Intellectual

Property Rights:
Copyright
Flow of discussion
• Intellectual Property Rights in general
• Fundamental principles of Copyright
• Literary and Artistic Works
• Rules on ownership of Copyright
• Rights of copyright owner
• Restrictions on Copyright
• Fair Use Doctrine
• Copyright Infringement
• Other remedies of copyright owners
 What are Intellectual
Property Rights?
• Intellectual Property Rights are rights given to persons over the creation of their
minds.

• Under Section 4 of the Intellectual Property Code:

Intellectual Property Rights consists of:

(a) Copyright
(b) Trademarks
(c) Geographic indications
(d) Industrial designs
(e) Patents
(f ) Layout-designs of Integrated Circuits
(g) Protection of Undisclosed Information
What are the characteristics of
Intellectual Property Rights
(IPR)?
• It is statutory in nature
• It is an incorporeal right
• It is not absolute
• It is a private right
Is it necessary to determine what
differentiates one IP from the other?
• Yes. In Elidad Kho v. Court of Appeals, the Supreme Court
said that trademark, copyright, and patents are different
intellectual property rights that one cannot be interchanged
with another.
Instructive is Ching v. Salinas, G.R.
No. 161295, June 29, 2005
• Eye leaf bushing is a useful article, but it has no artistic value.
• Even though it was covered by a certificate of registration of
copyright coupled with notice of deposit with the National
Library, no copyright is obtained.
 Pearl and Dean Phil. v. Shoemart, Inc.,
G.R. No. 148222, August 15, 2003

• Light boxes which utilize specially printed posters

sandwiched between plastic sheets and illuminated with
backlights are not literary or artistic pieces which could be
copyrighted.
• What is copyrightable is the pictorial or drawing
contained in the light boxes.
 What is copyright?
• It is an intangible, incorporeal right granted by statute to the author
of certain literary or artistic productions, whereby he or she is
invested, for a certain period of time, with the sole and exclusive
privilege of multiplying copies of the same and publishing and
selling them. (Fernando Juan v. Roberto Juan, G.R. No. 221372,
August 23, 2017)
From this definition, we break down
the elements of copyright:
• It is an intangible and incorporeal property

• Granted by statute

• For a certain period of time

• Literary and artistic works

When is the starting point of
protection of a copyright?
• 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. (Section 172.2, IPC)
What is the effect of deposit and notice of
deposit with the National library and the
Supreme Court?
• What is the effect of deposit and notice of deposit with the
National library and the Supreme Court?
(1) Mere notice of recording and registration
(2) Presumption of validity and ownership of copyright
 Compare with other IPRs
• As to Patent. Under the First to File Rule – the right to the patent
shall belong to the person who filed an application to such
invention, or where two or more applications are filed for the same
invention, to the applicant who has the earlies filing date or, the
earliest priority date. (Section 29, Intellectual Property Code)
• As to Trademark. Rights in a mark is acquired through registration
in accordance with law. (Section 122, Intellectual Property Code)
 Literary and Artistic works
• Section 172.1. of the IPC:
(a) Book, pamphlets, articles, and other writings

• (b) Periodicals and newspapers

• (c) L ectures, sermons, addresses, dissertations prepared for oral deliver y, whether or not reduced in writing or other material form

• (d) L etters

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

• (f ) Musical compositions, with or without words

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

• (h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art

• (i) I llustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science

• ( j) Drawings or plastic works of a scientifi c 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 audiovisual
recordings

• (m) Pictorial illustrations and advertisements

• (n) Computer programs

• (o) Other literar y, scholarly, scientifi c, and artistic works

Sison Olaño v. Lim Eng Co.
• Hatch door is not copyrightable.

• It is by nature functional and utilitarian serving as egress access during emergency.

• It is not an artistic creation but rather an object of utility.

• What is copyrightable is the drawing or the sketch of the hatch door itself.

• Protection is given only to the expression of the idea not the idea itself
 What is the so-called denicola
test?
• It provides that the only instance that a useful article may be the
subject of copyright protection is when it incorporates a design
element that is physically or conceptually separable from the
underlying product.
• Test: Design element is unrelatable to the utilitarian function =
copyrightable
• Example: A table lamp is not copyrightable. But if the shape of the
lamp is formed after an original, artistic or literary figure, said
design element is eligible for copyright protection.
To whom does the ownership of
copyright belong?
• Rule 1: Copyright belongs to the author of the work

• Rule 2: In case of joint authorship:

- In the absence of agreement, the co-authors shall be the
original owners of the copyright, and their rights shall be
governed by the rules on co-ownership.
- If the work 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
To whom does the ownership of
copyright belong?
• Rule 3: In case of work created by an author during and in the course of his
employment, the copyright shall belong to:
- The employee if the creation of the object of copyright is not part of his
regular duties even if the employee uses the time, facilities and materials of
the employer
- 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

• Rule 4: In case of a work-commissioned by a person other than an employer of

the author, the person who so commissioned the work shall have ownership of
the work, but the copyright there to shall remain with the creator, unless there
is a written stipulation to the contrary.

• Rule 5: In respect to letters, the copyright shall belong to the writer and the
letter shall belong to the person to whom they are addressed.
Rights of copyright owners
• Economic rights
• Moral rights
Economic rights
• Copyright or economic rights shall consist of the exclusive right to carry out,
authorize, or prevent the following acts:
(1) Reproduction of the work or substantial portion of the work
(2) Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work
(3) The first public distribution of the original and each copy of the work by sale
or other forms of transfer of ownership
(4) Rental of the original or a copy of an audio-visual or cinematographic work,
a work embodied in a sound recording, a computer program, a compilation of
data, and other materials or a musical work in graphic form, irrespective of the
ownership of the original or the copy which is the subject of the rental
(5) Public display of the original or a copy of the work
(6) Public performance of the work
(7) Other communication to the public of the work
What is the so-called “first-sale
doctrine” ?
• Copyright owner’s right to control the distribution goes away after the first sale

• Under Section 200 of the IPC (Right to Proceeds in Subsequent Transfer). 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.
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:
(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
(2) To make any alterations of his work prior to, or to withhold it from publication
(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
(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.
 Q. What if International Bookstore (IB) commissioned
Pedro to create a work or a book featuring a certain
cartoon character.

When Pedro was done, IB wanted to publish it, but Pedro

did not want to. IB filed an action for specific
performance. If you were the Judge how would you rule?

• I will rule against IB. Under the Intellectual Property

Code, an author cannot be compelled to perform his
contract to create a work or for the publication of his
work already in existence.

However, Pedro is liable for damages for breach of such

contract.
Term of moral rights
Lifetime of the author and 50 years after his death

(2) To make any alterations of his work prior to, or to withhold it from
publication
(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
(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.
Term of moral rights
Lifetime of the author and in perpetuity after his death

(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
How do you compute the
term of moral rights?
• Say for example:

Author X died on June 15 2010. How do you compute the 50-year term of
the existence of his moral rights? When does it end?

Answer:

It ends on January 1, 2061.

Why?
Instructive is Section 214 of the IPC, viz:

The term of protection subsequent to the death of the

author 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.
Restrictions on copyright
• Unprotected subject matter

• Limitations on Copyright
Unprotected subject matter
No protection shall extend, under this law, to:
(1) 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
(2) News of the day and other miscellaneous facts having the character
of mere items of press information
(3) Any offi cial text of a legislative, administrative or legal nature, as
well as any offi cial translation thereof
(4) Works of the Government of the Philippines
(5) Speeches, lectures, sermons, addresses, and dissertations,
pronounced, read or rendered in courts of justice, before administrative
agencies, in deliberative assemblies and in meeting of public character.
(Section 175, IPC)
Q. An amateur astronomer, stumbled upon what appeared to be a massive
volcanic eruption in Jupiter while peering at the planet through his
telescope. The following week, X, without notes, presented a lecture on his
findings. To his dismay, he later read an article in a science journal written
by Y, a professional astronomer, repeating exactly what X discovered
without any attribution to him. Did Y infringe on X’s copyright, if any?

No, since no protection extends to any discovery even if

expressed, explained, illustrated, or embodied in a work.
Regarding: “News of the day and other miscellaneous facts
having the character of mere items of press information”

• Illustrative is the case of ABS-CBN Corporation v. Felipe

Gozon, G.R. No. 195956, March 11, 2015
Notable limitations on copyright
• For the full list of limitations, refer to Section 184 of the IPC.
Notable limitations on copyright

• Section 184. 1. (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
Notable limitations on copyright
• Section 184. 1. (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
Notable limitations on copyright
• Section 184.1. (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
 Notable limitations on copyright
• Section 184.1. (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
What is the so-called “must-
carry rule”?
• The must-carry rule obligates Cable TV Networks to
carry the signals of local TV stations in full, without
alterations or deletion.

• Instructive is the case of ABS-CBN BROADCASTING

CORPORATION, Petitioners, vs. PHILIPPINE MULTI-
MEDIA SYSTEM, INC. et al. (G.R. No. 175769-70,
January 19, 2009)
What is the Fair Use Doctrine?
• Fair use is a privilege to use the copyrighted material
in a reasonable manner without the consent of the
copyright owner. (Habana v. Robles, 1999)

Stated otherwise:
• Under this doctrine, the fair use of a copyrighted
work for (1) criticism, comment, (2) news reporting,
(3) teaching including multiple copies for classroom
use, (4) scholarship, research, and similar purposes is
not an infringement of copyright
 What are the factors to determine
fair use?
Section 185 of RA 8293 lists four (4) factors to determine if there was fair use of a
copyrighted work, viz:

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

d. The effect of the use upon the potential market for or value of the copyrighted work.
Copyright infringement
• Copyright infringement is committed by any person who shall use
original literary or artistic works, or derivative works, without the
copyright owner’s consent in such a manner as to violate the
economic and moral rights of the author.
What are the elements of copyright
infringement?
To constitute the crime of Copyright Infringement, the following elements
must be shown to exist:

(a) Ownership of a validly copyrighted material by the complainant;

and

(b) Infringement of the copyright by the respondent. (Ching v. Salinas,

Sr., G.R. No. 161295, June 29, 2005)
How does one infringe a copyrighted
material?
Section 216 of the IPC provides:

A person infringes a copyright when one:

(a) Directly commits an infringement

(b) Benefits from the infringing activity of another person who commits an
infringement if the person benefitting has been given notice of the
infringing activity and has the right and ability to control the activities of
the other person

(c) With knowledge of infringing activity, induces, causes or materially

contributes to the infringing conduct of another
Other remedies of a copyright owner
Copyright infringement gives rise to two (2) distinct actions:

1. Criminal action for infringement

2. Civil action for infringement
Civil action for copyright
infringement, reliefs
• Actual damages, including legal costs and other expenses, as well as the profits the
infringer may have made due to such infringement
- prove sales
- actual damages can be doubled against any person
who:
(1) circumvents effective technological measures
(2) remove or alter any electronic rights management information without
authority

• Impound all infringing articles

• Destruction all infringing articles

• Payment of moral and exemplary damages

• In lieu of actual damages, copyright owner may elect an award of statutory

damages in a sum equivalent to the filing fee of the infringement action but not
less than Fifty Thousand Pesos (Php 50, 000)
Note:
• No damages may be recovered after the lapse of four years
from the time the cause of action accrues. (Section 226, IPC)