Intellectual Property Law

UNIVERSITY OF SAN CARLOS Filipino Society of Composers vs. Tan, 148 SCRA 461 (1987) .......................................................................... 10 Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964) .......................................................................... 10 (b) Copyright Ownership....................................................... 11

TABLE OF CONTENTS

I.

INTRODUCTION ................................................................... 3

(1) Basis of the Intellectual Property Law (R.A. 8293, as amended) .................................................................................... 3 (2) Importance of Adopting Laws protecting Intellectual Property Rights .......................................................................................... 3 (3) Philippine commitment to the GATT-TRIPS agreement .......... 3 Tañada vs. Angara, G.R. No. 118295, May 2, 1997 ...........3 (4) Did RA 8293 repeal existing laws on intellectual property? ... 3 Mirpuri vs. CA..................................................................3 Samson vs. Daway ..........................................................3 (5) Intellectual Property Rights – Trademark, Copyright and Patents ........................................................................................ 3

(7) Transfer or Assignment of Copyright.................................... 12 (8) Limitations of Copyright....................................................... 12 (a) Limitations On Copyright ................................................. 12 (b) Fair Use of Work ............................................................. 12 A&M Records Inc. vs. Napster Inc. No. 00-16401 (U.S. Court Decision) ............................................................. 13 Habana vs. Robles G.R. No. 131522, July 19, 1999......... 13 (c) Work of Architecture ....................................................... 13 (d) Reproduction of Published Work...................................... 13 (e) Reprographic Reproduction by Libraries .......................... 14 (f) Reproduction of Computer Program ................................. 14 (g) Importation for Personal Purposes .................................. 14 (9) Registration and Deposit with National Library and Supreme Court Library.............................................................................. 14

(6) Republic Act No. 8293 – Intellectual Property Law ................ 4

II.

PRELIMINARY MATTERS .................................................. 4

(1) State Policy Declaration ......................................................... 4 Twentieth Century Music Corp. vs. Aiken .........................4 Feist Publications, Inc. vs. Rural Television Services Company .........................................................................4 (2) Effect on International Conventions and on Principle of Reciprocity................................................................................... 5 Mirpuri vs. CA..................................................................5 (3) Coverage of Intellectual Property Rights ............................... 5 Kho vs. CA,......................................................................5 Pearl & Dean Inc. vs. Shoemart Inc .................................6 (4) Functions of IPO........................................................6 (5) The Intellectual Property Office ............................................. 6 Pest Management Association of the Philippines vs. Fertilizer and Pesticide Authority.....................................6

III.

LAW ON COPYRIGHT ........................................................ 6

(1) Definitions ............................................................................. 6 (2) Protection, when commenced ................................................ 7 (3) Idea/Expression Dichotomy................................................... 7 (4) Works Protected .................................................................... 7 (a) Literary or Artistic Works ..................................................7 Columbia Pictures vs. CA, 261 SCRA 144 (1996) ..............8 Ching vs. Salinas, G.R. No. 161295, June 29, 2005 ...........8 (b) Derivative Works...............................................................8 Laktaw vs. Paglinawan, 44 Phil. 855 (1918) ....................9 (c) Published Edition of Work..................................................9 (5)Works Not Protected............................................................... 9 (a)Unprotected Subject Matter................................................9 Joaquin, Jr. vs. Drilon, 302 SCRA 225 (1999) ...................9 (b)Works of Government.........................................................9 (6) Copyright or Economic Rights; Ownership ........................... 10 (a) Copyright or Economic Rights – Sec. 177 ......................... 10 Pearl & Dean Inc., supra................................................ 10

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(10) Moral Rights ....................................................................... 15 (a) Scope of Moral Rights...................................................... 15 (b) Breach of Contract .......................................................... 15 (c) Waiver of Moral Rights .................................................... 15 (d) Contribution to Collective Work ....................................... 15 (e) Term of Moral Rights ....................................................... 15 (11) Rights to Proceed in Subsequent Transfers ........................ 15 (a) Sale or Lease of Work...................................................... 15 (12) Rights of Performers, Producers of Sound Recordings and Broadcasting Organizations ....................................................... 15 (a) Definitions ...................................................................... 15 (b) Scope of Performers’ Rights ............................................ 16 (c) Moral Rights of Performers .............................................. 16 (d) Limitation on Performers’ Rights ..................................... 16 (e) Additional Remuneration for Subsequent Communications or Broadcasts........................................................................ 16 (f) Contract Terms ................................................................ 16 (g) Scope of Right on Sound Recordings................................ 16 (h) Communication to the Public on Sound Recordings.......... 17 (i) Scope of Right of Broadcasting Organizations................... 17 (j) Limitations on Rights ....................................................... 17 ABS-CBN vs. Phil. Multi-Media System Inc. .................... 17 (13) Term of Protection in General ............................................ 17 (a) Term of Protection .......................................................... 17 (i) Joint Authorship........................................................... 18 (ii) Anonymous or Pseudonymous Works .......................... 18 (iii) Works of Applied Art .................................................. 18 (iv) Photographic Works ................................................... 18 (v)Audio-visual Works ...................................................... 18 (vi) Calculation of Terms ................................................... 18 (b) Term of Protection for Performers, Producers and Broadcasting Organizations .................................................. 18 (14) Infringement...................................................................... 18 (a) How committed ............................................................... 18 Microsoft Corp. vs. Hwang ............................................. 18 Microsoft Corp. vs. Maxicorp Inc.................................... 19 (b) Remedies for Infringement ............................................. 19 Habana vs. Robles ......................................................... 19 Columbia Pictures Inc. vs. CA, supra.............................. 19 (c) Criminal Penalties ........................................................... 19 (d) Affidavit Evidence ........................................................... 20 (e) Presumption of Authorship .............................................. 20 Bayanihan Music Phils., Inc. vs. BMG Records ................ 20 (f) International Registration of Works ................................. 21 (15) Points of Attachment of Rights........................................... 21

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Intellectual Property Law

UNIVERSITY OF SAN CARLOS (a)For Literary and Artistic Works and Derivative Works ....... 21 Pearl & Dean Inc. vs. Shoemart Inc. .............................. 21 (b) For Performers ................................................................ 21 (c) Of Sound Recordings ....................................................... 21 (d) For Broadcast.................................................................. 21

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Intellectual Property Law

UNIVERSITY OF SAN CARLOS

I.

INTRODUCTION

(1) Basis of the Intellectual Property Law (R.A. 8293, as amended) Section 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It 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 periods as provided in this Act. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. (n) (2) Importance of Adopting Laws protecting Intellectual Property Rights The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. (3) Philippine commitment to the GATT-TRIPS agreement 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. (n)

Facts: Issues: Held: Samson vs. Daway G.R. Nos. 160054-55, July 21, 2004 Facts: Samson, owner/proprietor of ITTI Shoes/Mano Shoes Manufactuirng Corporation located at Robinson’s Galleria, EDSA corner Ortigas Avenue, Quezon City, did then and there willfully, unlawfully and feloniously distribute, sell and/or offer for sale CATERPILLAR products such as footwear, garments, clothing, bags, accessories and paraphernalia which are closely identical to and/or colorable imitations of the authentic Caterpillar products and likewise using trademarks, symbols and/or designs as would cause confusion, mistake or deception on the part of the buying public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of the following internationally: “CATERPILLAR”, “CAT”, “CATERPILLAR & DESIGN”, “CAT AND DESIGN”, “WALKING MACHINES” and “TRACK-TYPE TRACTOR & DESIGN.” Caterpillar Inc. sued Samson for unfair competition in RTC. Samson filed a motion to for the quashal of information for lack of jurisdiction. Samson contended that since under Section 170 of R.A. No. 8293, the penalty of imprisonment for unfair competition does not exceed six years, the offense is cognizable by the Municipal Trial Courts and not by the Regional Trial Court, per R.A. No. 7691. xxx Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal penalty for infringement of registered marks, unfair competition, false designation of origin and false description or representation, is imprisonment from 2 to 5 years and a fine ranging from Fifty Thousand Pesos to Two Hundred Thousand Pesos. (jurisdiction of Municipal Trial Courts)

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. (Tanada vs. Angara)

xxx Under Section 27 of of R.A. No. 166 (The Trademark Law) SEC. 27. Jurisdiction of Court of First Instance. – All actions under this Chapter [V – Infringement] and Chapters VI [Unfair Competition] and VII [False Designation of Origin and False Description or Representation], hereof shall be brought before the Court of First Instance.

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

Issues:

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. (4) Did RA 8293 repeal existing laws on intellectual property? NO. Republic Act 8293 Section 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. Thus, only inconsistent provisions or parts of RA 165, RA 166, PD 49 and PD 285 were repealed. Mirpuri vs. CA G.R. No. 114508, Nov. 19, 1999

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Whether or not R.A. No. 166 was expressly repealed by R.A. No. 8293? Held:

No, R.A. No. 8293 does not expressly repealed R.A. 166.

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. (5) Intellectual Property Rights – Trademark, Copyright and Patents Sec. 4.1, R.A. 8293

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Intellectual Property Law

UNIVERSITY OF SAN CARLOS

Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS).

Feist Publications, Inc. vs. Rural Television Services Company 499 U.S. 340, 1991 Facts:

(6) Republic Act No. 8293 – Intellectual Property Law II.

PRELIMINARY MATTERS

(1) State Policy Declaration Sec. 2 Section 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It 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 periods as provided in this Act. The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. (n) Twentieth Century Music Corp. vs. Aiken 422 U.S. 151 Facts 20Th Century Music Corporation copyrighted songs were received on the radio in Aiken’s food shop from a local broadcasting station, which was licensed by the American Society of Composers, Authors and Publishers to perform the songs, but Aiken had no such license. 20th Century Music then sued Aikenfor copyright infringement. The District Court granted awards, but the Court of Appeals reversed. Issue Whether the reception of a radio broadcast of a copyrighted musical composition can constitute copyright infringement when the copyright owner has licensed the broadcaster to perform the composition publicly for profit? Held

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

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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.

Rural Telephone Service Company is a certified public utility that provides telephone service to several communities in northwest Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue annually an updated telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the names of Rural's subscribers, together with their towns and telephone numbers. The yellow pages list Rural's business subscribers alphabetically by category and feature classified advertisements of various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by selling yellow pages advertisements. Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical directory, which covers only a particular calling area, Feist's area-wide directories cover a much larger geographical range, reducing the need to call directory assistance or consult multiple directories. The Feist directory that is the subject of this litigation covers 11 different telephone service areas in 15 counties and contains 46,878 white pages listings -compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed free of charge and includes both white pages and yellow pages. Feist and Rural compete vigorously for yellow pages advertising. As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons desiring telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a telephone number. Feist is not a telephone company, let alone one with monopoly status, and therefore lacks independent access to any subscriber information. To obtain white pages listings for its area-wide directory, Feist approached each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right to use its white pages listings. Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for Feist, as omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to potential yellow pages advertisers. Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist began by removing several thousand listings that fell outside the geographic range of its area-wide directory, then hired personnel to investigate the 4,935 that remained. These employees verified [p*344] the data reported by Rural and sought to obtain additional information. As a result, a typical Feist listing includes the individual's street address; most of Rural's listings do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's 1983 directory were identical to listings in Rural's 1982-1983 white pages. Four of these were fictitious listings that Rural had inserted into its directory to detect copying. Rural sued for copyright infringement in the District Court for the District of Kansas taking the position that Feist, in compiling its own directory, could not use the information contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel door-to-door or conduct a telephone survey to discover the same information for themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the information copied was beyond the scope of copyright protection. Issues: Held:

Whether or not Telephone directories are copyrightable or not? 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

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Intellectual Property Law

UNIVERSITY OF SAN CARLOS 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. Notes

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. (n) 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. (n)

On what basis may one claim a copyright in such a work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope. 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.

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

Why facts are not copyrightable? 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.

Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS).

Illustrative Example Census-takers do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. Census data therefore do not trigger copyright because these data are not "original" in the constitutional sense. The same is true of all facts -- scientific, historical, biographical, and news of the day. "They may not be copyrighted and are part of the public domain available to every person." Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. Originality requires independent creation plus a modicum of creativity: "While the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like." Author - in a constitutional sense is to mean "he to whom anything owes its origin; originator; maker”. (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

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Facts Issues Held (3) Coverage of Intellectual Property Rights Sec. 4.1

Kho vs. CA, G.R. No. 115758, March 19, 2002 Facts Kho is doing business under the name and style of KEC Cosmetics Laboratory, the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office. Summerville advertised and sold Kho’s cream products under the brand name Chin Chun Su, in similar containers that Kho uses, thereby misleading the public, and resulting in the decline in the Kho’s business sales and income; and, that the Summerville should be enjoined from allegedly infringing on the copyrights and patents of the Kho. Summerville on the other hand, alleged as their defense that they are the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies; that KEC Cosmetics Laboratory of the of Kho obtained the copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. On December 20, 1991, Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of preliminary injunction, against the Summerville General Merchandising and Company (Summerville, for brevity) and Ang Tiam Chay. Issues

Whether the copyright and patent over the name and container of a beauty cream product would entitle the registrant to the use and ownership over the same to the exclusion of others? Held 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

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UNIVERSITY OF SAN CARLOS 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 Facts Issues Held (4) Functions of IPO Sec. 5

a) Examine applications for grant of letters patent for inventions and register utility models and industrial designs; b) Examine applications for the registration of marks, geographic indication, integrated circuits; c) Register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer; d) Promote the use of patent information as a tool for technology development; e) Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; f) Administratively adjudicate contested proceedings affecting intellectual property rights; and g) Coordinate 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. 5.2. The Office shall have custody of all records, books, drawings, specifications, documents, and other papers and things relating to intellectual property rights applications filed with the Office. (n)

The case commenced upon PMAP’s filing of a Petition For Declaratory Relief With Prayer For Issuance Of A Writ Of Preliminary Injunction And/Or Temporary Restraining Order with the RTC on January 4, 2002. Petitioner, a non-stock corporation duly organized and existing under the laws of the Philippines, is an association of pesticide handlers duly licensed by respondent Fertilizer and Pesticide Authority (FPA). It questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory Policies and Implementing Guidelines, which provides thus: 3.12 Protection of Proprietary Data Data submitted to support the first full or conditional registration of a pesticide active ingredient in the Philippines will be granted proprietary protection for a period of seven years from the date of such registration. During this period subsequent registrants may rely on these data only with third party authorization or otherwise must submit their own data. After this period, all data may be freely cited in support of registration by any applicant, provided convincing proof is submitted that the product being registered is identical or substantially similar to any current registered pesticide, or differs only in ways that would not significantly increase the risk of unreasonable adverse effects. Whether or not FPA encroach upon the jurisdiction of the Intellectual Property Office? Held 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. III.

LAW ON COPYRIGHT

(1) Definitions Sec. 171 – 171.10

(5) The Intellectual Property Office Sec. 6.2 Section 6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and assisted by an Assistant Director. These Bureaus are:

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Facts

Issues

Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To administer and implement the State policies declared in this Act, there is hereby created the Intellectual Property Office (IPO) which shall have the following functions:

a) The Bureau of Patents; b) The Bureau of Trademarks; c) The Bureau of Legal Affairs; d) The Documentation, Information and Technology Transfer Bureau; e) The Management Information System and EDP Bureau; and f) The Administrative, Financial and Personnel Services Bureau.

Pest Management Association of the Philippines vs. Fertilizer and Pesticide Authority G.R. No. 156041, February 21, 2007

Section 171. Definitions. - For the purpose of this Act, the following terms have the following meaning: 171.1. "Author" is the natural person who has created the work; 171.2. 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;

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UNIVERSITY OF SAN CARLOS 171.3. means means from a

"Communication to the public" or "communicate to the public" the making of a work available to the public by wire or wireless in such a way that members of the public may access these works place and time individually chosen by them;

171.4. A "computer" is an electronic or similar device having informationprocessing capabilities, and a "computer program" is a set of instructions expressed in words, codes, schemes or in any other form, which is capable when incorporated in a medium that the computer can read, of causing the computer to perform or achieve a particular task or result; 171.5. "Public lending" is the transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public library or archive;

Sec. 172- 172.2 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 delivery, whether or not reduced in writing or other material form; (d) Letters;

oral

Note: Requisite: For short message sending (sms) or text messages sufficient intellectual effort.

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; and, 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 family's 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 within the meaning of Subsection 171.3;

(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows;

171.7. "Published works" means works, which, with the consent of the authors, are made 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: 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;

Note: Furnitures have functional purpose. Ching Case:

171.8. "Rental" is the transfer of the possession of the original or a copy of a work or a sound recording for a limited period of time, for profitmaking purposes; 171.9. "Reproduction" is the making of one (1) or more copies of a work or a sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a); 171.10. A "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; 171.11. A "work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as a part of his regularly prescribed official duties. (2) Protection, when commenced Sec. 172.2

(3) Idea/Expression Dichotomy Sec. 175 Section 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to 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 (n) Note: Ideas are the building blocks of creative expression. They will differ with the particular subject matter involved.

(a) Literary or Artistic Works

Rommel A. Tio

(f) Musical compositions, with or without words; Note: With or Without words – because there two separate rights for the composition and lyrics. (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 audiovisual recordings; (m) Pictorial illustrations and advertisements; (n) Computer programs; and Note: Computer program are copyrightable in this jurisdiction but not patentable. (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) Notes

Section 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).

(4) Works Protected

Note: Laban notation – transcription of choreographic notes

When work is created? A work is created when two requirements are Originality and some form of expression. The work must have their origin in the labor of the author. Original as the term is used in copyright means only that the work was independently created by the author (as opposed to copied from the other works) and that it possess at least some minimal degree of creativity. The distinction is one between creation and discovery: the fist to person to find a particular fact has not created the fact: he or she ha merely discovered its existence. However, it is not necessary, to qualify for copyright protection, that works should pass a test of imaginativeness. The right to obtain a copyright on a book depends on originality of the author’s work and not upon any standard of merit. 2nd Requirement: Expression In order for a work to be entitled protection, there must at least be some verifiable expression of the intellectual product.

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UNIVERSITY OF SAN CARLOS 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.

Idea is not protected, only the expression. There is creation when an idea is expressed in some tangible medium. Columbia Pictures vs. CA, 261 SCRA 144 (1996)

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

Facts Columbia Pictures lodged a formal complaint with the National Bureau of Investigation for violation of PD No. 49, as amended, and sought its assistance in their anti-film piracy drive. Agents of the NBI and private researchers made discreet surveillance on various video establishments in Metro Manila including Sunshine Home Video Inc. owned and operated by Danilo A. Pelindario. On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search warrant with the court a quo against Sunshine seeking the seizure, among others, of pirated video tapes of copyrighted films all of which were enumerated in a list attached to the application; and, television sets, video cassettes and/or laser disc recordings equipment and other machines and paraphernalia used or intended to be used in the unlawful exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the premises above described. In the hearing of the application, NBI Senior Agent Lauro C. Reyes, upon questions by the court a quo, reiterated in substance his averments in his affidavit. His testimony was corroborated by another witness, Mr. Rene C. Baltazar. Atty. Rico V. Domingo’s deposition was also taken. On the basis of the affidavits and depositions of NBI Senior Agent Lauro C. Reyes, Rene C. Baltazar and Atty. Rico V. Domingo, Search Warrant No 87-053 for violation of Section 56 of PD No. 49, as amended, was issued by the court a quo. NBI Agents found and seized various video tapes of duly copyrighted motion pictures/films owned or exclusively distributed by private complainants, and machines, equipment, television sets, paraphernalia, materials, accessories all of which were included in the receipt for properties accomplished by the raiding team. Copy of the receipt was furnished and/or tendered to Mr. Danilo A. Pelindario, registered owner-proprietor of Sunshine Home Video. Issues

Whether or not absence such registration, as in this case, there was no right created, hence, no infringement under PD 49 as amended? Held 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

Rommel A. Tio

Facts

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker and manufacturer of a Utility Model, described as “Leaf Spring Eye Bushing for Automobile” made up of plastic. On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates of Copyright Registration and Deposit of the said work described therein as “Leaf Spring Eye Bushing for Automobile.” On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for police/investigative assistance for the apprehension and prosecution of illegal manufacturers, producers and/or distributors of the works. After due investigation, the NBI filed applications for search warrants in the RTC of Manila against William Salinas, Sr. and the officers and members of the Board of Directors of Wilaware Product Corporation. It was alleged that the respondents therein reproduced and distributed the said models penalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. Issues Whether or not the subject matter is covered by the Copyright of the Intellectual Property Code? Held 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 Section 173. Derivative Works. - 173.1. The following derivative works shall also be protected by copyright: (a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and (b) 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. (Sec. 2, [P] and [Q], P.D. No. 49) 173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as new works: Provided however, 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 to imply any right to such use of the original works, or to secure or extend copyright in such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)

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UNIVERSITY OF SAN CARLOS Note: Derivative works are original work. There must be compliance of the requirements: 1. must borrow the original and expressive content 2. the work must alter not merely copy. / must have substantial variation Article 5 of civil code. No right can spring from an unlawful act. Laktaw vs. Paglinawan, 44 Phil. 855 (1918) Facts

Laktaw is the registered owner and author of a literary work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary) published in the City of Manila in 1889 by the printing establishment La Opinion. Paglinawan without the consent of Laktaw, reproduced said literary work, improperly copied the greater part thereof in the work published by him and entitled Diccionariong Kastila-Tagalog (SpanishTagalog Dictionary). The act of Pagliwanan is a violation of article 7 of the Law of January 10, 1879, on Intellectual Property, caused irreparable injuries to Laktaw who was surprised when, on publishing his new work entitled Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of the fact, and (4) that the damages occasioned to him by the publication of Paglinawan's work amounted to $10,000. Laktaw prayed the court to order the Paglinawan to withdraw from sale all stock of the work of Paglinawan to pay him the sum of $10,000, with costs. Paglinawan in his answer denied generally each and every allegation of the complaint and prayed the court to absolve him from the complaint. Law Article 7 of the Law of January 10, 1879, on Intellectual Property: Nobody may reproduce another person's work without the owner's consent, even merely to annotate or add anything to it, or improve any edition thereof. Issue

Whether or not Paglinawan violated Article 7 of the Intellectual Property Law (1879)? Held Yes, Paglinawan violated Article 7 of Intellectual Property Law. 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 Section 174. Published Edition of Work. - In addition to the right to publish granted by the author, his heirs, or assigns, the publisher shall have a copyright consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work. (n) Note: Separate right of the publisher exclusively on typographical arrangement. (5)Works Not Protected Sec. 175

Rommel A. Tio

Whether the format or mechanics of Joaquin’s television show is entitled to copyright protection? Held No, the format or mechanics of a television show is not included in the list of protected works in §2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended to cover them. 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. What then is the subject matter of petitioners’ copyright? TheCourt is of the opinion that petitioner BJPI’s copyright covers audiovisual recordings of each episode of Rhoda and Me, as falling within the class of works mentioned in P.D. 49, §2(M), to wit:

Law

Section 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to 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 (n)

Facts

Issue

Cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;

(a)Unprotected Subject Matter Sec. 175

Joaquin, Jr. vs. Drilon, 302 SCRA 225 (1999)

Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977. On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show’s format and style of presentation. On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an episode of It’s a Date, which was produced by IXL Productions, Inc. (IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel M. Zosa, president and general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda and Me and demanding that IXL discontinue airing It’s a Date. In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and requested a meeting to discuss a possible settlement. IXL, however, continued airing It’s a Date, prompting petitioner Joaquin to send a second letter on July 25, 1991 in which he reiterated his demand and warned that, if IXL did not comply, he would endorse the matter to his attorneys for proper legal action. Meanwhile, private respondent Zosa sought to register IXL’s copyright to the first episode of “It’s a Date” for which it was issued by the National Library a certificate of copyright on August 14, 1991. Upon complaint of petitioners, information for violation of P.D. No. 49 was filed against private respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe Medina, and Casey Francisco, in the Regional Trial Court of Quezon City.

Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to 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. (b)Works of Government Sec. 176; 171.11

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UNIVERSITY OF SAN CARLOS Section 176. Works of the Government. - 176.1. No copyright shall subsist in any work of the Government of the Philippines. However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office may, among other things, impose as a condition the payment of royalties. No prior approval or conditions shall be required for the use of any purpose of statutes, rules and regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. (Sec. 9, first par., P.D. No. 49)

the appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of the necessary license fee for the playing and singing of aforesaid compositions but the demand was ignored.

176.2. The author of speeches, lectures, sermons, addresses, and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works. (n)

1. Whether or not the playing and singing of musical compositions which have been copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of Benjamin Tan constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines?

176.3. Notwithstanding the foregoing provisions, the Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall publication or republication by the Government in a public document of any work in which copyright is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owner. (Sec. 9, third par., P.D. No. 49) 171.11. A "work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as a part of his regularly prescribed official duties. (6) Copyright or Economic Rights; Ownership (a) Copyright or Economic Rights – Sec. 177 Note: Copyright - economic right / moral rights - “right to paternity”. 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; 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) Statutory Right – the right is limited to what the statute confers. Pearl & Dean Inc., supra Facts Issues Law Held

Tan’s Argument: That the mere singing and playing of songs and popular tunes even if they are copyrighted do not constitute an infringement (Record on Appeal, p. 11; Resolution, CA-G.R. NO. 46373R, Rollo, pp. 32-36) under the provisions of Section 3 of the Copyright Law (Act 3134 of the Philippine Legislature). Issues

2. Assuming that there were indeed public performances for profit, whether or not Benjamin Tan can be held liable therefore. Held 1st issue: Yes. The playing of music in dine and dance establishment which was paid for by the public in purchases of food and drink constituted "performance for profit" within a Copyright Law (Buck, et al. v. Russon No. 4489 25 F. Supp. 317). 2nd issue: The Supreme Court has ruled that "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 other things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which renders such creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964]. Indeed, 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. A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20, 1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration (TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the year of the hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have been known and sang by the witnesses as early as 1965 or three years before the hearing in 1968. The testimonies of the witnesses at the hearing of this case on this subject were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30). Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964) Facts

Filipino Society of Composers vs. Tan, 148 SCRA 461 (1987) Facts Filipino Society of Composers, Authors and Publishers Inc. is organization under the Corporation Law of the Philippines and registered with the Securities and Exchange Commission. The association is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You." Benjamin Tan on the other hand is the operator of a restaurant known as "Alex Soda Foundation and Restaurant" where a combo with professional singers, hired to play and sing musical compositions to entertain and amuse customers therein, were playing and singing the above-mentioned compositions without any license or permission from

Rommel A. Tio

Mauro Malalang Santos filed an action for damages for unauthorized use, adaptation and appropriation by the MCCULLOUGH PRINTING COMPANY of the intellectual creation or artistic design of a Christmas card by him (Mauro Maglalang Santos) based on Article 721 and 722 of the Civil Code of the Philippines. The Christmas card depicts a Philippine rural Christmas time scene consisting of a woman and a child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath which appears the plaintiff's pen name, Malang. The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri, for his personal Christmas Card greetings for the year 1959, the artistic motif in question. The following year the defendant McCullough Printing Company, without the knowledge and authority of plaintiff, displayed the very design in its album of Christmas cards and offered it for sale, for a price. For such

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Intellectual Property Law

UNIVERSITY OF SAN CARLOS unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00, because it has placed plaintiff's professional integrity and ethics under serious question and caused him grave embarrassment before Ambassador Neri. He further prayed for the additional sum of P3,000.00 by way of attorney's fee. Issues (1) Whether plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his design? (2) Whether the publication is limited, so as to prohibit its use by others, or it is general publication? (3) Whether the provisions of the Civil Code or the Copyright Law should apply in the case? Law 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) Held 1st issue: The Supreme Court found that plaintiff is not entitled to a protection, 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. 2nd issue: 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 (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

Rommel A. Tio

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.) 3rd issue: 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) (b) Copyright Ownership Sec. 178; 179; Art. 723 (NCC) CHAPTER VI OWNERSHIP OF COPYRIGHT Section 178. Rules on Copyright Ownership. - Copyright ownership shall be governed by the following rules: 178.1 Subject to the provisions of this section, in the case of original literary and artistic works, copyright shall belong to the author of the work; 178.2. 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. If, however, 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; 178.3. In the case of work created by an author during and in the course of his employment, the copyright shall belong to: (a) The employee, if the creation of the object of copyright is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. (b) The 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. 178.4. 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, the person who so commissioned the work shall have ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary; 178.5. In the case of 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 178.6. In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code. (Sec. 6, P.D. No. 49a) Section 179. 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 doubt as to the author's identity, or if the author of the anonymous works discloses his identity. (Sec. 7, P.D. 49)

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UNIVERSITY OF SAN CARLOS Civil Code: 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) (7) Transfer or Assignment of Copyright Sec. 180- 183 TRANSFER OR ASSIGNMENT OF COPYRIGHT Section 180. Rights of Assignee. – 180.1. 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. Note: There are seven rights it can be assigned individually or as a whole. 180.2. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention. 180.3. 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. 15, P.D. No. 49a) Section 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. 16, P.D. No. 49) Section 182. Filing of Assignment or 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. (Sec. 19, P.D. No. 49a) Section 183. Designation of Society. - The copyright owners or their heirs may designate a society of artists, writers or composers to enforce their economic rights and moral rights on their behalf. (Sec. 32, P.D. No. 49a)

delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, P.D. No. 49) (d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; (Sec. 12, P.D. No. 49) (e) 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; (f) 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; (g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; (h) 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; (i) 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; (n) (j) 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; and (k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.

(8) Limitations of Copyright

184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interests.

(a) Limitations On Copyright Sec. 184

(b) Fair Use of Work Sec. 185

CHAPTER VIII LIMITATIONS ON COPYRIGHT

Section 185. Fair Use of a Copyrighted Work. - 185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright. Decompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the interoperability of an independently created computer program with other programs may also constitute 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:

Section 184. Limitations on Copyright. - 184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1), P.D. No. 49) (b) 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; (Sec. 11, third par., P.D. No. 49) (c) 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

Rommel A. Tio

(a) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (b) The nature of the copyrighted work; (c) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (d) The effect of the use upon the potential market for or value of the copyrighted work.

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UNIVERSITY OF SAN CARLOS 185.2. 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.

Whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, Robles committed no copyright infringement?

A&M Records Inc. vs. Napster Inc. Decision)

Held

No. 00-16401 (U.S. Court

Facts Napster was a web-based company for the purpose of providing a platform for users to exchange digital music with other users. A&M saw the potential negative impact of this service to their sales, and thus filed copyright suit against Napster. A&M alleged that Napster was a contributor to the copyright infringements against their company. Napster’s defense was such that in order for their company to be liable for contributory infringement, their users had to be directly infringing on A&M’s copyrights. Napster claimed that this was not the case, but their users were instead engaging in three types of fair use: sampling, spaceshifting, and permissive distribution. Napster also provided a solution to the alleged infringement in the form of a compulsory license, in which the government would force the copyright holders to grant use to Napster potentially in exchange for royalties. The U.S. District Court ruled in favor of A&M and issued an injunction by which Napster should further refrain from providing their service. The 9th Circuit Federal Court of Appeals found that it was clear the defendants violated at least one of the copyright holders’ five exclusive rights: the right to reproduce, prepare derivative work, distribute, perform, and display. The appellate court found that “Napster users infringe at least two of the copyright holders’ exclusive rights: the rights of reproduction, § 106(1); and distribution, § 106(3).” The courts deduced that by uploading files to the Napster search index, users were violating the plaintiff’s right to reproduction and by downloading files containing copyrighted music were violating their right to distribution. The court decided that the defendants had the ability to prevent infringement from taking place, and thus has the duty to do so. Issues Whether or not Napster violated one of the exclusive copyright of A&M?

Whether or not it constitutes fair use?

Held

The court also examined Napster’s fair use claims using the four fair use factors: purpose and character of the use, nature of the use, portion used, effect of use on the market. The court decided that Napster’s argument for sampling did not hold, because the “samples” were in fact permanent and complete files on the users’ hard drives. Also, Napster’s space-shifting argument did not hold, because the users were not just simply converting their media between formats for storage, but were sharing the files as well. No decision was made on the argument of permissive reproduction, because the plaintiffs did not challenge this use. Finally, the court rejected Napster’s request for a compulsory license, citing that such a device would provide Napster with an “easy out” while seemingly punishing the copyright holders. (Cornell) Habana vs. Robles G.R. No. 131522, July 19, 1999 Facts Habana is the author of the copyrighted book entitled College English for Today (CET). Robles and GoodWill is the author and publisher of the book entitled Developing English Proficiency (DEP). When Habana et al. try to revise their work they encountered by chance that the work of Robles (DEP) is similar of the contents, scheme of presentation, illustrations and illustrative examples in their own book. After an itemized examination and comparison of the two books (CET and DEP), Habana found that several pages of the Robles’ book are similar, if not all together a copy of Habana’s book, which is a case of plagiarism and copyright infringement. Habana then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of Robles’ works. However, Robles ignored the demands, hence, Habana et al. filed with the Regional Trial Court, Makati, a complaint for “Infringement and/or unfair competition with damages” against private respondents. Issues

Rommel A. Tio

No, Robles still committed copyright infringement. 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. Notes When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated. In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. 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. Piracy A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. (c) Work of Architecture Sec. 186 Section 186. Work of Architecture. - Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original: Provided, That the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style as the original of a building to which that copyright relates. (n) (d) Reproduction of Published Work Sec. 187- 187.2 Section 187. Reproduction of Published Work. - 187.1. Notwithstanding 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

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UNIVERSITY OF SAN CARLOS 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:

(g) Importation for Personal Purposes Sec. 190

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

Section 190. Importation for Personal Purposes. - 190.1. Notwithstanding the provision of Subsection 177.6, but subject to the limitation under the Subsection 185.2, 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 following circumstances:

(c) A compilation of data and other materials;

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

(d) A computer program except as provided in Section 189; and

(i) Not more than one (1) copy at one time is imported for strictly individual use only; or

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

(e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. (n) (e) Reprographic Reproduction by Libraries Sec. 188 Section 188. Reprographic Reproduction by Libraries. - 188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction:

(ii) The importation is by authority of and for the use of the Philippine Government; or (iii) The importation, consisting of not more than three (3) such copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines.

(a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form;

(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: Provided, That such copies do not exceed three (3).

(b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and

190.2. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act, and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor's right of action.

(c) Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher.

190.3. Subject to the approval of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. (Sec. 30, P.D. No. 49)

188.2. Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock: Provided, That every library which, by law, is entitled to receive copies of a printed work, shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. (Sec. 13, P.D. 49a) (f) Reproduction of Computer Program Sec. 189 Section 189. Reproduction of Computer Program. - 189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a computer program, by the lawful owner of that computer program: Provided, That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and (b) Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable. 189.2. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section, and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. 189.3. This provision shall be without prejudice to the application of Section 185 whenever appropriate. (n)

Rommel A. Tio

(9) Registration and Deposit with National Library and Supreme Court Library Sec. 191; 192; 227; 228 CHAPTER IX DEPOSIT AND NOTICE Section 191. Registration and Deposit with National Library and the Supreme Court Library. - After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of the National Library and the Supreme Court Library, within three (3) weeks, be registered and deposited with it, by personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a) Section 192. Notice of Copyright. - Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creator's death, the year of such death. (Sec. 27, P.D. No. 49a)

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UNIVERSITY OF SAN CARLOS

Note: The value of the notice of copyright is enforcing your copyright in infringement case CHAPTER XX MISCELLANEOUS PROVISIONS Section 227. Ownership of Deposit and Instruments. - All copies deposited and instruments in writing filed with the National Library and the Supreme Court Library in accordance with the provisions of this Act shall become the property of the Government. (Sec. 60, P.D. No. 49) Section 228. Public Records. - The section or division of the National Library and the Supreme Court Library charged with receiving copies and instruments deposited and with keeping records required under this Act and everything in it shall be opened to public inspection. The Director of the National Library is empowered to issue such safeguards and regulations as may be necessary to implement this Section and other provisions of this Act. (Sec. 61, P.D. No. 49) Section 229. Copyright Division; Fees. - The Copyright Section of the National Library shall be classified as a Division upon the effectivity of this Act. The National Library shall have the power to collect, for the discharge of its services under this Act, such fees as may be promulgated by it from time to time subject to the approval of the Department Head. (Sec. 62, P.D. 49a) (10) Moral Rights (a) Scope of Moral Rights Sec. 193 CHAPTER X MORAL RIGHTS Section 193. Scope of Moral Rights. - The author of a work shall, independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right, have the right: Note: Economic Rights is independent for Moral Rights 193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work; 193.2. To make any alterations of his work prior to, or to withhold it from publication; 193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and 193.4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. (Sec. 34, P.D. No. 49) Notes: Right to Right to Right to Right to

195.1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or 195.2. To use the name of the author with respect to a work he did not create. (Sec. 36, P.D. No. 49) (d) Contribution to Collective Work Sec. 196 Section 196. Contribution to Collective Work. - When an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. (Sec. 37, P.D. No. 49) (e) Term of Moral Rights Sec. 198; 199; 226 Section 198. Term of Moral Rights. - 198.1. The rights of an author under this chapter shall last during the lifetime of the author and for fifty (50) years after his death and shall not be assignable or subject to license. The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. In default of such person or persons, such enforcement shall devolve upon either the author's heirs, and in default of the heirs, the Director of the National Library. 198.2. For purposes of this Section, "Person" shall mean any individual, partnership, corporation, association, or society. The Director of the National Library may prescribe reasonable fees to be charged for his services in the application of provisions of this Section. (Sec. 39, P.D. No. 49) Section 199. Enforcement Remedies. - Violation of any of the rights conferred by this Chapter shall entitle those charged with their enforcement to the same rights and remedies available to a copyright owner. In addition, damages which may be availed of under the Civil Code may also be recovered. Any damage recovered after the creator's death shall be held in trust for and remitted to his heirs, and in default of the heirs, shall belong to the government. (Sec. 40, P D No. 49) Section 226. Damages. - No damages may be recovered under this Act after four (4) years from the time the cause of action arose. (Sec. 58, P.D. No. 49) (11) Rights to Proceed in Subsequent Transfers (a) Sale or Lease of Work Sec. 200; 201 Section 200. Sale or Lease of Work. - In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty (50) years after his death. (Sec. 31, P.D. No. 49)

attribution or paternity right alteration on non publication preservation of integrity be indentified with work of others with distorted work

Transfer or Licensing are different. (b) Breach of Contract Sec. 194 Section 194. Breach of Contract. - An author cannot be compelled to perform his contract to create a work or for the publication of his work already in existence. However, he may be held liable for damages for breach of such contract. (Sec. 35, P.D. No. 49) (c) Waiver of Moral Rights Sec. 195

Section 195. Waiver of Moral Rights. - An author may waive his rights mentioned in Section 193 by a written instrument, but no such waiver shall be valid where its effects is to permit another:

Section 201. Works Not Covered. - The provisions of this Chapter shall not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. (Sec. 33, P.D. No. 49) (12) Rights of Performers, Producers of Sound Recordings and Broadcasting Organizations (a) Definitions Sec. 202- 202. 8 CHAPTER XII

Rommel A. Tio

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UNIVERSITY OF SAN CARLOS RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND BROADCASTING ORGANIZATIONS Section 202. Definitions. - For the purpose of this Act, the following terms shall have the following meanings: 202.1. "Performers" are actors, singers, musicians, dancers, and other persons who act, sing, declaim, play in, interpret, or otherwise perform literary and artistic work; 202.2. "Sound recording" means the fixation of the sounds of a performance or of other sounds, or representation of sound, other than in the form of a fixation incorporated in a cinematographic or other audiovisual work; 202.3. An "audiovisual work or fixation" is a work that consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible and, where accompanied by sounds, susceptible of being made audible; 202.4. "Fixation" means the embodiment of sounds, or of the representations thereof, from which they can be perceived, reproduced or communicated through a device; 202. 5. "Producer of a sound recording" means the person, or the legal entity, who or which takes the initiative and has the responsibility for the first fixation of the sounds of a performance or other sounds, or the representation of sounds; 202.6. "Publication of a fixed performance or a sound recording" means the offering of copies of the fixed performance or the sound recording to the public, with the consent of the right holder: Provided, That copies are offered to the public in reasonable quality; 202.7. "Broadcasting" means 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; 202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly authorized to engage in broadcasting; and 202.9 "Communication to the public of a performance or a sound recording" means the transmission to the public, by any medium, otherwise than by broadcasting, of sounds of a performance or the representations of sounds fixed in a sound recording. For purposes of Section 209, "communication to the public" includes making the sounds or representations of sounds fixed in a sound recording audible to the public.

203.5. The right of authorizing the making available to the public of their performances fixed in sound recordings, by wire or wireless means, in such a way that members of the public may access them from a place and time individually chosen by them. (Sec. 42, P.D. No. 49a) (c) Moral Rights of Performers Sec. 204; 204.1 Section 204. Moral Rights of Performers. - 204.1. Independently of a performer's economic rights, the performer, shall, as regards his live aural performances or performances fixed in sound recordings, have the right to claim to be identified as the performer of his performances, except where the omission is dictated by the manner of the use of the performance, and to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation. 204.2. The rights granted to a performer in accordance with Subsection 203.1 shall be maintained and exercised fifty (50) years after his death, by his heirs, and in default of heirs, the government, where protection is claimed. (Sec. 43, P.D. No. 49) (d) Limitation on Performers’ Rights Sec. 205; 205.2 Section 205. Limitation on Right. - 205.1. Subject to the provisions of Section 206, once the performer has authorized the broadcasting or fixation of his performance, the provisions of Sections 203 shall have no further application. 205.2. The provisions of Section 184 and Section 185 shall apply mutatis mutandis to performers. (n) (e) Additional Remuneration for Subsequent Communications or Broadcasts Sec. 206 Section 206. Additional Remuneration for Subsequent Communications or Broadcasts. - Unless otherwise provided in the contract, in every communication to the public or broadcast of a performance subsequent to the first communication or broadcast thereof by the broadcasting organization, the performer shall be entitled to an additional remuneration equivalent to at least five percent (5%) of the original compensation he or she received for the first communication or broadcast. (n) (f) Contract Terms Sec. 207

(b) Scope of Performers’ Rights Sec. 203

Section 207. Contract Terms. - Nothing in this Chapter shall be construed to deprive performers of the right to agree by contracts on terms and conditions more favorable for them in respect of any use of their performance. (n)

Section 203. Scope of Performers' Rights. - Subject to the provisions of Section 212, performers shall enjoy the following exclusive rights:

(g) Scope of Right on Sound Recordings Sec. 208; 210

203.1. As regards their performances, the right of authorizing:

CHAPTER XIII PRODUCERS OF SOUND RECORDINGS

(a) The broadcasting and other communication to the public of their performance; and (b) The fixation of their unfixed performance. 203.2. The right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings, in any manner or form; 203.3. Subject to the provisions of Section 206, the right of authorizing the first public distribution of the original and copies of their performance fixed in the sound recording through sale or rental or other forms of transfer of ownership; 203.4. The right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings, even after distribution of them by, or pursuant to the authorization by the performer; and

Rommel A. Tio

Section 208. Scope of Right. - Subject to the provisions of Section 212, producers of sound recordings shall enjoy the following exclusive rights: 208.1. The right to authorize the direct or indirect reproduction of their sound recordings, in any manner or form; the placing of these reproductions in the market and the right of rental or lending; 208.2. The right to authorize the first public distribution of the original and copies of their sound recordings through sale or rental or other forms of transferring ownership; and 208.3. The right to authorize the commercial rental to the public of the original and copies of their sound recordings, even after distribution by them by or pursuant to authorization by the producer. (Sec. 46, P.D. No. 49a)

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UNIVERSITY OF SAN CARLOS Section 210. Limitation of Right. - Sections 184 and 185 shall apply mutatis mutandis to the producer of sound recordings. (Sec. 48, P.D. No. 49a) (h) Communication to the Public on Sound Recordings Sec. 209 Section 209. Communication to the Public. - If a sound recording published for commercial purposes, or a reproduction of such sound recording, is used directly for broadcasting or for other communication to the public, or is publicly performed with the intention of making and enhancing profit, a single equitable remuneration for the performer or performers, and the producer of the sound recording shall be paid by the user to both the performers and the producer, who, in the absence of any agreement shall share equally. (Sec. 47, P.D. No. 49a) (i) Scope of Right of Broadcasting Organizations Sec. 211 CHAPTER XIV BROADCASTING ORGANIZATIONS Section 211. Scope of Right. - Subject to the provisions of Section 212, broadcasting organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts: 211.1. The rebroadcasting of their broadcasts; 211.2. The recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose of communication to the public of television broadcasts of the same; and 211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49) (j) Limitations on Rights Sec. 212 CHAPTER XV LIMITATIONS ON PROTECTION Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred to in those Sections are related to: 212.1. The use by a natural person exclusively for his own personal purposes; 212.2. Using short excerpts for reporting current events; 212.3. Use solely for the purpose of teaching or for scientific research; and 212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. 49a) ABS-CBN vs. Phil. Multi-Media System Inc. G.R. No. 175769-70, Jan. 19, 2009 Facts

ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed under the laws of the Republic of the Philippines to engage in television and radio broadcasting. It broadcasts television programs by wireless means to Metro Manila and nearby provinces, and by satellite to provincial stations through Channel 2 on Very High Frequency (VHF) and Channel 23 on Ultra High Frequency (UHF). The programs aired over Channels 2 and 23 are either produced by ABS-CBN or purchased from or licensed by other producers. ABS-CBN also owns regional television stations which pattern their programming in accordance with perceived demands of the region. Thus, television programs shown in Metro Manila and nearby provinces are not necessarily shown in other provinces. Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting System. It delivers digital direct-to-home (DTH) television via satellite to its subscribers all over the Philippines. PMSI was granted a legislative franchise under Republic Act No. 86305 on May 7, 1998 and was given a Provisional Authority by the National Telecommunications Commission (NTC) on February 1, 2000 to

Rommel A. Tio

install, operate and maintain a nationwide DTH satellite service. When it commenced operations, it offered as part of its program line-up ABS-CBN Channels 2 and 23, NBN, Channel 4, ABC Channel 5, GMA Channel 7, RPN Channel 9, and IBC Channel 13, together with other paid premium program channels. However, on April 25, 2001, ABS-CBN demanded for PMSI to cease and desist from rebroadcasting Channels 2 and 23. On April 27, 2001, PMSI replied that the rebroadcasting was in accordance with the authority granted it by NTC and its obligation under NTC Memorandum Circular No. 4-08-88, Section 6.2 of which requires all cable television system operators operating in a community within Grade “A” or “B” contours to carry the television signals of the authorized television broadcast stations. Thereafter, negotiations ensued between the parties in an effort to reach a settlement; however, the negotiations were terminated on April 4, 2002 by ABS-CBN allegedly due to PMSI’s inability to ensure the prevention of illegal retransmission and further rebroadcast of its signals, as well as the adverse effect of the rebroadcasts on the business operations of its regional television stations. On May 13, 2002, ABS-CBN filed with the IPO a complaint for “Violation of Laws Involving Property Rights, with Prayer for the Issuance of a Temporary Restraining Order and/or Writ of Preliminary Injunction,”. It alleged that PMSI’s unauthorized rebroadcasting of Channels 2 and 23 infringed on its broadcasting rights and copyright. On July 2, 2002, the Bureau of Legal Affairs (BLA) of the IPO granted ABS-CBN’s application for a temporary restraining order. On July 12, 2002, PMSI suspended its retransmission of Channels 2 and 23. PMSI Argument Broadcasting Channels 1 & 23 is subject to the must-carry rule under Memorandum Circular No. 04-08-88. Issues (1) Whether or not PMSI’s unauthorized rebroadcasting of Channels 2 and 23 is an infringement of its broadcasting rights and copyright under the Intellectual Property Code? (2) Whether or not Memorandum Circular No. 04-08-88 excludes DTH satellite television operators? Held 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. (13) Term of Protection in General (a) Term of Protection Sec. 213 Section 213. Term of Protection. - 213.1. Subject to the provisions of Subsections 213.2 to 213.5, the copyright in works under Sections 172

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UNIVERSITY OF SAN CARLOS and 173 shall be protected during the life of the author and for fifty (50) years after his death. This rule also applies to posthumous works. (Sec. 21, first sentence, P.D. No. 49a) (i) Joint Authorship Sec. 213.2

Facts

213.2. In case of works of joint authorship, the economic rights shall be protected during the life of the last surviving author and for fifty (50) years after his death. (Sec. 21, second sentence, P.D. No. 49) (ii) Anonymous or Pseudonymous Works Sec. 213.3 213.3. In case of anonymous or pseudonymous works, the copyright shall be protected for fifty (50) years from the date on which the work was first lawfully published: Provided, That where, before the expiration of the said period, the author's identity is revealed or is no longer in doubt, the provisions of Subsections 213.1. and 213.2 shall apply, as the case may be: Provided, further, That such works if not published before shall be protected for fifty (50) years counted from the making of the work. (Sec. 23, P.D. No. 49) (iii) Works of Applied Art Sec. 213. 4 213.4. In case of works of applied art the protection shall be for a period of twenty-five (25) years from the date of making. (Sec. 24(B), P.D. No. 49a) (iv) Photographic Works Sec. 213.5 213.5. In case of photographic works, the protection shall be for fifty (50) years from publication of the work and, if unpublished, fifty (50) years from the making. (Sec. 24(C), P.D. 49a) (v)Audio-visual Works Sec. 213.6 213.6. In case of audio-visual works including those produced by process analogous to photography or any process for making audio-visual recordings, the term shall be fifty (50) years from date of publication and, if unpublished, from the date of making. (Sec. 24(C), P.D. No. 49a) (vi) Calculation of Terms Sec. 214 Section 214. Calculation of Term. - The term of protection subsequent to the death of the author provided in the preceding Section shall run from the date of his death or of publication, but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them. (Sec. 25, P.D. No. 49) (b) Term of Protection Broadcasting Organizations Sec. 215; 215.2

for

Performers,

Producers

and

(a) For performances not incorporated in recordings, fifty (50) years from the end of the year in which the performance took place; and (b) For sound or image and sound recordings and for performances incorporated therein, fifty (50) years from the end of the year in which the recording took place. 215.2. In case of broadcasts, the term shall be twenty (20) years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law. (Sec. 55, P.D. No. 49a)

(a) How committed

Rommel A. Tio

Microsoft Corporation ("Microsoft"), a Delaware, United States corporation, owns the copyright and trademark to several computer software. Beltron Computer Philippines, Inc. ("Beltron") and Taiwan Machinery Display & Trade Center, Inc. ("TMTC") are domestic corporations. In May 1993, Microsoft and Beltron entered into a Licensing Agreement ("Agreement"). Under Section 2(a) of the Agreement, as amended in January 1994, Microsoft authorized Beltron, for a fee, to: (1) reproduce and install no more than one (1) copy of Microsoft software on each Customer System hard disk or Read Only Memory ("ROM") (2) distribute directly or indirectly and license copies of the Product in object code form to end users The Agreement also authorized Microsoft and Beltron to terminate the contract if the other fails to comply with any of the Agreement’s provisions. Microsoft terminated the Agreement effective 22 June 1995 for Beltron’s non-payment of royalties. Afterwards, Microsoft learned that Beltron were illegally copying and selling Microsoft software. Consequently, Microsoft, through its Philippine agent, hired the services of Pinkerton Consulting Services ("PCS"), a private investigative firm. Microsoft also sought the assistance of the National Bureau of Investigation ("NBI"). On 10 November 1995, a PCS employee and an NBI agent posing as representatives of a computer shop, bought computer hardware (central processing unit ("CPU") and computer monitor) and software (12 computer disks ("CDs") in read-only memory ("ROM") format) from Beltron. The CPU contained pre-installed Microsoft Windows 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic containers with Microsoft packaging, also contained Microsoft software. At least two of the CD-ROMs were "installers," so-called because they contain several software (Microsoft only or both Microsoft and nonMicrosoft). The PCS employee and the NBI agent were not given the Microsoft end-user license agreements, user’s manuals, registration cards or certificates of authenticity for the articles they purchased. The receipt issued to them for the CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC. BELTRON COMPUTER." The NBI searched the premises of Beltron and TMTC and seized several computer-related hardware, software, accessories, and paraphernalia based on the search warrant applied by Microsoft. Based on the articles obtained from Beltron and TMC, Microsoft and a certain Lotus Development Corporation ("Lotus Corporation") charged Beltron and TMC before the Department of Justice ("DOJ") with copyright infringement under Section 5(A) in relation to Section 29 of Presidential Decree No. 49, as amended, ("PD 49") and with unfair competition under Article 189(1) of the Revised Penal Code. Microsoft alleged that respondents illegally copied and sold Microsoft software. Issues Whether or not Beltron and TMC are liable for copyright infringement and unfair competition?

Section 215. Term of Protection for Performers, Producers and Broadcasting Organizations. - 215.1. The rights granted to performers and producers of sound recordings under this law shall expire:

(14) Infringement

Microsoft Corp. vs. Hwang G.R. No. 147043, June 21, 2005

Held

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. The elements of unfair competition under Article 189(1)43 of the Revised Penal Code are:

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Intellectual Property Law

UNIVERSITY OF SAN CARLOS (a) That the offender gives his goods the general appearance of the goods of another manufacturer or dealer; (b) That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their packages, or in the (3) device or words therein, or in (4) any other feature of their appearance (c) That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to do the same with a like purpose[; and] (d) That there is actual intent to deceive the public or defraud a competitor. Microsoft Corp. vs. Maxicorp Inc 438 SCRA 224 Facts Microsoft sued Maxicorp for copyright infringement and unfair competition for production, installing and selling of counterfeit Microsoft’s products. Microsoft alleged that they did not authorize Maxicorp for production or selling of their products. Issues Whether or not Maxicorp committed copyright infringement and unfair competition? Held 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; 216.2 CHAPTER XVII INFRINGEMENT Section 216. Remedies for Infringement. - 216.1. Any person infringing a right protected under this law shall be liable: (a) To an injunction restraining such infringement. The court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods. (b) Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to be just and shall not be regarded as penalty. (c) Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them. (d) Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order. (e) Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case. 216.2. In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. (Sec. 28, P.D. No. 49a) Habana vs. Robles 310 SCRA 522 (1999)

Rommel A. Tio

Facts

Habana is the author of the copyrighted book entitled College English for Today (CET). Robles and GoodWill is the author and publisher of the book entitled Developing English Proficiency (DEP). When Habana et al. try to revise their work they encountered by chance that the work of Robles (DEP) is similar of the contents, scheme of presentation, illustrations and illustrative examples in their own book. After an itemized examination and comparison of the two books (CET and DEP), Habana found that several pages of the Robles’ book are similar, if not all together a copy of Habana’s book, which is a case of plagiarism and copyright infringement. Habana then made demands for damages against respondents and also demanded that they cease and desist from further selling and distributing to the general public the infringed copies of Robles’ works. However, Robles ignored the demands, hence, Habana et al. filed with the Regional Trial Court, Makati, a complaint for “Infringement and/or unfair competition with damages” against private respondents. Issues Whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, Robles committed no copyright infringement? Held

No, Robles still committed copyright infringement. 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 Facts Issues Held (c) Criminal Penalties Sec. 217; 217.3 Section 217. Criminal Penalties. - 217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by: (a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense. (b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offense. (c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from five hundred thousand pesos (P500,000) to One million five hundred thousand pesos (P1,500,000) for the third and subsequent offenses. (d) In all cases, subsidiary imprisonment in cases of insolvency.

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UNIVERSITY OF SAN CARLOS

217.2. In determining the number of years of imprisonment and the amount of fine, the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement. 217.3. Any person who at the time when copyright subsists in a work has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of: (a) Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article; (b) Distributing the article for purpose of trade, or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work; or (c) Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. (Sec. 29, P.D. No. 49a) Section 10.2 (d) Affidavit Evidence Sec. 218; 218.2 Section 218. Affidavit Evidence. - 218.1. In an action under this Chapter, an affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that: (a) At the time specified therein, copyright subsisted in the work or other subject matter; (b) He or the person named therein is the owner of the copyright; and (c) The copy of the work or other subject matter annexed thereto is a true copy thereof, shall be admitted in evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters therein stated until the contrary is proved, and the court before which such affidavit is produced shall assume that the affidavit was made by or on behalf of the owner of the copyright. 218.2. In an action under this Chapter: (a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter; and (b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership. (c) Where the defendant, without good faith, puts in issue the questions of whether copyright subsists in a work or other subject matter to which the action relates, or the ownership of copyright in such work or subject matter, thereby occasioning unnecessary costs or delay in the proceedings, the court may direct that any costs to the defendant in respect of the action shall not be allowed by him and that any costs occasioned by the defendant to other parties shall be paid by him to such other parties. (n) (e) Presumption of Authorship Sec. 219; 219.2 Section 219. Presumption of Authorship. - 219.1. The natural person whose name is indicated on a work in the usual manner as the author shall, in the absence of proof to the contrary, be presumed to be the author of the work. This provision shall be applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the identity of the author.

Bayanihan Music Phils., Inc. vs. BMG Records G.R. No. 166337, March 7, 2005 Facts

Jose Mari Chan (Chan) entered into a contract with Bayanihan Music Philippines, Inc. (Bayanihan), whereunder the former assigned to the latter all his rights, interests and participation over his musical composition "Can We Just Stop and Talk A While". Three years after the parties entered into a similar contract over Chan's other musical composition entitled "Afraid For Love To Fade". On the strength of the abovementioned contracts, Bayanihan applied for and was granted by the National Library a Certificate of Copyright Registration for each of the two musical compositions.Apparently, without the knowledge and consent of petitioner Bayanihan, Chan authorized BMG Records (BMG) to record and distribute the aforementioned musical compositions in a then recently released album of singer Lea Salonga. Bayanihan informed Chan and BMG of its existing copyrights over the subject musical compositions and the alleged violation of such right by the two. Demands were made on both to settle the matter with Bayanihan. However no settlement was reached by the parties. Hence, Bayanihan filed a against Chan and BMG for violation of Section 216 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, with a prayer for the issuance of Temporary Restraining Order (TRO) and/or writ of preliminary injunction, enjoining respondent BMG from further recording and distributing the subject musical compositions in whatever form of musical products, and Chan from further granting any authority to record and distribute the same musical compositions. BMG Arguments: (1) the acts of recording and publication sought to be enjoined had already been consummated, thereby rendering moot Bayanihan's prayer for TRO and/or preliminary injunction; (2) there is no clear showing that petitioner Bayanihan would be greatly damaged by the refusal of the prayed for TRO and/or preliminary injunction. Chan Arguments: (1) it was never his intention to divest himself of all his rights and interest over the musical compositions in question; (2) the contracts he entered into with Bayanihan are mere music publication agreements giving Bayanihan, as assignee, the power to administer his copyright over his two songs and to act as the exclusive publisher thereof; (3) he was not cognizant of the application made by and the subsequent grant of copyrights to Bayanihan; (4) Bayanihan was remissed in its obligations under the contracts because it failed to effectively advertise his musical compositions for almost twenty (20) years, hence, he caused the rescission of said contracts in 1997. Issues

Whether or not Bayanihan as assignee of the copyrights over the musical compositions in question has a clear legal right to a writ of preliminary injunction? Held

No, Bayanihan has no right for right for injunction over the subject musical compositions. 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. Chan, the composer and author of the lyrics of the two (2) songs, is protected by the mere fact alone that he is the creator thereof, conformably with Republic Act No. 8293, otherwise known as the Intellectual Property Code, Section 172.2 of which reads:

219.2. The person or body corporate whose name appears on a audiovisual work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of said work. (n)

Rommel A. Tio

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UNIVERSITY OF SAN CARLOS 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. The copyrights obtained by Bayanihan on the basis of the selfsame two (2) contracts, suffice it to say 'that such purported copyrights are not presumed to subsist in accordance with Section 218[a] and [b], of the Intellectual Property Code, because respondent Chan had put in issue the existence thereof.

(b) Are incorporated in sound recordings that are protected under this Act; or (c) Which has not been fixed in sound recording but are carried by broadcast qualifying for protection under this Act. (n) (c) Of Sound Recordings Sec. 223 Section 223. Points of Attachment for Sound Recordings. - The provisions of this Act on the protection of sound recordings shall apply to:

(f) International Registration of Works Sec. 220 Section 220. International Registration of Works. - A statement concerning a work, recorded in an international register in accordance with an international treaty to which the Philippines is or may become a party, shall be construed as true until the contrary is proved except: 220.1. Where the statement cannot be valid under this Act or any other law concerning intellectual property. 220.2. Where the statement is contradicted by another statement recorded in the international register. (n)

223.1. Sound recordings the producers of which are nationals of the Philippines; and 223.2. Sound recordings that were first published in the Philippines. (n) (d) For Broadcast Sec. 224; 224.2 Section 224. Points of Attachment for Broadcasts. - 224.1. The provisions of this Act on the protection of broadcasts shall apply to: (a) Broadcasts of broadcasting organizations the headquarters of which are situated in the Philippines; and

(15) Points of Attachment of Rights (a)For Literary and Artistic Works and Derivative Works Sec. 221; 221.1

(b) Broadcasts transmitted from transmitters situated in the Philippines.

CHAPTER XVIII SCOPE OF APPLICATION Section 221. Points of Attachment for Works under Sections 172 and 173. - 221.1. The protection afforded by this Act to copyrightable works under Sections 172 and 173 shall apply to:

224.2. The provisions of this Act shall also apply to performers who, and to producers of sound recordings and broadcasting organizations which, are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. (n)

(a) Works of authors who are nationals of, or have their habitual residence in, the Philippines; (b) Audio-visual works the producer of which has his headquarters or habitual residence in the Philippines; (c) Works of architecture erected in the Philippines or other artistic works incorporated in a building or other structure located in the Philippines; (d) Works first published in the Philippines; and (e) Works first published in another country but also published in the Philippines within thirty days, irrespective of the nationality or residence of the authors. 221.2. The provisions of this Act shall also apply to works that are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. (n) Pearl & Dean Inc. vs. Shoemart Inc. G.R. No. 148222, August 15, 2003 Facts Issues Held (b) For Performers Sec. 222 Section 222. Points of Attachment for Performers. - The provisions of this Act on the protection of performers shall apply to: 222.1. Performers who are nationals of the Philippines; 222.2. Performers who are not nationals of the Philippines but whose performances: (a) Take place in the Philippines; or

Rommel A. Tio

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Intellectual Property Law