Professional Documents
Culture Documents
SUGGESTED ANSWER:
a) Solid owns the mural. Solid was the one who commissioned the artists to Copyright; Infringement (1997)
do the work and paid for the work in the sum of P2m In an action for damages on account of an infringement of a copyright, the
b)Unless there is a stipulation to the contrary in the contract, the copyright defendant (the alleged pirate) raised the defense that he was unaware that
shall belong in joint ownership to Solid and Mon and Steve. what he had copied was a copyright material. Would this defense be valid?
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alleged pirate is thus made aware thereof, his act of pirating the copy
material will constitute infringement. Infringement vs. Unfair Competition (1996)
What is the distinction between infringement and unfair competition?
Copyright; Infringement (1998)
Juan Xavier wrote and published a story similar to an unpublished SUGGESTED ANSWER:
copyrighted story of Manoling Santiago. It was, however, conclusively proven The distinction between infringement (presumably trademark) and unfair
that Juan Xavier was not aware that the story of Manoling Santiago was competition are as follows:
protected by copyright. Manoling Santiago sued Juan Xavier for infringement 1) Infringement of trademark is the unauthorized use of a trademark,
of copyright. Is Juan Xavier liable? (2%) whereas unfair competition is the passing off of one‘s goods as those of
another;
SUGGESTED ANSWER: 2) Fraudulent intent is unnecessary in infringement of trademark, whereas
Yes. Juan Xavier is liable for infringement of copyright. It is not necessary fraudulent intent is essential in unfair competition;
that Juan Xavier is aware that the story of Manoling Santiago was protected 3) The prior registration of the trademark is a prerequisite to an action for
by copyright. The work of Manoling Santiago is protected at the time of its infringement of trademark, whereas registration of the trademark is not
creation. necessary in unfair competition. (Del Monte Corp v CA 78325 Jan 25,90
181s410)
Copyright; Infringement (2006)
In a written legal opinion for a client on the difference between Infringement vs. Unfair Competition (2003)
apprenticeship and learnership, Liza quoted without permission a labor law In what way is an infringement of a trademark similar to that which pertains to
expert's comment appearing in his book entitled "Annotations on the Labor unfair competition?
Code." Can the labor law expert hold Liza liable for infringement of copyright
for quoting a portion of his book without his permission? (5%) SUGGESTED ANSWER:
The distinction between infringement (presumably trademark) and unfair
SUGGESTED ANSWER: competition are as follows:
Liza cannot be held liable for infringement of copyright since under the 1) Infringement of trademark is the unauthorized use of a trademark,
Intellectual Property Code, one of the limitations to the copyright is the whereas unfair competition is the passing off of one‘s goods as those of
making of quotations from a published work for purpose of any judicial another;
proceedings or for giving of professorial advice by legal practitioner, provided 2) Fraudulent intent is unnecessary in infringement of trademark, whereas
that the source and name of the author are identified (See Section 184.1[k] of fraudulent intent is essential in unfair competition;
the Intellectual Property Code of the Philippines). 3) The prior registration of the trademark is a prerequisite to an action for
infringement of trademark, whereas registration of the trademark is not
Copyright; Photocopy; when allowed (1998) necessary in unfair competition. (Del Monte Corp v CA 78325 Jan 25,90
May a person have photocopies of some pages of the book of Professor 181s410)
Rosario made without violating the copyright law? (3%)
Infringement; Jurisdiction (2003)
SUGGESTED ANSWER: K-9 Corporation, a foreign corporation alleging itself to be the registered
Yes. The private reproduction of a published work in a single copy, where the owner of trademark ―K-9‖ and logo ―K‖, filed an Inter Partes case with the
reproduction is made by a natural person exclusively for research and private Intellectual Property Office against Kanin Corporation for the cancellation of
study, is permitted, without the authorization of the owner of the copyright in the latter‘s mark ―K-9‖ and logo ―K.‖ During the pendency of the case
the work. before the IPO, Kanin Corporation brought suit against K-9 Corporation
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before the RTC for infringement and damages. Could the action before the materials and company time in making the devices, will his claim prevail over
RTC prosper? Why? those of his employees? Explain.
SUGGESTED ANSWER: 3)No, Joab's claim cannot prevail over those of his employees. In the first
Yes, the IPO is correct because under the Intellectual Property Code, place, Joab did not commission any of the two employees to invent the
discoveries, scientific theories and mathematical methods, are classified to device, and its invention did not fall within their regular duties. What prevails
be as "non- patentable inventions." Eintein's theory of relativity falls within the is the provision of the Intellectual Property Code that holds that the invention
category of being a non-patentable "scientific theory." belongs to the employee, if the inventive activity is not a part of his regular
duties, even if he uses the time, facilities and materials of the employer.
Patents: Gas-Saving Device: first to file rule (2005)
Cezar works in a car manufacturing company owned by Joab. Cezar is quite Patents: Infringement; Remedies & Defenses (1993)
innovative and loves to tinker with things. With the materials and parts of the Ferdie is a patent owner of a certain invention. He discovered that his
car, he was able to invent a gas-saving device that will enable cars to invention is being infringed by Johann.
consume less gas. Francis, a co-worker, saw how Cezar created the device 1) What are the remedies available to Ferdie against Johann?
and likewise, came up with a similar gadget, also using scrap materials and 2) If you were the lawyer of Johann in the infringement suit, what are the
spare parts of the company. Thereafter, Francis filed an application for defenses that your client can assert?
registration of his device with the Bureau of Patents. Eighteen months later,
Cezar filed his application for the registration of his device with the Bureau of SUGGESTED ANSWER:
Patents. 1) The following remedies are available to Ferdie
1) Is the gas-saving device patentable? Explain. (a)To an injunction restraining such infringement. The court may also order
2) Assuming that it is patentable, who is entitled to thepatent? What, if any, is the defendant to desist from
the remedy of the losing party? an infringement, among others, to prevent the entry into the channels of
3) Supposing Joab got wind of the inventions of his employees and also laid commerce of imported goods that involve an infringement, immediately after
claim to the patents, asserting that Cezar and Francis were using his customs clearance of such goods
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(b) Pay to the copyright proprietor or his assigns or heirs such actual SUGGESTED ANSWER:
damages, including legal costs and other expenses, as he may have incurred I would not exempt the alleged violator from liability for the following
due to the infringement as well as the profits the infringer may have made reasons:
due to such infringement, and in proving profits the plaintiff shall be required
1) A patent once issued by the Patent Office raises a presumption that the
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, article is patentable; it can, however be shown otherwise (Sec 45 RA 165). A
such damages which to the court shall appear to be just and shall not be mere statement or allegation is not enough to destroy that presumption.
regarded as penalty. (Aquas v de Leon 30 Jan 82 L32160)
2) An intention to infringe is not necessary nor an element in a case for
(c) Deliver under oath, for impounding during the pendency of the action, infringement of a patent.
upon such terms and conditions as the court may prescribe, sales invoices 3) There is no need of exact duplication of the patentee‘s existing patent
and other documents evidencing sales, all articles and their packaging
such as when the improvement made by another is merely minor (Frank v
alleged to infringe a copyright and implements for making them.
Benito, 51p713). To be independently patentable, an improvement of an
(d) Deliver under oath for destruction without any compensation all infringing existing patented invention must be a major improvement (Aquas v de Leon
copies or devices, as well as all plates, molds, or other means for making Gr. L-32160 30Jan82)
such infringing copies as the court may order.
Patents; Rights over the Invention (1990)
(e) Such other terms and conditions, including the payment of moral and Che che invented a device that can convert rainwater into automobile fuel.
exemplary damages, which the court may deem proper, wise and equitable She asked Macon, a lawyer, to assist in getting her invention patented.
and the destruction of infringing copies of the work even in the event of Macon suggested that they form a corporation with other friends and have
acquittal in a criminal case. the corporation apply for the patent, 80% of the shares of stock thereof to be
subscribed by Che che and 5% by Macon. The corporation was formed and
2, As a defense of my client I will in invoke Sec 29 of the Intellectual Property the patent application was filed. However, Che che died 3 months later of a
Code the First to file rule if not I will claim the cancellation of patent under heart attack.
section 61 of the Intellectual Property Code under the following grounds: Franco, the estranged husband of Che che, contested the application of the
(a) That what is claimed as the invention is not new or patentable; corporation and filed his own patent application as the sole surviving heir of
(b) That the patent does not disclose the invention in a manner sufficiently Che che. Decide the issue with reasons.
clear and complete for it to be carried out by any person skilled in the art; or
(c) That the patent is contrary to public order or morality. SUGGESTED ANSWER:
The estranged husband of Che che cannot successfully contest the
Patent; Infringement (1992) application. The right over inventions accrue from the moment of creation
In an action of infringement of patent the allege infringer defended himself, and as a right it can lawfully be assigned. Once the title thereto is vested in
by stating the transferee, the latter has the right to apply for its registration. The
1) that the patent issued by the Patent Office was not really an invention estranged husband of Che che, if not disqualified to inherit, merely would
which was patentable; succeed to the interest of Che che.
2) that he had no intent to infringe so that there was no actionable case for Note: An examinee who answers on the basis of the issue of validity of the
infringement; and transfer of patent as a valid consideration for subscription of the shares of
3) that there was no exact duplication of the patentee‘s existing patent but stocks should be given due credit.
only a minor improvement. With those defenses, would you exempt the
alleged violator from liability? Why? Trademark (1990)
In 1988, the Food and Drug Administration approved the labels submitted by
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Turbo Corporation for its new drug brand name, ―Axilon.‖ Turbo is now does not cover briefs and underwear.
applying with the Bureau of Patents, Trademarks and Technology Transfer The limit of the trademark is stated in the certificate issued to Laberge Inc. It
for the registration of said brand name. It was subsequently confirmed that does not include briefs and underwear which are different products protected
―Accilonne‖ is a generic term for a class of anti-fungal drugs and is used as by Larberge‘s trademark. JG can register the trademark ―PRUTE‖ to cover
such by the medical profession and the pharmaceutical industry, and that it is its briefs and underwear (Faberge Inc v IAC 215 s 316)
used as a generic chemical name in various scientific and professional
publications. A competing drug manufacturer asks you to contest the Trademark, Test of Dominancy (1996)
registration of the brand name ―Axilon‖ by Turbo. What will you advice be? What is the ―test of dominancy?‖
The application for registration of Turbo Corporation may be contested. The SUGGESTED ANSWER:
factual settings do not indicate that there had been prior use for at least 2 There is no infringement. In order that a case for infringement of trademark
months of the trademark ―Axilon. can prosper, the products on which the trademark is used must be of the
same kind. The electric fans produced by Best Manufacturing cannotbe said
Trademark (1994) to be similar to such products as TV, stereo and radio sets or cameras or
Laberge, Inc., manufactures and markets after-shave lotion, shaving cream, betamax products of Sony.
deodorant, talcum powder and toilet soap, using the trademark ―PRUT‖, ALTERNATIVE ANSWER:
which is registered with the Phil Patent Office. Laberge does not manufacture There is infringement. If the owner of a trademark which manufactures
briefs and underwear and these items are not specified in the certificate of certain types of goods could reasonably be expected to engage in the
registration. manufacture of another product using the same trademark, another party
JG who manufactures briefs and underwear, wants to know whether, under who uses the trademark for that product can be held liable for using that
our laws, he can use and register the trademark ―PRUTE‖ for his trademark. Using this standard, infringement exists because Sony can be
merchandise. What is your advice? reasonably expected to use such trademark on electric fans.
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Bureau of Patents, Trademarks and Technology (BPTTT) in 1990. PK
Company also manufactures rubber shoes with the trademark ―Javorski‖
which it registered with BPTTT in 1978. Trademark; Test of Dominancy (1996)
In 1992, PK Co adopted and copied the design of N Corporation‘s N Corporation manufactures rubber shoes under the trademark ―Jordann‖
―Jordann‖ rubber shoes, both as to shape and color, but retained the which hit the Phil market in 1985, and registered its trademark with the
trademark ―Javorski‖ on its products. Bureau of Patents, Trademarks and Technology (BPTTT) in 1990. PK
May PK Company be held liable to N Co? Explain. Company also manufactures rubber shoes with the trademark ―Javorski‖
which it registered with BPTTT in 1978.
SUGGESTED ANSWER: In 1992, PK Co adopted and copied the design of N Corporation‘s
PK Co may be liable for unfairly competing against N Co. By copying the ―Jordann‖ rubber shoes, both as to shape and color, but retained the
design, shape and color of N Corporation‘s ―Jordann‖ rubber shoes and trademark ―Javorski‖ on its products.
using the same in its rubber shoes trademarked ―Javorski,‖ PK is obviously May PK Company be held liable to N Co? Explain.
trying to pass off its shoes for those of N. It is of no moment that he
trademark ―Javorski‖ was registered ahead of the trademark ―Jordann.‖ SUGGESTED ANSWER:
Priority in registration is not material in an action for unfair competition as
distinguished from an action for infringement of trademark. The basis of an PK Co may be liable for unfairly competing against N Co. By copying the
action for unfair competition is confusing and misleading similarity in general design, shape and color of N Corporation‘s ―Jordann‖ rubber shoes and
appearance, not similarity of trademarks (Converse Rubber Co v Jacinto using the same in its rubber shoes trademarked ―Javorski,‖ PK is obviously
Rubber & Plastics Co GR 27425 and 30505, Apr28,80 97s158) trying to pass off its shoes for those of N. It is of no moment that he
trademark ―Javorski‖ was registered ahead of the trademark ―Jordann.‖
Trademark; Infringement (1991) Priority in registration is not material in an action for unfair competition as
Sony is a registered trademark for TV, stereo, radio, cameras, betamax and distinguished from an action for infringement of trademark. The basis of an
other electronic products. A local company, Best Manufacturing Inc produced action for unfair competition is confusing and misleading similarity in general
electric fans which it sold under the trademark Sony without the consent of appearance, not similarity of trademarks (Converse Rubber Co v Jacinto
Sony. Sony sued Best Manufacturing for infringement. Decide the case. Rubber & Plastics Co GR 27425 and 30505, Apr28,80 97s158)
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SUGGESTED ANSWER: to which any owner of an intellectual property right is otherwise entitled by
1.S Development Corporation has a better right to use the logo and the this Act. (n)" To illustrate: the Philippines may refrain from imposing a
tradename, since the protective benefits of the law are conferred by the fact requirement of local incorporation or establishment of a local domicile for the
protection of industrial property rights of foreign nationals (citizens of
of registration and not by use. Although Shangrila Corporation's parent had
Canada, Switzerland, U.S.) if the countries of said foreign nationals refrain
used the tradename and logo long before, the protection of the laws will be from imposing said requirement on Filipino citizens.
for S Development Corporation because it was the first entity to register the
intellectual properties. ALTERNATIVE ANSWER:
Reciprocity principle cannot be applied in our jurisdiction because the
2.The international affiliation of Shangrila Corporation may be critical in the Philippines is a party to the TRIPS agreement and the WTO. The principle
event that its affiliates or parent company abroad had registered in a foreign involved is the most-favored nation clause which is the principle of non-
discrimination. The protection afforded to intellectual property protection in
jurisdiction the tradename and the logo. A well-known mark and tradename is
the Philippines also applies to other members of the WTO. Thus, it is not
subject to protection under Treaty of Paris for the Protection of Intellectual really reciprocity principle in private international law that applies, but the
Property to which the Philippines is a member. most-favored nation clause under public international law.
b. Whether there are legal and ethical reasons that could frustrate his claim of
2004 Bar Exam exclusive ownership over the life-form called ―oncomouse‖ in Manila? What
will be your advice to him? (5%)
COPYRIGHT; COMMISSIONED ARTIST (2004) b. Francis is entitled to patent, because he has earlier filing date (sec 29
BR and CT are noted artists whose paintings are highly prized by collectors. IPC). The remedy of Cesar is to file a petition in court for the cancellation of
Dr. DL commissioned them to paint a mural at the main lobby of his new the patent of Francis on the ground that he is the true and actual inventor
hospital for children. Both agreed to collaborate on the project for a total fee and ask for substitution as patentee (sec 67-68 IPC)
of two million pesos to be equally divided between them. It was also agreed
that Dr. DL had to provide all the materials for the painting and pay for the c. The claim of Joab will not prevail over those of his employees, even if they
wages of technicians and laborers needed for the work on the project. used his materials and company time in making the gas-saving device. The
invention of the gas-saving device is not part of their regular duties as
Assume that the project is completed and both BR and CT are fully paid the employees (sec 30.2(a) IPC)
amount of P2M as artists' fee by DL. Under the law on intellectual property,
who will own the mural? Who will own the copyright in the mural? Why?
Explain. (5%) 2006 Bar Exam
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SUGGESTED ANSWER:
No, the Labor Law expert cannot hold Liza liable for infringement of
copyright. Under Sec 184.1(k) of the IPC. "Any use made of a work for the 2008 Bar Exam
purpose of any judicial proceedings or for the giving of professional advice by
a legal practitioner" shall not constitute infringement of copyright. COPYRIGHT; COMMISSIONED ARTIST (2008)
In 1999, Mocha warn, an American musician, had a bit rap single called
Warm Warm Honey which he himself composed and performed. The single
2007 Bar Exam was produced by a California record company, Galactic Records. Many
notice that some passages from Warm Warm Honey sounded eerily similar
COPYRIGHT; INFRINGEMENT (2007) to parts of Under Hassle, a 1978 hit song by the British rock and Majesty. A
Diana and Piolo are famous personalities in show business who kept their copyright infringement suit was filed in the United States against Mocha
love affair secret. They use a special instant messaging service which allows Warm by Majesty. It was later settled out of court, with Majesty receiving
them to see one another’s typing on their own screen as each letter key is attribution as co-author of Warm Warm Honey as well as a share in the
pressed. When Greg, the controller of the service facility, found out their royalties. By 2002, Mocha Warm was nearing bankruptcy and he sold his
identities, he kept a copy of all the messages Diana and Piolo sent each economic rights over Warm Warm Honey to Galactic Records for $10,000. In
other and published them. Is Greg liable for copyright infringement? Reason 2008, Planet Films, a Filipino movie producing company, commissioned DJ
briefly.(5%) Chef Jean, a Filipino musician, to produce an original re-mix of Warm Warm
Honey for use in one of its latest films, Astig!. DJ Chef Jean remixed Warm
SUGGESTED ANSWER: Warm Honey with a salsa beat, and interspersed as well a recital of poetic
Yes, Greg is liable for copyright infringement. Letter are among the works stanza by John Blake, century Scottish poet. DJ Chef Jean died shortly after
which are protected from the moment of their creation (Section submitting the remixed Warm Warm Honey to Planet Films. Prior to the
172,intellectual Property Code; Columbia Pictures, Inc. v Court of Appeals, release of Astig!. Mocha Warm learns of the remixed Warm Warm Honey
261SCRA 144 [1996]). and demands that he be publicly identified as the author of the remixed song
is all the CD covers and publicity releases of Planet Films.
The publication of the letters without the consent of their writers constitutes
infringement of copyright. a. Who are the parties or entities entitled to be credited as author of the
remixed Warm Warm Honey? Reason out your answers. (3%)
SUGGESTED ANSWER:
ALTERNATIVE ANSWER: The parties entitled to be credited as authors of the remixed Warm Warm
No, Greg is not liable for copyright infringement. There is no copyright Honey are Mocha Warm, Majesty, DJ Chef Jean and John Blake, for the
protecting electronic documents. What are involved here are text messages, segments that was the product of the irrespective intellectual efforts. n the
not letter in their ordinary sense. Hence, the protection under the copyright case of Mocha Warm and Majesty, who are the attributed co-authors, and in
law does not extend to text messages (Section172, Intellectual Property spite of the sale of the economic right to Galactic Records, they retain their
Code).The messages that Diana and Piolo exchanged through the use of moral rights to the copyrighted rap, which include the right to demand
messaging service do not constitute literary and artistic works under Section attribution to them of the authorship (Sec. 193,IPC).Which respect to DJ Chef
172 of the Intellectual Property Code. They are not letter under Section Jean, in spite of his death, and although he was commissioned by Planet
172(d). Films for the remix, the rule is that the person who so commissioned work
shall have ownership of the work, but copyright thereto shall remain with
For copyright to subsist in a “message”, it must qualify as a “work” (Section creator, unless there is a written stipulation to the contrary. Even if no
172, Intellectual Property Code). Whether the messages are entitled or not to copyright exist in favor ofpoet John Blake, intellectual integrity requires that
copyright protection would have to be resolved in the light of the provision of the authors of creative work should properly be credited.
the Intellectual Property Code.
b. Who are the particular parties or entities who exercise copyright over there
Note: Since the law on this matter is not clear, it is suggested that either of mixed Warm Warm Honey? Explain. (3%)
the above of the above suggested answers should be given full credit. SUGGESTED ANSWER:
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The parties who exercise copyright or economic rights over the remixed prevent” reproduction of the work, including the public distribution of the
Warm Warm Honey would be Galactic Records and Planet Films. In the case original and each copy of the work “by sale or other forms of transfer of
of Galactic Records, it bought the economic rights of Mocha Warm. In the ownership,” Since this would be the effect of including her column in the
case of Planet Films, it commissioned the remixed work. anthology.
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PATENT: NON-PATENTABLE; METHOD OF DIAGNOSIS & TREATMENT
INFRINGEMENT; CLAIMS (2010) (2010)
While vacationing in Boracay, Valentino surreptitiously took photographs of Dr. Nobel discovered a new method of treating Alzheimer’s involving a
his girlfriend Monaliza in her skimpy bikini. Two weeks later, her photographs special method of diagnosing the disease, treating it with a new medicine
appeared in the Internet and in a national celebrity magazine. Monaliza found that has been discovered after long experimentation and field testing, and
out that Valentino had sold the photographs to the magazine, adding insult to novel mental isometric exercises. He comes to you for advice on how he can
injury, uploaded them to his personal blog on the Internet. have his discoveries protected. Can he legally protect his new method of
diagnosis, the new medicine, and the new method of treatment? If no, why?
a. Monaliza filed a complaint against Valentino damages based on, among If yes, how? (4%)
other grounds, violation of her intellectual property rights. Does she have any
cause of action? Explain. (2%) SUGGESTED ANSWER:
Dr. Nobel can be protected by a patent for the new medicine as it falls within
SUGGESTED ANSWER: the scope of Sec. 21 of the Intellectual Property Code (Rep. Act No. 8293, as
Monaliza cannot sue Valentino for violation of her intellectual property rights, amended). But no protection can be legally extended to him for the method
because she was not the one who took the pictures (Subsection 178.1 of the of diagnosis and method of treatment which are expressly non-patentable
Intellectual Property Code). She may sue Valentino instead for violation of (Sec.22, Intellectual Property Code).
her right to privacy. He surreptitiously took photographs of her and then sold ---
the photographs to a magazine and uploaded them to his personal blog in
the Internet (Tolentino, Commentaries and Jurisprudence on the Civil Code TRADEMARK; UNFAIR COMPETITION (2010)
of the Philippines, Vol. I, 1987 ed., p. 169). For years, Y has been engaged in the parallel importation of famous brands,
including shoes carrying the foreign brand MAGIC. Exclusive distributor X
b. Valentino’s friend Francesco stole the photographs and duplicated them and demands that Y cease importation because of his appointment as exclusive
sold them to a magazine publication. Valentino sued Francisco for distributor of MAGIC shoes in the Philippines. Y counters that the trademark
infringement and damages. Does Valentino have any cause of action? MAGIC is not registered with the Intellectual Property Office as a trademark
Explain. (2%) and therefore no one has the right to prevent its parallel importation.
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