INTELLECTUAL PROPERTY Law Reviewer PDF

INTELLECTUAL PROPERTY What is your understanding of IP? How does IP affect a nation’s growth and development? IP is to protect intellectual property in the sense that these properties may not necessarily be tangible but creations of a mind. Similar to physical properties such as re...

INTELLECTUAL PROPERTY What is your understanding of IP? How does IP affect a nation’s growth and development? IP is to protect intellectual property in the sense that these properties may not necessarily be tangible but creations of a mind. Similar to physical properties such as real estate, intellectual property should also be protected from being stolen and such. Refer to laws that will recognize rights of individuals over their creation ○ Creations of man ○ Protecting creation of man (everything man made) Kinds A. Copyright Right over literary and artistic works which are original creations in the literary and artistic domain protected from the moment of creation. Keywords: It is a right granted to artist Literary and artistic works Original Plagiarism vs. Copyright Infringement Copyright Infringement - act of using copyrighted work without consent or authorization of the rightful copyright owner - No consent Plagiarism - intention to pass off something as an original work. Taking credit for work done by others - No acknowledgement B. Patent Car models Inventions Industrial property C. Trademark Trademarks protect the words, symbols, sounds, or logos used to identify the source of goods or services. Industrial property Importance of Intellectual Property Can earn from creation History/Intro of Law on Copyright Legal basis 1) 1987 constitution a) Protects IP 2) RA 8293 dated 1998 amended by PD 49 a) PD 49 is a presidential decree because it was in the time of ferdinand marcos wherein he was both the congress and executive 3) Berne convention a) In switzerland b) International treaty i) PHI became a signatory to this 4) E commerce act (RA 8792) a) contracts/transactions can be entered online/ electronically b) Penalizes violations of IP Law THE LAW ON COPYRIGHT CHAPTER I PRELIMINARY PROVISIONS Sec 171. Definitions of terms "Author" is the natural person who has created the work; Author is the one who created the work and is a natural person 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; Work which has been created by 2 or more natural persons at the initiative; and they have reached an agreement that contributing natural persons will not be identified; "Communication to the public" or "communicate to the public" means the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them; Making a work available to public; whether through internet or physically A "computer" is an electronic or similar device having information-processing capabilities, and a "computer program" is a set of instructions expressed in words, codes, schemes or in any other form, which is capable when incorporated in a medium that the computer can read, of causing the computer to perform or achieve a particular task or result; Self-explanatory "Public lending" is the transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public library or archive;  Temporary lending of the work to a public institution; non profit purposes "Public performance", in the case of a work other than an audiovisual work, is the recitation, playing, dancing, acting or otherwise performing the work, either directly or by means of any device or process; in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds accompanying it audible; and, in the case of a sound recording, making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and that family's closest social acquaintances are or can be present, irrespective of whether they are or can be present at the same place and at the same time, or at different places and/or at different times, and where the performance can be perceived without the need for communication within the meaning of Subsection 171.3; Works other than audiovisual work; basically physical works such as dance performances "Published works" means works, which, with the consent of the authors, are made available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them: Provided, That availability of such copies has been such, as to satisfy the reasonable requirements of the public, having regard to the nature of the work; "Published works" refers to works made available to the public with the author's consent, in ways that fulfill public demand. "Rental" is the transfer of the possession of the original or a copy of a work or a sound recording for a limited period of time, for profit-making purposes; Temporary transfer of the work; FOR PROFIT PURPOSES "Reproduction" is the making of one (1) or more copies of a work or a sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a); Making more copies of a work in any manner or form A "work of applied art" is an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale; Work of applied art" refers to artistic creations with functional uses A painting is not a work of applied art A "work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as a part of his regularly prescribed official duties. works produced by government employees as part of their official duties Books by officials/ employees of the government CHAPTER II ORIGINAL WORKS Section 172. Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: a. Books, pamphlets, articles and other writings; b. Periodicals and newspapers; c. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; d. Letters e. Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; f. Musical compositions, with or without words; g. Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; h. Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art; i. Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science; j. Drawings or plastic works of a scientific or technical character; k. Photographic works including works produced by a process analogous to photography; lantern slides; (L)Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings; (M) Pictorial illustrations and advertisements; (n) Computer programs; and (o) Other literary, scholarly, scientific and artistic works. 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. Copyright protect literary and artistic works that have the following elements: Elements: 1) Literary and artistic works a) Literary i) Something that can be expressed b) Artistic i) Something made with own skills, expression, thoughts, imagination 2) Original a) Independent work b) “I myself did it” c) Own skill, thoughts, imagination; inspired by other works but not exactly copying d) Put themselves in to those works 3) Moment of creation a) Moment it become tangible/ expressed 4) Tangible (mode/form) a) Regardless of form or model must be something that exists b) Even if low or no quality; quality does not matter c) Music is perceived by our sense; moment it can be played it is tangible d) If the work is done in bad faith; still protected by copyright; immaterial 5) Expression of the idea; not the mere idea a) In existence; not only in our head b) Somebody can perceived it 6) Copyright does not expire even if the work was not publicly released or even not used a) As long as you do not give it away b) What is important is creation, not whether or not the work was used i) USE IS NOT NECESSARY TO BE ABLE TO MAINTAIN ONE’S COPYRIGHT c) After 20 years you showed the novel and someone tries to copy it, you can still sue the person even if you never showed that book d) Ex 2: Heirs will have right of the copyright if the author has died 7) Sec 181: Distinct from property to material of object subject to copyright a) Copyright can be transferable but not the material itself i) Ex. I authored a book, the book will always have my name but the right to reproduce the book is the publisher because I authorized them to do so b) Copyright can be transferred the same way a book can be transferred c) E.g., Ms. Serrano is the author of a book. One day she gave her book to Ms. Romualdez. i) Who is now the owner of the book? (1) Ms. Romualdez. ii) Can Ms. Romualdez throw the book? (1) Yes because she owns the material object. She (Ms. Romualdez) cannot exercise the copyright of Ms. Serrano. Ms. R can’t reproduce the book unless Ms. Serrano gives the copyright to Ms. Romualdez. 8) No need to disclose/ notify the public of your work a) Copyright remains with you even if you did not disclose it to anyone b) Publication is not needed to have rights over your work 9) Creativity of the Mind (for other jurisdictions not Philippines; but still makes sense) a) Sign of claim of authorship b) Ex. if the drawing/paint is a comma or a dot; i) Everyone can come up with a comma c) In Philippines, if work is created, automatically copyrighted (creativity is not an element to for cop i) If no creativity, very simple, no distinctiveness; in other jurisdictions not copyrightable CHAPTER III DERIVATIVE WORKS Section 173. Derivative Works. - The following derivative works shall also be protected by copyright: (a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and (b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as new works: Provided however, That such new work shall not affect the force of any subsisting copyright upon the original works employed or any part thereof, or be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works. Derivatives, in the context of copyright and intellectual property, are new works that are based on or derived from pre-existing works. For A clause: Example of derivative works - Turning a novel into a screenplay (dramatization). - Translating a book from one language to another. - Adapting a novel into a musical or film. For B clause: Art exhibit with a similar theme among them 1. Derivative works are protected as new works, but this protection does not affect the original work's copyright. 2. Author of the derivative work cannot claim ownership over the original work or extend the original copyright by producing a derivative version. Original author’s rights remain intact, and permission may still be needed to create or use the original work in creating the derivative. Section 174. Published Edition of Work. - In addition to the right to publish granted by the author, his heirs, or assigns, the publisher shall have a copyright consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work. (n) In addition to the rights granted to the author (or their heirs/assigns) to publish the work, the publisher is given a copyright specific to the reproduction of the typographical arrangement of the published edition. ○ Typographical arrangement  Refers to the layout, formatting, design, and overall visual presentation of the text, including fonts, spacing, headings, and the structure of the published work. ○ content itself (e.g., the text of a book) is protected by the author’s copyright, the publisher’s right covers the physical presentation of that content in a specific edition. Suppose an author writes a novel and grants a publisher the right to publish it. The content of the novel is protected under the author's copyright. The publisher also gets a copyright over the specific layout of that edition (the way the text is formatted, the arrangement of chapters, page design, etc.). CHAPTER IV WORKS NOT PROTECTED Section 175 & 176; Works not covered: Copyright protects the expression of ideas, but not the ideas themselves. ○ For example, a scientific method or a mathematical formula can’t be copyrighted, though a written explanation of it could be. ○ Concepts or principles (e.g., the idea behind a new business model or teaching method) cannot be copyrighted, but a detailed manual explaining it could be. 1. Mere data or facts, such as raw numbers, statistics, or scientific facts, are not subject to copyright, even if they are included in a published work. a. Ex: A table showing data cannot be copyrighted, though the selection or arrangement of that data might be protected. b. But if with a form of presenting and classifying data = copyrightable 2. News of the day and miscellaneous facts (press information) not protected a. Factual reporting on current events or news is not protected by copyright. b. But a specific article or an editorial explaining or analyzing the news might be protected as an expression of the news. 3. Official texts of a legislative, administrative, or legal nature: a. Laws, regulations, judicial decisions, government reports, and other official legal documents cannot be copyrighted. b. includes any official translations of these texts. 4. Works produced by the Government of the Philippines do not have copyright protection a. Generally, these works can be freely used by the public without needing permission b. Researchers of government, statistics of Philippine authority, c. Exploitation for profit requires government approval and possibly the payment of royalties/fees. d. Laws and official speeches are exceptions, as they can be used without permission. e. Authors of public speeches and lectures retain certain rights, particularly the right to compile their works f. The government can hold copyrights if they are transferred to it  i. Sec 181: if copyright is given to the government. Government owns the copyright to the books ii. Transfer can be done through: selling, donating or succession iii. If the government republishes a work that is under copyright, this does not invalidate the original copyright. 1. Government cannot authorize others to use the work without the consent of the original copyright holder Other unprotected works: 1) Abandoned works a) Authors are not determined b) Ex: bible 2) Somebody who waives his right to copyright 3) Public domain a) Once copyright ends, work goes to public domain i) “Everything has an ending” b) Anything that belongs to the public will not be protected by copyrights c) You can copy the original work that has lost the copyright, not another copy of the original work. CHAPTER V COPYRIGHT OR ECONOMIC RIGHTS Section 177. Copyright or Economic Rights. - Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts: 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; 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; 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. (Sec. 5, P. D. No. 49a) Copyright and Economic rights Grants 7 rights Copyright and economic rights are the same Exclusive right - “Ikaw lang ang pwedeng gumamit ng mga karapatan na to”  - Exclusive rights to carry out, authorize or prevent - Consent must be gotten from author 177.1: Reproduction i) Substantial is quality or quantity depending on the situation 177.2: Derivative Right a) Dramatization b) Adaptation i) Harry potter movie- tv series- book- themepark ii) All these will require permission from JK Rowling iii) Not every detail in the book is in a movie c) Abridgement d) Arrangement or transformation i) Changing arrangement or transformation 177.3: Right to First Public Distribution a) First public distribution of original and each copy of the work by sale or other forms of transfer of ownership 177.4: Right of Public Rental (not applicable to the generation now) a) Business owners need permission from the original owners of work i) They cannot lend infringing copies; thus they need permission ii) Applies only to audiovisual, sound recording; BASICALLY THOSE THAT CAN BE STORED IN A CD 177.5: Right to Public Display a) Means work is visible to the public; does not need to be exhibit i) People need to have senses; sight ii) Public display is to show it; accessible to anyone; 1) Display means people can perceive it; see it iii) This right belongs to author 1) Ex: If a condo uses your photos without permission from you; that is a violation 177.6: Right to Public performance a) Meaning of public performance (sec 171.5) i) Exclusive to the author ii) Types of Public performance 1) 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; 2) in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds accompanying it audible; (a) Ex 1: When malls play music, malls should be paying royalties because thats public performance of the work (b) Ex 2: You are on a date in a restaurant that plays songs, restaurant owner should be using the music  (i) Restaurant owner chose another alternative to pay through the radio; yes a public performance (c) Ex 3: Open a tv and music was playing; yes a public performance (d) Ex 4: Olivia Rodrigo sings a song not hers; yes public performance, the producer should pay royalties (e) Ex 5: songs in stories violates public performance; does not matter how long it was played 3) in the case of a sound recording, making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and that family's closest social acquaintances are or can be present, irrespective of whether they are or can be present at the same place and at the same time, or at different places and/or at different times, and where the performance can be perceived without the need for communication within the meaning of Subsection 171.3 (a) If you sing and only your family in the house only hears it; not public performance (b) If outside your house, public performance (singing in a classroom) 177.7: Right to Other communication a) Meaning of other communication (sec 171.3) i) "Communication to the public" or "communicate to the public" means the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them; CHAPTER VI: OWNERSHIP OF COPYRIGHT Section 178. Rules on Copyright Ownership. - Copyright ownership shall be governed by the following rules: 1. Subject to the provisions of this section, in the case of original literary and artistic works, copyright shall belong to the author of the work; 2. In the case of works of joint authorship, the co-authors shall be the original owners of the copyright and in the absence of agreement, their rights shall be governed by the rules on co-ownership. If, however, a work of hip 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; 3. In the case of work created by an author during and in the course of his employment, the copyright shall belong to: a. The employee, if the creation of the object of copyright is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. b. The employer, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.  4. In the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission, the person who so commissioned the work shall have ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary; 5. In the case of audiovisual work, the copyright shall belong to the producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted. However, subject to contrary or other stipulations among the creators, the producer shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work; and 6. In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code. 178.1: Ownership of Copyright a) General rule: Creator of the work is the owner of the copyright; Author i) Ex 1: you have a dog, you paint the paws of the dog and ask the dog to run around a piece of paper to make a colorful piece. Who owns the copyright of the work? 1) Dog created the work, dog cannot be an owner of the work (a) No one owns the work; thus anyone can copy the work since no author (b) Not a work of commission; even how trained a dog is 2) Unless the owner of the dog held and controlled the paws of his dog, it can be the owner of the dog who is the author ii) Ex 2: You use AI to come up with a poem. Who owns the author of the work? 1) Person who put the prompt did not make the poem; AI did but AI generated the works from other works from the internet as AI is developed using existing works in the internet 178.2: a) In case of works of joint ownership i) the co-authors shall be the original owners of the copyright 1) If no agreement between co-owners, rights shall be governed by the rules on co-ownership. (equal rights) (a) General rules of co-ownership: (i) All decisions regarding the work, such as its use or sale, generally require the consent of all co-owners. (ii) The profits or royalties from the use of the work are typically divided equally among the co-authors unless they agree on different terms. b) In case separate Parts of a joint work:  i) If the work consists of distinct parts that can be used separately, and it is possible to identify the author of each part, the original copyright in each part will belong to the author who created it. 1) Example: In a book where one author writes the text and another creates the illustrations, each would own the copyright to their respective contributions if they can be identified separately. ii) In such cases, the co-authors have copyright ownership only over the part they specifically created, not the entire work as a whole. 178.3 & 178.4: Control test a) Relationship where employer can control over means methods and the manner how of the employee does the work and the results (Employment) i) Ex: Secretary in the office, they made an article, who owns those articles? 1) Copyright belongs to secretary because it is not part of their job description/contract Unless there is an agreement in the contract where it states anything that is made by the secretary, the employer owns it. b) Employee is given some sort of freedom; (Independent contractorship) i) Principal and independent contract; the control lies on the results ii) X was commissioned to paint a painting 1) Who owns the copyright? (a) Remains with the artist (creator of the work) unless there is an agreement that copyright is assigned to commissioner 2) Who owns the material work? (a) The commissioner 178.5. Discussion on audiovisual work Ex: A movie; producer is in control In the case of audiovisual work, the copyright shall belong to the producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted. However, subject to contrary or other stipulations among the creators, the producer shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work; 178.6. In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code. Ex: Received a hand printed letter ○ Yes it is allowed to be shown to a friend but not to everyone/public CANNOT do a public performance of it like creating a dance for it, or reading it in front of the class or email it to the whole class Section 179. Anonymous and Pseudonymous Works If works are published without an author's name: Publisher is presumed to be the representative of the author unless the author can prove otherwise Exceptions: ○ If the pseudonym or adopted name leaves no doubt about the author's identity (for example, if a well-known author uses a recognizable pseudonym), the author’s real identity is considered known, and the publisher is not presumed to represent the author. ○ If the author of the anonymous or pseudonymous work later reveals their identity, then the copyright is attributed to the author, and the publisher no longer represents the author in that capacity. CHAPTER VII: Transfer or Assignment of Copyright SECTION 180. Rights of Assignee. ‑ 180.1. The copyright may be assigned in whole or in part. Within the scope of the assignment, the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright. 180.2. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention. 180.3. The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. 180 - 180.2 notes: Assignment Transfer of the title in a chosen action Relinquishment of rights from the work that copyright is assigned “Assignment in whole or in part” In whole ○ Assigned the whole of the copyrights ○ Giving up all 7 economic rights to the assignee or the one receiving the assignment In part ○ He can furthermore assign particular rights, such as performing right, or the right to produce gramophone records, whilst himself retaining the right of printed publication ○ NOT ASSIGNING ALL ECONOMIC RIGHTS BUT SOME ONLY License vs Assignment License "A license is a limited right, allowing the person licensed (the licensee) to deal with the work in a specified way, and in some cases for a specified period of time. ○ A license may also be limited as to place, allowing a licensee to carry out certain acts in relation to the work in some territories only, the copyright-owner granting similar licenses to others in different territories or not as he chooses. ○ DOES NOT INVOLVE TRANSFER OF TITLE IN THE RIGHT not giving away ownership of work but merely allowing someone to use the copyright Limited in the sense that of what is agreed upon on Assignment An assignment is a complete and unreserved transfer of all interest in the work; once an assignment has been granted, the assignor has no further claim in relation to the works assigned beyond the price paid and agreed for the assignment. Transferring all your rights; receive payment and once you receive payment you have no more rights A sale, giving up your rights; can exercise all 7 economic rights Terms Licensee ○ One receiving the license Licensor ○ One giving the license 180.3 Giving license to publish work once unless greater quantity is expressed SECTION 181. Copyright and Material Object. ‑ The copyright is distinct from the property in the material object subject to it. Consequently, the transfer or assignment of the copyright shall not itself constitute a transfer of the material object. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright. SECTION 182. Filing of Assignment or License. ‑ An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose. Upon recording, a copy of the instrument shall be returned to the sender with a notation of the fact of record. Notice of the record shall be published in the IPO Gazette. SECTION 183. Designation of Society. – the owners of copyright and related rights or their heirs may designate a society of artists, writers, composers and other right-holders to collectively manage their economic or moral rights on their behalf. For the said societies to enforce the rights of their members, they shall first secure the necessary accreditation from the Intellectual Property Office (RA 10372 version since 8293 is amended by it) Collecting society, defined (10372) Collective management organization that collects revenue in respect of the exploitation of an intellectual property right and distributes that revenue amongst the right owners. In some cases, the owners of the right will assign part of their rights to the collecting society. An important example is the Performing Right Society which takes an assignment of the performing rights in music, grants blanket licences and distributes the revenue thus earned between the authors of the music. ○ For example, the owner of premises such as a shop to which the public have access will pay a fee to the Performing Right Society which will allow him to play popular music in the shop. The same applies to hotels, restaurants and the like playing background music. This arrangement is much more convenient to the shop owner or hotelier and removes the problem of trying to negotiate separate licenses with individual copyright owners. Must be accredited by CMO ○ Manages different rights of authors Jose Mari Chan songs are played in advertisements without his consent FILSCAP can go after people who use it illegal and sue in behalf of mari chan and collect royalties for Jose Mari Chan but Jose Mari Chan would also go to FILSCAP as they manage its public performance of his songs Ex 2: Bruno Mars songs are always played in malls or concerts that are not his concerts, Bruno Mars can set up there own collective management organization will have a tie up/ arrangement with FILSCAP and FILSCAP can go after and act on their behalf and FILSCAP will also have a share CHAPTER VIII: Limitations on Copyright SECTION 184. Limitations on Copyright. ‑ 184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1), P.D. No. 49) (b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned; (Sec. 11, third par., P.D. No. 49) (c) The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; (e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and the name of the author, if appearing in the work, are mentioned; (f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work; (g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; (h) The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use; (i) The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations; (n) (j) Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and (k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner. 184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder’s legitimate interests. SECTION 185. Fair Use of a Copyrighted Work. ‑ 185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright. Decompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include: (a) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (b) The nature of the copyrighted work; (c) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (d) The effect of the use upon the potential market for or value of the copyrighted work. 185.2. The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors. SECTION 186. Work of Architecture. ‑ Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original: Provided, That the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style as the original of a building to which that copyright relates. Right to put up that particular building; no other party has right to build except the architect himself (Blueprint, design is the copyrightable works) ○ But 186 also controls right to putting up that building If building is built by any person based on the copyrightable work; he can be held liable ○ Only original architect can build a building based on the copyrightable work Exception: When in reconstruction or rehabilitation; no need for original architect to do it Special right CHAPTER IX: Deposit and Notice SECTION 191. Deposit and Notice of Deposit with the National Library and the Supreme Court Library. – At any time during the subsistence of the copyright, the owner of the copyright or of any exclusive right in the work may, for the purpose of completing the records of the National Library and the Supreme Court Library, register and deposit with them, by personal delivery or by registered mail, two (2) complete copies or reproductions of the work in such form as the Directors of the said libraries may prescribe in accordance with regulations: Provided, That only works in the field of law shall be deposited with the Supreme Court Library. Such registration and deposit is not a condition of copyright protection." (RA 10372 version) Process After a work is publicly published or performed, the copyright owner must submit two complete copies of the work to the National Library and the Supreme Court Library within three weeks. These copies can be delivered in person or sent by registered mail. To get a certificate of registration from supreme court library or national library Purpose The deposit is meant to complete the records of these libraries, ensuring that copies of significant works are archived for public reference. “Just extend a privilege to libraries” Registration and Deposit with the National Library and the Supreme Court Library  Not required for work to be registered Preliminary evidence of ownership Does not violate the principle that the moment of creation, work is protected ○ The certificate is merely evidence of ownership Cert of regis is a prima facie evidence (rebuttable evidence) ○ Can be used for additional protection SECTION 192. Notice of Copyright. ‑ Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creator’s death, the year of such death. Notice of copyright ○ Must have the (1) name of the copyright owner, and (2) the year of its first publication, and, in copies produced after the creator’s death, (3) the year of such death Copyright notice is permissible and not mandatory ○ Consistent with the rule that copyright is not subject to any formalities, copyright notice is not mandatory as indicated by the word "may" used in Section 192. Moreover, the word "Copyright" or its abbreviation "copr." or the symbol © is not required to be indicated in the work. Use of the copyright symbol "®". ○ The traditional copyright symbol "O" is not required to be used under the Philippines laws. This symbol was introduced by the 1952 Universal Copyright Convention Purpose ○ Enhances your ownership as it notices users that it is copyright protected CHAPTER X: Moral Rights SECTION 193. Scope of Moral Rights. ‑ The author of a work shall, independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right, have the right: 193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work; 193.2. To make any alterations of his work prior to, or to withhold it from publication; 193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and 193.4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. Moral rights, defined.  rights that the author of a work of copyright has, independent to the economic rights of the copyright owner. The moral rights are: to be identified as the author of the work (or the director of a film) and to be able to object to a derogatory treatment of the work. ○ These rights leave the author with some control over his work even if he does not own the copyright. Any person also has a right, under copyright law, not to have a work falsely attributed to him." Moral rights vs Economic rights Moral rights ○ Rights that are related to the personal and ethical aspects of a creator's work ○ Treatment of the work ○ Reputational interest of the author in relation to work (Integrity) ○ Cannot be transferred ○ Perpetual (as long as possible) ○ 4 rights Economic rights ○ Primarily focus on the financial aspects of copyright ○ Allow owners to derive financial reward from the use of their works by others ○ Profiting from work; pertains to the economic benefits of work (Financial gain) ○ May be transferred (assigned/ licensed) ○ 7 rights 4 rights comprising the collection of rights known as the Moral Rights 1. The Paternity Right also known as the right to be identified or Right of Attribution The right to be identified as the author of a work In Author’s discretion for right to be applied (applies to any kind of work) ○ Thus only author can also insist that this name is not to be placed on the work Not mandatory Exception to right of attribution: ○ SECTION 196. Contribution to Collective Work. ‑ When an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. (Sec. 37, P.D. No. 49) ○ Write of attribution is lost if work is in a collection ○ If your work is one of the works in the collection, you can no longer insist your name be included, only author is the collector now Default is in the collective work; works part of the collection will have write of attribution unless he/she insists However, if you still insist, then it should be placed in the contract and becomes an exception to the exception  2. The Integrity Right or the Right to Object to Derogatory Treatment of the Work The right 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 What kind of modification ○ Modification that would be prejudicial to his honor or reputation This is very subjective to the pov of author Exception to Right of respect or Right of Integrity ○ SECTION 197. Editing, Arranging and Adaptation of Work. ‑ In the absence of a contrary stipulation at the time an author licenses or permits another to use his work, the necessary editing, arranging or adaptation of such work, 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, shall not be deemed to contravene the author’s rights secured by this chapter. Nor shall complete destruction of a work unconditionally transferred by the author be deemed to violate such rights. JK Rowling cannot insist to include the whole content of book in a movie when there has been an agreement for her books to be adopted to a movie Cannot insist on the right to respect (no one can change your work); but in this you agreed that your book will become a movie but not the whole book content. It needs to be changed because it is already an adaptation ○ Exception to the right of respect 3. Right Against False Attribution of a Work The right to restrain the use of his name with respect to any work not of his Preventing the use of your name to a work that is not yours Ex: If you are the buyer of painting, when paid, you can put in the contract that the economic rights are assigned to buyer and moral rights are waived by the author; so that you can change details of the painting (sec 195) 4. The Right to Withhold Publication also called Right of Disclosure The right to make alterations of his work prior to, or to withhold it from publication SECTION 194. Breach of Contract. ‑ An author cannot be compelled to perform his contract to create a work or for the publication of his work already in existence. However, he may be held liable for damages for breach of such contract. (Sec. 35, P.D. No. 49) SECTION 195. Waiver of Moral Rights. ‑ An author may waive his rights mentioned in Section 193 by a written instrument, but no such waiver shall be valid where its effects is to permit another: 195.1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or 195.2. To use the name of the author with respect to a work he did not create. (Sec. 36, P.D. No. 49) Waiver should be in writing Can be waived partially or in whole SECTION 198. Term of Moral Rights. ‑ 198.1. The rights of an author under this chapter shall last during the lifetime of the author and for fifty (50) years after his death and shall not be assignable or subject to license. The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. In default of such person or persons, such enforcement shall devolve upon either the author’s heirs, and in default of the heirs, the Director of the National Library. 198.2. For purposes of this Section, “Person” shall mean any individual, partnership, corporation, association, or society. The Director of the National Library may prescribe reasonable fees to be charged for his services in the application of provisions of this Section 50 years from publication date CHAPTER XI: Rights to Proceeds in Subsequent Transfers SECTION 200. Sale or Lease of Work. ‑ In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty (50) years after his death. Authors covered by this right: writers, composer, painters, sculpture, Works cover by this right ○ Original Painting, manuscripts of the writer, sculptures, compositions of a writer (notes, melodies etc) The right given to them is an alienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%) (1-5%) of the gross proceeds not just profit Gives author right of resale (secondary sale) Droit de Suit; Only applies to a sale or lease  IMPORTANT; EXAMPLE: Suppose an artist sells an original painting for $1,000 to a buyer (first disposition). Right of resale (secondary sale) would not apply because it is the first sale directly from the author. ○ If later this buyer resells the painting to a collector for $50,000, the author (or their heirs) is entitled to receive 1-5% of the resale amount = 2,500 (if 5%)—from this second transaction. ○ The participation right applies only after the first sale by the author. If the painting is resold a second time for an even higher price, for instance, 100,000, the author (or heirs) would receive 5% of that amount = 5,000 ○ This corrected example clarifies that the right comes into effect only in resales or leases after the first disposition by the artist. ○ Next sale: The buyer resells the painting for 50,000. The artist (or heirs) is entitled to 5% of this amount, which is 2,500. ○ Third sale: Later, the second buyer resells the painting for 100,000. Again, the artist (or heirs) receives 5% of the gross proceeds, which is 5,000 from this sale. If the painting is resold multiple times? ○ Each time it is sold, the author (or heirs) will receive 5% of the gross proceeds from that sale SECTION 201. Works Not Covered. ‑ The provisions of this Chapter shall not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. Reproductions of those works prints, etchings, engravings, works of applied art, or works of similar will not have a resell right CHAPTER XVI: Term of Protection SECTION 213. Term of Protection. ‑ 213.1. Subject to the provisions of Subsections 213.2 to 213.5, the copyright in works under Sections 172 and 173 shall be protected during the life of the author and for fifty (50) years after his death. This rule also applies to posthumous works. 213.2. In case of works of joint authorship, the economic rights shall be protected during the life of the last surviving author and for fifty (50) years after his death. 213.3. In case of anonymous or pseudonymous works, the copyright shall be protected for fifty (50) years from the date on which the work was first lawfully published: Provided, That where, before the expiration of the said period, the author’s identity is revealed or is no longer in doubt, the provisions of Subsections 213.1. and 213.2 shall apply, as the case may be: Provided, further, That such works if not published before shall be protected for fifty (50) years counted from the making of the work. (Sec. 23, P.D. No. 49) 213.4. In case of works of applied art the protection shall be for a period of twenty-five (25) years from the date of making. (Sec. 24(B), P.D. No. 49a) 213.5. In case of photographic works, the protection shall be for fifty (50) years from publication of the work and, if unpublished, fifty (50) years from the making. (Sec. 24(C), P.D. 49a) 213.6. In case of audio-visual works including those produced by process analogous to photography or any process for making audio-visual recordings, the term shall be fifty (50) years from date of publication and, if unpublished, from the date of making. If joint author, copyright lasts until last author dies + 50 years SECTION 214. Calculation of Term. ‑ The term of protection subsequent to the death of the author provided in the preceding Section shall run from the date of his death or of publication, but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them CHAPTER XVII: Infringement SECTION 216. Remedies for Infringement. ‑ 216.1. Any person infringing a right protected under this law shall be liable: a) To an injunction restraining such infringement. The court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods. b) Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to be just and shall not be regarded as penalty. c) Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them. d) Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order. e) Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case. 216.2. In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. (Sec. 28, P.D. No. 49a) General definition: Infringement is when you violate any rights of the author (3) moral rights and/or (7) economic rights and/or (2) special rights When do you do it?  ○ When you exercise these rights without the authors authorization, without payment etc Assigned Cases Week 6: Malang Santos vs Printing: Facts: The complaint alleges that Santos designed for former Ambassador Felino Neri, for his personal Christmas Card greetings. The design depicts "a Philippine rural Christmas time scene consisting of a woman and a child in a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath which appears the plaintiff's pen name, Malang." (Belen type picture); The following year the Ambassador contracted McCullough Printing Company to reprint it, thus without the knowledge and authority of the plaintiff (Santos), displayed the very design in its album of Christmas cards and offered it for sale, for a price. Santos filed a complaint because she had knowledge that her design was reproduced and suffered moral damages because it has placed plaintiff's professional integrity and ethics under serious question and caused him grave embarrassment before Ambassador Neri. (Violation of copyrights) Defendant claimed that (1) the design claimed does not contain a clear notice that it belonged to him and that he prohibited its use by others; (2) The design has been published but does not contain a notice of copyright, as in fact it had never been copyrighted by the plaintiff, (3) The complaint does not state a cause of action. The lower court rendered judgment that as a general proposition, there can be no dispute that the artist acquires ownership of the product of his art. At the time of its creation, he had absolute dominion over it. To help the author protect his rights the copyright law was enacted. In intellectual creations, a distinction must be made between two classes of property rights; (1) the fact of authorship and the right to publish and/or (2) distribute copies of the creation. a) With regard to the first, (the fact of authorship) i) In other words, he may sell the right to print hundreds of his work yet the purchaser of said right can never be the author of the creation. ii) It is the second right, i.e., the right to publish, republish, multiply and/or distribute copies of the intellectual creation which the state, through the enactment of the copyright law, seeks to protect. 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. Malang Santos did not choose to protect his intellectual creation by a copyright. The fact that the design was used in the Christmas card of Ambassador Neri who distributed 800 copies thereof among his friends during the Christmas season of 1959, shows that the same was published. Unless satisfactorily explained a delay in applying for a copyright, of more than thirty days from the date of its publication, converts the property to one of public domain. Also Since the name of the author appears in each of the alleged infringing copies of the intellectual creation, the defendant may not be said to have pirated the work nor guilty of plagiarism WHEREFORE, the Court dismisses the complaint without pronouncement as to costs. Hence the appeal of Malang Santos arguing that (1) plaintiff is entitled to protection, notwithstanding the, fact that he has not copyrighted his design; (2) the publication is limited, so as to prohibit its use by others, or it is general publication, and (3) the provisions of the Civil Code or the Copyright Law should apply in the case. Ruling: The plaintiff is not entitled to a protection, the provision of the Civil Code. Paragraph 33 of Patent Office Administrative Order No. 3 entitled "Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims" provides, that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within sixty (60) day's if made elsewhere, failure of which renders such creation public property. In the case at bar, even as of this moment, there is no copyright for the design in question. The contention of appellant that the publication of the design was a limited one or that only Ambassador Neri should have absolute right to use the same is also not accepted since if such were the condition then Ambassador Neri should be the one who is complaining right now and not Malang Santos. Additionally, if there was such a limited publication or prohibition, the same was not shown on the face of the design. When Ambassador Neri distributed 800 copies of the design, the plaintiff lost control of his design and the necessary implication was that there had been a general publication, there having been no showing of a clear indication that a limited publication was intended. The author of a literary composition has a right to the first publication. He has a right to determine whether it shall be published at all, and if published, when, where, by whom, and in what form. However, once published, it is dedicated to the public, and the author loses the exclusive right to control subsequent publication by others, unless the work is placed under the protection of the copyright law. Joaquin vs Drillon: Facts: BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright of Rhoda and Me, a dating game show aired from 1970-1977. In 1973, BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show's format and style of presentation. On July 14, 1991, Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc. (IXL). and wrote a letter to Zosa, president and general manager of IXL, saying that BJPI had a copyright to Rhoda and Me and demanding to discontinue airing It's a Date. Joaquin/BJPI argue that Zosa (1) gravely abused his discretion amounting to lack of jurisdiction when he invoked non-presentation of the master tape as being fatal to the existence of probable cause to prove infringement (2) The public respondent gravely abused his discretion amounting to lack of jurisdiction when he arrogated unto himself the determination of what is copyrightable an issue which is exclusively within the jurisdiction of the regional trial court to assess in a proper proceeding. Zosa maintain that (1) Joaquin/BJPI failed to establish the existence of probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me, (2) that BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are not covered by copyright protection under P.D. No. 49. Ruling: The format of a show is not copyrightable. Section 2 of P.D. No. 49, or DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright protection as with sec 172 of the INTELLECTUAL PROPERTY CODE OF PHILIPPINES R.A. No. 8293 says that the format or mechanics of a television show is not included in the list of protected works in sec 2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended to cover them. P.D. No. 49, §2, in enumerating what is subject to copyright, refers to finished works and not to concepts. The copyright does not extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. Given that copyright protection of BJPI applied only to the actual recordings of the show, the presentation of the master videotape was deemed necessary. The Secretary of Justice argued that the written descriptions provided by the BJPI and Joaqui were insufficient because television shows involve complex visual and audio elements that cannot be fully captured through mere descriptions. The only way to accurately determine whether there was copyright infringement was by comparing the master tape of Rhoda and Me with the allegedly infringing show, It's a Date. Thus, a mere description by words of the general format of the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the determination of the existence of probable cause. A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows. Petition is dismissed. Habana vs Robles: Facts: Petitioners (Habana) owned are authors and copyright owners of COLLEGE ENGLISH FOR TODAY (CET); Respondents Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of "DEVELOPING ENGLISH PROFICIENCY" (DEP) Habana found that Robles' book was similar if not a copy of CET. Goodwill Trading Co., Inc argues that petitioners had no cause of action against Goodwill Trading Co., Inc. since (1) it was not privy to the misrepresentation, plagiarism, incorporation and reproduction of the portions of the book of petitioners; (2) that there was an agreement between Goodwill and the respondent Robles that Robles guaranteed Goodwill that the materials utilized in the manuscript were her own or that she had secured the necessary permission from contributors and sources; that the author assumed sole responsibility and held the publisher without any liability. Robles argues that (1) the book DEP is the product of her independent researches, studies and experiences, and was not a copy of any existing valid copyrighted book; (2) DEP followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS), (3) the similarities may be due to the authors' exercise of the "right to fair use of copyrighted materials, as guides." (4) petitioner Habana had bad faith (jealous) as DEP replaced CET as the official textbook of the graduate studies department of the Far Eastern University. Issues: 1. Whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, respondents committed no copyright infringement; 2. whether or not there was animus furandi on the part of respondent when they refused to withdraw the copies of CET from the market despite notice to withdraw the same; and 3. whether or not respondent Robles abused a writer's right to fair use, in violation of Section 11 of Presidential Decree No. 49. Ruling: SC believes that Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of HABANA' copyrights. When is there a substantial reproduction of a book/ Determine infringement: does not necessarily require entire copyrighted work, or even a large portion of it, be copied; If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright Examples were also similar Trespassing on a private domain Even if petitioners and respondent Robles were of the same background in terms of teaching experience and orientation, it is not an excuse for them to be identical even in examples contained in their books. The similarities in examples and material contents are so obviously present in this case. Considered as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwill bookstores the book DEP upon learning of petitioners' complaint while denying petitioners' demand. In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious effect". Here, the injury consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use and did not acknowledge petitioners as her source. Dissenting opinions: While there are similarities between CET and DEP, those similarities do not meet the legal definition of "copying." The court found that both books covered the same subjects common to grammar books, such as punctuation, paragraphs, and book classification systems; however these subjects are based on universal and general knowledge, meaning HABANA, et al. cannot claim exclusive rights to such material. They cannot monopolize these ideas or concepts because they have long existed in the public domain. The court found that CET and DEP were based on the same sources, including foreign books and widely accepted systems (like the Dewey Decimal System). This further weakens the claim of infringement, as the similarities arise from their common sources rather than any direct copying. ○ Both authors were academics with similar training and experience, meaning their approaches to writing grammar books were likely to overlap naturally, further explaining any resemblance between the two works. Opinion also highlights that both P.D. No. 49 and the newer Intellectual Property Code of the Philippines (R.A. 8293) allow for the use of copyrighted materials within certain limitations, especially when it comes to general knowledge or concepts. (Fair use) Plagiarism Covers uncopyrighted and copyrighted works Not a legal concept more of an ethical concept; no law that prohibits plagiarism Manly vs Dadodette Facts: Dadodette Enterprises and/or Hermes Sports Center were investigated since it was alleged that they were in possession of goods, the copyright of which belonged to Manly Sportswear Mfg., Inc. (MANLY). Reasonable grounds were found that they violated Sections 172 and 217 of Republic Act (RA) No. 8293. Respondents argue that the sporting goods manufactured by and/or registered in the name of MANLY are ordinary and common hence, not among the classes of work protected under Section 172 of RA 8293. RTC ruled that it is null and void since products of MANLY do not appear to be original creations and were being manufactured and distributed by different companies locally and internationally therefore unqualified for protection under Section 172 of RA 8293. Additionally, MANLY’s certificates of registrations were issued only in 2002, whereas certificates of registrations of Dadodette were issued earlier than MANLY’s, thus further negating the claim that its copyrighted products were original creations. Issue: Whether or not CA err in finding that the trial court did not gravely abuse its discretion in declaring that the copyrighted products of MANLY are not original creations subject to the protection of RA 8293? Ruling: SC denies petition of Manly The court also said that noted that copyright certificates issued in favor of MANLY were merely prima facie evidence of validity and ownership Hence other evidence casting doubt on the copyright validity could negate this presumption. The certificates of registration and deposit issued by the National Library and the Supreme Court Library serve merely as a notice and do not confer any right or title upon the registered copyright owner. The Law on Trademarks, Service Marks and Trade Names Basis of Law on Trademark 1) Constitution (Art 14) 2) RA 8293 a) → 1883 Paris Convention i) Initiative to harmonize different trademark laws of different countries Section 121: 121.1 “Mark” Can be anything that conveys a message ○ Showing a pen alone is not a sign ○ Any word, shape, illustration, color anything that represent something In trademark context, 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 ○ “shall include a stamped or marked container of goods”  Unique to PH laws, due to issue of lobbying Mark must be stamped or marked on container of goods Shows ownership Under PH laws, it must be visible ○ Other countries, signs not visible is counted as a mark (sound, smell, touch); untraditional trademarks Trademark uses 1) Product identification/Differentiation 2) Source identifier 3) Marketing tool (psychological factors) a) Advertise b) Brand is different from a mark i) Owners of brand create an image of the product 4) Valuable asset a) Trademark has a value because you can sell it 5) Finance a) Franchising b) Can be a collateral Section 122: Necessity to Register 1st principle: Need to register ○ General rule: If mark is not registered, rights will not be acquired Section 123 121.1 Types of Marks a) Strong mark Elements for types to be capable of being registered i) Has to be inherently distinctive marks 1) coined/ invented words (no meaning) (a) Example “google”, “kodak” ii) Arbitrary marks 1) Common and has its own meaning but when connected to such goods and services it covers, no relationship (a) “Apple” does not have any relationship with technology iii) Suggestive marks 1) Suggests something about the product but does not tell what the product exactly is b) Weak mark i) General rule: weak marks are not registrable ii) Generic marks iii) Indications that have become customary to trade iv) Descriptive terms and geographical marks  v) Deceptive or misleading trademarks vi) Relating to particular persons Paragraph A Marks that are deceptive, immoral, mapanira etc.; not registrable Paragraph B Cannot use marks of maps of the Philippines or consists of flag/nation Paragraph C Cannot register mark that consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; Paragraph D 2nd principle: Principle of First to file If first one to apply for registration for a mark you are given priority/preference ○ However can still be rebutted not absolute that it will be granted to you Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: ○ The same goods or services, or Ex: “Manlu” for cosmetics, July 1 2020 other one “Manlu” for lipstick December 31, 2021 Manlu for cosmetics will win registrability since it was filed earlier ○ Closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion; Manlu vs Manlo General appearance; ○ Spelling ○ Font ○ Style Other items to consider; ○ Target market ○ Audience & Consumer If same, most likely there is confusion ○ Trade channels (Malls vs Online) If same, most likely there is confusion But if filed with bad faith; you will lose ○ But of course bad faith must be proven ○ So first to file with bad faith will not win Paragraph E&F About internationally well known marks ○ When and what is it considered internationally well known 1. Competent authority that will say mark is well known a. Courts, IPOphl, jurisprudence  2. Knowledge of relevant sector a. Relevant sector should know about trademark i. Ex. Manlu; not all Filipinos need to know Manlu but rather only the people that use cosmetics and such relevant sectors to Manlu 3. Must be well-known in PH and internationally 3rd Principle: Principle of well known mark ○ (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; ○ (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use; Difference of E & F ○ If you apply a trademark that is different from a well known mark but the products are the same with such well known mark = cannot register Cannot register if application for trademark application is similar to goods/service of well known mark even if such well known mark is not registered in the PH Under (e), talks about a mark that is either registered or not registered in the PH but is used in similar & identical service/goods if Toyota is not registered in PH; Toyota lipstick is allowed because not similar IF NOT REGISTERED IN PH AND PRODUCT IS NOT SIMILAR = ALLOWED Under (f), talks about a well known mark registered in the Philippines that is not similar if Toyota is registered to PH, and product is toyota lipstick, it will still not allow since it is confusingly similar even if different Paragraph G - K (As a general rule) Paragraph G ○ About misleading trademarks  ○ Ex: healthy cigarette “Healthy is misleading because cigarettes are evidently not healthy” ○ “Cow for margarine” Misleading since margarine is not butter Paragraph H ○ Generic marks Marks that are generic for the goods or services that they seek identity Ex: You cannot trademark “apple’” when you are also selling apples Dependent on how common term is used by people Term used for the type of goods (cannot be registered because everyone is using it smtg visible and distinctive) TV for television Paragraph I ○ Mark customarily used name for particular good/service “Tasty” is used for bread in the Philippines Cannot trademark it since it is customary ○ These evolves through times depending on society Paragraph J ○ If mark tells you what the product is, it is a weak mark hence a descriptive mark Descriptive mark describes the product “Spicy” for hot sauce ○ Cannot use a mark that already describes the product ○ “Bank of America” Bank established in America “Philippine Airlines” ○ Can shapes be registered? If you sell a chair and your trademark is shaped as a chair (GENERAL RULE ONLY) Paragraph K ○ Mark cannot be registered if it "consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value ○ Note that ordinary geometric shapes cannot be registered. Chapes which consist exclusively of the following may not be registered: 1. The shape which results from the nature of the goods themselves. 2. The shape of goods which is necessary to obtain a technical result. 3. The shape which gives substantial value to the goods. Paragraph L ○ Can you use color as a trademark? Color alone cannot be used as a trademark Except when defined by a given form it is registrable  Ex: color red shaped like a cup; Nescafe ○ If color shaped like a cup is registrable since dit is defined by a given form Paragraph M ○ Marks that are immoral or contrary to public order or morality Section 123.2: When a generic/descriptive mark becomes distinctive Distinctive already when you have been using such descriptive/generic mark for a long time ○ Secondary meaning ○ Must be shown that you have been using it for 5 years (exclusive and continuous use) ○ Example: ○ “Shoe mart” Already perceived to Henry Sy and SM even if it is descriptive and generic ○ In Ang v. Teodoro, while the Court ruled that the mark "Ang Tibay" was a fanciful or coined mark, it could very well be capable of exclusive appropriation under the doctrine of secondary meaning since,the "uninterrupted and exclusive use since 1911 in the manufacture of slippers and shoes" of the mark "Ang Tibay" has given it a secondary meaning. ○ Rule is that the fact that you are continuously using it “Use” applying your trademark to your goods and services in trade and commerce (basically in selling) Already transacting with it with 3rd parties at least 5 years; definition of use Mark becomes distinctive but not vice versa ○ Mark that is distinctive cannot be generic/descriptive Section 124: Applying process; Steps to apply for trademark registration Step 1: Do a trademark Search (can be online) Check if you have similarities ○ If distinct then apply for trademark Step 2: File DAU (declaration of actual use) (Section 124.2) File within three (3) years from the filing date of the application Principle #5: Protection is jurisdictional Only protected in PH Need to register such trademark internationally if you want to go international a) Formal examination i) Whether or not requirements for such application is complete b) Substantive examination i) Whether or not it is registrable or not Paragraph G (color claim): If you are always going to use a color on such trademark you need to claim a color (additional fees for every color) Paragraph K under sec 124 Need to classify under nice classification Section 124.2 Refers to declaration of actual use (DAU); first dau among more ○ Prove use of trademark If you don't use your trademark you lose it Indicate where you are selling your trademark (SM megamall, SM bicutan etc.) + photographs of store and products to prove use of trademark) File within 3 years of filing date of application Jan 1 2024 allowed to file DAU Jan 1 2024 - 2027 Section 124.3 File application for several goods under 1 class; multiclass application Section 126 Disclaimer ○ Wishing not to claim ownership over such marks of trademark Section 131: Prior date X Applied july 1 2024 in the PH but also applied in japan feb 1 2024, Y applied april in PH ○ Applying the prioritization date, Japan is part of the Paris convention, the application in Japan Feb 1, 2024 he will win. Section 133: Examination Mark will be published ○ Shown to entire world ○ Once publication takes place on 30 days and someone opposes, an opposition will be filed Section 134: Remedies Opposition (1st administrative remedy of trademark owner) ○ Person that opposes filing of trademark of a particular mark ○ May reach 5-10 years to be resolved ○ Litigated matter unless you settle Whether mark is confusingly similar If opposition is not filed, cancellation is available Sec 138: Importance of certificate of registration 1. Becomes only a prima facie evidence (rebuttable evidence) of validity of registration  a. Went through correct process of registration b. No bad faith 2. Prima facie evidence of ownership of registrant 3. Registrant’s exclusive right to use the mark related to goods/services trademark is applied for a. goods/services provided/indicated in the application form b. Exclusive right to use goods/services trademark is applied for 4. Even with respect to the ones that you did not indicate but those that are related to your goods/services; you still can claim rights a. As long as they are related to your registration people cannot use related things to ur trademark b. Another exclusive right to prevent anyone who is using your trademark or similar trademark on identical goods/services without your consent (sec 147) Is it possible to inherit ownership over trademark registration? Yes (sec 149) How long does a trademark last? 10 years from date of issuance of cert then renewable every 10 years ○ Can last longer than a lifetime, even heirs can use it ○ Can last longer than copyright Sec 145: 2nd DAU Need to file another DAU during existence of your 10 year validity ○ From 5th-6th year Sec 146: Renewal w/ requirements 3rd Dau ○ Within 1yr from date of renewal, need to renew DAU ○ Failure to renew DAU, lost of trademark ○ Total of 3 DAUs needed to be submitted: Initial Within 1 yr of the 5th year (5th-6th yr Renewal (Within 1yr from date of renewal) Continuous cannot miss USE IS IMPORTANT TO MAINTAIN REGISTRATION Section 148: Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used “Iphone repair shop ” for business other than apple since they are identifying their products is legal since they are merely identifying them Identify their repair services than iphone itself Sec 149: Assignment, Transfer and Licensing of trademark Trademark is different from the business ○ Having trademark does not equal owning the business as well and vice versa Assignment and transfer ○ Must be writing ○ Must be recorded with IPOphil or else will not have effect 3rd parties Licensing ○ Allow a person to use such mark through royalties/fees ○ Licensor must still have effective control on the quality of goods/services (sec 150) Effective control meaning real control over the quality of the goods/services If Licensor has no control over the quality of items being sold by licensee, license is not valid Must be confidential Sec 151: Cancellation (2nd administrative remedy) A petition to cancel a registration of a mark filed by any person who believes that he is or will be damaged by the registration of a mark Grounds/specific arguments : 1. If trademark become generic you can say it is generic hence should not be registered a. Must prove how it became generic 2. Use of Trademark a. Paragraph C i. Determine if there is use; if proven that mark is not used uninterrupted for 3 years or longer is evidence for non-use therefore can be for cancellation 3. Evidence of use of Fraudulent means to attain trademark a. Used bad faith and unlawful means to attain trademark When does a mark become generic? ○ significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used ○ Paragraph B Gives test to determine if it is cancelable Prove in court the impact of registered mark to the relevant public ○ Paragraph C Determine if there is use; if proven that mark is not used uninterrupted for 3 years cancellable Section 152: When is no use allowed Non-use of a mark may be excused (Sec. 152.1): General rule: A trademark must be used to maintain its protection. If it is not used for three consecutive years, it is subject to removal from the register. Exception: Non-use can be excused if it is caused by circumstances outside the control of the trademark owner (e.g., natural disasters, governmental restrictions, or other unforeseen events). ○ lack of financial resources is not considered a valid excuse. Simply not being able to afford using the mark does not protect the owner from cancellation due to non-use. Use of the mark in a different form (Sec. 152.2): Trademark owner is allowed to use the mark in a form that is different from the form in which it was originally registered, as long as this modification does not alter its distinctive character. ○ EX: If a mark's font or size is slightly changed, but it remains recognizable as the same trademark, this variation does not count as non-use. The protection remains intact. Use of a mark in connection with some goods or services (Sec. 152.3): If a trademark is registered for a wide range of clothing items (like shirts, pants, and hats), using the mark on just one of those products (e.g., shirts) is enough to prevent cancellation for the other items in the same class, such as pants or hats. Use by related companies or controlled use (Sec. 152.4): Related companies: If the mark is used by a company related to the owner (for example, a subsidiary or affiliate), this use is considered to benefit the owner, as long as the use does not deceive the public. Controlled use: If the owner of the trademark controls the use of the mark by another person or entity, especially in terms of the nature and quality of the goods or services, then this controlled use also benefits the owner. Owners must exercise control to ensure that the trademark remains associated with the expected quality and characteristics, preventing the public from being misled. ○ Ex: A food manufacturer allows a franchised restaurant to use its trademark under strict guidelines. As long as the restaurant follows the guidelines (maintaining product quality, branding standards, etc.), this use by the franchisee benefits the original trademark owner. Section 155: Trademark Infringement Key elements: 1) No consent 2) Trademark must be registered for trademark infringement 3) a reproduction, counterfeit (making it look like it is original), copy, or colorable imitation (kamukhang-kamukha) Adopting Dominant features is also part of repro, counterfeit etc. ○ Feature/part of mark that attracts public  ○ Ex: Nike swoosh, lacoste crocodile 4) Must be used in commerce a mere act of preparation to goods or services with the infringing material constitutes infringement 5) Lead to confusion of public Actual confusion is not needed just possibility/likelihood “Confusion” When does one infringe a trademark? Infringement occurs when a person uses, without consent, a reproduction, counterfeit, copy, or colorable imitation of a registered mark in commerce. This ca