&
INTELLECTUAL
PROPERTY
LAWS
The
use
of
intellectual
property
bears
a
social
function.
To
this
end,
the
State
shall
promote
the
diffusion
of
knowledge
INTRODUCTION
and
information
for
the
promotion
of
national
development
and
progress
and
the
common
good.
1. BASIS
OF
THE
INTELLECTUAL
PROPERTY
LAW:
RA
8293,
AS
AMENDED
4. PHILIPPINE
COMMITMENT
TO
THE
GATT-‐TRIPS
AGREEMENT
Section
2.
Declaration
of
State
Policy.
-‐
The
State
recognizes
Section
3.
International
Conventions
and
Reciprocity.
-‐
Any
that
an
effective
intellectual
and
industrial
property
system
is
person
who
is
a
national
or
who
is
domiciled
or
has
a
real
and
vital
to
the
development
of
domestic
and
creative
activity,
effective
industrial
establishment
in
a
country
which
is
a
party
facilitates
transfer
of
technology,
attracts
foreign
to
any
convention,
treaty
or
agreement
relating
to
investments,
and
ensures
market
access
for
our
products.
It
intellectual
property
rights
or
the
repression
of
unfair
shall
protect
and
secure
the
exclusive
rights
of
scientists,
competition,
to
which
the
Philippines
is
also
a
party,
or
inventors,
artists
and
other
gifted
citizens
to
their
intellectual
extends
reciprocal
rights
to
nationals
of
the
Philippines
by
law,
property
and
creations,
particularly
when
beneficial
to
the
shall
be
entitled
to
benefits
to
the
extent
necessary
to
give
people,
for
such
periods
as
provided
in
this
Act.
effect
to
any
provision
of
such
convention,
treaty
or
reciprocal
law,
in
addition
to
the
rights
to
which
any
owner
of
an
It
is
also
the
policy
of
the
State
to
streamline
administrative
intellectual
property
right
is
otherwise
entitled
by
this
Act.
(n)
procedures
of
registering
patents,
trademarks
and
copyright,
to
liberalize
the
registration
on
the
transfer
of
technology,
General
Agreement
on
Tariffs
and
Trade
(GATT)
was
a
and
to
enhance
the
enforcement
of
intellectual
property
collection
of
treaties
governing
access
to
the
economies
of
rights
in
the
Philippines.
(n)
treaty
adherents
with
no
institutionalized
body
administering
the
agreements
or
dependable
system
of
dispute
settlement.
RA
8293:
An
Act
Prescribing
the
Intellectual
Property
(Tañada
vs.
Angara)
Code
and
Establishing
the
Intellectual
Property
Office,
Providing
for
its
powers
and
functions,
Tañada
vs
Angara
GR
No.
118295,
May
2,
1997
and
for
Other
Purposes
Facts:
Otherwise
known
as
the:
Intellectual
Property
Petitioners
Senators
Tañada,
et
al.
questioned
the
Code
of
the
Philippines
constitutionality
of
the
concurrence
by
the
Philippine
Senate
of
the
President’s
ratification
of
the
international
Agreement
2. AMENDMENTS
TO
RA
8293,
AS
AMENDED
establishing
the
World
Trade
Organization
(WTO).
They
argued
that
the
WTO
Agreement
violates
the
mandate
of
the
Ø RA
9150
(2001):
An
Act
Providing
for
the
Protection
of
1987
Constitution
to
“develop
a
self-‐reliant
and
independent
Layout-‐Designs
(Topographies)
of
Integrated
Circuits,
national
economy
effectively
controlled
by
Filipinos
.
.
.
(to)
Amending
for
the
purpose
of
certain
sections
of
RA
give
preference
to
qualified
Filipinos
(and
to)
promote
the
8293
preferential
use
of
Filipino
labor,
domestic
materials
and
Amendment:
Sec.
112,
113,
114,
116,
117,
118,
119
locally
produced
goods.”
Further,
they
contended
that
the
and
120
under
Chapter
XIII
of
RA
8293:
Industrial
“national
treatment”
and
“parity
provisions”
of
the
WTO
Design
and
Layout
Designs
(Topographies)
of
Agreement
“place
nationals
and
products
of
member
Integrated
Circuits
countries
on
the
same
footing
as
Filipinos
and
local
products,”
in
contravention
of
the
“Filipino
First”
policy
of
our
Ø RA
9502
(2008):
An
Act
Providing
for
Cheaper
and
Constitution,
and
render
meaningless
the
phrase
“effectively
Quality
Medicines,
amending
for
the
purpose
of
RA
controlled
by
Filipinos.”
8293
or
The
Intellectual
Property
Code,
RA
6675
or
the
Generics
Act
of
1988,
and
RA
5921
or
the
Pharmacy
Issue:
Law,
and
for
other
Purposes
Does
the
1987
Constitution
prohibit
our
country
from
Amendment:
Sec
22,
26,
72,
76,
93,
94,
95,
147,
159:
participating
in
worldwide
trade
liberalization
and
economic
Sec.
22:
Non-‐Patentable
Inventions
globalization
and
from
integrating
into
a
global
economy
that
Sec.
26:
Inventive
Step
is
liberalized,
deregulated
and
privatized?
Sec.
72:
Limitations
of
Patent
Rights
Sec.
76:
Civil
Action
for
Infringement
Held:
Sec.
93:
Grounds
for
Compulsory
Licensing.
–
The
Court
DISMISSED
the
petition.
It
sustained
the
Sec.
93-‐A:
Procedures
on
Issuance
of
a
Special
concurrence
of
the
Philippine
Senate
of
the
President’s
Compulsory
License
under
the
TRIPS
Agreement
ratification
of
the
Agreement
establishing
the
WTO.
Sec.
94:
Period
for
Filing
a
Petition
for
a
Compulsory
License
NO,
the
1987
Constitution
DOES
NOT
prohibit
our
country
Sec.
95:
Requirement
to
Obtain
a
License
on
from
participating
in
worldwide
trade
liberalization
and
Reasonable
Commercial
Terms
economic
globalization
and
from
integrating
into
a
global
Sec.
147
Rights
Conferred
economy
that
is
liberalized,
deregulated
and
privatized.
Sec.
159
Limitations
to
Actions
for
Infringement
There
are
enough
balancing
provisions
in
the
Constitution
to
Ø RA
10372
(2013):
An
Act
Amending
Certain
Provisions
allow
the
Senate
to
ratify
the
Philippine
concurrence
in
the
of
RA
8293
WTO
Agreement.
Amendment:
The
Organizational
Structure
of
the
IPO
While
the
Constitution
indeed
mandates
a
bias
in
favor
of
Ø Additional
Legislation
relating
to
IP
Rights:
Filipino
goods,
services,
labor
and
enterprises,
at
the
same
RA
10055
(2010):
An
Act
Providing
the
Framework
and
time,
it
recognizes
the
need
for
business
exchange
with
the
Support
System
for
the
Ownership,
Management,
Use,
rest
of
the
world
on
the
bases
of
equality
and
reciprocity
and
and
Commercialization
of
Intellectual
Property
limits
protection
of
Filipino
enterprises
only
against
foreign
Generated
from
Research
and
Development
funded
by
competition
and
trade
practices
that
are
unfair.
In
other
government
and
for
other
purposes
words,
the
Constitution
did
not
intend
to
pursue
an
Otherwise
known
as:
Philippine
Technology
Transfer
isolationist
policy.
It
did
not
shut
out
foreign
investments,
Act
of
2009
goods
and
services
in
the
development
of
the
Philippine
economy.
While
the
Constitution
does
not
encourage
the
3. IMPORTANCE
OF
ADOPTING
LAWS
PROTECTING
unlimited
entry
of
foreign
goods,
services
and
investments
INTELLECTUAL
PROPERTY
RIGHTS
into
the
country,
it
does
not
prohibit
them
either.
In
fact,
it
allows
an
exchange
on
the
basis
of
equality
and
reciprocity,
frowning
only
on
foreign
competition
that
is
unfair.
withdrawal
of
membership,
should
this
be
the
political
desire
The
constitutional
policy
of
a
“self-‐reliant
and
independent
of
a
member.
national
economy”
does
not
necessarily
rule
out
the
entry
of
foreign
investments,
goods
and
services.
It
contemplates
5. DID
RA
8293
REPEAL
EXISTING
LAWS
ON
INTELLECTUAL
neither
“economic
seclusion”
nor
“mendicancy
in
the
PROPERTY?
international
community.”
As
explained
by
Constitutional
Commissioner
Bernardo
Villegas,
sponsor
of
this
constitutional
policy:
Mipuri
vs.
CA
Gr.
No.
114508,
Nov.
19,
1999
Facts:
Economic
self-‐reliance
is
a
primary
objective
of
a
developing
In
1970,
Escobar
filed
an
application
with
the
Bureau
of
country
that
is
keenly
aware
of
overdependence
on
external
Patents
for
the
registration
of
the
trademark
“Barbizon”
for
assistance
for
even
its
most
basic
needs.
It
does
not
mean
use
in
horsiers
and
ladies
undergarments
(IPC
No.
686).
autarky
or
economic
seclusion;
rather,
it
means
avoiding
Private
respondent
reported
Barbizon
Corporation,
a
mendicancy
in
the
international
community.
Independence
corporation
organized
and
doing
business
under
the
laws
of
refers
to
the
freedom
from
undue
foreign
control
of
the
New
York,
USA,
opposed
the
application.
It
was
alleged
that
national
economy,
especially
in
such
strategic
industries
as
in
its
trademark
is
confusingly
similar
with
that
of
Escobar
and
the
development
of
natural
resources
and
public
utilities.
that
the
registration
of
the
said
trademark
will
cause
damage
to
its
business
reputation
and
goodwill.
In
1974,
the
Director
The
WTO
reliance
on
“most
favored
nation,”
“national
of
Patents
gave
due
course
to
the
application.
Escobar
later
treatment,”
and
“trade
without
discrimination”
cannot
be
assigned
all
his
rights
and
interest
over
the
trademark
to
struck
down
as
unconstitutional
as
in
fact
they
are
rules
of
petitioner.
In
1979,
Escobar
failed
to
file
with
the
Bureau
the
equality
and
reciprocity
that
apply
to
all
WTO
members.
affidavit
of
use
of
the
trademark
required
under
the
Aside
from
envisioning
a
trade
policy
based
on
“equality
and
Philippine
Trademark
Law.
Due
to
this
failure,
the
Bureau
reciprocity,”
the
fundamental
law
encourages
industries
that
cancelled
Escobar’s
certificate
of
registration.
In
1981,
are
“competitive
in
both
domestic
and
foreign
markets,”
Escobar
and
petitioner
separately
filed
this
application
for
thereby
demonstrating
a
clear
policy
against
a
sheltered
registration
of
the
same
trademark.
(IPC
2049).
Private
domestic
trade
environment,
but
one
in
favor
of
the
gradual
respondent
opposed
again.
This
time
it
alleged
(1)
that
the
development
of
robust
industries
that
can
compete
with
the
said
trademark
was
registered
with
the
US
Patent
Office;
(2)
best
in
the
foreign
markets.
Indeed,
Filipino
managers
and
that
it
is
entitled
to
protection
as
well-‐known
mark
under
Filipino
enterprises
have
shown
capability
and
tenacity
to
Article
6
bis
of
the
Paris
Convention,
EO
913
and
the
two
compete
internationally.
And
given
a
free
trade
environment,
Memoranda
of
the
Minister
of
Trade
and
Industry
and
(3)
Filipino
entrepreneurs
and
managers
in
Hongkong
have
that
its
use
on
the
same
class
of
goods
amounts
to
a
violation
demonstrated
the
Filipino
capacity
to
grow
and
to
prosper
of
the
Trademark
Law
and
Art.
189
of
the
RPC.
Petitioner
against
the
best
offered
under
a
policy
of
laissez
faire.
raised
the
defense
of
Res
Judicata.
It
is
true,
as
alleged
by
petitioners,
that
broad
constitutional
Issue:
principles
require
the
State
to
develop
an
independent
One
of
the
requisites
of
res
judicata
is
identical
causes
of
national
economy
effectively
controlled
by
Filipinos;
and
to
action.
Do
IPC
No.
686
and
IPC
No.
2049
involve
the
same
protect
and/or
prefer
Filipino
labor,
products,
domestic
cause
of
action?
materials
and
locally
produced
goods.
But
it
is
equally
true
that
such
principles
—
while
serving
as
judicial
and
legislative
Held:
guides
—
are
not
in
themselves
sources
of
causes
of
action.
No.
The
issue
of
ownership
of
the
trademark
was
not
raised
Moreover,
there
are
other
equally
fundamental
in
IPC
686.
IPC
2049
raised
the
issue
of
ownership,
the
first
constitutional
principles
relied
upon
by
the
Senate
which
registration
and
use
of
the
trademark
in
the
US
and
other
mandate
the
pursuit
of
a
“trade
policy
that
serves
the
general
countries,
and
the
international
recognition
of
the
trademark
welfare
and
utilizes
all
forms
and
arrangements
of
exchange
established
by
extensive
use
and
advertisement
of
on
the
basis
of
equality
and
reciprocity”
and
the
promotion
respondents
products
for
over
40
years
here
and
abroad.
of
industries
“which
are
competitive
in
both
domestic
and
These
are
different
from
the
issues
of
confessing
similarity
foreign
markets,”
thereby
justifying
its
acceptance
of
said
and
damage
in
IPC
686.
The
issue
of
prior
use
may
have
been
treaty.
So
too,
the
alleged
impairment
of
sovereignty
in
the
raised
in
IPC
686
but
this
claim
was
limited
to
prior
use
in
the
exercise
of
legislative
and
judicial
powers
is
balanced
by
the
Philippines
only.
Prior
use
in
IPC
2049
stems
from
the
adoption
of
the
generally
accepted
principles
of
international
respondents
claims
originator
of
the
word
and
symbol
law
as
part
of
the
law
of
the
land
and
the
adherence
of
the
“Barbizon”,
as
the
first
and
registered
user
of
the
mark
Constitution
to
the
policy
of
cooperation
and
amity
with
all
attached
to
its
products
which
have
been
sold
and
advertised
nations.
would
arise
for
a
considerable
number
of
years
prior
to
petitioner’s
first
application.
Indeed,
these
are
substantial
That
the
Senate,
after
deliberation
and
voting,
voluntarily
allegations
that
raised
new
issues
and
necessarily
gave
and
overwhelmingly
gave
its
consent
to
the
WTO
Agreement
respondents
a
new
cause
of
action.
thereby
making
it
“a
part
of
the
law
of
the
land”
is
a
legitimate
exercise
of
its
sovereign
duty
and
power.
We
find
Moreover,
the
cancellation
of
petitioner’s
certificate
no
“patent
and
gross”
arbitrariness
or
despotism
“by
reason
registration
for
failure
to
file
the
affidavit
of
use
arose
after
of
passion
or
personal
hostility”
in
such
exercise.
It
is
not
IPC
686.
This
gave
respondent
another
cause
to
oppose
the
impossible
to
surmise
that
this
Court,
or
at
least
some
of
its
second
application.
members,
may
even
agree
with
petitioners
that
it
is
more
advantageous
to
the
national
interest
to
strike
down
Senate
It
is
also
to
be
noted
that
the
oppositions
in
the
first
and
Resolution
No.
97.
But
that
is
not
a
legal
reason
to
attribute
second
cases
are
based
on
different
laws.
Causes
of
action
grave
abuse
of
discretion
to
the
Senate
and
to
nullify
its
which
are
distinct
and
independent
from
each
other,
decision.
To
do
so
would
constitute
grave
abuse
in
the
although
out
of
the
same
contract,
transaction,
or
state
of
exercise
of
our
own
judicial
power
and
duty.
Ineludibly,
what
facts,
may
be
sued
on
separately,
recovery
on
one
being
no
the
Senate
did
was
a
valid
exercise
of
its
authority.
As
to
bar
to
subsequent
actions
on
others.
The
mere
fact
that
the
whether
such
exercise
was
wise,
beneficial
or
viable
is
same
relief
is
sought
in
the
subsequent
action
will
not
render
outside
the
realm
of
judicial
inquiry
and
review.
That
is
a
the
judgment
in
the
prior
action
operating
as
res
judicata,
matter
between
the
elected
policy
makers
and
the
people.
As
such
as
where
the
actions
are
based
on
different
statutes.
to
whether
the
nation
should
join
the
worldwide
march
toward
trade
liberalization
and
economic
globalization
is
a
Samson
vs.
Daway,
GR
No.
106654,
July
21,
2004
matter
that
our
people
should
determine
in
electing
their
Facts:
policy
makers.
After
all,
the
WTO
Agreement
allows
Samson,
owner/proprietor
of
ITTI
Shoes/Mano
Shoes
Manufacturing
Corporation
located
at
Robinson’s
Galleria,
EDSA
corner
Ortigas
Avenue,
Quezon
City,
did
then
and
there
f) Layout-‐Designs
(Topographies)
of
Integrated
Circuits;
and
willfully,
unlawfully
and
feloniously
distribute,
sell
and/or
g) Protection
of
Undisclosed
Information
(n,
TRIPS).
offer
for
sale
CATERPILLAR
products
such
as
footwear,
garments,
clothing,
bags,
accessories
and
paraphernalia
7. RA
8293
-‐
Intellectual
Property
Law
which
are
closely
identical
to
and/or
colorable
imitations
of
the
authentic
Caterpillar
products
and
likewise
using
PRELIMINARY
MATTERS
trademarks,
symbols
and/or
designs
as
would
cause
confusion,
mistake
or
deception
on
the
part
of
the
buying
1. STATE
POLICY
DECLARATION
–
SEC.
2
public
to
the
damage
and
prejudice
of
CATERPILLAR,
INC.,
the
prior
adopter,
user
and
owner
of
the
following
internationally:
Sec.
2.
Declaration
of
State
Policy.
-‐
The
State
recognizes
that
an
“CATERPILLAR”,
“CAT”,
“CATERPILLAR
&
DESIGN”,
“CAT
AND
effective
intellectual
and
industrial
property
system
is
vital
to
the
DESIGN”,
“WALKING
MACHINES”
and
“TRACK-‐TYPE
TRACTOR
development
of
domestic
and
creative
activity,
facilitates
transfer
&
DESIGN.”
Caterpillar
Inc.
sued
Samson
for
unfair
of
technology,
attracts
foreign
investments,
and
ensures
market
competition
in
RTC.
Samson
filed
a
motion
to
for
the
quashal
access
for
our
products.
It
shall
protect
and
secure
the
exclusive
of
information
for
lack
of
jurisdiction.
Samson
contended
that
rights
of
scientists,
inventors,
artists
and
other
gifted
citizens
to
since
under
Section
170
of
R.A.
No.
8293,
the
penalty
of
their
intellectual
property
and
creations,
particularly
when
imprisonment
for
unfair
competition
does
not
exceed
six
beneficial
to
the
people,
for
such
periods
as
provided
in
this
Act.
years,
the
offense
is
cognizable
by
the
Municipal
Trial
Courts
and
not
by
the
Regional
Trial
Court,
per
R.A.
No.
7691.
The
use
of
intellectual
property
bears
a
social
function.
To
this
end,
xxx
Under
Section
170
of
R.A.
No.
8293,
which
took
the
State
shall
promote
the
diffusion
of
knowledge
and
effect
on
January
1,
1998,
the
criminal
penalty
for
information
for
the
promotion
of
national
development
and
infringement
of
registered
marks,
unfair
competition,
progress
and
the
common
good.
It
is
also
the
policy
of
the
State
to
false
designation
of
origin
and
false
description
or
streamline
administrative
procedures
of
registering
patents,
representation,
is
imprisonment
from
2
to
5
years
and
trademarks
and
copyright,
to
liberalize
the
registration
on
the
a
fine
ranging
from
Fifty
Thousand
Pesos
to
Two
transfer
of
technology,
and
to
enhance
the
enforcement
of
Hundred
Thousand
Pesos.
(jurisdiction
of
Municipal
intellectual
property
rights
in
the
Philippines.
(n)
Trial
Courts)
xxx
Under
Section
27
of
of
R.A.
No.
166
(The
Twentieth
Century
Music
Corp
vs.
Aiken
422
U.S.
151
Trademark
Law)
Facts:
SEC.
27.
Jurisdiction
of
Court
of
First
Instance.
–
All
20Th
Century
Music
Corporation
copyrighted
songs
were
received
actions
under
this
Chapter
[V
–
Infringement]
and
on
the
radio
in
Aiken’s
food
shop
from
a
local
broadcasting
station,
Chapters
VI
[Unfair
Competition]
and
VII
[False
which
was
licensed
by
the
American
Society
of
Composers,
Designation
of
Origin
and
False
Description
or
Authors
and
Publishers
to
perform
the
songs,
but
Aiken
had
no
Representation],
hereof
shall
be
brought
before
the
such
license.
20th
Century
Music
then
sued
Aiken
for
copyright
Court
of
First
Instance.
infringement.
The
District
Court
granted
awards,
but
the
Court
of
Appeals
reversed.
Issue:
Whether
or
not
R.A.
No.
166
was
expressly
repealed
by
R.A.
Issue:
No.
8293?
Whether
the
reception
of
a
radio
broadcast
of
a
copyrighted
musical
composition
can
constitute
copyright
infringement
when
Held:
the
copyright
owner
has
licensed
the
broadcaster
to
perform
the
No,
R.A.
No.
8293
does
not
expressly
repealed
R.A.
166.
SEC.
composition
publicly
for
profit?
239.
Repeals.
–
239.1.
All
Acts
and
parts
of
Acts
inconsistent
herewith,
more
particularly
Republic
Act
No.
165,
as
Held:
amended;
Republic
Act
No.
166,
as
amended;
and
Articles
Aiken
did
not
infringe
upon
20th
Century
exclusive
right,
under
188
and
189
of
the
Revised
Penal
Code;
Presidential
Decree
the
Copyright
Act,
"[t]o
perform
the
copyrighted
work
publicly
for
No.
49,
including
Presidential
Decree
No.
285,
as
amended,
profit,"
since
the
radio
reception
did
not
constitute
a
are
hereby
repealed.
"performance"
of
the
copyrighted
songs.
To
hold
that
Aiken
"performed"
the
copyrighted
works
would
Notably,
the
aforequoted
clause
did
not
expressly
repeal
R.A.
obviously
result
in
a
wholly
unenforceable
regime
of
copyright
law,
No.
166
in
its
entirety,
otherwise,
it
would
not
have
used
the
and
would
also
be
highly
inequitable,
since
(short
of
keeping
his
phrases
“parts
of
Acts”
and
“inconsistent
herewith;”
and
it
radio
turned
off)
one
in
Aiken's
position
would
be
unable
to
would
have
simply
stated
“Republic
Act
No.
165,
as
amended;
protect
himself
from
infringement
liability.
Such
a
ruling,
Republic
Act
No.
166,
as
amended;
and
Articles
188
and
189
moreover,
would
authorize
the
sale
of
an
untold
number
of
of
the
Revised
Penal
Code;
Presidential
Decree
No.
49,
licenses
for
what
is
basically
a
single
rendition
of
a
copyrighted
including
Presidential
Decree
No.
285,
as
amended
are
work,
thus
conflicting
with
the
balanced
purpose
of
the
Copyright
hereby
repealed.”
It
would
have
removed
all
doubts
that
said
Act
of
assuring
the
composer
an
adequate
return
for
the
value
of
specific
laws
had
been
rendered
without
force
and
effect.
his
composition
while,
at
the
same
time,
protecting
the
public
The
use
of
the
phrases
“parts
of
Acts”
and
“inconsistent
from
oppressive
monopolies.
herewith”
only
means
that
the
repeal
pertains
only
to
The
limited
scope
of
the
copyright
holder's
statutory
monopoly,
provisions
which
are
repugnant
or
not
susceptible
of
like
the
limited
copyright
duration
required
by
the
Constitution,
harmonization
with
R.A.
No.
8293.7
Section
27
of
R.A.
No.
reflects
a
balance
of
competing
claims
upon
the
public
interest:
166,
however,
is
consistent
and
in
harmony
with
Section
163
creative
work
is
to
be
encouraged
and
rewarded,
but
private
of
R.A.
No.
8293.
Had
R.A.
No.
8293
intended
to
vest
motivation
must
ultimately
serve
the
cause
of
promoting
broad
jurisdiction
over
violations
of
intellectual
property
rights
with
public
availability
of
literature,
music,
and
the
other
arts.
The
the
Metropolitan
Trial
Courts,
it
would
have
expressly
stated
immediate
effect
of
our
copyright
law
is
to
secure
a
fair
return
for
so
under
Section
163
thereof.
an
"author's"
creative
labor.
But
the
ultimate
aim
is,
by
this
incentive,
to
stimulate
artistic
creativity
for
the
general
public
6. INTELLECTUAL
PROPERTY
RIGHTS
-‐
TRADEMARK
,
good.
"The
sole
interest
of
the
United
States
and
the
primary
COPYRIGHT
AND
PATENTS
Sec.
4.
1,
RA
8293
object
in
conferring
the
monopoly,"
this
Court
has
said,
"lie
in
the
general
benefits
derived
by
the
public
from
the
labors
of
authors."
SEC.
4.
Definitions.
-‐
4.1.
The
term
“intellectual
property
When
technological
change
has
rendered
its
literal
terms
rights”
consists
of:
ambiguous,
the
Copyright
Act
must
be
construed
in
light
of
this
a) Copyright
and
Related
Rights;
basic
purpose.
b) Trademarks
and
Service
Marks;
c) Geographic
Indications;
Feist
Publications
vs.
Rural
Tele
Servs
Co.,
499
U.S.
340,
1991
d) Industrial
Designs;
Facts:
e) Patents;
Rural
Telephone
Service
Company
is
a
certified
public
utility
that
Common
sense
tells
us
that
100
uncopyrightable
facts
do
not
provides
telephone
service
to
several
communities
in
northwest
magically
change
their
status
when
gathered
together
in
one
place.
Kansas.
It
is
subject
to
a
state
regulation
that
requires
all
Yet
copyright
law
seems
to
contemplate
that
compilations
that
telephone
companies
operating
in
Kansas
to
issue
annually
an
consist
exclusively
of
facts
are
potentially
within
its
scope.
Facts
updated
telephone
directory.
Accordingly,
as
a
condition
of
its
are
not
copyrightable.
The
sine
qua
non
of
copyright
is
originality.
monopoly
franchise,
Rural
publishes
a
typical
telephone
directory,
To
qualify
for
copyright
protection,
a
work
must
be
original
to
the
consisting
of
white
pages
and
yellow
pages.
The
white
pages
list
in
author.
See
Harper
Original,
as
the
term
is
used
in
copyright,
alphabetical
order
the
names
of
Rural's
subscribers,
together
with
means
only
that
the
work
was
independently
created
by
the
their
towns
and
telephone
numbers.
The
yellow
pages
list
Rural's
author
(as
opposed
to
copied
from
other
works),
and
that
it
business
subscribers
alphabetically
by
category
and
feature
possesses
at
least
some
minimal
degree
of
creativity.
To
be
sure,
classified
advertisements
of
various
sizes.
Rural
distributes
its
the
requisite
level
of
creativity
is
extremely
low;
even
a
slight
directory
free
of
charge
to
its
subscribers,
but
earns
revenue
by
amount
will
suffice.
The
vast
majority
of
works
make
the
grade
selling
yellow
pages
advertisements.
quite
easily,
as
they
possess
some
creative
spark,
"no
matter
how
Feist
Publications,
Inc.,
is
a
publishing
company
that
specializes
in
crude,
humble
or
obvious"
it
might
be.
area-‐wide
telephone
directories.
Unlike
a
typical
directory,
which
covers
only
a
particular
calling
area,
Feist's
area-‐wide
directories
Why
facts
are
not
copyrightable?
cover
a
much
larger
geographical
range,
reducing
the
need
to
call
No
one
may
claim
originality
as
to
facts.
This
is
because
facts
do
directory
assistance
or
consult
multiple
directories.
The
Feist
not
owe
their
origin
to
an
act
of
authorship.
The
distinction
is
one
directory
that
is
the
subject
of
this
litigation
covers
11
different
between
creation
and
discovery:
the
first
person
to
find
and
telephone
service
areas
in
15
counties
and
contains
46,878
white
report
a
particular
fact
has
not
created
the
fact;
he
or
she
has
pages
listings
-‐-‐
compared
to
Rural's
approximately
7,700
listings.
merely
discovered
its
existence.
One
who
discovers
a
fact
is
not
its
Like
Rural's
directory,
Feist's
is
distributed
free
of
charge
and
"maker"
or
"originator."
The
discoverer
merely
finds
and
records.
includes
both
white
pages
and
yellow
pages.
Feist
and
Rural
compete
vigorously
for
yellow
pages
advertising.
Illustrative
Example
As
the
sole
provider
of
telephone
service
in
its
service
area,
Rural
Census-‐takers
do
not
"create"
the
population
figures
that
emerge
obtains
subscriber
information
quite
easily.
Persons
desiring
from
their
efforts;
in
a
sense,
they
copy
these
figures
from
the
telephone
service
must
apply
to
Rural
and
provide
their
names
world
around
them.
Census
data
therefore
do
not
trigger
and
addresses;
Rural
then
assigns
them
a
telephone
number.
Feist
copyright
because
these
data
are
not
"original"
in
the
is
not
a
telephone
company,
let
alone
one
with
monopoly
status,
constitutional
sense.
The
same
is
true
of
all
facts
-‐-‐
scientific,
and
therefore
lacks
independent
access
to
any
subscriber
historical,
biographical,
and
news
of
the
day.
"They
may
not
be
information.
To
obtain
white
pages
listings
for
its
area-‐wide
copyrighted
and
are
part
of
the
public
domain
available
to
every
directory,
Feist
approached
each
of
the
11
telephone
companies
person."
operating
in
northwest
Kansas
and
offered
to
pay
for
the
right
to
use
its
white
pages
listings.
Factual
compilations,
on
the
other
hand,
may
possess
the
Of
the
11
telephone
companies,
only
Rural
refused
to
license
its
requisite
originality.
The
compilation
author
typically
chooses
listings
to
Feist.
Rural's
refusal
created
a
problem
for
Feist,
as
which
facts
to
include,
in
what
order
to
place
them,
and
how
to
omitting
these
listings
would
have
left
a
gaping
hole
in
its
area-‐ arrange
the
collected
data
so
that
they
may
be
used
effectively
by
wide
directory,
rendering
it
less
attractive
to
potential
yellow
readers.
These
choices
as
to
selection
and
arrangement,
so
long
as
pages
advertisers.
they
are
made
independently
by
the
compiler
and
entail
a
minimal
Unable
to
license
Rural's
white
pages
listings,
Feist
used
them
degree
of
creativity,
are
sufficiently
original
that
Congress
may
without
Rural's
consent.
Feist
began
by
removing
several
protect
such
compilations
through
the
copyright
laws.
Thus,
even
thousand
listings
that
fell
outside
the
geographic
range
of
its
area-‐ a
directory
that
contains
absolutely
no
protectible
written
wide
directory,
then
hired
personnel
to
investigate
the
4,935
that
expression,
only
facts,
meets
the
constitutional
minimum
for
remained.
These
employees
verified
[p*344]
the
data
reported
by
copyright
protection
if
it
features
an
original
selection
or
Rural
and
sought
to
obtain
additional
information.
As
a
result,
a
arrangement.
typical
Feist
listing
includes
the
individual's
street
address;
most
of
Rural's
listings
do
not.
Notwithstanding
these
additions,
however,
Originality
does
not
signify
novelty;
a
work
may
be
original
even
1,309
of
the
46,878
listings
in
Feist's
1983
directory
were
identical
though
it
closely
resembles
other
works
so
long
as
the
similarity
is
to
listings
in
Rural's
1982-‐1983
white
pages.
Four
of
these
were
fortuitous,
not
the
result
of
copying.
To
illustrate,
assume
that
two
fictitious
listings
that
Rural
had
inserted
into
its
directory
to
detect
poets,
each
ignorant
of
the
other,
compose
identical
poems.
copying.
Neither
work
is
novel,
yet
both
are
original
and,
hence,
Rural
sued
for
copyright
infringement
in
the
District
Court
for
the
copyrightable.
District
of
Kansas
taking
the
position
that
Feist,
in
compiling
its
own
directory,
could
not
use
the
information
contained
in
Rural's
Originality
requires
independent
creation
plus
a
modicum
of
white
pages.
Rural
asserted
that
Feist's
employees
were
obliged
to
creativity:
"While
the
word
writings
may
be
liberally
construed,
as
travel
door-‐to-‐door
or
conduct
a
telephone
survey
to
discover
the
it
has
been,
to
include
original
designs
for
engraving,
prints,
&c.,
it
same
information
for
themselves.
Feist
responded
that
such
is
only
such
as
are
original,
and
are
founded
in
the
creative
powers
efforts
were
economically
impractical
and,
in
any
event,
of
the
mind.
The
writings
which
are
to
be
protected
are
the
fruits
unnecessary
because
the
information
copied
was
beyond
the
of
intellectual
labor,
embodied
in
the
form
of
books,
prints,
scope
of
copyright
protection.
engravings,
and
the
like."
Author
-‐
in
a
constitutional
sense
is
to
mean
"he
to
whom
anything
owes
its
origin;
originator;
maker”.
Issue:
Whether
or
not
Telephone
directories
are
copyrightable
or
not?
2. EFFECT
ON
INTERNATIONAL
CONVENTIONS
AND
ON
PRINCIPLE
OF
RECIPROCITY
-‐
SEC
3
&
231
Held:
The
court
rule
that
facts
are
not
copyrightable;
the
other,
that
Sec.
3.
International
Conventions
and
Reciprocity.
-‐
Any
person
compilations
of
facts
generally
are.
There
can
be
no
valid
who
is
a
national
or
who
is
domiciled
or
has
a
real
and
effective
copyright
in
facts
is
universally
understood.
The
most
fundamental
industrial
establishment
in
a
country
which
is
a
party
to
any
axiom
of
copyright
law
is
that
"no
author
may
copyright
his
ideas
convention,
treaty
or
agreement
relating
to
intellectual
property
or
the
facts
he
narrates."
Rural
wisely
concedes
this
point,
noting
rights
or
the
repression
of
unfair
competition,
to
which
the
in
its
brief
that
"facts
and
discoveries,
of
course,
are
not
Philippines
is
also
a
party,
or
extends
reciprocal
rights
to
nationals
themselves
subject
to
copyright
protection."
However,
it
is
of
the
Philippines
by
law,
shall
be
entitled
to
benefits
to
the
extent
beyond
dispute
that
compilations
of
facts
are
within
the
subject
necessary
to
give
effect
to
any
provision
of
such
convention,
treaty
matter
of
copyright.
Compilations
were
expressly
mentioned
in
or
reciprocal
law,
in
addition
to
the
rights
to
which
any
owner
of
the
Copyright
Act
of
1909,
and
again
in
the
Copyright
Act
of
1976.
an
intellectual
property
right
is
otherwise
entitled
by
this
Act.
(n)
NOTES
Sec.
231.
Equitable
Principles
to
Govern
Proceedings
–
In
all
inter
On
what
basis
may
one
claim
a
copyright
in
such
a
work?
partes
proceedings
in
the
Office
under
this
Act,
the
equitable
principles
of
laches,
estoppel,
and
acquiescence
where
applicable,
cream
product,
the
user
must
sufficiently
prove
that
she
may
be
considered
and
applied.
(Sec.
9-‐A,
R.A.
No.
165)
registered
or
used
it
before
anybody
else
did.
The
petitioner’s
copyright
and
patent
registration
of
the
name
and
container
Mirpuri
vs.
CA
GR
No.
114508,
Nov.
19,
1999
(supra)
would
not
guarantee
her
right
to
the
exclusive
use
of
the
same
for
the
reason
that
they
are
not
appropriate
subjects
of
the
said
3. COVERAGE
OF
INTELLECTUAL
PROPERTY
RIGHTS/DIFFERENCES
intellectual
rights.
Consequently,
a
preliminary
injunction
order
SEC.
4.1
cannot
be
issued
for
the
reason
that
the
petitioner
has
not
proven
that
she
has
a
clear
right
over
the
said
name
and
container
to
the
Sec.
4.
Definitions.
–
exclusion
of
others,
not
having
proven
that
she
has
registered
a
Sec.
4.1.
The
term
“intellectual
property
rights”
consists
of:
trademark
thereto
or
used
the
same
before
anyone
did.
a) Copyright
and
Related
Rights;
b) Trademarks
and
Service
Marks;
Pearl
&
Dean
Inc.
Vs
Shoemart
Inc.,
GR
No.
148222,
August
15,
c) Geographic
Indications;
2003
d) Industrial
Designs;
Facts:
e) Patents;
Pearl
&
Dean
(P&D)
is
engaged
in
the
manufacture
of
advertising
f) Layout-‐Designs
(Topographies)
of
Integrated
Circuits;
and
display
units
referred
to
as
light
boxes.
These
units
utilize
specially
g) Protection
of
Undisclosed
Information
(n,
TRIPS).
printed
posters
sandwiched
between
plastic
sheets
and
illuminated
with
backlights.
It
was
able
to
secure
registration
over
these
illuminated
display
units.
The
advertising
light
boxes
were
marketed
under
the
trademark
“Poster
Ads”.
In
1985,
P&D
Kho
vs.
CA
Gr.
No
115758,
March
19,
2002
negotiated
with
defendant
Shoemart,
Inc.
(SMI)
for
the
lease
and
Facts:
installation
of
the
light
boxes
in
SM
North
Edsa.
However,
since
Kho
is
doing
business
under
the
name
and
style
of
KEC
Cosmetics
SM
North
Edsa
was
under
construction,
SMI
offered
as
alternative
Laboratory,
the
registered
owner
of
the
copyrights
Chin
Chun
Su
SM
Makati
and
Cubao.
During
the
signing
of
the
Contract,
SMI
and
Oval
Facial
Cream
Container/Case,
that
she
also
has
patent
only
returned
the
Contract
with
SM
Makati.
Manager
of
petitioner
rights
on
Chin
Chun
Su
&
Device
and
Chin
Chun
Su
for
medicated
reminded
SMI
that
their
agreement
includes
SM
Cubao.
However,
cream
after
purchasing
the
same
from
Quintin
Cheng,
the
SMI
did
not
bother
to
reply.
Instead,
respondent
informed
registered
owner
thereof
in
the
Supplemental
Register
of
the
petitioner
that
they
are
rescinding
the
contract
for
SM
Makati
due
Philippine
Patent
Office.
to
non-‐performance.
Two
years
later,
SMI
engaged
the
services
of
Summerville
advertised
and
sold
Kho’s
cream
products
under
the
EYD
Rainbow
Advertising
to
make
the
light
boxes.
These
were
brand
name
Chin
Chun
Su,
in
similar
containers
that
Kho
uses,
delivered
in
a
staggered
basis
and
installed
at
SM
Megamall
and
thereby
misleading
the
public,
and
resulting
in
the
decline
in
the
SM
City.
In
1989,
petitioner
received
reports
that
exact
copy
of
its
Kho’s
business
sales
and
income;
and,
that
the
Summerville
light
boxes
was
installed
by
SMI.
It
further
discovered
that
North
should
be
enjoined
from
allegedly
infringing
on
the
copyrights
and
Edsa
Marketing
Inc.
(NEMI),
sister
company
of
SMI,
was
set
up
patents
of
the
Kho.
primarily
to
sell
advertising
space
in
lighted
display
units
located
in
Summerville
on
the
other
hand,
alleged
as
their
defense
that
they
SMI’s
different
branches.
Petitioner
sent
letters
to
respondents
are
the
exclusive
and
authorized
importer,
re-‐packer
and
asking
them
to
cease
using
the
light
boxes
and
the
discontinued
distributor
of
Chin
Chun
Su
products
manufactured
by
Shun
Yi
use
of
the
trademark
“Poster
Ads”.
Claiming
that
SMI
and
NEMI
Factory
of
Taiwan;
that
the
said
Taiwanese
manufacturing
failed
to
meet
its
demand,
petitioner
filed
a
case
for
infringement
company
authorized
Summerville
to
register
its
trade
name
Chin
of
trademark
and
copyright,
unfair
competition
and
damages.
SMI
Chun
Su
Medicated
Cream
with
the
Philippine
Patent
Office
and
maintained
that
it
independently
developed
its
poster
panels
other
appropriate
governmental
agencies;
that
KEC
Cosmetics
using
commonly
known
techniques
and
available
technology
Laboratory
of
the
of
Kho
obtained
the
copyrights
through
without
notice
of
or
reference
to
P&D’s
copyright.
In
addition,
it
misrepresentation
and
falsification;
and,
that
the
authority
of
said
that
registration
of
“Poster
Ads”
obtained
by
petitioner
was
Quintin
Cheng,
assignee
of
the
patent
registration
certificate,
to
only
for
stationeries
such
as
letterheads,
envelopes
and
the
like.
distribute
and
market
Chin
Chun
Su
products
in
the
Philippines
“Poster
Ads”
is
a
generic
term
which
cannot
be
appropriated
as
had
already
been
terminated
by
the
said
Taiwanese
trademark,
and,
as
such,
registration
of
such
mark
is
invalid.
It
also
Manufacturing
Company.
stressed
that
P&D
is
not
entitled
to
the
reliefs
sought
because
the
On
December
20,
1991,
Elidad
C.
Kho
filed
a
complaint
for
advertising
display
units
contained
no
copyright
notice
as
injunction
and
damages
with
a
prayer
for
the
issuance
of
a
writ
of
provided
for
by
law.
RTC
found
SMI
and
NEMI
jointly
and
severally
preliminary
injunction,
against
the
Summerville
General
liable
for
infringement
of
copyright
and
trademark.
CA
reversed
Merchandising
and
Company
(Summerville,
for
brevity)
and
Ang
saying
that
it
agreed
with
SMI
that
what
was
copyrighted
was
the
Tiam
Chay.
technical
drawings
only
and
not
the
light
boxes.
Lightboxes
cannot
be
considered
as
either
prints,
pictorial
illustrations,
advertising
Issue:
copies,
labels,
tags
or
box
wraps,
to
be
properly
classified
as
Whether
the
copyright
and
patent
over
the
name
and
container
copyrightable
class
“O”
work.
In
addition,
CA
stressed
that
the
of
a
beauty
cream
product
would
entitle
the
registrant
to
the
use
protective
mantle
of
the
Trademark
Law
extends
only
to
the
and
ownership
over
the
same
to
the
exclusion
of
others?
goods
used
by
the
first
user
as
specified
in
its
certificate
of
registration.
The
registration
of
the
trademark
“Poster
Ads”
covers
Held:
only
stationeries
such
as
letterheads,
envelopes
and
calling
cards
Trademark,
copyright
and
patents
are
different
intellectual
and
newsletter.
property
rights
that
cannot
be
interchanged
with
one
another.
A
trademark
is
any
visible
sign
capable
of
distinguishing
the
goods
Issues:
(trademark)
or
services
(service
mark)
of
an
enterprise
and
shall
(1)
If
the
engineering
or
technical
drawings
of
an
advertising
include
a
stamped
or
marked
container
of
goods.
In
relation
display
unit
are
granted
copyright
protection
is
the
light
box
thereto,
a
trade
name
means
the
name
or
designation
identifying
depicted
in
such
drawings
ipso
facto
also
protected
by
such
or
distinguishing
an
enterprise.
Meanwhile,
the
scope
of
a
copyright?
(2)
Should
the
light
box
be
registered
separately?
(3)
copyright
is
confined
to
literary
and
artistic
works
which
are
Can
the
owner
of
the
registered
trademark
legally
prevent
others
original
intellectual
creations
in
the
literary
and
artistic
domain
from
using
such
mark
if
it
is
mere
abbreviation
of
a
term
protected
from
the
moment
of
their
creation.
Patentable
descriptive
of
his
goods,
services
or
business?
inventions,
on
the
other
hand,
refer
to
any
technical
solution
of
a
problem
in
any
field
of
human
activity
which
is
new,
involves
an
Held:
inventive
step
and
is
industrially
applicable.
(1.)
No.
Copyright
is
purely
statutory.
As
such,
the
rights
are
Kho
has
no
right
to
support
her
claim
for
the
exclusive
use
of
the
limited
to
what
the
statute
confers.
It
may
be
obtained
and
subject
trade
name
and
its
container.
The
name
and
container
of
a
enjoyed
only
with
respect
to
the
subjects
and
by
the
persons,
and
beauty
cream
product
are
proper
subjects
of
a
trademark
on
the
terms
and
conditions
specified
in
the
statute.
Accordingly,
inasmuch
as
the
same
falls
squarely
within
its
definition.
In
order
it
can
cover
only
the
works
falling
within
the
statutory
to
be
entitled
to
exclusively
use
the
same
in
the
sale
of
the
beauty
enumeration
or
description.
Petitioner
secured
copyright
under
classification
class
“O”
work.
Thus,
copyright
protection
extended
Licensing
and
develop
and
implement
strategies
to
only
to
the
technical
drawings
and
not
to
the
light
box
itself
promote
and
facilitate
technology
transfer;
because
the
latter
was
not
at
all
in
the
category
of
“prints,
d. Promote
the
use
of
patent
information
as
a
tool
for
pictorial
illustrations,
advertising
copies,
labels,
tags
and
box
technology
development;
wraps.
What
the
law
does
not
include,
it
excludes,
and
for
the
e. Publish
regularly
in
its
own
publication
the
patents,
marks,
good
reason:
the
light
box
was
not
a
literary
or
artistic
piece
which
utility
models
and
industrial
designs,
issued
and
approved,
could
be
copyrighted
under
the
copyright
law.
And
no
less
clearly,
and
the
technology
transfer
arrangements
registered;
neither
could
the
lack
of
statutory
authority
to
make
the
light
box
f. Administratively
adjudicate
contested
proceedings
copyrightable
be
remedied
by
the
simplistic
act
of
entitling
the
affecting
intellectual
property
rights;
and
copyright
certificate
issued
by
the
National
Library
as
“Advertising
g. Coordinate
with
other
government
agencies
and
the
Display
Units”.
It
must
be
noted
that
copyright
is
confined
to
private
sector
efforts
to
formulate
and
implement
plans
literary
and
artistic
works
which
are
original
intellectual
creations
and
policies
to
strengthen
the
protection
of
intellectual
in
the
literary
and
artistic
domain
protected
from
the
moment
of
property
rights
in
the
country.
their
creation.
(2.)
Yes.
Petitioner
never
secured
a
patent
for
the
light
boxes.
It
5.2. The
Office
shall
have
custody
of
all
records,
books,
drawings,
therefore
acquired
no
patent
rights
which
could
have
protected
its
specifications,
documents,
and
other
papers
and
things
invention,
if
in
fact
it
really
was.
And
because
it
had
no
patent,
relating
to
intellectual
property
rights
applications
filed
with
petitioner
could
not
legally
prevent
anyone
from
manufacturing
or
the
Office.
(n)
commercially
using
the
contraption.
To
be
able
to
effectively
and
legally
preclude
others
from
copying
and
profiting
from
the
Sec.
6.
The
Organizational
Structure
of
the
IPO.
invention,
a
patent
is
a
primordial
requirement.
No
patent,
no
6.1. The
Office
shall
be
headed
by
a
Director
General
who
shall
be
protection.
The
ultimate
goal
of
a
patent
system
is
to
bring
new
assisted
by
two
(2)
Deputies
Director
General.
designs
and
technologies
into
the
public
through
disclosure.
Ideas,
once,
disclosed
to
the
public
without
protection
of
a
valid
patent,
6.2. The
Office
shall
be
divided
into
seven
(7)
Bureaus,
each
of
are
subject
to
appropriation
without
significant
restraint.
The
which
shall
be
headed
by
a
Director
and
assisted
by
an
Patent
Law
has
a
three-‐fold
purpose:
first,
patent
law
seeks
to
Assistant
Director.
These
Bureaus
are:
foster
and
reward
invention;
second,
it
promotes
disclosures
of
a. The
Bureau
of
Patents;
inventions
to
stimulate
further
innovation
and
to
permit
the
b. The
Bureau
of
Trademarks;
public
to
practice
the
invention
once
the
patent
expires;
third,
the
c. The
Bureau
of
Legal
Affairs;
stringent
requirements
for
patent
protection
seek
to
ensure
that
d. The
Documentation,
Information
and
Technology
Transfer
ideas
in
the
public
domain
remain
there
for
the
free
use
of
the
Bureau;
public.
It
is
only
after
an
exhaustive
examination
by
the
patent
e. The
Management
Information
System
and
EDP
Bureau;
office
that
patent
is
issued.
Therefore,
not
having
gone
through
f. The
Administrative,
Financial
and
Personnel
Services
the
arduous
examination
for
patents,
petitioner
cannot
exclude
Bureau;
and
others
from
the
manufacture,
sale
or
commercial
use
of
the
light
g. The
Bureau
of
Copyright
and
Other
Related
Rights.
boxes
on
the
sole
basis
of
its
copyright
certificate
over
the
technical
drawings.
6.3. The
Director
General,
Deputies
Director
General,
Directors
(3.)
Court
agrees
with
CA
that
the
certificate
of
registration
issued
and
Assistant
Directors
shall
be
appointed
by
the
President,
by
the
Director
of
Patents
can
confer
the
exclusive
right
to
use
its
and
the
other
officers
and
employees
of
the
Office
by
the
own
symbol
only
to
those
goods
specified
in
the
certificate,
Secretary
of
Trade
and
Industry,
conformably
with
and
under
subject
to
any
conditions
and
limitations
specified
in
the
the
Civil
Service
Law.
(n)
certificate.
One
who
has
adopted
and
used
a
trademark
on
his
goods
does
not
prevent
the
adoption
and
use
of
the
same
Sec.
7.
The
Director
General
and
Deputies
Director
General.
trademark
by
others
for
products
which
are
of
a
different
7.1. Functions.
-‐
The
Director
General
shall
exercise
the
following
description.
Assuming
arguendo
that
“Poster
Ads”
could
validly
powers
and
functions:
qualify
as
a
trademark,
the
failure
of
petitioner
to
secure
a
a. Manage
and
direct
all
functions
and
activities
of
the
Office,
trademark
registration
for
specific
use
on
the
light
boxes
meant
including
the
promulgation
of
rules
and
regulations
to
that
there
could
not
have
been
any
trademark
infringement
since
implement
the
objectives,
policies,
plans,
programs
and
registration
was
an
essential
element
thereof.
There
is
no
projects
of
the
Office:
Provided,
That
in
the
exercise
of
the
evidence
that
petitioner’s
use
of
“poster
Ads”
was
distinctive
or
authority
to
propose
policies
and
standards
in
relation
to
well-‐known.
As
noted
by
CA,
petitioner’s
expert
witness
himself
the
following:
(1)
the
effective,
efficient,
and
economical
had
testified
that
“Poster
Ads”
was
not
too
generic
a
name.
SO
it
operations
of
the
Office
requiring
statutory
enactment;
(2)
was
difficult
to
identify
it
with
any
company.
This
fact
also
coordination
with
other
agencies
of
government
in
relation
prevented
the
application
of
the
doctrine
of
secondary
meaning.
to
the
enforcement
of
intellectual
property
rights;
(3)
the
“Poster
Ads”
was
generic
and
incapable
of
being
used
as
a
recognition
of
attorneys,
agents,
or
other
persons
trademark
because
it
was
used
in
the
field
of
poster
advertising
representing
applicants
or
other
parties
before
the
Office;
the
very
business
engaged
in
by
petitioner.
Secondary
meaning
and
(4)
the
establishment
of
fees
for
the
filing
and
means
that
a
word
or
phrase
originally
incapable
of
exclusive
processing
of
an
application
for
a
patent,
utility
model
or
appropriation
with
reference
to
an
article
in
the
market
might
industrial
design
or
mark
or
a
collective
mark,
geographic
nevertheless
have
been
used
for
so
long
and
so
exclusively
by
one
indication
and
other
marks
of
ownership,
and
for
all
other
producer
with
reference
to
his
article
that,
in
the
trade
and
to
that
services
performed
and
materials
furnished
by
the
Office,
branch
of
the
purchasing
public,
the
word
or
phrase
has
come
to
the
Director
General
shall
be
subject
to
the
supervision
of
mean
that
the
article
was
his
property.
Petition
was
denied.
the
Secretary
of
Trade
and
Industry;
b. Exercise
exclusive
appellate
jurisdiction
over
all
decisions
4. THE
INTELLECTUAL
PROPERTY
OFFICE
-‐
SEC
5
TO
SEC
16,
AS
rendered
by
the
Director
of
Legal
Affairs,
the
Director
of
AMENDED
Patents,
the
Director
of
Trademarks,
the
Director
of
Copyright
and
Other
Related
Rights,
and
the
Director
of
the
Sec.
5.
Functions
of
the
Intellectual
Property
Office
(IPO).
Documentation,
Information
and
Technology
Transfer
5.1. To
administer
and
implement
the
State
policies
declared
in
Bureau.
The
decisions
of
the
Director
General
in
the
this
Act,
there
is
hereby
created
the
Intellectual
Property
exercise
of
his
appellate
jurisdiction
in
respect
of
the
Office
(IPO)
which
shall
have
the
following
functions:
decisions
of
the
Director
of
Patents,
the
Director
of
a. Examine
applications
for
grant
of
letters
patent
for
Trademarks
and
the
Director
of
Copyright
and
Other
inventions
and
register
utility
models
and
industrial
designs;
Related
Rights
shall
be
appealable
to
the
Court
of
Appeals
b. Examine
applications
for
the
registration
of
marks,
in
accordance
with
the
Rules
of
Court;
and
those
in
respect
geographic
indication,
integrated
circuits;
of
the
decisions
of
the
Director
of
Documentation,
c. Register
technology
transfer
arrangements
and
settle
Information
and
Technology
Transfer
Bureau
shall
be
disputes
involving
technology
transfer
payments
covered
appealable
to
the
Secretary
of
Trade
and
Industry;
by
the
provisions
of
Part
II,
Chapter
IX
on
Voluntary
c. Undertake
enforcement
functions
supported
by
concerned
models,
and
industrial
designs;
and
petitions
for
compulsory
agencies
such
as
the
Philippine
National
Police,
the
licensing
of
patents;
National
Bureau
of
Investigation,
the
Bureau
of
Customs,
10.2.
the
Optical
Media
Board,
and
the
local
government
units,
(a) Exercise
original
jurisdiction
in
administrative
complaints
among
others;
for
violations
of
laws
involving
intellectual
property
d. Conduct
visits
during
reasonable
hours
to
establishments
rights:
Provided,
That
its
jurisdiction
is
limited
to
and
businesses
engaging
in
activities
violating
intellectual
complaints
where
the
total
damages
claimed
are
not
less
property
rights
and
provisions
of
this
Act
based
on
report,
than
Two
hundred
thousand
pesos
(Php
200,000):
information
or
complaint
received
by
the
office;
and
Provided
further,
That
availment
of
the
provisional
e. Such
other
functions
in
furtherance
of
protecting
IP
rights
remedies
may
be
granted
in
accordance
with
the
Rules
and
objectives
of
this
Act.
of
Court.
The
Director
of
Legal
Affairs
shall
have
the
power
to
hold
and
punish
for
contempt
all
those
who
7.2. Qualifications.
-‐
The
Director
General
and
the
Deputies
disregard
orders
or
writs
issued
in
the
course
of
the
Director
General
must
be
natural
born
citizens
of
the
proceedings.
(n)
Philippines,
at
least
thirty-‐five
(35)
years
of
age
on
the
day
of
(b) After
formal
investigation,
the
Director
for
Legal
Affairs
their
appointment,
holders
of
a
college
degree,
and
of
proven
may
impose
one
(1)
or
more
of
the
following
competence,
integrity,
probity
and
independence:
Provided,
administrative
penalties:
That
the
Director
General
and
at
least
one
(1)
Deputy
Director
(i.) The
issuance
of
a
cease
and
desist
order
which
shall
General
shall
be
members
of
the
Philippine
Bar
who
have
specify
the
acts
that
the
respondent
shall
cease
and
engaged
in
the
practice
of
law
for
at
least
ten
(10)
years:
desist
from
and
shall
require
him
to
submit
a
Provided
further,
That
in
the
selection
of
the
Director
General
compliance
report
within
a
reasonable
time
which
and
the
Deputies
Director
General,
consideration
shall
be
shall
be
fixed
in
the
order;
given
to
such
qualifications
as
would
result,
as
far
as
(ii.) The
acceptance
of
a
voluntary
assurance
of
practicable,
in
the
balanced
representation
in
the
Directorate
compliance
or
discontinuance
as
may
be
imposed.
General
of
the
various
fields
of
intellectual
property.
Such
voluntary
assurance
may
include
one
or
more
of
the
following:
7.3. Term
of
Office.
-‐
The
Director
General
and
the
Deputies
(1) An
assurance
to
comply
with
the
provisions
of
Director
General
shall
be
appointed
by
the
President
for
a
the
intellectual
property
law
violated;
term
of
five
(5)
years
and
shall
be
eligible
for
reappointment
(2) An
assurance
to
refrain
from
engaging
in
only
once:
Provided,
That
the
first
Director
General
shall
have
unlawful
and
unfair
acts
and
practices
subject
a
first
term
of
seven
(7)
years.
Appointment
to
any
vacancy
of
the
formal
investigation;
shall
be
only
for
the
unexpired
term
of
the
predecessor.
(3) An
assurance
to
recall,
replace,
repair,
or
refund
the
money
value
of
defective
goods
7.4. The
Office
of
the
Director
General.
-‐
The
Office
of
the
distributed
in
commerce;
and
Director
General
shall
consist
of
the
Director
General
and
the
(4) An
assurance
to
reimburse
the
complainant
Deputies
Director
General,
their
immediate
staff
and
such
the
expenses
and
costs
incurred
in
prosecuting
Offices
and
Services
that
the
Director
General
will
set
up
to
the
case
in
the
Bureau
of
Legal
Affairs.
support
directly
the
Office
of
the
Director
General.
(n)
(5) The
Director
of
Legal
Affairs
may
also
require
the
respondent
to
submit
periodic
compliance
Sec.
8.
The
Bureau
of
Patents.
-‐
The
Bureau
of
Patents
shall
have
reports
and
file
a
bond
to
guarantee
the
following
functions:
compliance
of
his
undertaking;
8.1. Search
and
examination
of
patent
applications
and
the
grant
of
patents;
(iii.) The
condemnation
or
seizure
of
products
which
are
8.2. Registration
of
utility
models,
industrial
designs,
and
subject
of
the
offense.
The
goods
seized
hereunder
integrated
circuits;
and
shall
be
disposed
of
in
such
manner
as
may
be
8.3. Conduct
studies
and
researches
in
the
field
of
patents
in
order
deemed
appropriate
by
the
Director
of
Legal
Affairs,
to
assist
the
Director
General
in
formulating
policies
on
the
such
as
by
sale,
donation
to
distressed
local
administration
and
examination
of
patents.
(n)
governments
or
to
charitable
or
relief
institutions,
exportation,
recycling
into
other
goods,
or
any
Sec.
9.
The
Bureau
of
Trademarks.
-‐
The
Bureau
of
Trademarks
combination
thereof,
under
such
guidelines
as
he
shall
have
the
following
functions:
may
provide;
9.1. Search
and
examination
of
the
applications
for
the
(iv.) The
forfeiture
of
paraphernalia
and
all
real
and
registration
of
marks,
geographic
indications
and
other
marks
personal
properties
which
have
been
used
in
the
of
ownership
and
the
issuance
of
the
certificates
of
commission
of
the
offense;
registration;
and
(v.) The
imposition
of
administrative
fines
in
such
9.2. Conduct
studies
and
researches
in
the
field
of
trademarks
in
amount
as
deemed
reasonable
by
the
Director
of
order
to
assist
the
Director
General
in
formulating
policies
on
Legal
Affairs,
which
shall
in
no
case
be
less
than
the
administration
and
examination
of
trademarks.
(n)
Five
thousand
pesos
(Php
5,000)
nor
more
than
One
hundred
fifty
thousand
pesos
(Php
150,000).
In
Sec.
9A.
The
Bureau
of
Copyright
and
Other
Related
Rights.
-‐
The
addition,
an
additional
fine
of
not
more
than
One
Bureau
of
Copyright
and
Other
Related
Rights
shall
have
the
thousand
pesos
(Php
1,000)
shall
be
imposed
for
following
functions:
each
day
of
continuing
violation;
9A.1. Exercise
original
jurisdiction
to
resolve
disputes
relating
(vi.) The
cancellation
of
any
permit,
license,
authority,
or
to
the
terms
of
a
license
involving
the
author’s
right
to
public
registration
which
may
have
been
granted
by
the
performance
or
other
communication
of
his
work;
Office,
or
the
suspension
of
the
validity
thereof
for
9A.2. Accept,
review
and
decide
on
applications
for
the
such
period
of
time
as
the
Director
of
Legal
Affairs
accreditation
of
collective
management
organizations
or
may
deem
reasonable
which
shall
not
exceed
one
(1)
similar
entities;
year;
9A.3. Conduct
studies
and
researches
in
the
field
of
copyright
(vii.) The
withholding
of
any
permit,
license,
authority,
or
and
related
rights;
and
registration
which
is
being
secured
by
the
9A.4. Provide
other
copyright
and
related
rights
service
and
respondent
from
the
Office;
charge
reasonable
fees
therefor.
(viii.) The
assessment
of
damages;
(ix.) Censure;
and
Sec.
10.
The
Bureau
of
Legal
Affairs.
-‐
The
Bureau
of
Legal
Affairs
(x.) Other
analogous
penalties
or
sanctions.
(Sec.
6,
7,
8,
shall
have
the
following
functions:
and
9,
Executive
Order
No.
913
[1983]
a)
10.1. Hear
and
decide
opposition
to
the
application
for
registration
of
marks;
cancellation
of
trademarks;
subject
to
10.3. The
Director
General
may
by
Regulations
establish
the
the
provisions
of
Section
64,
cancellation
of
patents,
utility
procedure
to
govern
the
implementation
of
this
Section.
(n)
13.4. The
Human
Resource
Development
Service
shall
design
Sec.
11.
The
Documentation,
Information
and
Technology
and
implement
human
resource
development
plans
and
Transfer
Bureau.
-‐
The
Documentation,
Information
and
programs
for
the
personnel
of
the
Office;
provide
for
present
Technology
Transfer
Bureau
shall
have
the
following
functions:
and
future
manpower
needs
of
the
organization;
maintain
11.1. Support
the
search
and
examination
activities
of
the
high
morale
and
favorable
employee
attitudes
towards
the
Office
through
the
following
activities:
organization
through
the
continuing
design
and
(a) Maintain
and
upkeep
classification
systems
whether
implementation
of
employee
development
programs.
(n)
they
be
national
or
international
such
as
the
International
Patent
Classification
(IPC)
system;
Sec.
14.
Use
of
Intellectual
Property
Rights
Fees
by
the
IPO.
(b) Provide
advisory
services
for
the
determination
of
14.1. For
a
more
effective
and
expeditious
implementation
of
search
patterns;
this
Act,
the
approval
from
any
government
agency,
and
(c) Maintain
search
files
and
search
rooms
and
reference
subject
only
to
the
existing
accounting
and
auditing
rules
and
libraries;
and
regulations,
all
the
fees,
fines,
royalties
and
other
charges,
(d) Adapt
and
package
industrial
property
information.
collected
by
the
Office
under
this
Act
and
the
other
laws
that
the
Office
will
be
mandated
to
administer,
for
use
in
its
11.2. Establish
networks
or
intermediaries
or
regional
operations,
like
upgrading
of
its
facilities,
equipment
outlay,
representatives;
human
resource
development,
and
the
acquisition
of
the
11.3. Educate
the
public
and
build
awareness
on
intellectual
appropriate
office
space,
among
others,
to
improve
the
property
through
the
conduct
of
seminars
and
lectures,
and
delivery
of
its
services
to
the
public.
This
amount,
which
shall
other
similar
activities;
be
in
addition
to
the
Office's
annual
budget,
shall
be
11.4. Establish
working
relations
with
research
and
deposited
and
maintained
in
a
separate
account
or
fund,
development
institutions
as
well
as
with
local
and
which
may
be
used
or
disbursed
directly
by
the
Director
international
intellectual
property
professional
groups
and
General.
the
like;
14.2. After
five
(5)
years
from
the
coming
into
force
of
this
Act,
11.5. Perform
state-‐of-‐the-‐art
searches;
the
Director
General
shall,
subject
to
the
approval
of
the
11.6. Promote
the
use
of
patent
information
as
an
effective
Secretary
of
Trade
and
Industry,
determine
if
the
fees
and
tool
to
facilitate
the
development
of
technology
in
the
charges
mentioned
in
Subsection
14.1
hereof
that
the
Office
country;
shall
collect
are
sufficient
to
meet
its
budgetary
requirements.
11.7. Provide
technical,
advisory,
and
other
services
relating
If
so,
it
shall
retain
all
the
fees
and
charges
it
shall
collect
to
the
licensing
and
promotion
of
technology,
and
carry
out
under
the
same
conditions
indicated
in
said
Subsection
14.1
an
efficient
and
effective
program
for
technology
transfer;
but
shall
forthwith,
cease
to
receive
any
funds
from
the
and
annual
budget
of
the
National
Government;
if
not,
the
11.8. Register
technology
transfer
arrangements,
and
settle
provisions
of
said
Subsection
14.1
shall
continue
to
apply
until
disputes
involving
technology
transfer
payments.
(n)
such
time
when
the
Director
General,
subject
to
the
approval
of
the
Secretary
of
Trade
and
Industry,
certifies
that
the
Sec.
12.
The
Management
Information
Services
and
EDP
Bureau.
above
stated
fees
and
charges
the
Office
shall
collect
are
-‐
The
Management
Information
Services
and
EDP
Bureau
shall:
enough
to
fund
its
operations.
(n).
12.1. Conduct
automation
planning,
research
and
development,
testing
of
systems,
contracts
with
firms,
Sec.
15.
Special
Technical
and
Scientific
Assistance.
-‐
The
Director
contracting,
purchase
and
maintenance
of
equipment,
design
General
is
empowered
to
obtain
the
assistance
of
technical,
and
maintenance
of
systems,
user
consultation,
and
the
like;
scientific
or
other
qualified
officers
and
employees
of
other
and
departments,
bureaus,
offices,
agencies
and
instrumentalities
of
12.2. Provide
management
information
support
and
service
to
the
Government,
including
corporations
owned,
controlled
or
the
Office.
(n)
operated
by
the
Government,
when
deemed
necessary
in
the
consideration
of
any
matter
submitted
to
the
Office
relative
to
the
Sec.
13.
The
Administrative,
Financial
and
Human
Resource
enforcement
of
the
provisions
of
this
Act.
(Sec.
3,
R.A.
No.
165a)
Development
Service
Bureau.
13.1. The
Administrative
Service
shall:
Sec.
16.
Seal
of
Office.
-‐
The
Office
shall
have
a
seal,
the
form
and
(a) Provide
services
relative
to
procurement
and
allocation
of
design
of
which
shall
be
approved
by
the
Director
General.
(Sec.
4,
supplies
and
equipment,
transportation,
messengerial
R.A.No.
165a)
work,
cashiering,
payment
of
salaries
and
other
Office's
obligations,
office
maintenance,
proper
safety
and
Pest
Management
Association
of
the
Philippines
vs.
Fertilizer
and
security,
and
other
utility
services;
and
comply
with
Pesticide
Authority
GR
15604,
February
21,
2007
government
regulatory
requirements
in
the
areas
of
Facts:
performance
appraisal,
compensation
and
benefits,
The
case
commenced
upon
PMAP’s
filing
of
a
Petition
For
employment
records
and
reports;
Declaratory
Relief
With
Prayer
For
Issuance
Of
A
Writ
Of
(b) Receive
all
applications
filed
with
the
Office
and
collect
Preliminary
Injunction
And/Or
Temporary
Restraining
Order
with
fees
therefore;
and
the
RTC
on
January
4,
2002.
Petitioner,
a
non-‐stock
corporation
(c) Publish
patent
applications
and
grants,
trademark
duly
organized
and
existing
under
the
laws
of
the
Philippines,
is
an
applications,
and
registration
of
marks,
industrial
designs,
association
of
pesticide
handlers
duly
licensed
by
respondent
utility
models,
geographic
indication,
and
lay-‐out-‐designs
Fertilizer
and
Pesticide
Authority
(FPA).
It
questioned
the
validity
of
integrated
circuits
registrations.
of
Section
3.12
of
the
1987
Pesticide
Regulatory
Policies
and
Implementing
Guidelines,
which
provides
thus:
13.2. The
Patent
and
Trademark
Administration
Services
shall
3.12
Protection
of
Proprietary
Data.
Data
submitted
to
perform
the
following
functions
among
others:
support
the
first
full
or
conditional
registration
of
a
pesticide
(a) Maintain
registers
of
assignments,
mergings,
licenses,
active
ingredient
in
the
Philippines
will
be
granted
and
bibliographic
on
patents
and
trademarks;
proprietary
protection
for
a
period
of
seven
years
from
the
(b) Collect
maintenance
fees,
issue
certified
copies
of
date
of
such
registration.
During
this
period
subsequent
documents
in
its
custody
and
perform
similar
other
registrants
may
rely
on
these
data
only
with
third
party
activities;
and
authorization
or
otherwise
must
submit
their
own
data.
(c) Hold
in
custody
all
the
applications
filed
with
the
office,
After
this
period,
all
data
may
be
freely
cited
in
support
of
and
all
patent
grants,
certificate
of
registrations
issued
registration
by
any
applicant,
provided
convincing
proof
is
by
the
office,
and
the
like.
submitted
that
the
product
being
registered
is
identical
or
substantially
similar
to
any
current
registered
pesticide,
or
13.3. The
Financial
Service
shall
formulate
and
manage
a
differs
only
in
ways
that
would
not
significantly
increase
the
financial
program
to
ensure
availability
and
proper
utilization
risk
of
unreasonable
adverse
effects.
of
funds;
provide
for
an
effective
monitoring
system
of
the
financial
operations
of
the
Office;
and
Issue:
Whether
or
not
FPA
encroach
upon
the
jurisdiction
of
the
FIRST
ISSUE:
Yes,
the
IPO
(an
administrative
body)
has
jurisdiction
Intellectual
Property
Office?
in
cases
involving
provisions
of
the
IPC
(e.g.
unfair
competition)
due
to
the
following
reasons:
Held:
There
is
no
encroachment
upon
the
powers
of
the
IPO
granted
Section
10
of
the
Intellectual
Property
Code
specifically
under
R.A.
No.
8293,
otherwise
known
as
the
Intellectual
Property
identifies
the
functions
of
the
Bureau
of
Legal
Affairs,
thus:
Code
of
the
Philippines.
Section
5
thereof
enumerates
the
Section
10.
The
Bureau
of
Legal
Affairs.“The
Bureau
of
Legal
functions
of
the
IPO.
Nowhere
in
said
provision
does
it
state
nor
Affairs
shall
have
the
following
functions:
can
it
be
inferred
that
the
law
intended
the
IPO
to
have
the
exclusive
authority
to
protect
or
promote
intellectual
property
10.1
Hear
and
decide
opposition
to
the
application
for
rights
in
the
Philippines.
On
the
contrary,
paragraph
(g)
of
said
registration
of
marks;
cancellation
of
trademarks;
subject
to
Section
even
provides
that
the
IPO
shall
"[c]oordinate
with
other
the
provisions
of
Section
64,
cancellation
of
patents
and
government
agencies
and
the
private
sector
efforts
to
formulate
utility
models,
and
industrial
designs;
and
petitions
for
and
implement
plans
and
policies
to
strengthen
the
protection
of
compulsory
licensing
of
patents;
intellectual
property
rights
in
the
country."
Clearly,
R.A.
No.
8293
recognizes
that
efforts
to
fully
protect
intellectual
property
rights
10.2
(a)
Exercise
original
jurisdiction
in
administrative
cannot
be
undertaken
by
the
IPO
alone.
Other
agencies
dealing
complaints
for
violations
of
laws
involving
intellectual
with
intellectual
property
rights
are,
therefore,
not
precluded
property
rights;
Provided,
That
its
jurisdiction
is
limited
to
from
issuing
policies,
guidelines
and
regulations
to
give
protection
complaints
where
the
total
damages
claimed
are
not
less
to
such
rights.
than
Two
hundred
thousand
pesos
(P200,000):
Provided,
Lastly,
FPA
emphasize
that
the
provision
on
protection
of
futher,
That
availment
of
the
provisional
remedies
may
be
proprietary
data
does
not
usurp
the
functions
of
the
Intellectual
granted
in
accordance
with
the
Rules
of
Court.
Xxx
Property
Office
(IPO)
since
a
patent
and
data
protection
are
two
different
matters.
A
patent
prohibits
all
unlicensed
making,
using
xxx
and
selling
of
a
particular
product,
while
data
protection
accorded
(vi)
The
cancellation
of
any
permit,
license,
authority,
or
by
the
FPA
merely
prevents
copying
or
unauthorized
use
of
an
registration
which
may
have
been
granted
by
the
Office,
or
applicant's
data,
but
any
other
party
may
independently
generate
the
suspension
of
the
validity
thereof
for
such
period
of
time
and
use
his
own
data.
It
is
further
argued
that
under
Republic
Act
as
the
Director
of
Legal
Affairs
may
deem
reasonable
which
No.
8293
(R.A.
No.
8293),
the
grant
of
power
to
the
IPO
to
shall
not
exceed
one
(1)
year;
administer
and
implement
State
policies
on
intellectual
property
is
xxx
not
exclusionary
as
the
IPO
is
even
allowed
to
coordinate
with
(viii)
The
assessment
of
damages;
other
government
agencies
to
formulate
and
implement
plans
and
policies
to
strengthen
the
protection
of
intellectual
property
rights.
Unquestionably,
petitioner’s
complaint,
which
seeks
the
cancellation
of
the
disputed
mark
in
the
name
of
respondent
In-‐N-‐Out
Burger
Inc.,
vs.
Sehwani,
Incorporated
and/or
Benita’s
Sehwani,
Incorporated,
and
damages
for
violation
of
Frites
Inc.,
Gr
No.
1792127,
December
24,
2008
petitioner’s
intellectual
property
rights,
falls
within
the
Facts:
jurisdiction
of
the
IPO
Director
of
Legal
Affairs.
Petitioner
IN-‐N-‐OUT
BURGER,
INC.,
is
a
business
entity
incorporated
under
the
laws
of
California.
It
is
a
signatory
to
the
While
Section
163
thereof
vests
in
civil
courts
jurisdiction
over
Convention
of
Paris
on
Protection
of
Industrial
Property
and
the
cases
of
unfair
competition,
nothing
in
the
said
section
states
that
TRIPS
Agreement.
It
is
engaged
mainly
in
the
restaurant
business,
the
regular
courts
have
sole
jurisdiction
over
unfair
competition
but
it
has
never
engaged
in
business
in
the
Philippines.
cases,
to
the
exclusion
of
administrative
bodies.
Sections
160
and
170,
which
are
also
found
under
Part
III
of
the
Respondents
Sehwani,
Incorporated
and
Benita
Frites,
Inc.
are
Intellectual
Property
Code,
recognize
the
concurrent
jurisdiction
corporations
organized
in
the
Philippines.
Sometime
in
1991,
of
civil
courts
and
the
IPO
over
unfair
competition
cases.
Sehwani
filed
with
the
BPTTT
an
application
for
the
registration
of
These
two
provisions
read:
the
mark
“IN
N
OUT
(the
inside
of
the
letter
“O”
formed
like
a
star).
Its
application
was
approved
and
a
certificate
of
registration
was
Section
160.
Right
of
Foreign
Corporation
to
Sue
in
Trademark
or
issued
in
its
name
on
1993.
In
2000,
Sehwani,
Incorporated
and
Service
Mark
Enforcement
Action.
Any
foreign
national
or
juridical
Benita
Frites,
Inc.
entered
into
a
Licensing
Agreement,
wherein
person
who
meets
the
requirements
of
Section
3
of
this
Act
and
the
former
entitled
the
latter
to
use
its
registered
mark,
“IN
N
does
not
engage
in
business
in
the
Philippines
may
bring
a
civil
or
OUT.”
administrative
action
hereunder
for
opposition,
cancellation,
infringement,
unfair
competition,
or
false
designation
of
origin
Sometime
in
1997,
In-‐N-‐Out
Burger
filed
trademark
and
service
and
false
description,
whether
or
not
it
is
licensed
to
do
business
mark
applications
with
the
Bureau
of
Trademarks
for
the
“IN-‐N-‐ in
the
Philippines
under
existing
laws.
OUT”
and
“IN-‐N-‐OUT
Burger
&
Arrow
Design.
In
2000,
In-‐N-‐Out
Burger
found
out
that
Sehwani,
Incorporated
had
already
Section
170.
Penalties.
Independent
of
the
civil
and
administrative
obtained
Trademark
Registration
for
the
mark
“IN
N
OUT
(the
sanctions
imposed
by
law,
a
criminal
penalty
of
imprisonment
inside
of
the
letter
“O”
formed
like
a
star).”
Also
in
2000,
In-‐N-‐Out
from
two
(2)
years
to
five
(5)
years
and
a
fine
ranging
from
Fifty
Burger
sent
a
demand
letter
directing
Sehwani,
Inc.
to
cease
and
thousand
pesos
(P50,000)
to
Two
hundred
thousand
pesos
desist
from
claiming
ownership
of
the
mark
“IN-‐N-‐OUT”
and
to
(P200,000),
shall
be
imposed
on
any
person
who
is
found
guilty
of
voluntarily
cancel
its
trademark
registration.
Sehwani
Inc.
did
not
committing
any
of
the
acts
mentioned
in
Section
155,
Section168,
accede
to
In-‐N-‐Out
Burger’s
demand
but
it
expressed
its
and
Subsection169.1.
willingness
to
surrender
its
registration
for
a
consideration.
Based
on
the
foregoing
discussion,
the
IPO
Director
of
Legal
Affairs
In
2001
In-‐N-‐Out
Burger
filed
before
the
Bureau
of
Legal
Affairs
an
had
jurisdiction
to
decide
the
petitioner’s
administrative
case
administrative
complaint
against
the
Sehwani,
Inc.
and
Benita
against
respondents
and
the
IPO
Director
General
had
exclusive
Frites,
Inc.
for
unfair
competition
and
cancellation
of
trademark
jurisdiction
over
the
appeal
of
the
judgment
of
the
IPO
Director
of
registration.
Legal
Affairs.
Issues:
SECOND
ISSUE:
Yes.
The
evidence
on
record
shows
that
Sehwani
(1)
Whether
or
not
the
Intellectual
Property
Office
(an
Inc.
and
Benita
Frites
were
not
using
their
registered
trademark
administrative
body)
have
jurisdiction
of
cases
involving
provisions
but
that
of
In-‐n-‐Out
Burger.
Sehwani
and
Benita
Frites
are
also
of
the
IPC
(e.g.
unfair
competition).
(2)
[1]
Whether
or
not
there
giving
their
products
the
general
appearance
that
would
likely
was
unfair
competition.
influence
the
purchasers
to
believe
that
their
products
are
that
of
In-‐N-‐Out
Burger.
The
intention
to
deceive
may
be
inferred
from
Held:
the
similarity
of
the
goods
as
packed
and
offered
for
sale,
and,
thus,
an
action
will
lie
to
restrain
unfair
competition.
The
respondents’
frauduulent
intention
to
deceive
purchasers
is
also
c)
Is
there
forum
shopping
when
a
party
files
two
actions
with
two
apparent
in
their
use
of
the
In-‐N-‐Out
Burger
in
business
signages.
seemingly
different
causes
of
action
and
yet
pray
for
the
same
relief?
The
essential
elements
of
an
action
for
unfair
competition
are
(1)
confusing
similarity
in
the
general
appearance
of
the
goods
and
(2)
Held:
intent
to
deceive
the
public
and
defraud
a
competitor.
The
a)
No.
The
provision
of
R.A.
165,
from
which
the
Pfizer’s
patent
confusing
similarity
may
or
may
not
result
from
similarity
in
the
was
based,
clearly
states
that
"[the]
patentee
shall
have
the
marks,
but
may
result
from
other
external
factors
in
the
packaging
exclusive
right
to
make,
use
and
sell
the
patented
machine,
article
or
presentation
of
the
goods.
The
intent
to
deceive
and
defraud
or
product,
and
to
use
the
patented
process
for
the
purpose
of
may
be
inferred
from
the
similarity
of
the
appearance
of
the
industry
or
commerce,
throughout
the
territory
of
the
Philippines
goods
as
offered
for
sale
to
the
public.
Actual
fraudulent
intent
for
the
term
of
the
patent;
and
such
making,
using,
or
selling
by
need
not
be
shown.
any
person
without
the
authorization
of
the
patentee
constitutes
infringement
of
the
patent."
[1]
IPO
–
Director
of
Legal
Affairs
decision
In-‐N-‐Out
Burger
has
legal
capacity
to
sue
in
the
Philippines
Clearly,
the
patentee’s
exclusive
rights
exist
only
during
the
term
because
the
latter
is
a
signatory
of
the
Convention
of
Paris
on
of
the
patent.
Since
the
patent
was
registered
on
16
July
1987,
it
Protection
of
Industrial
Property.
expired,
in
accordance
with
the
provisions
of
R.A.
165,
after
17
IN-‐N-‐OUT
Burger,
Inc.
–
right
to
use
its
tradename
and
mark
to
the
years,
or
16
July
2004.
Thus,
after
16
July
2004,
Pfizer
no
longer
exclusion
of
the
others
possessed
the
exclusive
right
to
make,
use,
and
sell
the
products
Respondents’
use
of
the
petitioner’s
mark
was
made
in
good
faith
covered
by
their
patent.
The
CA
was
wrong
in
issuing
a
temporary
and
therefore
they
are
not
guilty
of
unfair
competition.
restraining
order
after
the
cut-‐off
date.
IPO
–
Director
General’s
Decision
b)
According
to
IP
Code,
the
Director
General
of
the
IPO
exercises
Respondents
are
guilty
of
unfair
competition.
exclusive
jurisdiction
over
decisions
of
the
IPO-‐BLA.
The
question
The
following
are
ordered
to
be
paid
to
In-‐N-‐Out
Burger,
inc.
in
the
CA
concerns
an
interlocutory
order,
and
not
a
decision.
Damages
in
the
amount
of
PHP
212,
574.28
Since
the
IP
Code
and
the
Rules
and
Regulations
are
bereft
of
any
Exemplary
damages
in
the
amount
of
PHP
500,000
remedy
regarding
interlocutory
orders
of
the
IPO-‐BLA,
the
only
Attorney’s
fees
and
expenses
of
litigation
in
the
amount
of
PHP
remedy
available
to
Pfizer
is
to
apply
the
Rules
and
Regulations
500,000
suppletorily.
Under
the
Rules,
a
petition
for
certiorari
to
the
CA
is
the
proper
remedy.
This
is
consistent
with
the
Rules
of
Court.
Thus,
CA
Decision
the
CA
had
jurisdiction.
Regular
courts,
and
not
the
BLA-‐IPO,
have
sole
jurisdiction
to
hear
and
decide
cases
involving
provisions
of
the
IPC.
c)
Yes.
Forum
shopping
is
defined
as
the
act
of
a
party
against
whom
an
adverse
judgment
has
been
rendered
in
one
forum,
of
Phil
Pharmawealth,
Inc.
v.
Pfier,
Inc.
And
Pfizer
(Phil.)
Inc.,
GR
No.
seeking
another
(and
possibly
favorable)
opinion
in
another
forum
167715,
November
17,
2010
(other
than
by
appeal
or
the
special
civil
action
of
certiorari),
or
Facts:
the
institution
of
two
(2)
or
more
actions
or
proceedings
grounded
Pfizer
is
the
registered
owner
of
a
patent
pertaining
to
Sulbactam
on
the
same
cause
on
the
supposition
that
one
or
the
other
court
Ampicillin.
It
is
marketed
under
the
brand
name
“Unasyn.”
would
make
a
favorable
disposition.
Sometime
in
January
and
February
2003,
Pfizer
discovered
that
Pharmawealth
submitted
bids
for
the
supply
of
Sulbactam
The
elements
of
forum
shopping
are:
(a)
identity
of
parties,
or
at
Ampicillin
to
several
hospitals
without
the
Pfizer’s
consent.
Pfizer
least
such
parties
that
represent
the
same
interests
in
both
then
demanded
that
the
hospitals
cease
and
desist
from
accepting
actions;
(b)
identity
of
rights
asserted
and
reliefs
prayed
for,
the
such
bids.
Pfizer
also
demanded
that
Pharmawealth
immediately
reliefs
being
founded
on
the
same
facts;
(c)
identity
of
the
two
withdraw
its
bids
to
supply
Sulbactam
Ampicillin.
Pharmawealth
preceding
particulars,
such
that
any
judgment
rendered
in
the
and
the
hospitals
ignored
the
demands.
other
action
will,
regardless
of
which
party
is
successful,
amount
to
res
judicata
in
the
action
under
consideration.
This
instance
Pfizer
then
filed
a
complaint
for
patent
infringement
with
a
prayer
meets
these
elements.
for
permanent
injunction
and
forfeiture
of
the
infringing
products.
A
preliminary
injunction
effective
for
90
days
was
granted
by
the
The
parties
are
clearly
identical.
In
both
the
complaints
in
the
BLA-‐
IPO’s
Bureau
of
Legal
Affairs
(IPO-‐BLA).
Upon
expiration,
a
motion
IPO
and
RTC,
the
rights
allegedly
violated
and
the
acts
allegedly
for
extension
filed
by
Pfizer
was
denied.
Pfizer
filed
a
Special
Civil
violative
of
such
rights
are
identical,
regardless
of
whether
the
Action
for
Certiorari
in
the
Court
of
Appeals
(CA)
assailing
the
patents
on
which
the
complaints
were
based
are
different.
In
both
denial.
cases,
the
ultimate
objective
of
Pfizer
was
to
ask
for
damages
and
to
permanently
prevent
Pharmawealth
from
selling
the
contested
While
the
case
was
pending
in
the
CA,
Pfizer
filed
with
the
products.
Relevantly,
the
Supreme
Court
has
decided
that
the
Regional
Trial
Court
of
Makati
(RTC)
a
complaint
for
infringement
filing
of
two
actions
with
the
same
objective,
as
in
this
instance,
and
unfair
competition,
with
a
prayer
for
injunction.
The
RTC
constitutes
forum
shopping.
issued
a
temporary
restraining
order,
and
then
a
preliminary
injunction.
Owing
to
the
substantial
identity
of
parties,
reliefs
and
issues
in
the
IPO
and
RTC
cases,
a
decision
in
one
case
will
necessarily
Pharmawealth
filed
a
motion
to
dismiss
the
case
in
the
CA,
on
the
amount
to
res
judicata
in
the
other
action.
ground
of
forum
shopping.
Nevertheless,
the
CA
issued
a
temporary
restraining
order.
Pharmawealth
again
filed
a
motion
to
dismiss,
alleging
that
the
patent,
the
main
basis
of
the
case,
had
ADOPTION
OF
INTELLECTUAL
PROPERTY
POLICIES
-‐
SEC
230
(NEW
already
lapsed,
thus
making
the
case
moot,
and
that
the
CA
had
PROVISION
INTRODUCED
BY
RA
10372)
no
jurisdiction
to
review
the
order
of
the
IPO-‐BLA
because
this
was
granted
to
the
Director
General.
The
CA
denied
all
the
SEC.
230.
Adoption
of
Intellectual
Property
(IP)
Policies.
–
Schools
motions.
Pharmawealth
filed
a
petition
for
review
on
Certiorari
and
universities
shall
adopt
intellectual
property
policies
that
with
the
Supreme
Court.
would
govern
the
use
and
creation
of
intellectual
property
with
the
purpose
of
safeguarding
the
intellectual
creations
of
the
learning
Issues:
institution
and
its
employees,
and
adopting
locally-‐established
a)
Can
an
injunctive
relief
be
issued
based
on
an
action
of
patent
industry
practice
fair
use
guidelines.
These
policies
may
be
infringement
when
the
patent
allegedly
infringed
has
already
developed
in
relation
to
licensing
agreements
entered
into
by
the
lapsed?
learning
institution
with
a
collective
licensing
organization.
b)
What
tribunal
has
jurisdiction
to
review
the
decisions
of
the
Director
of
Legal
Affairs
of
the
Intellectual
Property
Office?
THE
LAW
ON
COPYRIGHT
Columbia
Pictures
vs.
CA,
261
SCRA
144
(1996)
Facts:
1. DEFINITIONS
–
Sec.
171
-‐
171.13
as
amended
by
RA
10372
Columbia
Pictures
lodged
a
formal
complaint
with
the
National
Bureau
of
Investigation
for
violation
of
PD
No.
49,
as
amended,
SEC.
171.
Definitions.
-‐
For
the
purpose
of
this
Act,
the
following
and
sought
its
assistance
in
their
anti-‐film
piracy
drive.
Agents
of
terms
have
the
following
meaning:
the
NBI
and
private
researchers
made
discreet
surveillance
on
171.1. "Author"
is
the
natural
person
who
has
created
the
work;
various
video
establishments
in
Metro
Manila
including
Sunshine
171.2. A
"collective
work"
is
a
work
which
has
been
created
by
Home
Video
Inc.
owned
and
operated
by
Danilo
A.
Pelindario.
two
(2)
or
more
natural
persons
at
the
initiative
and
under
On
November
14,
1987,
NBI
Senior
Agent
Lauro
C.
Reyes
applied
the
direction
of
another
with
the
understanding
that
it
will
for
a
search
warrant
with
the
court
a
quo
against
Sunshine
seeking
be
disclosed
by
the
latter
under
his
own
name
and
that
the
seizure,
among
others,
of
pirated
video
tapes
of
copyrighted
contributing
natural
persons
will
not
be
identified;
films
all
of
which
were
enumerated
in
a
list
attached
to
the
171.3. "Communication
to
the
public"
or
"communicate
to
the
application;
and,
television
sets,
video
cassettes
and/or
laser
disc
public"
means
any
communication
to
the
public,
including
recordings
equipment
and
other
machines
and
paraphernalia
used
broadcasting,
rebroadcasting,
retransmitting
by
cable,
or
intended
to
be
used
in
the
unlawful
exhibition,
showing,
broadcasting
and
retransmitting
by
satellite,
and
includes
reproduction,
sale,
lease
or
disposition
of
videograms
tapes
in
the
the
making
of
a
work
available
to
the
public
by
wire
or
premises
above
described.
In
the
hearing
of
the
application,
NBI
wireless
means
in
such
a
way
that
members
of
the
public
Senior
Agent
Lauro
C.
Reyes,
upon
questions
by
the
court
a
quo,
may
access
these
works
from
a
place
and
time
individually
reiterated
in
substance
his
averments
in
his
affidavit.
His
chosen
by
them;
testimony
was
corroborated
by
another
witness,
Mr.
Rene
C.
Baltazar.
Atty.
Rico
V.
Domingo’s
deposition
was
also
taken.
On
2. PROTECTION,
WHEN
COMMENCED
-‐
SEC
172.2
the
basis
of
the
affidavits
and
depositions
of
NBI
Senior
Agent
Lauro
C.
Reyes,
Rene
C.
Baltazar
and
Atty.
Rico
V.
Domingo,
Search
Sec.
172.2.
Works
are
protected
by
the
sole
fact
of
their
creation,
Warrant
No
87-‐053
for
violation
of
Section
56
of
PD
No.
49,
as
irrespective
of
their
mode
or
form
of
expression,
as
well
as
of
their
amended,
was
issued
by
the
court
a
quo.
content,
quality
and
purpose.
(Sec.
2,
P.D.
No.
49a)
NBI
Agents
found
and
seized
various
video
tapes
of
duly
copyrighted
motion
pictures/films
owned
or
exclusively
3. IDEA/EXPRESSION
DICHOTOMY
-‐
SEC
175
distributed
by
private
complainants,
and
machines,
equipment,
television
sets,
paraphernalia,
materials,
accessories
all
of
which
Sec.
175.
Unprotected
Subject
Matter.
-‐
Notwithstanding
the
were
included
in
the
receipt
for
properties
accomplished
by
the
provisions
of
Section
172
and
173,
no
protection
shall
extend,
raiding
team.
Copy
of
the
receipt
was
furnished
and/or
tendered
under
this
law,
to
any
idea,
procedure,
system,
method
or
to
Mr.
Danilo
A.
Pelindario,
registered
owner-‐proprietor
of
operation,
concept,
principle,
discovery
or
mere
data
as
such,
even
Sunshine
Home
Video.
if
they
are
expressed,
explained,
illustrated
or
embodied
in
a
work;
news
of
the
day
and
other
miscellaneous
facts
having
the
Issue:
character
of
mere
items
of
press
information;
or
any
official
text
of
Whether
or
not
absence
such
registration,
as
in
this
case,
there
a
legislative,
administrative
or
legal
nature,
as
well
as
any
official
was
no
right
created,
hence,
no
infringement
under
PD
49
as
translation
thereof.
(n)
amended?
4. WORKS
PROTECTED
Held:
a. Literary
or
Artistic
Works
-‐
Sec
172
-‐172.2
As
correctly
pointed
out
by
private
complainants-‐oppositors,
the
Department
of
Justice
has
resolved
this
legal
question
as
far
back
Sec.
172.
Literary
and
Artistic
Works.
-‐
172.1
Literary
and
artistic
as
December
12,
1978
in
its
Opinion
No.
191
of
the
then
Secretary
works,
hereinafter
referred
to
as
"works",
are
original
intellectual
of
Justice
Vicente
Abad
Santos
which
stated
that
Sections
26
and
creations
in
the
literary
and
artistic
domain
protected
from
the
50
do
not
apply
to
cinematographic
works
and
PD
No.
49
“had
moment
of
their
creation
and
shall
include
in
particular:
done
away
with
the
registration
and
deposit
of
cinematographic
(a) Books,
pamphlets,
articles
and
other
writings;
works”
and
that
“even
without
prior
registration
and
deposit
of
a
(b) Periodicals
and
newspapers;
work
which
may
be
entitled
to
protection
under
the
Decree,
the
(c) Lectures,
sermons,
addresses,
dissertations
prepared
for
oral
creator
can
file
action
for
infringement
of
its
rights.”
He
cannot
delivery,
whether
or
not
reduced
in
writing
or
other
material
demand,
however,
payment
of
damages
arising
from
infringement.
form;
The
same
opinion
stressed
that
“the
requirements
of
registration
(d) Letters;
and
deposit
are
thus
retained
under
the
Decree,
not
as
conditions
(e) Dramatic
or
dramatico-‐musical
compositions;
choreographic
for
the
acquisition
of
copyright
and
other
rights,
but
as
works
or
entertainment
in
dumb
shows;
prerequisites
to
a
suit
for
damages.”
The
statutory
interpretation
(f) Musical
compositions,
with
or
without
words;
of
the
Executive
Branch
being
correct,
is
entitled
(to)
weight
and
(g) Works
of
drawing,
painting,
architecture,
sculpture,
respect.
engraving,
lithography
or
other
works
of
art;
models
or
Furthermore,
a
closer
review
of
Presidential
Decree
No.
49
reveals
designs
for
works
of
art;
that
even
with
respect
to
works
which
are
required
under
Section
(h) Original
ornamental
designs
or
models
for
articles
of
26
thereof
to
be
registered
and
with
copies
to
be
deposited
with
manufacture
whether
or
not
registrable
as
an
industrial
the
National
Library,
such
as
books,
including
composite
and
design,
and
other
works
of
applied
art;
cyclopedic
works,
manuscripts,
directories
and
gazetteers;
and
(i) Illustrations,
maps,
plans,
sketches,
charts
and
three-‐ periodicals,
including
pamphlets
and
newspapers;
lectures,
dimensional
works
relative
to
geography,
topography,
sermons,
addresses,
dissertations
prepared
for
oral
delivery;
and
architecture
or
science;
letters,
the
failure
to
comply
with
said
requirements
does
not
(j) Drawings
or
plastic
works
of
a
scientific
or
technical
character;
deprive
the
copyright
owner
of
the
right
to
sue
for
infringement.
(k) Photographic
works
including
works
produced
by
a
process
Such
non-‐compliance
merely
limits
the
remedies
available
to
him
analogous
to
photography;
lantern
slides;
and
subjects
him
to
the
corresponding
sanction.
(l) Audiovisual
works
and
cinematographic
works
and
works
The
reason
for
this
is
expressed
in
Section
2
of
the
decree
which
produced
by
a
process
analogous
to
cinematography
or
any
prefaces
its
enumeration
of
copyrightable
works
with
the
explicit
process
for
making
audio-‐visual
recordings;
statement
that
“the
rights
granted
under
this
Decree
shall,
from
(m) Pictorial
illustrations
and
advertisements;
the
moment
of
creation,
subsist
with
respect
to
any
of
the
(n) Computer
programs;
and
following
classes
of
works.”
This
means
that
under
the
present
(o) Other
literary,
scholarly,
scientific
and
artistic
works.
state
of
the
law,
the
copyright
for
a
work
is
acquired
by
an
intellectual
creator
from
the
moment
of
creation
even
in
the
172.2.
Works
are
protected
by
the
sole
fact
of
their
creation,
absence
of
registration
and
deposit.
As
has
been
authoritatively
irrespective
of
their
mode
or
form
of
expression,
as
well
as
of
their
clarified:
content,
quality
and
purpose.
(Sec.
2,
P.D.
No.
49a)
The
registration
and
deposit
of
two
complete
copies
or
reproductions
of
the
work
with
the
National
Library
within
three
weeks
after
the
first
public
dissemination
or
performance
of
the
greater
part
thereof
in
the
work
published
by
him
and
entitled
work,
as
provided
for
in
Section
26
(P.D.
No.
49,
as
amended),
is
Diccionariong
Kastila-‐Tagalog
(Spanish-‐Tagalog
Dictionary).
not
for
the
purpose
of
securing
a
copyright
of
the
work,
but
rather
to
avoid
the
penalty
for
non-‐compliance
of
the
deposit
of
said
two
The
act
of
Pagliwanan
is
a
violation
of
article
7
of
the
Law
of
copies
and
in
order
to
recover
damages
in
an
infringement
suit.
January
10,
1879,
on
Intellectual
Property,
caused
irreparable
injuries
to
Laktaw
who
was
surprised
when,
on
publishing
his
new
Ching
vs.
Salinas,
GR
No.
161295,
June
29,
2005
work
entitled
Diccionario
Tagalog-‐Hispano
(Tagalog-‐Spanish
Facts:
Dictionary)
he
learned
of
the
fact,
and
that
the
damages
Jessie
G.
Ching
is
the
owner
and
general
manager
of
Jeshicris
occasioned
to
him
by
the
publication
of
Paglinawan's
work
Manufacturing
Co.,
the
maker
and
manufacturer
of
a
Utility
amounted
to
$10,000.
Laktaw
prayed
the
court
to
order
the
Model,
described
as
“Leaf
Spring
Eye
Bushing
for
Automobile”
Paglinawan
to
withdraw
from
sale
all
stock
of
the
work
of
made
up
of
plastic.
On
September
4,
2001,
Ching
and
Joseph
Yu
Paglinawan
to
pay
him
the
sum
of
$10,000,
with
costs.
were
issued
by
the
National
Library
Certificates
of
Copyright
Paglinawan
in
his
answer
denied
generally
each
and
every
Registration
and
Deposit
of
the
said
work
described
therein
as
allegation
of
the
complaint
and
prayed
the
court
to
absolve
him
“Leaf
Spring
Eye
Bushing
for
Automobile.”
from
the
complaint.
On
September
20,
2001,
Ching
requested
the
National
Bureau
of
Investigation
(NBI)
for
police/investigative
assistance
for
the
Law:
Article
7
of
the
Law
of
January
10,
1879,
on
Intellectual
apprehension
and
prosecution
of
illegal
manufacturers,
producers
Property:
Nobody
may
reproduce
another
person's
work
without
and/or
distributors
of
the
works.
After
due
investigation,
the
NBI
the
owner's
consent,
even
merely
to
annotate
or
add
anything
to
filed
applications
for
search
warrants
in
the
RTC
of
Manila
against
it,
or
improve
any
edition
thereof.
William
Salinas,
Sr.
and
the
officers
and
members
of
the
Board
of
Directors
of
Wilaware
Product
Corporation.
It
was
alleged
that
the
Issue:
respondents
therein
reproduced
and
distributed
the
said
models
Whether
or
not
Paglinawan
violated
Article
7
of
the
Intellectual
penalized
under
Sections
177.1
and
177.3
of
Republic
Act
(R.A.)
Property
Law
(1879)?
No.
8293.
Held:
Issue:
Yes,
Paglinawan
violated
Article
7
of
Intellectual
Property
Law.
It
is
Whether
or
not
the
subject
matter
is
covered
by
the
Copyright
of
not
necessary
that
a
work
should
be
an
improper
copy
of
another
the
Intellectual
Property
Code?
work
previously
published.
It
is
enough
that
another's
work
has
been
reproduced
without
the
consent
of
the
owner,
even
though
Held:
it
be
only
to
annotate,
add
something
to
it,
or
improve
any
edition
It
is
worthy
to
state
that
the
works
protected
under
the
Law
on
thereof.
Copyright
are:
literary
or
artistic
works
(Sec.
172)
and
derivative
works
(Sec.
173).
The
Leaf
Spring
Eye
Bushing
and
Vehicle
Bearing
c. Published
Edition
of
work
-‐
Sec
174
Cushion
fall
on
neither
classification.
Being
plain
automotive
spare
parts
that
must
conform
to
the
Sec.
174.
Published
Edition
of
Work.
-‐
In
addition
to
the
right
to
original
structural
design
of
the
components
they
seek
to
replace,
publish
granted
by
the
author,
his
heirs
or
assigns,
the
publisher
the
Leaf
Spring
Eye
Bushing
and
Vehicle
Bearing
Cushion
are
not
shall
have
a
copyright
consisting
merely
of
the
right
of
ornamental.
They
lack
the
decorative
quality
or
value
that
must
reproduction
of
the
typographical
arrangement
of
the
published
characterize
authentic
works
of
applied
art.
They
are
not
even
edition
of
the
work.
(n)
artistic
creations
with
incidental
utilitarian
functions
or
works
incorporated
in
a
useful
article.
In
actuality,
the
personal
5. WORKS
NOT
PROTECTED
-‐
SEC
175
properties
described
in
the
search
warrants
are
mechanical
works,
the
principal
function
of
which
is
utility
sans
any
aesthetic
embellishment.
Sec.
175.
Unprotected
Subject
Matter.
-‐
Notwithstanding
the
Neither
are
we
to
regard
the
Leaf
Spring
Eye
Bushing
and
Vehicle
provisions
of
Section
172
and
173,
no
protection
shall
extend,
Bearing
Cushion
as
included
in
the
catch-‐all
phrase
“other
literary,
under
this
law,
to
any
idea,
procedure,
system,
method
or
scholarly,
scientific
and
artistic
works”
in
Section
172.1(a)
of
R.A.
operation,
concept,
principle,
discovery
or
mere
data
as
such,
even
No.
8293.
Applying
the
principle
of
ejusdem
generis
which
states
if
they
are
expressed,
explained,
illustrated
or
embodied
in
a
work;
that
“where
a
statute
describes
things
of
a
particular
class
or
kind
news
of
the
day
and
other
miscellaneous
facts
having
the
accompanied
by
words
of
a
generic
character,
the
generic
word
character
of
mere
items
of
press
information;
or
any
official
text
of
will
usually
be
limited
to
things
of
a
similar
nature
with
those
a
legislative,
administrative
or
legal
nature,
as
well
as
any
official
particularly
enumerated,
unless
there
be
something
in
the
context
translation
thereof.
(n)
of
the
state
which
would
repel
such
inference,”[46]
the
Leaf
Spring
Eye
Bushing
and
Vehicle
Bearing
Cushion
are
not
a. Unprotected
Subject
Matter
(sec.
175)
copyrightable,
being
not
of
the
same
kind
and
nature
as
the
works
enumerated
in
Section
172
of
R.A.
No.
8293.
SEC.
175.
Unprotected
Subject
Matter.
-‐
Notwithstanding
the
provisions
of
Section
172
and
173,
no
protection
shall
extend,
b. Derivative
Works
-‐
Sec
173
under
this
law,
to
any
idea,
procedure,
system,
method
or
operation,
concept,
principle,
discovery
or
mere
data
as
such,
even
Sec.
173.
Derivative
Works.
–
173.1.
The
following
derivative
if
they
are
expressed,
explained,
illustrated
or
embodied
in
a
work;
works
shall
also
be
protected
by
copyright:
news
of
the
day
and
other
miscellaneous
facts
having
the
(a) Dramatizations,
translations,
adaptations,
abridgments,
character
of
mere
items
of
press
information;
or
any
official
text
of
arrangements,
and
other
alterations
of
literary
or
artistic
a
legislative,
administrative
or
legal
nature,
as
well
as
any
official
works;
and
translation
thereof.
(b) Collections
of
literary,
scholarly
or
artistic
works,
and
compilations
of
data
and
other
materials
which
are
original
Joaquin,
Jr.
vs.
Drilon,
302
SCRA
225
(1999)
by
reason
of
the
selection
or
coordination
or
arrangement
of
Facts
their
contents.
(Sec.
2,
[P]
and
[Q],
P.D.
No.
49)
Petitioner
BJ
Productions,
Inc.
(BJPI)
is
the
holder/grantee
of
Certificate
of
Copyright
No.
M922,
dated
January
28,
1971,
of
Laktaw
vs.
Paglinawan,
44
Phil.
855
(1918)
Rhoda
and
Me,
a
dating
game
show
aired
from
1970
to
1977.
Facts:
On
June
28,
1973,
petitioner
BJPI
submitted
to
the
National
Laktaw
is
the
registered
owner
and
author
of
a
literary
work
Library
an
addendum
to
its
certificate
of
copyright
specifying
the
entitled
Diccionario
Hispano-‐Tagalog
(Spanish-‐Tagalog
Dictionary)
show’s
format
and
style
of
presentation.
published
in
the
City
of
Manila
in
1889
by
the
printing
On
July
14,
1991,
while
watching
television,
petitioner
Francisco
establishment
La
Opinion.
Paglinawan
without
the
consent
of
Joaquin,
Jr.,
president
of
BJPI,
saw
on
RPN
Channel
9
an
episode
of
Laktaw,
reproduced
said
literary
work,
improperly
copied
the
It’s
a
Date,
which
was
produced
by
IXL
Productions,
Inc.
(IXL).
On
July
18,
1991,
he
wrote
a
letter
to
private
respondent
Gabriel
M.
Zosa,
president
and
general
manager
of
IXL,
informing
Zosa
that
be
shared.
You
cannot
over
emphasize
that
point.
Ideas,
are
BJPI
had
a
copyright
to
Rhoda
and
Me
and
demanding
that
IXL
meant
to
be
shared.
discontinue
airing
It’s
a
Date.
In
a
letter,
dated
July
19,
1991,
private
respondent
Zosa
But
how
do
we
encourage
the
flow
of
idea
on
one
person
to
apologized
to
petitioner
Joaquin
and
requested
a
meeting
to
another
to
ensure
that,
to
a
certain
extent,
will
protect
your
discuss
a
possible
settlement.
IXL,
however,
continued
airing
It’s
a
interest
to
a
limited?
it
has
to
be
included,
to
as
system
of
Date,
prompting
petitioner
Joaquin
to
send
a
second
letter
on
July
protection.
It
has
to
be
emphasized
that
the
protection
is
for
a
25,
1991
in
which
he
reiterated
his
demand
and
warned
that,
if
IXL
limited
period.
Diba
in
Sec
2?
For
a
specific
period
only.
After
that,
did
not
comply,
he
would
endorse
the
matter
to
his
attorneys
for
ideas,
the
content
itself,
both
the
idea
and
expression
become
proper
legal
action.
part
of
the
public
domain.
So
we
have
to
always
bear
in
mind
how
Meanwhile,
private
respondent
Zosa
sought
to
register
IXL’s
these
principles
are
being
applied
in
practice.
copyright
to
the
first
episode
of
“It’s
a
Date”
for
which
it
was
issued
by
the
National
Library
a
certificate
of
copyright
on
August
Here
is
a
party
claiming
a
proprietary
right
of
a
format
of
a
show,
14,
1991.
which
is
something
new,
very
novel.
It
is
a
dating
game
show
Upon
complaint
of
petitioners,
information
for
violation
of
P.D.
which
has
not
been
done
before,
at
least
in
the
PH.
The
objective
No.
49
was
filed
against
private
respondent
Zosa
together
with
of
the
show
is
to
find
a
match
for
a
person
in
the
show
who
is
certain
officers
of
RPN
Channel
9,
namely,
William
Esposo,
Felipe
called
a
searcher
among
three
possible
choices,
he
will
not
be
able
Medina,
and
Casey
Francisco,
in
the
Regional
Trial
Court
of
to
see
them
in
person
because
they
are
not
shown
to
the
searcher.
Quezon
City.
But
through
questions,
asking
questions
to
these
possible
choices,
he
would
now
make
a
decision
as
to
who
he
is
most
compatible
Issue
with.
That
is
the
objective.
That
is
the
right
they
are
complaining.
Whether
the
format
or
mechanics
of
Joaquin’s
television
show
is
Through
this
format,
they
are
able
to
make
a
show
but,
what
is
entitled
to
copyright
protection?
interesting
about
this
is
that
they
have
already
taped
several
programs
but
was
not
aired
in
the
tv.
Here
comes
another
Held
producer,
somehow
got
the
idea
from
the
former
producer,
No,
the
format
or
mechanics
of
a
television
show
is
not
included
in
applying
the
same
format.
Obviously,
it
would
be
unfair
to
the
the
list
of
protected
works
in
§2
of
P.D.
No.
49.
For
this
reason,
the
part
of
the
producers
who
conceptualized
the
format.
So
they
protection
afforded
by
the
law
cannot
be
extended
to
cover
them.
filed
a
case
against
the
other
producer,
claiming
the
infringement
The
essence
of
copyright
infringement
is
the
copying,
in
whole
or
in
copying
their
idea
and
format.
Under
the
principles
of
equity,
in
part,
of
copyrightable
materials
as
defined
and
enumerated
in
they
will
be
say
it
is
unfair.
Unfortunately,
the
law
is
not
on
their
Section
2
of
PD.
No.
49.
Apart
from
the
manner
in
which
it
is
side.
The
concept
is,
an
idea
is
not
covered
by
copyright
actually
expressed,
however,
the
idea
of
a
dating
game
show
is,
in
protection.
However
the
idea
is
very
novel,
it
will
not
be
the
opinion
of
this
Office,
a
non-‐copyrightable
material.
Ideas,
copyrightable.
concepts,
formats,
or
schemes
in
their
abstract
form
clearly
do
not
fall
within
the
class
of
works
or
materials
susceptible
of
copyright
Just
like
what
happened
in
the
case
of
Pearl
and
Dean.
There
was
registration
as
provided
in
PD.
No.
49.
ruling
in
the
SC
of
the
US
in
the
case
of
Baker
v
Selden
another
Copyright,
in
the
strict
sense
of
the
term,
is
purely
a
statutory
landmark
ruling
of
the
SC.
There
was
new
method
of
bookkeeping
right.
It
is
a
new
or
independent
right
granted
by
the
statute,
and
and
audit
procedure
for
accountants
published
by
an
accountant
not
simply
a
pre-‐existing
right
regulated
by
the
statute.
Being
a
himself,
Mr.
Baker.
He
noticed
that
the
same
bookkeeping
system
statutory
grant,
the
rights
are
only
such
as
the
statute
confers,
was
used
by
another
accountant,
Mr.
Selden.
When
Mr.
Baker
and
may
be
obtained
and
enjoyed
only
with
respect
to
the
learned
that
the
new
system
was
applied,
he
filed
a
case
for
subjects
and
by
the
persons,
and
on
terms
and
conditions
copyright
infringement.
The
court
said,
the
idea
is
the
one
being
specified
in
the
statute.
used.
Mr.
Selden
did
not
copy
the
expression,
only
the
idea.
P.D.
No.
49,
§2,
in
enumerating
what
are
subject
to
copyright,
refers
to
finished
works
and
not
to
concepts.
The
copyright
does
So
what
are
the
items
identified
by
the
law?
The
idea,
procedure,
not
extend
to
an
idea,
procedure,
process,
system,
method
of
system,
method
or
operation,
concept,
principle,
discovery,
operation,
concept,
principle,
or
discovery,
regardless
of
the
form
emphasizing
the
principle
that
the
basis
for
copyright
is
creation.
in
which
it
is
described,
explained,
illustrated,
or
embodied
in
such
You
have
the
create
something,
because
if
you
just
discovered
it,
work.
such
as
historical
fact,
it
will
not
be
copyrightable.
Or
mere
data
as
What
then
is
the
subject
matter
of
petitioners’
copyright?
such,
remember
in
the
case
of
Feist
Publication?
A
telephone
The
Court
is
of
the
opinion
that
petitioner
BJPI’s
copyright
covers
company.
Even
if
data
has
been
gathered
through
spending
audio-‐visual
recordings
of
each
episode
of
Rhoda
and
Me,
as
resources,
time,
and
expense
in
pain
staking
gathering
of
falling
within
the
class
of
works
mentioned
in
P.D.
49,
§2(M),
to
information,
it
will
not
amount
to
a
copyright
protection
because
wit:
there
is
no
protection
for
exerting
effort.
What
is
the
basis
of
Cinematographic
works
and
works
produced
by
a
process
protection?
Creation.
And
how
would
you
discern
creation?
When
analogous
to
cinematography
or
any
process
for
making
audio-‐ there
is
an
application
of
modicum
degree
of
intelligence.
There
visual
recordings;
must
be
an
effort
to
create
something.
When
you
gather
data,
there
is
no
creation
therein.
Law
Sec.
175.
Unprotected
Subject
Matter.
-‐
Notwithstanding
the
What
about
new
of
the
day?
A
news
article
is
copyrightable.
provisions
of
Sections
172
and
173,
no
protection
shall
extend,
However,
the
facts
included
in
the
news
article
are
not.
If
another
under
this
law,
to
any
idea,
procedure,
system,
method
or
reporter
copies
your
news
article
verbatim,
that
is
copyright
operation,
concept,
principle,
discovery
or
mere
data
as
such,
infringement.
But
if
he
just
based
his
article
on
your
facts,
it
will
even
if
they
are
expressed,
explained,
illustrated
or
embodied
in
a
not
be
copyright
infringement.
work;
news
of
the
day
and
other
miscellaneous
facts
having
the
character
of
mere
items
of
press
information;
or
any
official
text
b. Works
of
Government
(sec.
176;
171.11)
of
a
legislative,
administrative
or
legal
nature,
as
well
as
any
official
translation
thereof.
SEC.
176.
Works
of
the
Government.
-‐
176.1.
No
copyright
shall
subsist
in
any
work
of
the
Government
of
the
Philippines.
However,
Atty:
So
this
gives
us
an
example
of
the
idea-‐expression
principle
prior
approval
of
the
government
agency
or
office
wherein
the
or
dichotomy.
As
what
we
have
been
discussing
since
the
work
is
created
shall
be
necessary
for
exploitation
of
such
work
for
beginning
of
our
lecture,
ideas
or
in
keeping
with
the
primary
profit.
Such
agency
or
office
may,
among
other
things,
impose
as
a
purpose
of
Intellectual
Property
Protection,
the
ultimate
objective
condition
the
payment
of
royalties.
No
prior
approval
or
conditions
is
for
the
diffusion
of
knowledge.
To
support
that
principle,
as
shall
be
required
for
the
use
of
any
purpose
of
statutes,
rules
and
developed
by
American
Jurisprudence,
it
is
for
the
progress
of
regulations,
and
speeches,
lectures,
sermons,
addresses,
and
science
and
useful
art.
All
in
all,
to
promote
the
public
interest
of
dissertations,
pronounced,
read
or
rendered
in
courts
of
justice,
the
shared
idea
or
information.
Shared
knowledge.
It
is
meant
to
before
administrative
agencies,
in
deliberative
assemblies
and
in
meetings
of
public
character.
(Sec.
9,
first
par.,
P.D.
No.
49)
How
would
you
define
works
of
government
in
the
definition
of
But
when
you
talk
about
copyright,
it
usually
refers
to
economic
terms:
rights.
If
you
are
an
author,
if
you
are
trying
to
create
a
work,
what
is
your
primary
obligation?
What
are
the
possible
reasons
for
you
171.11.
A
"work
of
the
Government
of
the
Philippines"
is
a
work
to
create
a
work?
Number
1
is
profit
or
maybe,
for
some,
to
share
created
by
an
officer
or
employee
of
the
Philippine
Government
or
their
talents
in
the
arts.
More
often
that
not,
it’s
all
about
the
any
of
its
subdivisions
and
instrumentalities,
including
money.
You
want
to
expect
a
return
for
your
labor.
That
is
what
government-‐owned
or
controlled
corporations
as
part
of
his
we
call
as,
economic
expectations.
Theses
sets
of
rights
address
regularly
prescribed
official
duties.
the
interest
or
the
motivation.
For
your
to
be
entitled
to
the
right
or
economic
benefit
out
of
that
endeavor.
Considering
that
the
So
that’s
how
you
classify
or
you
identify
whether
the
work
is
the
law
affords
protection
on
your
work.
You
are
confident
to
work
of
the
government.
Even
if
the
subject
matter
is
a
creation
of
publish/share
your
work
expecting
that
your
rights
will
be
an
author,
creator
of
a
work,
and
would
have
been
copyrightable,
adequately
protected.
In
the
end,
you
will
have
a
return
for
your
nevertheless,
since
that
work
is
a
product
of
the
performance
of
efforts.
his
regularly
prescribed
duties,
it
is
a
work
of
government
and
is
not
protected
by
the
law.
So
SC
decision,
are
not
copyrightable.
Understanding
the
work
copyright,
it
practically
means
the
right
to
Privileged
speeches
made
by
senators
or
law
makers-‐
not
copy.
Always
remember
that.
That’s
why
the
fist
right
is
all
about
copyrightable.
the
right
to
copy.
It
is
known
as
the
most
elemental
right
among
economic
rights.
So
what
is
that
first
right?
It
is
the
right
to
But
does
that
mean
that
the
government
cannot
own
a
copyright?
reproduction
of
the
work,
or
substantial
portion
of
your
work.
The
government
can
be
a
transferee
of
a
copyright
because
a
Why
is
right
to
reproduce
considered
as
an
economic
right?
copyright
is
a
property.
So
it
may
be
a
beneficiary
of
a
donated
Especially
if
your
work
is
a
best
seller.
BTW,
before
that,
the
copyrighted
material.
I’m
talking
about
the
copyright,
not
the
specific
acts
that
the
law
exclusively
(gives?)
to
the
copyright
material
object.
The
rights
over
the
expression.
So
since
it
may
be
owner
are
the
following:
the
right
to
carry
out,
authorize,
and
a
transferee
or
a
buyer,
the
government
can
also
impose
the
right
prevent.
These
are
the
specific
acts
that
belong
exclusively
to
over
that
work.
if
your
remember
there
is
a
question
about,
can
a
copyright
owner.
Found
in
the
first
part
of
sec
177.
Copyrights
are
work
be
exploited,
as
it
is
considered
as
owned
by
the
economic
rights
consist
of
the
exclusive
right
to
carry
out,
government?
Yes,
because
there
is
no
copyright
protection.
authorize,
or
prevent.
What
do
you
mean
by
carry
out?
He
is
the
However,
it
is
subject
to
regulation.
one
who
can
exclusively
perform
his
act.
When
you
say
exclusive,
only
the
author.
How
is
author
defined
under
the
law?
Who
owns
SEC.
176.
Works
of
the
Government.
–
the
copyright?
The
law
says,
the
author.
But
this
is
not
the
176.1.
No
copyright
shall
subsist
in
any
work
of
the
Government
of
absolute
rule
because
copyright
is
transferable
and
some
other
the
Philippines.
However,
prior
approval
of
the
government
agency
exceptions
we
will
discuss
later.
It
is
not
automatic
that
the
author
or
office
wherein
the
work
is
created
shall
be
necessary
for
owns
the
copyright.
But
as
a
general
rule,
the
copyright
ownership
exploitation
of
such
work
for
profit.
Such
agency
or
office
may,
belongs
to
the
author.
Whoever
owns
the
copyright,
shall
have
among
other
things,
impose
as
a
condition
the
payment
of
the
exclusive
right
to
carry
out,
to
authorize,
or
to
prevent.
royalties.
No
prior
approval
or
conditions
shall
be
required
for
the
use
of
any
purpose
of
statutes,
rules
and
regulations,
and
speeches,
We
have
mentioned
last
time
that
a
copyright
is
also
a
statutory
lectures,
sermons,
addresses,
and
dissertations,
pronounced,
read
right.
Rights
that
are
identified
by
the
law,
and
the
only
source
is
or
rendered
in
courts
of
justice,
before
administrative
agencies,
in
the
law.
That
is
where
you
derive
your
right.
deliberative
assemblies
Copyright
is
the
right
of
reproduction
of
your
work
or
substantial
That’s
why
sec.
176.1
says,
prior
approval
of
the
government
portion
of
your
work.
how
is
reproduction
defined?
agency
or
office
wherein
the
work
is
created
shall
be
necessary
for
exploitation
of
such
work
for
profit.
Such
agency
or
office
may,
171.9.
"Reproduction"
is
the
making
of
one
(1)
or
more
copies,
among
other
things,
impose
as
a
condition
the
payment
of
temporary
or
permanent,
in
whole
or
in
part,
of
a
work
or
a
sound
royalties.
No
prior
approval
or
conditions
shall
be
required
for
the
recording
in
any
manner
or
form
without
prejudice
to
the
use
of
any
purpose
of
statutes,
rules…
provisions
of
Section
185
of
this
Act
(Sec.
41
[E],
P.D.
No.
49a).
So
this
is
an
exception
to
the
rule
that
the
government
agencies
This
amendment
came
about
to
address
the
issue
of
the
act
of
may
impose
regulations
(referring
to
the
last
sentence
of
176.1).
downloading
digital
copies.
Because
it
was
interposed
as
a
defense
that
is
not
actually
copying
if
it
is
not
permanently
saved
176.2
The
author
of
speeches,
lectures,
sermons,
addresses,
and
in
the
drive
of
the
computer,
there
is
no
complete
act
of
dissertations
mentioned
in
the
preceding
paragraphs
shall
have
reproduction.
It
is
just
temporarily
stored
in
the
RAM.
That
is
the
the
exclusive
right
of
making
a
collection
of
his
works.
issue
that
was
raised
with
respect
to
the
act
of
copyright
infringement.
According
to
the
issue
raised,
it
has
to
be
Have
you
heard
of
Justice
Isagani
Cruz?
He
made
a
collection
of
permanently
stored
to
make
it
a
complete
act
of
reproduction
his
concurring
and
dissenting
opinions
in
the
SC
decision
and
because
there
is
no
attempted
phase
of
the
act.
According
to
the
made
a
book.
defense,
the
act
of
reproduction
should
be
on
its
consummated
phase.
Since
it
is
a
penal
law,
and
a
penal
law
should
be
176.3
the
Government
is
not
precluded
from
receiving
and
holding
interpreted,
all
doubts
should
be
resolved
in
favor
of
the
accused.
copyrights
transferred
to
it
by
assignment,
bequest
or
otherwise;
To
erase
all
doubts
and
ambiguities,
we
have
to
amend
the
law.
So
nor
shall
publication
or
republication
by
the
government
in
a
now,
the
amendment
says,
any
act
of
reproduction,
temporary
of
public
document
of
any
work
in
which
copyright
is
subsisting
be
permanent.
Covered
na
diba?
In
whole
of
in
part.
only
a
portion.
taken
to
cause
any
abridgment
or
annulment
of
the
copyright
or
to
authorize
any
use
or
appropriation
of
such
work
without
the
Only
a
few
bars
of
a
song
must
be
copied
because
according
to
the
consent
of
the
copyright
owner.
artist
who
copied,
he
was
inspired
by
that
song.
It
so
happens
that
the
song
became
popular
because
of
the
few
bars.
Do
the
composer
Roy
Orbison?
He
is
a
composer
from
the
1950s,
6. COPYRIGHT
OR
ECONOMIC
RIGHTS;
OWNERSHIP
composer
of
Pretty
Woman.
So
this
was
the
issue
involved
in
this
case.
Only
the
introduction
of
the
song
was
copied
by
another
a. Copyright
or
Economic
Rights
(sec
177)
composer,
without
seeking
the
authority
of
Mr.
Orbison.
When
he
released
the
song
using
the
few
bars,
he
said
that
he
did
not
ECONOMIC
RIGHTS.
exactly
copy
the
entire
song,
only
that
portion.
But
the
court
said,
the
song
became
popular
because
of
that
part,
and
the
author
has
There
are
two
sets
of
copyrights.
a
right
over
that
few
bars.
In
fact,
that
is
the
heart
of
his
work.
1. Economic
rights
2. Moral
rights
I
don’t
know
if
this
was
properly
filed
in
court,
the
song
of
Guns
and
Roses
the
intro
of
the
song
Sweet
Child
of
Mine.
Only
the
the
definition
of
reproduction.
The
definition
is
a
bit
wider.
This
is
intro
portion.
But
the
same
principle.
He
did
not
exactly
copy,
but
only
one
of
the
three
provisions
that
are
more
favorable
to
the
only
inspired.
author
based
on
the
rulings
of
the
SC,
especially
in
the
United
States.
So
the
act
of
reproduction
does
not
necessarily
mean
that
you
have
to
copy
the
entire
work.
And
when
you
say
substantial
2. RIGHT
TO
DRAMATIZATION,
TRANSLATION,
portion
as
what
the
law
says,
does
it
have
to
be
in
its
quantitative
ADAPTATION,
ABRIDGMENT,
ARRANGEMENT
OR
sense?
No,
because
such
a
portion
may
be
a
substantial
portion
OTHER
TRANSFORMATION
OF
THE
WORK
which
is
understood
to
be
in
its
qualitative
sense,
why
the
work
became
popular.
It
can
constitute
the
entire
work
itself,
but
a
part
177.2.
Dramatization,
translation,
adaptation,
of
the
work.
So
it
must
be
interpreted
in
this
manner.
So,
the
term
abridgment,
arrangement
or
other
transformation
of
the
reproduction
is
further
expanded
to
include
temporary
and
work;
permanent.
It
must
be
transformative.
We
are
talking
about
the
first
kind
of
Q:
dili
kaayo
nko
ma
hear
but
ni
ask
siya
about
adtong
why
when
derivative
work.
Since
it
is
one
of
the
economic
rights
of
an
author,
he
used
to
work
pa
daw
sa
publishing
firm,
they
were
allowed
to
for
you
to
be
able
to
make
a
derivative
work,
you
need
the
copy
at
least
30%
of
an
article
verbatim.
Is
that
ba
daw
an
consent
of
the
author
of
the
underlying
work.
exception?
We
go
back
to
derivative
works,
just
a
review.
A:
There
are
exceptions.
We
have
this
thing
called
fair
use
doctrine.
It
depends
on
the
purpose.
What
is
the
purpose
of
173.2.
The
works
referred
to
in
paragraphs
(a)
and
(b)
of
copying?
Is
it
for
commentary?
Criticism?
infringement
or
not?
If
Subsection
173.1
shall
be
protected
as
new
works:
Provided
the
purpose
is
to
critique
or
used
as
a
commentary,
that
may
be
however,
That
such
new
work
shall
not
affect
the
force
of
any
justified.
But
take
note,
if
you
really
analyze
carefully,
the
act
subsisting
copyright
upon
the
original
works
employed
or
any
part
copying
one’s
work
is
an
act
of
infringement.
But
the
law
does
thereof,
or
be
construed
to
imply
any
right
to
such
use
of
the
exempts
liability.
There
are
certain
standards
which
must
be
original
works,
or
to
secure
or
extend
copyright
in
such
original
considered
for
an
act
to
be
considered
a
fair
use
act.
Way
before
works.
(Sec.
8,
P.D.
49;
Art.
10,
TRIPS)
your
popular
file
sharing
sites,
youtorrent,
bittorrent,
etc…
the
percurser
for
that
is
Napster.
That
was
the
earliest
form
of
peer-‐ In
the
case
of
Lactao
v
Paglinawan,
the
right
to
make
a
derivative
to-‐peer
file
sharing.
This
one
is
in
the
case
of
A&M
Records
v
work
belong
exclusively
to
the
author
of
the
original
work.
it
has
Napster.
So
it
depends
how
you
adopt
that
term.
When
you
say
30
been
considered
that
the
right
to
make
a
derivative
work
is
one
of
per
cent,
bisan
pa
50%
as
long
as
the
purpose
mainly
is
the
economic
rights.
Therefore,
the
author
is
the
only
one
who
commentary,
for
public
purposes
and
not
for
profit.
When
you
can
carry
out,
authorize
or
prevent
the
performance
of
this
act.
profit
from
it,
it
will
be
a
point
against
you,
it
will
be
considered
as
How
will
consider
a
work
to
be
a
derivative
work?
It
must
copy
the
infringement.
expressive
content
of
the
work,
but
at
the
same
time,
it
has
to
be
transformative.
What
do
you
mean
transformative?
Going
back
to
What
are
the
basic
rights
of
the
copyright
owner?
the
minimum
requirement,
that
there
must
be
a
modicum
of
intelligence
employed.
If
there
are
only
trivial
changes
introduced
CHAPTER
V.
to
the
new
work,
would
it
be
classified
as
a
derivative
work?
No.
COPYRIGHT
OR
ECONOMIC
RIGHTS
However,
it
will
be
considered
as
a
mere
reproduction.
Still
within
the
economic
rights
of
the
author.
SEC.
177.
Copyright
or
Economic
Rights.
-‐
Subject
to
the
provisions
of
Chapter
VIII,
copyright
or
economic
rights
shall
consist
of
the
So
what
kind
of
work
is
being
made
in
the
second
right?
It
is
an
exclusive
right
to
carry
out,
authorize
or
prevent
the
following
alteration
of
an
original
work,
which
is
why
we
have
dramatization,
acts:
translation,
adaptation,
abridgment,
and
arrangement.
1. RIGHT
OF
REPRODUCTION.
The
most
famous
form
of
derivative
works
are
motion
pictures
based
on
facts
(?).
177.1.
Reproduction
of
the
work
or
substantial
portion
of
the
work;
3. RIGHT
TO
FIRST
PUBLIC
DISTRIBUTION
OF
THE
ORIGINAL
AND
EACH
COPY
OF
THE
WORK
BY
SALE
OR
171.9.
"Reproduction"
is
the
making
of
one
(1)
or
more
OTHER
FORMS
OF
TRANSFER
OF
OWNERSHIP
copies,
temporary
or
permanent,
in
whole
or
in
part,
of
a
work
or
a
sound
recording
in
any
manner
or
form
177.3.
The
first
public
distribution
of
the
original
and
each
without
prejudice
to
the
provisions
of
Section
185
of
this
copy
of
the
work
by
sale
or
other
forms
of
transfer
of
Act
(Sec.
41
[E],
P.D.
No.
49a);
ownership;
This
is
the
most
elemental
among
all
rights
because
that
What
do
you
mean
by
first
public
distribution
of
the
original
work?
addresses
the
directly
the
primary
motive
of
an
author
which
is
And
what
does
it
specify
to
cover
only
the
first?
economic
expectations.
The
right
to
make
multiple
copies
will
amount
to
the
right
make
multiple
incomes.
What
is
the
economic
This
item
that
we
are
talking
about
in
the
third
right
is
the
expectation
of
an
author
in
creating
a
law
book?
It
is
to
derive
material
object.
When
an
author
sells
a
book,
he
is
selling
the
income
on
each
sale
of
each
book.
In
a
class
of
20
students,
he
material
object,
not
the
contents.
If
you
are
the
buyer
(end-‐user)
expects
you
to
buy
an
original
copy
of
his
book
so
he
can
derive
you
own
the
book.
You
have
the
right
to
resell,
lend,
etc
it
income.
What
will
happen
if
you
will
interpose
the
defense
that
because
you
are
now
the
owner
of
the
material
object.
When
you
you
are
using
this
for
private
study
and
research?
That
could
be
an
talk
about
first
public
distribution,
you
are
only
talking
about
the
exempting
act.
If
the
author
will
lose
interest
to
write
a
book,
who
first
transfer.
The
most
common
is
the
first
sale
of
the
book.
will
be
at
the
losing
end?
Who
will
be
denied
of
his
expertise?
Of
Beyond
that,
the
author
no
long
has
any
right.
He
cannot
dictate
his
knowledge?
Students
and
law
practitioners.
the
manner
of
distribution.
That
is
why
the
law
says
only
up
to
the
first
public
distribution,
both
of
original
and
each
copy
of
the
work,
“Whole
or
in
part,
in
any
manner
or
form”
either
by
sale
of
other
forms
of
transfer.
That
is
why
in
the
second
What
if
I
just
copied
the
work
manually,
word
for
word?
Is
that
etc
distribution,
he
has
no
more
rights.
allowed?
No,
because
you
are
copying
the
expression
of
his
work.
Is
an
audio
book
included
in
the
purview
of
the
definition?
The
law
Apparently,
there
is
an
exception.
says,
“in
any
manner
or
form”
if
it
is
being
transformed.
There
are
works
transformed
to
the
braille
system
to
cater
to
the
visually
Let’s
go
first
to
section
181
so
you
can
understand
the
exclusive
impaired.
Is
this
included
in
the
definition?
Yes.
A
CD
converted
to
right
to
first
public
distribution.
an
MP3
file,
is
an
act
of
reproduction.
Any
act
of
copying
is
within
SEC.
181.
Copyright
and
Material
Object.
-‐
The
copyright
is
device
or
process;
in
the
case
of
an
audiovisual
work,
the
showing
distinct
from
the
property
in
the
material
object
subject
to
it.
of
its
images
in
sequence
and
the
making
of
the
sounds
Consequently,
the
transfer,
assignment
or
licensing
of
the
accompanying
it
audible;
and,
in
the
case
of
a
sound
recording,
copyright
shall
not
itself
constitute
a
transfer
of
the
material
making
the
recorded
sounds
audible
at
a
place
or
at
places
where
object.
Nor
shall
a
transfer
or
assignment
of
the
sole
copy
or
of
persons
outside
the
normal
circle
of
a
family
and
that
family’s
one
or
several
copies
of
the
work
imply
transfer,
assignment
or
closest
social
acquaintances
are
or
can
be
present,
irrespective
of
licensing
of
the
copyright.
(Sec.
16,
P.D.
No.
49)
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
“The
copyright
is
distinct
from
the
property
in
the
material
object
where
the
performance
can
be
perceived
without
the
need
for
subject
to
it.”
communication
within
the
meaning
of
Subsection
171.3;
Always
remember
that.
Very
basic,
very
important.
Very
easy
to
understand,
very
easy
to
forget
also.
There
are
three
types
of
public
performance:
Very
simple
provision,
mostly
applied
in
several
cases.
1. Work
other
than
an
audiovisual
work
- how
is
public
performance
defined
when
it
comes
4. RIGHT
TO
RENTALS
to
work
other
than
audio-‐visual
work?
Capable
of
being
performed,
example
stage
plays.
177.4.
Rental
of
the
original
or
a
copy
of
an
audiovisual
or
- How
it
is
considered
as
a
performance?
Lets
take
cinematographic
work,
a
work
embodied
in
a
sound
recording,
the
public
part
first.
It
involves
is
the
recitation,
a
computer
program,
a
compilation
of
data
and
other
playing,
dancing,
acting
or
otherwise
performing
materials
or
a
musical
work
in
graphic
form,
irrespective
of
the
work,
either
directly
or
by
means
of
any
device
st
the
ownership
of
the
original
or
the
copy
which
is
the
subject
or
process.
Remember
the
case
of
21
Century
Fox?
of
the
rental;
(n)
This
is
cited.
The
performance
of
the
play,
either
in
person,
live,
or
remotely
performed,
but
can
be
This
particular
right
will
only
cover
certain
types
of
works,
it
will
seen
through
a
device.
Internet,
satellite,
broadcast,
not
cover
all
types
of
literary
artistic
works.
The
law
only
identifies
etc.
certain
works
that
may
be
subject
to
this
right.
What
are
these
items
enumerated?
2. Audiovisual
work
- The
performance
is
made
through
the
showing
of
1. Audiovisual
or
cinematographic
work
its
images
in
sequence
and
the
making
of
the
2. A
work
embodied
in
a
sound
recording
(ex.
Music
cds)-‐
sounds
accompanying
it
audible.
it
is
different
from
a
musical
composition.
If
a
- It
has
to
be
in
a
sequence.
composition
is
being
recorded
and
being
fixed
in
a
CD
format,
it
become
a
work
embodied
in
a
sound
3. Sound
recording
recording.
- making
the
recorded
sounds
audible
3. Computer
program
4. Compilation
of
data
or
other
materials
How
is
it
classified
as
a
public
performance
as
supposed
to
a
5. Musical
work
in
graphic
form
private?
What
is
the
provision
for
the
performance
to
be
considered
public?
How
is
rental
defined?
It
must
be
made
at
a
place
or
at
places
where
persons
outside
the
171.8.
"Rental"
is
the
transfer
of
the
possession
of
the
original
or
a
normal
circle
of
a
family
and
that
family’s
closest
social
copy
of
a
work
or
a
sound
recording
for
a
limited
period
of
time,
acquaintances
are
or
can
be
present,
irrespective
of
whether
they
for
profit-‐making
purposes;
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
How
will
you
differentiate
it
from
public
lending?
performance
can
be
perceived
without
the
need
for
communication
within
the
meaning
of
Subsection
171.3;
171.5.
"Public
lending"
is
the
transfer
of
possession
of
the
original
or
a
copy
of
a
work
or
sound
recording
for
a
limited
period,
for
171.3.
"Communication
to
the
public"
or
"communicate
to
the
non-‐profit
purposes,
by
an
institution
the
services
of
which
are
public"
means
any
communication
to
the
public,
including
available
to
the
public,
such
as
public
library
or
archive;
broadcasting,
rebroadcasting,
retransmitting
by
cable,
broadcasting
and
retransmitting
by
satellite,
and
includes
the
The
difference
is
the
term
“non-‐profit
purposes”
because
if
you
making
of
a
work
available
to
the
public
by
wire
or
wireless
means
speak
of
rentals,
it
is
for
profit
making
purposes.
in
such
a
way
that
members
of
the
public
may
access
these
works
from
a
place
and
time
individually
chosen
by
them;
But
it
is
only
limited
to
certain
kinds
of
work
(abovementioned
1-‐
5).
The
definition
clearly
tells
us,
all
types
of
performances
that
are
made
of
an
audience
that
is
present,
or
before
persons
found
very
5. RIGHT
TO
PUBLIC
DISPLAY
far
or
remote.
Does
it
have
to
be
in
real
time?
No,
not
necessarily
because
it
may
be
that
it
is
accessed
by
the
public
at
a
time
177.5.
Public
display
of
the
original
or
a
copy
of
the
individually
chosen
by
them.
work;
That
is
the
definition
of
public
performance.
It
does
not
qualify
Exhibits
can
be
considered
as
one
way
of
public
display.
whether
it
is
for
profit
or
not.
6. RIGHT
TO
PUBLIC
PERFORMANCE
OF
THE
WORK
Pearl
&
Dean
Inc.,
supra
177.6.
Public
performance
of
the
work;
and
Filipino
Society
of
Composers
vs.
Tan,
148
SCRA
461
(1987)
Facts
The
old
law
provides,
performance
for
profit.
Now
it
has
been
Filipino
Society
of
Composers,
Authors
and
Publishers
Inc.
is
changed
to
“public
performance
of
the
work.”
it
does
not
matter
if
organization
under
the
Corporation
Law
of
the
Philippines
and
it
is
for
profit
or
not.
registered
with
the
Securities
and
Exchange
Commission.
The
association
is
the
owner
of
certain
musical
compositions
among
Definitions:
which
are
the
songs
entitled:
"Dahil
Sa
Iyo",
"Sapagkat
Ikaw
Ay
Akin,"
"Sapagkat
Kami
Ay
Tao
Lamang"
and
"The
Nearness
Of
171.6.
"Public
performance,"
in
the
case
of
a
work
other
than
an
You."
audiovisual
work,
is
the
recitation,
playing,
dancing,
acting
or
Benjamin
Tan
on
the
other
hand
is
the
operator
of
a
restaurant
otherwise
performing
the
work,
either
directly
or
by
means
of
any
known
as
"Alex
Soda
Foundation
and
Restaurant"
where
a
combo
with
professional
singers,
hired
to
play
and
sing
musical
At
that
time,
it
was
being
considered
if
it
were
for
profit
or
not.
It
compositions
to
entertain
and
amuse
customers
therein,
were
is
very
crucial
also
because
the
SC
said
for
profit
although
the
playing
and
singing
the
above-‐mentioned
compositions
without
patrons
are
not
directly
paying
for
the
performance,
but
because
any
license
or
permission
from
the
appellant
to
play
or
sing
the
of
the
band
featured
in
the
established,
it
became
more
attractive
same.
Accordingly,
appellant
demanded
from
the
appellee
and
more
profitable
for
the
establishment
owner.
So
he
derived
payment
of
the
necessary
license
fee
for
the
playing
and
singing
of
profit
out
of
the
performance.
Indirectly,
it
is
for
profit.
BUT,
it
is
aforesaid
compositions
but
the
demand
was
ignored.
not
considered
as
covered
under
the
copyright
protection
because
Tan’s
Argument:
That
the
mere
singing
and
playing
of
songs
and
the
old
rule
says
it
must
be
registered
within
30
days.
At
that
time,
popular
tunes
even
if
they
are
copyrighted
do
not
constitute
an
that
was
the
deciding
point
that
is
why
petitioners
failed
to
claim
infringement
(Record
on
Appeal,
p.
11;
Resolution,
CA-‐G.R.
NO.
damaged.
THAT
IS
NOT
APPLICABLE
NOW.
The
reason
why
the
46373-‐R,
Rollo,
pp.
32-‐36)
under
the
provisions
of
Section
3
of
the
Philippines
needed
to
adopt
the
new
law
is
for
it
to
follow
with
Copyright
Law
(Act
3134
of
the
Philippine
Legislature).
the
growing
global
trend,
the
universally
accepted
principles
of
Copyright
Law,
the
Principle
of
Automatic
Protection.
Issues
1.
Whether
or
not
the
playing
and
singing
of
musical
compositions
Principle
of
Automatic
Protection:
which
have
been
copyrighted
under
the
provisions
of
the
Works
are
created
from
the
moment
of
creation.
There
is
no
Copyright
Law
(Act
3134)
inside
the
establishment
of
Benjamin
formality
required
in
order
to
acquire
such
right.
Tan
constitute
a
public
performance
for
profit
within
the
meaning
and
contemplation
of
the
Copyright
Law
of
the
Philippines?
We
have
to
apply
the
ruling
in
Columbia
Pictures
v
CA.
2.
Assuming
that
there
were
indeed
public
performances
for
profit,
whether
or
not
Benjamin
Tan
can
be
held
liable
therefore.
The
same
thing
happened
in
the
case
of
Malalang
Santos
v
McCullough
Printing.
The
reason
why
it
was
not
claimed
as
Held
covered
work
because
of
the
failure
of
registration.
(Not
furthered
1st
issue:
discussed)
Yes.
The
playing
of
music
in
dine
and
dance
establishment
which
was
Malang
Santos
vs.,
McCullough
Printing,
12
SCRA
321
(1964)
paid
for
by
the
public
in
purchases
of
food
and
drink
constituted
Facts
"performance
for
profit"
within
a
Copyright
Law
(Buck,
et
al.
v.
Mauro
Malalang
Santos
filed
an
action
for
damages
for
Russon
No.
4489
25
F.
Supp.
317).
unauthorized
use,
adaptation
and
appropriation
by
the
2nd
issue:
MCCULLOUGH
PRINTING
COMPANY
of
the
intellectual
creation
or
The
Supreme
Court
has
ruled
that
"Paragraph
33
of
Patent
Office
artistic
design
of
a
Christmas
card
by
him
(Mauro
Maglalang
Administrative
Order
No.
3
(as
amended,
dated
September
18,
Santos)
based
on
Article
721
and
722
of
the
Civil
Code
of
the
1947)
entitled
'Rules
of
Practice
in
the
Philippines
Patent
Office
Philippines.
relating
to
the
Registration
of
Copyright
Claims'
promulgated
The
Christmas
card
depicts
a
Philippine
rural
Christmas
time
scene
pursuant
to
Republic
Act
165,
provides
among
other
things
that
an
consisting
of
a
woman
and
a
child
in
a
nipa
hut
adorned
with
a
intellectual
creation
should
be
copyrighted
thirty
(30)
days
after
star-‐shaped
lantern
and
a
man
astride
a
carabao,
beside
a
tree,
its
publication,
if
made
in
Manila,
or
within
the
(60)
days
if
made
underneath
which
appears
the
plaintiff's
pen
name,
Malang.
elsewhere,
failure
of
which
renders
such
creation
public
The
complaint
alleges
that
plaintiff
Mauro
Malang
Santos
property."
(Santos
v.
McCullough
Printing
Company,
12
SCRA
324-‐ designed
for
former
Ambassador
Felino
Neri,
for
his
personal
325
[1964].
Indeed,
if
the
general
public
has
made
use
of
the
Christmas
Card
greetings
for
the
year
1959,
the
artistic
motif
in
object
sought
to
be
copyrighted
for
thirty
(30)
days
prior
to
the
question.
The
following
year
the
defendant
McCullough
Printing
copyright
application
the
law
deems
the
object
to
have
been
Company,
without
the
knowledge
and
authority
of
plaintiff,
donated
to
the
public
domain
and
the
same
can
no
longer
be
displayed
the
very
design
in
its
album
of
Christmas
cards
and
copyrighted.
offered
it
for
sale,
for
a
price.
For
such
A
careful
study
of
the
records
reveals
that
the
song
"Dahil
Sa
Iyo"
which
was
registered
on
April
20,
1956
(Brief
for
Appellant,
p.
10)
unauthorized
act
of
defendant,
plaintiff
suffered
moral
damages
became
popular
in
radios,
juke
boxes,
etc.
long
before
registration
to
the
tune
of
P16,000.00,
because
it
has
placed
plaintiff's
(TSN,
May
28,
1968,
pp.
3-‐5;
25)
while
the
song
"The
Nearness
Of
professional
integrity
and
ethics
under
serious
question
and
You"
registered
on
January
14,
1955
(Brief
for
Appellant,
p.
10)
caused
him
grave
embarrassment
before
Ambassador
Neri.
He
had
become
popular
twenty
five
(25)
years
prior
to
1968,
(the
further
prayed
for
the
additional
sum
of
P3,000.00
by
way
of
year
of
the
hearing)
or
from
1943
(TSN,
May
28,
1968,
p.
27)
and
attorney's
fee.
the
songs
"Sapagkat
Ikaw
Ay
Akin"
and
"Sapagkat
Kami
Ay
Tao
Lamang"
both
registered
on
July
10,
1966,
appear
to
have
been
Issues
known
and
sang
by
the
witnesses
as
early
as
1965
or
three
years
(1)
Whether
plaintiff
is
entitled
to
protection,
notwithstanding
before
the
hearing
in
1968.
The
testimonies
of
the
witnesses
at
the,
fact
that
he
has
not
copyrighted
his
design?
the
hearing
of
this
case
on
this
subject
were
unrebutted
by
the
(2)
Whether
the
publication
is
limited,
so
as
to
prohibit
its
use
by
appellant.
(Ibid,
pp.
28;
29
and
30).
others,
or
it
is
general
publication?
(3)
Whether
the
provisions
of
the
Civil
Code
or
the
Copyright
Law
Atty:
Do
you
think
that
ruling
is
still
applicable?
No.
should
apply
in
the
case?
Remember
that
this
is
based
on
the
old
law,
PD
49.
Very
significant
to
point
out
that
one
of
the
reason
why
copyright
used
Law
failed
to
achieve
prosecuting
the
defendants
because
of
this
Art.
721.
By
intellectual
creation,
the
following
persons
acquire
requirement
that
they
have
to
publish
within
30
days.
The
ruling
ownership:
says,
the
owner
of
the
established
who
play
the
copyrighted
song
(1)
The
author
with
regard
to
his
literary,
dramatic,
historical,
is
liable
for
performance
for
profit
(at
that
time)
but
the
new
law,
legal,
philosophical,
scientific
or
other
work;
does
not
require
for
profit
as
long
as
it
is
a
public
performance.
(2)
The
composer;
as
to
his
musical
composition;
(3)
The
painter,
sculptor,
or
other
artist,
with
respect
to
the
Learning
definition
of
the
new
law
of
public
performance,
do
you
product
of
his
art;
think
it
fall
in
the
definition?
Yes.
What
kind
of
work
are
we
talking
(4)
The
scientist
or
technologist
or
any
other
person
with
regard
to
about?
It
is
a
work
other
than
audio-‐visual
work.
How
is
it
used
his
discovery
or
invention.
(n)
based
on
the
fact
of
the
case?
It
was
being
play.
So
it
falls
within
Art.
722.
The
author
and
the
composer,
mentioned
in
Nos.
1
and
2
the
definition
of
performance.
Can
it
be
considered
as
public
of
the
preceding
article,
shall
have
the
ownership
of
their
performance?
It
is
being
sung
for
the
patrons
of
the
establishment.
creations
even
before
the
publication
of
the
same.
Once
their
Definitely
it
is
not
within
the
normal
circle
of
the
family
and
even
works
are
published,
their
rights
are
governed
by
the
Copyright
extends
to
the
family’s
closest
acquaintance.
If
you
apply
that
laws.
factual
circumstance
in
the
new
law,
it
falls
within
the
definition
of
The
painter,
sculptor
or
other
artist
shall
have
dominion
over
the
public
performance.
product
of
his
art
even
before
it
is
copyrighted.
The
scientist
or
technologist
has
the
ownership
of
his
discovery
or
- Statutory
invention
even
before
it
is
patented.
(n)
o Only
those
rights
that
are
provided
in
the
law.
Held
1st
issue:
There
was
this
case,
an
author
entered
into
a
contract
with
a
The
Supreme
Court
found
that
plaintiff
is
not
entitled
to
a
publisher.
One
of
the
terms
of
publication
was
for
the
author
to
protection,
the
provision
of
the
Civil
Code,
notwithstanding.
provide
them
with
a
manuscript
of
his
work.
But
for
reasons
only
Paragraph
33
of
Patent
Office
Administrative
Order
No.
3
(as
known
to
the
author,
he
submitted
his
sole
copy
to
the
publisher.
amended
dated
September
18,
1947)
entitled
"Rules
of
Practice
in
The
publication
did
not
push
through.
Later
on,
he
contracted
the
Philippines
Patent
Office
relating
to
the
Registration
of
another
publishing
contract
with
another
publishing
company.
As
Copyright
Claims"
promulgated
pursuant
to
Republic
Act
165,
he
submitted
his
only
copy
to
the
previous
publishing
company,
provides,
among
others,
that
an
intellectual
creation
should
be
he
demanded
for
the
return
of
his
copy.
The
first
publishing
copyrighted
thirty
(30)
days
after
its
publication,
if
made
in
company
refused.
The
author
failed
to
recover,
so
he
filed
a
case
Manila,
or
within
sixty
(60)
day's
if
made
elsewhere,
failure
of
against
the
publishing
company
alleging
copyright
infringement.
which
renders
such
creation
public
property.
In
the
case
at
bar,
even
as
of
this
moment,
there
is
no
copyright
for
the
design
in
Is
his
case
tenable?
No.
He
is
alleging
refusal
of
the
publishing
question.
company
to
turn
over
or
return
his
manuscript.
Does
he
have
a
cause
of
action
against
the
publishing
company?
Yes.
But
is
it
the
2nd
issue:
correct
cause
of
action?
No.
The
remedy
is
to
recover
his
We
are
not
also
prepared
to
accept
the
contention
of
appellant
possession
of
a
property.
that
the
publication
of
the
design
was
a
limited
one,
or
that
there
was
an
understanding
that
only
Ambassador
Neri
should,
have
Why
is
this
not
considered
as
a
copyright
infringement?
How
do
absolute
right
to
use
the
same.
In
the
first
place,
if
such
were
the
we
characterize
these
sets
of
right?
Exclusive
and
Statutory.
There
condition
then
Ambassador
Neri
would
be
the
aggrieved
party,
is
no
specific
provision
that
you
can
cite
for
it
to
be
considered
as
and
not
the
appellant.
In
the
second
place,
if
there
was
such
a
a
violation
of
his
right.
You
cannot
find
in
the
enumeration
this
limited
publication
or
prohibition,
the
same
was
not
shown
on
the
kind
of
violation.
There
is
a
violation
but
it
is
not
copyright
face
of
the
design.
When
the
purpose
is
a
limited
publication,
but
infringement.
It
is
erroneous
for
his
to
initiate
a
case
on
copy
the
effect
is
general
publication,
irrevocable
rights
thereupon
infringement.
become
vested
in
the
public,
in
consequence
of
which
enforcement
of
the
restriction
becomes
impossible
(Nutt
vs.
Since
copyright
is
a
statutory
right,
you
are
limited
to
only
what
National
Institute,
31
F
[2d]
236).
It
has
been
held
that
the
effect
the
law
provides.
What
is
the
source
of
your
right?
You
examine
of
offering
for
sale
a
dress,
for
example
manufactured
in
the
law.
Is
it
within
the
provisions
provided?
If
no,
you
cannot
accordance
with
an
original
design
which
is
not
protected
by
afford
a
right
that
is
not
found
in
law.
That
is
what
you
call
as
either
a
copyright
or
a
patent,
is
to
divest
the
owner
of
his
statutory
right.
common
law
rights
therein
by
virtue
of
the
publication
of
a
'copy'
and
thereafter
anyone
is
free
to
copy
the
design
or
the
dress
b. Copyright
ownership
(Fashion
Originators
Guild
of
America
v.
Federal
Trade
Commission,
114
F
[2d]
80).
When
Ambassador
Neri
distributed
SEC.
178.
Rules
on
Copyright
Ownership.
-‐
Copyright
ownership
800
copies
of
the
design
in
controversy,
the
plaintiff
lost
control
of
shall
be
governed
by
the
following
rules:
his
design
and
the
necessary
implication
was
that
there
had
been
a
general
publication,
there
having
been
no
showing
of
a
clear
178.1.
Subject
to
the
provisions
of
this
section,
in
the
case
of
indication
that
a
limited
publication
was
intended.
The
author
of
a
original
literary
and
artistic
works,
copyright
shall
belong
to
the
literary
composition
has
a
light
to
the
first
publication
thereof.
He
author
of
the
work;
has
a
right
to
determine
whether
it
shall
be
published
at
all,
and
if
published,
when,
where,
by
whom,
and
in
what
form.
This
Who
owns
the
copyright?
exclusive
right
is
confined
to
the
first
publication.
When
once
As
a
rule:
the
author
of
the
work.
published,
it
is
dedicated
to
the
public,
and
the
author
loses
the
exclusive
right
to
control
subsequent
publication
by
others,
unless
JOINT
AUTHORSHIP
the
work
is
placed
under
the
protection
of
the
copyright
law.
(See
II
Tolentino's
Comments
on
the
Civil
Code,
p.
433,
citing
Wright
v.
178.2.
In
the
case
of
works
of
joint
authorship,
the
co-‐authors
Eisle
83
N.Y.
Supp.
887.)
shall
be
the
original
owners
of
the
copyright
and
in
the
absence
3rd
issue:
of
agreement,
their
rights
shall
be
governed
by
the
rules
on
co-‐
Art.
722.
The
author
and
the
composer,
mentioned
in
Nos.
1
and
2
ownership.
If,
however,
a
work
of
joint
authorship
consists
of
parts
of
the
preceding
article,
shall
have
the
ownership
of
their
that
can
be
used
separately
and
the
author
of
each
part
can
be
creations
even
before
the
publication
of
the
same.
Once
their
identified,
the
author
of
each
part
shall
be
the
original
owner
of
works
are
published,
their
rights
are
governed
by
the
Copyright
the
copyright
in
the
part
that
he
has
created;
laws.
The
painter,
sculptor
or
other
artist
shall
have
dominion
over
the
Joint
authorship:
a
work
that
is
created
by
two
or
more
authors
product
of
his
art
even
before
it
is
copyrighted.
and
their
contribution
to
the
work
cannot
be
identified.
The
scientist
or
technologist
has
the
ownership
of
his
discovery
or
who
owns
the
work?
the
co-‐authors
shall
be
the
owner
of
the
invention
even
before
it
is
patented.
(n)
copyright.
Absence
of
agreement,
their
rights
shall
be
governed
by
the
rules
on
co-‐ownership.
7. RIGHT
TO
OTHER
COMMUNICATION
TO
THE
PUBLIC
OF
THE
WORK.
No
co-‐owner
can
form
acts
of
dominion
unless
he
has
the
consent
of
the
co-‐owners.
So
if
you
dispose
or
sell,
you
must
have
the
177.7.
Other
communication
to
the
public
of
the
work
(Sec.
5,
consent
of
the
other
co-‐owners.
P.D.
No.
49a)
(There
are
certain
works
that
their
contribution
can
be
indentified,
The
law
anticipates
that
in
the
future
we
will
be
able
to
develop
the
common
example
is
musical
compositioin
for
the
melody
and
other
types
of
protection,
the
same
thing
happened
in
the
case
of
and
the
other
one
is
for
the
lyrics.
They
have
separate
works,
you
th
20
Century
Fox.
It
happened
in
the
1970s
and
the
law
that
was
cannot
consider
them
as
joint
authors.)
applied
was
enacted
in
the
early
1900s.
The
interpretation
of
the
court
says
that
we
have
to
interpret
the
law
as
to
be
able
to
WORKS
OF
EMPLOYMENT
anticipate
not
only
the
present
form
of
communication
but
also
the
future.
This
is
how
the
law
addresses
future
advancement.
178.3.
In
the
case
of
work
created
by
an
author
during
and
in
the
course
of
his
employment,
the
copyright
shall
belong
to:
How
do
we
characterize
this
set
of
rights
(rights
1-‐7)?
- Exclusive
(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,
ANONYMOUS
OR
PSEUDONYNOUS
WORKS
facilities
and
materials
of
the
employer.
SEC.
179.
Anonymous
and
Pseudonymous
Works.
-‐
For
purposes
(b)
The
employer,
if
the
work
is
the
result
of
the
performance
of
of
this
Act,
the
publishers
shall
be
deemed
to
represent
the
authors
his
regularly-‐assigned
duties,
unless
there
is
an
agreement,
of
articles
and
other
writings
published
without
the
names
of
the
express
or
implied,
to
the
contrary.
authors
or
under
pseudonyms,
unless
the
contrary
appears,
or
the
pseudonyms
or
adopted
name
leaves
no
doubts
as
to
the
author’s
If
there
is
no
agreement,
default
rule:
identity,
or
if
the
author
of
the
anonymous
works
discloses
his
- It
belongs
to
the
EMPLOYEE
if
not
part
of
his
identity.
regular
duties
- It
belongs
to
the
EMPLOYER
if
part
of
his
regular
Take
note.
This
is
very
important,
another
provision
that
is
duties
misunderstood
by
law
students.
With
respect
to
works
whose
authors
are
anonymous
and
whose
authors
use
pseudonymous,
Exception:
if
there
is
an
agreement
(par
b)
copyright
is
still
owned
by
the
owner.
ALWAYS
REMEMBER
THAT.
But
since
it
could
not
be
practical
for
him
to
enforce
his
right,
Very
important:
as
one
of
the
clauses
in
an
employment
contract,
unless
his
real
identity
will
be
exposed,
the
law
provides
him
an
to
examine
carefully
whether
it
provides
for
an
employee
to
waive
avenue
for
him
to
prosecute
or
to
administer
his
copyright
his
right
to
the
copyright.
through
his
publisher.
The
law
says:
the
publisher
shall
be
deemed
to
represent
the
author
of
articles
and
other
writings
published
It
could
be
that
the
copyright
owner
is
not
the
author.
Under
without
the
names
of
the
author
or
under
pseudonyms.
Section
178.3
because
the
employer,
not
the
author
can
become
the
copyright
owner.
What
about
EXCEPTION:
1. Unless
the
contrary
appears.
WORKS
OF
COMMISSION
Unless,
another
person
has
been
authorized,
not
the
publisher.
So,
if
there
is
an
SPA
or
the
book
itself
provides
that
copyright
shall
be
178.4.
In
the
case
of
a
work
commissioned
by
a
person
other
than
enforced
through
this
person.
an
employer
of
the
author
and
who
pays
for
it
and
the
work
is
made
in
pursuance
of
the
commission,
the
person
who
so
2. The
pseudonyms
or
adopted
name
leaves
no
doubts
as
commissioned
the
work
shall
have
ownership
of
the
work,
but
the
to
the
author’s
identity.
copyright
thereto
shall
remain
with
the
creator,
unless
there
is
a
For
example:
Bamboo,
written
stipulation
to
the
contrary;
3. It
the
author
of
the
anonymous
works
discloses
his
Works
of
Commission
Works
of
employment
identity.
it
depends
upon
the
order
of
there
has
to
be
a
employer-‐
another
person
but
it
is
not
employee
relationship
(4
fold
made
for
the
purpose
of
rule)
QUESTIONS
FROM
STUDENTS
performing
employment
work.
Q:
What
if
sir,
in
case
of
a
band,
the
song
was
written
by
the
Works
of
commission
is
very
common
in
architectural
works.
The
collaborative
effort
of
the
entire
band,
what
happens
if
the
band
owner
of
the
building
commissions
an
engineer
or
an
architect
to
breaks
up?
construct
the
building.
A:
it
does
not
matte
as
to
the
status
of
their
relationship
because
Who
owns
the
copyright
of
design?
architect
authorship
stays
with
the
copyright
owner.
They
are
co-‐owners,
even
if
their
break
up
was
sour.
What
about
an
architect
employed
in
a
construction
firm,
who
owns
the
copyright
of
their
works?
Apply
works
of
employment.
Q:
As
part
principle
of
a
statutory
right
it
is
imperative
that
the
However,
if
his
contract
of
employment
stipulates
that
regardless
author
must
register
it
first.
As
you
said
sir,
in
Malang
and
Filipino
of
whether
it
is
perform
within
or
outside
his
regularly
assigned
Society
of
Composers,
the
problem
here
is
the
fact
that
they
were
duty,
the
work
is
owned
by
the
employee,
it
will
an
exception
to
not
able
to
register
it.
Is
it
not
imperative
that
they
must
register
it
paragraph
b,
section
178.3.
first
before
they
impose
their
right,
because
it
is
a
statutory
right?
AUDIO-‐VISUAL
WORKS
A:
No.
There
is
no
relevance
for
the
requirement
of
registration.
Regardless
of
registration,
it
is
still
a
statutory
right.
178.5.
In
the
case
of
audiovisual
work,
the
copyright
shall
belong
to
the
producer,
the
author
of
the
scenario,
the
composer
of
the
Q:
What
if
somebody
else
registered
it
before
you
(the
real
owner)?
music,
the
film
director,
and
the
author
of
the
work
so
adapted.
However,
subject
to
contrary
or
other
stipulations
among
the
A:
you
cannot
register
it
unless
you
are
the
owner.
If
through
creators,
the
producer
shall
exercise
the
copyright
to
an
extent
fraud,
it
will
then
be
matter
of
evidence
to
show
that
he
is
the
required
for
the
exhibition
of
the
work
in
any
manner,
except
for
right
owner.
It
is
a
different
cause
of
action.
Registration
is
more
the
right
to
collect
performing
license
fees
for
the
performance
of
on
convenience.
That
is
why
the
law
says,
it
is
not
a
requirement,
musical
compositions,
with
or
without
words,
which
are
but
it
is
strongly
advised
for
you
register
it
for
you
to
have
a
incorporated
into
the
work;
certificate
of
copyright
registration.
It
is
easier
to
establish
ownership
of
a
work
if
you
have
a
certificate.
BUT
the
certificate
What
is
the
most
common
type
of
audio-‐visual
work?
Motion
does
not
confer
ownership;
it
is
just
a
support
to
your
claim.
If
pictures.
Who
owns
the
copyright?
The
Producers.
somebody
else
proves
owner,
or
having
a
better
right
over
your
With
respect
to
parts
of
the
work,
which
can
be
identified
work,
the
certificate
will
not
be
used
as
basis.
separately,
such
as
lighting,
cinematographic
work,
then
the
owner,
is
cinematographer.
The
sounds
belong
to
the
composers.
Q:
if
a
contactor
registers
a
building,
and
the
design
is
copied
by
another
entity,
will
this
be
a
violation
of
copyright
infringement?
It
is
a
collaborative
work
wherein
their
contribution
can
be
(like
for
example
the
picture
is
displayed
outside
the
building
site
identified.
They
have
separate
types
of
copyright.
[soon
to
rise
….])
LETTERS
A:
Yes
because
one
of
the
works
covered
by
copyright
are
architectural
works.
178.6.
In
respect
of
letters,
the
copyright
shall
belong
to
the
writer
subject
to
the
provisions
of
Article
723
of
the
Civil
Code.
(Sec.
6,
P.D.
No.
49a)
Chapter
VII
It
only
pertains
to
authorization-‐
being
authorized
to
perform
limited
rights
as
compared
to
an
assignee
or
transferee.
7.
TRANSFER/ASSIGNMENT
OF
COPYRIGHT
OR
LICENSING
OF
They’re
only
allowed
to
carry
out.
They
have
no
right
to
authorize
COPYRIGHT
SEC.
180
TO
180.5
TO
182
and
no
right
to
prevent.
Why?
Because
they
are
not
the
copyright
owner.
The
license
only
involves
an
authorization
for
Atty
Q
(AQ):
We
have
noticed
that
this
particular
part
of
the
law
one
to
perform
certain
acts.
has
been
amended
and
there
are
certain
recent
additions
to
the
The
law
also
says
“…a
copyright
may
be
licensed
in
whole
or
title
itself.
in
part”.
So
if
a
license
is
issued,
we
have
to
check
whether
the
Now:
Transfer,
Assignment
and
Licensing
of
Copyright.
license
convers
ALL
of
the
rights
or
authorizes
ALL
of
the
acts,
or
Before:
Transfer
or
Assignment
of
Copyright
only
SOME.
Because
it
says
“in
whole
or
in
part”
SEC.
180.
Rights
of
Assignee
or
Licensee.
What
are
the
formal
requirements?
180.1.
The
copyright
may
be
assigned
or
licensed
in
whole
or
in
SEC.
180.2
:
The
copyright
is
not
deemed
assigned
or
licensed
part.
Within
the
scope
of
the
assignment
or
license,
the
ssignee
or
inter
vivos,
in
whole
or
in
part,
unless
there
is
a
written
indication
licensee
is
entitled
to
all
the
rights
and
remedies
which
the
of
such
intention.
assignor
or
licensor
had
with
respect
to
the
copyright.
So
it
has
to
be
in
writing.
In
Assignment,
who
are
the
parties?
Assignor
and
Assignee
The
Law
says
that
there
is
Special
License
(SEC.
180.3).
Why
In
Licensing,
who
are
the
parties?
Licensor
and
Licensee
special?
Because:
there
is
no
need
for
a
written
agreement.
AQ:
When
we
talk
about
Assignment,
it’s
the
same
with
Transfer.
(an
exception
to
the
rule)
There
is
transmission
of
Ownership.
They
have
the
same
legal
What
act
can
be
considered
as
an
authorization
given
effect.
to
the
recipient?
To
licensee?
The
act
of
submission.
The
law
provides,
for
the
provisions
pertaining
to
transfer
of
By
whom?
Ownership.
As
what
we’ve
said,
it
involves
the
right
to
a
property,
Limited
only
to
authors
of:
Literary,
photographic,
or
specifically
the
right
to
an
intellectual
property.
We’ve
discussed
artistic
works.
last
time
that
the
rights
to
a
copyright
is
different
from
the
right
To
whom?
to
the
material
object
and
vice
versa.
If
there
is
transfer
of
Submission
to
newspaper,
magazine,
periodical
or
copyright,
it
doesn’t
follow
that
there’s
a
transfer
of
a
material
publication.
object.
So
what
the
chapter
talks
about
is
the
right
to
the
economic
rights
as
well
as
other
rights
involving
the
Copyright.
The
act
of
submission
is
construed
as
a
license
to
make
a
single
publication
(for
one
time
only).
When
there
is
transfer
or
assignment,
there
is
transfer
of
So,
there
is
no
need
for
a
written
indication
as
long
as
ownership.
there
is
an
act
of
submission.
But
the
license
is
limited.
How?
It
only
allows
single
publication
on
the
part
of
the
What
happens
when
there’s
a
transfer
of
ownership?
newspaper.
The
assignee
or
the
transferee
becomes
the
Copyright
owner.
Being
the
new
Copyright
owner,
he
assumes
all
If
two
or
more
persons
jointly
own
a
copyright
or
any
part
the
rights.
thereof:
But
there
are
certain
Exceptions:
Neither
of
the
co-‐owners
shall
be
entitled
to
grant
licenses
Since
the
law
says
“…it
may
be
assigned
in
whole
without
the
prior
written
consent
of
the
other
co-‐owner/co-‐
or
in
part”,
It
could
mean
that
he
assumes
all
the
rights
owners.
enumerated
under
the
law
OR
maybe,
the
subject
matter
of
the
assignment
pertains
only
to
some
of
the
What
happens
if
one
co-‐owner
grants
licenses
without
the
prior
rights.
written
consent
of
the
other
co-‐owner/co-‐owners?
The
law
allows
for
the
situation
wherein
the
copyright
License
is
void,
in
so
far
as
the
co-‐owners
concerned.
Because
owner
may
assign
or
license
only
SOME
OF
HIS
RIGHTS.
the
co-‐owner
who
issued
a
license
without
securing
the
consent
of
the
co-‐owner
is
already
estopped
from
questioning
the
validity.
Economic
Rights
(Sec.
177)
However,
the
other
co-‐owner
who
did
not
give
his
consent
has
the
1. Right
to
make
a
Reproduction
right
to
question
the
validity
of
the
license.
2. Right
to
make
Dramatization
or
Derivative
Works
3. Right
to
First
Public
Distribution
In
the
amendment,
there
are
additional
provisions.
4. Right
to
the
Rental
of
the
original
or
copy
of
an
Section
180.4
and
180.5.
audiovisual
or
cinematographic
world
5. Right
to
the
Public
display
of
the
original
or
a
copy
SEC.
180.4:
“Any
exclusivity
in
the
economic
rights
in
a
work
may
of
the
work
be
exclusively
licensed.
Within
the
scope
of
the
exclusive
license,
6. Right
to
the
Public
performance
of
the
work;
and
the
licensee
is
entitled
to
all
the
rights
and
remedies
which
the
7. Right
to
the
Other
communication
to
the
public
of
licensor
had
with
respect
to
the
copyright.”
the
work
AQ:
Somehow
this
is
an
exception
because
as
what
we’ve
These
transactions
only
transfer
the
copyright
owner’s
right
of
discussed,
there
is
no
transfer
of
ownership.
Therefore
you
cannot
reproduction
while
retaining
the
rest
of
his
other
rights.
This
is
perform
proprietary
acts.
However,
if
there
is
an
exclusivity
clause,
what
it
means
“in
whole
or
in
part”.
this
provision
allows
for
the
exclusive
licensee
to
avail
of
all
the
rights
and
remedies
which
the
licensor
had
with
respect
to
the
So
being
the
new
owner,
the
transferee
or
assignee
assumes
all
copyright.
This
is
applicable
especially
with
respect
to
exclusive
the
rights.
Meaning,
he
has
all
the
right
to
carry
out,
right
to
rights
to
reproduction.
authorize
and
the
right
to
prevent.
So
he
assumes
all
the
rights
and
privileges
as
the
new
copyright
owner.
He
being
the
Sec.
180.5:
The
copyright
owner
has
the
right
to
regular
transferee.
statements
of
accounts
from
the
assignee
or
the
licensee
with
regard
to
assigned
or
licensed
work.
What
happens
with
respect
to
licensing
(Licensor-‐
Licensee)?
The
licensee
does
not
acquire
ownership,
because
there
was
no
AQ:
This
will
allow
the
copyright
owner
to
be
able
to
avail
of
the
transfer
of
ownership.
right
to
percentage
of
the
earnings.
What
does
licensing
entail?
8. DESIGNATION
OF
SOCIETY
SEC.
183
PUBLIC
PRIVATE
SEC
183.
Designation
of
Society.
-‐
The
owners
of
copyright
and
Sec.
171.6.
xxx
in
a
Any
act
contrary
to
related
rights
or
their
heirs
may
designate
a
society
of
artists,
place
or
at
the
definition
of
writers,
composers
and
other
right-‐holders
to
collectively
manage
places
where
persons
“public
performance”
their
economic
or
moral
rights
on
their
behalf.
For
the
said
outside
the
normal
enshrined
in
Sec.
societies
to
enforce
the
rights
of
their
members,
they
shall
first
circle
of
a
family
and
171.6
AND
free
of
secure
the
necessary
accreditation
from
the
Intellectual
Property
that
charge.
Office.
(Sec.
32,
P.D.
No.
49a)
family’s
closest
social
acquaintances
are
or
How
is
it
practical
for
the
copyright
owner?
can
be
present,
Is
it
possible
for
the
individual
copyright
owner
to
enforce
his
irrespective
of
rights
in
all
parts
of
the
country?
whether
they
are
or
can
I
don’t
think
so.
be
present
at
the
same
So
he
needs
someone
or
a
group
to
represent
him
for
him
to
be
place
and
at
the
same
represented
in
any
act
enforcing
and
managing
his
copyright.
time,
Of
course
there
are
concessions.
If
you
designate
the
Society,
or
at
different
places
you
also
have
to
give
something
to
the
Society-‐
which
is
to
and/or
at
different
waive
certain
rights,
e.g.,
right
to
claim
full
amount
in
case
times,
and
where
the
there’s
award
for
damages.
performance
The
Society
has
more
man-‐power,
has
more
capability
of
can
be
perceived
enforcing
certain
rights
of
individuals.
So
it
is
very
practical
for
without
the
need
for
copyright
owners
(authors,
composers,
literary
artists)
to
communication
within
designate
a
Society.
Once
there
is
a
designation
of
a
Society,
the
meaning
that
specific
Society
is
given
the
personality-‐
the
authority
to
of
Subsection
171.3;
represent
these
copyright
owners
when
it
comes
to
enforcing
that
right.
AQ:
“if
made
strictly
for
a
charitable
or
religious
institution
or
What
does
enforcing
a
copyright
include?
society”
Ø The
right
to
send
letters
asking
for
other
persons
to
restrain
This
time,
it
doesn’t
matter
if
it’s
free
or
charge
or
not.
Because
themselves
from
performing
or
further
performing
infringing
we
know
that
for
charitable
or
religious
institutions,
it’s
not
acts.
entirely
intended
solely
for
profit.
It
is
for
some
beneficiaries.
So
Ø The
right
to
file
a
case
in
the
name
of
the
copyright
owner
there
is
no
intention
to
make
profit
out
of
such
endeavor.
(ex,
Filipino
Society
of
Composers
vs
Tan)
-‐
Does
this
involve
a
transfer
of
Ownership?
So
what
have
you
judged
so
far
out
of
the
first
limitation?
Does
it
No.
It
only
ALLOWS
that
specific
Society
to
represent,
interfere
with
the
economic
interest
of
the
author?
NO.
not
to
acquire
ownership.
So
the
“recitation/performance”
AQ:
The
law
says:
For
you
to
be
able
to
represent,
you
must
be
an
l has
not
been
qualified
whether
for
a
portion
or
for
the
accredited
Society.
whole
work.
Therefore,
the
term
“recitation
of
performance”
So
there’s
an
accreditation
process
provided
in
IPO.
covers
not
just
a
portion
but
could
be
the
entire
work.
And
is
Before,
there
was
no
process
for
this.
So
in
order
to
done
privately
and
free
of
charge,
or
by
charitable
or
designate
a
Society,
the
IPO
lobbied
for
the
amendment
for
a
religious
institutions.
Society
to
be
able
to
lawfully
represent
certain
artists,
it
must
be
an
accredited
society.
B.
ACT
OF
MAKING
QUOTATIONS
SEC.
184
(b).
The
making
of
quotations
from
a
published
work
if
9.
LIMITATIONS
OF
COPYRIGHT
they
are
compatible
with
fair
use
and
only
to
the
extent
justified
for
the
purpose,
including
quotations
from
newspaper
articles
and
a.
Limitations
On
Copyright-‐
Sec
184;
184.1
(a)
to
(l);
184.2
periodicals
in
the
form
of
press
summaries:
Provided,
That
the
source
and
the
name
of
the
author,
if
appearing
on
the
work,
are
SEC.
184.
Limitations
on
Copyright.
-‐
184.1.
Notwithstanding
the
mentioned;
(Sec.
11,
third
par.,
P.D.
No.
49)
provisions
of
Chapter
V,
the
following
acts
shall
not
constitute
infringement
of
copyright:
What
do
you
mean
by
publication?
When
can
a
work
be
considered
having
been
published?
A.
ACT
OF
RECITATION
OR
PERFORMANCE
Sec.
184
(a).
The
recitation
or
performance
of
a
work,
once
it
has
SEC..
171.7.
"Published
works"
means:
been
lawfully
works,
which,
with
the
consent
of
the
authors,
are
made
made
accessible
to
the
public,
if
done
privately
and
free
of
charge
available
to
the
public
by
wire
or
wireless
means
in
such
a
or
if
way
that
embers
of
the
public
may
access
these
works
made
strictly
for
a
charitable
or
religious
institution
or
society;
from
a
place
and
time
individually
chosen
by
them:
(Sec.
Provided,
That
availability
of
such
copies
has
been
such,
as
10(1),
P.D.
No.49)
to
satisfy
the
reasonable
rrequirements
of
the
public,
having
regard
to
the
nature
of
the
work.
Requirements:
1. recitation
or
performance
of
a
work;
AQ:
So
there
is
publication
already
when
it
has
been
made
2. that
work
has
been
made
accessible
to
the
public;
available
to
the
public
by
wire
or
wireless
means.
Of
course,
with
3. Recitation/
performance
was
done
privately
and
free
of
charge
the
consent
of
the
authors.
OR
made
strictly
for
a
charitable
or
religious
institution
or
society
What
is
the
act
involved
in
paragraph
b?
Q:
Take
note
of
the
qualifying
clause
“once
it
has
been
lawfully
The
act
of
making
use
of
quotations
from
a
published
work
if
they
made
accessible
to
the
public”
and
another
qualifying
statement:
are
compatible
with
fair
use
and
only
to
the
extent
justified
for
“if
done
privately
and
free
of
charge”
the
purpose.
So
public
or
private.
But
when
is
it
public
and
when
is
it
AQ:
The
law
does
not
qualify
how
long
the
quotation
should
be.
private?
But
when
you
say
“quote”,
what
is
the
definition
of
this
term?
Only
a
portion.
There
is
no
substantive
reproduction
in
quote.
“…only
to
the
extent
justified
for
the
purpose”
So
if
you’re
making
a
literary
work,
a
thesis
perhaps,
you
can
E.
ACT
OF
INCLUSION
OF
A
WORK
IN
A
PUBLICATION,
use
a
portion
of
a
published
work
and
only
up
to
that
extent
in
BROADCAST,
OR
OTHER
COMMUNICATION
THE
PUBLIC
order
to
support
the
content
of
your
work.
SEC.
184
(e).
The
inclusion
of
a
work
in
a
publication,
broadcast,
or
“including
quotations
from
newspaper
articles
and
periodicals
other
communication
to
the
public,
sound
recording
or
film,
if
such
in
the
form
of
press
summaries:
Provided,
That
the
source
and
inclusion
is
made
by
way
of
illustration
for
teaching
purposes
and
the
name
of
the
author,
if
appearing
on
the
work,
are
is
compatible
with
mentioned”
fair
use:
Provided,
That
the
source
and
of
the
name
of
the
author,
So
we
are
allowed
to
make
quotations
as
long
as
we
don’t
if
appearing
in
the
work,
are
mentioned.
plagiarize.
We
don’t
claim
a
certain
work
to
be
our
own
work.
So
you
cite
your
source.
As
long
as
the
name
of
the
author
appears
AQ:
Of
course
some
of
you
must
have
seen
the
film
“Heneral
on
your
work
as
mentioned.
Luna.”
Most
schools
have
already
incorporated
this
film
as
part
of
their
study
of
History.
So
there
is
a
film
showing
of
the
ENTIRE
C.
ACT
OF
REPRODUCTION
OR
COMMUNICATION
TO
THE
PUBLIC
movie
to
the
students.
So
how
do
you
characterize
that
act
of
showing
the
film
to
the
students?
Infringement
or
Fair
Use?
SEC..
184
(c).
The
reproduction
or
communication
to
the
public
by
mass
media
of
articles
on
current
political,
social,
economic,
Is
it
for
teaching
purposes?
YES.
So
as
long
as
you
attribute
the
scientific
or
religious
topic,
lectures,
addresses
and
other
works
of
source
or
owner
of
the
copyright,
this
is
allowed
as
a
limitation
to
the
same
nature,
which
are
delivered
in
public
if
such
use
is
for
copyright.
information
purposes
and
has
not
been
expressly
reserved:
Provided,
That
the
source
is
clearly
indicated;
F.
ACT
OF
INCLUDING
A
WORK
FOR
PURPOSES
OF
BROADCAST
(Sec.
11,
P.D.
No.
49)
FOR
EDUCATIONAL
INSTUTIONS
“mass
media”
SEC.
184
(f).
The
recording
made
in
schools,
universities,
or
Includes:
television,
radio,
social
media
educational
institutions
of
a
work
included
in
a
broadcast
for
the
use
of
such
schools,
universities
or
educational
institutions:
AQ:
For
me,
this
enumeration
is
somehow
superfluous
because
it
Provided,
That
such
recording
must
be
deleted
within
a
reasonable
technically
covers
everything.
period
after
they
were
first
broadcast:
Provided,
further,
That
such
recording
may
not
be
made
from
audiovisual
works
which
are
part
E
F
of
the
general
cinema
repertoire
of
feature
films
except
for
brief
Broader
scope:
Scope:
Schools,
universities
or
excerpts
of
the
work.
publication,
educational
institutions
broadcast,
or
AQ:
How
is
it
different
from
letter
E?
other
*Requirement:
communication
Must
be
deleted
for
a
reasonable
period
after
G.
ACT
OF
MAKING
TEMPORARY
RECORDINGS
FOR
BROADCAST
broadcast
(this
is
open
to
interpretation.
How
long
is
SEC.
184
(g).
The
making
of
ephemeral
recordings
by
a
reasonable?)
broadcasting
organization
by
means
of
its
own
facilities
and
for
use
in
its
own
broadcast.
“has
not
been
expressly
reserved”
AQ:
when
an
author
publishes
a
work,
you
can
find
in
the
first
few
AQ:
This
covers
all
types
of
work.
pages
of
the
book
a
notice
that
he
is
reserving
all
his
rights:
“ALL
RIGHTS
RESERVED”.
H.
THE
USE
OF
A
WORK
FOR
PUBLIC
INTEREST
He
will
not
allow
an
implied
authorization
to
any
and
all
of
his
rights.
SEC.
184
(h).
The
use
made
of
a
work
by
or
under
the
direction
or
So
if
there’s
that
indication,
then
strictly,
there
must
not
be
any
control
of
the
Government,
by
the
National
Library
or
by
performance
of
his
work
without
his
authorization.
educational,
scientific
or
professional
institutions
where
such
use
is
in
the
public
interest
and
is
compatible
with
fair
use.
Ate
Kit:
Sir,
if
for
example
in
Facebook,
I
shared
a
post
about
a
movie.
But
instead
of
using
the
link,
I
only
screenshot
it.
Is
this
a
AQ:
Does
it
have
to
be
undertaken
by
the
Government
directly?
violation?
NO,
this
could
be
undertaken
by
a
private
entity,
as
long
as
it
is
under
the
direction
or
control
of
the
Government;
just
like
in
AQ:
What
was
the
intention
of
the
person
who
shared
it?
Is
it
to
the
case
of
ABS-‐CBN
v
PMSI
promote
the
movie?
Then
that’s
better,
because
you
are
helping
the
creator
to
gain
profit.
I
don’t
think
he
will
object
to
that.
For
I.
ACT
OF
PUBLIC
PERFORMANCE
OF
A
WORK
WITHOUT
me
it
is
not
a
violation.
ADMISSION
FEE
When
we
examine
carefully
these
acts,
we
have
to
place
ourselves
in
the
shoes
of
the
copyright
owner.
When
you
SEC.
184
(i).
The
public
performance
or
the
communication
to
the
committed
the
act,
check
if:
is
it
damaging
to
the
economic
public
of
a
work,
in
a
place
where
no
admission
fee
is
charged
in
interest
of
the
owner?
I
don’t
think
so.
In
fact,
you
were
helping
in
respect
of
such
public
performance
or
communication,
by
a
club
or
promoting
his
movie.
I
really
do
not
think
he
will
object
to
that.
institution
for
charitable
or
educational
purpose
only,
whose
aim
is
not
profit
making,
subject
to
such
other
limitations
as
may
be
D.
ACT
OF
REPRODUCTION
AND
COMMUNICATION
TO
THE
provided
in
the
regulations.
PUBLIC
AQ:
How
do
you
compare
this
with
par.
a?
SEC.
184(d).
The
reproduction
and
communication
to
the
public
of
literary,
scientific
or
artistic
works
as
part
of
reports
of
current
events
by
means
of
photography,
cinematography
or
broadcasting
to
the
extent
necessary
for
the
purpose;
(Sec.
12,
P.D.
No.
49)
AQ:
We
always
find
in
the
news
reports
on
TV
certain
events-‐
social
events,
upcoming
movie,
books,
or
shows
to
be
released.
But
it
has
some
significance
because
it
has
some
social
relevance-‐
relevance
to
current
affairs.
In
other
words,
they
are
news-‐worthy.
So
is
this
allowed?
YES,
as
long
as
it
is
for
the
purposes
of
information
to
the
public.
J.
ACT
OF
PUBLIC
DISPLAY
OF
A
WORK
A
(REPRODUCTION)
I
(ACT
OF
PUBLIC
PERFORMANCE)
SEC.
184
(j).
Public
display
of
the
original
or
a
copy
of
the
work
not
Recitation
or
Public
performance
or
made
by
means
of
a
film,
slide,
television
image
or
otherwise
on
performance
of
a
work
communication
to
the
public
screen
or
by
means
of
any
other
device
or
process:
Provided,
That
of
a
work
either
the
work
has
been
published,
or,
that
the
original
or
the
Only
covers
certain
Could
be
performance
or
any
copy
displayed
has
been
sold,
given
away
or
otherwise
transferred
types
of
work
other
work
that
is
to
another
person
by
the
author
or
his
successor
in
title.
exclusively
for
communicated
to
the
public.
recitation
or
It
does
not
limit
itself
it
works
AQ:
Let’s
say
for
instance
a
person
is
a
collector
of
artworks-‐
performance
capable
of
being
performed
or
paintings
or
sculptures.
Since
he
has
a
vast
collection,
he
has
to
recited.
boast
or
show
it
off
to
his
friends
and
to
the
public.
So
he
opened
an
exhibit.
May
be
for
profit-‐ No
profit
making;
free
of
making
or
not.
charge
The
law
says:
the
right
to
public
display
is
exclusively
owned
by
the
copyright
owner.
exception:
Public
display
of
the
original
or
a
“Normal
exploitation”
copy
of
the
work
not
made
by
means
of
a
film,
slide,
television
AQ:
it
has
something
to
do
with
the
economic
expectation.
image
or
otherwise
on
screen
or
by
means
of
any
other
device
or
process.
PACITA
I.
HABANA,
ALICIA
L.
CINCO
and
JOVITA
N.
FERNANDO
vs.
AQ:
Say
his
collection
is
sculptures,
paintings
or
3-‐Dimensional
FELICIDAD
C.
ROBLES
and
GOODWILL
TRADING
CO.,
INC.
works,
is
it
covered
under
par.
J?
Is
the
collector
exempt
from
any
G.R.
No.
131522,
July
19,
1999
liability
if
he
decides
to
open
an
exhibit?
FACTS:
ANSWER:
The
law
says
it
is
allowed
since
the
limitation
applies
to
Pacita
Habana
et
al.,
are
authors
and
copyright
owners
of
duly
all
types
of
work
as
long
as
it
is
not
made
by
means
of
a
film,
slide,
issued
of
the
book,
College
English
For
Today
(CET).
Respondent
television
image
or
otherwise
on
screen
or
by
means
of
any
other
Felicidad
Robles
was
the
author
of
the
book
Developing
English
device
or
process.
Provided,
that
either
the
work
has
been
Proficiency
(DEP).
Petitioners
found
that
several
pages
of
the
published,
or,
that
the
original
or
the
copy
displayed
has
been
sold,
respondent's
book
are
similar,
if
not
all
together
a
copy
of
given
away
or
otherwise
transferred
to
another
person
by
the
petitioners'
book.
Habana
et
al.
filed
an
action
for
damages
and
author
or
his
successor
in
title.
injunction,
alleging
respondent’s
infringement
of
copyrights,
in
violation
of
P.D.
49.
They
allege
respondent
Felicidad
C.
Robles
K.
ACT
OF
USING
A
WORK
IN
JUDICIAL
PROCEEDINGS
OR
GIVING
being
substantially
familiar
with
the
contents
of
petitioners'
works,
LEGAL
ADVICE
and
without
securing
their
permission,
lifted,
copied,
plagiarized
and/or
transposed
certain
portions
of
their
book
CET.
SEC.
184.
Any
use
made
of
a
work
for
the
purpose
of
any
judicial
proceedings
or
for
the
giving
of
professional
advice
by
a
legal
On
the
other
hand,
Robles
contends
that
the
book
DEP
is
the
practitioner.
product
of
her
own
intellectual
creation,
and
was
not
a
copy
of
any
existing
valid
copyrighted
book
and
that
the
similarities
may
AQ:
So
a
lawyer
can
use
any
copyrighted
work
as
long
as
it
is
for
be
due
to
the
authors'
exercise
of
the
"right
to
fair
use
of
the
purpose
of
giving
professional
advice
or
it
is
done
for
the
copyrighted
materials,
as
guides."
purpose
of
any
judicial
proceedings.
The
trial
court
ruled
in
favor
of
the
respondents,
absolving
them
Not
too
long
ago,
a
Supreme
Court
Justice
del
Castillo.
was
of
any
liability.
Later,
the
Court
of
Appeals
rendered
judgment
in
criticized
for
using
published
works
as
part
of
his
ponentia.
He
was
favor
of
respondents
Robles
and
Goodwill
Trading
Co.,
Inc.
In
this
filed
with
an
Administrative
complaint
and
was
accused
of
appeal,
petitioners
submit
that
the
appellate
court
erred
in
plagiarism.
The
case
was
about
comfort
women
and
he
cited
affirming
the
trial
court's
decision.
several
foreign
authors
without
acknowledging
them.
One
of
his
defenses
was
that:
it
is
one
of
the
limitations
of
copyright
as
it
was
ISSUE:
used
“in
any
judicial
proceedings”.
However,
this
term
should
not
Whether
Robles
committed
infringement
in
the
production
of
DEP.
be
interpreted
to
cover
any
type
of
act
without
regard
to
the
rights
of
the
authors.
More
particularly,
the
right
to
be
attributed.
HELD:
That’s
the
essence
of
plagiarism,
actually
if
you
claim
a
work
as
A
perusal
of
the
records
yields
several
pages
of
the
book
DEP
that
your
own.
are
similar
if
not
identical
with
the
text
of
CET.
The
court
finds
that
Yes,
it
may
be
for
judicial
proceedings.
However
he
copied
it
respondent
Robles'
act
of
lifting
from
the
book
of
petitioners
verbatim.
He
did
not
even
attempt
to
paraphrase
nor
citing
any
of
substantial
portions
of
discussions
and
examples,
and
her
failure
the
authors..
Despite
this,
he
was
exonerated
from
any
liability.
to
acknowledge
the
same
in
her
book
is
an
infringement
of
The
Supreme
Court
held
that
unfortunately,
there
really
is
no
petitioners'
copyrights.
exact
definition
of
“plagiarism”
in
our
laws.
That
may
be
true,
but
for
me,
you
do
not
have
to
interpret
or
investigate
further
the
In
the
case
at
bar,
the
least
that
respondent
Robles
could
have
provision
especially
pertaining
to
moral
rights.
IDK,
I’m
out
of
done
was
to
acknowledge
petitioners
Habana
et.
al.
as
the
source
words
(In
Re:
Del
Castillo).
of
the
portions
of
DEP.
The
final
product
of
an
author's
toil
is
her
book.
To
allow
another
to
copy
the
book
without
appropriate
L.
ACT
OF
REPRODUCTION
OR
DISTRIBUTION
OF
PUBLISHED
acknowledgment
is
injury
enough.
WORK
IN
A
SPECIALIZED
FORMAT
-‐-‐-‐-‐-‐-‐
Discussion
during
Recits
of
Birth
Sword-‐-‐-‐-‐-‐-‐
SEC.
184
(l).
The
reproduction
or
distribution
of
published
articles
or
materials
in
a
specialized
format
exclusively
for
the
use
of
the
AQ:
In
this
case,
the
Court
gave
us
the
definition
of
Infringement
blind,
visually-‐
and
reading-‐impaired
persons:
Provided,
That
such
of
Copyright
copies
and
distribution
shall
be
made
on
a
nonprofit
basis
and
n A
trespass
on
a
private
domain
owned
and
occupied
by
shall
the
owner
of
a
copyright
and
is
therefore,
conflicted
by
law
n Synonymous
to
Piracy:
SEC.
184.2.
The
provisions
of
this
section
shall
be
interpreted
in
u Consists
of
doing
by
any
person
such
a
way
as
to
allow
the
work
to
be
used
in
a
manner
which
(without
the
consent
of
the
does
not
conflict
with
the
normal
exploitation
of
the
work
and
copyright
owner)
of
any
of
his
does
not
unreasonably
prejudice
the
right
holder's
legitimate
sole
rights
to
do
(which
is
interests.
confirmed
by
the
statute)
as
the
owner
of
the
copyright
So
this
supports
the
principle
that
copyright
is
a
statutory
right.
obtaining
the
information
necessary
to
achieve
Any
act
of
trespass
on
the
exclusive
and
statutory
rights
is
such
interoperability
considered
as
infringement.
Factors
in
Determining
Fair
Use:
What
are
the
exclusive
rights
that
are
available
to
the
author?
(a)
The
purpose
and
character
of
the
use,
including
whether
such
SEC.
177
use
is
of
a
commercial
nature
or
is
for
non-‐profit
educational
1.
Right
to
make
a
Reproduction
purposes;
2.
Right
to
make
Dramatization
or
Derivative
Works
(b)
The
nature
of
the
copyrighted
work;
3.
Right
to
First
Public
Distribution
(c)
The
amount
and
substantiality
of
the
portion
used
in
relation
4.
Right
to
the
Rental
of
the
original
or
copy
of
an
to
the
copyrighted
work
as
a
whole;
and
audiovisual
or
cinematographic
world
(d)
The
effect
of
the
use
upon
the
potential
market
for
or
value
of
5.
Right
to
the
Public
display
of
the
original
or
a
copy
of
the
the
copyrighted
work.
work
6.
Right
to
the
Public
performance
of
the
work;
and
A.
Purpose
and
Character
of
the
Use
7.
Right
to
the
Other
communication
to
No
intention
to
earn;
not
a
profit-‐making
endeavor
(Criticism,
the
public
of
the
work
Comment,
News
Reporting)
In
contrast,
the
Court
also
provided
certain
provisions
that
B.
Nature
of
the
Copyrighted
Work
limits
the
copyright,
as
cited
in
SEC.
184
(Limitations
on
Copyright),
Jurisprudence:
In
judging
the
nature,
dichotomize
into
2
types
of
specifically,
par.
E
:
work:
(1)
literary
or
artistic,
OR
(1)
fact
based
“The
inclusion
of
a
work
in
a
publication,
broadcast,
or
other
n Literary
or
artistic-‐
songs,
fiction
novel
communication
to
the
public,
sound
recording
or
film,
n Fact
based:
books,
nonfiction
novel
if
such
inclusion
is
made
by
way
of
illustration
for
teaching
purposes
and
Significance
of
Identifying
whether
Essentially
Literary
or
Artistic
vs
is
compatible
with
fair
use:
Provided,
That
the
source
Fact
Based
and
of
the
name
of
the
author,
if
appearing
in
the
work,
n Literary
or
Artistic-‐-‐-‐
Infringement
are
mentioned.”
n Fact
based-‐-‐-‐-‐Fair
use
This
is
actually
the
pivotal
point
where
the
Court
ruled
that
C.
The
amount
and
substantiality
of
the
portion
used
in
relation
unfortunately,
Miss
Robles
did
not
cite
her
source.
So
she
is
to
the
copyrighted
work
as
a
whole
reliable
for
copyright
infringement.
The
act
of
copying
must
be
n Discussed
in
Habana
v
Robles
judged
based
on
the
facts
established.
And
as
established,
it
was
found
out
that
she
really
did
not
cite
her
source.
Therefore,
she
is
D.
The
effect
of
the
use
upon
the
potential
market
for
or
value
of
not
covered
under
the
fair
use
doctrine.
the
copyrighted
work.
l Does
the
activity
serve
as
a
barrier
for
the
author
to
explore
How
is
a
Reproduction
Considered
a
Substantial
Reproduction
of
this
potential
market?
If
yes,
then
it
is
an
act
of
infringement.
the
Work
l Is
it
prejudicial
to
the
owner?
If
yes,
then
it
is
infringement
SC:
It
does
not
necessarily
require
that
the
copyrighted
work
be
copied.
If
so
much
is
taken
that
the
value
of
the
original
work
is
Significance
of
the
Four
Factors:
substantially
diminished,
then
there
is
infringement
of
copyright.
Jurisprudence:
It
does
not
require
that
these
4
factors
be
present
And
has
injuries
effect
when
the
work
is
appropriated.
so
as
to
consider
a
work
as
fair
use
or
not.
So
long
as
the
work
does
not
prejudice
the
economic
expectation
of
the
owner,
then
it
“Substantial
portion”
is
fair
use.
u Considered
as
the
heart
of
the
work-‐
the
work
being
popular
because
of
that
portion
A&M
Records
Inc.
vs.
Napster
Inc.
No.
00-‐16401
(U.S.
Court
Copying
alone
is
not
what
is
prohibited.
The
copying
must
Decision)
produce
an
injurious
effect.
Facts
Napster
was
a
web-‐based
company
for
the
purpose
of
providing
a
AQ:
In
the
case,
here
the
injury
happened
when
Robles
lifted
from
platform
for
users
to
exchange
digital
music
with
other
users.
Habana’s
work
the
book
materials
that
were
the
results
of
A&M
saw
the
potential
negative
impact
of
this
service
to
their
Habana’s
laborious
and
extensive
research,
and
misrepresented
sales,
and
thus
filed
copyright
suit
against
Napster.
A&M
alleged
them
as
her
own.
She
circulated
the
book
for
commercial
use
that
Napster
was
a
contributor
to
the
copyright
infringements
without
acknowledging
Habana
as
her
source.
If
you
examine
against
their
company.
Napster’s
defense
was
such
that
in
order
carefully,
it
was
Sec.
184
(e)
that
was
heavily
relied
upon
by
the
for
their
company
to
be
liable
for
contributory
infringement,
their
Supreme
Court
in
coming
up
with
the
decision.
users
had
to
be
directly
infringing
on
A&M’s
copyrights.
Napster
claimed
that
this
was
not
the
case,
but
their
users
were
instead
b.
Fair
Use
of
Copyright
Work-‐
Sec
185,
as
amended
engaging
in
three
types
of
fair
use:
sampling,
space-‐shifting,
and
permissive
distribution.
Napster
also
provided
a
solution
to
the
SEC.
185.
Fair
Use
of
a
Copyrighted
Work.
alleged
infringement
in
the
form
of
a
compulsory
license,
in
which
185.1
Fair
use
of
a
copyrighted
work
for
the
ff
purposes
is
not
an
the
government
would
force
the
copyright
holders
to
grant
use
to
infringement
of
copyright:
Napster
potentially
in
exchange
for
royalties.
The
U.S.
District
1. criticism
Court
ruled
in
favor
of
A&M
and
issued
an
injunction
by
which
2. Comment
Napster
should
further
refrain
from
providing
their
service.
3. news
reporting
The
9th
Circuit
Federal
Court
of
Appeals
found
that
it
was
clear
teaching
including
limited
number
of
copies
for
the
defendants
violated
at
least
one
of
the
copyright
holders’
five
classroom
use,
scholarship,
research,
and
similar
exclusive
rights:
the
right
to
reproduce,
prepare
derivative
work,
purposes
distribute,
perform,
and
display.
The
appellate
court
found
that
“Napster
users
infringe
at
least
two
of
the
copyright
holders’
**
Decompilation-‐
exclusive
rights:
the
rights
of
reproduction,
§
106(1);
and
l the
reproduction
of
the
distribution,
§
106(3).”
The
courts
deduced
that
by
uploading
files
code
and
translation
of
the
forms
of
a
to
the
Napster
search
index,
users
were
violating
the
plaintiff’s
computer
program
to
achieve
the
right
to
reproduction
and
by
downloading
files
containing
interoperability
of
an
independently
created
copyrighted
music
were
violating
their
right
to
distribution.
The
computer
program
with
other
programs
court
decided
that
the
defendants
had
the
ability
to
prevent
l Constitutes
fair
use
as
to
the
extent
that
such
infringement
from
taking
place,
and
thus
has
the
duty
to
do
so.
decompilation
is
done
for
the
purpose
of
Issues
Whether
or
not
Napster
violated
one
of
the
exclusive
copyright
of
A&M?
Whether
or
not
it
constitutes
fair
use?
Held
The
court
also
examined
Napster’s
fair
use
claims
using
the
four
fair
use
factors:
purpose
and
character
of
the
use,
nature
of
the
use,
portion
used,
effect
of
use
on
the
market.
The
court
decided
that
Napster’s
argument
for
sampling
did
not
hold,
because
the
“samples”
were
in
fact
permanent
and
complete
files
on
the
users’
hard
drives.
Also,
Napster’s
space-‐shifting
argument
did
not
hold,
because
the
users
were
not
just
simply
converting
their
media
between
formats
for
storage,
but
were
sharing
the
files
as
well.
No
decision
was
made
on
the
argument
of
permissive
reproduction,
because
the
plaintiffs
did
not
challenge
this
use.
Finally,
the
court
rejected
Napster’s
request
for
a
compulsory
license,
citing
that
such
a
device
would
provide
Napster
with
an
“easy
out”
while
seemingly
punishing
the
copyright
holders.
(Cornell)