THE PROGRAMMER’S SOURCE CODE AND THE INTELLECTUAL PROPERTY LAW “Designed by : ANONYMOUS INTENDED LEARNING OUTCOMES At the end of this chapter, the student is expected to: + Discuss the State policy regarding intellectual property laws; ‘+ Define patent and enumerate the rights conferred by it; * Discuss the elements of patentability; * Distinguish inventions which are patentable and non-patentable; ‘* Discuss and explain the most common intellectual properties; + Discern the instances when there is an infringement of intellectual properties; * Identify the person who has the right to the ownership of a copyright in different cases; Conclude whether or not an act constitutes a fair use of copyrighted material or not; * Distinguish plagiarism with copyright infringement; and + Apply and manifest critical thinking skills in analyzing controversial acts which ‘may or may not infringe another person's intellectual property. This chapter may be completed in a span ten (10) hours including the assessment tasks.The Programmer's source Code All software that capable to follow. These ae f2.Product of alist of instructions which the machine is info a machine language 110 at wctions are called program whichis hen translated.» program isa set of insegrtic the computers can directly understand. A computer form, which is capable mice" ExPF35ed in words, codes, schemes or in any other of causing the computer fe ncerPorated in a medium that the computer can read, RA £293). OF course, made ettorm or achieve a particular task or result (See 1714, written in some pro es cannot understand our language, thus, programs are ‘ uming lan, Paid | an appropriate Programming | nee. So if one is to write programs, he must learn Writing programs isnot easy, normal for a programmernot programmer's source code is Ii the execution by the computers his employer, who will own th the source code? Can the employer demand, as a matter of right, from his programmer to provide him with the source code? These are some of the questions which will be addressed by this chapter, : thus, before the open source technology blooms, it is hare and/or distribute his program or source code. A ike a recipe, or a secret formula or process from which isanchored. Ifa programmer had written programs for system, the employer or the programmer? How about, Intellectual Creation Our civil code provides for different modes of acquiring ownership, thus: 1) Occupation; 2) Law; 3) Donation; 4) Tradition; 5) Intellectual Creation; 6) Prescription and 7) Succession. We will focus on the fifth mode, which is, acquiring ownership through intellectual creations. To illustrate, suppose Engr. Sean designs a car which uses a gas-saving device which lessen the gasoline consumption by ninety percent (90%), the patent of the said invention belongs to Engr. Sean. Another example is a painting made by an artist, books written by an author, a logo designed by a student and programs written by a programmer, newspaper articles, powerpoint presentations, theses and dissertations ‘These are considered as intellectual creations. The Intellectual property (RA 8293) : : of computing, the intellectual property code contains With regard to legal PR, conoeming TCT professionals including computer the most important prove aws which govern the use of technology such as the and electronic engineers. (ves Regulation Act and the Cybercrime Law generally E-Commerce Law, ae fer usage of technologies and penalize those who shall Contain.the norms and P' moparty ‘code, on the other hand, contains provisions Saber, ie int ts of Puthors, inventors, programmers and other gifted citizens protect the ns. Tegarding their intellectual creation 1s~ Under the Re ee Nf 'e Republic Act 8293 oth nas the Intellectual Property Cody of bs Philippines, the term “intellectual property rights” consists of (2) Copyrighy ‘ aa related rights; (b) Trademarks and Service Marks; (c) Geographic Elation @ strial Designs: ; Information 8" ©) Patents (f) Layout-designs and (g) Protection of Mndlslosed From the above intell is ill deal more on pate, ellectual i chapter wil ants and capyiighis te property rights, this chap! 2PyTights since programmers and other ICT professionals are concerned more on these two intellectual property rights, State Policy Regarding Intellectual Property Section 2 of RA 8293 provides: . Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property systenvis 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) An effective intellectual and industrial property system is vital. 1. To the developement of Domestic and Creative activity, 2. Facilitates Transfer of Technology. This is due to the fact that if the State cannot afford to protect the creative activities done by scientists, artists, inventors, composers, and other gifted citizens, they will be discouraged to do such activities, and in case they do, they wort share or transfer it to the public due to fear of infringement of their intellectual properties; + 3, Attracts Foreign Investments. Our country had entered into treaties and intemational agreem, cies foreign countries regarding the protection of intellectual property iawe ollusa® McDonalds’ trademark is originally registered in the US. Since McDonalds ® Mtemationally known, our country, pursuant to interatonal committe i 2° ound to protect the trademark / tradename owner of McDonalds. Thus, if Jah a Filipino, is using the trademark of McDonalds without the permission of intter our government shall prosecute Juan, notwithstanding the fact that Juan is? Filipino. 1164. Ensures Market A, trademark of go ods vi tS Our Products. This means that a business who owns the unless it authorizes anothc sud that it would be sole distributor of that product the trademark “havaiansen (7 2 (ee (franchise fee). For instance, .f Faye owns havaianas. This wil] ehaus ’ only Faye can produce, manufactured and distribute Protected because the Gann ess (0 Faye's products. Moreover, consumers will be ofhavaianas. But dear noe ment will prosecute those unauthorized distributor the law says, the beaut at Please don’t get me wrong, what I am saying is what these laws and State 1° Ou! aws and our State policies, but I am not saying that ‘Ste policies are fully complied with by our Government. rohan thet the above State policies will be fully executed and fully beefed ee last sentence of the first paragraph of Sec. 2 of RA. 8298 will * d us: Tt shall. Protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when benefici i provided in this Acc), "hen beneficial to the people, for such periods as 5. 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. How can the State promote the diffusion of knowledge? To illustrate, suppose Engr. Sean T. Abako designed a car with a mechanical engine capable of running without a gasoline: Instead, it uses specialized water formulated by Engr. Sean. Now Sean has two (2) options, thus: First, he may keep his invention formula secret. This way, the public has no option but to buy engines directly from Engr. Sean. Sean has no reason to be afraid because he is confident that no one can imitate his work, Bear in mind that when a person registers his patentable inventions in the Intellectual Property Office (IPO), he is NOT doing it solely for credit or for popularity, but for protection - protection from unfair competition. Even if Engr. Sean would not register his invention, people would come to recognize him. You may ask, is there any reason why Engr. Sean would NOT register his patentable inventions to the IPO? The answer is yes. In registering a patentable invention, the applicant will reveal his formula and explain before experts in the same field that his Mak is new, involves inventive steps and is industrially applicable. Thus, if one of the experts (agent of the government) would falsely deny the claim of the inventor, eit renuity, the invention was in effect already stolen from the inventor. Why? SPE needy revealed to the government his secret which involved inventive Becase he ra zt it back because he already diffused his knowledge, that is, the Steps le co Bealed! 1 am not alleging that this is happening in our government; bro en eigim the contrary, I am just stating this so that we can appreciate the either do I Cffective intellectual and industrial property system. If we don’t have te wun inventors will diffuse their inventions in foreign countries, NOT in ours. 7Now, are there disady. will die, the invention wi not be subjected anymo: reinvent the wheel”, antages if Sean won't register? Yes, of Cours® Li Sean ill be buried with him in the grave. Worst, the {YSN wil re to improvement. The public will have no choice bu if they can, Can we? Second, if Sean won't mize profit from Why? Because he cannot afd share hs sees toanyone because NE WenLON Rot protected by the State. If that is so, the manufacturing and design of his engine is very limited. If he hires employees to do his work, there is no guarantee that such employee will be loyal to him. Chances are, after knowing his secret invention, his employee will leave him, establish his own business and worst, register the patent in his name to the prejudice of Sean! Will the State protect Sean? No, because he did NOT register his patent. “NO PATENT, NO PROTECTION” (Pearl and Dean vs SMI. GR No. 148222. August 15, 2003). Worst, the State will protect the said employee of Sean under the principle of “First to file rule". Section 29 of the Intellectual Property Code reads: ‘Sec. 29. First to File Rule. -f two (2) or more persons have made the invention separately Gnd independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the Same invention, to the applicant who has the earliest filing date or, the earliest priority date. (3rd Sentence, Sec. 10, R. A. No. 1650.) Now, let us discuss the second option of Sean, that is, to register his patentable inventions. Consequently, Sean will have to comply with a tedious process required by Sections 40 to 55 of the IPC. At the outset, let me say that, the stringent process required by the IPC is justified, the reasons for which, will be explained later. ‘Advantages of Securing a Patent. A holder of letters patent is entitled to a full protection of the State. As such, considering the case of Engr. Sean T. Abako, he has the right to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing his mechanical engine. As a consequence, he can now hire employees to facilitate the designs of his engine. Even i such employee will resign, the later cannot design Sean's patented mechanical engine without the permission of Sean. At the option of Sean, he can authorize persons as distributors for a specific place. For example, Sean may authorize Faye (of course fora) fee) to be the sole distributor in Laguna, JD in Cavite, ete. This way, will be maximized. Sean is entitled to this right for a this period, the State shall row own the inventions and will be open to the public lo! further exploitation and improvement, In case Sean will die prior to the expiration ol the twenty year period, he can transfer by succession his patent. By succession me Sean, in his Last Will and Testament, may transfer his right to the pate heirs. Engr Sean's protit Period of twenty (20) years. After int to one of his Ifthe intellectual property law will be executed accordingly, : Iseeno disadvantages of registering one’s patentable inventions, ee no disadvantigThe patent law has a three-fold purpose: “first, patent law seeks to foster and reward invention; second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public.”. Itis only after an exhaustive examination by the patent office that a patentiis issued. Such an in-depth investigation is required because “in rewarding a useful invention, the rights and welfare of the community must be fairly dealt with and effectively guarded. To that end, the prerequisites to obtain a patent are strictly observed and when a patent is issued, the limitations on its exercise are equally strictly enforced. To begin with, a genuine invention or discovery must be demonstrated lest in-the constant demand for new appliances, the heavy hand of tribute be laid on each slight technological advance in art.” ” (Pearl and Dean vs SMI, G.R. No. 148222. August 15, Most Common Intellectual Property Trademark, copyright and patents are the most common intellectual property rights. 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 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 vs. CA, 3/19/2002) Obviously violations involving trademark is called trademark infringement; for copyright, copyright infringement and for patent, patent infringement. To have a quick understanding about these breaches, le’s take a look at the case of Pearl and Dean vs SMI. The following is the digested version of the case for your easy understanding. [G.R. No. 148222. August 15, 2003] PEARL & DEAN (PHIL), INCORPORATED, vs. SHOEMART, INCORPORATED.ET AL Facts: Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply referred toas lightboxes; These units liz specially printed posters sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January 20, 1981 over these illuminated display units. The advertising light boxes were marketed under the trademark “Poster Ads”. 19Sometime in 1985, Pe; Inc. (SMI for the lease at ind Dean negotiated with defendant-appellant Shoemary SM City North Ed lease and installation of the light boxes in ey ay emdees fr x2 Was under construction at that time, SMI of : Pest abst and SM Cubao, to which Pear and Dean agreed. On September 1, 1955, Pearl and Dean's General Manager, Rodolfo Vergara, submitted fer signee the Pubneat® Covering SM Cubao and SM Makati to SMI Advertising Promotions ang Rarlicty Division Manager, Ramonlito Abano. Only the contract for SM Makat, however, was returned signed, : ‘Two years later, SMI contra it ial Services, the company SI \cted with Metro Industrial , the formerly contracted by Pearl and Dean to fabricate its display units. After its contract With Metro Industrial was terminated, SMI engaged the services of EYD Rainbow ‘Advertising Corporation to make the light boxes. Some 300 units were fabricated in UROL. These were delivered on a staggered basis and installed at SM Megamall and SM City. In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI's establishments. It also demanded the discontinued use Of the trademark “Poster Ads,” and the payment to Pearl and Dean of compensatory damages in the amount of Twenty Million Pesos (P20,000,000.00). Issues: (1) if the engineering or technical drawings of an advertising display unit (light box) are granted copyright protection (copyright certificate of registration) by the National Library, is the light box depicted in such engineering drawings ipso facto" also protected by such copyright? (2) or should the light box be registered separately and protected by a patent issued by the Bureau of Patents Trademarks and Technology Transfer (now Intellectual Property Oifice) — in addition to the copyright ofthe engineering drawings? (3) can the owner of a registered trademark legally prevent others from using such trademark if it is a mere abbreviation of a term descriptive of his goods, servis or business? Ruling: On the Issue of Copyright Infringement Petitioner P & D’s complaint was that SMI infringed on its co boxes when SMI had the units manufactured by Metro and EYD. for its own account. Obviously, petitioner's position wa: its copyright ove! Pyright over the light _ Rainbow Advertising A Premised on ji ie it the engineering drawings extended ipso fnere wo heen bestdepicted or illustrated in said drawings. i for the followi seasorie: irawings. This premise was wrong for the following piven aS We find that P & D indeed owned a valid copyright, the same could have Freed rly to the technical drawings within the category of “pictorial illustrations.” t could not have possibly stretched out to include the underlying light box, _, Uf SMI and NEMI reprinted P & D's technical drawings for sale to the public without license from P & D, then no doubt they would have been guilty of copyright infringement. But this was not the case, SMI’s and NEMI's acts complained of by P & D were to have units similar or identical to the light box illustrated in the technical Gewings manufactured by Metro and EYD Rainbow Advertising, for leasing out ferent advertisers. Was this an infrit em titioner’s copyright over the technical drawings? The Sc ana. inietngement-of pel Pyrigh On the Issue of Patent Infringement ‘This brings us to the next point: if, despite its manufacture and commercial use of the light boxes without license from petitioner, private respondents cannot be held legally liable for infringement of P & D's copyright over its technical drawings of the said light boxes, should they be liable instead for infringement of patent? We do not think so either. +, For some reason or another, petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which could have protected its invention, if in fact it really was. And because it had no patent, petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. Note: / could have deleted the subsequent paragraphs and just state that since there is no patent, P & D cannot acquire any protection. However, the wording of the SC in the {following paragraphs is rich in both moral and legal doctrines. There can be no infringement of a patent until a patent has been issued, since whatever right one has to the invention covered by the patent arises alone from the grant of patent. x x x (An inventor has no common law right to a monopoly of his invention, He has the right to make use of and vend his invention, but if he voluntarily discloses it, such as by offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives the inventor the right to exclude all others. As a patentee, he has the exclusive right of making, selling or using the invention. On the assumption that petitioner’s advertising units are patentable inventions, petitioner revealed them fully to the public by submitting the engineering drawings thereof to the National Library. ively and legally preclude others from copying and profitin ee beable 1 eaten is a primordial requirement. No patent, no piocion Poe ine invert) of a patent system is to bring new designs and technologies into Zhe ultimate go* through disclosure. Ideas, once disclosed tothe public witont the oe eae dm id patent are subject to appropriation without significant restraint rotecti 121‘The law attempts to strike an ideal balance between the two interests: on the cfeatiee aa system thus embodies a carefully crafted bargain for encouraging an etn and disclosure of new useful and non-obvious advances in technology Of yeaa Than Zetum for the exclusive right to practice the invention for a number Paces atte inventor may keep his invention secret and reap is fruits indefinitely Patent i eetion ofits disclosure and the consequent benefit tothe community, the the expir Branted. An exclusive enjoyment is guaranteed him for 17 years, but upon ‘ation of that period, the knowledge of the invention inures to the people, who are thus enabled to practice it and profit y its use.” ____There is no such scrutiny in the case of copyrights nor any notice published before its grant to the effect that a person is claiming the creation of a work. The law confers the copyright from the moment of creation and the copyright tertificate is issued upon registration with the National Libraty of a swom ex-parte claim of creation. Therefore, not having gone through the arduous examination for patents, the petitioner cannot exclude others from the manufacture, sale or commercial use of the light boxes on the sole basis of its copyright certificate over the technical drawings. Stated otherwise, what petitioner seeks is exclusivity without any opportunity for the patent office (IPO) to scrutinize the light box’s eligibility as a patentable invention. The irony here is that, had petitioner secured a patent instead, its exclusivity would have been for 17 years only. But through the simplified procedure of copyright. registration with the National Library — without undergoing the rigor of defending the patentability of its invention before the IPO and the public — the petitioner would be protected for 50 years. This situation could not have been the intention of the law. In the oft-cited case of Baker vs. Selden, the United States Supreme Court held that only the expression of an idea is protected by copyright, not the idea itself. In that case, the plaintiff held the copyright of a book which expounded on a new accounting system he had developed. The publication illustrated blank forms of ledgers utilized in such a system. ‘The defendant reproduced forms similar to those illustrated in the plaintiff's copyrighted book. The US Supreme Court ruled that: “There is no doubt that a work on the subject'of book-keeping, though only explanatory of well known systems, may be the subject ofa copyright; but, then, it claimed only as a book. xxx. But thereis a clear distinction between the books, as such. Sn the art, which itis, intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction thay be predicated of every other art as well as that of bookkeeping. A treatise on he Composition and use of medicines, be they old or new; on the construction and use ploughs or watches or churns: oon the mixture and application of colors for paint ae feing, or on the mode of drawing lines to produce the effect of perspective, woul De the subjectof copyright butno one would contend thatthe copyright ofthe treatit would give the exclusive right to the art or manufacture described therein. Th of the book, if not pirated from other works, would be valid without rego" want of novelty of its subject matter. The novelty ofthe art thie Jained has nothing to do with the validity of the copyright. ‘To eve copyright to the novelty oF described or &xP 122remak at exclusive property in the art described therein, when no fraud upon the patie | has ever been officially made, would be a surprise and a dlaim to an invention of drt the Province of letters patent, not of copyright. The examination of the Pate coef a8 art or manufacture must be subjected to the a patent from the go nent Oifice before an exclusive right therein can be obtained; and ‘© government can only secure it. The diffe ilustrated by refers eee, the two things, letters patent and copyright, may be ae ice to the subjects just enumerated.’ Take the case of medicines. ae ae ee found to be of great value in the healing art. If the discoverer wine Ho Gataclie 2 book on the subject (as regular physicians generally do), he the public: Tf he ie ett © the manufacture and sale ofthe medicine; he gives that to the prixtuve aso cesitesto acquire such exclusive right, he must obtain a patent for his book if @ new art, manufacture or composition of matter. He may copyright ‘ook, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries. ____ The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book without getting a patent for the art, the latter is given to the public. On the Issue of Trademark Infringement This issue concerns the use by respondents of the mark “Poster Ads” which petitioner's president said was a contraction of “poster advertising.” P & D was * able to secure a trademark certificate for it, but one where the goods specified were “stationeries such as letterheads, envelopes, calling cards and newsletters.” Petitioner admitted it did not commercially engage in or market these goods. On the contrary, it dealt in electrically operated backlit advertising units and the sale of advertising ~ spaces thereon, which, however, were not at all specified in the trademark certificate ‘Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P & D to secure a trademark registration for specific use on the light boxes meant that there, could not have been any trademark infringement since registration was an essential element thereof. The Issue on Unfair Competition of things, there can be no unfair competition under the law on f it is applicable to disputes over the use of trademarks, Even a yr eapabl ape propdation as a trademark or tradename may, by long name OF Pray use by a business (such that the name or phrase becomes associated and exclusive (ees oF product in the mind of the purchasing public), be entitled to with the busines! Sr fair competition. In this case, there was no evidence that P & D’s protection agai vas distinctive or well-known. As noted by the Court of Appeals, ee goner’s expert witnesses himself had testified that “ ‘Poster Ads’ was too generic By the nature 123it aking.” Thi. @ name. So it was difficult to identify it with any company, honesty Pr a 8: ae aia mission by its own expert witness that “Poster Ads’ could eae showed that, in the mind of the public, the goods eeu the trademark “Poster Ads” could nat he disspuighed from the goods and services of other entities. could not be distinguis pestis fact also prevented the application of the doctrine of ie Poster Ads” was generic and incapable of being used as a trademark US28 was liged in the field of poster advertising, the very business engaged abl "of exclusive ‘Secondary meaning” means that a word or phrase originally incapable O° Xs ily appropriation with reference to an article in the market (because it is BPE Neally & ptherwise descriptive) might nevertheless have been used for so, OB ait so Exclusively by one producer with reference to his article that, in the trac HEE © Mat branch of the purchasing public, the word or phrase has come to mean that ths aie was his property. The admission by petitioner's own expert witness that he himself Could not associate “Poster Ads” with petitioner P & D because it was “too generic’ definitely precluded the application ofthis exception. a Having discussed the most important and critical issues, we see no need to belabor le rest. Are Computer Programs Patentable? Before we look into the intellectual property code to see the answer, let us try to answer this question applying the knowledge welearned in the case of Pearl and Dean vs. SMI. Recall that when something is being patented, the patent owner can deprive others from using his patent for a period of twenty (20) years (before 1998, 17 years), Can we afford to apply this patent process in computer programs? The answer is NO. ‘Thus, as a general rule computer programs cannot be a subject of a patent. Recall also that the elements of a patentable invention are: 1. Itis a technical solution of a problem in any field of human activi 2. Itmust be new; 3. It must involve an inventive steps; and 4, It must be industrially applicable. Considering the above elements, element No. 3 is absent wit! programs. Take for instance the swapping algorithm swap( exchange the values of two parameters x and y, ima; patent, which means to say, others will be deprived twenty (20) years! th regard to computer wap(x,y), which swap or ‘gine if someone applies for its to use such algorithm for the next Now let’s consult the Intellectual Property Law, Section 22 of RA 8293, reads: 124Section 22. Non-Patentable Inventions. - The following shall be excluded from patent protection: 20K 22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 20% ‘The law is very clear that programs for computers shall be excluded from patent Protection. This is because if the law is otherwise, programmers will be deprived of using or even thinking of a simple algorithm like the swap algorithms. The swap algorithm can be designed by a novice programmer and hence, does not involve an inventive steps, So, how can programmers protect their programs? The answer is found in Section 172. which reads: 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: (2) Books, pamphlets, articles and other writings; (b) Periodicals and newspapers; (c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; (d) Letters; (e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; (f) Musical compositions, with or without words; (g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; 4 (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) IMustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science; (i). Drawings or plastic works of a scientific or technical character; (k) Photographic works including works produced by a process analogous to photography; lantern slides; ()) 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 (0) Other literary, scholarly, scientific and artistic works. 125Jaw, Section 172 is under ye law, SEC As a guide in interpreting the above provision of the puter programs shall be PART IV - LAW ON COPYRIGHT of RA 8293. Thus, “ governed by the rules of copyright ownership. Real Life Problem. ast nine (9) years, Lam ‘ed in the IT industry As dean of the College of Information Technology for the wrote. One of these often consulted by my former students who are already employ regarding the legal implications concerning the programs problems is similar to the succeeding problem. versity, obviously, Part of Andrei is a computer programmer of Tabako Universi orciation. Buting Andrei jab description is to design and create programs for th® COT tomnatically the course of his employment, Andrei was able to create a syste! f faculty members, The prepared the student schedules as well as the teaching loads of faculty Me en system was proven to utilize the room usage as well as n minimizing ™ Om vacant hours of regular students. After several years, Andrei transferre University, also as a computer programmer. Can Tabako University restrain Andrei from using the system he developed originally for them so that Marlboro University cannot use them? To answer this problem, we must have a deep understanding of a copyright. On the early part of this chapter, we learn that the scope of a-copyright is confined to literary and artistic works which are original intellectual creations in the litérary and artistic domain protected from the moment of their creation. But this refers ONLY to the scope of a copyright; it does NOT define what a copyright as a right. Definition of Copyright Unlike patents and trademarks, registration in the Intellectual Property Office (IPO) of a copyright is not required for the owner to acquire protection because they are protected from the moment of their creation (Sec 172, RA 8283), However, for record purposes, the owner may register the same with the National Library, Copyrights the author's legal ownership of his or her o: in the literary and artistic domains. It is synonymous to e the owner the exclusive rights to carry out, authorize or riginal intellectual creations ‘conomic rights which entitle Prevent the following acts: 1. Reproduction of the work or substantial portion of the work; 2. Dramatization, translation, adaptation, abridgment, ar transformation of the work; arrangement or other 3, The first public distribution of the original and each other forms of transfer of ownership; SGN COPY Of the work by sale or 4. Rental of the original or a copy of an audiovisual or ci embodied in a sound recording, a computer pr 'Braphic work, a work other materials or a musical work in graphic f mPilation of data and form, i : of the original or the copy which is the subject of the, tent fe of the ownership gram, a co; 1265.- Public display of the oy 6. Public performance of 7. Other communication iginal or a copy of the work; wile the work; and to the public of the work. (Sec. 5, P. D. No. 49a) Ownership of Copyright ‘The pertinent provision of RA 8293 provid Section 178. Rules on Copyright o, = Copyric ership shall be governed by fhe felon see ight Ownership. - Copyright ownership 378.1 Subject to the provisions of this section, In the case of original literary and artistic * copyright shall belong to the author oft the work; 1782. Inthe 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 ¢O-owmership. I, 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 bbe the original owner of the copyright in the part that he has created; 4178.3. 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 emplover, 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. Let us now try to resolve the question: Questior Can Tabako University restrain their programmer Andrei, he developed originally for them so that Marlboro University them? from using the system and others cannot use ‘Answer: Under the Intellectual Property Law particularly Section 178.3 (b), the copyright belongs to the Tabako, the employer because Andrel, the programmer-employee developed the said system as a result of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary. This provision of the law only placer akan ship issue of the source code, between the programmer and his employer. - ision of the law, Tabako University can restrain And £ the above provision of y in Andrei ae ising the system he originally developed for,them, However, the next question 127only Tabako can Could be, “who cares to use that system of Tabako?” Practically, nly Tabako can, use the system because itis tailored fit for them. In other words, © Practically use them, No matter how flexible the system is being designed, there would, eee be, some permanent features of the system which will be useless, impractical an Of tha ible to other business enterprises, Come to think of it, despite he - of their operations, McDonalds and Jollibee are not using the same system. Amore practical question should be, “Can Tabako University oF ny copra toler Of @ source code restrains Andrei and others from developing a system whic : Features as that of their copyrighted source code?” the case of Pearl and Dean vs SMI, which [have previously shown, uF SC court held, citing foreign jurisprudence that ‘only the expression of an idea is protected by Copyright, not the idea itself, Thus, even if Tabako is the owner of the copyright of the Source code, the same could have referred only to the code itself. It could NOT have Possibly stretched out to include the system generated by other source code whose algorithm is NOT the same or identical to some other copyrighted source code. Lastly, in the case of Imperial Homes Corp vs. Lamont, and Scholtz Homes,Inc vs. Maddox, cited in Pearl and Dean vs. SMI, it has been held that, “a copyrighted architectural plan does NOT extend to the structures themselves. Now, you may ask, what is the extent of copyright protection? How can Andrei and others be held liable for copyright infringement with regard to the source code owned by Tabako Corporation? ‘The answer is STILL found in the case of Pearl and Dean vs. SMI. In that case, ‘Chief Justice Renato Corona (the one who wrote the decision) said: In fine, if SMland NEMI reprinted P & D’s technical drawings for sale to the public without license from P & D, then no doubt they would have been guilty of copyright infringement. With the same legal basis, if Andrei reprinted the source code owned by Tabako Corporation forsale tothe public without license from Tabako, then ne deer nes would have been guilty of copyright infringement. In addition, if the cop righted source code of Tabako, without any modification is compiled by Anacery ees constitute copyright infringement because the object file which will be wert an executable file wll SURELY contain information thatthe eystem ig cent ny Tabako University. yy Can the Employer Demand as a Matter of Right the Sourc Developed by His Programmer-Employee? © Code of the System AAs a general rule yes, because he is the copyright owner of the 7 1783(b)) Thisrule, however, admits of anexception, thats, when Heme code (Se that the programmer-employee shall own the copyright ofthe soc ‘Sanagree 128Bear in mind that Sec. 1783 deals with the ownership of the copyright. The agreement mentioned in this section is not about whether the programmer may or may not share the source code. The agreement is about the ownership of the source code. However, as a consequence, if there is an agreement that the programmer-employee shall own the copyright of the source code, the programmer can deny his employer a copy of the source code, If the contract is silent, the general rule will apply, that is, the employer shall own the source code. It is my personal opinion that the law is fair. If the programmer resigns, at least, the employer can still have the option to continue and/or improve the system. This will NOT be possible ifthe programmer will keep its program or source code. If the Employee was Able to Develop or Design a Patentable Inventions During the Course of his Employment Using the Facilities and Materials of His Employer, Who Shall Own the Patent? Section 30.2 reads: In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. (b) The employer, if the invention is the result of the performance of his regularly- assigned duties, unless there is an agreement, express or implied, to the contrary. (n) The answer is similar to that of copyright ownership. Here, the determining factor is whether or not the inventive activity is part of the regular duties of the employee. Ifit is NOT, then the employee owns the patent notwithstanding the fact, that he uses the facilities arid materials of the employer. If the inventive activity is part of the employee's regularly assigned duties, then the patent shall belong to the employer, UNLESS there is an agreement to the contrary, express or implied. Did you notice that that the law only allows a compromise on the ‘ownership of a patent /copyright in case the inventive activity / work is part of the regularly-assigned duties of an employee? In such case, the general rulé is that, the patent shall be owned by the employer. This. rule admits of an exception, which is, if there is an agreement to the contrary, express or implied, the patent shall belong to the employee If the inventive activity and/or copyrighted work is NOT part of the regular duties of an employee, the absolute rule is that, the patent / copyright shall belong to the employee. 129him where there ig If a person cominissioned a programmer to design @ syste (ownershiP the same? NO employer-employee relationship, is the rule of copy" Jaticnship th ee rel “ The rule is NOT the same. If there is an employer mre re is an agreement, copyright AND the work both belongs to the employer, UNI express or implied, to the contrary. ‘ on who commissioned POSOYRIGHT thereto shall If there is no employer-employee relationship. the Pip the contrary (Sec 178.4 the work shall have the ownership of the work, BUT the Ct remain with the creator, unless there is a written stipulation RA 8293). Why is it that the rules are different? etl ied When there is an employer 2m payee a granimer reasonable o presume that the elationshipot ts Pe Sr aid his employer is continuous, Under Sec. >, "OTT it of the Philippine Constitution, the State shall PETES Tit principle of shared responsibility between workers ad employers. Thus, the employees shall have a just shore ‘nthe fruits of production and the employer to reasona™ © Netra in investments, for expansion and growth. On the other hand, where a work is commissioned, the above provisions do not apply considering that from the very start of the undertaking, both parties are aware of their temporary relationship. However, the law allows the two parties to stipulate in their contract who will have the copyright ownership. The reason for this is because if the law would be absolute as regards the ownership of copyright, it would be very difficult for the two parties to have a perfected contract. Did you notice that the rules of ownership regarding commissioned work are different regarding patent and copyright? In patent, the person who commissioned the work owns the patent, unless otherwise provided in the contract. Copyright as Distinguished from the Material Object Section 181 of the IPC reads: Section 181. Copyright and Material Object. -The copyright is distinct from th the material object subject to it. Consequently, the transfer or. esignrent of the copyright shall not tzef constitute transfer of the material object. Nor shella transferor aster one of the sole copy or of one or several copies ofthe work imply transfer or occ copyright. Fer or assignment of the To illustrate, suppose the TABAKO University commissione, for them a SCHEDULER SYSTEM which automaticaly generatea neni schedules of students as well as the teaching loads of professors. A, a efficient class program, Andrei provided TABAKO University an installer of theron ning the SYSTEM. During the installation process, the license agreement tien Lay eere een : ndrei an 'd Andrei to develop 130Tabako University shall appear which reads: “This installer packageof SCHEDULER SYSTEMis licensed only to TABAKO University. Any unauthorized use of this package shall be subject to CRIMINAL PROSECUTIONS!” If the contract is silent as regards to ownership of the copyright, Andrei, the author of the work shall own the copyright. What is the legal consequence of this? Andrei shall own the source code and may deprive TABAKO any copy of the code. rate Sub etna cy Bins gu seis Sg ne oBSDe sect fal mcg eee ‘Slaonaitae BOF = False dg EOF = Fala Then voue ue Then enasbUL Felts gan Vale, Mt, Fret Matext=" Ena Sane ate Then . il oesRoPYLRebsC YR) Vatu, 1,72) Else Seer =O Sali esssieuLRels(ot.vatse, Wt, we (eat. vale, Ee ences iret arent Enait ai Filist ta Vabe, THI, Ese een ett SOURCE CODE era Eihaaaacranecw alum, 4, 2) <3 La poset Ratstoey vate, SA, $72) en ‘Snes 1 Sie Seton cut Celta nn vate other ‘dala cabooses ke, 501, te cree 1 aes suatets ew Enait EE. soning ‘As Sting, Cbt Ae Object, ! sub cz ms Ouea) © This is the intellectual creation, the intellectual property which belongs to the programmer. BI