Professional Documents
Culture Documents
Intellectual Property Law2
Intellectual Property Law2
3. Geographic indications;
4. Industrial designs;
5. Patents;
A:
INTELLECTUAL DEFINITION
PROPERTIES
Trademark 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.
Tradename The name or designation identifying or
distinguishing an enterprise.
Copyright Literary and artistic works which are original
intellectual creations in the literary and artistic
domain protected from the moment of their
creation.
Patentable Any technical solution of a problem in any
Inventions field of human activity which is new, involves
an inventive step and is industrially applicable.
(Kho v. CA, G.R. No. 115758, Mar. 11, 2002).
A: It’s an indication which identifies a good as originating in the territory, where a given
quality, reputation or other characteristic of the good is essentially attributable to its
geographical origin. (Art. 22, Trade‐Related Aspects of Intellectual Property Rights)
3. TECHNOLOGY TRANSFER ARRANGEMENTS
A: It is an information which:
A: Those trade secrets are of a privileged nature. The protection of industrial property
encourages investments in new ideas and inventions and stimulates creative efforts for the
satisfaction of human needs. It speeds up transfer of technology and industrialization, and
thereby bring about social and economic progress. Verily, the protection of industrial secrets is
inextricably linked to the advancement of our economy and fosters healthy competition in
trade. (Air Philippines Corporation v. Pennswell, Inc., G.R. No. 172835, Dec. 13, 2007)
B. PATENTS
Q: What is a patent?
A: A statutory grant which confers to an inventor or his legal successor, in return for the
disclosure of the invention to the public, the right for a limited period of time to exclude others from
making, using, selling or importing the invention within the territory of the country that grants the
patent.
1. PATENTABLE INVENTIONS
Provided, that the application which has validly claimed the filing date of an earlier
application under Section 31 of the IPC, there shall be a prior art with effect as of the
filing date of such earlier application: Provided further, that the applicant or the
inventor identified in both applications are not one and the same. (Sec. 24, IPC)
Q: What is meant by “made available to the public” and what are its effects?
A: To be “made available to the public” means at least one member of the public has been able
to access knowledge of the invention without any restriction on passing that knowledge on to
others.
GR: When a work has already been made available to the public, it shall be non‐
patentable for absence of novelty.
1. The inventor;
a. In another application filed by the inventor and should have not have
been disclosed by the office, or
3. A third party which obtained the information directly or indirectly from the
inventor. (Sec. 25, IPC)
A: GR: An invention involves an inventive step if, having regard to prior art, it is not
obvious to a person skilled in the art at the time of the filing date or priority date of the application
claiming the invention. (Sec. 26, IPC)
XPN: In the case of drugs and medicines, there is no inventive step if the invention
results from the mere discovery of a new form or new property of a known substance which
does not result in the enhancement of the known efficacy of that substance. (Sec. 26.2, as
amended by R.A. 9502)
A: If any person possessing ordinary skill in the art was able to draw the inferences and he
constructs that the supposed inventor drew from prior art, then the latter did not really invent.
1. Be an ordinary practitioner aware of what was common general knowledge in the art
at the relevant date;
2. Have knowledge of all references that are sufficiently related to one another and to
the pertinent art and to have knowledge of all arts reasonably pertinent to the particular
problems with which the inventor was involved;
3. Have had at his disposal the normal means and capacity for routine work and
experimentation. (Rules and Regulations on Inventions, Rule 207)
2. Integrated circuit – A product, in its final form, or an intermediate form, in which the
elements, at least one of which is an active elements and some of all of the interconnections are
integrally formed in and or on a piece of material, and in which is intended to perform an
electronic function.
B. NON‐PATENTABLE INVENTIONS
2. In the case of Drugs and medicines, mere discovery of a new form or new property of
a known substance which does not result in the enhancement of the efficacy of that
substance;
3. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;
5. Plant varieties or animal breeds or essentially biological process for the production of
plants or animals. This provision shall not apply to micro‐ organisms and
non‐biological and microbiological processes;
6. Aesthetic creations;
7. Anything which is Contrary to public order or morality. (Sec. 22, IPC as amended by
R.A. 9502)
XPN: They can be patentable if they are part of a process (e.g. business process with a
step involving the use of a computer program).
C. OWNERSHIP OF A PATENT
3. 2 or more persons invented separately and independently of each other – To the person
who filed an application;
4. 2 or more applications are filed – the applicant who has the earliest filing date or, the
earliest priority date. First to file rule. (Sec. 29, IPC)
a. The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer;
A: 1. If two (2) or more persons have made the invention separately and independently of
each other, the right to the patent shall belong to the person who filed an application
for such invention, or
2. Where two or more applications are filed for the same invention, to the applicant
whi has the earliest filing date. (Sec. 29, IPC)
Q: Cheche invented a device that can convert rainwater into automobile fuel. She asked Macon,
a lawyer, to assist in getting her invention patented. Macon suggested that they form a
corporation with other friends and have the corporation apply for the patent, 80% of the
shares of stock thereof to be subscribed by Cheche and 5% by Macon. The corporation was
formed and the patent application was filed. However, Cheche died 3 months later of a
heart attack. Franco, the estranged husband of Cheche, contested the application of the
corporation and filed his own patent application as the sole surviving heir of Cheche. Decide
the issue with reasons.
A: The estranged husband of Cheche cannot successfully contest the application. The right over
inventions accrue from the moment of creation and as a right it can lawfully be assigned.
Once the title thereto is vested in the transferee, the latter has the right to apply for its
registration. The estranged husband of Cheche, if not disqualified to inherit, merely would
succeed to the interest of Cheche. (1990 Bar Question)
Q: Who may apply for a patent?
A: 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.
(Sec. 3, IPC)
3. Formality examination;
5. Publication of application;
6. Substantive examination;
7. Grant of Patent;
A: The application shall disclose the invention in a manner sufficiently clear and complete for it
to be carried out by a person skilled in the art.
Q: What is a claim?
A: Defines the matter for which protection is sought. Each claim shall be clear and concise, and
shall be supported by the description.
Q: What is an abstract?
A: A concise summary of the disclosure of the invention as contained in the description, claims
and merely serves as technical information.
A: The application shall relate to one invention only or to a group of inventions forming a single
general inventive concept. (Sec. 38.1) If several independent inventions which do not form a
single general inventive concept are claimed in one application, the application must be
restricted to a single invention. (Sec. 38.2, IPC)
A: An application for patent filed by any person who has previously applied for the same
invention in another country which by treaty, convention, or law affords similar privileges to
Filipino citizens, shall be considered as filed as of the date of filing the foreign application.
(Sec. 31, IPC)
Q: Leonard and Marvin applied for Letters Patent claiming the right of priority granted to foreign
applicants. Receipt of petitioners’ application was acknowledged by respondent Director on
March 6, 1954. Their Application for Letters Patent in the US for the same invention
indicated that the application in the US was filed on March 16, 1953. They were advised that
the "Specification" they had submitted was "incomplete" and that responsive action should
be filed with them four months from date of mailing, which was August 5, 1959. On July 3,
1962, petitioners submitted two complete copies of the Specification. Director of patents
held that petitioners' application may not be treated as filed. Is the director correct?
A: Yes, it is imperative that the application be complete in order that it may be accepted. It is
essential to the validity of Letters Patent that the specifications be full, definite, and specific.
The purpose of requiring a definite and accurate description of the process is to apprise the
public of what the patentee claims as his invention, to inform the Courts as to what they are
called upon to construe, and to convey to competing manufacturers and dealers
information of exactly what they are bound to avoid. To be entitled to the filing date of the
patent application, an invention disclosed in a previously filed application must be described
within the instant application in such a manner as to enable one skilled in the art to use the
same for a legally adequate utility. (Boothe v. Director of Patents, G.R. No. L‐24919, Jan. 28,
1980)
Q: What are the rights conferred by a patent application after the first publication?
A: The applicant shall have all the rights of a patentee against any person who, without his
authorization, exercised any of the rights conferred under Section 71 in relation to the
invention claimed in the published patent application, as if a patent had been granted for
that invention, provided that the said person had:
1. Actual knowledge that the invention that he was using was the subject matter of a
published application; or
2. Received written notice that the invention was the subject matter of a published
application being identified in the said notice by its serial number Note: That the action
may not be filed until after the grant of a patent on the published application and
within four (4) years from the commission of the acts complained of (Sec. 46, IPC).
A : A patent shall take effect on the date of the publication of the grant of the patent in the IPO
Gazette. (Sec. 50.3, IPC)
A: 1. Patent – 20 years from date of filing of application without renewal. (Sec. 54, IPC);
2. Utility Model – 7 years from the filing date of the application without renewal. (Sec.
109.3, IPC)
3. Industrial Design – 5 years from the filing date of the application, renewable for not
more than two (2) consecutive periods of five (5) years each. (Sec. 118.2, IPC)
2. The patent does not Disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the art; or
Q: What if the ground/s for cancellation relate to some of the claims or parts of the claim only?
A: Cancellation may be effected to such extent only. (Sec. 61.2, IPC)
Q: What are the remedies of persons not having the right to a patent?
A: If a person other than the applicant is declared by final court order or decision as having the
right to a patent, he may within 3 months after such decision has become final:
1. Prosecute the application as his own;
2. File a new patent application;
3. Request the application to be refused; or
4. Seek cancellation of the patent.
2. Prior user – Person other than the applicant, who in good faith, started using the
invention in the Philippines, or undertaken serious preparations to use the same, before the
filing date or priority date of the application shall have the right to continue the use thereof, but
this right shall only be transferred or assigned further with his enterprise or business. (Sec. 73,
IPC) .
3. Use by Government – A government agency or third person authorized by the
government may exploit invention even without agreement of a patent owner where: a. Public
interest, as determined by the appropriate agency of the government, so requires; or b. A
judicial or administrative body has determined that the manner of exploitation by owner of
patent is anti‐competitive. (Sec. 74, IPC)
4. Reverse reciprocity of foreign law – Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed by the law of a foreign country on a
Philippine national seeking protection of intellectual property rights in that country, shall
reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. (Sec.
231, IPC)
Note: Such acts of “underground sales and marketing” of genuine goods, undermines
the property rights and goodwill of the rightful exclusive distributor. Such
goodwill is protected by the law on unfair competition. (Solid Triangle v. Sheriff,
G.R. No. 144309, Nov. 23, 2001)
H. PATENT INFRINGEMENT
Q: Does the use of a patented process by a third person constitute an infringement when the
alleged infringer has substituted, in lieu of some unessential part of the patented process, a
well‐ known mechanical equivalent."
A: Yes, under the doctrine of mechanical equivalents, the patentee is protected from colorable
invasions of his patent under the guise of substitution of some part of his invention by some
well known mechanical equivalent. It is an infringement of the patent, if the substitute performs
the same function and was well known at the date of the patent as a proper substitute for the
omitted ingredient. (Gsell v. Yap‐Jue, G.R. No. L‐4720, Jan. 19, 1909)
Q: What are the remedies of the owner of the patent against infringers?
A: 1. Civil action for infringement – The owner may bring a civil action with the appropriate
Regional Trial Court to recover from infringer the damages sustained by the former, plus
attorney’s fees and other litigation expenses, and to secure an injunction for the protection of
his rights.
2. Criminal action for infringement – If the infringement is repeated, the infringer shall
be criminally liable and upon conviction, shall suffer imprisonment of not less than six (6)
months but not more than three (3) years and/or a fine not less than P100,000.00 but not more
than P300,000.00;
3. Administrative remedy – Where the amount of damages claimed is not less than
P200,000.00, the patentee may choose to file an administrative action against the infringer with
the Bureau of Legal Affairs (BLA). The BLA can issue injunctions, direct infringer to pay patentee
damages, but unlike regular courts, the BLA may not issue search and seizure warrants or
warrants of arrest.
I. LICENSING
Q: What are the grounds for compulsory licensing and the period for filing a petition?
A:
1. National emergency;
2. Where the public interest, at any time after the grant of the patent;
3. Where a judicial or administrative body has determined that the manner of
exploitation by the owner of the patent or his licensee is anti‐competitive at any
time after the grant of the patent;
4. In case of public non‐commercial use of the patent by the patentee, without
satisfactory reason at any time after the grant of the patent;
5. If the patented invention is not being worked in the Philippines on a commercial
scale, although capable of being worked, without satisfactory reason after the
expiration of 4 years from the date of filing of the application or 3 years from the
date of the patent whichever is later. (Sec. 93 in relation to Sec. 94);
6. Where the demand for patented drugs and medicines is not being met to an
adequate extent and on reasonable terms, as determined by the Secretary of the
Department of Health (Sec. 10, R.A. 9502)
Q: Grounds for cancellation of the compulsory license?
A:
1. Ground for the grant of the compulsory license no longer exists and is unlikely to recur;
2. Licensee has neither begun to supply the domestic market nor made serious
preparation therefore;
3. Licensee has not complied with the prescribed terms of the license.
Q: Cezar works in a car manufacturing company owned by Joab. Cezar is quite innovative and
loves to tinker with things. With the materials and parts of the car, he was able to invent a
gas‐ saving device that will enable cars to consume less gas. Francis, a co‐worker, saw how
Cezar created the device and likewise, came up with a similar gadget, also using scrap
materials and spare parts of the company. Thereafter, Francis filed an application for
registration of his device with the Bureau of Patents. Eighteen months later, Cezar filed his
application for the registration of his device with the Bureau of Patents. Q: Is the gas‐saving
device patentable? Explain.
A: Yes because it is new, it involves an inventive step and it is industrially applicable.
Q: Assuming that it is patentable, who is entitled to the patent? What, if any, is the remedy of
the losing party?
A: Francis is entitled to the patent, because he had the earlier filing date. The remedy of Cezar is
to file a petition in court for the cancellation of the patent of Francis on the ground that he
is the true and actual inventor, and ask for his substitution as patentee. (2005 Bar Question)
Q: Supposing Albert Einstein were alive today and he filed with the Intellectual Property Office
(IPO) an application for patent for his theory of relativity expressed in the formula E=mc2. The
IPO disapproved Einstein's application on the ground that his theory of relativity is not
patentable. Is the IPO's action correct?
A: Yes, the IPO’s action is correct. Section 22 of the Intellectual Property Law expressly states
that discoveries, scientific theories and mathematical methods are among those matters which
are not patentable. (2006 Bar Question)
Q: What is the effect if the assignment was not recorded in the IPO?
A: A deed of assignment affecting title shall be void as against any subsequent purchaser or
mortgagee for valuable consideration and without notice unless, it is so recorded in the
Office, within three (3) months from the date of said instrument, or prior to the subsequent
purchase or mortgage. Even without recordal, the instruments are binding upon the parties.
TRADEMARK TRADE NAME Goods or services offered by a proprietor or enterprise are designated by
trademark (goods) or service marks (services). A natural or artificial person who does business and
produces or performs the goods or services designated by trademark or service mark. Refers to the
goods. Refers to business and its goodwill. Acquired only by registration. Need not be registered.
Q: S Development Corporation sued Shangrila Corporation for using the "S" logo and the
tradename "Shangrila". The former claims that it was the first to register the logo and the
tradename in the Philippines and that it had been using the same in its restaurant business.
Shangrila Corporation counters that it is an affiliate of an international organization which
has been using such logo and tradename "Shangrila" for over 20 years. However, Shangrila
Corporation registered the tradename and logo in the Philippines only after the suit was
filed. Which of the two corporations has a better right to use the logo and the tradename?
Explain.
A: S Development Corporation has a better right to use the logo and tradename, since it was
the first to register the logo and tradename.
Alternative Answer:
S Development Corporation has a better right to use the logo and tradename,
because its certificate of registration upon which the infringement case is based remains
valid and subsisting for as long as it has not been cancelled. (Shangrila International
Hotel Management v. CA, G.R. No. 111580, June 21, 2001) (2005 Bar Question)
Q: How does the international affiliation of Shangrila Corporation affect the outcome of the
dispute? Explain.
A: Since Shangrila Corporation is not the owner of the logo and tradename but is merely an
affiliate of the international organization which has been using them it is not the owner
and does not have the rights of an owner. (Sec. 147, IPC)
Alternative Answer: The international affiliation of Shangrila Corporation shall have no effect
on the outcome of the dispute. Section 8 of the Paris Convention provides that
"there is no automatic protection afforded an entity whose tradename is
alleged to be infringed through the use of that name as a trademark by a local
entity." (Kabushi Kaisha Isetan v. IAC, G.R. No. 75420, Nov. 15, 1991) (2005 Bar
Question)
Q: Is there an infringement of trademark when two similar goods use the same words, “PALE
PILSEN”?
A: No, because “pale pilsen” are generic words descriptive of the color (pale) and of a type of
beer (pilsen), which is a light bohemian beer with strong hops flavor that originated in the City of Pilsen
in Czechoslovakia. Pilsen is a primarily geographically descriptive word, hence, non‐ registrable and not
appropriable by any beer manufacturer (Asia Brewery, Inc. v. CA, G.R. No. 103543, July 5, 1993).
Q: Laberge, Inc., manufactures and markets after‐shave lotion, shaving cream, deodorant,
talcum powder and toilet soap, using the trademark “PRUT”, which is registered with the Phil. Patent
Office. Laberge does not manufacture briefs and underwear and these items are not specified in the
certificate of registration. JG who manufactures briefs and underwear, wants to know whether, under
our laws, he can use and register the trademark “PRUTE” for his merchandise. What is your advice?
A: Yes, he can use and register the trademark “PRUTE” for his merchandise. The trademark
registered in the name of Laberge Inc. covers only after‐shave lotion, shaving cream, deodorant, talcum
powder and toilet soap. It does not cover briefs and underwear. The limit of the trademark is stated in
the certificate issued to Laberge Inc. It does not include briefs and underwear which are different
products protected by Laberge’s trademark. JG can register the trademark “PRUTE” to cover its briefs
and underwear (Faberge Inc. v. IAC, G.R. No. 71189, Nov. 4, 1992) (1994 Bar Question)
D. NON‐REGISTRABLE MARKS
Note: The dominancy test only relies on visual comparisons between two trademarks
whereas the totality or holistic test relies not only on the visual but also on the
aural and connotative comparisons and overall impressions between the two
trademarks. (Societe Des Produits Nestl, S.A. v. CA, G.R. No. 112012, Apr. 4, 2001)
Q: N Corporation manufactures rubber shoes under the trademark “Jordann” which hit the
Philippine market in 1985, and registered its trademark with the Bureau of Patents,
Trademarks and Technology in 1990. PK Company also manufactures rubber shoes with the
trademark “Javorski” which it registered with BPTTT in 1978. In 1992, PK Co adopted and
copied the design of N Corporation’s “Jordann” rubber shoes, both as to shape and color, but
retained the trademark “Javorski” on its products. May PK Company be held liable to N Co?
Explain.
A: PK Co may be liable for unfairly competing against N Co. By copying the design, shape and
color of N Corporation’s “Jordann” rubber shoes and using the same in its rubber shoes
trademarked “Javorski,” PK is obviously trying to pass off its shoes for those of N. It is of no
moment that the trademark “Javorski” was registered ahead of the trademark “Jordann.”
Priority in registration is not material in an action for unfair competition as distinguished
from an action for infringement of trademark. The basis of an action for unfair competition is
confusing and misleading similarity in general appearance, not similarity of trademarks.
(Converse Rubber Co. v. Jacinto Rubber & Plastics Co., G.R. Nos. 27425, 30505, Apr. 28, 1980)
(1996 Bar Question)
Note: While there is confusion of goods when the products are competing, confusion of
business exists when the products are non‐competing but related enough to produce
confusion of affiliation.
G. WELL‐KNOWN MARKS
Q: What is the effect of use of Indications by third parties for purposes other than those for
which the mark is used?
A: Registration of the mark shall not confer on the registered owner the right to preclude third
parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services.
Q: What are the remedies of the owner of the trademark against infringers?
A:
1. Civil — both civil and criminal actions may be filed with the Regional Trial Courts. The
owner of the registered mark may ask the court to issue a preliminary injunction to quickly
prevent infringer from causing damage to his business. Furthermore, the court will require
infringer to pay damages to the owner of the mark provided defendant is shown to have had
notice of the registration of the mark (which is presumed if a letter R within a circle is appended)
and stop him permanently from using the mark.
2. Criminal — the owner of the trademark may ask the court to issue a search warrant
and in appropriate cases, remedies available shall also include the seizure, forfeiture and
destruction of the infringing goods and of any materials and implements the predominant use of
which has been in the commission of the offense.
3. Administrative — This remedy is the same as in patent infringement cases. If the
amount of damages claimed is not less than P200,000.00, the registrant may choose to seek
redress against the infringer by filing an administrative action against the infringer with the
Bureau of Legal Affairs.
Q: The NBI found that SG Inc. is engaged in the reproduction and distribution of counterfeit
"playstation games" and thus applied with the Manila RTC warrants to search respondent's
premises in Cavite. RTC granted such warrants and thus, the NBI served the search warrants
on the subject premises. SG Inc. questioned the validity of the warrants due to wrong venue
since the RTC of Manila had no jurisdiction to issue a search warrant enforceable in Cavite. Is
the contention of SG Inc. correct?
A: No, unfair competition is a transitory or continuing offense under Section 168 of Republic Act
No. 8293. As such, petitioner may apply for a search warrant in any court where any element
of the alleged offense was committed, including any of the courts within Metro Manila and
may be validly enforced in Cavite. (Sony Computer Entertainment Inc. v. Supergreen Inc. G.R.
No. 161823, Mar. 22, 2007)
Note: Items 4, 5 and 6 only applies to imported products and those imported articles
shall not be admitted to entry at any customhouse of the Philippines (Sec. 166, IPC).
M. COLLECTIVE MARKS
Q: What is a collective mark?
A: A "collective mark" or “collective trade‐name" is a mark or trade‐name used by the members
of a cooperative, an association or other collective group or organization. (Sec. 40, R.A. 166)
Note: The registration of a collective mark, or an application therefor shall not be the
subject of a license contract.
N. CRIMINAL PENALTIES
Q: What are the criminal penalties for unfair competition, infringement, false designation of
origin and false representations?
A: A penalty of imprisonment from 2 years to 5and a fine ranging from P50,000 to P200,000
(Sec. 170, IPC.)
IV. COPYRIGHTS
Q: What is copyright?
A: A right over literary and artistic works which are original intellectual creations in the literary
and artistic domain protected from the moment of creation. (Sec. 171.1, IPC)
A. BASIC PRINCIPLES
Q: What are the elements of copyrightability?
A:
1. Originality – Must have been created by the author’s own skill, labor, and judgment
without directly copying or evasively imitating the work of another. (Ching Kian Chuan v. CA,
G.R. No. 130360, Aug. 15, 2001)
2. Expression – Must be embodied in a medium sufficiently permanent or stable to
permit it to be perceived, reproduced or communicated for a period more than a transitory
duration.
Q: When does copyright vest? A: Works are protected from the time of their creation,
irrespective of their mode or form of expression, as well as of their content, quality and
purpose.
B. COPYRIGHTABLE WORKS
Q: P&D was granted a copyright on the technical drawings of light boxes as "advertising display
units". SMI, however, manufactured similar or identical to the light box illustrated in the
technical drawings copyrighted by P&D for leasing out to different advertisers. Was this an
infringement of P&D’s copyright over the technical drawings?
A: No, P&D’s copyright protection extended only to the technical drawings and not to the light
box itself. The light box was not a literary or artistic piece which could be copyrighted under the
copyright law. If SMI reprinted P&D’s technical drawings for sale to the public without license
from P&D, then no doubt they would have been guilty of copyright infringement. Only the
expression of an idea is protected by copyright, not the idea itself. If what P&D sought was
exclusivity over the light boxes, it should have instead procured a patent over the light boxes
itself. (Pearl and Dean Inc. v. Shoe Mart Inc., GR No. 148222, Aug. 15, 2003)
Q: Juan Xavier wrote and published a story similar to an unpublished copyrighted story of
Manoling Santiago. It was, however, conclusively proven that Juan Xavier was not aware that
the story of Manoling Santiago was protected by copyright. Manoling Santiago sued Juan Xavier
for infringement of copyright. Is Juan Xavier liable?
A: Yes. Juan Xavier is liable for infringement of copyright. It is not necessary that Juan Xavier is
aware that the story of Manoling Santiago was protected by copyright. The work of Manoling
Santiago is protected from the time of its creation. (1998 Bar Question)
Note: There will still be originality sufficient to warrant copyright protection if “the
author, through his skill and effort, has contributed a distinguishable variation from
the older works.” In such a case, of course, only those parts which are new are
protected by the new copyright. Hence, in such a case, there is no case of
infringement. Juan Xavier is no less an “author” because others have preceded
him.
C. NON‐COPYRIGHTABLE WORKS
Q: BJ Productions, Inc. (BJPI) is the holder/grantee of a copyright of “Rhoda and Me”, a dating
game show aired from 1970 to 1977. Subsequently, however, RPN aired the game show “It’s a
Date”, which was produced by IXL Productions, Inc. (IXL). As such, an information for copyright
infringement was filed against RPN. The DOJ Secretary directed the prosecutor to dismiss the
case for lack of probable cause. Was the decision of the DOJ Secretary correct?
A: Yes, the format of a show is not copyrightable. The copyright law enumerates the classes of
work entitled to copyright protection.The format or mechanics of a television show is not
included in the list of protected works. For this reason, the protection afforded by the law
cannot be extended to cover them. 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. The copyright does not
extend to the general concept or format of its dating game show. (Joaquin v. Drilon, G.R. No.
108946, Jan. 28, 1999)
Q: Rural is a certified public utility providing telephone service to several communities in Manila.
It obtains data for the directory from subscribers, who must provide their names and addresses
to obtain telephone service. Feist Publications, Inc., is a publishing company that specializes in
area‐wide telephone directories covering a much larger geographic range than directories such
as Rural's. Feist extracted the listings it needed from Rurals’s directory without its consent. Are
directories copyrightable?
A: No, directories are not copyrightable and therefore the use of them does not constitute
infringement. The Intellectual Property Code mandates originality as a prerequisite for copyright
protection. This requirement necessitates independent creation plus a modicum of creativity.
Since facts do not owe their origin to an act of authorship, they are not original, and thus are not
copyrightable. A compilation is not copyrightable per se, but is copyrightable only if its facts
have been "selected, coordinated, or arranged in such a way that the resulting work as a whole
constitutes an original work of authorship." Thus, the statute envisions that some ways of
selecting, coordinating, and arranging data are not sufficiently original to trigger copyright
protection. Even a compilation that is copyrightable receives only limited protection, for the
copyright does not extend to facts contained in the compilation. (Feist Publications, Inc. v.
Rural Telephone Service Co., 499 U.S. 340)
2. Moral rights – For reasons of professionalism and propriety, the author has the right:
a. To require that the authorship of the works be attributed to him (attribution
right);
b. To make any alterations of his work prior to, or to withhold it from
publication;
c. Right to preserve integrity of work, object to any distortion, mutilation or
other modification which would be prejudicial to his honor or reputation;
and d. 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.193, IPC)
Q: ABC 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.”
Soda Fountain Restaurant hired a combo with professional singers to play and sing musical
compositions to entertain and amuse customers. They performed the above‐ mentioned
compositions without any license or permission from ABC to play or sing the same. Accordingly,
ABC demanded from Soda Fountain payment of the necessary license fee for the playing and
singing of aforesaid compositions but the demand was ignored. ABC filed an infringement case
against Soda Fountain. Does the playing and singing of musical compositions inside an
establishment constitute public performance for profit?
A: Yes. The patrons of the Soda Fountain pay only for the food and drinks and apparently not for
listening to the music, but the music provided is for the purpose of entertaining and amusing the
customers in order to make the establishment more attractive and desirable. For the playing
and singing the musical compositions involved, the combo was paid as independent contractors
by Soda Fountain. It is therefore obvious that the expenses entailed thereby are added to the
overhead of the restaurant which are either eventually charged in the price of the food and
drinks or to the overall total of additional income produced by the bigger volume of business
which the entertainment was programmed to attract. Consequently, it is beyond question that
the playing and singing of the combo in defendant‐ appellee's restaurant constituted
performance for profit. (FILSCAP v. Tan, G.R., No. L‐36402, Mar. 16, 1987)
Q: Malang Santos designed for Ambassador Neri for his personal christmas greetings for the
year 1959 a christmas card depicting a Philippine rural Christmas time scene. The following year
McCullough Printing Company, without the knowledge and authority of Santos, displayed the
very design in its album of Christmas cards and offered it for sale. Santos filed for copyright
infringement contending that the publication of his design was limited as it was intended only
for Ambassador Neri’s use, hence, it could not be used for public consumption. Is there
copyright infringement?
A: No. If there were a condition that the cards are to be limitedly published, then Ambassador
Neri would be the aggrieved party, and not Santos. And even 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 rights
under a copyright becomes impossible. (Malang v. McCullough Printing Company, G.R. No.
L‐19439, Oct. 31, 1964)
Note: Fair use and limitations to copyrights shall apply mutatis mutandis to
performers. (Ibid.)
Note: Fair use and limitations to copyrights shall apply mutatis mutandis to performers.
(Sec. 210, IPC)
Q: What are the term of protection given to performers, producers and broadcasting
organizations?
A:
1. For performances not incorporated in recordings, 50 years from the end of the year in
which the performance took place; and
2. For sound or image and sound recordings and for performances incorporated therein,
50 years from the end of the year in which the recording took place.
3. In case of broadcasts, the term shall be 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. 215, IPC)
Q: To whom are the rights granted to copyrightable works applicable (points of attachment)?
A:
1. For literary and artistic works and derivative works
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. (Sec. 221, IPC)
2. For perfomers
a. Performers who are nationals of the Philippines;
b. Performers who are not nationals of the Philippines but whose performances:
i. Take place in the Philippines; or
ii. Are incorporated in sound recordings that are protected under IPC; or
iii. Which has not been fixed in sound recording but are carried by broadcast
qualifying for protection under IPC. (Sec. 222, IPC)
3. Of sound recordings
a. Sound recordings the producers of which are nationals of the Philippines; and
b. Sound recordings that were first published in the Philippines. (Sec. 223, IPC)
4. For broadcast
a. Broadcasts of broadcasting organizations the headquarters of which are situated in
the Philippines; and
b. Broadcasts transmitted from transmitters situated in the Philippines. (Sec. 224, IPC)
Note: The provisions of IPC shall also apply to works, performers, producers of sound
recordings and broadcasting organizations 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. (Sec. 221.2 and 224.2, IPC)
Note: If work of joint authorship consists of parts that can be used separately, then
the author of each part shall be the original owner of the copyright in the
part that he has created. (Sec. 178.2, IPC)
4. The person who commissioned the work shall own the work but the copyright thereto
shall remain with the creator – In cases of work pursuant to commission, unless there is
a written stipulation to the contrary. (Sec. 178.4, IPC)
5. GR: Producer, the author of the scenario, the composer of the music, the film
director, and the author of the work so adapted – audiovisual work.
XPN: The producers shall exercise the copyright to an extent required for the
exhibition of the work in any manner. (Sec. 178.5, IPC)
6. Writer – in respect of letters subject to the provisions of Article 723, Civil Code. (Sec.
178.6, IPC)
7. GR: Publishers – deemed representatives of the author in case of anonymous
and pseudonymous works.
XPN: When the contrary appears or where the pseudonym or adopted name
leaves no doubt as to the author’s identity; or author discloses his identity.
8. In case of collective works – contributor is deemed to have waived his right unless he
expressly reserves it. (Sec. 196, IPC)
Q: BR and CT are noted artists whose paintings are highly prized by collectors. Dr. DL
commissioned them to paint a mural at the main lobby of his new hospital for children. Both
agreed to collaborate on the project for a total fee of two million pesos to be equally divided
between them. It was also agreed that Dr. DL had to provide all the materials for the painting
and pay for the wages of technicians and laborers needed for the work on the project.
Assume that the project is completed and both BR and CT are fully paid the amount of P2M
as artists' fee by DL. Under the law on intellectual property, who will own the mural? Who
will own the copyright in the mural? Why? Explain.
A: Under Sec. 178.4 of the Intellectual Property Code, in case of commissioned work, the creator
(in the absence of a written stipulation to the contrary) owns the copyright, but the work
itself belongs to the person who commissioned the creation. Accordingly, the mural belongs
to DL. However, BR and CT own the copyright, since there is no stipulation to the contrary.
(1995 Bar Question)
Q: What is the principle of “automatic protection”? A: Works are protected by the sole fact of
their creation irrespective of their content, quality or purpose. Such rights are conferred from
the moment of creation. Q: What is the term of protection of copyright?
A: TYPE of WORK DURATION Single creation Lifetime of the creator and for 50 years after his
death Joint creation Lifetime of the last surviving co‐creator and for 50 years after his death.
Anonymous or pseudonymous work 50 years after the date of their first publication; except
where before the expiration of said period, the author’s identity is revealed or is no longer in
doubt, the 1st two mentioned rules shall apply; or if unpublished, 50 years from their making.
Work of an applied art of an artistic creation with utilitarian functions or incorporated in a useful
article whether made by hand or produced on an industrial scale 25 years from the time of the
making. Audio‐visual works including those produced by process analogous to photography or
any process for making audio‐visual recordings 50 years from date of publication and, if
unpublished, from the date of making. Newspaper Article Lifetime of the author and 50 years
after. (Sec. 213, IPC)
F. LIMITATIONS ON COPYRIGHT
6. 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:
a. When copies of the work are not available in the Philippines and:
i. Not more than one copy at one time is imported for strictly individual use
only; or
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 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.
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. (Sec. 190, IPC)
Note: 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. (Sec. 182.2, IPC)
Q: Ford contracted with H&R Publishing to publish his unwritten memoirs. The agreement gave
H&R the exclusive first serial right to license prepublication excerpts. As the memoirs were
nearing completion, H&R, as the copyright holders, negotiated a prepublication licensing
agreement with Time Magazine. Shortly before the Time article's scheduled release, an
unauthorized source provided The Nation Magazine with the unpublished Ford manuscript. An
editor of The Nation produced an article which consisted of verbatim quotes of copyrighted
expression taken from the manuscript which were the gist of the memoirs. As a result, Time
refused to pay H&R as agreed upon in the prepublication agreement. H&R brought an action for
infringement against Nation Magazine. Nation magazine contended that the article it
published constitutes fair use and thus it cannot be held liable for infringement. Is the
contention correct?
A: No, the article does not constitute fair use. Taking into account the factors as especially
relevant in determining fair use, leads to the conclusion that the use in question here was not
fair. First of all, the purpose or character of the use was commercial (to scoop a competitor),
meaning that The Nation's use was not a good faith use of fair use in simply reporting news.
Also, although the verbatim quotes in question were an insubstantial portion of the Ford
manuscript, they qualitatively embodied Mr. Ford's distinctive expression, and played a key role
in the infringing article. And lastly, the effect of the use on the potential market for the value of
the copyrighted work was also great, because the Nation's liberal use of verbatim excerpts
posed substantial potential for damage to the marketability of first serialization rights in the
copyrighted work. (Harper & Row v. Nation Enterprises, 471 U.S. 539, 1985)
Note: If two 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. (Ibid.)
Note: As a prima facie proof, the affidavit shifts the burden of proof to the defendant,
to prove the ownership of the copyrighted work.