. 21, IPC).

Layout Design (Topography) of Integrated Circuits

A product, in its final form or an immediate form, in which the elements, at least one of which is an element, and some or all of the interconnections are integrally form in and/or on a piece of material and which is intended to perform an electric function (Art. 35, Trade Related Aspects of Intellectual Property Rights [TRIPS] Agreement)Geographic Indication

One which identifies a good as originatin in the territory of a TRIPS member, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin. (Art. 22, TRIPS Agreement).

Layout Design (Topography)

The three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the three-dimensional disposition prepared for an integrated circuit intended for manufacture. (Sec. 112 (3), IPC)

For a layout design to be entitled to protection it must be original in the sense that they are the result of their creators own intellectual effort and are not commonplace among creators or latout-designs (topographies) and manufacturers of integrated circuits at the time of their creation.

A layout design consisting of a combination of elements and interconnections that are commonplace shall be protected only if the combination, as a whole, is original. (Sec. 113.4, IPC)

Technology Transfer Arrangements

Contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market (Sec. 4.2, IPC)

Undisclosed Information

Information which is:

Secret in the sense that it is not, as a body or in the precise configuration and assembly of components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

Has commercial value because of its secrecy

Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret

Art 39 Trips

International law Related Provisions

Persons entitled to the benefits of the Intellectual Property Code (Reciprocity):

Any person who is a national who is domiciled or has a real or 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

Any person who is a national who is domiciled or has a real or effective industrial establishment in a country which:

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 the IPC (Sec. 3)

If the foreign corporation not doing business in the Philippines is suing as a party of a treaty to which the Philippines is a signatory, the fact that is its suing under Sec. 3, RA 8293 need not be alleged anymore and the court may take judicial notice of such fact as it is embodied in and supplied by the Paris Convention (for the Protection of Industrial Property) which forms part of the law of the land, Provided that the party suing substantially complied with the requirements of the law (Puma Sports, K.G. vs. IAC, GR No. 75067, Feb 26, 1988)

Failure to allege reciprocity is fatal to the foreign corporations cause, it being shown that it failed to compy with the requirements of the law. (Leviton Industries Inc. vs. Salvador, G. R. No. 40163, June 19, 1982)

Principle of Reverse Reciprocity

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. (Sec 231 IPC)

National Treatment Principle

The Philippines upon becoming a member of the WTO has adhered to the Trade Related Aspects of Intellectual Property (TRIPS) which provides that protection of afforder to the member-state (with respect to intellectual property) must be extended to nationals of other member-states.

Most-Favored Nation Principle

Whatever favor, allowance, consideration, privilege, or immunity a member-state grants the nationals of another country is immediately and unconditionally accorded to the nationals of other member-states. (Art. 4 TRIPS)

The Intellectual Property Office The IPO shall be divided into six (6) Bureaus:

1. The Bureau of Patents;

2. The Bureau of Trademarks;

3. The Bureau of Legal Affairs;

4. The Documentation, Information and Technology Transfer Bureau;

5. The Management Information System and EDP Bureau; and

6. The Administrative, Financial and Personnel Services Bureau.What is to be protected?

Copyright

An intangible incorporeal right:

to certain literary, scholarly and artistic productions,

granted by statute to the author or creator of the work,

giving him, his heirs and assigns, copyright or economic rights,

which shall consist of the exclusive right to carry out, authorize or prevent the acts listed in Sec. 177 A bundle of rights e.g. JK Rowling can sell various rights like right to publish (Scholastic), right to make a movie from her story (Warner), right to make toys from characters (e.g., Mattel)

A negative right since it prevents you from enjoying and/or deriving benefit

Property protected is intellectual

Use consists of derivative rights, e.g. reproduction, translation, dramatization

Facts alone are not protected but if it is arranged in an original manner, then it is covered. (i.e. databases)

Creativity is not the same as originality. In copyright, what is essential is the originality of the work thus bringing it under the protection of the law.

Definitions under Sec. 171 IPL

Author" is the natural person who has created the work.

A "collective work" is a 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.

See also

Communication to the public

Public lending

Public performance

Published works

Rental

Reproduction

Work of Applied Art

Work of the Government of the Philippines

Exclusive Rights (Copyright)

Sec. 177. Copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

1. Reproduction of the work or substantial portion of the work;

2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;

3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;

Note: Reproduction must be commercial, public and substantial

Note: substantial is vague; it should be a case to case basis. Factors to be considered are length copied and importance of a portion copied. You may copy only one paragraph but it could be the essence of the entire thing.

Test of Distribution - 1) whether or not the work is to be sold and 2) when is it to be sold.

Q. If you buy a book then after reading it, you sell it to another, infringement?

A. No. The moment it is sold, copyright protection as to public distribution is over.NOTE: There is a difference between copyrighted work and the medium where it is contained. So you can sell your book, unless it is provided in the copyright agreement

Does this apply to digital works? Because under the first sale doctrine, you can sell your copy. First sale doctrine assumes there is a tangible thing. The paper suggests that the doctrine should not apply to internet. Sec. 177. Copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

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;

Rental Stores need a license to rent out works.

Sec. 177. Copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

5. Public display of the original or a copy of the work;

6. Public performance of the work; and

7. Other communication to the public of the work;

NOTE: 171.6. "Public performance," in the case of a work other than an audiovisual work, is the recitation, playing, dancing, acting or otherwise performing the work, either directly or by means of any device or process; in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds accompanying it audible;

In the case of a sound recording, making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and that familys closest 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 at different times, and where the performance can be perceived without the need for communication.

Q. No TV in barrio, you buy TV, subscribe from Home and charge people to watch it. Violation?

A. Yes, It falls under public performance, same rule for broadcast.

TV point to multipoint vs. point to point (since only subscriber can receive)

Q. Is there broadcast?

A. Yes, there is broadcast. Public performance and communication to the public is included. There is no distinction as to TV or cable.

Website with copyrighted material point to point, protection includes broadcast and communicating to the public so you have protection

Internet there is assumed right to transmit material in internet unless made very clear that there are restrictions

E-Commerce Act you can enter into internet contract by clicking I agree in buttons

Therefore: if you click I agree that I will not violate copyright and still violate copyright, two causes of action against you: 1) breach of contract and 2) copyright infringement

(AVO Notes)

Is copyright owner given right to prevent importation of the article?

A. Parallel import in patent, the right to limit importation is clearly given. But it is not clear in copyright law.

IP Code provides in Sec. 190.

the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the circumstances provided (see Codal:

(a) When copies of the work are not available in the Philippines and:

b)When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale. (not more than three)

Works protected by a Copyright

Literary and Artistic Works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation

See Article 172 IPL

When does protection begin? 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.

See Article 172.2 IPL

The thing should be tangible for it to come under copyright protection. (Hence, mere idea like E=mc2 is not copyrightable.)

If written, if recorded, then copyrightable. If not recorded, there is no protection because it is not in a tangible form. Q. Are functional objects copyrightable? E.g. Figurine Lamps

A. Test = if thing is more artistic than functional. Here, figurine lamp is more artistic so it is copyrightable. But Magw heels would not be copyrightable because it is more functional. Cause of action is violation of a design patent. There is no need to test the gray line since there is another source of protection. (AVO notes)

Q. Since only tangible things are protected, are architectural plans copyrightable?

A. Yes. This is an exception to the rule that only designs are copyrightable since architectural plans are nothing without execution.

NOTE: There is a different rule with regard to design of chips, e.g. if design is obtained from reverse engineering. Only plan of chip is protected so reverse engineered chip is not an infringement of copyright.

NOTE: One of the defenses to copyright infringement is absence of access. If there is no access, there is no infringement.Derivative Works

The following derivative works 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.

How Derivative Works are Protected

They shall be protected as new works, BUT such new work shall not:

affect the force of any subsisting copyright upon the original works employed or any part thereof, or

be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works. Licensing is the means to protect derivative works. In licensing, JK Rowling allows you to make a movie. Agreement should be clear: you pay for the right to make the movie, and that is all you have if you do not stipulate on who retains copyright to the movie. Default rule is, she retains right to the movie. (AVO Notes) Licensing also includes rights like coming up with the movie in DVD format.

Q. If there is copyright violation, what kind of action will you bring criminal, civil, administrative?

A. Criminal. So that issues like standing to sue (if you are doing business in RP) and copyright ownership (whether Warner owns the copyright or JKR) will not come up since the State is the offended party. (Sec. 217 IPL)

Published Edition of Work

In addition to the right to publish granted by the author, his heirs or assigns, the publisher shall have a copy right consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work. Sec. 174

Works not protected by Copyright Sec. 175

Any 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;

News of the day and other miscellaneous facts having the character of mere items of press information; or

Any official text of a legislative, administrative or legal nature, as well as any official translation thereof.

Works of the Government Sec. 176

No copyright for work done by the Philippine government. However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit.

No prior approval required for statutes, rules and regulations, etc.

Ownership of Copyright Sec. 178

Original literary and artistic works - Copyright shall belong to the author of the work;

In the case of works of joint authorship:

the co-authors shall be the original owners of the copyright and in the absence of agreement, their rights shall be governed by the rules on co-

ownership

In the case of works of joint authorship:

if a work of joint authorship consists of parts that can be used separately and the author of each

part can be identified, the author of each part

shall be the original owner of the copyright in the part that he has created;

In the case of work created by an author during and in the course of his employment, the copyright shall belong to the:

EMPLOYEE - if the creation of the object of copyright is not a part of his regular duties even if the EE uses the time, facilities and materials of the ER

EMPLOYER - if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.

Q. Software programmer working in a company has access to information to create accounting computer programs. During his lunch break, he uses the equipment to create computer games. Is there copyright infringement?

A. No. Employee has the copyright. But the ee-er contract may stipulate that employee may assign copyright. Outright ownership is not allowed as to objects created outside the scope.

By requiring the assignment of the copyright, this is made a condition for getting the job from day one. If employee violates the contract, the employee can be sued for 2 causes of action breach of contract and infringement. (AVO Notes)

In the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission:

Ownership of the work - shall belong to the person who so commissioned the work, but

The Copyright thereto - shall remain with the creator,

unless there is a written stipulation to the contrary;

General rule: copyright remains with author. If commissioned work is photographed and published, infringement of right of painter.

Contract has to be IN WRITING. If it is not in writing, artist/creator retains copyright.

In audiovisual work, the copyright shall belong to the producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted.

However, subject to contrary or other stipulations among the creators, the producer shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work; and

In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code.

Art. 723 NCC 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.

Not yet sent copyright belongs to writer

Sent belongs to person to whom it is addressed

If not received, copyright isnt transferred.

General rule: Creator has copyright. It can be co-owned.

Note: Copyright protection lasts until 50 years after death of author. If there are two authors, it is after the second death. So include your son for the extra 30-40 years of protection. (AVO Notes)

Anonymous and pseudonymous works

For purposes of this act, the publishers shall be deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted name leaves no doubts as to the authors identity, or if the author of the anonymous works discloses his identity (Sec. 179)

Acts not considered infringement (Sec. 184) The recitation or performance of a work:

once it has been lawfully made accessible to the public, and,

if done privately and free of charge, or if made strictly for a charitable or religious institution or society.

The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned;

The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated.

The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned;

The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast:

Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work;

The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast;

The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use;

The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations.

Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title.

Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.

Fair Use In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include:

The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit education purposes;

The nature of the copyrighted work;

Published/unpublished

Factual/fictional

defense of fair use has more chance in unpublished work than a published work. However, there is little chance for the defense of an unpublished creative work to hold since in fictional work, there is more creative input than factual work.

The amount and substantiality of the portion used in relation to the copyrighted work as a whole

If portion copied is heart of the work

The effect of the use upon the potential market for or value of the copyrighted work.

Test is both the present and future market

The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Fair use always involves a balancing of interests of the copyright owner and the public.

The copyright owner has the right to exploit his work vs. the public has the right to information and the right to share this information. Crossing the line is infringement.

NOTE: When you raise fair use as a defense, you admit the facts in the complaint. Therefore:

1.)Plaintiff will no longer have to prove the facts, the trial now centers on whether or not there was fair use.

2.)It would be an inconsistent defense if you allege fair use and you allege that you were not the one doing the infringing.

Q. Chris Lim copies substantial portions of a book of a UP professor on IP, then he gives it out to students and anyone who wants a copy. Infringement?

A. Yes. The fact that it is for free does not necessarily mean it is fair use.

Q. If the IP Code were amended to read, So long as copyrighted material is used in school, it is fair use. Would this be constitutional?

Maybe not. It would be undue deprivation of property. It would also remove all incentive to create, write law books for instance or develop computer programs for school usage.

Q. When Chris Lim says, I copied large portions of Atty. Xs work, is this a valid defense?

A. No. It may serve to limit liability, but if substantial portions of the work is copied, attribution will not protect you. Protection only exists when excerpts are used.

Note: Traditional copyright is easier to protect than digital copyright. (AVO Notes)

Reproduction Of Published WorkNotwithstanding the provision of Section 177, and subject to the provisions of Subsection 187.2, the private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for research and private study, shall be permitted, without the authorization of the owner of copyright in the work.

187.2.The permission granted under Subsection 187.1 shall not extend to the reproduction of:

(a)A work of architecture in the form of building or other construction;

(b)An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means;

(c)A compilation of data and other materials;

Transfer Or Assignment Of Copyright Sec. 180 Sec. 180. Rights of assignee. -

The copyright may be assigned in whole or in part. Within the scope of the assignment, the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright.

The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention. Sec. 180. Rights of assignee. -

The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners.

Sec. 181. Copyright and material object. - The copyright is distinct from the property in the material object subject to it. Consequently, the transfer or assignment of the copyright shall not itself constitute a transfer of the material object. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright.

Sec. 182. Filing of assignment of license. - An assignment or exclusive license may be filed in duplicate with the national library upon payment of the prescribed fee for registration in books and records kept for the purpose. Upon recording, a copy of the instrument shall be, returned to the sender with a notation of the fact of record. Notice of the record shall be published in the IPO gazette.

Assignment and License

Possible defenses to infringement , i.e.

1.) you acquired copyright already copyright was assigned

2.) you were allowed to do the stuff you did you have a license

Copyright a body of rights so you can assign some of these rights to other people (note, only Economic Rights are assignable. Moral Rights are not assignable/alienable.)

Assignment has to be in writing.

NOTE: When I give a copy to a publication for publication, when there is no agreement between the parties, I retain the copyright and it extends only to one publication.

Second reprints are not allowed, without permission.

Licenses can be free or for a fee.

COLUMBIA PICTURES vs. CA G.R. No. 110318. August 28, 1996 JOAQUIN vs. DRILON G.R. No. 108946. January 28, 1999

HABANA vs. ROBLES G.R. No. 131522. July 19, 1999

BAYANIHAN MUSIC vs. BMG G.R. No. 166337. March 7, 2005

Manly SpORTWEAR vs. DADOETTE G.R. No. 165306 September 20, 2005

ABS-CBN vs. Philippine Multi-Medi System. G.R. Nos. 175769-70 January 19, 2009