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UNIVERSITY OF SAN CARLOS

TABLE OF CONTENTS Filipino Society of Composers vs. Tan, 148 SCRA 461
(1987) .......................................................................... 10
Maglalang Santos vs., McCullough Printing, 12 SCRA 321
I. INTRODUCTION ................................................................... 3 (1964) .......................................................................... 10
(b) Copyright Ownership....................................................... 11
(1) Basis of the Intellectual Property Law (R.A. 8293, as
amended) .................................................................................... 3 (7) Transfer or Assignment of Copyright.................................... 12

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

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(a)For Literary and Artistic Works and Derivative Works ....... 21


Pearl & Dean Inc. vs. Shoemart Inc. .............................. 21
(b) For Performers ................................................................ 21
(c) Of Sound Recordings ....................................................... 21
(d) For Broadcast.................................................................. 21

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I. INTRODUCTION
Facts:
(1) Basis of the Intellectual Property Law (R.A. 8293, as Issues:
amended) Held:

Section 2. Declaration of State Policy. - The State recognizes that an Samson vs. Daway
effective intellectual and industrial property system is vital to the G.R. Nos. 160054-55, July 21, 2004
development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for Facts:
our products. It shall protect and secure the exclusive rights of scientists, Samson, owner/proprietor of ITTI Shoes/Mano Shoes
inventors, artists and other gifted citizens to their intellectual property Manufactuirng Corporation located at Robinson’s Galleria, EDSA corner
and creations, particularly when beneficial to the people, for such periods Ortigas Avenue, Quezon City, did then and there willfully, unlawfully and
as provided in this Act. feloniously distribute, sell and/or offer for sale CATERPILLAR products
such as footwear, garments, clothing, bags, accessories and
It is also the policy of the State to streamline administrative procedures paraphernalia which are closely identical to and/or colorable imitations of
of registering patents, trademarks and copyright, to liberalize the the authentic Caterpillar products and likewise using trademarks,
registration on the transfer of technology, and to enhance the symbols and/or designs as would cause confusion, mistake or deception
enforcement of intellectual property rights in the Philippines. (n) on the part of the buying public to the damage and prejudice of
CATERPILLAR, INC., the prior adopter, user and owner of the following
(2) Importance of Adopting Laws protecting Intellectual Property internationally: “CATERPILLAR”, “CAT”, “CATERPILLAR & DESIGN”, “CAT
Rights AND DESIGN”, “WALKING MACHINES” and “TRACK-TYPE TRACTOR &
DESIGN.”
The use of intellectual property bears a social function. To this end, the Caterpillar Inc. sued Samson for unfair competition in RTC.
State shall promote the diffusion of knowledge and information for the Samson filed a motion to for the quashal of information for lack of
promotion of national development and progress and the common good. jurisdiction. Samson contended that since under Section 170 of R.A. No.
8293, the penalty of imprisonment for unfair competition does not
(3) Philippine commitment to the GATT-TRIPS agreement exceed six years, the offense is cognizable by the Municipal Trial Courts
and not by the Regional Trial Court, per R.A. No. 7691.
Section 3. International Conventions and Reciprocity. - Any person who is
a national or who is domiciled or has a real and effective industrial xxx
establishment in a country which is a party to any convention, treaty or Under Section 170 of R.A. No. 8293, which took effect on January 1,
agreement relating to intellectual property rights or the repression of 1998, the criminal penalty for infringement of registered marks, unfair
unfair competition, to which the Philippines is also a party, or extends competition, false designation of origin and false description or
reciprocal rights to nationals of the Philippines by law, shall be entitled to representation, is imprisonment from 2 to 5 years and a fine ranging
benefits to the extent necessary to give effect to any provision of such from Fifty Thousand Pesos to Two Hundred Thousand Pesos. (jurisdiction
convention, treaty or reciprocal law, in addition to the rights to which any of Municipal Trial Courts)
owner of an intellectual property right is otherwise entitled by this Act.
(n) xxx
Under Section 27 of of R.A. No. 166 (The Trademark Law)
General Agreement on Tariffs and Trade (GATT) was a collection of SEC. 27. Jurisdiction of Court of First Instance. – All actions under this
treaties governing access to the economies of treaty adherents with no Chapter [V – Infringement] and Chapters VI [Unfair Competition] and VII
institutionalized body administering the agreements or dependable [False Designation of Origin and False Description or Representation],
system of dispute settlement. (Tanada vs. Angara) hereof shall be brought before the Court of First Instance.

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


Whether or not R.A. No. 166 was expressly repealed by R.A.
The Philippines joined WTO as a founding member with the No. 8293?
goal, as articulated by President Fidel V. Ramos in two letters to the
Senate of improving "Philippine access to foreign markets, especially its Held:
major trading partners, through the reduction of tariffs on its exports, No, R.A. No. 8293 does not expressly repealed R.A. 166.
particularly agricultural and industrial products." The President also saw
in the WTO the opening of "new opportunities for the services sector . . . SEC. 239. Repeals. – 239.1. All Acts and parts of Acts inconsistent
, (the reduction of) costs and uncertainty associated with exporting . . . , herewith, more particularly Republic Act No. 165, as amended; Republic
and (the attraction of) more investments into the country." Although the Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal
Chief Executive did not expressly mention it in his letter, the Philippines Code; Presidential Decree No. 49, including Presidential Decree No. 285,
— and this is of special interest to the legal profession — will benefit from as amended, are hereby repealed.
the WTO system of dispute settlement by judicial adjudication through
the independent WTO settlement bodies called (1) Dispute Settlement Notably, the aforequoted clause did not expressly repeal R.A. No. 166 in
Panels and (2) Appellate Tribunal. Heretofore, trade disputes were settled its entirety, otherwise, it would not have used the phrases “parts of Acts”
mainly through negotiations where solutions were arrived at frequently and “inconsistent herewith;” and it would have simply stated “Republic
on the basis of relative bargaining strengths, and where naturally, weak Act No. 165, as amended; Republic Act No. 166, as amended; and
and underdeveloped countries were at a disadvantage. Articles 188 and 189 of the Revised Penal Code; Presidential Decree No.
49, including Presidential Decree No. 285, as amended are hereby
(4) Did RA 8293 repeal existing laws on intellectual property? repealed.” It would have removed all doubts that said specific laws had
been rendered without force and effect. The use of the phrases “parts of
NO. Republic Act 8293 Section 239.1 All Acts and parts of Acts Acts” and “inconsistent herewith” only means that the repeal pertains
inconsistent herewith, more particularly Republic Act No. 165, as only to provisions which are repugnant or not susceptible of
amended; Republic Act No. 166, as amended; and Articles 188 and 189 harmonization with R.A. No. 8293.7 Section 27 of R.A. No. 166, however,
of the Revised Penal Code; Presidential Decree No. 49, including is consistent and in harmony with Section 163 of R.A. No. 8293. Had
Presidential Decree No. 285, as amended, are hereby repealed. R.A. No. 8293 intended to vest jurisdiction over violations of intellectual
property rights with the Metropolitan Trial Courts, it would have
Thus, only inconsistent provisions or parts of RA 165, RA 166, PD 49 and expressly stated so under Section 163 thereof.
PD 285 were repealed.
(5) Intellectual Property Rights – Trademark, Copyright and
Mirpuri vs. CA Patents
G.R. No. 114508, Nov. 19, 1999 Sec. 4.1, R.A. 8293

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is, by this incentive, to stimulate artistic creativity for the general public
Section 4. Definitions. - 4.1. The term "intellectual property rights" good. "The sole interest of the United States and the primary object in
consists of: conferring the monopoly," this Court has said, "lie in the general benefits
derived by the public from the labors of authors." When technological
a) Copyright and Related Rights; change has rendered its literal terms ambiguous, the Copyright Act must
b) Trademarks and Service Marks; be construed in light of this basic purpose.
c) Geographic Indications;
d) Industrial Designs; Feist Publications, Inc. vs. Rural Television Services Company
e) Patents; 499 U.S. 340, 1991
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information (n, TRIPS). Facts:
Rural Telephone Service Company is a certified public utility
(6) Republic Act No. 8293 – Intellectual Property Law that provides telephone service to several communities in northwest
Kansas. It is subject to a state regulation that requires all telephone
II. PRELIMINARY MATTERS companies operating in Kansas to issue annually an updated telephone
directory. Accordingly, as a condition of its monopoly franchise, Rural
(1) State Policy Declaration publishes a typical telephone directory, consisting of white pages and
Sec. 2 yellow pages. The white pages list in alphabetical order the names of
Rural's subscribers, together with their towns and telephone numbers.
Section 2. Declaration of State Policy. - The State recognizes that an The yellow pages list Rural's business subscribers alphabetically by
effective intellectual and industrial property system is vital to the category and feature classified advertisements of various sizes. Rural
development of domestic and creative activity, facilitates transfer of distributes its directory free of charge to its subscribers, but earns
technology, attracts foreign investments, and ensures market access for revenue by selling yellow pages advertisements.
our products. It shall protect and secure the exclusive rights of scientists, Feist Publications, Inc., is a publishing company that
inventors, artists and other gifted citizens to their intellectual property specializes in area-wide telephone directories. Unlike a typical directory,
and creations, particularly when beneficial to the people, for such periods which covers only a particular calling area, Feist's area-wide directories
as provided in this Act. cover a much larger geographical range, reducing the need to call
directory assistance or consult multiple directories. The Feist directory
The use of intellectual property bears a social function. To this end, the that is the subject of this litigation covers 11 different telephone service
State shall promote the diffusion of knowledge and information for the areas in 15 counties and contains 46,878 white pages listings --
promotion of national development and progress and the common good. compared to Rural's approximately 7,700 listings. Like Rural's directory,
Feist's is distributed free of charge and includes both white pages and
It is also the policy of the State to streamline administrative procedures yellow pages. Feist and Rural compete vigorously for yellow pages
of registering patents, trademarks and copyright, to liberalize the advertising.
registration on the transfer of technology, and to enhance the As the sole provider of telephone service in its service area,
enforcement of intellectual property rights in the Philippines. (n) Rural obtains subscriber information quite easily. Persons desiring
telephone service must apply to Rural and provide their names and
Twentieth Century Music Corp. vs. Aiken addresses; Rural then assigns them a telephone number. Feist is not a
422 U.S. 151 telephone company, let alone one with monopoly status, and therefore
lacks independent access to any subscriber information. To obtain white
Facts pages listings for its area-wide directory, Feist approached each of the 11
telephone companies operating in northwest Kansas and offered to pay
20Th Century Music Corporation copyrighted songs were for the right to use its white pages listings.
received on the radio in Aiken’s food shop from a local broadcasting Of the 11 telephone companies, only Rural refused to license
station, which was licensed by the American Society of Composers, its listings to Feist. Rural's refusal created a problem for Feist, as
Authors and Publishers to perform the songs, but Aiken had no such omitting these listings would have left a gaping hole in its area-wide
license. 20th Century Music then sued Aikenfor copyright infringement. directory, rendering it less attractive to potential yellow pages
The District Court granted awards, but the Court of Appeals reversed. advertisers.
Unable to license Rural's white pages listings, Feist used them
Issue without Rural's consent. Feist began by removing several thousand
Whether the reception of a radio broadcast of a copyrighted listings that fell outside the geographic range of its area-wide directory,
musical composition can constitute copyright infringement when the then hired personnel to investigate the 4,935 that remained. These
copyright owner has licensed the broadcaster to perform the composition employees verified [p*344] the data reported by Rural and sought to
publicly for profit? obtain additional information. As a result, a typical Feist listing includes
the individual's street address; most of Rural's listings do not.
Held Notwithstanding these additions, however, 1,309 of the 46,878 listings in
Aiken did not infringe upon 20th Century exclusive right, under Feist's 1983 directory were identical to listings in Rural's 1982-1983
the Copyright Act, "[t]o perform the copyrighted work publicly for profit," white pages. Four of these were fictitious listings that Rural had inserted
since the radio reception did not constitute a "performance" of the into its directory to detect copying.
copyrighted songs. Rural sued for copyright infringement in the District Court for
To hold that Aiken "performed" the copyrighted works would the District of Kansas taking the position that Feist, in compiling its own
obviously result in a wholly unenforceable regime of copyright law, and directory, could not use the information contained in Rural's white pages.
would also be highly inequitable, since (short of keeping his radio turned Rural asserted that Feist's employees were obliged to travel door-to-door
off) one in Aiken's position would be unable to protect himself from or conduct a telephone survey to discover the same information for
infringement liability. Such a ruling, moreover, would authorize the sale themselves. Feist responded that such efforts were economically
of an untold number of licenses for what is basically a single rendition of impractical and, in any event, unnecessary because the information
a copyrighted work, thus conflicting with the balanced purpose of the copied was beyond the scope of copyright protection.
Copyright Act of assuring the composer an adequate return for the value
of his composition while, at the same time, protecting the public from Issues:
oppressive monopolies. Whether or not Telephone directories are copyrightable or not?
The limited scope of the copyright holder's statutory monopoly, Held:
like the limited copyright duration required by the Constitution, reflects a The court rule that facts are not copyrightable; the other, that
balance of competing claims upon the public interest: creative work is to compilations of facts generally are. There can be no valid copyright in
be encouraged and rewarded, but private motivation must ultimately facts is universally understood. The most fundamental axiom of copyright
serve the cause of promoting broad public availability of literature, law is that "no author may copyright his ideas or the facts he narrates."
music, and the other arts. The immediate effect of our copyright law is to Rural wisely concedes this point, noting in its brief that "facts and
secure a fair return for an "author's" creative labor. But the ultimate aim discoveries, of course, are not themselves subject to copyright

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protection." However, it is beyond dispute that compilations of facts are reciprocal rights to nationals of the Philippines by law, shall be entitled to
within the subject matter of copyright. Compilations were expressly benefits to the extent necessary to give effect to any provision of such
mentioned in the Copyright Act of 1909, and again in the Copyright Act convention, treaty or reciprocal law, in addition to the rights to which any
of 1976. owner of an intellectual property right is otherwise entitled by this Act.
(n)
Notes
Section 231. Reverse Reciprocity of Foreign Laws. - Any condition,
On what basis may one claim a copyright in such a work? restriction, limitation, diminution, requirement, penalty or any similar
Common sense tells us that 100 uncopyrightable facts do not magically burden imposed by the law of a foreign country on a Philippine national
change their status when gathered together in one place. Yet copyright seeking protection of intellectual property rights in that country, shall
law seems to contemplate that compilations that consist exclusively of reciprocally be enforceable upon nationals of said country, within
facts are potentially within its scope. Philippine jurisdiction. (n)

Facts are not copyrightable. The sine qua non of copyright is originality. Mirpuri vs. CA
To qualify for copyright protection, a work must be original to the author. G.R. No. 114508, Nov. 19, 1999
See Harper Original, as the term is used in copyright, means only that
the work was independently created by the author (as opposed to copied Facts
from other works), and that it possesses at least some minimal degree of Issues
creativity. To be sure, the requisite level of creativity is extremely low; Held
even a slight amount will suffice. The vast majority of works make the
grade quite easily, as they possess some creative spark, "no matter how (3) Coverage of Intellectual Property Rights
crude, humble or obvious" it might be. Sec. 4.1

Why facts are not copyrightable? Section 4. Definitions. - 4.1. The term "intellectual property rights"
No one may claim originality as to facts. This is because facts do not owe consists of:
their origin to an act of authorship. The distinction is one between a) Copyright and Related Rights;
creation and discovery: the first person to find and report a particular b) Trademarks and Service Marks;
fact has not created the fact; he or she has merely discovered its c) Geographic Indications;
existence. One who discovers a fact is not its "maker" or "originator." The d) Industrial Designs;
discoverer merely finds and records. e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
Illustrative Example g) Protection of Undisclosed Information (n, TRIPS).
Census-takers do not "create" the population figures that emerge from
their efforts; in a sense, they copy these figures from the world around Kho vs. CA,
them. Census data therefore do not trigger copyright because these data G.R. No. 115758, March 19, 2002
are not "original" in the constitutional sense. The same is true of all facts
-- scientific, historical, biographical, and news of the day. "They may not Facts
be copyrighted and are part of the public domain available to every Kho is doing business under the name and style of
person." KEC Cosmetics Laboratory, the registered owner of the copyrights Chin
Chun Su and Oval Facial Cream Container/Case, that she also has patent
Factual compilations, on the other hand, may possess the requisite rights on Chin Chun Su & Device and Chin Chun Su for medicated cream
originality. The compilation author typically chooses which facts to after purchasing the same from Quintin Cheng, the registered owner
include, in what order to place them, and how to arrange the collected thereof in the Supplemental Register of the Philippine Patent Office.
data so that they may be used effectively by readers. These choices as to Summerville advertised and sold Kho’s cream products under
selection and arrangement, so long as they are made independently by the brand name Chin Chun Su, in similar containers that Kho uses,
the compiler and entail a minimal degree of creativity, are sufficiently thereby misleading the public, and resulting in the decline in the Kho’s
original that Congress may protect such compilations through the business sales and income; and, that the Summerville should be enjoined
copyright laws. Thus, even a directory that contains absolutely no from allegedly infringing on the copyrights and patents of the Kho.
protectible written expression, only facts, meets the constitutional Summerville on the other hand, alleged as their defense that
minimum for copyright protection if it features an original selection or they are the exclusive and authorized importer, re-packer and distributor
arrangement. of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan;
that the said Taiwanese manufacturing company authorized Summerville
Originality does not signify novelty; a work may be original even though to register its trade name Chin Chun Su Medicated Cream with the
it closely resembles other works so long as the similarity is fortuitous, not Philippine Patent Office and other appropriate governmental agencies;
the result of copying. To illustrate, assume that two poets, each ignorant that KEC Cosmetics Laboratory of the of Kho obtained the copyrights
of the other, compose identical poems. Neither work is novel, yet both through misrepresentation and falsification; and, that the authority of
are original and, hence, copyrightable. Quintin Cheng, assignee of the patent registration certificate, to
distribute and market Chin Chun Su products in the Philippines had
Originality requires independent creation plus a modicum of creativity: already been terminated by the said Taiwanese Manufacturing Company.
"While the word writings may be liberally construed, as it has been, to On December 20, 1991, Elidad C. Kho filed a complaint for
include original designs for engraving, prints, &c., it is only such as are injunction and damages with a prayer for the issuance of a writ of
original, and are founded in the creative powers of the mind. The writings preliminary injunction, against the Summerville General Merchandising
which are to be protected are the fruits of intellectual labor, embodied in and Company (Summerville, for brevity) and Ang Tiam Chay.
the form of books, prints, engravings, and the like."
Issues
Author - in a constitutional sense is to mean "he to whom anything owes Whether the copyright and patent over the name and container
its origin; originator; maker”. of a beauty cream product would entitle the registrant to the use and
ownership over the same to the exclusion of others?
(2) Effect on International Conventions and on Principle of
Reciprocity Held
Sec. 3 & 231 Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. A
Section 3. International Conventions and Reciprocity. - Any person who is trademark is any visible sign capable of distinguishing the goods
a national or who is domiciled or has a real and effective industrial (trademark) or services (service mark) of an enterprise and shall include
establishment in a country which is a party to any convention, treaty or a stamped or marked container of goods. In relation thereto, a trade
agreement relating to intellectual property rights or the repression of name means the name or designation identifying or distinguishing an
unfair competition, to which the Philippines is also a party, or extends enterprise. Meanwhile, the scope of a copyright is confined to literary and

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artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation. Patentable Pest Management Association of the Philippines vs. Fertilizer and
inventions, on the other hand, refer to any technical solution of a Pesticide Authority
problem in any field of human activity which is new, involves an inventive G.R. No. 156041, February 21, 2007
step and is industrially applicable.
Kho has no right to support her claim for the exclusive use of Facts
the subject trade name and its container. The name and container of a The case commenced upon PMAP’s filing of a Petition For
beauty cream product are proper subjects of a trademark inasmuch as Declaratory Relief With Prayer For Issuance Of A Writ Of Preliminary
the same falls squarely within its definition. In order to be entitled to Injunction And/Or Temporary Restraining Order with the RTC on January
exclusively use the same in the sale of the beauty cream product, the 4, 2002. Petitioner, a non-stock corporation duly organized and existing
user must sufficiently prove that she registered or used it before anybody under the laws of the Philippines, is an association of pesticide handlers
else did. The petitioner’s copyright and patent registration of the name duly licensed by respondent Fertilizer and Pesticide Authority (FPA). It
and container would not guarantee her right to the exclusive use of the questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory
same for the reason that they are not appropriate subjects of the said Policies and Implementing Guidelines, which provides thus:
intellectual rights. Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that she has a 3.12 Protection of Proprietary Data
clear right over the said name and container to the exclusion of others,
not having proven that she has registered a trademark thereto or used Data submitted to support the first full or conditional registration of a
the same before anyone did. pesticide active ingredient in the Philippines will be granted proprietary
protection for a period of seven years from the date of such registration.
Pearl & Dean Inc. vs. Shoemart Inc During this period subsequent registrants may rely on these data only
G.R. No. 148222, August 15, 2003 with third party authorization or otherwise must submit their own data.
After this period, all data may be freely cited in support of registration by
Facts any applicant, provided convincing proof is submitted that the product
Issues being registered is identical or substantially similar to any current
Held registered pesticide, or differs only in ways that would not significantly
increase the risk of unreasonable adverse effects.
(4) Functions of IPO
Sec. 5 Issues
Whether or not FPA encroach upon the jurisdiction of the
Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To Intellectual Property Office?
administer and implement the State policies declared in this Act, there is
hereby created the Intellectual Property Office (IPO) which shall have the Held
following functions: There is no encroachment upon the powers of the IPO granted
under R.A. No. 8293, otherwise known as the Intellectual Property Code
a) Examine applications for grant of letters patent for inventions and of the Philippines. Section 5 thereof enumerates the functions of the IPO.
register utility models and industrial designs; Nowhere in said provision does it state nor can it be inferred that the law
intended the IPO to have the exclusive authority to protect or promote
b) Examine applications for the registration of marks, geographic intellectual property rights in the Philippines. On the contrary, paragraph
indication, integrated circuits; (g) of said Section even provides that the IPO shall "[c]oordinate with
other government agencies and the private sector efforts to formulate
c) Register technology transfer arrangements and settle disputes and implement plans and policies to strengthen the protection of
involving technology transfer payments covered by the provisions of Part intellectual property rights in the country." Clearly, R.A. No. 8293
II, Chapter IX on Voluntary Licensing and develop and implement recognizes that efforts to fully protect intellectual property rights cannot
strategies to promote and facilitate technology transfer; be undertaken by the IPO alone. Other agencies dealing with intellectual
property rights are, therefore, not precluded from issuing policies,
d) Promote the use of patent information as a tool for technology guidelines and regulations to give protection to such rights.
development;
Lastly, FPA emphasize that the provision on protection of
e) Publish regularly in its own publication the patents, marks, utility proprietary data does not usurp the functions of the Intellectual Property
models and industrial designs, issued and approved, and the technology Office (IPO) since a patent and data protection are two different matters.
transfer arrangements registered; A patent prohibits all unlicensed making, using and selling of a particular
product, while data protection accorded by the FPA merely prevents
f) Administratively adjudicate contested proceedings affecting intellectual copying or unauthorized use of an applicant's data, but any other party
property rights; and may independently generate and use his own data. It is further argued
that under Republic Act No. 8293 (R.A. No. 8293), the grant of power to
g) Coordinate with other government agencies and the private sector the IPO to administer and implement State policies on intellectual
efforts to formulate and implement plans and policies to strengthen the property is not exclusionary as the IPO is even allowed to coordinate with
protection of intellectual property rights in the country. other government agencies to formulate and implement plans and
policies to strengthen the protection of intellectual property rights.
5.2. The Office shall have custody of all records, books, drawings,
specifications, documents, and other papers and things relating to III. LAW ON COPYRIGHT
intellectual property rights applications filed with the Office. (n)
(1) Definitions
(5) The Intellectual Property Office Sec. 171 – 171.10
Sec. 6.2
Section 171. Definitions. - For the purpose of this Act, the following
Section 6.2. The Office shall be divided into six (6) Bureaus, each of terms have the following meaning:
which shall be headed by a Director and assisted by an Assistant
Director. These Bureaus are: 171.1. "Author" is the natural person who has created the work;

a) The Bureau of Patents; 171.2. A "collective work" is a work which has been created by two (2) or
b) The Bureau of Trademarks; more natural persons at the initiative and under the direction of another
c) The Bureau of Legal Affairs; with the understanding that it will be disclosed by the latter under his
d) The Documentation, Information and Technology Transfer Bureau; own name and that contributing natural persons will not be identified;
e) The Management Information System and EDP Bureau; and
f) The Administrative, Financial and Personnel Services Bureau.

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171.3. "Communication to the public" or "communicate to the public" Sec. 172- 172.2
means the making of a work available to the public by wire or wireless
means in such a way that members of the public may access these works Section 172. Literary and Artistic Works. - 172.1. Literary and artistic
from a place and time individually chosen by them; works, hereinafter referred to as "works", are original intellectual
creations in the literary and artistic domain protected from the moment
171.4. A "computer" is an electronic or similar device having information- of their creation and shall include in particular:
processing capabilities, and a "computer program" is a set of instructions
expressed in words, codes, schemes or in any other form, which is (a) Books, pamphlets, articles and other writings;
capable when incorporated in a medium that the computer can read, of (b) Periodicals and newspapers;
causing the computer to perform or achieve a particular task or result; (c) Lectures, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material form;
171.5. "Public lending" is the transfer of possession of the original or a (d) Letters;
copy of a work or sound recording for a limited period, for non-profit
purposes, by an institution the services of which are available to the Note: Requisite: For short message sending (sms) or text messages
public, such as public library or archive; sufficient intellectual effort.

171.6. "Public performance", in the case of a work other than an (e) Dramatic or dramatico-musical compositions; choreographic works or
audiovisual work, is the recitation, playing, dancing, acting or otherwise entertainment in dumb shows;
performing the work, either directly or by means of any device or
process; in the case of an audiovisual work, the showing of its images in Note: Laban notation – transcription of choreographic notes
sequence and the making of the sounds accompanying it audible; and, in
the case of a sound recording, making the recorded sounds audible at a (f) Musical compositions, with or without words;
place or at places where persons outside the normal circle of a family and
that family's closest social acquaintances are or can be present, Note: With or Without words – because there two separate rights for the
irrespective of whether they are or can be present at the same place and composition and lyrics.
at the same time, or at different places and/or at different times, and
where the performance can be perceived without the need for (g) Works of drawing, painting, architecture, sculpture, engraving,
communication within the meaning of Subsection 171.3; lithography or other works of art; models or designs for works of art;

171.7. "Published works" means works, which, with the consent of the Note: Furnitures have functional purpose. Ching Case:
authors, are made available to the public by wire or wireless means in
such a way that members of the public may access these works from a (h) Original ornamental designs or models for articles of manufacture,
place and time individually chosen by them: Provided, That availability of whether or not registrable as an industrial design, and other works of
such copies has been such, as to satisfy the reasonable requirements of applied art;
the public, having regard to the nature of the work; (i) Illustrations, maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or science;
171.8. "Rental" is the transfer of the possession of the original or a copy (j) Drawings or plastic works of a scientific or technical character;
of a work or a sound recording for a limited period of time, for profit- (k) Photographic works including works produced by a process analogous
making purposes; to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by
171.9. "Reproduction" is the making of one (1) or more copies of a work a process analogous to cinematography or any process for making audio-
or a sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a); visual recordings;
(m) Pictorial illustrations and advertisements;
171.10. A "work of applied art" is an artistic creation with utilitarian (n) Computer programs; and
functions or incorporated in a useful article, whether made by hand or
produced on an industrial scale; Note: Computer program are copyrightable in this jurisdiction but not
patentable.
171.11. A "work of the Government of the Philippines" is a work created
by an officer or employee of the Philippine Government or any of its (o) Other literary, scholarly, scientific and artistic works.
subdivisions and instrumentalities, including government-owned or 172.2. Works are protected by the sole fact of their creation, irrespective
controlled corporations as a part of his regularly prescribed official duties. of their mode or form of expression, as well as of their content, quality
and purpose. (Sec. 2, P.D. No. 49a)
(2) Protection, when commenced
Sec. 172.2 Notes

Section 172.2. Works are protected by the sole fact of their creation, When work is created?
irrespective of their mode or form of expression, as well as of their A work is created when two requirements are Originality and some form
content, quality and purpose. (Sec. 2, P.D. No. 49a). of expression.
The work must have their origin in the labor of the author.
(3) Idea/Expression Dichotomy
Sec. 175 Original as the term is used in copyright means only that the work was
independently created by the author (as opposed to copied from the
Section 175. Unprotected Subject Matter. - Notwithstanding the other works) and that it possess at least some minimal degree of
provisions of Sections 172 and 173, no protection shall extend, under creativity. The distinction is one between creation and discovery: the fist
this law, to any idea, procedure, system, method or operation, concept, to person to find a particular fact has not created the fact: he or she ha
principle, discovery or mere data as such, even if they are expressed, merely discovered its existence.
explained, illustrated or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of press However, it is not necessary, to qualify for copyright protection, that
information; or any official text of a legislative, administrative or legal works should pass a test of imaginativeness.
nature, as well as any official translation thereof (n)
The right to obtain a copyright on a book depends on originality of the
Note: Ideas are the building blocks of creative expression. They will differ author’s work and not upon any standard of merit.
with the particular subject matter involved.
2nd Requirement: Expression
(4) Works Protected
In order for a work to be entitled protection, there must at least be some
(a) Literary or Artistic Works verifiable expression of the intellectual product.

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provided for in Section 26 (P.D. No. 49, as amended), is not for the
Idea is not protected, only the expression. purpose of securing a copyright of the work, but rather to avoid the
There is creation when an idea is expressed in some tangible medium. penalty for non-compliance of the deposit of said two copies and in order
to recover damages in an infringement suit.
Columbia Pictures vs. CA, 261 SCRA 144 (1996)
Ching vs. Salinas, G.R. No. 161295, June 29, 2005
Facts
Columbia Pictures lodged a formal complaint with the National Facts
Bureau of Investigation for violation of PD No. 49, as amended, and Jessie G. Ching is the owner and general manager of Jeshicris
sought its assistance in their anti-film piracy drive. Agents of the NBI Manufacturing Co., the maker and manufacturer of a Utility Model,
and private researchers made discreet surveillance on various video described as “Leaf Spring Eye Bushing for Automobile” made up of
establishments in Metro Manila including Sunshine Home Video Inc. plastic.
owned and operated by Danilo A. Pelindario. On September 4, 2001, Ching and Joseph Yu were issued by
On November 14, 1987, NBI Senior Agent Lauro C. Reyes the National Library Certificates of Copyright Registration and Deposit of
applied for a search warrant with the court a quo against Sunshine the said work described therein as “Leaf Spring Eye Bushing for
seeking the seizure, among others, of pirated video tapes of copyrighted Automobile.”
films all of which were enumerated in a list attached to the application; On September 20, 2001, Ching requested the National Bureau
and, television sets, video cassettes and/or laser disc recordings of Investigation (NBI) for police/investigative assistance for the
equipment and other machines and paraphernalia used or intended to be apprehension and prosecution of illegal manufacturers, producers and/or
used in the unlawful exhibition, showing, reproduction, sale, lease or distributors of the works.
disposition of videograms tapes in the premises above described. In the After due investigation, the NBI filed applications for search
hearing of the application, NBI Senior Agent Lauro C. Reyes, upon warrants in the RTC of Manila against William Salinas, Sr. and the officers
questions by the court a quo, reiterated in substance his averments in his and members of the Board of Directors of Wilaware Product Corporation.
affidavit. His testimony was corroborated by another witness, Mr. Rene It was alleged that the respondents therein reproduced and distributed
C. Baltazar. Atty. Rico V. Domingo’s deposition was also taken. On the the said models penalized under Sections 177.1 and 177.3 of Republic
basis of the affidavits and depositions of NBI Senior Agent Lauro C. Act (R.A.) No. 8293.
Reyes, Rene C. Baltazar and Atty. Rico V. Domingo, Search Warrant No
87-053 for violation of Section 56 of PD No. 49, as amended, was issued Issues
by the court a quo.
NBI Agents found and seized various video tapes of duly Whether or not the subject matter is covered by the Copyright
copyrighted motion pictures/films owned or exclusively distributed by of the Intellectual Property Code?
private complainants, and machines, equipment, television sets, Held
paraphernalia, materials, accessories all of which were included in the It is worthy to state that the works protected under the Law on
receipt for properties accomplished by the raiding team. Copy of the Copyright are: literary or artistic works (Sec. 172) and derivative works
receipt was furnished and/or tendered to Mr. Danilo A. Pelindario, (Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion
registered owner-proprietor of Sunshine Home Video. fall on neither classification.
Being plain automotive spare parts that must conform to the
Issues original structural design of the components they seek to replace, the
Whether or not absence such registration, as in this case, there Leaf Spring Eye Bushing and Vehicle Bearing Cushion are not
was no right created, hence, no infringement under PD 49 as amended? ornamental. They lack the decorative quality or value that must
characterize authentic works of applied art. They are not even artistic
Held creations with incidental utilitarian functions or works incorporated in a
As correctly pointed out by private complainants-oppositors, useful article. In actuality, the personal properties described in the
the Department of Justice has resolved this legal question as far back as search warrants are mechanical works, the principal function of which is
December 12, 1978 in its Opinion No. 191 of the then Secretary of utility sans any aesthetic embellishment.
Justice Vicente Abad Santos which stated that Sections 26 and 50 do not Neither are we to regard the Leaf Spring Eye Bushing and
apply to cinematographic works and PD No. 49 “had done away with the Vehicle Bearing Cushion as included in the catch-all phrase “other
registration and deposit of cinematographic works” and that “even literary, scholarly, scientific and artistic works” in Section 172.1(a) of
without prior registration and deposit of a work which may be entitled to R.A. No. 8293. Applying the principle of ejusdem generis which states
protection under the Decree, the creator can file action for infringement that “where a statute describes things of a particular class or kind
of its rights.” He cannot demand, however, payment of damages arising accompanied by words of a generic character, the generic word will
from infringement. The same opinion stressed that “the requirements of usually be limited to things of a similar nature with those particularly
registration and deposit are thus retained under the Decree, not as enumerated, unless there be something in the context of the state which
conditions for the acquisition of copyright and other rights, but as would repel such inference,”[46] the Leaf Spring Eye Bushing and Vehicle
prerequisites to a suit for damages.” The statutory interpretation of the Bearing Cushion are not copyrightable, being not of the same kind and
Executive Branch being correct, is entitled (to) weight and respect. nature as the works enumerated in Section 172 of R.A. No. 8293.
Furthermore, a closer review of Presidential Decree No. 49
reveals that even with respect to works which are required under Section (b) Derivative Works
26 thereof to be registered and with copies to be deposited with the Sec. 173
National Library, such as books, including composite and cyclopedic
works, manuscripts, directories and gazetteers; and periodicals, including Section 173. Derivative Works. - 173.1. The following derivative works
pamphlets and newspapers; lectures, sermons, addresses, dissertations shall also be protected by copyright:
prepared for oral delivery; and letters, the failure to comply with said
requirements does not deprive the copyright owner of the right to sue for (a) Dramatizations, translations, adaptations, abridgments,
infringement. Such non-compliance merely limits the remedies available arrangements, and other alterations of literary or artistic works; and
to him and subjects him to the corresponding sanction. (b) Collections of literary, scholarly or artistic works, and compilations of
The reason for this is expressed in Section 2 of the decree data and other materials which are original by reason of the selection or
which prefaces its enumeration of copyrightable works with the explicit coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P.D.
statement that “the rights granted under this Decree shall, from the No. 49)
moment of creation, subsist with respect to any of the following classes
of works.” This means that under the present state of the law, the 173.2. The works referred to in paragraphs (a) and (b) of Subsection
copyright for a work is acquired by an intellectual creator from the 173.1 shall be protected as new works: Provided however, That such new
moment of creation even in the absence of registration and deposit. As work shall not affect the force of any subsisting copyright upon the
has been authoritatively clarified: original works employed or any part thereof, or be construed to imply
The registration and deposit of two complete copies or any right to such use of the original works, or to secure or extend
reproductions of the work with the National Library within three weeks copyright in such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)
after the first public dissemination or performance of the work, as

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Note: Derivative works are original work. Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of
There must be compliance of the requirements: Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and
1. must borrow the original and expressive content Me, a dating game show aired from 1970 to 1977.
2. the work must alter not merely copy. / must have substantial variation On June 28, 1973, petitioner BJPI submitted to the National
Library an addendum to its certificate of copyright specifying the show’s
Article 5 of civil code. format and style of presentation.
No right can spring from an unlawful act. On July 14, 1991, while watching television, petitioner
Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an
Laktaw vs. Paglinawan, 44 Phil. 855 (1918) episode of It’s a Date, which was produced by IXL Productions, Inc.
(IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel
Facts M. Zosa, president and general manager of IXL, informing Zosa that BJPI
Laktaw is the registered owner and author of a literary work had a copyright to Rhoda and Me and demanding that IXL discontinue
entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary) airing It’s a Date.
published in the City of Manila in 1889 by the printing establishment La In a letter, dated July 19, 1991, private respondent Zosa
Opinion. apologized to petitioner Joaquin and requested a meeting to discuss a
Paglinawan without the consent of Laktaw, reproduced said possible settlement. IXL, however, continued airing It’s a Date,
literary work, improperly copied the greater part thereof in the work prompting petitioner Joaquin to send a second letter on July 25, 1991 in
published by him and entitled Diccionariong Kastila-Tagalog (Spanish- which he reiterated his demand and warned that, if IXL did not comply,
Tagalog Dictionary). he would endorse the matter to his attorneys for proper legal action.
The act of Pagliwanan is a violation of article 7 of the Law of Meanwhile, private respondent Zosa sought to register IXL’s
January 10, 1879, on Intellectual Property, caused irreparable injuries to copyright to the first episode of “It’s a Date” for which it was issued by
Laktaw who was surprised when, on publishing his new work entitled the National Library a certificate of copyright on August 14, 1991.
Diccionario Tagalog-Hispano (Tagalog-Spanish Dictionary) he learned of Upon complaint of petitioners, information for violation of P.D.
the fact, and (4) that the damages occasioned to him by the publication No. 49 was filed against private respondent Zosa together with certain
of Paglinawan's work amounted to $10,000. Laktaw prayed the court to officers of RPN Channel 9, namely, William Esposo, Felipe Medina, and
order the Paglinawan to withdraw from sale all stock of the work of Casey Francisco, in the Regional Trial Court of Quezon City.
Paglinawan to pay him the sum of $10,000, with costs.
Paglinawan in his answer denied generally each and every Issue
allegation of the complaint and prayed the court to absolve him from the Whether the format or mechanics of Joaquin’s television show
complaint. is entitled to copyright protection?
Held
Law No, the format or mechanics of a television show is not
Article 7 of the Law of January 10, 1879, on Intellectual Property: included in the list of protected works in §2 of P.D. No. 49. For this
Nobody may reproduce another person's work without the owner's reason, the protection afforded by the law cannot be extended to cover
consent, even merely to annotate or add anything to it, or improve any them.
edition thereof. The essence of copyright infringement is the copying, in whole
or in part, of copyrightable materials as defined and enumerated in
Issue Section 2 of PD. No. 49. Apart from the manner in which it is actually
Whether or not Paglinawan violated Article 7 of the Intellectual expressed, however, the idea of a dating game show is, in the opinion of
Property Law (1879)? this Office, a non-copyrightable material. Ideas, concepts, formats, or
Held schemes in their abstract form clearly do not fall within the class of works
Yes, Paglinawan violated Article 7 of Intellectual Property Law. or materials susceptible of copyright registration as provided in PD. No.
It is not necessary that a work should be an improper copy of 49.
another work previously published. It is enough that another's work has Copyright, in the strict sense of the term, is purely a statutory
been reproduced without the consent of the owner, even though it be right. It is a new or independent right granted by the statute, and not
only to annotate, add something to it, or improve any edition thereof. simply a pre-existing right regulated by the statute. Being a statutory
grant, the rights are only such as the statute confers, and may be
(c) Published Edition of Work obtained and enjoyed only with respect to the subjects and by the
Sec. 174 persons, and on terms and conditions specified in the statute.
P.D. No. 49, §2, in enumerating what are subject to copyright,
Section 174. Published Edition of Work. - In addition to the right to refers to finished works and not to concepts. The copyright does not
publish granted by the author, his heirs, or assigns, the publisher shall extend to an idea, procedure, process, system, method of operation,
have a copyright consisting merely of the right of reproduction of the concept, principle, or discovery, regardless of the form in which it is
typographical arrangement of the published edition of the work. (n) described, explained, illustrated, or embodied in such work.

Note: Separate right of the publisher exclusively on typographical What then is the subject matter of petitioners’ copyright?
arrangement. TheCourt is of the opinion that petitioner BJPI’s copyright covers audio-
visual recordings of each episode of Rhoda and Me, as falling within the
(5)Works Not Protected class of works mentioned in P.D. 49, §2(M), to wit:
Sec. 175
Cinematographic works and works produced by a process analogous to
(a)Unprotected Subject Matter cinematography or any process for making audio-visual recordings;
Sec. 175
Law
Section 175. Unprotected Subject Matter. - Notwithstanding the
provisions of Sections 172 and 173, no protection shall extend, under Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions
this law, to any idea, procedure, system, method or operation, concept, of Sections 172 and 173, no protection shall extend, under this law, to
principle, discovery or mere data as such, even if they are expressed, any idea, procedure, system, method or operation, concept, principle,
explained, illustrated or embodied in a work; news of the day and other discovery or mere data as such, even if they are expressed, explained,
miscellaneous facts having the character of mere items of press illustrated or embodied in a work; news of the day and other
information; or any official text of a legislative, administrative or legal miscellaneous facts having the character of mere items of press
nature, as well as any official translation thereof (n) information; or any official text of a legislative, administrative or legal
nature, as well as any official translation thereof.
Joaquin, Jr. vs. Drilon, 302 SCRA 225 (1999)
(b)Works of Government
Facts Sec. 176; 171.11

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Section 176. Works of the Government. - 176.1. No copyright shall the appellant to play or sing the same. Accordingly, appellant demanded
subsist in any work of the Government of the Philippines. However, prior from the appellee payment of the necessary license fee for the playing
approval of the government agency or office wherein the work is created and singing of aforesaid compositions but the demand was ignored.
shall be necessary for exploitation of such work for profit. Such agency or
office may, among other things, impose as a condition the payment of Tan’s Argument: That the mere singing and playing of songs
royalties. No prior approval or conditions shall be required for the use of and popular tunes even if they are copyrighted do not constitute an
any purpose of statutes, rules and regulations, and speeches, lectures, infringement (Record on Appeal, p. 11; Resolution, CA-G.R. NO. 46373-
sermons, addresses, and dissertations, pronounced, read or rendered in R, Rollo, pp. 32-36) under the provisions of Section 3 of the Copyright
courts of justice, before administrative agencies, in deliberative Law (Act 3134 of the Philippine Legislature).
assemblies and in meetings of public character. (Sec. 9, first par., P.D.
No. 49) Issues

176.2. The author of speeches, lectures, sermons, addresses, and 1. Whether or not the playing and singing of musical compositions which
dissertations mentioned in the preceding paragraphs shall have the have been copyrighted under the provisions of the Copyright Law (Act
exclusive right of making a collection of his works. (n) 3134) inside the establishment of Benjamin Tan constitute a public
performance for profit within the meaning and contemplation of the
176.3. Notwithstanding the foregoing provisions, the Government is not Copyright Law of the Philippines?
precluded from receiving and holding copyrights transferred to it by
assignment, bequest or otherwise; nor shall publication or republication 2. Assuming that there were indeed public performances for profit,
by the Government in a public document of any work in which copyright whether or not Benjamin Tan can be held liable therefore.
is subsisting be taken to cause any abridgment or annulment of the
copyright or to authorize any use or appropriation of such work without Held
the consent of the copyright owner. (Sec. 9, third par., P.D. No. 49)
1st issue:
171.11. A "work of the Government of the Philippines" is a work created Yes.
by an officer or employee of the Philippine Government or any of its The playing of music in dine and dance establishment which
subdivisions and instrumentalities, including government-owned or was paid for by the public in purchases of food and drink constituted
controlled corporations as a part of his regularly prescribed official duties. "performance for profit" within a Copyright Law (Buck, et al. v. Russon
No. 4489 25 F. Supp. 317).
(6) Copyright or Economic Rights; Ownership

(a) Copyright or Economic Rights – Sec. 177 2nd issue:


The Supreme Court has ruled that "Paragraph 33 of Patent
Note: Copyright - economic right / moral rights - “right to paternity”. Office Administrative Order No. 3 (as amended, dated September 18,
1947) entitled 'Rules of Practice in the Philippines Patent Office relating
Section 177. Copyright or Economic Rights. - Subject to the provisions of to the Registration of Copyright Claims' promulgated pursuant to
Chapter VIII, copyright or economic rights shall consist of the exclusive Republic Act 165, provides among other things that an intellectual
right to carry out, authorize or prevent the following acts: creation should be copyrighted thirty (30) days after its publication, if
177.1. Reproduction of the work or substantial portion of the work; made in Manila, or within the (60) days if made elsewhere, failure of
177.2. Dramatization, translation, adaptation, abridgment, arrangement which renders such creation public property." (Santos v. McCullough
or other transformation of the work; Printing Company, 12 SCRA 324-325 [1964]. Indeed, if the general
177.3. The first public distribution of the original and each copy of the public has made use of the object sought to be copyrighted for thirty
work by sale or other forms of transfer of ownership; (30) days prior to the copyright application the law deems the object to
177.4. Rental of the original or a copy of an audiovisual or have been donated to the public domain and the same can no longer be
cinematographic work, a work embodied in a sound recording, a copyrighted.
computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the A careful study of the records reveals that the song "Dahil Sa Iyo" which
original or the copy which is the subject of the rental; (n) was registered on April 20, 1956 (Brief for Appellant, p. 10) became
177.5. Public display of the original or a copy of the work; popular in radios, juke boxes, etc. long before registration (TSN, May 28,
177.6. Public performance of the work; and 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on
177.7. Other communication to the public of the work. (Sec. 5, P. D. No. January 14, 1955 (Brief for Appellant, p. 10) had become popular twenty
49a) five (25) years prior to 1968, (the year of the hearing) or from 1943
(TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and
Statutory Right – the right is limited to what the statute confers. "Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966,
appear to have been known and sang by the witnesses as early as 1965
Pearl & Dean Inc., supra or three years before the hearing in 1968. The testimonies of the
witnesses at the hearing of this case on this subject were unrebutted by
Facts the appellant. (Ibid, pp. 28; 29 and 30).
Issues
Law Maglalang Santos vs., McCullough Printing, 12 SCRA 321 (1964)
Held
Facts
Filipino Society of Composers vs. Tan, 148 SCRA 461 (1987) Mauro Malalang Santos filed an action for damages for
unauthorized use, adaptation and appropriation by the MCCULLOUGH
Facts PRINTING COMPANY of the intellectual creation or artistic design of a
Filipino Society of Composers, Authors and Publishers Inc. is Christmas card by him (Mauro Maglalang Santos) based on Article 721
organization under the Corporation Law of the Philippines and registered and 722 of the Civil Code of the Philippines.
with the Securities and Exchange Commission. The association is the The Christmas card depicts a Philippine rural Christmas time
owner of certain musical compositions among which are the songs scene consisting of a woman and a child in a nipa hut adorned with a
entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay star-shaped lantern and a man astride a carabao, beside a tree,
Tao Lamang" and "The Nearness Of You." underneath which appears the plaintiff's pen name, Malang.
The complaint alleges that plaintiff Mauro Malang Santos
Benjamin Tan on the other hand is the operator of a restaurant designed for former Ambassador Felino Neri, for his personal Christmas
known as "Alex Soda Foundation and Restaurant" where a combo with Card greetings for the year 1959, the artistic motif in question. The
professional singers, hired to play and sing musical compositions to following year the defendant McCullough Printing Company, without the
entertain and amuse customers therein, were playing and singing the knowledge and authority of plaintiff, displayed the very design in its
above-mentioned compositions without any license or permission from album of Christmas cards and offered it for sale, for a price. For such

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unauthorized act of defendant, plaintiff suffered moral damages to the whether it shall be published at all, and if published, when, where, by
tune of P16,000.00, because it has placed plaintiff's professional integrity whom, and in what form. This exclusive right is confined to the first
and ethics under serious question and caused him grave embarrassment publication. When once published, it is dedicated to the public, and the
before Ambassador Neri. He further prayed for the additional sum of author loses the exclusive right to control subsequent publication by
P3,000.00 by way of attorney's fee. others, unless the work is placed under the protection of the copyright
law. (See II Tolentino's Comments on the Civil Code, p. 433, citing
Issues Wright v. Eisle 83 N.Y. Supp. 887.)

(1) Whether plaintiff is entitled to protection, notwithstanding the, fact 3rd issue:
that he has not copyrighted his design? Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the
(2) Whether the publication is limited, so as to prohibit its use by others, preceding article, shall have the ownership of their creations even before
or it is general publication? the publication of the same. Once their works are published, their rights
(3) Whether the provisions of the Civil Code or the Copyright Law should are governed by the Copyright laws.
apply in the case? The painter, sculptor or other artist shall have dominion over the product
of his art even before it is copyrighted.
Law
The scientist or technologist has the ownership of his discovery or
Art. 721. By intellectual creation, the following persons acquire invention even before it is patented. (n)
ownership:
(1) The author with regard to his literary, dramatic, historical, legal, (b) Copyright Ownership
philosophical, scientific or other work; Sec. 178; 179; Art. 723 (NCC)
(2) The composer; as to his musical composition;
CHAPTER VI
(3) The painter, sculptor, or other artist, with respect to the product of OWNERSHIP OF COPYRIGHT
his art;
Section 178. Rules on Copyright Ownership. - Copyright ownership shall
(4) The scientist or technologist or any other person with regard to his be governed by the following rules:
discovery or invention. (n)
178.1 Subject to the provisions of this section, in the case of original
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of the literary and artistic works, copyright shall belong to the author of the
preceding article, shall have the ownership of their creations even before work;
the publication of the same. Once their works are published, their rights
are governed by the Copyright laws. 178.2. In the case of works of joint authorship, the co-authors shall be
The painter, sculptor or other artist shall have dominion over the product the original owners of the copyright and in the absence of agreement,
of his art even before it is copyrighted. their rights shall be governed by the rules on co-ownership. If, however,
a work of joint authorship consists of parts that can be used separately
The scientist or technologist has the ownership of his discovery or and the author of each part can be identified, the author of each part
invention even before it is patented. (n) shall be the original owner of the copyright in the part that he has
created;
Held
178.3. In the case of work created by an author during and in the course
1st issue: of his employment, the copyright shall belong to:
The Supreme Court found that plaintiff is not entitled to a
protection, the provision of the Civil Code, notwithstanding. Paragraph 33 (a) The employee, if the creation of the object of copyright is not a part
of Patent Office Administrative Order No. 3 (as amended dated of his regular duties even if the employee uses the time, facilities and
September 18, 1947) entitled "Rules of Practice in the Philippines Patent materials of the employer.
Office relating to the Registration of Copyright Claims" promulgated
pursuant to Republic Act 165, provides, among others, that an (b) The employer, if the work is the result of the performance of his
intellectual creation should be copyrighted thirty (30) days after its regularly-assigned duties, unless there is an agreement, express or
publication, if made in Manila, or within sixty (60) day's if made implied, to the contrary.
elsewhere, failure of which renders such creation public property. In the
case at bar, even as of this moment, there is no copyright for the design 178.4. In the case of a work commissioned by a person other than an
in question. employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work
2nd issue: shall have ownership of the work, but the copyright thereto shall remain
We are not also prepared to accept the contention of appellant with the creator, unless there is a written stipulation to the contrary;
that the publication of the design was a limited one, or that there was an
understanding that only Ambassador Neri should, have absolute right to 178.5. In the case of audiovisual work, the copyright shall belong to the
use the same. In the first place, if such were the condition then producer, the author of the scenario, the composer of the music, the film
Ambassador Neri would be the aggrieved party, and not the appellant. In director, and the author of the work so adapted. However, subject to
the second place, if there was such a limited publication or prohibition, contrary or other stipulations among the creators, the producer shall
the same was not shown on the face of the design. When the purpose is exercise the copyright to an extent required for the exhibition of the work
a limited publication, but the effect is general publication, irrevocable in any manner, except for the right to collect performing license fees for
rights thereupon become vested in the public, in consequence of which the performance of musical compositions, with or without words, which
enforcement of the restriction becomes impossible (Nutt vs. National are incorporated into the work; and
Institute, 31 F [2d] 236). It has been held that the effect of offering for
sale a dress, for example manufactured in accordance with an original 178.6. In respect of letters, the copyright shall belong to the writer
design which is not protected by either a copyright or a patent, is to subject to the provisions of Article 723 of the Civil Code. (Sec. 6, P.D.
divest the owner of his common law rights therein by virtue of the No. 49a)
publication of a 'copy' and thereafter anyone is free to copy the design or
the dress (Fashion Originators Guild of America v. Federal Trade Section 179. Anonymous and Pseudonymous Works. - For purposes of
Commission, 114 F [2d] 80). When Ambassador Neri distributed 800 this Act, the publishers shall be deemed to represent the authors of
copies of the design in controversy, the plaintiff lost control of his design articles and other writings published without the names of the authors or
and the necessary implication was that there had been a general under pseudonyms, unless the contrary appears, or the pseudonyms or
publication, there having been no showing of a clear indication that a adopted name leaves no doubt as to the author's identity, or if the
limited publication was intended. The author of a literary composition has author of the anonymous works discloses his identity. (Sec. 7, P.D. 49)
a light to the first publication thereof. He has a right to determine

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UNIVERSITY OF SAN CARLOS

Civil Code: Art. 723. delivered in public if such use is for information purposes and has not
Letters and other private communications in writing are owned been expressly reserved: Provided, That the source is clearly indicated;
by the person to whom they are addressed and delivered, but they (Sec. 11, P.D. No. 49)
cannot be published or disseminated without the consent of the writer or
his heirs. However, the court may authorize their publication or (d) The reproduction and communication to the public of literary,
dissemination if the public good or the interest of justice so requires. (n) scientific or artistic works as part of reports of current events by means
of photography, cinematography or broadcasting to the extent necessary
for the purpose; (Sec. 12, P.D. No. 49)
(7) Transfer or Assignment of Copyright
Sec. 180- 183 (e) The inclusion of a work in a publication, broadcast, or other
communication to the public, sound recording or film, if such inclusion is
TRANSFER OR ASSIGNMENT OF COPYRIGHT made by way of illustration for teaching purposes and is compatible with
fair use: Provided, That the source and of the name of the author, if
Section 180. Rights of Assignee. – 180.1. The copyright may be assigned appearing in the work, are mentioned;
in whole or in part. Within the scope of the assignment, the assignee is
entitled to all the rights and remedies which the assignor had with (f) The recording made in schools, universities, or educational institutions
respect to the copyright. of a work included in a broadcast for the use of such schools, universities
or educational institutions: Provided, That such recording must be
Note: There are seven rights it can be assigned individually or as a deleted within a reasonable period after they were first broadcast:
whole. Provided, further, That such recording may not be made from audiovisual
works which are part of the general cinema repertoire of feature films
180.2. The copyright is not deemed assigned inter vivos in whole or in except for brief excerpts of the work;
part unless there is a written indication of such intention.
(g) The making of ephemeral recordings by a broadcasting organization
180.3. The submission of a literary, photographic or artistic work to a by means of its own facilities and for use in its own broadcast;
newspaper, magazine or periodical for publication shall constitute only a
license to make a single publication unless a greater right is expressly (h) The use made of a work by or under the direction or control of the
granted. If two (2) or more persons jointly own a copyright or any part Government, by the National Library or by educational, scientific or
thereof, neither of the owners shall be entitled to grant licenses without professional institutions where such use is in the public interest and is
the prior written consent of the other owner or owners. (Sec. 15, P.D. compatible with fair use;
No. 49a)
(i) The public performance or the communication to the public of a work,
Section 181. Copyright and Material Object. - The copyright is distinct in a place where no admission fee is charged in respect of such public
from the property in the material object subject to it. Consequently, the performance or communication, by a club or institution for charitable or
transfer or assignment of the copyright shall not itself constitute a educational purpose only, whose aim is not profit making, subject to such
transfer of the material object. Nor shall a transfer or assignment of the other limitations as may be provided in the Regulations; (n)
sole copy or of one or several copies of the work imply transfer or
assignment of the copyright. (Sec. 16, P.D. No. 49) (j) Public display of the original or a copy of the work not made by means
of a film, slide, television image or otherwise on screen or by means of
Section 182. Filing of Assignment or License. - An assignment or any other device or process: Provided, That either the work has been
exclusive license may be filed in duplicate with the National Library upon published, or, that the original or the copy displayed has been sold, given
payment of the prescribed fee for registration in books and records kept away or otherwise transferred to another person by the author or his
for the purpose. Upon recording, a copy of the instrument shall be successor in title; and
returned to the sender with a notation of the fact of record. Notice of the
record shall be published in the IPO Gazette. (Sec. 19, P.D. No. 49a) (k) Any use made of a work for the purpose of any judicial proceedings
or for the giving of professional advice by a legal practitioner.
Section 183. Designation of Society. - The copyright owners or their heirs
may designate a society of artists, writers or composers to enforce their 184.2. The provisions of this section shall be interpreted in such a way as
economic rights and moral rights on their behalf. (Sec. 32, P.D. No. 49a) to allow the work to be used in a manner which does not conflict with the
normal exploitation of the work and does not unreasonably prejudice the
(8) Limitations of Copyright right holder's legitimate interests.

(a) Limitations On Copyright (b) Fair Use of Work


Sec. 184 Sec. 185

CHAPTER VIII Section 185. Fair Use of a Copyrighted Work. - 185.1. The fair use of a
LIMITATIONS ON COPYRIGHT copyrighted work for criticism, comment, news reporting, teaching
including multiple copies for classroom use, scholarship, research, and
Section 184. Limitations on Copyright. - 184.1. Notwithstanding the similar purposes is not an infringement of copyright. Decompilation,
provisions of Chapter V, the following acts shall not constitute which is understood here to be the reproduction of the code and
infringement of copyright: translation of the forms of the computer program to achieve the inter-
operability of an independently created computer program with other
(a) The recitation or performance of a work, once it has been lawfully programs may also constitute fair use. In determining whether the use
made accessible to the public, if done privately and free of charge or if made of a work in any particular case is fair use, the factors to be
made strictly for a charitable or religious institution or society; (Sec. considered shall include:
10(1), P.D. No. 49)
(a) The purpose and character of the use, including whether such use is
(b) The making of quotations from a published work if they are of a commercial nature or is for non-profit educational purposes;
compatible with fair use and only to the extent justified for the purpose,
including quotations from newspaper articles and periodicals in the form (b) The nature of the copyrighted work;
of press summaries: Provided, That the source and the name of the
author, if appearing on the work, are mentioned; (Sec. 11, third par., (c) The amount and substantiality of the portion used in relation to the
P.D. No. 49) copyrighted work as a whole; and

(c) The reproduction or communication to the public by mass media of (d) The effect of the use upon the potential market for or value of the
articles on current political, social, economic, scientific or religious topic, copyrighted work.
lectures, addresses and other works of the same nature, which are

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UNIVERSITY OF SAN CARLOS

185.2. The fact that a work is unpublished shall not by itself bar a finding Whether or not, despite the apparent textual, thematic and sequential
of fair use if such finding is made upon consideration of all the above similarity between DEP and CET, Robles committed no copyright
factors. infringement?

A&M Records Inc. vs. Napster Inc. No. 00-16401 (U.S. Court Held
Decision) No, Robles still committed copyright infringement.
Robles’ act of lifting from the book of petitioners substantial
Facts portions of discussions and examples, and her failure to acknowledge the
Napster was a web-based company for the purpose of providing same in her book is an infringement of petitioners’ copyrights.
a platform for users to exchange digital music with other users. A&M saw In cases of infringement, copying alone is not what is prohibited. The
the potential negative impact of this service to their sales, and thus filed copying must produce an “injurious effect”. Here, the injury consists in
copyright suit against Napster. A&M alleged that Napster was a that Robles lifted from Habana’s book materials that were the result of
contributor to the copyright infringements against their company. the latter’s research work and compilation and misrepresented them as
Napster’s defense was such that in order for their company to be liable her own. She circulated the book DEP for commercial use and did not
for contributory infringement, their users had to be directly infringing on acknowledge Habana as her source.
A&M’s copyrights. Napster claimed that this was not the case, but their
users were instead engaging in three types of fair use: sampling, space- Hence, there is a clear case of appropriation of copyrighted work for her
shifting, and permissive distribution. Napster also provided a solution to benefit that Robles committed. Habana’s work as authors is the product
the alleged infringement in the form of a compulsory license, in which the of their long and assiduous research and for another to represent it as
government would force the copyright holders to grant use to Napster her own is injury enough. In copyrighting books the purpose is to give
potentially in exchange for royalties. The U.S. District Court ruled in favor protection to the intellectual product of an author. This is precisely what
of A&M and issued an injunction by which Napster should further refrain the law on copyright protected, under Section 184.1 (b). Quotations
from providing their service. from a published work if they are compatible with fair use and only to the
The 9th Circuit Federal Court of Appeals found that it was clear extent justified by the purpose, including quotations from newspaper
the defendants violated at least one of the copyright holders’ five articles and periodicals in the form of press summaries are allowed
exclusive rights: the right to reproduce, prepare derivative work, provided that the source and the name of the author, if appearing on the
distribute, perform, and display. The appellate court found that “Napster work, are mentioned.
users infringe at least two of the copyright holders’ exclusive rights: the
rights of reproduction, § 106(1); and distribution, § 106(3).” The courts Notes
deduced that by uploading files to the Napster search index, users were
violating the plaintiff’s right to reproduction and by downloading files When is there a substantial reproduction of a book?
containing copyrighted music were violating their right to distribution. It does not necessarily require that the entire copyrighted work, or even
The court decided that the defendants had the ability to prevent a large portion of it, be copied. If so much is taken that the value of the
infringement from taking place, and thus has the duty to do so. original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.
Issues In determining the question of infringement, the amount of matter
Whether or not Napster violated one of the exclusive copyright copied from the copyrighted work is an important consideration. To
of A&M? constitute infringement, it is not necessary that the whole or even a large
Whether or not it constitutes fair use? portion of the work shall have been copied. If so much is taken that the
value of the original is sensibly diminished, or the labors of the original
Held author are substantially and to an injurious extent appropriated by
The court also examined Napster’s fair use claims using the another, that is sufficient in point of law to constitute piracy.
four fair use factors: purpose and character of the use, nature of the use,
portion used, effect of use on the market. The court decided that The essence of intellectual piracy should be essayed in conceptual terms
Napster’s argument for sampling did not hold, because the “samples” in order to underscore its gravity by an appropriate understanding
were in fact permanent and complete files on the users’ hard drives. thereof. Infringement of a copyright is a trespass on a private domain
Also, Napster’s space-shifting argument did not hold, because the users owned and occupied by the owner of the copyright, and, therefore,
were not just simply converting their media between formats for storage, protected by law, and infringement of copyright, or piracy, which is a
but were sharing the files as well. No decision was made on the synonymous term in this connection, consists in the doing by any person,
argument of permissive reproduction, because the plaintiffs did not without the consent of the owner of the copyright, of anything the sole
challenge this use. Finally, the court rejected Napster’s request for a right to do which is conferred by statute on the owner of the copyright.
compulsory license, citing that such a device would provide Napster with
an “easy out” while seemingly punishing the copyright holders. (Cornell) Piracy
A copy of a piracy is an infringement of the original, and it is no defense
Habana vs. Robles G.R. No. 131522, July 19, 1999 that the pirate, in such cases, did not know whether or not he was
infringing any copyright; he at least knew that what he was copying was
Facts not his, and he copied at his peril.
Habana is the author of the copyrighted book entitled College
English for Today (CET). Robles and GoodWill is the author and publisher (c) Work of Architecture
of the book entitled Developing English Proficiency (DEP). Sec. 186
When Habana et al. try to revise their work they encountered
by chance that the work of Robles (DEP) is similar of the contents, Section 186. Work of Architecture. - Copyright in a work of architecture
scheme of presentation, illustrations and illustrative examples in their shall include the right to control the erection of any building which
own book. reproduces the whole or a substantial part of the work either in its
After an itemized examination and comparison of the two original form or in any form recognizably derived from the original:
books (CET and DEP), Habana found that several pages of the Robles’ Provided, That the copyright in any such work shall not include the right
book are similar, if not all together a copy of Habana’s book, which is a to control the reconstruction or rehabilitation in the same style as the
case of plagiarism and copyright infringement. original of a building to which that copyright relates. (n)
Habana then made demands for damages against respondents and also
demanded that they cease and desist from further selling and distributing (d) Reproduction of Published Work
to the general public the infringed copies of Robles’ works. Sec. 187- 187.2
However, Robles ignored the demands, hence, Habana et al. filed with
the Regional Trial Court, Makati, a complaint for “Infringement and/or Section 187. Reproduction of Published Work. - 187.1. Notwithstanding
unfair competition with damages” against private respondents. the provision of Section 177, and subject to the provisions of Subsection
187.2, the private reproduction of a published work in a single copy,
Issues where the reproduction is made by a natural person exclusively for

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UNIVERSITY OF SAN CARLOS

research and private study, shall be permitted, without the authorization


of the owner of copyright in the work. (g) Importation for Personal Purposes
Sec. 190
187.2. The permission granted under Subsection 187.1 shall not extend
to the reproduction of: Section 190. Importation for Personal Purposes. - 190.1. Notwithstanding
the provision of Subsection 177.6, but subject to the limitation under the
(a) A work of architecture in the form of building or other construction; Subsection 185.2, the importation of a copy of a work by an individual
for his personal purposes shall be permitted without the authorization of
(b) An entire book, or a substantial part thereof, or of a musical work in the author of, or other owner of copyright in, the work under the
graphic form by reprographic means; following circumstances:

(c) A compilation of data and other materials; (a) When copies of the work are not available in the Philippines and:

(d) A computer program except as provided in Section 189; and (i) Not more than one (1) copy at one time is imported for strictly
individual use only; or
(e) Any work in cases where reproduction would unreasonably conflict
with a normal exploitation of the work or would otherwise unreasonably (ii) The importation is by authority of and for the use of the Philippine
prejudice the legitimate interests of the author. (n) Government; or

(e) Reprographic Reproduction by Libraries (iii) The importation, consisting of not more than three (3) such copies or
Sec. 188 likenesses in any one invoice, is not for sale but for the use only of any
religious, charitable, or educational society or institution duly
Section 188. Reprographic Reproduction by Libraries. - 188.1. incorporated or registered, or is for the encouragement of the fine arts,
Notwithstanding the provisions of Subsection 177.6, any library or or for any state school, college, university, or free public library in the
archive whose activities are not for profit may, without the authorization Philippines.
of the author of copyright owner, make a single copy of the work by
reprographic reproduction: (b) When such copies form parts of libraries and personal baggage
belonging to persons or families arriving from foreign countries and are
(a) Where the work by reason of its fragile character or rarity cannot be not intended for sale: Provided, That such copies do not exceed three
lent to user in its original form; (3).

(b) Where the works are isolated articles contained in composite works or 190.2. Copies imported as allowed by this Section may not lawfully be
brief portions of other published works and the reproduction is necessary used in any way to violate the rights of owner the copyright or annul or
to supply them, when this is considered expedient, to persons requesting limit the protection secured by this Act, and such unlawful use shall be
their loan for purposes of research or study instead of lending the deemed an infringement and shall be punishable as such without
volumes or booklets which contain them; and prejudice to the proprietor's right of action.

(c) Where the making of such a copy is in order to preserve and, if 190.3. Subject to the approval of the Secretary of Finance, the
necessary in the event that it is lost, destroyed or rendered unusable, Commissioner of Customs is hereby empowered to make rules and
replace a copy, or to replace, in the permanent collection of another regulations for preventing the importation of articles the importation of
similar library or archive, a copy which has been lost, destroyed or which is prohibited under this Section and under treaties and conventions
rendered unusable and copies are not available with the publisher. to which the Philippines may be a party and for seizing and condemning
and disposing of the same in case they are discovered after they have
188.2. Notwithstanding the above provisions, it shall not be permissible been imported. (Sec. 30, P.D. No. 49)
to produce a volume of a work published in several volumes or to
produce missing tomes or pages of magazines or similar works, unless (9) Registration and Deposit with National Library and Supreme
the volume, tome or part is out of stock: Provided, That every library Court Library
which, by law, is entitled to receive copies of a printed work, shall be Sec. 191; 192; 227; 228
entitled, when special reasons so require, to reproduce a copy of a
published work which is considered necessary for the collection of the CHAPTER IX
library but which is out of stock. (Sec. 13, P.D. 49a) DEPOSIT AND NOTICE

(f) Reproduction of Computer Program Section 191. Registration and Deposit with National Library and the
Sec. 189 Supreme Court Library. - After the first public dissemination of
performance by authority of the copyright owner of a work falling under
Section 189. Reproduction of Computer Program. - 189.1. Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the
Notwithstanding the provisions of Section 177, the reproduction in one purpose of completing the records of the National Library and the
(1) back-up copy or adaptation of a computer program shall be Supreme Court Library, within three (3) weeks, be registered and
permitted, without the authorization of the author of, or other owner of deposited with it, by personal delivery or by registered mail two (2)
copyright in, a computer program, by the lawful owner of that computer complete copies or reproductions of the work in such form as the
program: Provided, That the copy or adaptation is necessary for: directors of said libraries may prescribe. A certificate of deposit shall be
issued for which the prescribed fee shall be collected and the copyright
(a) The use of the computer program in conjunction with a computer for owner shall be exempt from making additional deposit of the works with
the purpose, and to the extent, for which the computer program has the National Library and the Supreme Court Library under other laws. If,
been obtained; and within three (3) weeks after receipt by the copyright owner of a written
demand from the directors for such deposit, the required copies or
(b) Archival purposes, and, for the replacement of the lawfully owned reproductions are not delivered and the fee is not paid, the copyright
copy of the computer program in the event that the lawfully obtained owner shall be liable to pay a fine equivalent to the required fee per
copy of the computer program is lost, destroyed or rendered unusable. month of delay and to pay to the National Library and the Supreme Court
Library the amount of the retail price of the best edition of the work. Only
189.2. No copy or adaptation mentioned in this Section shall be used for the above mentioned classes of work shall be accepted for deposit by the
any purpose other than the ones determined in this Section, and any National Library and the Supreme Court Library. (Sec. 26, P.D. No. 49a)
such copy or adaptation shall be destroyed in the event that continued
possession of the copy of the computer program ceases to be lawful. Section 192. Notice of Copyright. - Each copy of a work published or
offered for sale may contain a notice bearing the name of the copyright
189.3. This provision shall be without prejudice to the application of owner, and the year of its first publication, and, in copies produced after
Section 185 whenever appropriate. (n) the creator's death, the year of such death. (Sec. 27, P.D. No. 49a)

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UNIVERSITY OF SAN CARLOS

Section 195. Waiver of Moral Rights. - An author may waive his rights
Note: The value of the notice of copyright is enforcing your copyright in mentioned in Section 193 by a written instrument, but no such waiver
infringement case shall be valid where its effects is to permit another:

CHAPTER XX 195.1. To use the name of the author, or the title of his work, or
MISCELLANEOUS PROVISIONS otherwise to make use of his reputation with respect to any version or
adaptation of his work which, because of alterations therein, would
Section 227. Ownership of Deposit and Instruments. - All copies substantially tend to injure the literary or artistic reputation of another
deposited and instruments in writing filed with the National Library and author; or
the Supreme Court Library in accordance with the provisions of this Act
shall become the property of the Government. (Sec. 60, P.D. No. 49) 195.2. To use the name of the author with respect to a work he did not
create. (Sec. 36, P.D. No. 49)
Section 228. Public Records. - The section or division of the National
Library and the Supreme Court Library charged with receiving copies and (d) Contribution to Collective Work
instruments deposited and with keeping records required under this Act Sec. 196
and everything in it shall be opened to public inspection. The Director of
the National Library is empowered to issue such safeguards and Section 196. Contribution to Collective Work. - When an author
regulations as may be necessary to implement this Section and other contributes to a collective work, his right to have his contribution
provisions of this Act. (Sec. 61, P.D. No. 49) attributed to him is deemed waived unless he expressly reserves it. (Sec.
37, P.D. No. 49)
Section 229. Copyright Division; Fees. - The Copyright Section of the
National Library shall be classified as a Division upon the effectivity of (e) Term of Moral Rights
this Act. The National Library shall have the power to collect, for the Sec. 198; 199; 226
discharge of its services under this Act, such fees as may be promulgated
by it from time to time subject to the approval of the Department Head. Section 198. Term of Moral Rights. - 198.1. The rights of an author under
(Sec. 62, P.D. 49a) this chapter shall last during the lifetime of the author and for fifty (50)
years after his death and shall not be assignable or subject to license.
(10) Moral Rights The person or persons to be charged with the posthumous enforcement
of these rights shall be named in writing to be filed with the National
(a) Scope of Moral Rights Library. In default of such person or persons, such enforcement shall
Sec. 193 devolve upon either the author's heirs, and in default of the heirs, the
Director of the National Library.
CHAPTER X
MORAL RIGHTS 198.2. For purposes of this Section, "Person" shall mean any individual,
partnership, corporation, association, or society. The Director of the
Section 193. Scope of Moral Rights. - The author of a work shall, National Library may prescribe reasonable fees to be charged for his
independently of the economic rights in Section 177 or the grant of an services in the application of provisions of this Section. (Sec. 39, P.D. No.
assignment or license with respect to such right, have the right: 49)

Note: Economic Rights is independent for Moral Rights Section 199. Enforcement Remedies. - Violation of any of the rights
conferred by this Chapter shall entitle those charged with their
193.1. To require that the authorship of the works be attributed to him, enforcement to the same rights and remedies available to a copyright
in particular, the right that his name, as far as practicable, be indicated owner. In addition, damages which may be availed of under the Civil
in a prominent way on the copies, and in connection with the public use Code may also be recovered. Any damage recovered after the creator's
of his work; death shall be held in trust for and remitted to his heirs, and in default of
the heirs, shall belong to the government. (Sec. 40, P D No. 49)
193.2. To make any alterations of his work prior to, or to withhold it from
publication; Section 226. Damages. - No damages may be recovered under this Act
after four (4) years from the time the cause of action arose. (Sec. 58,
193.3. To object to any distortion, mutilation or other modification of, or P.D. No. 49)
other derogatory action in relation to, his work which would be prejudicial
to his honor or reputation; and (11) Rights to Proceed in Subsequent Transfers

193.4. To restrain the use of his name with respect to any work not of (a) Sale or Lease of Work
his own creation or in a distorted version of his work. (Sec. 34, P.D. No. Sec. 200; 201
49)
Section 200. Sale or Lease of Work. - In every sale or lease of an original
Notes: work of painting or sculpture or of the original manuscript of a writer or
Right to attribution or paternity right composer, subsequent to the first disposition thereof by the author, the
Right to alteration on non publication author or his heirs shall have an inalienable right to participate in the
Right to preservation of integrity gross proceeds of the sale or lease to the extent of five percent (5%).
Right to be indentified with work of others with distorted work This right shall exist during the lifetime of the author and for fifty (50)
years after his death. (Sec. 31, P.D. No. 49)
Transfer or Licensing are different.
Section 201. Works Not Covered. - The provisions of this Chapter shall
(b) Breach of Contract not apply to prints, etchings, engravings, works of applied art, or works
Sec. 194 of similar kind wherein the author primarily derives gain from the
proceeds of reproductions. (Sec. 33, P.D. No. 49)
Section 194. Breach of Contract. - An author cannot be compelled to
perform his contract to create a work or for the publication of his work (12) Rights of Performers, Producers of Sound Recordings and
already in existence. However, he may be held liable for damages for Broadcasting Organizations
breach of such contract. (Sec. 35, P.D. No. 49)
(a) Definitions
(c) Waiver of Moral Rights Sec. 202- 202. 8
Sec. 195
CHAPTER XII

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UNIVERSITY OF SAN CARLOS

RIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND 203.5. The right of authorizing the making available to the public of their
BROADCASTING ORGANIZATIONS performances fixed in sound recordings, by wire or wireless means, in
such a way that members of the public may access them from a place
Section 202. Definitions. - For the purpose of this Act, the following and time individually chosen by them. (Sec. 42, P.D. No. 49a)
terms shall have the following meanings:
(c) Moral Rights of Performers
202.1. "Performers" are actors, singers, musicians, dancers, and other Sec. 204; 204.1
persons who act, sing, declaim, play in, interpret, or otherwise perform
literary and artistic work; Section 204. Moral Rights of Performers. - 204.1. Independently of a
performer's economic rights, the performer, shall, as regards his live
202.2. "Sound recording" means the fixation of the sounds of a aural performances or performances fixed in sound recordings, have the
performance or of other sounds, or representation of sound, other than right to claim to be identified as the performer of his performances,
in the form of a fixation incorporated in a cinematographic or other except where the omission is dictated by the manner of the use of the
audiovisual work; performance, and to object to any distortion, mutilation or other
modification of his performances that would be prejudicial to his
202.3. An "audiovisual work or fixation" is a work that consists of a series reputation.
of related images which impart the impression of motion, with or without
accompanying sounds, susceptible of being made visible and, where 204.2. The rights granted to a performer in accordance with Subsection
accompanied by sounds, susceptible of being made audible; 203.1 shall be maintained and exercised fifty (50) years after his death,
by his heirs, and in default of heirs, the government, where protection is
202.4. "Fixation" means the embodiment of sounds, or of the claimed. (Sec. 43, P.D. No. 49)
representations thereof, from which they can be perceived, reproduced
or communicated through a device; (d) Limitation on Performers’ Rights
Sec. 205; 205.2
202. 5. "Producer of a sound recording" means the person, or the legal
entity, who or which takes the initiative and has the responsibility for the Section 205. Limitation on Right. - 205.1. Subject to the provisions of
first fixation of the sounds of a performance or other sounds, or the Section 206, once the performer has authorized the broadcasting or
representation of sounds; fixation of his performance, the provisions of Sections 203 shall have no
further application.
202.6. "Publication of a fixed performance or a sound recording" means
the offering of copies of the fixed performance or the sound recording to 205.2. The provisions of Section 184 and Section 185 shall apply mutatis
the public, with the consent of the right holder: Provided, That copies are mutandis to performers. (n)
offered to the public in reasonable quality;
(e) Additional Remuneration for Subsequent Communications or
202.7. "Broadcasting" means the transmission by wireless means for the Broadcasts
public reception of sounds or of images or of representations thereof; Sec. 206
such transmission by satellite is also "broadcasting" where the means for
decrypting are provided to the public by the broadcasting organization or Section 206. Additional Remuneration for Subsequent Communications or
with its consent; Broadcasts. - Unless otherwise provided in the contract, in every
communication to the public or broadcast of a performance subsequent
202.8. "Broadcasting organization" shall include a natural person or a to the first communication or broadcast thereof by the broadcasting
juridical entity duly authorized to engage in broadcasting; and organization, the performer shall be entitled to an additional
remuneration equivalent to at least five percent (5%) of the original
202.9 "Communication to the public of a performance or a sound compensation he or she received for the first communication or
recording" means the transmission to the public, by any medium, broadcast. (n)
otherwise than by broadcasting, of sounds of a performance or the
representations of sounds fixed in a sound recording. For purposes of (f) Contract Terms
Section 209, "communication to the public" includes making the sounds Sec. 207
or representations of sounds fixed in a sound recording audible to the
public. Section 207. Contract Terms. - Nothing in this Chapter shall be construed
to deprive performers of the right to agree by contracts on terms and
(b) Scope of Performers’ Rights conditions more favorable for them in respect of any use of their
Sec. 203 performance. (n)

Section 203. Scope of Performers' Rights. - Subject to the provisions of (g) Scope of Right on Sound Recordings
Section 212, performers shall enjoy the following exclusive rights: Sec. 208; 210

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


PRODUCERS OF SOUND RECORDINGS
(a) The broadcasting and other communication to the public of their
performance; and Section 208. Scope of Right. - Subject to the provisions of Section 212,
producers of sound recordings shall enjoy the following exclusive rights:
(b) The fixation of their unfixed performance.
208.1. The right to authorize the direct or indirect reproduction of their
203.2. The right of authorizing the direct or indirect reproduction of their sound recordings, in any manner or form; the placing of these
performances fixed in sound recordings, in any manner or form; reproductions in the market and the right of rental or lending;

203.3. Subject to the provisions of Section 206, the right of authorizing 208.2. The right to authorize the first public distribution of the original
the first public distribution of the original and copies of their performance and copies of their sound recordings through sale or rental or other forms
fixed in the sound recording through sale or rental or other forms of of transferring ownership; and
transfer of ownership;
208.3. The right to authorize the commercial rental to the public of the
203.4. The right of authorizing the commercial rental to the public of the original and copies of their sound recordings, even after distribution by
original and copies of their performances fixed in sound recordings, even them by or pursuant to authorization by the producer. (Sec. 46, P.D. No.
after distribution of them by, or pursuant to the authorization by the 49a)
performer; and

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UNIVERSITY OF SAN CARLOS

Section 210. Limitation of Right. - Sections 184 and 185 shall apply install, operate and maintain a nationwide DTH satellite service. When it
mutatis mutandis to the producer of sound recordings. (Sec. 48, P.D. No. commenced operations, it offered as part of its program line-up ABS-CBN
49a) Channels 2 and 23, NBN, Channel 4, ABC Channel 5, GMA Channel 7,
RPN Channel 9, and IBC Channel 13, together with other paid premium
(h) Communication to the Public on Sound Recordings program channels.
Sec. 209 However, on April 25, 2001, ABS-CBN demanded for PMSI to
cease and desist from rebroadcasting Channels 2 and 23. On April 27,
Section 209. Communication to the Public. - If a sound recording 2001, PMSI replied that the rebroadcasting was in accordance with the
published for commercial purposes, or a reproduction of such sound authority granted it by NTC and its obligation under NTC Memorandum
recording, is used directly for broadcasting or for other communication to Circular No. 4-08-88, Section 6.2 of which requires all cable television
the public, or is publicly performed with the intention of making and system operators operating in a community within Grade “A” or “B”
enhancing profit, a single equitable remuneration for the performer or contours to carry the television signals of the authorized television
performers, and the producer of the sound recording shall be paid by the broadcast stations.
user to both the performers and the producer, who, in the absence of Thereafter, negotiations ensued between the parties in an
any agreement shall share equally. (Sec. 47, P.D. No. 49a) effort to reach a settlement; however, the negotiations were terminated
on April 4, 2002 by ABS-CBN allegedly due to PMSI’s inability to ensure
(i) Scope of Right of Broadcasting Organizations the prevention of illegal retransmission and further rebroadcast of its
Sec. 211 signals, as well as the adverse effect of the rebroadcasts on the business
operations of its regional television stations.
CHAPTER XIV On May 13, 2002, ABS-CBN filed with the IPO a complaint for
BROADCASTING ORGANIZATIONS “Violation of Laws Involving Property Rights, with Prayer for the Issuance
of a Temporary Restraining Order and/or Writ of Preliminary Injunction,”.
Section 211. Scope of Right. - Subject to the provisions of Section 212, It alleged that PMSI’s unauthorized rebroadcasting of Channels
broadcasting organizations shall enjoy the exclusive right to carry out, 2 and 23 infringed on its broadcasting rights and copyright. On July 2,
authorize or prevent any of the following acts: 2002, the Bureau of Legal Affairs (BLA) of the IPO granted ABS-CBN’s
application for a temporary restraining order. On July 12, 2002, PMSI
211.1. The rebroadcasting of their broadcasts; suspended its retransmission of Channels 2 and 23.

211.2. The recording in any manner, including the making of films or the PMSI Argument
use of video tape, of their broadcasts for the purpose of communication Broadcasting Channels 1 & 23 is subject to the must-carry rule
to the public of television broadcasts of the same; and under Memorandum Circular No. 04-08-88.
Issues
211.3. The use of such records for fresh transmissions or for fresh (1) Whether or not PMSI’s unauthorized rebroadcasting of
recording. (Sec. 52, P.D. No. 49) Channels 2 and 23 is an infringement of its broadcasting rights and
copyright under the Intellectual Property Code?
(j) Limitations on Rights (2) Whether or not Memorandum Circular No. 04-08-88
Sec. 212 excludes DTH satellite television operators?
Held
CHAPTER XV PMSI did not infringe on ABS-CBN’s intellectual property rights
LIMITATIONS ON PROTECTION under the IP Code.
Section 202.7 of the IP Code defines broadcasting as “the
Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not transmission by wireless means for the public reception of sounds or of
apply where the acts referred to in those Sections are related to: images or of representations thereof; such transmission by satellite is
also ‘broadcasting’ where the means for decrypting are provided to the
212.1. The use by a natural person exclusively for his own personal public by the broadcasting organization or with its consent.”
purposes; On the other hand, rebroadcasting as defined in Article 3(g) of
the International Convention for the Protection of Performers, Producers
212.2. Using short excerpts for reporting current events; of Phonograms and Broadcasting Organizations, otherwise known as the
1961 Rome Convention, of which the Republic of the Philippines is a
212.3. Use solely for the purpose of teaching or for scientific research; signatory, is “the simultaneous broadcasting by one broadcasting
and organization of the broadcast of another broadcasting organization.”
PMSI would not qualify as a broadcasting organization because
212.4. Fair use of the broadcast subject to the conditions under Section it does not have the aforementioned responsibilities imposed upon
185. (Sec. 44, P.D. No. 49a) broadcasting organizations, such as ABS-CBN.
ABS-CBN creates and transmits its own signals; PMSI merely
ABS-CBN vs. Phil. Multi-Media System Inc. carries such signals which the viewers receive in its unaltered form. PMSI
G.R. No. 175769-70, Jan. 19, 2009 does not produce, select, or determine the programs to be shown in
Channels 2 and 23. Likewise, it does not pass itself off as the origin or
Facts author of such programs. Insofar as Channels 2 and 23 are concerned,
ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed PMSI merely retransmits the same in accordance with Memorandum
under the laws of the Republic of the Philippines to engage in television Circular 04-08-88. With regard to its premium channels, it buys the
and radio broadcasting. It broadcasts television programs by wireless channels from content providers and transmits on an as-is basis to its
means to Metro Manila and nearby provinces, and by satellite to viewers. Clearly, PMSI does not perform the functions of a broadcasting
provincial stations through Channel 2 on Very High Frequency (VHF) and organization; thus, it cannot be said that it is engaged in rebroadcasting
Channel 23 on Ultra High Frequency (UHF). The programs aired over Channels 2 and 23.
Channels 2 and 23 are either produced by ABS-CBN or purchased from or The retransmission of ABS-CBN’s signals by PMSI – which
licensed by other producers. functions essentially as a cable television – does not therefore constitute
ABS-CBN also owns regional television stations which pattern rebroadcasting in violation of the former’s intellectual property rights
their programming in accordance with perceived demands of the region. under the IP Code.
Thus, television programs shown in Metro Manila and nearby provinces
are not necessarily shown in other provinces. (13) Term of Protection in General
Philippine Multi-Media System, Inc. (PMSI) is the operator of
Dream Broadcasting System. It delivers digital direct-to-home (DTH) (a) Term of Protection
television via satellite to its subscribers all over the Philippines. Sec. 213
PMSI was granted a legislative franchise under Republic Act
No. 86305 on May 7, 1998 and was given a Provisional Authority by the Section 213. Term of Protection. - 213.1. Subject to the provisions of
National Telecommunications Commission (NTC) on February 1, 2000 to Subsections 213.2 to 213.5, the copyright in works under Sections 172

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UNIVERSITY OF SAN CARLOS

and 173 shall be protected during the life of the author and for fifty (50)
years after his death. This rule also applies to posthumous works. (Sec. Microsoft Corp. vs. Hwang
21, first sentence, P.D. No. 49a) G.R. No. 147043, June 21, 2005

(i) Joint Authorship Facts


Sec. 213.2 Microsoft Corporation ("Microsoft"), a Delaware, United States
corporation, owns the copyright and trademark to several computer
213.2. In case of works of joint authorship, the economic rights shall be software. Beltron Computer Philippines, Inc. ("Beltron") and Taiwan
protected during the life of the last surviving author and for fifty (50) Machinery Display & Trade Center, Inc. ("TMTC") are domestic
years after his death. (Sec. 21, second sentence, P.D. No. 49) corporations.
In May 1993, Microsoft and Beltron entered into a Licensing
(ii) Anonymous or Pseudonymous Works Agreement ("Agreement"). Under Section 2(a) of the Agreement, as
Sec. 213.3 amended in January 1994, Microsoft authorized Beltron, for a fee, to:

213.3. In case of anonymous or pseudonymous works, the copyright (1) reproduce and install no more than one (1) copy of
shall be protected for fifty (50) years from the date on which the work Microsoft software on each Customer System hard disk or Read Only
was first lawfully published: Provided, That where, before the expiration Memory ("ROM")
of the said period, the author's identity is revealed or is no longer in (2) distribute directly or indirectly and license copies of the
doubt, the provisions of Subsections 213.1. and 213.2 shall apply, as the Product in object code form to end users
case may be: Provided, further, That such works if not published before
shall be protected for fifty (50) years counted from the making of the The Agreement also authorized Microsoft and Beltron to
work. (Sec. 23, P.D. No. 49) terminate the contract if the other fails to comply with any of the
Agreement’s provisions. Microsoft terminated the Agreement effective 22
(iii) Works of Applied Art June 1995 for Beltron’s non-payment of royalties.
Sec. 213. 4 Afterwards, Microsoft learned that Beltron were illegally
copying and selling Microsoft software. Consequently, Microsoft, through
213.4. In case of works of applied art the protection shall be for a period its Philippine agent, hired the services of Pinkerton Consulting Services
of twenty-five (25) years from the date of making. (Sec. 24(B), P.D. No. ("PCS"), a private investigative firm. Microsoft also sought the assistance
49a) of the National Bureau of Investigation ("NBI").
On 10 November 1995, a PCS employee and an NBI agent
(iv) Photographic Works posing as representatives of a computer shop, bought computer
Sec. 213.5 hardware (central processing unit ("CPU") and computer monitor) and
software (12 computer disks ("CDs") in read-only memory ("ROM")
213.5. In case of photographic works, the protection shall be for fifty format) from Beltron. The CPU contained pre-installed Microsoft Windows
(50) years from publication of the work and, if unpublished, fifty (50) 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic
years from the making. (Sec. 24(C), P.D. 49a) containers with Microsoft packaging, also contained Microsoft software.
At least two of the CD-ROMs were "installers," so-called because they
(v)Audio-visual Works contain several software (Microsoft only or both Microsoft and non-
Sec. 213.6 Microsoft). The PCS employee and the NBI agent were not given the
Microsoft end-user license agreements, user’s manuals, registration cards
213.6. In case of audio-visual works including those produced by process or certificates of authenticity for the articles they purchased. The receipt
analogous to photography or any process for making audio-visual issued to them for the CPU and monitor bore the heading "T.M.T.C.
recordings, the term shall be fifty (50) years from date of publication (PHILS.) INC. BELTRON COMPUTER."
and, if unpublished, from the date of making. (Sec. 24(C), P.D. No. 49a) The NBI searched the premises of Beltron and TMTC and seized
several computer-related hardware, software, accessories, and
(vi) Calculation of Terms paraphernalia based on the search warrant applied by Microsoft.
Sec. 214 Based on the articles obtained from Beltron and TMC, Microsoft
and a certain Lotus Development Corporation ("Lotus Corporation")
Section 214. Calculation of Term. - The term of protection subsequent to charged Beltron and TMC before the Department of Justice ("DOJ") with
the death of the author provided in the preceding Section shall run from copyright infringement under Section 5(A) in relation to Section 29 of
the date of his death or of publication, but such terms shall always be Presidential Decree No. 49, as amended, ("PD 49") and with unfair
deemed to begin on the first day of January of the year following the competition under Article 189(1) of the Revised Penal Code. Microsoft
event which gave rise to them. (Sec. 25, P.D. No. 49) alleged that respondents illegally copied and sold Microsoft software.

(b) Term of Protection for Performers, Producers and Issues


Broadcasting Organizations Whether or not Beltron and TMC are liable for copyright
Sec. 215; 215.2 infringement and unfair competition?

Section 215. Term of Protection for Performers, Producers and Held


Broadcasting Organizations. - 215.1. The rights granted to performers The gravamen of copyright infringement is not merely the
and producers of sound recordings under this law shall expire: unauthorized "manufacturing" of intellectual works but rather the
unauthorized performance of any of the acts covered by Section 5.
(a) For performances not incorporated in recordings, fifty (50) years from Hence, any person who performs any of the acts under Section 5 without
the end of the year in which the performance took place; and obtaining the copyright owner’s prior consent renders himself civilly and
criminally liable for copyright infringement.
(b) For sound or image and sound recordings and for performances Infringement of a copyright is a trespass on a private domain
incorporated therein, fifty (50) years from the end of the year in which owned and occupied by the owner of the copyright, and, therefore,
the recording took place. protected by law, and infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the doing by any person,
215.2. In case of broadcasts, the term shall be twenty (20) years from without the consent of the owner of the copyright, of anything the sole
the date the broadcast took place. The extended term shall be applied right to do which is conferred by statute on the owner of the copyright.
only to old works with subsisting protection under the prior law. (Sec. 55, Significantly, under Section 5(A), a copyright owner is vested
P.D. No. 49a) with the exclusive right to "copy, distribute, multiply, [and] sell" his
intellectual works.
(14) Infringement
The elements of unfair competition under Article 189(1)43 of the Revised
(a) How committed Penal Code are:

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UNIVERSITY OF SAN CARLOS

(a) That the offender gives his goods the general appearance of the
goods of another manufacturer or dealer; Facts
(b) That the general appearance is shown in the Habana is the author of the copyrighted book entitled College
(1) goods themselves, or in the English for Today (CET). Robles and GoodWill is the author and publisher
(2) wrapping of their packages, or in the of the book entitled Developing English Proficiency (DEP).
(3) device or words therein, or in When Habana et al. try to revise their work they encountered
(4) any other feature of their appearance by chance that the work of Robles (DEP) is similar of the contents,
(c) That the offender offers to sell or sells those goods or gives other scheme of presentation, illustrations and illustrative examples in their
persons a chance or opportunity to do the same with a like purpose[; own book.
and] After an itemized examination and comparison of the two
(d) That there is actual intent to deceive the public or defraud a books (CET and DEP), Habana found that several pages of the Robles’
competitor. book are similar, if not all together a copy of Habana’s book, which is a
case of plagiarism and copyright infringement.
Microsoft Corp. vs. Maxicorp Inc Habana then made demands for damages against respondents and also
438 SCRA 224 demanded that they cease and desist from further selling and distributing
to the general public the infringed copies of Robles’ works.
Facts However, Robles ignored the demands, hence, Habana et al. filed with
the Regional Trial Court, Makati, a complaint for “Infringement and/or
Microsoft sued Maxicorp for copyright infringement and unfair unfair competition with damages” against private respondents.
competition for production, installing and selling of counterfeit Microsoft’s
products. Microsoft alleged that they did not authorize Maxicorp for Issues
production or selling of their products.
Whether or not, despite the apparent textual, thematic and sequential
Issues similarity between DEP and CET, Robles committed no copyright
Whether or not Maxicorp committed copyright infringement infringement?
and unfair competition?
Held Held
Copyright infringement and unfair competition are not limited No, Robles still committed copyright infringement.
to the act of selling counterfeit goods. They cover a whole range of acts, Robles’ act of lifting from the book of petitioners substantial
from copying, assembling, packaging to marketing, including the mere portions of discussions and examples, and her failure to acknowledge the
offering for sale of the counterfeit goods. same in her book is an infringement of petitioners’ copyrights.
In cases of infringement, copying alone is not what is prohibited. The
(b) Remedies for Infringement copying must produce an “injurious effect”. Here, the injury consists in
Sec. 216; 216.2 that Robles lifted from Habana’s book materials that were the result of
the latter’s research work and compilation and misrepresented them as
CHAPTER XVII her own. She circulated the book DEP for commercial use and did not
INFRINGEMENT acknowledge Habana as her source.

Section 216. Remedies for Infringement. - 216.1. Any person infringing a Hence, there is a clear case of appropriation of copyrighted work for her
right protected under this law shall be liable: benefit that Robles committed. Habana’s work as authors is the product
of their long and assiduous research and for another to represent it as
(a) To an injunction restraining such infringement. The court may also her own is injury enough. In copyrighting books the purpose is to give
order the defendant to desist from an infringement, among others, to protection to the intellectual product of an author. This is precisely what
prevent the entry into the channels of commerce of imported goods that the law on copyright protected, under Section 184.1 (b). Quotations
involve an infringement, immediately after customs clearance of such from a published work if they are compatible with fair use and only to the
goods. extent justified by the purpose, including quotations from newspaper
articles and periodicals in the form of press summaries are allowed
(b) Pay to the copyright proprietor or his assigns or heirs such actual provided that the source and the name of the author, if appearing on the
damages, including legal costs and other expenses, as he may have work, are mentioned.
incurred due to the infringement as well as the profits the infringer may
have made due to such infringement, and in proving profits the plaintiff Columbia Pictures Inc. vs. CA, supra
shall be required to prove sales only and the defendant shall be required
to prove every element of cost which he claims, or, in lieu of actual Facts
damages and profits, such damages which to the court shall appear to be Issues
just and shall not be regarded as penalty. Held

(c) Deliver under oath, for impounding during the pendency of the action, (c) Criminal Penalties
upon such terms and conditions as the court may prescribe, sales Sec. 217; 217.3
invoices and other documents evidencing sales, all articles and their
packaging alleged to infringe a copyright and implements for making Section 217. Criminal Penalties. - 217.1. Any person infringing any right
them. secured by provisions of Part IV of this Act or aiding or abetting such
infringement shall be guilty of a crime punishable by:
(d) Deliver under oath for destruction without any compensation all
infringing copies or devices, as well as all plates, molds, or other means (a) Imprisonment of one (1) year to three (3) years plus a fine ranging
for making such infringing copies as the court may order. from Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos
(P150,000) for the first offense.
(e) Such other terms and conditions, including the payment of moral and
exemplary damages, which the court may deem proper, wise and (b) Imprisonment of three (3) years and one (1) day to six (6) years plus
equitable and the destruction of infringing copies of the work even in the a fine ranging from One hundred fifty thousand pesos (P150,000) to Five
event of acquittal in a criminal case. hundred thousand pesos (P500,000) for the second offense.

216.2. In an infringement action, the court shall also have the power to (c) Imprisonment of six (6) years and one (1) day to nine (9) years plus
order the seizure and impounding of any article which may serve as a fine ranging from five hundred thousand pesos (P500,000) to One
evidence in the court proceedings. (Sec. 28, P.D. No. 49a) million five hundred thousand pesos (P1,500,000) for the third and
subsequent offenses.
Habana vs. Robles
310 SCRA 522 (1999) (d) In all cases, subsidiary imprisonment in cases of insolvency.

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217.2. In determining the number of years of imprisonment and the Bayanihan Music Phils., Inc. vs. BMG Records
amount of fine, the court shall consider the value of the infringing G.R. No. 166337, March 7, 2005
materials that the defendant has produced or manufactured and the
damage that the copyright owner has suffered by reason of the Facts
infringement. Jose Mari Chan (Chan) entered into a contract with Bayanihan
Music Philippines, Inc. (Bayanihan), whereunder the former assigned to
217.3. Any person who at the time when copyright subsists in a work has the latter all his rights, interests and participation over his musical
in his possession an article which he knows, or ought to know, to be an composition "Can We Just Stop and Talk A While". Three years after the
infringing copy of the work for the purpose of: parties entered into a similar contract over Chan's other musical
composition entitled "Afraid For Love To Fade".
(a) Selling, letting for hire, or by way of trade offering or exposing for On the strength of the abovementioned contracts, Bayanihan
sale, or hire, the article; applied for and was granted by the National Library a Certificate of
Copyright Registration for each of the two musical
(b) Distributing the article for purpose of trade, or for any other purpose compositions.Apparently, without the knowledge and consent of
to an extent that will prejudice the rights of the copyright owner in the petitioner Bayanihan, Chan authorized BMG Records (BMG) to record and
work; or distribute the aforementioned musical compositions in a then recently
released album of singer Lea Salonga.
(c) Trade exhibit of the article in public, shall be guilty of an offense and Bayanihan informed Chan and BMG of its existing copyrights
shall be liable on conviction to imprisonment and fine as above over the subject musical compositions and the alleged violation of such
mentioned. (Sec. 29, P.D. No. 49a) right by the two. Demands were made on both to settle the matter with
Bayanihan. However no settlement was reached by the parties.
Section 10.2 Hence, Bayanihan filed a against Chan and BMG for violation of
Section 216 of Republic Act No. 8293, otherwise known as the
(d) Affidavit Evidence Intellectual Property Code of the Philippines, with a prayer for the
Sec. 218; 218.2 issuance of Temporary Restraining Order (TRO) and/or writ of
preliminary injunction, enjoining respondent BMG from further recording
Section 218. Affidavit Evidence. - 218.1. In an action under this Chapter, and distributing the subject musical compositions in whatever form of
an affidavit made before a notary public by or on behalf of the owner of musical products, and Chan from further granting any authority to record
the copyright in any work or other subject matter and stating that: and distribute the same musical compositions.

(a) At the time specified therein, copyright subsisted in the work or other BMG Arguments:
subject matter; (1) the acts of recording and publication sought to be enjoined had
already been consummated, thereby rendering moot Bayanihan's prayer
(b) He or the person named therein is the owner of the copyright; and for TRO and/or preliminary injunction;
(2) there is no clear showing that petitioner Bayanihan would be greatly
(c) The copy of the work or other subject matter annexed thereto is a damaged by the refusal of the prayed for TRO and/or preliminary
true copy thereof, shall be admitted in evidence in any proceedings for injunction.
an offense under this Chapter and shall be prima facie proof of the
matters therein stated until the contrary is proved, and the court before Chan Arguments:
which such affidavit is produced shall assume that the affidavit was made (1) it was never his intention to divest himself of all his rights and
by or on behalf of the owner of the copyright. interest over the musical compositions in question;
(2) the contracts he entered into with Bayanihan are mere music
218.2. In an action under this Chapter: publication agreements giving Bayanihan, as assignee, the power to
administer his copyright over his two songs and to act as the exclusive
(a) Copyright shall be presumed to subsist in the work or other subject publisher thereof;
matter to which the action relates if the defendant does not put in issue (3) he was not cognizant of the application made by and the subsequent
the question whether copyright subsists in the work or other subject grant of copyrights to Bayanihan;
matter; and (4) Bayanihan was remissed in its obligations under the contracts
because it failed to effectively advertise his musical compositions for
(b) Where the subsistence of the copyright is established, the plaintiff almost twenty (20) years, hence, he caused the rescission of said
shall be presumed to be the owner of the copyright if he claims to be the contracts in 1997.
owner of the copyright and the defendant does not put in issue the
question of his ownership. Issues
Whether or not Bayanihan as assignee of the copyrights over
(c) Where the defendant, without good faith, puts in issue the questions the musical compositions in question has a clear legal right to a writ of
of whether copyright subsists in a work or other subject matter to which preliminary injunction?
the action relates, or the ownership of copyright in such work or subject
matter, thereby occasioning unnecessary costs or delay in the Held
proceedings, the court may direct that any costs to the defendant in No, Bayanihan has no right for right for injunction over the
respect of the action shall not be allowed by him and that any costs subject musical compositions.
occasioned by the defendant to other parties shall be paid by him to such
other parties. (n) The issuance of an injunctive writ if the following requisites provided for
by law are:
(e) Presumption of Authorship (1) there must be a right in esse or the existence of a right to be
Sec. 219; 219.2 protected;
(2) the act against which the injunction is to be directed is a violation of
Section 219. Presumption of Authorship. - 219.1. The natural person such right, the trial court threaded the correct path in denying
whose name is indicated on a work in the usual manner as the author petitioner's prayer therefor.
shall, in the absence of proof to the contrary, be presumed to be the
author of the work. This provision shall be applicable even if the name is Chan, the composer and author of the lyrics of the two (2) songs, is
a pseudonym, where the pseudonym leaves no doubt as to the identity of protected by the mere fact alone that he is the creator thereof,
the author. conformably with Republic Act No. 8293, otherwise known as the
Intellectual Property Code, Section 172.2 of which reads:
219.2. The person or body corporate whose name appears on a audio-
visual work in the usual manner shall, in the absence of proof to the
contrary, be presumed to be the maker of said work. (n)

Rommel A. Tio Page 20 of 21 Intellectual Property Law


UNIVERSITY OF SAN CARLOS

172.2. Works are protected by the sole fact of their creation, irrespective (b) Are incorporated in sound recordings that are protected under this
of their mode or form of expression, as well as of their content, quality Act; or
and purpose.
(c) Which has not been fixed in sound recording but are carried by
The copyrights obtained by Bayanihan on the basis of the selfsame two broadcast qualifying for protection under this Act. (n)
(2) contracts, suffice it to say 'that such purported copyrights are not
presumed to subsist in accordance with Section 218[a] and [b], of the (c) Of Sound Recordings
Intellectual Property Code, because respondent Chan had put in issue the Sec. 223
existence thereof.
Section 223. Points of Attachment for Sound Recordings. - The provisions
(f) International Registration of Works of this Act on the protection of sound recordings shall apply to:
Sec. 220
223.1. Sound recordings the producers of which are nationals of the
Section 220. International Registration of Works. - A statement Philippines; and
concerning a work, recorded in an international register in accordance
with an international treaty to which the Philippines is or may become a 223.2. Sound recordings that were first published in the Philippines. (n)
party, shall be construed as true until the contrary is proved except:
(d) For Broadcast
220.1. Where the statement cannot be valid under this Act or any other Sec. 224; 224.2
law concerning intellectual property.
Section 224. Points of Attachment for Broadcasts. - 224.1. The provisions
220.2. Where the statement is contradicted by another statement of this Act on the protection of broadcasts shall apply to:
recorded in the international register. (n)
(a) Broadcasts of broadcasting organizations the headquarters of which
(15) Points of Attachment of Rights are situated in the Philippines; and

(a)For Literary and Artistic Works and Derivative Works (b) Broadcasts transmitted from transmitters situated in the Philippines.
Sec. 221; 221.1
224.2. The provisions of this Act shall also apply to performers who, and
CHAPTER XVIII to producers of sound recordings and broadcasting organizations which,
SCOPE OF APPLICATION are to be protected by virtue of and in accordance with any international
convention or other international agreement to which the Philippines is a
Section 221. Points of Attachment for Works under Sections 172 and party. (n)
173. - 221.1. The protection afforded by this Act to copyrightable works
under Sections 172 and 173 shall apply to:

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

(b) Audio-visual works the producer of which has his headquarters or


habitual residence in the Philippines;

(c) Works of architecture erected in the Philippines or other artistic works


incorporated in a building or other structure located in the Philippines;

(d) Works first published in the Philippines; and

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

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

Pearl & Dean Inc. vs. Shoemart Inc.


G.R. No. 148222, August 15, 2003

Facts
Issues
Held

(b) For Performers


Sec. 222

Section 222. Points of Attachment for Performers. - The provisions of this


Act on the protection of performers shall apply to:

222.1. Performers who are nationals of the Philippines;

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

(a) Take place in the Philippines; or

Rommel A. Tio Page 21 of 21 Intellectual Property Law