Intellectual Property Law

Intellectual
Property
Code
RA 8293, Jan. 18, 1998
Laws Repealed:
Patent Law (RA 165)
Trademark Law (RA 166)
Copyright Law (PD 49)
Articles 188 & 189 of the
Revised Penal Code

Intellectual Property
Refers to creations of the mind;
inventions, literary and artistic
works,
and
symbols,
names,
images, and designs used in
commerce. It means legal rights
which result from intellectual
activity in the industrial, scientific,
literary, and artistic fields. World
Intellectual Property Organization
Intellectual Property Handbook,
2004
There are NO property rights
protected if it is mere ideas or
mental
conceptions.
Even
if
expressed or embodied in a work,
news of the day and others, having
the character of mere items of
press information or any official
text, translation, or work of the
government. (Law on Copyright
Sec. 175
Works
under
Non-patentable
Inventions are also not protected
by law. (Sec. 22)
Intellectual Property Rights

Copyright
or
Related
or
neighboring rights;
Protection
of
Undisclosed
information
Industrial designs
Trademarks and Service Marks
Patents
Layout Designs (Topographies) of
Integrated Circuits
Geographic Indications
Sec. 4
Copyright

Confined to literary or artistic

works which are original creations
or artistic domain protected from
the moment of their creation.
Industrial Design
Any composition of lines or colors
or any three-dimensional form,
whether or not associated with
lines or colors: Provided, that such
composition or form gives a special
appearance to and can serve as
pattern for an industrial product or
handicratft (Sec. 112, IPC)
Trademark
Any visible sign capable of
distinguishing
the
goods
or
services of an enterprise and shall
include a stamped or marked
container of goods. (Section 121.1,
IPC, Elidad Kho vs. CA, GR No.
115758, March 11, 2002)
Patent Inventions
Any technical solution of a problem
in any field of human activity which
is new, involves an inventive step
and is industrially applicable (sec.
21, IPC).

Layout Design (Topography) of

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

Geographic Indication
One which identifies a good as
originatin in the territory of a TRIPS
member, or a region or locality in
that territory, where a given
quality,
reputation,
or
other
characteristic of the good is
essentially
attributable
to
its

geographical origin. (Art. 22, TRIPS

Agreement).
Layout Design (Topography)

The three-dimensional disposition,

however
expressed,
of
the
elements, at least one of which is
an active element, and of some or
all
of
the
three-dimensional
disposition
prepared
for
an
integrated circuit intended for
manufacture. (Sec. 112 (3), IPC)
For a layout design to be entitled to
protection it must be original in the
sense that they are the result of
their creators own intellectual
effort and are not commonplace
among creators or latout-designs
(topographies) and manufacturers
of integrated circuits at the time of
their creation.

International law Related Provisions

Persons entitled to the benefits of

the Intellectual Property Code
(Reciprocity):

Any person who is a national who is

domiciled or has a real or effective
industrial
establishment
in
a
country which:
Is a party to any convention
treaty, or agreement relating
to intellectual property rights
or the repression of unfair
competition to which the
Philippines is also a party; or

Any person who is a national who is

domiciled or has a real or effective
industrial
establishment
in
a
country which:

A layout design consisting of a

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

Technology Transfer Arrangements

Contracts or agreements involving

the
transfer
of
systematic
knowledge for the manufacture of
a product, the application of a
process, or rendering of a service
including management contracts;
and the transfer, assignment or
licensing of all forms of intellectual
property rights, including licensing
of
computer
software
except
computer software developed for
mass market (Sec. 4.2, IPC)
Undisclosed Information
Information which is:
Secret in the sense that it is
not, as a body or in the
precise configuration and
assembly of components,

generally known among or

readily accessible to persons
within
the
circles
that
normally deal with the kind of
information in question;
Has
commercial
value
because of its secrecy
Has
been
subject
to
reasonable steps under the
circumstances, by the person
lawfully in control of the
information, to keep it secret
Art 39 Trips

Extends reciprocal rights to

nationals of the Philippines
by law shall be entitled to
benefits
to
the
extent
necessary to give effect to
any
provision
of
such
convention,
treaty,
or
reciprocal law, in addition to
the rights to which any owner
of an intellectual property
right is otherwise entitled by
the IPC (Sec. 3)

If the foreign corporation not doing

business in the Philippines is suing
as a party of a treaty to which the
Philippines is a signatory, the fact

that is its suing under Sec. 3, RA

8293 need not be alleged anymore
and the court may take judicial
notice of such fact as it is
embodied in and supplied by the
Paris Convention (for the Protection
of Industrial Property) which forms
part of the law of the land,
Provided that the party suing
substantially complied with the
requirements of the law (Puma
Sports, K.G. vs. IAC, GR No. 75067,
Feb 26, 1988)

Failure to allege reciprocity is fatal

to the foreign corporations cause,
it being shown that it failed to
compy with the requirements of
the law. (Leviton Industries Inc. vs.
Salvador, G. R. No. 40163, June 19,
1982)
Principle of Reverse
Reciprocity

Reverse Reciprocity of Foreign

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

The IPO shall be divided into six (6)

Bureaus:
1. The Bureau of Patents;
2. The Bureau of Trademarks;
3. The Bureau of Legal
Affairs;
4.
The
Documentation,
Information and Technology
Transfer Bureau;
5.
The
Management
Information System and EDP
Bureau; and
6. The Administrative, Financial and
Personnel Services Bureau.

What is to be protected?

National Treatment Principle

The Philippines upon becoming a

member of the WTO has adhered
to the Trade Related Aspects of
Intellectual Property (TRIPS)
which provides that protection of
afforder to the member-state (with
respect to intellectual property)
must be extended to nationals of
other member-states.
Most-Favored Nation Principle

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

Copyright
An intangible incorporeal right:
to certain literary, scholarly
and artistic productions,
granted by statute to the
author or creator of the work,
giving him, his heirs and
assigns,
copyright
or
economic rights, which shall
consist of the exclusive right
to carry out, authorize or
prevent the acts listed in Sec.
177
A bundle of rights e.g. JK Rowling
can sell various rights like right to
publish (Scholastic), right to make
a movie from her story (Warner),
right to make toys from characters
(e.g., Mattel)

A negative right since it prevents

you from enjoying and/or deriving
benefit

Property protected is intellectual

Use consists of derivative rights,

e.g.
reproduction,
translation,
dramatization

Facts alone are not protected but if

it is arranged in an original
manner, then it is covered. (i.e.
databases)

Creativity is not the same as

originality. In copyright, what is
essential is the originality of the
work thus bringing it under the
protection of the law.

Note:
Reproduction
must
be
commercial, public and substantial

Note: substantial is vague; it

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

Test of Distribution - 1) whether or

not the work is to be sold and 2)
when is it to be sold.

Q. If you buy a book then after

reading it, you sell it to another,
infringement?

Definitions under Sec. 171 IPL

Author" is the natural person who

has created the work.

A "collective work" is a work which

has been created by two (2) or
more natural persons at the
initiative and under the direction of
another with the understanding
that it will be disclosed by the
latter under his own name and that
contributing natural persons will
not be identified.
See also
Communication to the public
Public lending
Public performance
Published works
Rental
Reproduction
Work of Applied Art
Work of the Government of
the Philippines

A. No.
The moment it is sold,
copyright protection as to public
distribution is over.
NOTE: There is a difference
between copyrighted work and the
medium where it is contained. So
you can sell your book, unless it is
provided
in
the
copyright
agreement
Does this apply to digital works?
Because under the first sale
doctrine, you can sell your copy.
First sale doctrine assumes there is
a tangible thing.
The paper
suggests that the doctrine should
not apply to internet.

Exclusive Rights (Copyright)

Sec. 177. Copyright or economic

rights shall consist of the exclusive
right to carry out, authorize or
prevent the following acts:

1. Reproduction of the work

or substantial portion of the
work;
2. Dramatization, translation,
adaptation,
abridgment,
arrangement
or
other
transformation of the work;
3. The first public distribution
of the original and each copy
of the work by sale or other
forms
of
transfer
of
ownership;

Sec. 177. Copyright or economic

rights shall consist of the exclusive

right to carry out, authorize or

prevent the following acts:
4. Rental of the original or a
copy of an audiovisual or
cinematographic
work,
a
work embodied in a sound
recording,
a
computer
program, a compilation of
data and other materials or a
musical work in graphic form,
irrespective of the ownership
of the original or the copy
which is the subject of the
rental;

performance can
without
the
communication.

Q. No TV in barrio, you buy TV,

subscribe from Home and charge
people to watch it. Violation?

A. Yes,
It
performance,
broadcast.

TV
point to multipoint vs.
point
to
point
(since
only
subscriber can receive)
Q. Is there broadcast?

Rental Stores need a license to rent

out works.

Sec. 177. Copyright or economic

rights shall consist of the exclusive
right to carry out, authorize or
prevent the following acts:
5. Public display of the
original or a copy of the
work;
6. Public performance of the
work; and
7. Other communication to
the public of the work;

NOTE: 171.6. "Public performance,"

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

In the case of a sound recording,

making
the
recorded
sounds
audible at a place or at places
where persons outside the normal
circle of a family and that familys
closest social acquaintances are or
can be present, irrespective of
whether they are or can be present
at the same place and at the same
time, or at different places and/or
at different times, and where the

be perceived
need
for

falls under public

same
rule
for

A. Yes, there is broadcast. Public

performance and communication to
the public is included. There is no
distinction as to TV or cable.

Website with copyrighted material

point to point, protection includes
broadcast and communicating to
the public so you have protection

Internet there is assumed right to

transmit material in internet unless
made very clear that there are
restrictions
E-Commerce Act you can
enter into internet contract
by clicking I agree in
buttons
Therefore: if you click I
agree that I will not violate
copyright and still violate
copyright, two causes of
action against you: 1) breach
of contract and 2) copyright
infringement
(AVO Notes)

Is copyright owner given right to

prevent importation of the article?

A. Parallel import in patent, the

right to limit importation is clearly
given.
But it is not clear in
copyright law.
IP Code provides in Sec. 190.

the importation of a copy of a

work by an individual for his

personal purposes shall be

permitted
without
the
authorization of the author
of, or other owner of
copyright in, the work under
the circumstances provided
(see Codal:
(a) When copies of the
work are not available
in the Philippines and:
b)
When
such
copies form parts of
libraries and personal
baggage belonging to
persons
or
families
arriving from foreign
countries and are not
intended for sale. (not
more than three)

because it is more functional.

Cause of action is violation of a
design patent. There is no need to
test the gray line since there is
another source of protection. (AVO
notes)

Q. Since only tangible things are

protected, are architectural plans
copyrightable?

A. Yes. This is an exception to the

rule
that
only
designs
are
copyrightable since architectural
plans
are
nothing
without
execution.

NOTE: There is a different rule with

regard to design of chips, e.g. if
design is obtained from reverse
engineering. Only plan of chip is
protected so reverse engineered
chip is not an infringement of
copyright.
NOTE: One of the defenses to
copyright infringement is absence
of access. If there is no access,
there is no infringement.

Works protected by a Copyright

Literary and Artistic Works which

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

See Article 172 IPL

When does protection begin?

Works are protected by the sole

fact of their creation, irrespective
of
their
mode
or
form
of
expression, as well as of their
content, quality and purpose.

If written, if recorded, then

copyrightable.
If not recorded,
there is no protection because it is
not in a tangible form.

Derivative Works
The following derivative works shall
also be protected by copyright:
1.
Dramatizations,
translations,
adaptations,
abridgments, arrangements,
and other alterations of
literary or artistic works; and
2. Collections of literary,
scholarly or artistic works,
and compilations of data and
other materials which are
original by reason of the
selection or coordination or
arrangement
of
their
contents.

Q.
Are
functional
objects
copyrightable? E.g. Figurine Lamps

How Derivative
Protected

A. Test = if thing is more artistic

than functional.
Here, figurine
lamp is more artistic so it is
copyrightable.
But Magw heels
would
not
be
copyrightable

See Article 172.2 IPL

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

Works

are

They shall be protected as new

works, BUT such new work shall
not:
affect the force of any
subsisting copyright upon the

original works employed or

any part thereof, or
be construed to imply any
right to such use of the
original works, or to secure or
extend copyright in such
original works.

Licensing is the means to protect

derivative works. In licensing, JK
Rowling allows you to make a
movie. Agreement should be clear:
you pay for the right to make the
movie, and that is all you have if
you do not stipulate on who retains
copyright to the movie. Default
rule is, she retains right to the
movie. (AVO Notes)

Licensing also includes rights like

coming up with the movie in DVD
format.

Q. If there is copyright violation,

what kind of action will you bring
criminal, civil, administrative?

A. Criminal. So that issues like

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

Works of the Government Sec.

176

No copyright for work done by the

Philippine government. However,
prior approval of the government
agency or office wherein the work
is created shall be necessary for
exploitation of such work for profit.

No prior approval required for

statutes, rules and regulations, etc.
Ownership of Copyright Sec.
178

Original literary and artistic works Copyright shall belong to the

author of the work;

In the case of works of joint

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

In the case of works of joint

authorship:
if a work of joint authorship
consists of parts that can
be used separately and the
author of each
part
can be identified, the author
of each part shall be the
original
owner
of
the
copyright in the part that he
has created;

In the case of work created by an

author during and in the course of
his employment, the copyright
shall belong to the:

Published Edition of Work

In addition to the right to publish

granted by the author, his heirs or
assigns, the publisher shall have a
copy right consisting merely of the
right of reproduction of the
typographical arrangement of the
published edition of the work. Sec.
174
Works
not
protected
Copyright Sec. 175

by

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.

EMPLOYEE - if the creation of

the object of copyright is
not a part of his regular
duties even if the EE uses the
time, facilities and materials
of the ER
EMPLOYER - if the work is the
result of the performance of
his regularly-assigned duties,
unless
there
is
an
agreement, express or
implied, to the contrary.

is photographed and published,

infringement of right of painter.

Contract has to be IN WRITING. If it

is not in writing, artist/creator
retains copyright.

In audiovisual work, the copyright

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

Q. Software programmer working in

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

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

By requiring the assignment of the

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

In the case of a work commissioned

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

Ownership of the work - shall

belong to the person who so
commissioned the work, but

The Copyright thereto - shall

remain with the creator,
unless there is a written
stipulation to the contrary;

General rule: copyright remains

with author. If commissioned work

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

In respect of letters, the copyright

shall belong to the writer subject to
the provisions of Article 723 of the
Civil Code.

Art. 723 NCC Letters and other

private communications in writing
are owned by the person to whom
they are addressed and delivered,
but they cannot be published or
disseminated without the consent
of the writer or his heirs. However,
the court may authorize their
publication or dissemination if the
public good or the interest of
justice so requires.

Not yet sent copyright belongs to

writer

Sent belongs to person to whom

it is addressed

If not received,
transferred.

copyright

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

Note: Copyright protection lasts

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

The reproduction or communication

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

The inclusion of a work in a

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

The recording made in schools,

universities,
or
educational
institutions of a work included in a
broadcast for the use of such
schools, universities or educational
institutions: Provided, That such
recording must be deleted within a
reasonable period after they were
first broadcast:
Provided, further, That such
recording may not be made
from audiovisual works which
are part of the general
cinema repertoire of feature
films except for brief excerpts
of the work;

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

The use made of a work by or

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

isnt

Anonymous and pseudonymous

works

For purposes of this act, the

publishers shall be deemed to
represent the authors of articles
and
other
writings
published
without the names of the authors
or under pseudonyms, unless the
contrary
appears,
or
the
pseudonyms or adopted name
leaves no doubts as to the authors
identity, or if the author of the
anonymous works discloses his
identity (Sec. 179)
Acts
not
considered
infringement (Sec. 184)
The recitation or performance of a
work:
once it has been lawfully
made accessible to the
public, and,
if done privately and free of
charge, or if made strictly for
a charitable or religious
institution or society.
The making of quotations from a
published
work
if
they
are
compatible with fair use and only
to the extent justified for the
purpose, including quotations from
newspaper articles and periodicals
in the form of press summaries:
Provided, That the source and the
name of the author, if appearing on
the work, are mentioned;

The public performance or the

communication to the public of a
work, in a place where no
admission fee is charged in respect
of such public performance or
communication, by a club or
institution
for
charitable
or
educational purpose only, whose
aim is not profit making, subject to
such other limitations as may be
provided in the Regulations.
Public display of the original or a
copy of the work not made by
means of a film, slide, television
image or otherwise on screen or by
means of any other device or
process: Provided, That either the
work has been published, or, that
the original or the copy displayed
has been sold, given away or
otherwise transferred to another
person by the author or his
successor in title.

more creative input than factual

work.

The amount and substantiality of

the portion used in relation to the
copyrighted work as a whole

The effect of the use upon the

potential market for or value of the
copyrighted work.

The fact that a work is unpublished

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

Fair use always involves a

balancing of interests of the
copyright owner and the public.

Any use made of a work for the

purpose of any judicial proceedings
or for the giving of professional
advice by a legal practitioner.
Fair Use

In determining whether the use

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

The purpose and character of the

use, including whether such use is
of a commercial nature or is for
non-profit education purposes;

Test is both the present and

future market

If portion copied is heart of

the work

The copyright owner has the

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

NOTE: When you raise fair use as a

defense, you admit the facts in the
complaint. Therefore:
1.)
Plaintiff will no longer
have to prove the facts,
the trial now centers on
whether or not there
was fair use.
2.)

The nature of the copyrighted

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

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

Q. Chris Lim copies substantial

portions of a book of a UP professor
on IP, then he gives it out to

students and anyone who wants a

copy. Infringement?

A. Yes. The fact that it is for free

does not necessarily mean it is fair
use.

Q. If the IP Code were amended to

read, So long as copyrighted
material is used in school, it is fair
use. Would this be constitutional?

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

Q. When Chris Lim says, I copied

large portions of Atty. Xs work, is
this a valid defense?

A. No. It may serve to limit liability,

but if substantial portions of the
work is copied, attribution will not
protect you. Protection only exists
when excerpts are used.

Note: Traditional copyright is easier

to protect than digital copyright.
(AVO Notes)

NAPSTER CASE

It was alleged that Napster should

be liable under a theory of either
contributory
infringement
or
vicarious liability as Napster, "with
knowledge
of
the
infringing
activity,
induces,
causes,
or
materially
contributes
to
the
infringing conduct of another. i.e.
Napster's
facilitation
of
the
identifying and downloading of files
Napster controlled the activity, by
allowing or filtering out the music
files.

Napster gets advertising revenue

based upon the number of "hits,"
and as such had a financial interest
in the infringement.

Isn't this a "fair use"?

A: The fair use doctrine, sometimes

called "an equitable rule of
reason," was initially judicially
created to allow the use of portions
of a work for purposes of criticism
and comment, news reporting,
scholarship, teaching, etc.

(1) The Purpose And Character Of

The Use

Mere upload/download copies of

the music files -- was not indicative
of the commercial or noncommercial nature of the work. In
the Napster case, the court found
the use to be commercial.

Reproduction Of Published Work

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 research and
private study, shall be permitted,
without the authorization of the
owner of copyright in the work.
187.2.
The permission granted
under Subsection 187.1 shall not
extend to the reproduction of:
(a)
A work of architecture
in the form of building or
other construction;

(b)
An entire book, or a
substantial part thereof, or of
a musical work in graphic
form by reprographic means;
(c)
A compilation of data
and other materials;

A host user sending a file cannot

be said to engage in personal use
when distributing that file to an
anonymous requester

Napster users get for free

something they would ordinarily
have to buy.

Commercial use is demonstrated

by a showing that repeated and
exploitative unauthorized copies of
copyrighted works were made to
save the expense of purchasing
copies. Financial gain includes the
receipt of other copyrighted works.

The amount and substantiality of

the portion used in relation to the
copyrighted work as a whole.

The end-users were downloading

and copies of an entire song. The
taking was therefore both
quantitatively and qualitatively
substantial.

The effect on the potential market

of value for the work.

Napster harmed the market for the

works in "at least" two ways:
(1) "it reduces audio CD sales
among college students" and
2) "it raises barriers to
plaintiffs' entry into the
market for the digital
downloading of music."
There was evidence of loss of retail
sales of CDs on college campuses.
The loss sales were taken to be
sufficient to support the finding of
"irreparable harm" needed for an
injunction. Napster interfered with
the record companies' efforts to
legitimately license their sound
recordings and musical
compositions for Internet-related
downloads themselves as it is easy
to get the music files for free.

Sony Corp. V. Universal City Studios,

Inc.,
464 U.S. 417 (1984)

Sony manufactures and sell home

video tape recorders. Universal
Studios own the copyrights on
some of the television programs
that are broadcast on the public
airwaves. Some members of the
general public use video tape
recorders to record some of these
broadcasts.

Universal commenced a copyright

infringement action against Sony
alleging that some individuals had
used Betamax video tape recorders
(VTR's) to record some of
respondents' copyrighted works
which had been exhibited on
commercially sponsored television.

Findings reveal that the average

member of the public uses a VTR
principally to record a program he
cannot view as it is being televised
and then to watch it once at a later
time. This practice, known as
"time-shifting," enlarges the
television viewing audience.

For that reason, a significant

amount of television programming
may be used in this manner
without objection from the owners
of the copyrights on the programs.
For the same reason, those who
objected to time-shifting in this
case, were unable to prove that the
practice has impaired the
commercial value of their
copyrights or has created any
likelihood of future harm.

Although every commercial use of

copyrighted material is
presumptively an unfair
exploitation of the monopoly
privilege that belongs to the owner
of the copyright, noncommercial
uses are a different matter. A
challenge to a noncommercial use

of a copyrighted work requires

proof either that the particular use
is harmful, or that if it should
become widespread, it would
adversely affect the potential
market for the copyrighted work.

Actual present harm need not be

shown; such a requirement would
leave the copyright holder with no
defense against predictable
damage. Nor is it necessary to
show with certainty that future
harm will result. What is necessary
is a showing by a preponderance of
the evidence that some meaningful
likelihood of future harm exists. If
the intended use is for commercial
gain, that likelihood may be
presumed.

If it is for a noncommercial
purpose, the likelihood must be
demonstrated. These factors are all
weighed in the "equitable rule of
reason" balance. Home timeshifting is fair use.

Sony demonstrated a significant

likelihood that substantial numbers
of copyright holders who license
their works for broadcast on free
television would not object to
having their broadcasts timeshifted by private viewers.
Universal failed to demonstrate
that time-shifting would cause any
likelihood of nonminimal harm to
the potential market for, or the
value of, their copyrighted works.

The Betamax is, therefore, capable

of substantial noninfringing uses.
Sony's sale of such equipment to
the general public does not
constitute contributory
infringement of respondents'
copyrights.
Transfer Or Assignment
Copyright Sec. 180

Of

Nota Bene: There are seven (7)

rights that may be the object of
Transfer or Assignment. (See
Exclusive Rights, supra)

Sec. 180. Rights of assignee. The

copyright
may
be
assigned in whole or in part.
Within the scope of the
assignment, the assignee is
entitled to all the rights and
remedies which the assignor
had with respect to the
copyright.
The copyright is not deemed
assigned inter vivos in whole
or in part unless there is a
written indication of such
intention.
The submission of a literary,
photographic or artistic work
to a newspaper, magazine or
periodical
for
publication
shall constitute only a license
to make a single publication
unless a greater right is
expressly granted. If two (2)
or more persons jointly own a
copyright or any part thereof,
neither of the owners shall be
entitled to grant licenses
without the prior written
consent of the other owner or
owners.

Sec. 181. Copyright and material

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

Sec. 182. Filing of assignment of

license. - An assignment or
exclusive license may be filed in
duplicate with the national library
upon payment of the prescribed
fee for registration in books and

records kept for the purpose. Upon

recording, a copy of the instrument
shall be, returned to the sender
with a notation of the fact of
record. Notice of the record shall be
published in the IPO gazette.

Assignment and License

Possible defenses to infringement ,
i.e.
1.) you acquired copyright already
copyright was assigned
2.) you were allowed to do the stuff
you did you have a license

Copyright a body of rights so you

can assign some of these rights to
other people (note, only Economic
Rights are assignable. Moral Rights
are not assignable/alienable.)
Assignment has to be in writing.
NOTE: When I give a copy to a
publication for publication, when
there is no agreement between the
parties, I retain the copyright and it
extends only to one publication.

Permission
from
all
the
authors/creators is necessary for
the transfer/assignment.

For
Films/Movies

ALL
the
writers/producers/song writers own
the copyright. But the producer
represents them.
Licenses vs. Transfer

A transfer of copyright is a
conveyance of ownership, much
like the sale of personal property.
When you transfer your entire
interest in a copyrighted work, or
one or more of your exclusive
rights under copyright, you give up
all claim to the right(s) you convey.

The transferee may:

Exercise the right or rights
transfered;
Authorize others to exercise
the right or rights transfered
via another transfer or via
license; and
Sue for copyright
infringement of the
transferred right(s).
Basically, because
ownership has already
been transferred, and
all the attributes of
ownership is already

Second reprints are not allowed,

without permission.
Licenses can be free or for a fee.

COLUMBIA PICTURES vs. CA G.R.

No. 110318. August 28, 1996
JOAQUIN vs. DRILON G.R. No.
108946. January 28, 1999
HABANA vs. ROBLES G.R.
No.
131522. July 19, 1999
BAYANIHAN MUSIC vs. BMG G.R.
No. 166337. March 7, 2005
Manly SpORTWEAR vs. DADOETTE
G.R. No. 165306 September 20,
2005
ABS-CBN vs. Philippine Multi-Medi
System. G.R. Nos. 175769-70
January 19, 2009
COPYRIGHT vs. LICENSE

As to Transfer of Ownership

Legal Standing to Sue for

Infringment
The owner of the Copyright
can sue.
No. Exception: If it is
stipulated in the license. The
assignee may even bring
criminal actions if stipulated.
Joint Ownership of Copyright

CASES

Copyright YES
License No. License only
involves the permission from
the author/creator of the
work and he retains
ownership over the
copyright.

vested in the
transferee.

A license is a grant of permission

to exercise your rights under
copyright. In copyright
terminology, there are "nonexclusive" and "exclusive" licenses.

When you give someone a nonexclusive license, you give the

licensee permission to exercise the
right in question, but you also
reserve the right to continue
exercising it yourself and to
authorize others to do so.

When you give someone

an exclusive license, you promise
that the licensee and only the
licensee may exercise the right.
This means that when you grant an
exclusive license, even you may
not exercise the granted right, nor
may you authorize anyone else to
do so.

Copyright law treats an exclusive

license like a transfer. Therefore,
the recipient of an exclusive license
to a right or right(s) may:
exercise the right or rights
licensed;
authorize others to exercise
the right or rights licensed
via a transfer or license; and
sue for copyright
infringement of the licensed
right(s).

Authors and Publishers, Inc.

(FILSCAP) is a non-stock, nonprofit association of
composers, lyric-writers and
music publishers.

FILSCAP, established in 1965,

administers the public
performance, mechanical
reproduction, and synchronization
rights granted by law to creators
and owners of original musical
works. It represents the rights of
both local and foreign composers,
lyric-writers and music publishers.
It owns or controls in the
Philippines an extensive worldwide
repertoire of copyrighted local and
foreign musical works.

It grants permission or license to

music users and provide
compensation through fees
collected to composers, authors
and publishers for usage of their
works, designated by all its
members to take charge of the
collection of annual royalty fees
from broadcast companies to
broadcast their songs, then split
among all the artists. Nonmembers, cannot avail of their
collection services.

FILSCAP is a member of the Parisbased International Confederation

of Societies of Authors and
Composers, and is recognized
worldwide as the sole and official
music copyright society in the
Philippines.

Exception: Unless otherwise

stipulated.

Digital Works

SEC. 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.
This is also known as
collective administration of
copyright. FILSCAP - Filipino
Society of Composers,

The moment one post materials on

an online site it is considered noncopyrightable unless the fact of its
being copyrighted is placed in a
conspicuous place in the site.

Importation for Personal Purposes

Section. 190.1. 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:
(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).

Only classes of work mentioned

under 172.1, 172.2 and 173 shall
be accepted for deposit by the
national library and the supreme
court library.

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,
the year of its first
publication,
(In copies produced after the
creator's death) the year of
death.
Certificate of Deposit

Deposit and Notice

Sec. 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 173:
REGISTER and DEPOSIT with
the National Library and the
Supreme Court Library.
within three (3) weeks,
personal delivery or by
registered mail,
How many copies?
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.

Q. Is the existence of a certificate

proof of the existence of copyright?
A. No. It is only proof of deposit.
Prior to RA 8293, registration
was mandatory in order to
acquire copyright.
Under the IP Code now, You
do not need registration in
the National Library to get
copyright protection.

Who issues the certificate?

National Library and Supreme
Court.
All works are to be deposited.

What is the significance of

certificate?
Proof of deposit. No
presumption arises as to
copyright ownership.

Q. Does the National Library review

if work is copyrightable subject
matter?
A. No. All it certifies is that you
deposited two copies there.

Santos vs. McCullough Oct. 31, 1964

Facts: 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,
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, for a price.

Ruling:The artist acquires

ownership of the product of his art.
At the time of its creation, he has
the absolute dominion over it. To
help the author protect his rights
the copyright law was enacted.

or prevent the acts

enumerated under Sec. 177
which includes the acts
covered under the second
class of property rights.

Proving Copyright

How do you prove copyright

ownership if you file cases?
You file an affidavit evidence
under Sec. 218.

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:
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;

In intellectual creations, a
distinction must be made between
two classes of property rights; the
fact of authorship and the right to
publish and/or distribute copies of
the creation.

Fact of authorship - the artist

cannot be divested of the same.
He may sell the right to print
hundred of his work yet the
purchaser of said right can
never be the author of the
creation.

Right to publish, republish, multiply

and/or distribute copies of the
intellectual creation Enjoys State
protection through the enactment
of copyright laws.
The author or his assigns or
heirs may have the work
copyrighted and once this is
legally accomplished any
infringement of the copyright
will render the infringer liable
to the owner of the copyright.

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

Under RA 8293, original intellectual

creations in the literary and artistic
domain are protected from the
moment of their creation.
Copyright or economic rights
shall consist of the exclusive
right to carry out, authorize

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.

Moral Rights

Moral rights can also be

denominated as follows:
Paternity attributing
ownership to someone
Privacy the right to
withhold publication
[Right against] False
Attribution
[Right to] Integrity

Acts not in violation of Moral Rights

Editing, arranging or adaptation for

publication, broadcast, use in a
motion picture, dramatization, or
mechanical or electrical
reproduction.
in accordance with the
reasonable and customary
standards or requirements of
the medium in which the
work is to be used,

Complete destruction of a work

unconditionally transferred by the
author be deemed t o violate such
rights. (Sec. 197)

In Re: Mariano Del Castillo

Dissenting Opinion of Justice Carpio

A.M. No. 10-7-17-SC.
February 8, 2011.
Moral Rights
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
Section 195. - An author may waive
his moral rights by a written
instrument, but no such waiver
shall be valid where its effects is to
permit another:
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;
To use the name of the
author with respect to
a work he did not
create.

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. 196)

Term of Moral Rights

Moral rights of an author 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. (Sec. 198)

The person or persons to be

charged with the posthumous
enforcement of moral 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.
Person" shall mean any
individual, partnership,
corporation, association, or
society.
Moral Rights (Remedies)

Remedies. - Moral rights shall be

entitled to the same rights and

remedies available to a copyright

owner.

Damages 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.

Berne Convention prescribed the

rights of creators

TRIPS Agreement here,

performers rights are called
related rights

So when you record the rendition of

Daniel Padillas rendition of
Prinsesa, a song by The Teeth,
three rights are violated:

Composer (The Teeth) the

copyright

Performer (Daniel Padilla) the

neighboring rights

Broadcaster/Producer (ABSCBN/Star Records) the neighboring

rights

Rights to Proceeds

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. 200)
Rights to proceeds 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. 201)

Definition of Terms

Exclusive Rights of Performers

As regards their performances, the

right of authorizing:
The broadcasting and other
communication to the public
of their performance; and
The fixation of their unfixed
performance.

The right of authorizing the direct

or indirect reproduction of their
performances fixed in sound
recordings, in any manner or form;

Subject to the provisions of Section

206, the right of authorizing the
first public distribution of the
original and copies of their

Rights of Performers

Neighboring Rights Performers

rights are also called neighboring
rights.
X composes a song: Y
performs the song.
X, as the composer, has the
song copyright. Ys right is to
his interpretation, a
neighboring right to the
copyright of the composer.
He did not create the song,
he just interpreted it.

Performers
Sound Recording
Producer of a sound recording
Publication
Broadcasting
Communication to the public
Fixation

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
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.

authorized the broadcasting or

fixation of his performance, the
provisions of Sections 203 shall
have no further application.

Right to proceeds

Moral Rights of Performers

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.

Term of Rights of Performers

The provisions of Section 184 and

Section 185 (Limitations on
Copyright) shall apply mutatis
mutandis (the necessary changes
having been made) to performers.

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.

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
5% of the original compensation he
or she received for the first
communication or broadcast. (Sec.
206)
Contract Terms
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.
Rights of Producers
Subject to the provisions of Section
212, producers of sound recordings
shall enjoy the following exclusive
rights:
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;

Limitation on Right

Subject to the provisions of Section

206, once the performer has

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

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.
If a sound recording published for
commercial purposes, or a
reproduction thereof, 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, in equal
shares, by default
Section 210. Limitation of Right. Sections 184 and 185 shall apply
mutatis mutandis to the producer
of sound recordings.

Rights of Braodcasters

Broadcasting organizations shall

enjoy the exclusive right to carry
out, authorize or prevent any of the
following acts:
The rebroadcasting of their
broadcasts;
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

The use of such records for

fresh transmissions or for
fresh recording.

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.

Limitations on Protection

Section 212. Limitations on Rights.

- Sections 203, 208 and 209 shall
not apply where the acts referred
to are related to:
The use by a natural person
exclusively for his own
personal purposes;
Using short excerpts for
reporting current events;
Use solely for the purpose of
teaching or for scientific
research; and
Fair use of the broadcast
subject to the conditions
under Section 185.

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