UNIVERSITY OF SAN CARLOS

Rommel A. Tio Page 1 of 21 Intellectual Property Law
TABLE OF CONTENTS
I. INTRODUCTION ................................................................... 3
(1) Basis of the Intellectual Property Law (R.A. 8293, as
amended) .................................................................................... 3
(2) Importance of Adopting Laws protecting Intellectual Property
Rights .......................................................................................... 3
(3) Philippine commitment to the GATT-TRIPS agreement .......... 3
Tañada vs. Angara, G.R. No. 118295, May 2, 1997 ...........3
(4) Did RA 8293 repeal existing laws on intellectual property? ... 3
Mirpuri vs. CA..................................................................3
Samson vs. Daway ..........................................................3
(5) Intellectual Property Rights – Trademark, Copyright and
Patents ........................................................................................ 3
(6) Republic Act No. 8293 – Intellectual Property Law................ 4
II. PRELIMINARY MATTERS .................................................. 4
(1) State Policy Declaration......................................................... 4
Twentieth Century Music Corp. vs. Aiken .........................4
Feist Publications, I nc. vs. Rural Television Services
Company.........................................................................4
(2) Effect on International Conventions and on Principle of
Reciprocity................................................................................... 5
Mirpuri vs. CA..................................................................5
(3) Coverage of Intellectual Property Rights ............................... 5
Kho vs. CA, ......................................................................5
Pearl & Dean I nc. vs. Shoemart I nc .................................6
( 4) Functions of I PO........................................................6
(5) The Intellectual Property Office............................................. 6
Pest Management Association of the Philippines vs.
Fertilizer and Pesticide Authority.....................................6
III. LAW ON COPYRIGHT........................................................ 6
(1) Definitions ............................................................................. 6
(2) Protection, when commenced................................................ 7
(3) Idea/Expression Dichotomy................................................... 7
(4) Works Protected .................................................................... 7
(a) Literary or Artistic Works ..................................................7
Columbia Pictures vs. CA, 261 SCRA 144 ( 1996) ..............8
Ching vs. Salinas, G.R. No. 161295, J une 29, 2005 ...........8
(b) Derivative Works...............................................................8
Laktaw vs. Paglinawan, 44 Phil. 855 ( 1918) ....................9
(c) Published Edition of Work..................................................9
(5)Works Not Protected............................................................... 9
(a)Unprotected Subject Matter................................................9
J oaquin, J r. vs. Drilon, 302 SCRA 225 ( 1999) ...................9
(b)Works of Government.........................................................9
(6) Copyright or Economic Rights; Ownership ........................... 10
(a) Copyright or Economic Rights – Sec. 177 ......................... 10
Pearl & Dean I nc., supra................................................ 10
Filipino Society of Composers vs. Tan, 148 SCRA 461
( 1987) .......................................................................... 10
Maglalang Santos vs., McCullough Printing, 12 SCRA 321
( 1964) .......................................................................... 10
(b) Copyright Ownership....................................................... 11
(7) Transfer or Assignment of Copyright.................................... 12
(8) Limitations of Copyright....................................................... 12
(a) Limitations On Copyright................................................. 12
(b) Fair Use of Work ............................................................. 12
A&M Records I nc. vs. Napster I nc. No. 00- 16401 ( U.S.
Court Decision) ............................................................. 13
Habana vs. Robles G.R. No. 131522, J uly 19, 1999......... 13
(c) Work of Architecture ....................................................... 13
(d) Reproduction of Published Work...................................... 13
(e) Reprographic Reproduction by Libraries .......................... 14
(f) Reproduction of Computer Program................................. 14
(g) Importation for Personal Purposes.................................. 14
(9) Registration and Deposit with National Library and Supreme
Court Library.............................................................................. 14
(10) Moral Rights....................................................................... 15
(a) Scope of Moral Rights...................................................... 15
(b) Breach of Contract .......................................................... 15
(c) Waiver of Moral Rights .................................................... 15
(d) Contribution to Collective Work....................................... 15
(e) Term of Moral Rights....................................................... 15
(11) Rights to Proceed in Subsequent Transfers........................ 15
(a) Sale or Lease of Work...................................................... 15
(12) Rights of Performers, Producers of Sound Recordings and
Broadcasting Organizations ....................................................... 15
(a) Definitions ...................................................................... 15
(b) Scope of Performers’ Rights ............................................ 16
(c) Moral Rights of Performers.............................................. 16
(d) Limitation on Performers’ Rights..................................... 16
(e) Additional Remuneration for Subsequent Communications
or Broadcasts........................................................................ 16
(f) Contract Terms ................................................................ 16
(g) Scope of Right on Sound Recordings................................ 16
(h) Communication to the Public on Sound Recordings.......... 17
(i) Scope of Right of Broadcasting Organizations................... 17
(j) Limitations on Rights ....................................................... 17
ABS- CBN vs. Phil. Multi- Media System I nc. .................... 17
(13) Term of Protection in General ............................................ 17
(a) Term of Protection .......................................................... 17
(i) Joint Authorship........................................................... 18
(ii) Anonymous or Pseudonymous Works .......................... 18
(iii) Works of Applied Art .................................................. 18
(iv) Photographic Works ................................................... 18
(v)Audio-visual Works ...................................................... 18
(vi) Calculation of Terms................................................... 18
(b) Term of Protection for Performers, Producers and
Broadcasting Organizations .................................................. 18
(14) Infringement...................................................................... 18
(a) How committed............................................................... 18
Microsoft Corp. vs. Hwang ............................................. 18
Microsoft Corp. vs. Maxicorp I nc.................................... 19
(b) Remedies for Infringement ............................................. 19
Habana vs. Robles ......................................................... 19
Columbia Pictures I nc. vs. CA, supra.............................. 19
(c) Criminal Penalties ........................................................... 19
(d) Affidavit Evidence ........................................................... 20
(e) Presumption of Authorship.............................................. 20
Bayanihan Music Phils., I nc. vs. BMG Records ................ 20
(f) International Registration of Works ................................. 21
(15) Points of Attachment of Rights........................................... 21

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(a)For Literary and Artistic Works and Derivative Works ....... 21
Pearl & Dean I nc. vs. Shoemart I nc. .............................. 21
(b) For Performers................................................................ 21
(c) Of Sound Recordings ....................................................... 21
(d) For Broadcast.................................................................. 21

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I. INTRODUCTION

(1) Basis of the Intellectual Property Law (R.A. 8293, as
amended)

Section 2. Declaration of State Policy. - The State recognizes that an
effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for
our products. It shall protect and secure the exclusive rights of scientists,
inventors, artists and other gifted citizens to their intellectual property
and creations, particularly when beneficial to the people, for such periods
as provided in this Act.

It is also the policy of the State to streamline administrative procedures
of registering patents, trademarks and copyright, to liberalize the
registration on the transfer of technology, and to enhance the
enforcement of intellectual property rights in the Philippines. (n)

(2) Importance of Adopting Laws protecting Intellectual Property
Rights

The use of intellectual property bears a social function. To this end, the
State shall promote the diffusion of knowledge and information for the
promotion of national development and progress and the common good.

(3) Philippine commitment to the GATT-TRIPS agreement

Section 3. International Conventions and Reciprocity. - Any person who is
a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of
unfair competition, to which the Philippines is also a party, or extends
reciprocal rights to nationals of the Philippines by law, shall be entitled to
benefits to the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise entitled by this Act.
(n)

General Agreement on Tariffs and Trade (GATT) was a collection of
treaties governing access to the economies of treaty adherents with no
institutionalized body administering the agreements or dependable
system of dispute settlement. (Tanada vs. Angara)

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

The Philippines joined WTO as a founding member with the
goal, as articulated by President Fidel V. Ramos in two letters to the
Senate of improving "Philippine access to foreign markets, especially its
major trading partners, through the reduction of tariffs on its exports,
particularly agricultural and industrial products." The President also saw
in the WTO the opening of "new opportunities for the services sector . . .
, (the reduction of) costs and uncertainty associated with exporting . . . ,
and (the attraction of) more investments into the country." Although the
Chief Executive did not expressly mention it in his letter, the Philippines
— and this is of special interest to the legal profession — will benefit from
the WTO system of dispute settlement by judicial adjudication through
the independent WTO settlement bodies called (1) Dispute Settlement
Panels and (2) Appellate Tribunal. Heretofore, trade disputes were settled
mainly through negotiations where solutions were arrived at frequently
on the basis of relative bargaining strengths, and where naturally, weak
and underdeveloped countries were at a disadvantage.

(4) Did RA 8293 repeal existing laws on intellectual property?

NO. Republic Act 8293 Section 239.1 All Acts and parts of Acts
inconsistent herewith, more particularly Republic Act No. 165, as
amended; Republic Act No. 166, as amended; and Articles 188 and 189
of the Revised Penal Code; Presidential Decree No. 49, including
Presidential Decree No. 285, as amended, are hereby repealed.

Thus, only inconsistent provisions or parts of RA 165, RA 166, PD 49 and
PD 285 were repealed.

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

Facts:
Issues:
Held:

Samson vs. Daway
G.R. Nos. 160054-55, July 21, 2004

Facts:
Samson, owner/proprietor of ITTI Shoes/Mano Shoes
Manufactuirng Corporation located at Robinson’s Galleria, EDSA corner
Ortigas Avenue, Quezon City, did then and there willfully, unlawfully and
feloniously distribute, sell and/or offer for sale CATERPILLAR products
such as footwear, garments, clothing, bags, accessories and
paraphernalia which are closely identical to and/or colorable imitations of
the authentic Caterpillar products and likewise using trademarks,
symbols and/or designs as would cause confusion, mistake or deception
on the part of the buying public to the damage and prejudice of
CATERPILLAR, INC., the prior adopter, user and owner of the following
internationally: “CATERPILLAR”, “CAT”, “CATERPILLAR & DESIGN”, “CAT
AND DESIGN”, “WALKING MACHINES” and “TRACK-TYPE TRACTOR &
DESIGN.”
Caterpillar Inc. sued Samson for unfair competition in RTC.
Samson filed a motion to for the quashal of information for lack of
jurisdiction. Samson contended that since under Section 170 of R.A. No.
8293, the penalty of imprisonment for unfair competition does not
exceed six years, the offense is cognizable by the Municipal Trial Courts
and not by the Regional Trial Court, per R.A. No. 7691.

xxx
Under Section 170 of R.A. No. 8293, which took effect on January 1,
1998, the criminal penalty for infringement of registered marks, unfair
competition, false designation of origin and false description or
representation, is imprisonment from 2 to 5 years and a fine ranging
from Fifty Thousand Pesos to Two Hundred Thousand Pesos. (jurisdiction
of Municipal Trial Courts)

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

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

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

SEC. 239. Repeals. – 239.1. All Acts and parts of Acts inconsistent
herewith, more particularly Republic Act No. 165, as amended; Republic
Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal
Code; Presidential Decree No. 49, including Presidential Decree No. 285,
as amended, are hereby repealed.

Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in
its entirety, otherwise, it would not have used the phrases “parts of Acts”
and “inconsistent herewith;” and it would have simply stated “Republic
Act No. 165, as amended; Republic Act No. 166, as amended; and
Articles 188 and 189 of the Revised Penal Code; Presidential Decree No.
49, including Presidential Decree No. 285, as amended are hereby
repealed.” It would have removed all doubts that said specific laws had
been rendered without force and effect. The use of the phrases “parts of
Acts” and “inconsistent herewith” only means that the repeal pertains
only to provisions which are repugnant or not susceptible of
harmonization with R.A. No. 8293.7 Section 27 of R.A. No. 166, however,
is consistent and in harmony with Section 163 of R.A. No. 8293. Had
R.A. No. 8293 intended to vest jurisdiction over violations of intellectual
property rights with the Metropolitan Trial Courts, it would have
expressly stated so under Section 163 thereof.

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

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Section 4. Definitions. - 4.1. The term "intellectual property rights"
consists of:

a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information (n, TRIPS).

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

II. PRELIMINARY MATTERS

(1) State Policy Declaration
Sec. 2

Section 2. Declaration of State Policy. - The State recognizes that an
effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for
our products. It shall protect and secure the exclusive rights of scientists,
inventors, artists and other gifted citizens to their intellectual property
and creations, particularly when beneficial to the people, for such periods
as provided in this Act.

The use of intellectual property bears a social function. To this end, the
State shall promote the diffusion of knowledge and information for the
promotion of national development and progress and the common good.

It is also the policy of the State to streamline administrative procedures
of registering patents, trademarks and copyright, to liberalize the
registration on the transfer of technology, and to enhance the
enforcement of intellectual property rights in the Philippines. (n)

Twentieth Century Music Corp. vs. Aiken
422 U.S. 151

Facts

20
Th
Century Music Corporation copyrighted songs were
received on the radio in Aiken’s food shop from a local broadcasting
station, which was licensed by the American Society of Composers,
Authors and Publishers to perform the songs, but Aiken had no such
license. 20
th
Century Music then sued Aikenfor copyright infringement.
The District Court granted awards, but the Court of Appeals reversed.

Issue
Whether the reception of a radio broadcast of a copyrighted
musical composition can constitute copyright infringement when the
copyright owner has licensed the broadcaster to perform the composition
publicly for profit?

Held
Aiken did not infringe upon 20
th
Century exclusive right, under
the Copyright Act, "[t]o perform the copyrighted work publicly for profit,"
since the radio reception did not constitute a "performance" of the
copyrighted songs.
To hold that Aiken "performed" the copyrighted works would
obviously result in a wholly unenforceable regime of copyright law, and
would also be highly inequitable, since (short of keeping his radio turned
off) one in Aiken's position would be unable to protect himself from
infringement liability. Such a ruling, moreover, would authorize the sale
of an untold number of licenses for what is basically a single rendition of
a copyrighted work, thus conflicting with the balanced purpose of the
Copyright Act of assuring the composer an adequate return for the value
of his composition while, at the same time, protecting the public from
oppressive monopolies.
The limited scope of the copyright holder's statutory monopoly,
like the limited copyright duration required by the Constitution, reflects a
balance of competing claims upon the public interest: creative work is to
be encouraged and rewarded, but private motivation must ultimately
serve the cause of promoting broad public availability of literature,
music, and the other arts. The immediate effect of our copyright law is to
secure a fair return for an "author's" creative labor. But the ultimate aim
is, by this incentive, to stimulate artistic creativity for the general public
good. "The sole interest of the United States and the primary object in
conferring the monopoly," this Court has said, "lie in the general benefits
derived by the public from the labors of authors." When technological
change has rendered its literal terms ambiguous, the Copyright Act must
be construed in light of this basic purpose.

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

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

Issues:
Whether or not Telephone directories are copyrightable or not?
Held:
The court rule that facts are not copyrightable; the other, that
compilations of facts generally are. There can be no valid copyright in
facts is universally understood. The most fundamental axiom of copyright
law is that "no author may copyright his ideas or the facts he narrates."
Rural wisely concedes this point, noting in its brief that "facts and
discoveries, of course, are not themselves subject to copyright

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protection." However, it is beyond dispute that compilations of facts are
within the subject matter of copyright. Compilations were expressly
mentioned in the Copyright Act of 1909, and again in the Copyright Act
of 1976.

Notes

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

Facts are not copyrightable. The sine qua non of copyright is originality.
To qualify for copyright protection, a work must be original to the author.
See Harper Original, as the term is used in copyright, means only that
the work was independently created by the author (as opposed to copied
from other works), and that it possesses at least some minimal degree of
creativity. To be sure, the requisite level of creativity is extremely low;
even a slight amount will suffice. The vast majority of works make the
grade quite easily, as they possess some creative spark, "no matter how
crude, humble or obvious" it might be.

Why facts are not copyrightable?
No one may claim originality as to facts. This is because facts do not owe
their origin to an act of authorship. The distinction is one between
creation and discovery: the first person to find and report a particular
fact has not created the fact; he or she has merely discovered its
existence. One who discovers a fact is not its "maker" or "originator." The
discoverer merely finds and records.

Illustrative Example
Census-takers do not "create" the population figures that emerge from
their efforts; in a sense, they copy these figures from the world around
them. Census data therefore do not trigger copyright because these data
are not "original" in the constitutional sense. The same is true of all facts
-- scientific, historical, biographical, and news of the day. "They may not
be copyrighted and are part of the public domain available to every
person."

Factual compilations, on the other hand, may possess the requisite
originality. The compilation author typically chooses which facts to
include, in what order to place them, and how to arrange the collected
data so that they may be used effectively by readers. These choices as to
selection and arrangement, so long as they are made independently by
the compiler and entail a minimal degree of creativity, are sufficiently
original that Congress may protect such compilations through the
copyright laws. Thus, even a directory that contains absolutely no
protectible written expression, only facts, meets the constitutional
minimum for copyright protection if it features an original selection or
arrangement.

Originality does not signify novelty; a work may be original even though
it closely resembles other works so long as the similarity is fortuitous, not
the result of copying. To illustrate, assume that two poets, each ignorant
of the other, compose identical poems. Neither work is novel, yet both
are original and, hence, copyrightable.

Originality requires independent creation plus a modicum of creativity:
"While the word writings may be liberally construed, as it has been, to
include original designs for engraving, prints, &c., it is only such as are
original, and are founded in the creative powers of the mind. The writings
which are to be protected are the fruits of intellectual labor, embodied in
the form of books, prints, engravings, and the like."

Author - in a constitutional sense is to mean "he to whom anything owes
its origin; originator; maker”.

(2) Effect on International Conventions and on Principle of
Reciprocity
Sec. 3 & 231

Section 3. International Conventions and Reciprocity. - Any person who is
a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of
unfair competition, to which the Philippines is also a party, or extends
reciprocal rights to nationals of the Philippines by law, shall be entitled to
benefits to the extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise entitled by this Act.
(n)

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

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

Facts
Issues
Held

(3) Coverage of Intellectual Property Rights
Sec. 4.1

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

Kho vs. CA,
G.R. No. 115758, March 19, 2002

Facts
Kho is doing business under the name and style of
KEC Cosmetics Laboratory, the registered owner of the copyrights Chin
Chun Su and Oval Facial Cream Container/Case, that she also has patent
rights on Chin Chun Su & Device and Chin Chun Su for medicated cream
after purchasing the same from Quintin Cheng, the registered owner
thereof in the Supplemental Register of the Philippine Patent Office.
Summerville advertised and sold Kho’s cream products under
the brand name Chin Chun Su, in similar containers that Kho uses,
thereby misleading the public, and resulting in the decline in the Kho’s
business sales and income; and, that the Summerville should be enjoined
from allegedly infringing on the copyrights and patents of the Kho.
Summerville on the other hand, alleged as their defense that
they are the exclusive and authorized importer, re-packer and distributor
of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan;
that the said Taiwanese manufacturing company authorized Summerville
to register its trade name Chin Chun Su Medicated Cream with the
Philippine Patent Office and other appropriate governmental agencies;
that KEC Cosmetics Laboratory of the of Kho obtained the copyrights
through misrepresentation and falsification; and, that the authority of
Quintin Cheng, assignee of the patent registration certificate, to
distribute and market Chin Chun Su products in the Philippines had
already been terminated by the said Taiwanese Manufacturing Company.
On December 20, 1991, Elidad C. Kho filed a complaint for
injunction and damages with a prayer for the issuance of a writ of
preliminary injunction, against the Summerville General Merchandising
and Company (Summerville, for brevity) and Ang Tiam Chay.

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

Held
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. A
trademark is any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include
a stamped or marked container of goods. In relation thereto, a trade
name means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of a copyright is confined to literary and

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Rommel A. Tio Page 6 of 21 Intellectual Property Law
artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a
problem in any field of human activity which is new, involves an inventive
step and is industrially applicable.
Kho has no right to support her claim for the exclusive use of
the subject trade name and its container. The name and container of a
beauty cream product are proper subjects of a trademark inasmuch as
the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the
user must sufficiently prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent registration of the name
and container would not guarantee her right to the exclusive use of the
same for the reason that they are not appropriate subjects of the said
intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a
clear right over the said name and container to the exclusion of others,
not having proven that she has registered a trademark thereto or used
the same before anyone did.

Pearl & Dean Inc. vs. Shoemart Inc
G.R. No. 148222, August 15, 2003

Facts
Issues
Held

(4) Functions of IPO
Sec. 5

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

a) Examine applications for grant of letters patent for inventions and
register utility models and industrial designs;

b) Examine applications for the registration of marks, geographic
indication, integrated circuits;

c) Register technology transfer arrangements and settle disputes
involving technology transfer payments covered by the provisions of Part
II, Chapter IX on Voluntary Licensing and develop and implement
strategies to promote and facilitate technology transfer;

d) Promote the use of patent information as a tool for technology
development;

e) Publish regularly in its own publication the patents, marks, utility
models and industrial designs, issued and approved, and the technology
transfer arrangements registered;

f) Administratively adjudicate contested proceedings affecting intellectual
property rights; and

g) Coordinate with other government agencies and the private sector
efforts to formulate and implement plans and policies to strengthen the
protection of intellectual property rights in the country.

5.2. The Office shall have custody of all records, books, drawings,
specifications, documents, and other papers and things relating to
intellectual property rights applications filed with the Office. (n)

(5) The Intellectual Property Office
Sec. 6.2

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

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

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

Facts
The case commenced upon PMAP’s filing of a Petition For
Declaratory Relief With Prayer For Issuance Of A Writ Of Preliminary
Injunction And/Or Temporary Restraining Order with the RTC on January
4, 2002. Petitioner, a non-stock corporation duly organized and existing
under the laws of the Philippines, is an association of pesticide handlers
duly licensed by respondent Fertilizer and Pesticide Authority (FPA). It
questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory
Policies and Implementing Guidelines, which provides thus:

3.12 Protection of Proprietary Data

Data submitted to support the first full or conditional registration of a
pesticide active ingredient in the Philippines will be granted proprietary
protection for a period of seven years from the date of such registration.
During this period subsequent registrants may rely on these data only
with third party authorization or otherwise must submit their own data.
After this period, all data may be freely cited in support of registration by
any applicant, provided convincing proof is submitted that the product
being registered is identical or substantially similar to any current
registered pesticide, or differs only in ways that would not significantly
increase the risk of unreasonable adverse effects.

Issues
Whether or not FPA encroach upon the jurisdiction of the
Intellectual Property Office?

Held
There is no encroachment upon the powers of the IPO granted
under R.A. No. 8293, otherwise known as the Intellectual Property Code
of the Philippines. Section 5 thereof enumerates the functions of the IPO.
Nowhere in said provision does it state nor can it be inferred that the law
intended the IPO to have the exclusive authority to protect or promote
intellectual property rights in the Philippines. On the contrary, paragraph
(g) of said Section even provides that the IPO shall "[c]oordinate with
other government agencies and the private sector efforts to formulate
and implement plans and policies to strengthen the protection of
intellectual property rights in the country." Clearly, R.A. No. 8293
recognizes that efforts to fully protect intellectual property rights cannot
be undertaken by the IPO alone. Other agencies dealing with intellectual
property rights are, therefore, not precluded from issuing policies,
guidelines and regulations to give protection to such rights.

Lastly, FPA emphasize that the provision on protection of
proprietary data does not usurp the functions of the Intellectual Property
Office (IPO) since a patent and data protection are two different matters.
A patent prohibits all unlicensed making, using and selling of a particular
product, while data protection accorded by the FPA merely prevents
copying or unauthorized use of an applicant's data, but any other party
may independently generate and use his own data. It is further argued
that under Republic Act No. 8293 (R.A. No. 8293), the grant of power to
the IPO to administer and implement State policies on intellectual
property is not exclusionary as the IPO is even allowed to coordinate with
other government agencies to formulate and implement plans and
policies to strengthen the protection of intellectual property rights.

III. LAW ON COPYRIGHT

(1) Definitions
Sec. 171 – 171.10

Section 171. Definitions. - For the purpose of this Act, the following
terms have the following meaning:

171.1. "Author" is the natural person who has created the work;

171.2. A "collective work" is a work which has been created by two (2) or
more natural persons at the initiative and under the direction of another
with the understanding that it will be disclosed by the latter under his
own name and that contributing natural persons will not be identified;


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

171.4. A "computer" is an electronic or similar device having information-
processing capabilities, and a "computer program" is a set of instructions
expressed in words, codes, schemes or in any other form, which is
capable when incorporated in a medium that the computer can read, of
causing the computer to perform or achieve a particular task or result;

171.5. "Public lending" is the transfer of possession of the original or a
copy of a work or sound recording for a limited period, for non-profit
purposes, by an institution the services of which are available to the
public, such as public library or archive;

171.6. "Public performance", in the case of a work other than an
audiovisual work, is the recitation, playing, dancing, acting or otherwise
performing the work, either directly or by means of any device or
process; in the case of an audiovisual work, the showing of its images in
sequence and the making of the sounds accompanying it audible; and, in
the case of a sound recording, making the recorded sounds audible at a
place or at places where persons outside the normal circle of a family and
that family's closest social acquaintances are or can be present,
irrespective of whether they are or can be present at the same place and
at the same time, or at different places and/or at different times, and
where the performance can be perceived without the need for
communication within the meaning of Subsection 171.3;

171.7. "Published works" means works, which, with the consent of the
authors, are made available to the public by wire or wireless means in
such a way that members of the public may access these works from a
place and time individually chosen by them: Provided, That availability of
such copies has been such, as to satisfy the reasonable requirements of
the public, having regard to the nature of the work;

171.8. "Rental" is the transfer of the possession of the original or a copy
of a work or a sound recording for a limited period of time, for profit-
making purposes;

171.9. "Reproduction" is the making of one (1) or more copies of a work
or a sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a);

171.10. A "work of applied art" is an artistic creation with utilitarian
functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale;

171.11. A "work of the Government of the Philippines" is a work created
by an officer or employee of the Philippine Government or any of its
subdivisions and instrumentalities, including government-owned or
controlled corporations as a part of his regularly prescribed official duties.

(2) Protection, when commenced
Sec. 172.2

Section 172.2. Works are protected by the sole fact of their creation,
irrespective of their mode or form of expression, as well as of their
content, quality and purpose. (Sec. 2, P.D. No. 49a).

(3) Idea/Expression Dichotomy
Sec. 175

Section 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall extend, under
this law, to any idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof (n)

Note: Ideas are the building blocks of creative expression. They will differ
with the particular subject matter involved.

(4) Works Protected

(a) Literary or Artistic Works
Sec. 172- 172.2

Section 172. Literary and Artistic Works. - 172.1. Literary and artistic
works, hereinafter referred to as "works", are original intellectual
creations in the literary and artistic domain protected from the moment
of their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material form;
(d) Letters;

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

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

Note: Laban notation – transcription of choreographic notes

(f) Musical compositions, with or without words;

Note: With or Without words – because there two separate rights for the
composition and lyrics.

(g) Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art;

Note: Furnitures have functional purpose. Ching Case:

(h) Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous
to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by
a process analogous to cinematography or any process for making audio-
visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and

Note: Computer program are copyrightable in this jurisdiction but not
patentable.

(o) Other literary, scholarly, scientific and artistic works.
172.2. Works are protected by the sole fact of their creation, irrespective
of their mode or form of expression, as well as of their content, quality
and purpose. (Sec. 2, P.D. No. 49a)

Notes

When work is created?
A work is created when two requirements are Originality and some form
of expression.
The work must have their origin in the labor of the author.

Original as the term is used in copyright means only that the work was
independently created by the author (as opposed to copied from the
other works) and that it possess at least some minimal degree of
creativity. The distinction is one between creation and discovery: the fist
to person to find a particular fact has not created the fact: he or she ha
merely discovered its existence.

However, it is not necessary, to qualify for copyright protection, that
works should pass a test of imaginativeness.

The right to obtain a copyright on a book depends on originality of the
author’s work and not upon any standard of merit.

2nd Requirement: Expression

In order for a work to be entitled protection, there must at least be some
verifiable expression of the intellectual product.

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Idea is not protected, only the expression.
There is creation when an idea is expressed in some tangible medium.

Columbia Pictures vs. CA, 261 SCRA 144 (1996)

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

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

Held
As correctly pointed out by private complainants-oppositors,
the Department of Justice has resolved this legal question as far back as
December 12, 1978 in its Opinion No. 191 of the then Secretary of
Justice Vicente Abad Santos which stated that Sections 26 and 50 do not
apply to cinematographic works and PD No. 49 “had done away with the
registration and deposit of cinematographic works” and that “even
without prior registration and deposit of a work which may be entitled to
protection under the Decree, the creator can file action for infringement
of its rights.” He cannot demand, however, payment of damages arising
from infringement. The same opinion stressed that “the requirements of
registration and deposit are thus retained under the Decree, not as
conditions for the acquisition of copyright and other rights, but as
prerequisites to a suit for damages.” The statutory interpretation of the
Executive Branch being correct, is entitled (to) weight and respect.
Furthermore, a closer review of Presidential Decree No. 49
reveals that even with respect to works which are required under Section
26 thereof to be registered and with copies to be deposited with the
National Library, such as books, including composite and cyclopedic
works, manuscripts, directories and gazetteers; and periodicals, including
pamphlets and newspapers; lectures, sermons, addresses, dissertations
prepared for oral delivery; and letters, the failure to comply with said
requirements does not deprive the copyright owner of the right to sue for
infringement. Such non-compliance merely limits the remedies available
to him and subjects him to the corresponding sanction.
The reason for this is expressed in Section 2 of the decree
which prefaces its enumeration of copyrightable works with the explicit
statement that “the rights granted under this Decree shall, from the
moment of creation, subsist with respect to any of the following classes
of works.” This means that under the present state of the law, the
copyright for a work is acquired by an intellectual creator from the
moment of creation even in the absence of registration and deposit. As
has been authoritatively clarified:
The registration and deposit of two complete copies or
reproductions of the work with the National Library within three weeks
after the first public dissemination or performance of the work, as
provided for in Section 26 (P.D. No. 49, as amended), is not for the
purpose of securing a copyright of the work, but rather to avoid the
penalty for non-compliance of the deposit of said two copies and in order
to recover damages in an infringement suit.

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

Facts
Jessie G. Ching is the owner and general manager of Jeshicris
Manufacturing Co., the maker and manufacturer of a Utility Model,
described as “Leaf Spring Eye Bushing for Automobile” made up of
plastic.
On September 4, 2001, Ching and Joseph Yu were issued by
the National Library Certificates of Copyright Registration and Deposit of
the said work described therein as “Leaf Spring Eye Bushing for
Automobile.”
On September 20, 2001, Ching requested the National Bureau
of Investigation (NBI) for police/investigative assistance for the
apprehension and prosecution of illegal manufacturers, producers and/or
distributors of the works.
After due investigation, the NBI filed applications for search
warrants in the RTC of Manila against William Salinas, Sr. and the officers
and members of the Board of Directors of Wilaware Product Corporation.
It was alleged that the respondents therein reproduced and distributed
the said models penalized under Sections 177.1 and 177.3 of Republic
Act (R.A.) No. 8293.

Issues

Whether or not the subject matter is covered by the Copyright
of the Intellectual Property Code?
Held
It is worthy to state that the works protected under the Law on
Copyright are: literary or artistic works (Sec. 172) and derivative works
(Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion
fall on neither classification.
Being plain automotive spare parts that must conform to the
original structural design of the components they seek to replace, the
Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not
ornamental. They lack the decorative quality or value that must
characterize authentic works of applied art. They are not even artistic
creations with incidental utilitarian functions or works incorporated in a
useful article. In actuality, the personal properties described in the
search warrants are mechanical works, the principal function of which is
utility sans any aesthetic embellishment.
Neither are we to regard the Leaf Spring Eye Bushing and
Vehicle Bearing Cushion as included in the catch-all phrase “other
literary, scholarly, scientific and artistic works” in Section 172.1(a) of
R.A. No. 8293. Applying the principle of ejusdem generis which states
that “where a statute describes things of a particular class or kind
accompanied by words of a generic character, the generic word will
usually be limited to things of a similar nature with those particularly
enumerated, unless there be something in the context of the state which
would repel such inference,”[46] the Leaf Spring Eye Bushing and Vehicle
Bearing Cushion are not copyrightable, being not of the same kind and
nature as the works enumerated in Section 172 of R.A. No. 8293.

(b) Derivative Works
Sec. 173

Section 173. Derivative Works. - 173.1. The following derivative works
shall also be protected by copyright:

(a) Dramatizations, translations, adaptations, abridgments,
arrangements, and other alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of
data and other materials which are original by reason of the selection or
coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P.D.
No. 49)

173.2. The works referred to in paragraphs (a) and (b) of Subsection
173.1 shall be protected as new works: Provided however, That such new
work shall not affect the force of any subsisting copyright upon the
original works employed or any part thereof, or be construed to imply
any right to such use of the original works, or to secure or extend
copyright in such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)


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Note: Derivative works are original work.
There must be compliance of the requirements:
1. must borrow the original and expressive content
2. the work must alter not merely copy. / must have substantial variation

Article 5 of civil code.
No right can spring from an unlawful act.

Laktaw vs. Paglinawan, 44 Phil. 855 (1918)

Facts
Laktaw is the registered owner and author of a literary work
entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary)
published in the City of Manila in 1889 by the printing establishment La
Opinion.
Paglinawan without the consent of Laktaw, reproduced said
literary work, improperly copied the greater part thereof in the work
published by him and entitled Diccionariong Kastila-Tagalog (Spanish-
Tagalog Dictionary).
The act of Pagliwanan is a violation of article 7 of the Law of
January 10, 1879, on Intellectual Property, caused irreparable injuries to
Laktaw who was surprised when, on publishing his new work entitled
Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of
the fact, and (4) that the damages occasioned to him by the publication
of Paglinawan's work amounted to $10,000. Laktaw prayed the court to
order the Paglinawan to withdraw from sale all stock of the work of
Paglinawan to pay him the sum of $10,000, with costs.
Paglinawan in his answer denied generally each and every
allegation of the complaint and prayed the court to absolve him from the
complaint.

Law
Article 7 of the Law of January 10, 1879, on Intellectual Property:
Nobody may reproduce another person's work without the owner's
consent, even merely to annotate or add anything to it, or improve any
edition thereof.

Issue
Whether or not Paglinawan violated Article 7 of the Intellectual
Property Law (1879)?
Held
Yes, Paglinawan violated Article 7 of Intellectual Property Law.
It is not necessary that a work should be an improper copy of
another work previously published. It is enough that another's work has
been reproduced without the consent of the owner, even though it be
only to annotate, add something to it, or improve any edition thereof.

(c) Published Edition of Work
Sec. 174

Section 174. Published Edition of Work. - In addition to the right to
publish granted by the author, his heirs, or assigns, the publisher shall
have a copyright consisting merely of the right of reproduction of the
typographical arrangement of the published edition of the work. (n)

Note: Separate right of the publisher exclusively on typographical
arrangement.

(5)Works Not Protected
Sec. 175

(a)Unprotected Subject Matter
Sec. 175

Section 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall extend, under
this law, to any idea, procedure, system, method or operation, concept,
principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof (n)

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

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

Issue
Whether the format or mechanics of Joaquin’s television show
is entitled to copyright protection?
Held
No, the format or mechanics of a television show is not
included in the list of protected works in §2 of P.D. No. 49. For this
reason, the protection afforded by the law cannot be extended to cover
them.
The essence of copyright infringement is the copying, in whole
or in part, of copyrightable materials as defined and enumerated in
Section 2 of PD. No. 49. Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is, in the opinion of
this Office, a non-copyrightable material. Ideas, concepts, formats, or
schemes in their abstract form clearly do not fall within the class of works
or materials susceptible of copyright registration as provided in PD. No.
49.
Copyright, in the strict sense of the term, is purely a statutory
right. It is a new or independent right granted by the statute, and not
simply a pre-existing right regulated by the statute. Being a statutory
grant, the rights are only such as the statute confers, and may be
obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute.
P.D. No. 49, §2, in enumerating what are subject to copyright,
refers to finished works and not to concepts. The copyright does not
extend to an idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work.

What then is the subject matter of petitioners’ copyright?
TheCourt is of the opinion that petitioner BJPI’s copyright covers audio-
visual recordings of each episode of Rhoda and Me, as falling within the
class of works mentioned in P.D. 49, §2(M), to wit:

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

Law

Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions
of Sections 172 and 173, no protection shall extend, under this law, to
any idea, procedure, system, method or operation, concept, principle,
discovery or mere data as such, even if they are expressed, explained,
illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof.

(b)Works of Government
Sec. 176; 171.11


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

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

176.3. Notwithstanding the foregoing provisions, the Government is not
precluded from receiving and holding copyrights transferred to it by
assignment, bequest or otherwise; nor shall publication or republication
by the Government in a public document of any work in which copyright
is subsisting be taken to cause any abridgment or annulment of the
copyright or to authorize any use or appropriation of such work without
the consent of the copyright owner. (Sec. 9, third par., P.D. No. 49)

171.11. A "work of the Government of the Philippines" is a work created
by an officer or employee of the Philippine Government or any of its
subdivisions and instrumentalities, including government-owned or
controlled corporations as a part of his regularly prescribed official duties.

(6) Copyright or Economic Rights; Ownership

(a) Copyright or Economic Rights – Sec. 177

Note: Copyright - economic right / moral rights - “right to paternity”.

Section 177. Copyright or Economic Rights. - Subject to the provisions of
Chapter VIII, copyright or economic rights shall consist of the exclusive
right to carry out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement
or other transformation of the work;
177.3. The first public distribution of the original and each copy of the
work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the
original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work. (Sec. 5, P. D. No.
49a)

Statutory Right – the right is limited to what the statute confers.

Pearl & Dean Inc., supra

Facts
Issues
Law
Held

Filipino Society of Composers vs. Tan, 148 SCRA 461 (1987)

Facts
Filipino Society of Composers, Authors and Publishers Inc. is
organization under the Corporation Law of the Philippines and registered
with the Securities and Exchange Commission. The association is the
owner of certain musical compositions among which are the songs
entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay
Tao Lamang" and "The Nearness Of You."

Benjamin Tan on the other hand is the operator of a restaurant
known as "Alex Soda Foundation and Restaurant" where a combo with
professional singers, hired to play and sing musical compositions to
entertain and amuse customers therein, were playing and singing the
above-mentioned compositions without any license or permission from
the appellant to play or sing the same. Accordingly, appellant demanded
from the appellee payment of the necessary license fee for the playing
and singing of aforesaid compositions but the demand was ignored.

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

Issues

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

2. Assuming that there were indeed public performances for profit,
whether or not Benjamin Tan can be held liable therefore.

Held

1st issue:
Yes.
The playing of music in dine and dance establishment which
was paid for by the public in purchases of food and drink constituted
"performance for profit" within a Copyright Law (Buck, et al. v. Russon
No. 4489 25 F. Supp. 317).


2nd issue:
The Supreme Court has ruled that "Paragraph 33 of Patent
Office Administrative Order No. 3 (as amended, dated September 18,
1947) entitled 'Rules of Practice in the Philippines Patent Office relating
to the Registration of Copyright Claims' promulgated pursuant to
Republic Act 165, provides among other things that an intellectual
creation should be copyrighted thirty (30) days after its publication, if
made in Manila, or within the (60) days if made elsewhere, failure of
which renders such creation public property." (Santos v. McCullough
Printing Company, 12 SCRA 324-325 [1964]. Indeed, if the general
public has made use of the object sought to be copyrighted for thirty
(30) days prior to the copyright application the law deems the object to
have been donated to the public domain and the same can no longer be
copyrighted.

A careful study of the records reveals that the song "Dahil Sa Iyo" which
was registered on April 20, 1956 (Brief for Appellant, p. 10) became
popular in radios, juke boxes, etc. long before registration (TSN, May 28,
1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on
January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty
five (25) years prior to 1968, (the year of the hearing) or from 1943
(TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and
"Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966,
appear to have been known and sang by the witnesses as early as 1965
or three years before the hearing in 1968. The testimonies of the
witnesses at the hearing of this case on this subject were unrebutted by
the appellant. (Ibid, pp. 28; 29 and 30).

Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)

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

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unauthorized act of defendant, plaintiff suffered moral damages to the
tune of P16,000.00, because it has placed plaintiff's professional integrity
and ethics under serious question and caused him grave embarrassment
before Ambassador Neri. He further prayed for the additional sum of
P3,000.00 by way of attorney's fee.

Issues

(1) Whether plaintiff is entitled to protection, notwithstanding the, fact
that he has not copyrighted his design?
(2) Whether the publication is limited, so as to prohibit its use by others,
or it is general publication?
(3) Whether the provisions of the Civil Code or the Copyright Law should
apply in the case?

Law

Art. 721. By intellectual creation, the following persons acquire
ownership:
(1) The author with regard to his literary, dramatic, historical, legal,
philosophical, scientific or other work;
(2) The composer; as to his musical composition;

(3) The painter, sculptor, or other artist, with respect to the product of
his art;

(4) The scientist or technologist or any other person with regard to his
discovery or invention. (n)

Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the
preceding article, shall have the ownership of their creations even before
the publication of the same. Once their works are published, their rights
are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product
of his art even before it is copyrighted.

The scientist or technologist has the ownership of his discovery or
invention even before it is patented. (n)

Held

1st issue:
The Supreme Court found that plaintiff is not entitled to a
protection, the provision of the Civil Code, notwithstanding. Paragraph 33
of Patent Office Administrative Order No. 3 (as amended dated
September 18, 1947) entitled "Rules of Practice in the Philippines Patent
Office relating to the Registration of Copyright Claims" promulgated
pursuant to Republic Act 165, provides, among others, that an
intellectual creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within sixty (60) day's if made
elsewhere, failure of which renders such creation public property. In the
case at bar, even as of this moment, there is no copyright for the design
in question.

2nd issue:
We are not also prepared to accept the contention of appellant
that the publication of the design was a limited one, or that there was an
understanding that only Ambassador Neri should, have absolute right to
use the same. In the first place, if such were the condition then
Ambassador Neri would be the aggrieved party, and not the appellant. In
the second place, if there was such a limited publication or prohibition,
the same was not shown on the face of the design. When the purpose is
a limited publication, but the effect is general publication, irrevocable
rights thereupon become vested in the public, in consequence of which
enforcement of the restriction becomes impossible (Nutt vs. National
Institute, 31 F [2d] 236). It has been held that the effect of offering for
sale a dress, for example manufactured in accordance with an original
design which is not protected by either a copyright or a patent, is to
divest the owner of his common law rights therein by virtue of the
publication of a 'copy' and thereafter anyone is free to copy the design or
the dress (Fashion Originators Guild of America v. Federal Trade
Commission, 114 F [2d] 80). When Ambassador Neri distributed 800
copies of the design in controversy, the plaintiff lost control of his design
and the necessary implication was that there had been a general
publication, there having been no showing of a clear indication that a
limited publication was intended. The author of a literary composition has
a light to the first publication thereof. He has a right to determine
whether it shall be published at all, and if published, when, where, by
whom, and in what form. This exclusive right is confined to the first
publication. When once published, it is dedicated to the public, and the
author loses the exclusive right to control subsequent publication by
others, unless the work is placed under the protection of the copyright
law. (See II Tolentino's Comments on the Civil Code, p. 433, citing
Wright v. Eisle 83 N.Y. Supp. 887.)

3rd issue:
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the
preceding article, shall have the ownership of their creations even before
the publication of the same. Once their works are published, their rights
are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product
of his art even before it is copyrighted.

The scientist or technologist has the ownership of his discovery or
invention even before it is patented. (n)

(b) Copyright Ownership
Sec. 178; 179; Art. 723 (NCC)

CHAPTER VI
OWNERSHIP OF COPYRIGHT

Section 178. Rules on Copyright Ownership. - Copyright ownership shall
be governed by the following rules:

178.1 Subject to the provisions of this section, in the case of original
literary and artistic works, copyright shall belong to the author of the
work;

178.2. In the case of works of joint authorship, the co-authors shall be
the original owners of the copyright and in the absence of agreement,
their rights shall be governed by the rules on co-ownership. If, however,
a work of joint authorship consists of parts that can be used separately
and the author of each part can be identified, the author of each part
shall be the original owner of the copyright in the part that he has
created;

178.3. In the case of work created by an author during and in the course
of his employment, the copyright shall belong to:

(a) The employee, if the creation of the object of copyright is not a part
of his regular duties even if the employee uses the time, facilities and
materials of the employer.

(b) The employer, if the work is the result of the performance of his
regularly-assigned duties, unless there is an agreement, express or
implied, to the contrary.

178.4. In the case of a work commissioned by a person other than an
employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work
shall have ownership of the work, but the copyright thereto shall remain
with the creator, unless there is a written stipulation to the contrary;

178.5. In the case of audiovisual work, the copyright shall belong to the
producer, the author of the scenario, the composer of the music, the film
director, and the author of the work so adapted. However, subject to
contrary or other stipulations among the creators, the producer shall
exercise the copyright to an extent required for the exhibition of the work
in any manner, except for the right to collect performing license fees for
the performance of musical compositions, with or without words, which
are incorporated into the work; and

178.6. In respect of letters, the copyright shall belong to the writer
subject to the provisions of Article 723 of the Civil Code. (Sec. 6, P.D.
No. 49a)

Section 179. Anonymous and Pseudonymous Works. - For purposes of
this Act, the publishers shall be deemed to represent the authors of
articles and other writings published without the names of the authors or
under pseudonyms, unless the contrary appears, or the pseudonyms or
adopted name leaves no doubt as to the author's identity, or if the
author of the anonymous works discloses his identity. (Sec. 7, P.D. 49)


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Civil Code: Art. 723.
Letters and other private communications in writing are owned
by the person to whom they are addressed and delivered, but they
cannot be published or disseminated without the consent of the writer or
his heirs. However, the court may authorize their publication or
dissemination if the public good or the interest of justice so requires. (n)


(7) Transfer or Assignment of Copyright
Sec. 180- 183

TRANSFER OR ASSIGNMENT OF COPYRIGHT

Section 180. Rights of Assignee. – 180.1. The copyright may be assigned
in whole or in part. Within the scope of the assignment, the assignee is
entitled to all the rights and remedies which the assignor had with
respect to the copyright.

Note: There are seven rights it can be assigned individually or as a
whole.

180.2. The copyright is not deemed assigned inter vivos in whole or in
part unless there is a written indication of such intention.

180.3. The submission of a literary, photographic or artistic work to a
newspaper, magazine or periodical for publication shall constitute only a
license to make a single publication unless a greater right is expressly
granted. If two (2) or more persons jointly own a copyright or any part
thereof, neither of the owners shall be entitled to grant licenses without
the prior written consent of the other owner or owners. (Sec. 15, P.D.
No. 49a)

Section 181. Copyright and Material Object. - The copyright is distinct
from the property in the material object subject to it. Consequently, the
transfer or assignment of the copyright shall not itself constitute a
transfer of the material object. Nor shall a transfer or assignment of the
sole copy or of one or several copies of the work imply transfer or
assignment of the copyright. (Sec. 16, P.D. No. 49)

Section 182. Filing of Assignment or License. - An assignment or
exclusive license may be filed in duplicate with the National Library upon
payment of the prescribed fee for registration in books and records kept
for the purpose. Upon recording, a copy of the instrument shall be
returned to the sender with a notation of the fact of record. Notice of the
record shall be published in the IPO Gazette. (Sec. 19, P.D. No. 49a)

Section 183. Designation of Society. - The copyright owners or their heirs
may designate a society of artists, writers or composers to enforce their
economic rights and moral rights on their behalf. (Sec. 32, P.D. No. 49a)

(8) Limitations of Copyright

(a) Limitations On Copyright
Sec. 184

CHAPTER VIII
LIMITATIONS ON COPYRIGHT

Section 184. Limitations on Copyright. - 184.1. Notwithstanding the
provisions of Chapter V, the following acts shall not constitute
infringement of copyright:

(a) The recitation or performance of a work, once it has been lawfully
made accessible to the public, if done privately and free of charge or if
made strictly for a charitable or religious institution or society; (Sec.
10(1), P.D. No. 49)

(b) The making of quotations from a published work if they are
compatible with fair use and only to the extent justified for the purpose,
including quotations from newspaper articles and periodicals in the form
of press summaries: Provided, That the source and the name of the
author, if appearing on the work, are mentioned; (Sec. 11, third par.,
P.D. No. 49)

(c) The reproduction or communication to the public by mass media of
articles on current political, social, economic, scientific or religious topic,
lectures, addresses and other works of the same nature, which are
delivered in public if such use is for information purposes and has not
been expressly reserved: Provided, That the source is clearly indicated;
(Sec. 11, P.D. No. 49)

(d) The reproduction and communication to the public of literary,
scientific or artistic works as part of reports of current events by means
of photography, cinematography or broadcasting to the extent necessary
for the purpose; (Sec. 12, P.D. No. 49)

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

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

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

(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is
compatible with fair use;

(i) The public performance or the communication to the public of a work,
in a place where no admission fee is charged in respect of such public
performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making, subject to such
other limitations as may be provided in the Regulations; (n)

(j) Public display of the original or a copy of the work not made by means
of a film, slide, television image or otherwise on screen or by means of
any other device or process: Provided, That either the work has been
published, or, that the original or the copy displayed has been sold, given
away or otherwise transferred to another person by the author or his
successor in title; and

(k) Any use made of a work for the purpose of any judicial proceedings
or for the giving of professional advice by a legal practitioner.

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

(b) Fair Use of Work
Sec. 185

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

(a) The purpose and character of the use, including whether such use is
of a commercial nature or is for non-profit educational purposes;

(b) The nature of the copyrighted work;

(c) The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and

(d) The effect of the use upon the potential market for or value of the
copyrighted work.


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185.2. The fact that a work is unpublished shall not by itself bar a finding
of fair use if such finding is made upon consideration of all the above
factors.

A&M Records Inc. vs. Napster Inc. No. 00-16401 (U.S. Court
Decision)

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

Issues
Whether or not Napster violated one of the exclusive copyright
of A&M?
Whether or not it constitutes fair use?

Held
The court also examined Napster’s fair use claims using the
four fair use factors: purpose and character of the use, nature of the use,
portion used, effect of use on the market. The court decided that
Napster’s argument for sampling did not hold, because the “samples”
were in fact permanent and complete files on the users’ hard drives.
Also, Napster’s space-shifting argument did not hold, because the users
were not just simply converting their media between formats for storage,
but were sharing the files as well. No decision was made on the
argument of permissive reproduction, because the plaintiffs did not
challenge this use. Finally, the court rejected Napster’s request for a
compulsory license, citing that such a device would provide Napster with
an “easy out” while seemingly punishing the copyright holders. (Cornell)

Habana vs. Robles G.R. No. 131522, July 19, 1999

Facts
Habana is the author of the copyrighted book entitled College
English for Today (CET). Robles and GoodWill is the author and publisher
of the book entitled Developing English Proficiency (DEP).
When Habana et al. try to revise their work they encountered
by chance that the work of Robles (DEP) is similar of the contents,
scheme of presentation, illustrations and illustrative examples in their
own book.
After an itemized examination and comparison of the two
books (CET and DEP), Habana found that several pages of the Robles’
book are similar, if not all together a copy of Habana’s book, which is a
case of plagiarism and copyright infringement.
Habana then made demands for damages against respondents and also
demanded that they cease and desist from further selling and distributing
to the general public the infringed copies of Robles’ works.
However, Robles ignored the demands, hence, Habana et al. filed with
the Regional Trial Court, Makati, a complaint for “Infringement and/or
unfair competition with damages” against private respondents.

Issues

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

Held
No, Robles still committed copyright infringement.
Robles’ act of lifting from the book of petitioners substantial
portions of discussions and examples, and her failure to acknowledge the
same in her book is an infringement of petitioners’ copyrights.
In cases of infringement, copying alone is not what is prohibited. The
copying must produce an “injurious effect”. Here, the injury consists in
that Robles lifted from Habana’s book materials that were the result of
the latter’s research work and compilation and misrepresented them as
her own. She circulated the book DEP for commercial use and did not
acknowledge Habana as her source.

Hence, there is a clear case of appropriation of copyrighted work for her
benefit that Robles committed. Habana’s work as authors is the product
of their long and assiduous research and for another to represent it as
her own is injury enough. In copyrighting books the purpose is to give
protection to the intellectual product of an author. This is precisely what
the law on copyright protected, under Section 184.1 (b). Quotations
from a published work if they are compatible with fair use and only to the
extent justified by the purpose, including quotations from newspaper
articles and periodicals in the form of press summaries are allowed
provided that the source and the name of the author, if appearing on the
work, are mentioned.

Notes

When is there a substantial reproduction of a book?
It does not necessarily require that the entire copyrighted work, or even
a large portion of it, be copied. If so much is taken that the value of the
original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.
In determining the question of infringement, the amount of matter
copied from the copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole or even a large
portion of the work shall have been copied. If so much is taken that the
value of the original is sensibly diminished, or the labors of the original
author are substantially and to an injurious extent appropriated by
another, that is sufficient in point of law to constitute piracy.

The essence of intellectual piracy should be essayed in conceptual terms
in order to underscore its gravity by an appropriate understanding
thereof. Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing by any person,
without the consent of the owner of the copyright, of anything the sole
right to do which is conferred by statute on the owner of the copyright.

Piracy
A copy of a piracy is an infringement of the original, and it is no defense
that the pirate, in such cases, did not know whether or not he was
infringing any copyright; he at least knew that what he was copying was
not his, and he copied at his peril.

(c) Work of Architecture
Sec. 186

Section 186. Work of Architecture. - Copyright in a work of architecture
shall include the right to control the erection of any building which
reproduces the whole or a substantial part of the work either in its
original form or in any form recognizably derived from the original:
Provided, That the copyright in any such work shall not include the right
to control the reconstruction or rehabilitation in the same style as the
original of a building to which that copyright relates. (n)

(d) Reproduction of Published Work
Sec. 187- 187.2

Section 187. Reproduction of Published Work. - 187.1. Notwithstanding
the provision of Section 177, and subject to the provisions of Subsection
187.2, the private reproduction of a published work in a single copy,
where the reproduction is made by a natural person exclusively for

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Rommel A. Tio Page 14 of 21 Intellectual Property Law
research and private study, shall be permitted, without the authorization
of the owner of copyright in the work.

187.2. The permission granted under Subsection 187.1 shall not extend
to the reproduction of:

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

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

(c) A compilation of data and other materials;

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

(e) Any work in cases where reproduction would unreasonably conflict
with a normal exploitation of the work or would otherwise unreasonably
prejudice the legitimate interests of the author. (n)

(e) Reprographic Reproduction by Libraries
Sec. 188

Section 188. Reprographic Reproduction by Libraries. - 188.1.
Notwithstanding the provisions of Subsection 177.6, any library or
archive whose activities are not for profit may, without the authorization
of the author of copyright owner, make a single copy of the work by
reprographic reproduction:

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

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

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

188.2. Notwithstanding the above provisions, it shall not be permissible
to produce a volume of a work published in several volumes or to
produce missing tomes or pages of magazines or similar works, unless
the volume, tome or part is out of stock: Provided, That every library
which, by law, is entitled to receive copies of a printed work, shall be
entitled, when special reasons so require, to reproduce a copy of a
published work which is considered necessary for the collection of the
library but which is out of stock. (Sec. 13, P.D. 49a)

(f) Reproduction of Computer Program
Sec. 189

Section 189. Reproduction of Computer Program. - 189.1.
Notwithstanding the provisions of Section 177, the reproduction in one
(1) back-up copy or adaptation of a computer program shall be
permitted, without the authorization of the author of, or other owner of
copyright in, a computer program, by the lawful owner of that computer
program: Provided, That the copy or adaptation is necessary for:

(a) The use of the computer program in conjunction with a computer for
the purpose, and to the extent, for which the computer program has
been obtained; and

(b) Archival purposes, and, for the replacement of the lawfully owned
copy of the computer program in the event that the lawfully obtained
copy of the computer program is lost, destroyed or rendered unusable.

189.2. No copy or adaptation mentioned in this Section shall be used for
any purpose other than the ones determined in this Section, and any
such copy or adaptation shall be destroyed in the event that continued
possession of the copy of the computer program ceases to be lawful.

189.3. This provision shall be without prejudice to the application of
Section 185 whenever appropriate. (n)

(g) Importation for Personal Purposes
Sec. 190

Section 190. Importation for Personal Purposes. - 190.1. Notwithstanding
the provision of Subsection 177.6, but subject to the limitation under the
Subsection 185.2, the importation of a copy of a work by an individual
for his personal purposes shall be permitted without the authorization of
the author of, or other owner of copyright in, the work under the
following circumstances:

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

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

(ii) The importation is by authority of and for the use of the Philippine
Government; or

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

(b) When such copies form parts of libraries and personal baggage
belonging to persons or families arriving from foreign countries and are
not intended for sale: Provided, That such copies do not exceed three
(3).

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

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

(9) Registration and Deposit with National Library and Supreme
Court Library
Sec. 191; 192; 227; 228

CHAPTER IX
DEPOSIT AND NOTICE

Section 191. Registration and Deposit with National Library and the
Supreme Court Library. - After the first public dissemination of
performance by authority of the copyright owner of a work falling under
Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the
purpose of completing the records of the National Library and the
Supreme Court Library, within three (3) weeks, be registered and
deposited with it, by personal delivery or by registered mail two (2)
complete copies or reproductions of the work in such form as the
directors of said libraries may prescribe. A certificate of deposit shall be
issued for which the prescribed fee shall be collected and the copyright
owner shall be exempt from making additional deposit of the works with
the National Library and the Supreme Court Library under other laws. If,
within three (3) weeks after receipt by the copyright owner of a written
demand from the directors for such deposit, the required copies or
reproductions are not delivered and the fee is not paid, the copyright
owner shall be liable to pay a fine equivalent to the required fee per
month of delay and to pay to the National Library and the Supreme Court
Library the amount of the retail price of the best edition of the work. Only
the above mentioned classes of work shall be accepted for deposit by the
National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a)

Section 192. Notice of Copyright. - Each copy of a work published or
offered for sale may contain a notice bearing the name of the copyright
owner, and the year of its first publication, and, in copies produced after
the creator's death, the year of such death. (Sec. 27, P.D. No. 49a)

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Note: The value of the notice of copyright is enforcing your copyright in
infringement case

CHAPTER XX
MISCELLANEOUS PROVISIONS

Section 227. Ownership of Deposit and Instruments. - All copies
deposited and instruments in writing filed with the National Library and
the Supreme Court Library in accordance with the provisions of this Act
shall become the property of the Government. (Sec. 60, P.D. No. 49)

Section 228. Public Records. - The section or division of the National
Library and the Supreme Court Library charged with receiving copies and
instruments deposited and with keeping records required under this Act
and everything in it shall be opened to public inspection. The Director of
the National Library is empowered to issue such safeguards and
regulations as may be necessary to implement this Section and other
provisions of this Act. (Sec. 61, P.D. No. 49)

Section 229. Copyright Division; Fees. - The Copyright Section of the
National Library shall be classified as a Division upon the effectivity of
this Act. The National Library shall have the power to collect, for the
discharge of its services under this Act, such fees as may be promulgated
by it from time to time subject to the approval of the Department Head.
(Sec. 62, P.D. 49a)

(10) Moral Rights

(a) Scope of Moral Rights
Sec. 193

CHAPTER X
MORAL RIGHTS

Section 193. Scope of Moral Rights. - The author of a work shall,
independently of the economic rights in Section 177 or the grant of an
assignment or license with respect to such right, have the right:

Note: Economic Rights is independent for Moral Rights

193.1. To require that the authorship of the works be attributed to him,
in particular, the right that his name, as far as practicable, be indicated
in a prominent way on the copies, and in connection with the public use
of his work;

193.2. To make any alterations of his work prior to, or to withhold it from
publication;

193.3. To object to any distortion, mutilation or other modification of, or
other derogatory action in relation to, his work which would be prejudicial
to his honor or reputation; and

193.4. To restrain the use of his name with respect to any work not of
his own creation or in a distorted version of his work. (Sec. 34, P.D. No.
49)

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

Transfer or Licensing are different.

(b) Breach of Contract
Sec. 194

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

(c) Waiver of Moral Rights
Sec. 195

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

195.1. To use the name of the author, or the title of his work, or
otherwise to make use of his reputation with respect to any version or
adaptation of his work which, because of alterations therein, would
substantially tend to injure the literary or artistic reputation of another
author; or

195.2. To use the name of the author with respect to a work he did not
create. (Sec. 36, P.D. No. 49)

(d) Contribution to Collective Work
Sec. 196

Section 196. Contribution to Collective Work. - When an author
contributes to a collective work, his right to have his contribution
attributed to him is deemed waived unless he expressly reserves it. (Sec.
37, P.D. No. 49)

(e) Term of Moral Rights
Sec. 198; 199; 226

Section 198. Term of Moral Rights. - 198.1. The rights of an author under
this chapter shall last during the lifetime of the author and for fifty (50)
years after his death and shall not be assignable or subject to license.
The person or persons to be charged with the posthumous enforcement
of these rights shall be named in writing to be filed with the National
Library. In default of such person or persons, such enforcement shall
devolve upon either the author's heirs, and in default of the heirs, the
Director of the National Library.

198.2. For purposes of this Section, "Person" shall mean any individual,
partnership, corporation, association, or society. The Director of the
National Library may prescribe reasonable fees to be charged for his
services in the application of provisions of this Section. (Sec. 39, P.D. No.
49)

Section 199. Enforcement Remedies. - Violation of any of the rights
conferred by this Chapter shall entitle those charged with their
enforcement to the same rights and remedies available to a copyright
owner. In addition, damages which may be availed of under the Civil
Code may also be recovered. Any damage recovered after the creator's
death shall be held in trust for and remitted to his heirs, and in default of
the heirs, shall belong to the government. (Sec. 40, P D No. 49)

Section 226. Damages. - No damages may be recovered under this Act
after four (4) years from the time the cause of action arose. (Sec. 58,
P.D. No. 49)

(11) Rights to Proceed in Subsequent Transfers

(a) Sale or Lease of Work
Sec. 200; 201

Section 200. Sale or Lease of Work. - In every sale or lease of an original
work of painting or sculpture or of the original manuscript of a writer or
composer, subsequent to the first disposition thereof by the author, the
author or his heirs shall have an inalienable right to participate in the
gross proceeds of the sale or lease to the extent of five percent (5%).
This right shall exist during the lifetime of the author and for fifty (50)
years after his death. (Sec. 31, P.D. No. 49)

Section 201. Works Not Covered. - The provisions of this Chapter shall
not apply to prints, etchings, engravings, works of applied art, or works
of similar kind wherein the author primarily derives gain from the
proceeds of reproductions. (Sec. 33, P.D. No. 49)

(12) Rights of Performers, Producers of Sound Recordings and
Broadcasting Organizations

(a) Definitions
Sec. 202- 202. 8

CHAPTER XII

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RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND
BROADCASTING ORGANIZATIONS

Section 202. Definitions. - For the purpose of this Act, the following
terms shall have the following meanings:

202.1. "Performers" are actors, singers, musicians, dancers, and other
persons who act, sing, declaim, play in, interpret, or otherwise perform
literary and artistic work;

202.2. "Sound recording" means the fixation of the sounds of a
performance or of other sounds, or representation of sound, other than
in the form of a fixation incorporated in a cinematographic or other
audiovisual work;

202.3. An "audiovisual work or fixation" is a work that consists of a series
of related images which impart the impression of motion, with or without
accompanying sounds, susceptible of being made visible and, where
accompanied by sounds, susceptible of being made audible;

202.4. "Fixation" means the embodiment of sounds, or of the
representations thereof, from which they can be perceived, reproduced
or communicated through a device;

202. 5. "Producer of a sound recording" means the person, or the legal
entity, who or which takes the initiative and has the responsibility for the
first fixation of the sounds of a performance or other sounds, or the
representation of sounds;

202.6. "Publication of a fixed performance or a sound recording" means
the offering of copies of the fixed performance or the sound recording to
the public, with the consent of the right holder: Provided, That copies are
offered to the public in reasonable quality;

202.7. "Broadcasting" means the transmission by wireless means for the
public reception of sounds or of images or of representations thereof;
such transmission by satellite is also "broadcasting" where the means for
decrypting are provided to the public by the broadcasting organization or
with its consent;

202.8. "Broadcasting organization" shall include a natural person or a
juridical entity duly authorized to engage in broadcasting; and

202.9 "Communication to the public of a performance or a sound
recording" means the transmission to the public, by any medium,
otherwise than by broadcasting, of sounds of a performance or the
representations of sounds fixed in a sound recording. For purposes of
Section 209, "communication to the public" includes making the sounds
or representations of sounds fixed in a sound recording audible to the
public.

(b) Scope of Performers’ Rights
Sec. 203

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

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

(a) The broadcasting and other communication to the public of their
performance; and

(b) The fixation of their unfixed performance.

203.2. The right of authorizing the direct or indirect reproduction of their
performances fixed in sound recordings, in any manner or form;

203.3. Subject to the provisions of Section 206, the right of authorizing
the first public distribution of the original and copies of their performance
fixed in the sound recording through sale or rental or other forms of
transfer of ownership;

203.4. The right of authorizing the commercial rental to the public of the
original and copies of their performances fixed in sound recordings, even
after distribution of them by, or pursuant to the authorization by the
performer; and

203.5. The right of authorizing the making available to the public of their
performances fixed in sound recordings, by wire or wireless means, in
such a way that members of the public may access them from a place
and time individually chosen by them. (Sec. 42, P.D. No. 49a)

(c) Moral Rights of Performers
Sec. 204; 204.1

Section 204. Moral Rights of Performers. - 204.1. Independently of a
performer's economic rights, the performer, shall, as regards his live
aural performances or performances fixed in sound recordings, have the
right to claim to be identified as the performer of his performances,
except where the omission is dictated by the manner of the use of the
performance, and to object to any distortion, mutilation or other
modification of his performances that would be prejudicial to his
reputation.

204.2. The rights granted to a performer in accordance with Subsection
203.1 shall be maintained and exercised fifty (50) years after his death,
by his heirs, and in default of heirs, the government, where protection is
claimed. (Sec. 43, P.D. No. 49)

(d) Limitation on Performers’ Rights
Sec. 205; 205.2

Section 205. Limitation on Right. - 205.1. Subject to the provisions of
Section 206, once the performer has authorized the broadcasting or
fixation of his performance, the provisions of Sections 203 shall have no
further application.

205.2. The provisions of Section 184 and Section 185 shall apply mutatis
mutandis to performers. (n)

(e) Additional Remuneration for Subsequent Communications or
Broadcasts
Sec. 206

Section 206. Additional Remuneration for Subsequent Communications or
Broadcasts. - Unless otherwise provided in the contract, in every
communication to the public or broadcast of a performance subsequent
to the first communication or broadcast thereof by the broadcasting
organization, the performer shall be entitled to an additional
remuneration equivalent to at least five percent (5%) of the original
compensation he or she received for the first communication or
broadcast. (n)

(f) Contract Terms
Sec. 207

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

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

CHAPTER XIII
PRODUCERS OF SOUND RECORDINGS

Section 208. Scope of Right. - Subject to the provisions of Section 212,
producers of sound recordings shall enjoy the following exclusive rights:

208.1. The right to authorize the direct or indirect reproduction of their
sound recordings, in any manner or form; the placing of these
reproductions in the market and the right of rental or lending;

208.2. The right to authorize the first public distribution of the original
and copies of their sound recordings through sale or rental or other forms
of transferring ownership; and

208.3. The right to authorize the commercial rental to the public of the
original and copies of their sound recordings, even after distribution by
them by or pursuant to authorization by the producer. (Sec. 46, P.D. No.
49a)



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Section 210. Limitation of Right. - Sections 184 and 185 shall apply
mutatis mutandis to the producer of sound recordings. (Sec. 48, P.D. No.
49a)

(h) Communication to the Public on Sound Recordings
Sec. 209

Section 209. Communication to the Public. - If a sound recording
published for commercial purposes, or a reproduction of such sound
recording, is used directly for broadcasting or for other communication to
the public, or is publicly performed with the intention of making and
enhancing profit, a single equitable remuneration for the performer or
performers, and the producer of the sound recording shall be paid by the
user to both the performers and the producer, who, in the absence of
any agreement shall share equally. (Sec. 47, P.D. No. 49a)

(i) Scope of Right of Broadcasting Organizations
Sec. 211

CHAPTER XIV
BROADCASTING ORGANIZATIONS

Section 211. Scope of Right. - Subject to the provisions of Section 212,
broadcasting organizations shall enjoy the exclusive right to carry out,
authorize or prevent any of the following acts:

211.1. The rebroadcasting of their broadcasts;

211.2. The recording in any manner, including the making of films or the
use of video tape, of their broadcasts for the purpose of communication
to the public of television broadcasts of the same; and

211.3. The use of such records for fresh transmissions or for fresh
recording. (Sec. 52, P.D. No. 49)

(j) Limitations on Rights
Sec. 212

CHAPTER XV
LIMITATIONS ON PROTECTION

Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not
apply where the acts referred to in those Sections are related to:

212.1. The use by a natural person exclusively for his own personal
purposes;

212.2. Using short excerpts for reporting current events;

212.3. Use solely for the purpose of teaching or for scientific research;
and

212.4. Fair use of the broadcast subject to the conditions under Section
185. (Sec. 44, P.D. No. 49a)

ABS-CBN vs. Phil. Multi-Media System Inc.
G.R. No. 175769-70, Jan. 19, 2009

Facts
ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed
under the laws of the Republic of the Philippines to engage in television
and radio broadcasting. It broadcasts television programs by wireless
means to Metro Manila and nearby provinces, and by satellite to
provincial stations through Channel 2 on Very High Frequency (VHF) and
Channel 23 on Ultra High Frequency (UHF). The programs aired over
Channels 2 and 23 are either produced by ABS-CBN or purchased from or
licensed by other producers.
ABS-CBN also owns regional television stations which pattern
their programming in accordance with perceived demands of the region.
Thus, television programs shown in Metro Manila and nearby provinces
are not necessarily shown in other provinces.
Philippine Multi-Media System, Inc. (PMSI) is the operator of
Dream Broadcasting System. It delivers digital direct-to-home (DTH)
television via satellite to its subscribers all over the Philippines.
PMSI was granted a legislative franchise under Republic Act
No. 86305 on May 7, 1998 and was given a Provisional Authority by the
National Telecommunications Commission (NTC) on February 1, 2000 to
install, operate and maintain a nationwide DTH satellite service. When it
commenced operations, it offered as part of its program line-up ABS-CBN
Channels 2 and 23, NBN, Channel 4, ABC Channel 5, GMA Channel 7,
RPN Channel 9, and IBC Channel 13, together with other paid premium
program channels.
However, on April 25, 2001, ABS-CBN demanded for PMSI to
cease and desist from rebroadcasting Channels 2 and 23. On April 27,
2001, PMSI replied that the rebroadcasting was in accordance with the
authority granted it by NTC and its obligation under NTC Memorandum
Circular No. 4-08-88, Section 6.2 of which requires all cable television
system operators operating in a community within Grade “A” or “B”
contours to carry the television signals of the authorized television
broadcast stations.
Thereafter, negotiations ensued between the parties in an
effort to reach a settlement; however, the negotiations were terminated
on April 4, 2002 by ABS-CBN allegedly due to PMSI’s inability to ensure
the prevention of illegal retransmission and further rebroadcast of its
signals, as well as the adverse effect of the rebroadcasts on the business
operations of its regional television stations.
On May 13, 2002, ABS-CBN filed with the IPO a complaint for
“Violation of Laws Involving Property Rights, with Prayer for the Issuance
of a Temporary Restraining Order and/or Writ of Preliminary Injunction,”.
It alleged that PMSI’s unauthorized rebroadcasting of Channels
2 and 23 infringed on its broadcasting rights and copyright. On July 2,
2002, the Bureau of Legal Affairs (BLA) of the IPO granted ABS-CBN’s
application for a temporary restraining order. On July 12, 2002, PMSI
suspended its retransmission of Channels 2 and 23.

PMSI Argument
Broadcasting Channels 1 & 23 is subject to the must-carry rule
under Memorandum Circular No. 04-08-88.
Issues
(1) Whether or not PMSI’s unauthorized rebroadcasting of
Channels 2 and 23 is an infringement of its broadcasting rights and
copyright under the Intellectual Property Code?
(2) Whether or not Memorandum Circular No. 04-08-88
excludes DTH satellite television operators?
Held
PMSI did not infringe on ABS-CBN’s intellectual property rights
under the IP Code.
Section 202.7 of the IP Code defines broadcasting as “the
transmission by wireless means for the public reception of sounds or of
images or of representations thereof; such transmission by satellite is
also ‘broadcasting’ where the means for decrypting are provided to the
public by the broadcasting organization or with its consent.”
On the other hand, rebroadcasting as defined in Article 3(g) of
the International Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations, otherwise known as the
1961 Rome Convention, of which the Republic of the Philippines is a
signatory, is “the simultaneous broadcasting by one broadcasting
organization of the broadcast of another broadcasting organization.”
PMSI would not qualify as a broadcasting organization because
it does not have the aforementioned responsibilities imposed upon
broadcasting organizations, such as ABS-CBN.
ABS-CBN creates and transmits its own signals; PMSI merely
carries such signals which the viewers receive in its unaltered form. PMSI
does not produce, select, or determine the programs to be shown in
Channels 2 and 23. Likewise, it does not pass itself off as the origin or
author of such programs. Insofar as Channels 2 and 23 are concerned,
PMSI merely retransmits the same in accordance with Memorandum
Circular 04-08-88. With regard to its premium channels, it buys the
channels from content providers and transmits on an as-is basis to its
viewers. Clearly, PMSI does not perform the functions of a broadcasting
organization; thus, it cannot be said that it is engaged in rebroadcasting
Channels 2 and 23.
The retransmission of ABS-CBN’s signals by PMSI – which
functions essentially as a cable television – does not therefore constitute
rebroadcasting in violation of the former’s intellectual property rights
under the IP Code.

(13) Term of Protection in General

(a) Term of Protection
Sec. 213

Section 213. Term of Protection. - 213.1. Subject to the provisions of
Subsections 213.2 to 213.5, the copyright in works under Sections 172

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

(i) Joint Authorship
Sec. 213.2

213.2. In case of works of joint authorship, the economic rights shall be
protected during the life of the last surviving author and for fifty (50)
years after his death. (Sec. 21, second sentence, P.D. No. 49)

(ii) Anonymous or Pseudonymous Works
Sec. 213.3

213.3. In case of anonymous or pseudonymous works, the copyright
shall be protected for fifty (50) years from the date on which the work
was first lawfully published: Provided, That where, before the expiration
of the said period, the author's identity is revealed or is no longer in
doubt, the provisions of Subsections 213.1. and 213.2 shall apply, as the
case may be: Provided, further, That such works if not published before
shall be protected for fifty (50) years counted from the making of the
work. (Sec. 23, P.D. No. 49)

(iii) Works of Applied Art
Sec. 213. 4

213.4. In case of works of applied art the protection shall be for a period
of twenty-five (25) years from the date of making. (Sec. 24(B), P.D. No.
49a)

(iv) Photographic Works
Sec. 213.5

213.5. In case of photographic works, the protection shall be for fifty
(50) years from publication of the work and, if unpublished, fifty (50)
years from the making. (Sec. 24(C), P.D. 49a)

(v)Audio-visual Works
Sec. 213.6

213.6. In case of audio-visual works including those produced by process
analogous to photography or any process for making audio-visual
recordings, the term shall be fifty (50) years from date of publication
and, if unpublished, from the date of making. (Sec. 24(C), P.D. No. 49a)

(vi) Calculation of Terms
Sec. 214

Section 214. Calculation of Term. - The term of protection subsequent to
the death of the author provided in the preceding Section shall run from
the date of his death or of publication, but such terms shall always be
deemed to begin on the first day of January of the year following the
event which gave rise to them. (Sec. 25, P.D. No. 49)

(b) Term of Protection for Performers, Producers and
Broadcasting Organizations
Sec. 215; 215.2

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

(a) For performances not incorporated in recordings, fifty (50) years from
the end of the year in which the performance took place; and

(b) For sound or image and sound recordings and for performances
incorporated therein, fifty (50) years from the end of the year in which
the recording took place.

215.2. In case of broadcasts, the term shall be twenty (20) years from
the date the broadcast took place. The extended term shall be applied
only to old works with subsisting protection under the prior law. (Sec. 55,
P.D. No. 49a)

(14) Infringement

(a) How committed

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

Facts
Microsoft Corporation ("Microsoft"), a Delaware, United States
corporation, owns the copyright and trademark to several computer
software. Beltron Computer Philippines, Inc. ("Beltron") and Taiwan
Machinery Display & Trade Center, Inc. ("TMTC") are domestic
corporations.
In May 1993, Microsoft and Beltron entered into a Licensing
Agreement ("Agreement"). Under Section 2(a) of the Agreement, as
amended in January 1994, Microsoft authorized Beltron, for a fee, to:

(1) reproduce and install no more than one (1) copy of
Microsoft software on each Customer System hard disk or Read Only
Memory ("ROM")
(2) distribute directly or indirectly and license copies of the
Product in object code form to end users

The Agreement also authorized Microsoft and Beltron to
terminate the contract if the other fails to comply with any of the
Agreement’s provisions. Microsoft terminated the Agreement effective 22
June 1995 for Beltron’s non-payment of royalties.
Afterwards, Microsoft learned that Beltron were illegally
copying and selling Microsoft software. Consequently, Microsoft, through
its Philippine agent, hired the services of Pinkerton Consulting Services
("PCS"), a private investigative firm. Microsoft also sought the assistance
of the National Bureau of Investigation ("NBI").
On 10 November 1995, a PCS employee and an NBI agent
posing as representatives of a computer shop, bought computer
hardware (central processing unit ("CPU") and computer monitor) and
software (12 computer disks ("CDs") in read-only memory ("ROM")
format) from Beltron. The CPU contained pre-installed Microsoft Windows
3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic
containers with Microsoft packaging, also contained Microsoft software.
At least two of the CD-ROMs were "installers," so-called because they
contain several software (Microsoft only or both Microsoft and non-
Microsoft). The PCS employee and the NBI agent were not given the
Microsoft end-user license agreements, user’s manuals, registration cards
or certificates of authenticity for the articles they purchased. The receipt
issued to them for the CPU and monitor bore the heading "T.M.T.C.
(PHILS.) INC. BELTRON COMPUTER."
The NBI searched the premises of Beltron and TMTC and seized
several computer-related hardware, software, accessories, and
paraphernalia based on the search warrant applied by Microsoft.
Based on the articles obtained from Beltron and TMC, Microsoft
and a certain Lotus Development Corporation ("Lotus Corporation")
charged Beltron and TMC before the Department of Justice ("DOJ") with
copyright infringement under Section 5(A) in relation to Section 29 of
Presidential Decree No. 49, as amended, ("PD 49") and with unfair
competition under Article 189(1) of the Revised Penal Code. Microsoft
alleged that respondents illegally copied and sold Microsoft software.

Issues
Whether or not Beltron and TMC are liable for copyright
infringement and unfair competition?

Held
The gravamen of copyright infringement is not merely the
unauthorized "manufacturing" of intellectual works but rather the
unauthorized performance of any of the acts covered by Section 5.
Hence, any person who performs any of the acts under Section 5 without
obtaining the copyright owner’s prior consent renders himself civilly and
criminally liable for copyright infringement.
Infringement of a copyright is a trespass on a private domain
owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing by any person,
without the consent of the owner of the copyright, of anything the sole
right to do which is conferred by statute on the owner of the copyright.
Significantly, under Section 5(A), a copyright owner is vested
with the exclusive right to "copy, distribute, multiply, [and] sell" his
intellectual works.

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

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Rommel A. Tio Page 19 of 21 Intellectual Property Law
(a) That the offender gives his goods the general appearance of the
goods of another manufacturer or dealer;
(b) That the general appearance is shown in the
(1) goods themselves, or in the
(2) wrapping of their packages, or in the
(3) device or words therein, or in
(4) any other feature of their appearance
(c) That the offender offers to sell or sells those goods or gives other
persons a chance or opportunity to do the same with a like purpose[;
and]
(d) That there is actual intent to deceive the public or defraud a
competitor.

Microsoft Corp. vs. Maxicorp Inc
438 SCRA 224

Facts

Microsoft sued Maxicorp for copyright infringement and unfair
competition for production, installing and selling of counterfeit Microsoft’s
products. Microsoft alleged that they did not authorize Maxicorp for
production or selling of their products.

Issues
Whether or not Maxicorp committed copyright infringement
and unfair competition?
Held
Copyright infringement and unfair competition are not limited
to the act of selling counterfeit goods. They cover a whole range of acts,
from copying, assembling, packaging to marketing, including the mere
offering for sale of the counterfeit goods.

(b) Remedies for Infringement
Sec. 216; 216.2

CHAPTER XVII
INFRINGEMENT

Section 216. Remedies for Infringement. - 216.1. Any person infringing a
right protected under this law shall be liable:

(a) To an injunction restraining such infringement. The court may also
order the defendant to desist from an infringement, among others, to
prevent the entry into the channels of commerce of imported goods that
involve an infringement, immediately after customs clearance of such
goods.

(b) Pay to the copyright proprietor or his assigns or heirs such actual
damages, including legal costs and other expenses, as he may have
incurred due to the infringement as well as the profits the infringer may
have made due to such infringement, and in proving profits the plaintiff
shall be required to prove sales only and the defendant shall be required
to prove every element of cost which he claims, or, in lieu of actual
damages and profits, such damages which to the court shall appear to be
just and shall not be regarded as penalty.

(c) Deliver under oath, for impounding during the pendency of the action,
upon such terms and conditions as the court may prescribe, sales
invoices and other documents evidencing sales, all articles and their
packaging alleged to infringe a copyright and implements for making
them.

(d) Deliver under oath for destruction without any compensation all
infringing copies or devices, as well as all plates, molds, or other means
for making such infringing copies as the court may order.

(e) Such other terms and conditions, including the payment of moral and
exemplary damages, which the court may deem proper, wise and
equitable and the destruction of infringing copies of the work even in the
event of acquittal in a criminal case.

216.2. In an infringement action, the court shall also have the power to
order the seizure and impounding of any article which may serve as
evidence in the court proceedings. (Sec. 28, P.D. No. 49a)

Habana vs. Robles
310 SCRA 522 (1999)

Facts
Habana is the author of the copyrighted book entitled College
English for Today (CET). Robles and GoodWill is the author and publisher
of the book entitled Developing English Proficiency (DEP).
When Habana et al. try to revise their work they encountered
by chance that the work of Robles (DEP) is similar of the contents,
scheme of presentation, illustrations and illustrative examples in their
own book.
After an itemized examination and comparison of the two
books (CET and DEP), Habana found that several pages of the Robles’
book are similar, if not all together a copy of Habana’s book, which is a
case of plagiarism and copyright infringement.
Habana then made demands for damages against respondents and also
demanded that they cease and desist from further selling and distributing
to the general public the infringed copies of Robles’ works.
However, Robles ignored the demands, hence, Habana et al. filed with
the Regional Trial Court, Makati, a complaint for “Infringement and/or
unfair competition with damages” against private respondents.

Issues

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

Held
No, Robles still committed copyright infringement.
Robles’ act of lifting from the book of petitioners substantial
portions of discussions and examples, and her failure to acknowledge the
same in her book is an infringement of petitioners’ copyrights.
In cases of infringement, copying alone is not what is prohibited. The
copying must produce an “injurious effect”. Here, the injury consists in
that Robles lifted from Habana’s book materials that were the result of
the latter’s research work and compilation and misrepresented them as
her own. She circulated the book DEP for commercial use and did not
acknowledge Habana as her source.

Hence, there is a clear case of appropriation of copyrighted work for her
benefit that Robles committed. Habana’s work as authors is the product
of their long and assiduous research and for another to represent it as
her own is injury enough. In copyrighting books the purpose is to give
protection to the intellectual product of an author. This is precisely what
the law on copyright protected, under Section 184.1 (b). Quotations
from a published work if they are compatible with fair use and only to the
extent justified by the purpose, including quotations from newspaper
articles and periodicals in the form of press summaries are allowed
provided that the source and the name of the author, if appearing on the
work, are mentioned.

Columbia Pictures Inc. vs. CA, supra

Facts
Issues
Held

(c) Criminal Penalties
Sec. 217; 217.3

Section 217. Criminal Penalties. - 217.1. Any person infringing any right
secured by provisions of Part IV of this Act or aiding or abetting such
infringement shall be guilty of a crime punishable by:

(a) Imprisonment of one (1) year to three (3) years plus a fine ranging
from Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos
(P150,000) for the first offense.

(b) Imprisonment of three (3) years and one (1) day to six (6) years plus
a fine ranging from One hundred fifty thousand pesos (P150,000) to Five
hundred thousand pesos (P500,000) for the second offense.

(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus
a fine ranging from five hundred thousand pesos (P500,000) to One
million five hundred thousand pesos (P1,500,000) for the third and
subsequent offenses.

(d) In all cases, subsidiary imprisonment in cases of insolvency.

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Rommel A. Tio Page 20 of 21 Intellectual Property Law

217.2. In determining the number of years of imprisonment and the
amount of fine, the court shall consider the value of the infringing
materials that the defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason of the
infringement.

217.3. Any person who at the time when copyright subsists in a work has
in his possession an article which he knows, or ought to know, to be an
infringing copy of the work for the purpose of:

(a) Selling, letting for hire, or by way of trade offering or exposing for
sale, or hire, the article;

(b) Distributing the article for purpose of trade, or for any other purpose
to an extent that will prejudice the rights of the copyright owner in the
work; or

(c) Trade exhibit of the article in public, shall be guilty of an offense and
shall be liable on conviction to imprisonment and fine as above
mentioned. (Sec. 29, P.D. No. 49a)

Section 10.2

(d) Affidavit Evidence
Sec. 218; 218.2

Section 218. Affidavit Evidence. - 218.1. In an action under this Chapter,
an affidavit made before a notary public by or on behalf of the owner of
the copyright in any work or other subject matter and stating that:

(a) At the time specified therein, copyright subsisted in the work or other
subject matter;

(b) He or the person named therein is the owner of the copyright; and

(c) The copy of the work or other subject matter annexed thereto is a
true copy thereof, shall be admitted in evidence in any proceedings for
an offense under this Chapter and shall be prima facie proof of the
matters therein stated until the contrary is proved, and the court before
which such affidavit is produced shall assume that the affidavit was made
by or on behalf of the owner of the copyright.

218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject
matter to which the action relates if the defendant does not put in issue
the question whether copyright subsists in the work or other subject
matter; and

(b) Where the subsistence of the copyright is established, the plaintiff
shall be presumed to be the owner of the copyright if he claims to be the
owner of the copyright and the defendant does not put in issue the
question of his ownership.

(c) Where the defendant, without good faith, puts in issue the questions
of whether copyright subsists in a work or other subject matter to which
the action relates, or the ownership of copyright in such work or subject
matter, thereby occasioning unnecessary costs or delay in the
proceedings, the court may direct that any costs to the defendant in
respect of the action shall not be allowed by him and that any costs
occasioned by the defendant to other parties shall be paid by him to such
other parties. (n)

(e) Presumption of Authorship
Sec. 219; 219.2

Section 219. Presumption of Authorship. - 219.1. The natural person
whose name is indicated on a work in the usual manner as the author
shall, in the absence of proof to the contrary, be presumed to be the
author of the work. This provision shall be applicable even if the name is
a pseudonym, where the pseudonym leaves no doubt as to the identity of
the author.

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

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

Facts
Jose Mari Chan (Chan) entered into a contract with Bayanihan
Music Philippines, Inc. (Bayanihan), whereunder the former assigned to
the latter all his rights, interests and participation over his musical
composition "Can We Just Stop and Talk A While". Three years after the
parties entered into a similar contract over Chan's other musical
composition entitled "Afraid For Love To Fade".
On the strength of the abovementioned contracts, Bayanihan
applied for and was granted by the National Library a Certificate of
Copyright Registration for each of the two musical
compositions.Apparently, without the knowledge and consent of
petitioner Bayanihan, Chan authorized BMG Records (BMG) to record and
distribute the aforementioned musical compositions in a then recently
released album of singer Lea Salonga.
Bayanihan informed Chan and BMG of its existing copyrights
over the subject musical compositions and the alleged violation of such
right by the two. Demands were made on both to settle the matter with
Bayanihan. However no settlement was reached by the parties.
Hence, Bayanihan filed a against Chan and BMG for violation of
Section 216 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, with a prayer for the
issuance of Temporary Restraining Order (TRO) and/or writ of
preliminary injunction, enjoining respondent BMG from further recording
and distributing the subject musical compositions in whatever form of
musical products, and Chan from further granting any authority to record
and distribute the same musical compositions.

BMG Arguments:
(1) the acts of recording and publication sought to be enjoined had
already been consummated, thereby rendering moot Bayanihan's prayer
for TRO and/or preliminary injunction;
(2) there is no clear showing that petitioner Bayanihan would be greatly
damaged by the refusal of the prayed for TRO and/or preliminary
injunction.

Chan Arguments:
(1) it was never his intention to divest himself of all his rights and
interest over the musical compositions in question;
(2) the contracts he entered into with Bayanihan are mere music
publication agreements giving Bayanihan, as assignee, the power to
administer his copyright over his two songs and to act as the exclusive
publisher thereof;
(3) he was not cognizant of the application made by and the subsequent
grant of copyrights to Bayanihan;
(4) Bayanihan was remissed in its obligations under the contracts
because it failed to effectively advertise his musical compositions for
almost twenty (20) years, hence, he caused the rescission of said
contracts in 1997.

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

Held
No, Bayanihan has no right for right for injunction over the
subject musical compositions.

The issuance of an injunctive writ if the following requisites provided for
by law are:
(1) there must be a right in esse or the existence of a right to be
protected;
(2) the act against which the injunction is to be directed is a violation of
such right, the trial court threaded the correct path in denying
petitioner's prayer therefor.

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


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Rommel A. Tio Page 21 of 21 Intellectual Property Law
172.2. Works are protected by the sole fact of their creation, irrespective
of their mode or form of expression, as well as of their content, quality
and purpose.

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

(f) International Registration of Works
Sec. 220

Section 220. International Registration of Works. - A statement
concerning a work, recorded in an international register in accordance
with an international treaty to which the Philippines is or may become a
party, shall be construed as true until the contrary is proved except:

220.1. Where the statement cannot be valid under this Act or any other
law concerning intellectual property.

220.2. Where the statement is contradicted by another statement
recorded in the international register. (n)

(15) Points of Attachment of Rights

(a)For Literary and Artistic Works and Derivative Works
Sec. 221; 221.1

CHAPTER XVIII
SCOPE OF APPLICATION

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

(a) Works of authors who are nationals of, or have their habitual
residence in, the Philippines;

(b) Audio-visual works the producer of which has his headquarters or
habitual residence in the Philippines;

(c) Works of architecture erected in the Philippines or other artistic works
incorporated in a building or other structure located in the Philippines;

(d) Works first published in the Philippines; and

(e) Works first published in another country but also published in the
Philippines within thirty days, irrespective of the nationality or residence
of the authors.

221.2. The provisions of this Act shall also apply to works that are to be
protected by virtue of and in accordance with any international
convention or other international agreement to which the Philippines is a
party. (n)

Pearl & Dean Inc. vs. Shoemart Inc.
G.R. No. 148222, August 15, 2003

Facts
Issues
Held

(b) For Performers
Sec. 222

Section 222. Points of Attachment for Performers. - The provisions of this
Act on the protection of performers shall apply to:

222.1. Performers who are nationals of the Philippines;

222.2. Performers who are not nationals of the Philippines but whose
performances:

(a) Take place in the Philippines; or

(b) Are incorporated in sound recordings that are protected under this
Act; or

(c) Which has not been fixed in sound recording but are carried by
broadcast qualifying for protection under this Act. (n)

(c) Of Sound Recordings
Sec. 223

Section 223. Points of Attachment for Sound Recordings. - The provisions
of this Act on the protection of sound recordings shall apply to:

223.1. Sound recordings the producers of which are nationals of the
Philippines; and

223.2. Sound recordings that were first published in the Philippines. (n)

(d) For Broadcast
Sec. 224; 224.2

Section 224. Points of Attachment for Broadcasts. - 224.1. The provisions
of this Act on the protection of broadcasts shall apply to:

(a) Broadcasts of broadcasting organizations the headquarters of which
are situated in the Philippines; and

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

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