INTELLECTUAL PROPERTY LAW OUTLINE

Introduction

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

2. Amendments to R.A. 8293, as amended
- Republic Act No. 9150 (2001)
- Republic Act No. 9502 (2008)
- Republic Act No. 10372 (2013)
- Additional legislation relating to IPR
- Republic Act No. 10055 (2010)
3. Importance of Adopting Laws protecting Intellectual Property Rights
4. Philippine commitment to the GATT-TRIPS agreement
- Tañada vs. Angara, G.R. No. 118295, May 2, 1997

5. Did RA 8293 repeal existing laws on intellectual property?

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

- Samson vs. Daway, G.R. No. 106654. July 21, 2004

6. Intellectual Property Rights - Trademark, Copyright and Patents

- Sec. 4.1, R.A. 8293

Republic Act No. 8293 - Intellectual Property Law

Preliminary Matters

1. State Policy Declaration - Sec. 2

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

- Feist Publications, Inc. vs. Rural Tele. Servs Co., 499 U.S. 340, 1991

2. Effect on International Conventions and on Principle of Reciprocity

- Sec. 3 & 231

- Mirpuri vs. CA, GR No. 114508, Nov. 19, 1999

3. Coverage of Intellectual Property Rights/ Differences - Sec. 4.1

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

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

3. The Intellectual Property Office - Sec. 5 to 16 as amended

 - Pest Management Association of the Philippines. Vs. Fertilizer and Pesticide Authority,
G.R. No. 156041, February 21, 2007
- In-N-Out Burger, Inc., v. Sehwani. Incorporated and/or Benita's Frites, Inc., G.R. No.
179127, December 24, 2008
- Phil Pharmawealth, Inc., v. Pfizer, Inc. and Pfizer (Phil.) Inc., G.R. No. 167715, November
17, 2010

ADOPTION OF INTELLECTUAL PROPERTY POLICIES - Sec, 230 (New Provision introduced

by RA 10372)

The Law on Copyright

1. Definitions - Sec. 171-171.13 as amended by RA 10372

SEC. 171. Definitions. – For the purpose of this Act, the following terms have the following
meaning:

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

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

171.3. "Communication to the public" or "communicate to the public"

171.4. A "computer" is an electronic or similar device having information-processing

capabilities, and a "computer program" is a set of instructions expressed in words, codes,
schemes or in any other form, which is capable when incorporated in a medium that the
computer can read, of causing the computer to perform or achieve a particular task or result;

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

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

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

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

171.9. "Reproduction"

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

171.11. A "work of the Government of the Philippines" is a work created by an officer or

employee of the Philippine Government or any of its subdivisions and instrumentalities,
including government-owned or -controlled corporations as a part of his regularly prescribed
official duties.

2. Protection, when commenced - Sec. 172.2

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

3. Idea/Expression Dichotomy - Sec. 175

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

4. Works Protected

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

SEC. 172. Literary and Artistic Works. –

172.1. Literary and artistic works, hereinafter referred to as "works," are original intellectual
creations in the literary and artistic domain protected from the moment of their creation and
shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment
in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to
photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audiovisual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form
of expression, as well as of their content, quality and purpose.

Columbia Pictures vs. CA. 261 SCRA 144 (1990)

Since Sec. 2 of P.D. 49 provides that "the right granted under this Decree shall, from the moment
of creation, subsist with respect to any of the following classes of works," then even with respect
to works which are required under the Decree to be registered and with copies to be deposited
with National Library, failure to comply with said requirements does not deprive the copyright
owner of the right to sue for infringement; it merely limits the remedies available to him and
subjects him to the corresponding sanction. Under the present state of the law, the copyright
for a work is acquired by an intellectual creator from the moment of creation even in the
absence of registration and deposit.
 Ching vs. Salinas, G.R. No. 161295, June 29, 2005

FACTS: On September 4, 2001, Ching and Joseph Yu were issued by the National Library
Certificates of Copyright Registration and Deposit of the said work described therein as "Leaf
Spring Eye Bushing for Automobile."

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) for
police/investigative assistance for the apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the works. After due investigation, the NBI filed applications
for search warrants in the RTC of Manila against William Salinas, Sr. and the officers and
members of the Board of Directors of Wilaware Product Corporation.

The trial court subsequently quashed the warrants that were issued. The RTC as affirmed by
the CA ruled that it is settled that preliminarily, there must be a finding that a specific offense
must have been committed to justify the issuance of a search warrant.

The petitioner is praying for the reinstatement of the search warrants issued, but subsequently
quashed, for the offense of Violation of Class Designation of Copyrightable Works under
Section 177.1 in relation to Section 177.3 of Republic Act 8293.

ISSUE: Whether or not the items subject of the search warrant were copyrightable

RULING: It is worthy to state that the works protected under the Law on Copyright are:
literary or artistic works (Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing
and Vehicle Bearing Cushion fall on neither classification. Accordingly, if, in the first place, the
item subject of the petition is not entitled to be protected by the law on copyright, how can
there be any violation?

The said Leaf Spring Eye Bushing for Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial bore that is centrally located and
provided with a perpendicular flange on one of its ends and a cylindrical metal jacket
surrounding the peripheral walls of said body, with the bushing made of plastic that is either
polyvinyl chloride or polypropylene. Likewise, the Vehicle Bearing Cushion is illustrated as a
bearing cushion comprising a generally semi-circular body having a central hole to secure a
conventional bearing and a plurality of ridges provided therefore, with said cushion bearing
being made of the same plastic materials. Plainly, these are not literary or artistic works. They
are not intellectual creations in the literary and artistic domain, or works of applied art. They
are certainly not ornamental designs or one having decorative quality or value.
 It bears stressing that the focus of copyright is the usefulness of the artistic design, and not its
marketability. The central inquiry is whether the article is a work of art. Works for applied art
include all original pictorials, graphics, and sculptural works that are intended to be or have
been embodied in useful article regardless of factors such as mass production, commercial
exploitation, and the potential availability of design patent protection.

As gleaned from the description of the models and their objectives, these articles are useful
articles which are defined as one having an intrinsic utilitarian function that is not merely to
portray the appearance of the article or to convey information. Indeed, while works of applied
art, original intellectual, literary and artistic works are copyrightable, useful articles and works
of industrial design are not. A useful article may be copyrightable only if and only to the
extent that such design incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing independently of the utilitarian
aspects of the article.

Functional components of useful articles, no matter how artistically designed, have generally
been denied copyright protection unless they are separable from the useful article.

In this case, the petitioner’s models are not works of applied art, nor artistic works. They are
utility models, useful articles, albeit with no artistic design or value.

b. Derivative Works - Sec. 173

SEC. 173. Derivative Works. –

173.1. The following derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination or arrangement
of their contents. (Sec. 2, (P) and (Q), P.D. No. 49)

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

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

The plaintiff was, according to the laws regulating literary properties, the registered owner and
author of a literary work entitled Diccionario Hispano-Tagalog (Spanish-Tagalog Dictionary)
 published in the City of Manila in 1889 by the printing establishment La Opinion, and a copy
of which was attached to the complaint, as Exhibit A; (2) that the defendant, without the
consent of the plaintiff, reproduced said literary work, improperly copied the greater part
thereof in the work published by him and entitled Diccionariong Kastila-Tagalog.

The defendant in his answer denied generally each and every allegation of the complaint and
prayed the court to absolve him from the complaint.

The ground of the decision appealed from is that a comparison of the plaintiff's dictionary with
that of the defendant does not show that the latter is an improper copy of the former, which
has been published and offered for sale by the plaintiff for about twenty-five years or more.
For this reason the court held that the plaintiff had no right of action and that the remedy
sought by him could not be granted.

it is not necessary, as the court below seems to have understood, that a work should be an
improper copy of another work previously published. It is enough that another's work has been
reproduced without the consent of the owner, even though it be only to annotate, add
something to it, or improve any edition thereof.

c. Published Edition of Work - Sec. 174

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

5. Works Not Protected

Sec. 175

a. Unprotected Subject Matter - Sec. 175

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

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

 Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No.
M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the show's format and style of presentation.

On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI,
saw on RPN Channel 9 an episode of It's a Date, which was produced by IXL Productions, Inc.

Show Format Not Protected - The format or mechanics of a television show are not
copyrightable under Sec. 2 of P.D. 49 which enumerates the work that can be copyrighted,
which is the same as Sec. 172 of IPC, which refers to finished works and not
concepts. The copyright does not extent to an idea, procedure,
process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work.
Copyright, in the strict sense of the term, is purely a statutory
right. It is a new or independent right granted by the statute, and
not simply a pre-existing right regulated by the statute. Being a
statutory grant, the rights are only such as the statute confers, and
may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the
statute. Since copyright in published works is purely a statutory
creation, a copyright may be obtained only for a work falling within
the statutory enumeration or description.

b. Works of Government Sec. 176: 171.11

6. Copyright or Economic Rights: Ownership

a. Copyright or Economic Rights –

SEC. 177. Copyright or Economic Rights. – Subject to

the provisions of Chapter VIII, copyright or economic rights shall
consist of the exclusive right to carry out, authorize or prevent
the following acts:
81
177.1. Reproduction of the work or substantial portion of
the work;
177.2. Dramatization, translation, adaptation,
abridgment, arrangement or other transformation of the work;
177.3. The first public distribution of the original and each
copy of the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or
a musical work in graphic form, irrespective of the ownership of
the original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work.
(Sec. 5, P.D. No. 49a)

Pearl & Dean Inc., supru

(1) if the engineering or technical drawings of an advertising display unit (light box) are
granted copyright protection (copyright certificate of registration) by the National
Library, is the light box depicted in such engineering drawings ipso facto also
protected by such copyright?

RULING: Copyright, in the strict sense of the term, is purely a statutory right. Being a
mere statutory grant, the rights are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects and by the persons, and on
terms and conditions specified in the statute.7 Accordingly, it can cover only the
works falling within the statutory enumeration or description. the scope of a
copyright is confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their
creation.

(2) or should the light box be registered separately and protected by a patent issued by
the Bureau of Patents Trademarks and Technology Transfer (now Intellectual
Property Office) — in addition to the copyright of the engineering drawings?

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

FACTS: Plaintiff-appellant is a non-profit association of authors, composers and publishers

duly organized under the Corporation Law of the Philippines and registered with the
Securities and Exchange Commission. Said association is the owner of certain musical
compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin,"
"Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You."
On the other hand, defendant-appellee is the operator of a restaurant known as "Alex Soda
Foundation and Restaurant" where a combo with professional singers, hired to play and sing
musical compositions to entertain and amuse customers therein, were playing and singing
the above-mentioned compositions without any license or permission from the appellant to
play or sing the same. Accordingly, appellant demanded from the appellee payment of the
necessary license fee for the playing and singing of aforesaid compositions but the demand
was ignored.

Hence, on November 7, 1967, appellant filed a complaint with the lower court for
infringement of copyright against defendant-appellee for allowing the playing in defendant-
appellee's restaurant of said songs copyrighted in the name of the former.

ISSUE: The principal issues in this case are whether or not the playing and signing of musical
compositions which have been copyrighted under the provisions of the Copyright Law (Act
3134) inside the establishment of the defendant-appellee constitute a public performance for
profit within the meaning and contemplation of the Copyright Law of the Philippines

RULING: Playing of music in dine and dance establishment which was paid for by the public
in purchases of food and constitutes "performance for profit" within the Copyright Law.
Nevertheless,
defendant cannot be held to have violated the Copyright Law
because the composers of the contested musical compositions
are deemed to have waived their rights in favor of the general
public because they have failed to comply with the regulation
requiring an intellectual creation to be copyrighted within 30 days
after publication.

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

complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino
Neri, for his personal Christmas Card greetings for the year 1959, the artistic motif in
question. The following year the defendant McCullough Printing Company, without the
knowledge and authority of plaintiff, displayed the very design in its album of Christmas
cards and offered it for sale, for a price.

As a general proposition, there can be no dispute that the artist acquires ownership of the
product of his art. At the time of its creation, he has the absolute dominion over it. To help the
author protect his rights the copyright law was enacted.
The plaintiff in this case did not choose to protect his intellectual creation by a copyright. The
fact that the design was used in the Christmas card of Ambassador Neri who distributed
eight hundred copies thereof among his friends during the Christmas season of 1959, shows
that the, same was published.

Unless satisfactorily explained a delay in applying for a copyright, of more than thirty days
from the date of its publication, converts the property to one of public domain.

IOW: Author of design for Christmas card is owner thereof and entitled to payment for its
use, but once published and he has failed to copyright same, anyone may use those designs.

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

SEC. 178. Rules on Copyright Ownership. – Copyright

ownership shall be governed by the following rules:
178.1. Subject to the provisions of this section, in the case
of original literary and artistic works, copyright shall belong to
the author of the work;
178.2. In the case of works of joint authorship, the coauthors
shall be the original owners of the copyright and in the
absence of agreement, their rights shall be governed by the rules
on co-ownership. If, however, a work of joint authorship consists
of parts that can be used separately and the author of each part
can be identified, the author of each part shall be the original
owner of the copyright in the part that he has created;
82
178.3. In the case of work created by an author during
and in the course of his employment, the copyright shall belong
to:
(a) The employee, if the creation of the object of copyright
is not a part of his regular duties even if the employee uses the
time, facilities and materials of the employer.
(b) The employer, if the work is the result of the
performance of his regularly-assigned duties, unless there is an
agreement, expressed or implied, to the contrary.
178.4. In the case of a work commissioned by a person
other than an employer of the author and who pays for it and the
work is made in pursuance of the commission, the person who so
commissioned the work shall have ownership of the work, but
the copyright thereto shall remain with the creator, unless there
is a written stipulation to the contrary;
 178.5. In the case of audiovisual work, the copyright shall
belong to the producer, the author of the scenario, the composer
of the music, the film director, and the author of the work so
adapted. However, subject to contrary or other stipulations among
the creators, the producer shall exercise the copyright to an extent
required for the exhibition of the work in any manner, except for
the right to collect performing license fees for the performance of
musical compositions, with or without words, which are
incorporated into the work; and
178.6. In respect of letters, the copyright shall belong to
the writer subject to the provisions of Article 723 of the Civil
Code. (Sec. 6, P.D. No. 49a)
SEC. 179. Anonymous and Pseudonymous Works. – For
purposes of this Act, the publishers shall be deemed to represent
the authors of articles and other writings published without the
names of the authors or under pseudonyms, unless the contrary
appears, or the pseudonyms or adopted name leaves no doubt as
to the author's identity, or if the author of the anonymous works
discloses his identity. (Sec. 7, P.D. 49)

7. Transfer/Assignment or Licensing of Copyright - Sec. 180 to 180.5 to Sec. 182

8. Designation of Society - Sec. 183

9. Limitations of Copyright

a. Limitations On Copyright - Sec. 184: 184.1 (a) to (1); 184.2

b. Fair Use of Copyright Work - Sec. 185 as amended

SEC. 185. Fair Use of a Copyrighted Work. – 185.1. The

fair use of a copyrighted work for criticism, comment, news
reporting, teaching including multiple copies for classroom use,
scholarship, research, and similar purposes is not an infringement
of copyright. Decompilation, which is understood here to be the
reproduction of the code and translation of the forms of the
computer program to achieve the inter-operability of an
independently created computer program with other programs
may also constitute fair use. In determining whether the use
made of a work in any particular case is fair use, the factors to be
considered shall include:
(a) The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit educational
purposes;
(b) The nature of the copyrighted work;
(c) The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(d) The effect of the use upon the potential market for or
value of the copyrighted work.
185.2. The fact that a work is unpublished shall not by
itself bar a finding of fair use if such finding is made upon
consideration of all the above factors.

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

The court first considered these four factors on an abstract level of the system
itself.
1. They agreed with the District Court's finding that downloading an MP3 is
not transformative under the purpose and character of use factor, and that
even though Napster didn't directly benefit financially from users'
downloads (i.e., charge for the service), "repeated and exploitative copying
of copyrighted works, even if the copies are not offered for sale" could be
considered a commercial use.
2. The court also affirmed the district court's finding that creative works, such
as the songs in question, are "closer to the core" of intended copyright
protection" than non-creative works, thus favoring the plaintiffs on the
second factor.
3. They considered the potential that in some cases, wholesale copying of a
work may be protected, noting time-shifting as an example.
4. Finally, the Ninth Circuit agreed with the district court's finding that
widespread wholesale transfer of plaintiff's music negatively affected the
market for CD sales and that it also jeopardizes the record industry's future
in digital markets.

The court then turned to the three uses Napster identified as fair use in the
conduct of its users:
1. sampling, where users make temporary copies of a work to sample it
before purchase, which the District Court found to be a commercial use
even if a user purchases the work at a later time. Sampling was deemed to not be a fair use,
because the "samples" were in fact permanent and
complete copies of the desired media.
2. space-shifting, where users access a sound recording through the Napster
system that they already own in audio CD format; here the District Court
found that neither of the shifting analyses used in the Sony or RIAA v.
Diamond Multimedia cases applied in this case because the "shifting" in
neither case included or enabled distribution. The space-shifting argument
did not succeed because, while the shift to a digital format may have been
a personal storage use, it was accompanied by making the file available to
the rest of the system's users.
3. permissive distribution of recordings by both new and established artists
who have authorized their music to be disseminated in the Napster
system, which the District Court ruled was not an infringing use and could
continue, along with chat rooms and other non-distributory features of
Napster.

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

When is there a substantial reproduction of a book? It does not necessarily require that the
entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the
value of the original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.

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

The essence of intellectual piracy should be essayed in conceptual terms in order to

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

c. Work of Architecture - Sec. 186

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

e. Reprographic Reproduction by Libraries - Sec. 188

f. Reproduction of Computer Program - Sec. 189

 g. Importation for Personal Purposes - Sec. 190 as amended (Sec. 190.1 &190.2 are
already

deleted by RA 10372)

10. Registration and Deposit with National Library and Supreme Court Library - Sec. 191 (as

amended): 192, 227; 228

11. Moral Rights

a. Scope of Moral Rights - Sec. 193

b. Breach of Contract - Sec. 194

c. Waiver of Moral Rights - Sec. 195

d. Contribution to Collective Work - Sec. 196

e. Term of Moral Rights - Sec, 198 as amended; 199, 226

12. Rights to Proceed in Subsequent Transfers

a. Sale or Lease of Work - Sec. 200; 201

13. Rights of Performers, Producers of Sound Recordings and Broadcasting Organizations

a. Definitions - Sec. 202- 202.8

b. Scope of Performers' Rights - Sec. 203 as amended

C. Moral Rights of Performers - Sec. 204; 204.1 as amended

d. Limitation on Performers' Rights - Sec. 205, 205.2

e. Additional Remuneration for Subsequent communications or Broadcasts - Sec. 206

f. Contract Terms - Sec. 207

g. Scope and Limitation of Right on Sound Recordings - Sec. 208 as amended; 210

h. Communication to the Public on Sound Recordings --Sec. 209

i. Scope of Right of Broadcasting Organizations - Sec. 211

j. Limitations on Rights - Sec. 212

SEC. 212. Limitations on Rights. – Sections 203, 208 and

209 shall not apply where the acts referred to in those Sections
are related to:
212.1. The use by a natural person exclusively for his
own personal purposes;
 98
212.2. Using short excerpts for reporting current events;
212.3. Use solely for the purpose of teaching or for scientific
research; and
212.4. Fair use of the broadcast subject to the conditions
under Section 185. (Sec. 44, P.D. No. 49a)

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

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the
viewers receive in its unaltered form. PMSI does not produce, select, or determine the
programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin
or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely
retransmits the same in accordance with Memorandum Circular 04-08-88. With regard to its
premium channels, it buys the channels from content providers and transmits on an as-is
basis to its viewers. Clearly, PMSI does not perform the functions of a broadcasting
organization; thus, it cannot be said that it is engaged in rebroadcasting Channels 2 and 23.

In Telecom. & Broadcast Attys. of the Phils., Inc. v. COMELEC,36 the Court held that a
franchise is a mere privilege which may be reasonably burdened with some form of public
service. Thus:
All broadcasting, whether by radio or by television stations, is licensed by the government.
Airwave frequencies have to be allocated as there are more individuals who want to
broadcast than there are frequencies to assign. A franchise is thus a privilege subject, among
other things, to amendment by Congress in accordance with the constitutional provision that
“any such franchise or right granted . . . shall be subject to amendment, alteration or repeal by
the Congress when the common good so requires.”

In Telecom. & Broadcast Attys. of the Phils., Inc. v. COMELEC,36 the Court held that a
franchise is a mere privilege which may be reasonably burdened with some form of public
service. Thus:
All broadcasting, whether by radio or by television stations, is licensed by the government.
Airwave frequencies have to be allocated as there are more individuals who want to
broadcast than there are frequencies to assign. A franchise is thus a privilege subject, among
other things, to amendment by Congress in accordance with the constitutional provision that
“any such franchise or right granted . . . shall be subject to amendment, alteration or repeal by
the Congress when the common good so requires.”

14. Term of Protection in General

a. Term of Protection - Sec. 213

 Joint Authorship - Sec. 213.2

Anonymous or Pseudonymous Works - Sec. 213.3

Works of Applied Art - Sec. 213.4

Photographic Works - Sec. 213.5

Audio-visual Works - Sec. 213.6

Calculation of Terms --Sec. 214

b. Term of Protection for Performers, Producers and Broadcasting Organizations - Sec.

215, 215.2

15. Infringement

a. How committed - Sec. 216 (new provision added by RA 10372)

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

Essence of copyright infringement under Sec. 5 of P.D. 49

is not merely the unauthorized "manufacturing" of intellectual
works but rather the unauthorized performance of any of the acts
covered by Sec. 5, to copy, distribute, multiply and sell intellectual
works. Pending issues relating to termination of a distribution
agreement does not constitute a prejudicial question nor suspend
hearing on infringement and unfair competition lodged by the
principal against its former distributor where the latter was found
in possession of clearly fake items.

Columbia Pictures v. CA

The essence of intellectual piracy should be essayed

in conceptual terms in order to underscore its gravity by an
appropriate understanding thereof. Infringement of a copyright
is a trespass on a private domain owned and occupied by the
owner of the copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a synonymous term
in this connection, consists in the doing by any person, without the
consent of the owner of the copyright, of anything the sole right to
do which is conferred by statute on the owner of the copyright.23*
A copy of a piracy is an infringement of the original, and it is
no defense that the pirate, in such cases, did not know what words
he was indirectly copying, or did not know whether or not he was
 infringing any copyright; he at least knew that what he was copying
was not his, and he copied at his peril. In determining the question
of infringement, the amount of matter copied from the copyrighted
work is an important consideration. To constitute infringement,
it is not necessary that the whole or even a large portion of the
work shall have been copied. If so much is taken that the value
of the original is sensibly diminished, or the labors of the original
author are substantially and to an injurious extent appropriated by
another, that is sufficient in point of law to constitute a piracy.

Microsoft Corp. vs. Maxicorp Inc., 438 SCRA 224

b. Remedies for Infringement --Sec. 216.1 amendment: 216.2

Habana vs. Robles, 310 SCRA 522 (1999)

Columbia Pictures Inc. vs. CA, supra

c. Criminal Penalties - Sec. 217 as amended

d. Affidavit Evidence - Sec 218 as amended

e. Presumption of Authorship - Sec. 219; 219.2

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

f. international Registration of Works - Sec. 220

g. Disclosure of Information - Sec. 2204

16. Points of Attachment of Rights

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

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

b. For Performers - Sec. 222

c. Of Sound Recordings - Sec. 223

d. For Broadcast - Sec. 224; 224.2

The Law on Trademarks, Service Marks and Trade Names

1. Purpose of the Trademark Law

- Philip Morris Inc. vs. Fortune Tobacco Corp. G.R. No. 158589, June 27, 2006

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

3. Definition of marks, service marks & collective marks

Sec. 121, 121.1; 121.2 Mirpuri vs. CA, supra

Canon Kabushiki Kaisha vs. CA. GR No. 120900. July 20, 2000

Societe des Produits vs. CA, GR No. 112012, April 4, 2001

4. Functions of a Trademark

Mirpuri vs. CA, supra

Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676. July 30, 1982

5. Nature of a Trademark Right

Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 (1961)

Converse Rubber vs. Universal Rubber, G.R. No. L-27906, Jan. 8, 1987

6. Trademark vs. Trade name

Sec. 121.3; 165

Canon Kabushiki Kaisha, CA, supra

7. Basis of the Right to a Mark

Sec. 122 Puma Sportsshenfabriken vs. IAC, G.R. No. 75067, Feb. 26, 1988

Marvex Commercial Co., Inc. vs. Petra Hawpia & Co, L-16297, Dec. 22, 1926

Operators Inc. vs. Director of Patents, L-17901, Oct. 29, 1965

Gabriel vs. Perez, G.R. No. L-24075, Jan. 31, 1974

Unno vs. General Milling, G.R. No. L-28554, Feb. 28, 1983

Emerald Garments Mfg. Corp. v. Court of Appeals, GR No. 100098, December 29, 1995,
251 SCRA 600

Converse Rubber vs. Universal Rubber, GR No. L-27906, Jan. 8, 1987

Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, G.R.

No. L-19906, April 30, 1969, 27 SCRA 1214

Berris Agricultural Co., Inc. v. Norby Abyudang, G.R. No. 183404, October 13, 2010

8. Prior Use of a Mark

Sec. 124.2 Sec. 152

 Sec. 138

9. Who may apply for a mark?

Sec. 3

10. Registrability of a Mark

Sec. 123.1; 123.3

Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December 29, 1995,
251 SCRA 600

Ang vs. Wellington, 92 Phil 448 (1953)

11. Identical with Prior Marks

Chuanchow Soy & Canning Co. vs. Director of Patents, 108 Phil 833, 836

Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676, July 30, 1982

Esso Standard Eastern Inc. vs. CA, G.R. No. L-29971, Aug. 31, 1982

Canon Kabushiki Kaisha vs. CA, G.R. No. 120900, July 20, 2000

12. Confusingly Similar Marks

American Wire Cable Co. vs. Director of Patents, G.R. No. L-26557, Feb. 18. 1970

Etepha vs. Director of Patents, GR No. L-20635, March 31, 1966

Rueda Hermanos vs. Paglinawan. G.R. No. 10738, Jan. 14, 1916

13. Ordinary Purchaser

Fruit of the Loom vs. CA, GR No. L-32747. Nov. 29, 1984

Converse Rubber vs. Universal Rubber, supra

Etepha vs. Director of Patents, L-20635 March 31, 1966

Lim Hoa vs. Director of Patents, GR No. L-8072. Oct. 31, 1956

Asia Brewery Inc. vs. CA G.R. No. 103543. July 5. 1993

Del Monte Corp. vs. CA, 181 SCRA 410 (1990)

14. Confusion of Goods vs. Confusion of Business

Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, G.R.

No. L-19906, April 30, 1969, 27 SCRA 1214

McDonalds Corp. vs. L.C. Big Mak GR No. 143993, Aug. 18, 2004
 Faberge Inc. vs. IAC, G.R. No. 71189, Nov. 4. 1992

Hickock Manufacturing vs. CA, G.R. No. L-44707, Aug. 31, 1982

Acoje Mining Co. vs. Director of Patents GR No. L-28744, April 29, 1971

Luft Co. Inc, Vs. Ngo Guan, G.R. No. L-21915, Dec. 17, 1900 1995, 251 SCRA 600

Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December 29,

Recaro vs. Embisan, G. R. No. L-17049, May 31, 1961

15. Actual Confusion

McDonalds Corp. vs. L.C. Big Mak. G.R. No. 143993, Aug. 18, 2004

American Wire Cable Co. vs. Director of Patents. G.R. No. L-26557, Feb. 18, 1970

Acoje Mining Co. vs. Director of Patents, G.R. No. L-28744, April 29, 1971

16. Test of Confusing similarity

1. Phonetic similarity

Marvex Commercial Covs, Petra Haw Pia, L-16297, Dec. 22, 1926

Sapoline Co., Inc vs. Balmaceda, No. 45502, May 3, 1939

Operators Inc. vs. Director of Patenst, L-17901, Oct. 29, 1965

2. Holistic Test

Bristol Myers vs. Director of Patents, 17 SCRA 128 (1966)

Mead Johnson & Co., NW Van Dorf Ltd, & SCRA 768 (1963)

Del Monte Corp. vs. CA, 181 SCRA 410 (1990)

3. Dominancy Test

Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993

Phil. Nut Industry vs. Standard, L-23055, July 31, 1975

American Wire Cable Co. vs. Director of Patents, G.R. No. L-26557, Feb. 18, 1970

Emerald Garments Mfg. Corp. v. Court of Appeals, G.R. No. 100098, December
29, 1995, 251 SCRA 600

McDonald's Corporation v. MacJoy Fastfood Corp., G.R. No. 166115, February 2,

2007

17.Generic & Descriptive Marks

 Societe des Produits vs. CA, G.R. No. 112012, April 4, 2001

East Pacific Merchandising Corp. vs. Director of Patents, G.R. No. L-14377, Dec. 29, 1960

Masso Hermanos vs. Director of Patents, G.R. No. L-3952, Dec. 29, 1953

Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676, July 30, 1982

Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993

Ong Ai Gui vs. Director of Patents, G.R. No. L-6235, March 28, 1955

18. Doctrine of Secondary Meaning

Phil. Nut Industry vs. Standard, L-23055, July 31, 1975

Ang vs. Teodoro, 74 Phil 50 (1942)

Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 91961)

Lyceum of the Philippines vs. Court of Appeals, G.R. 101897, March 5, 199

19. Well-known Marks

Sec. 123.1 Sec. 147.2 Rule 100 par. C, Trademark Regulations Rule 102

246 Corp. vs. Daway, G.R. No. 157216, November 20, 2003

20. Trademark Infringement is a relative concept

Canon Kabushiki Kaisha vs. CA, supra

McDonald's Corp. vs MACJOY Fastfood Corp., G.R. No. 166115. February 2, 2007

21. Well-known marks

Sec: 123.1 (e) and I Sec 1472

Mirpuri vs. CA, supra McDonalds Corp. vs. L.C. Big Mak, supra

Fredco Manufacturing Corp. V. President and Fellows of Harvard College, G.R. No.
185917. June 1, 2011

22. Trademark Dilution

Levi Strauss v. Clinton Apparelle, Inc. GR No. 138900, September 20, 2005

23. Formal Requirement for application of registration

- Sec. 124

24. Filing date

Sec. 127: 127.2

25. Priority Right of a Foreign Applicant - Sec. 131

26. Certificate of Registration - Sec. 138

- Canon Kabushiki Kaisha vs. CA, supra

- Faberge Inc. vs. IAC 215 SCRA 316 (1992)

27. Duration of the registration - Sec145, 146.2

28. Rights conferred with registration - Sec. 147 as amended by RA 9502

29. Limitation of rights - Sec. 148

- Canon Kabushiki Kaisha vs. CA

30. Assignment and Transfer of Application and Registration - Sec 149, 149.2;149.4, 149.5

31. License Contracts - Sec. 150; 150.2

32. Cancellation of Registration-Sec. 151, 151.2

- Bata Industries Ltd vs. CA, 114 SCRA 318 (1982)

- Emerald Garment Mfg., vs. CA, supra

33. Non-use of Mark when excused - Sec. 152 - 152.4

34. Infringement; Elements

Prosource International, Inc., v. Horphag Research Management SA, G.R. No: 180073,
November 25, 2009

35. Remedies for Infringement - Sec. 155

36. Actions, Damages and Injunction for Infringement - Sec. 156 - 158, 170

- Shangri-la Int'l Hotel Management vs. CA, G.R. No. 111580, June 21, 2001

- Conrad and Company Inc. vs. CA, GR No. 115115, 246 SCRA 691[1995]

37. Limitations to Actions for Infringement - Sec. 159

38. Rights of Foreign Corporation to sue in Trademark or Service Mark Enforcement action- Sec.
160

Leviton Industries vs. Salvador, 114 SCRA 420 (1982)

General Garments vs. Director of Patents, 41 SCRA 50 (1971)

La Chemise Lacoste vs. Fernandez, supra

Converse Rubber Corp. vs. Universal Rubber, supra

39. Trade names or business names - Sec. 165 - 165.4

Converse Rubber vs. Universal Rubber, supra

Philips Export vs. CA, 206 SCRA 457 (1992)

Coffee Partners, Inc. v. San Francisco Coffee and Roastery, Inc, G.R. No. 169504, March
3. 2010

40. Goods bearing infringing marks of Trade Names - Sec. 166

41. Unfair competition, rights, regulations and remedies - Sec. 168

Proline Sports Center vs. CA, 281 SCRA 162

American Wire vs. Director of Patents, 31 SCRA 544

In-N-Out Burger, Inc., v. Sehwani, Incorporated and/or Benita's Frites, Inc., G.R. No.
179127. December 24, 2008

42. False Designations of Origin, False Description or Representation -Sec. 169

Law on Patents, Utility Models and Industrial Designs

1. Purpose of the Patent Law

Manzano vs. CA, 278 SCRA 688 (1997)

2. Patentability

a. Patentable Inventions - Sec. 21

Inventor - Sec. 25.2

Novelty - Sec. 23

Prior Art - Sec. 24

Priority Date - Sec 2006

Inventive Step -- Sec. 2626,2

-Graham v. John Deere Co. of Kansas City (383 US 1 1966)

Industrial Applicability - Sec. 27

Manzano vs. CA. 278 SCRA 688 (1997)

Maguan vs. CA. 146 SCRA 107 (1986)

Creser Precision Systems Inc. vs. Court of Appeals, G.R. No. 118708, Feb.
2. 1998
 b. Non-Patentable Inventions - Sec. 22 as amended by RA 9502

c. Novelty and Non-Prejudicial Disclosure - Sec. 25

3. Right to Patent

a. Right to Patent - Sec. 28

b. "First to File" rule - Sec. 29

c. Inventions Created Pursuant to Commission - Sec. 30

d. Right of Priority - Sec. 31

4. Patent Application

a. Application - Sec. 32, 32.2; 33

b. Disclosure and Description of Invention - Sec. 35

- Unity of Invention - Sec. 38

5. Procedure For Grant of Patent

a. Filing Date Requirements - Sec. 40

b. Examination Process - Sec. 42-48

c. Publication and Search - Sec. 44.1

- Confidentiality Before Publication - Sec. 45

d. Rights Conferred by Patent Application After Publication - Sec. 46

e. Grant of Patent --Sec. 50.3; 52.1

Manzano vs. CA, 278 SCRA 688

f. Annual Fees - Sec. 55.1; 55.2

6. Cancellation of Patents; Substitution of Patentee

a. Cancellation of Patents - Sec. 61.1; 61. 2

b. Effect of Cancellation - Sec. 66

7. Remedies of Person with Patent

a. Application by Persons Not Having Right to Patent- Sec. 67

b. Remedies of True and Actual Inventor - Sec. 68; 70

- Creser Precision Systems vs. CA, 286 SCRA 13 (1998)

8. Rights of Patentees and Infringement of Patents

a. Rights Conferred by Patent -- Sec. 71; 71.2 and 103.2

Where Patent covers Product

- Where Patent is Process Assign and transfer Form of Assignment

- Sec. 104 Recording

- Sec. 106,2 Rights of Joint Owners

- Sec. 107

b. Doctrine of Equivalents

Godines vs. CA, 226 SCRA 338

Smith Kline Beckman Corp. vs. Court of Appeals, G.R. No. 126627, Aug. 14, 2003

c. Limitation of Patent Rights - Sec. 72 as amended by RA 9502

d. Prior User - Sec. 72

e. Use of Invention of Government - Sec. 74 as amended

f. Civil Action for Infringement - Sec. 76 as amended

g. Limitation of Action for Damages - Sec. 79

h. Damages; Requirement of Notice - Sec. 80

Del Rosario vs. CA, 255 SCRA 152 (1996)

Godines vs CA, 226 SCRA 338

Tañada vs. Angara, 272 SCRA 18 (1997)

i. Infringement Action by Foreign National - Sec. 77

j. Defenses in Action for Infringement - Sec. 87

Patent Found Invalid for Infringement - Sec. 82

k. Criminal Action for Repetition of Infringement - Sec. 84

Kenneth Roy Savage vs. Taypin, 331 SCRA 697 (2000)

9. Voluntary Licensing

a Voluntary License Contract - Sec. 85

Technology Transfer Arrangements --Sec. 4.2

 b. Prohibited Clauses - Sec. 87

C. Mandatory Provisions - Sec. 88

d. Rights of Licensor - Sec. 89

e. Rights of Licensee - Sec. 90

f. Exceptional Cases - Sec. 91

g. Non-Registration - Sec. 92

10. Compulsory Licensing

a. Grounds for Compulsory Licensing - Sec. 93 as amended

- Smith Kline vs. CA, G.R. No. 121267. October 23, 200

b. Period for Filing a Petition for Compulsory License - Sec

c. Requirement to Obtain License on Reasonable Commercial Terms - Sec. 95 as

amended

Parke Davis & Co. vs. Doctors' Pharmaceutical, 14 SCRA 1053 (1964)

Smith Kline vs. CA, 276 SCRA 224 (1997)

d. Compulsory Licensing on Semi-Conductor Technology - Dec

e. Compulsory License Based on Interdependence of Patents –

f. Terms and Conditions of Compulsory License - Sec. 100

g. Amendment, Cancellation, Surrender of Compulsory License --

h. Licensee's Exemption from Liability - Sec. 102

11. Registration of Utility Models

a. Applicability of Provisions Relating to Patents - Sec. 108 Sec. 108.2 Sec. 109.1
Patentable Inventions Sec. 109.3

Del Rosario vs. CA, G.R. No. 115106, March 15, 1996; 255 SCRA 152 (1996)

b. Conversion of Patent Application for Utility Model Registration - Sec. 110.1; 110.2

c. Prohibition Against Filing of Parallel Applications - Sec. 111

12. Industrial Designs

a. Industrial Design - Sec. 112.1

b. Integrated Circuit - Sec. 112.2

c. Lay-out Design - Sec. 112.3

d. Substantial Conditions for Protection - Sec. 113.1; 113.3, 113.4; 113.2

e. Term of Industrial Design Registration - Sec. 118

f. Rights Conferred to Owner of Layout Design Registration - Sec. 119.4; Sec. 119.5

References:

Course Syllabus for Copyright and Intellectual Property Laws by Judge Marc Joseph
Quirante

Intellectual Property Law by Aquino