IP Related Thesis Titles in Ateneo Law School

1992-2017
1992
• A Comparison of Trademark Infringement and Unfair Competition Under RA 166
1993
• Closing In On Computer Bandits: A Study on the Extent of the Copyrightability of
Computer Softwares
• Library Photocopying Does It Constitute Copyright Infringement
• Patenting Microorganisms
• Philippine Intellectual Property Laws Protect Internationally Well-known
Trademarks
1994
• Remedies Against Parallel Imports Under the Intellectual Property and Other Laws
of the Philippines
1995
• Is Compulsory Reprinting Copyright Infringement?
• The Copyrightability of Trademarks An Innovation of PD 49
• Trademark Parody: Infringement, Unfair Competition, or Constitutionally Protected
Expression?
• Well-known Marks versus the Local Prior Use of the Same Mark: A Case of
Concurrent Right of
1997
• Cyber Theft: A Study on the Extent of Copyright Infringement in Local Bulletin Board
Systems and the Corresponding Liabilities Arising Therefrom
• The Plight of Foreign Trademarks in the Philippines: A Question of Use
1998
• Cyberlaw: Protecting Copyright on the World-Wide Web
• In Determining the Existence of Trademark Infringement Which is the Better Test to
Apply: The Holistic Test or the Dominancy Test?
• Law on Biodiversity Conservation and Intellectual Property Rights of Indigenous
Peoples
1999
• Domain Name Disputes: Resolving the Rights of Trademark Owners and Domain
Name Registrants Under RA 8293
• Intellectual Property and Secured Transactions: The Use of Intellectual Property as
Collateral
• Protecting Trade Secrets: An Analysis on the Inadequacy of Philippine Laws
• The Protection of Plant Varieties in the Philippines
• Trademark Registration: A License to Steal?
2000
• A Basic Code for Cyberspace
• Whether or Not Republic Act 8293 Otherwise Known as the Intellectual Property
Code of the Philippines Is Applicable to Unauthorized Linking and Framing Disputes
in Cyberspace
2002
• Deciding the Napster Case: Peer to Peer File Sharing of Music Files and the Need to
Amend the Intellectual Property Code
• Kodak Pianos? Rolex Radios? Honda TVs? Pillsbury Milk? Tide Shampoo? Tang
Lollipops? What’s in a Name? Trademark Dilution
• The Inadequacy of Existing laws on Biopiracy
 • Transcending the Borders: Jurisdiction and the Choice of Law in Copyright
Infringement of the Internet
2003
• First-to-Invent v. First-to-File: Which is the More Appropriate Patent System for the
Philippines
• Owning Animal Inventions: Patenting Animal Breeds
• Resolving the Patentability of Software Programs and Business Methods in the
Philippines
2004
• Copyright On-line: Striking a Balance Between Authorial Rights and Public Access in
the Digital Environment
• Intellectual Property Rights: The Lack of Conclusive Standard In determining
Trademark Infringement
• The Registration of Sounds and Smells as Trademarks
2005
• Implementing Article 11 of the WIPO Copyright Treaty in the Philippine Law:
Analysis and Recommendations for Philippine Compliance
2006
• Cybersquatting Liability- Applying Trademark Law and Tort Law to Combat
Cybersquatting
• Grokster Awakens the Napster: Defining the Legal Framework for Online File
Sharing Software Developers and Copyright Holders
• Kay Ganda ng Ating Musika...Gaya Gaya? Resemblance in Musical Compositions
within the Context of Philippine Copyright Laws: Establishing a Standard to
Determine Infringement
• Optical Disks The Perfect Medium for Piracy: An Examination of the Optical Media
Act of 2004 and the Protection it Affords the Content Creators
• Optical Pirates: Determining the Liability of Manufacturers and Distributors of
Circumvention Devices for Copyright Infringement
• Reverse Engineering of Software: Why Copyright Protection is Not Enough
• Survey Evidence in Trademark Litigation: Overcoming Legal Objection to
Admissibility and Weight
• The Propriety of a Policy Adopting Patentability: Establishing a Philippine Legal
Framework of the Human Gene as Intellectual Property
2007
• A Critique of Mcdonald's v Big Mak: Dominancy Test as the Dominant Test in
Determining Trademark Infringement
• Criticizing the Critics: Examining Legitimate Interests in Domain Names and The
Freedom of Speech and Expression in the Philippines
• Finding the Cure: A Proposal to Amend the Intellectual Property Code in Order to
Include Provisions on "Internal Exhaustion" and "Early Working for Regulatory
Approval"
• Hit Me Baby One More Time: The Liability of Meta Tag and Cyberstuffing Users
Under The Intellectual Property Code of the Philippines
2008
• IP as Subjects of Involuntary Transactions
• Monopoly of IP: Finding the Golden Mean Between Anti-Trust and IP Principles
• The Need for the Codification of the Doctrine Prohibiting Copyright Infringement
Authorization in the Philippine IP Code
2009
• A Critique of Sehwani, Inc vs In N Out Inc.: PH Recognition of Well-Known Marks
• No Schrodinger's Cat: Landlord Liability in the Sale of Pirated and Counterfeit
Merchandise by Tenants
2010
• An Application of the Post-Sale Confusion Doctrine in the PH Jurisdiction: Addressing
a Jurisprudential Gap in the Application of the IP Code
• Chasing Downloads: Determining Identities of John Doe Copyright Infringement
Through the Discovery Powers of the Court
• The Philippines and International Registration of Trademarks: An Examination of
Philippine Accession to the Madrid Protocol
2011
• Apples and Oranges: A Comparative Study of Plagiarism in the Academe, in the
Judiciary, and in the Sciences
• Bridging the Interstice in the Advent of Technological Developments: The Linkage of
Substantial Human Intervention, Creativity, Originality, and the Nature of Computer
Program to Computer-Generated Works in Delineating its Applicability to Copyright
and the Fair Use Doctrine
• Cultural Integrity Under the IPRA as a Defense Against Trademark Registration of
Tribal Names, Marks, and Symbols
• IP Rights vs. Right to Development: Resolving the Conflict Between the IP Rights and
the Transfer of Environmentally Sound Technologies to the Philippines in Response
to the Global Phenomenon of Climate Change
• Legal Dilemmas on IP Rights in the Biomedical Industry The Patentability of Stem
Cells and Derivative Products
• Protection of the Fictional Character When Fiction Becomes Reality - Separate
Copyrightability of the Fictional Character: A Proposal to Amend the IP Code in Order
to Protect the Fictional Character from Reality
• Secure Tests in the Philippines: Determining the Extent of Copyrightability,
Indicators of Copyright Infringement, and the Permissibility of the Fair Use Doctrine
2012
• Click Happy: In Defense of the Individual Users for Acts of P2P Sharing of MP3s
Online
• Combating Biopiracy: Harmonizing the Convention of Biodiversity and the TRIPS in
Relation to the Protection of Indigenous Traditional Knowledge and Genetic
Resources
• Digital Attachment Resolving the Issue of Property Rights over a Domain Name under
Philippine Law in Relation to the Issue of Execution
• When Art Meets Function: Where Do You Draw the Line? A Proposal for Codifying a
Separability Test in Works of Applied Art under the Intellectual Property Code and
an Analysis of the Copyrightability of Fashion Designs
2013
• Ambushed Glory: Ambush Marketing as a Violation of IP Rights
• Benchmarking Measures to Curb Internet Piracy: Finding the Most Feasible
Enforcement Mechanism to Police the Internet and Stop the Tech Savvy "Piratang
Pinoy"
• Intellectual Property and Traditional Knowledge: Narrowing the Perceived
Limitations in the Use of the Intellectual Property Rights System in the Access,
Benefit-Sharing, and Protection of Traditional Knowledge
 • It Takes Two to Tango: Determining the Liability of Buyers of Pirated Discs under the
Aiding and Abetting Provision of the IP Code
• The Application of Copyright to Internet Memes
2014
• An Open Door to Software Patents? Examining the Patentability of Computer
Implemented Inventions in the Philippines
• Innovation and Intellectual Property The Legality of Gene Patents
• Law Firm: Regulation of Law Firm Names and its Trademark Law Implications
• Patentability of Isolated Biological Substances in the Philippines
• Patients Over Patents: Harmonizing the WTO Trips Agreement and the Provisions of
RA 9502 Otherwise Known as the Universally Accessible Cheaper and Quality
Medicines Act
• The Stabilization Option- Freezing Current Law for Investments in the Inclusive
Growth of the Philippines
• When Copyright and Mashups Collide: A Clamour for an Expanded Transformative
Use Doctrine
• When is an Original Work an Original?
2015
• A Fast-Changing World Needs a Proactive Law: Expanding the Limitation in Our
Copyright Law to Address the Problem of Orphan Works
• Eagle's Eyes: Digital Mapping Service and its Legal Implications
• My Fair Copy: Balancing IP Rights and the Right to Education in Light of the
Amendment to the Fair Use Limitation on Copyright by RA 10372
• Secondary Copyright Infringement in Light of the Amendments to the IP Code as
Provided in Sec 22 of RA 10372: The Liabilities of Parties in a Crowdfunding
Transaction to Third Persons should the Crowdfunding Project Infringe the Copyright
of the Latter
• The Establishment of Non-Conventional Trademarks in Light of the Accession by the
Philippines to the Madrid Protocol
2016
• A Class Of Its Own On: The Need For Sui Generis Legislation Protecting Fashion
Designs
• Copyright Term Extension
• Google Books Decision: A Pivotal Case on Philippine Fair Use Exemption to Copyright
Infringement
• Reconciling the Right to Health, Intellectual Property Rights, and International Trade
& Investment Obligations in Tobacco Control: A Case Study on the Australian Plain
Packaging Act and the Philippine Graphic Health Warnings Law
• The Interplay of Patents and Antitrusts: Which Shall Prevail When Conflict Arises?
2017
• APIs: Unprotected, Copyrightable or Patentable?
• Balancing the Scales: Assessing Copyright Protecting and its Impact on Philippine
Vocational Education
• Effectively Effective: Defining Effective Technological Measures under Philippine
Copyright Law
• Indirect Trademark Infringement: Examining the Secondary Liability of Physical
Intermediaries in the Supply Chain of Counterfeit Goods
• Lost in Neverland: Establishing Liability for the Unlawful Taking of Virtual
Commodities in Online Games
 • My DNA is Yours Too: Exploring the Philippine Patent Eligibility of Complementary
DNA as a Product and as Part of a Process Using the Opposing US and Australian
Standards and Establishing a Philippine Patent Guide for Nucleic Acids
• Patent Existence v Legal Rights: Examining the Application of Injunctive Relief to
Enforce Letters Patent
• Screenshots in the Context of Copyright Law
• The Problem of Obscure Names: Evaluating the Legal Consequences of the Failure to
Distinguish between Acquisition Rules of Ownership vis a vis Registration Rights as
Applied to Unknown Tradenames in Ecole de Manille vs Cointreau
• The Smell of Success- The Intellectual Property Rights of Scents
• Trade Secrets Protection: A Review on the Powers Granted to the Philippine
Competition Commission under Section 12 of RA 10667 and Rule IV Section 13 of the
Implementing Rules and Regulations Thereof
• Weaving Cultures: Addressing Gaps in the Intangible Heritage Convention and the
TRIPS Towards Prospects for a Sui Generis Framework of Protection for Indigenous
Crafts and Weaving Cultural Appropriation
LLM
• Expert Advice Examining the Application of the Attorney Client Privilege to
Consultants
• Promotion of Free Trade and Innovation Through the TRIPS Agreement Redefining
Technology Transfer Arrangements and Rethinking the Approach for its Evaluation
in the Philippine Setting
• The PH Real Estate Investment Trust A Study on the Constitutionality of the
Provisions of the Minimum Public Ownership Requirement under SEC MC No. 2
Series of 2011 and the VAT Under RR N 13 2013
 A COMPARISON OF TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
UNDER R.A. NO. 166

Maria Cecilia B. Marcial (1992)

Abstract:

Actions for trademark infringement and unfair competition are two of the most
important and common remedies for the protection of industrial property rights. In the two
cases of Compania General de Tabacos de Filipinas vs. Alhambra Cigar & Cigarette
Manufacturing Co. (33 Phil. 486) and Sapoin Company, Inc. vs. Balmaceda (67 Phil. 705), the
Supreme Court said that an action for trademark infringement cannot be carried on in
conjunction with an action for unfair competition. However, in Clarke vs. Manila Candy Co.
(36 Phil. 100) the Court said that all allegations of trademark infringement can be united in
the same complaint with allegations of unfair competition.

So the issue dealt with in this paper is whether or not trademark infringement and
unfair competition can be united in the same complaint in the sense that the same facts can
support both allegations; whether they can be united as distinct and not merely as alternative
causes of action.

The writer answers this question in the affirmative. That notwithstanding the
difference between the two actions in that what is required in one is not required in the other,
e.g. registration and intent to deceive, they are not so different as to preclude them from
being united in the same complaint. In fact, the merits of including them in the same
complaint can be better appreciated in borderline cases where there are equal chances of two
products being hailed by the courts as related as they are non-related.
 CLOSING IN ON COMPUTER BANDITS: A STUDY ON THE EXTENT OF THE
COPYRIGHTABILITY OF COMPUTER SOFTWARES

Ma. Gabrielle Rosario M. Ylagan (1993)

Abstract:

The extent of the copyrightability of computer software is the heart of discussion of

this paper. It particularly discusses whether the visual display of a computer program is
protected by copyright.

The paper relied mainly on articles and books written on the topic and used
jurisprudence to buttress its stand. The jurisprudence was mainly American as there is a
dearth of Philippine cases on the topic.

The paper concludes that the protection given to computer programs by the Philippine
laws is nebulous. The law is silent as to the extent of the protection. The paper recommends
that a new law, defining the extent of the protection should be enacted.
 LIBRARY PHOTOCOPYING: DOES IT CONSTITUTE COPYRIGHT INFRINGEMENT?

Nola Olympia J. Jose (1993)

Abstract:

The State, in recognition of the contributions being made by the inventors and
creators of new works and materials, have granted such persons protection in the form of
copyright, and incentives in the form of monetary rewards, otherwise known as royalties, for
the use of such works by other persons.

There is, however, some difficulty in determining when the use of a certain work needs
to be compensated or not. There is moreover the problem of monitoring the activities of users,
and as a corollary, there is a problem of checking if royalties are indeed being paid.

Mass media has often harped about the enormous amount of piracy being committed in the
field of music copyright. Copyright protection, however, is not limited to this form of work.
There are written materials which are likewise protected: books, manuscripts, articles, etc.
In the confusion, this field of copyright seems to have been neglected.

This form of copyrighted materials can be found in libraries. The form of piracy
existing in libraries consists of reproduction or copying with the use of photocopying
machines.

The law provides a limitation to the copyright owner’s right to reproduction: A person
may make a copy of a work if it is for private and personal use. Despite this proscription,
libraries servicing universities and which photocopy in bulk and in considerable quantities,
may be infringing a copyright.

The proponent, therefore, puts forth as a recommendation, that guidelines be

formulated to oversee that photocopying be made within the limits of the law. A form of
blanket licensing scheme is likewise recommended to be created to administer and monitor
the photocopying activities of university libraries, as well as to manage the distribution of
royalty payments.
 PATENTING MICROORGANISMS

Gilberto D. Gallos (1993)

Abstract:

Patent protection is important to justify the large investment in the biotechnology

industry and to encourage research. The application of Patent law to the relatively new field
of biotechnology, and specifically, the products and processes of genetic engineering, have not
been thoroughly discussed. This paper will discuss the issues of patentable subject matter,
inventiveness, novelty, and utility as they relate to microorganism. To determine whether or
not a claimed microorganism is patentable subject matter, the important consideration is the
act of human intervention which must impart to the product of a new form, quality, property,
or combination not present in the original article. To determine inventiveness, the test is
prior art suggestion and expectation of success, both of which must concur. The inventiveness
of a microorganism defined in terms of its genetic or molecular structure is a combination of
structure and an unexpected utility and degree of utility. The novelty bar to a claimed
microorganism can be overcome by its purified state. If what is being claimed is a DNA
sequence, reference is made to the protein for which it codes. If the protein is novel and
unobvious for a person skilled in the art to find and isolate a DNA sequence – likewise novel
– that codes for said protein. The utility of DNA polymer is characterized by the functional
content of the message encoded in the claimed DNA molecule.
 PHILIPPINE INTELLECTUAL PROPERTY LAWS PROTECT INTERNATIONALLY
WELL-KNOWN TRADEMARKS

Valerie U. Velasco (1993)

Abstract:

The Philippines has been the subject of intense scrutiny by virtue of our inclusion in
the “priority watchlist” of trading partners with inadequate intellectual property protection.
The fact is Philippine laws are more than adequate to protect intellectual property
rights. The problem lies in the enforcement and implementation thereof.

Although the decision of the Supreme Court has varied and may in fact give the
impression that it is too liberal and lax in granting injunction to the foreign marks, it must
be considered that each case is to be judged according to its particular facts and
circumstances. There is no hard and fast rule in the determination of a well-known
trademark. It does not mean through that we deny protection to these trademarks.

This study will dwell on the issue of whether or not trademarks either unregistered
or unused or both are given protection under our laws.
In the course of the discussion on said issue, this paper traces the history of trademark
use in the Philippines, Article 6 of the Paris Convention, the celebrated case of La Chemise
Lacoste and the most recent case of Kabushi Kaisha Isetan (which made all the more
pronounced the issue raised in this study) and the remedies which may be availed of under
our laws.

Finally, based on the foregoing discussion, the writer presents her conclusion and
offers possible amendments to our present Trademark Law. This writer believes that a
clearer presentation to the international community that indeed the Philippines does protect
internationally well-known trademarks would greatly enhance the efforts of our government
in attracting foreign investments.
 REMEDIES AGAINST PARALLEL IMPORTS UNDER THE INTELLECTUAL
PROPERTY AND OTHER LAWS OF THE PHILIPPINES

Celestino Gerald Larragas Cabrera (1994)

Abstract:

Companies have a considerable interest in guarding against the parallel importation

of genuine trade marked goods. Parallel imports cause companies to lose control over well
orchestrated schemes of distribution which exist between themselves and various foreign
subsidiaries or distributors. The flooding of one particular market with excessive products
can result in a gross imbalance in a company’s projections of product supply and demand
leading to idle inventory, increased costs and sluggish sales. Further, parallel goods cause
significant losses in profits for the subsidiaries and distributors of foreign companies
creating, among other tensions, tremendous strain on corporate relationships with such
parties. Moreover, parallel imports can cause irreparable injury to the goodwill of trade
marks, as well as the reputation of the manufacturer and/or distributor.

Inspite of the dangers that parallel imports pose to the trademark owners and their
authorized distributors, there is still no law expressly prohibiting it. However, by relying on
the existing provisions of our Trade Mark Law, the Revised Penal Code and the Civil Code,
a successful prosecution of unauthorized importation may be maintained.

A review of the pertinent provisions of the Revised Penal Code, the Trade Mark Law
and the Civil Code as well as their underlying purposes and objectives shall be made in this
paper to determine the possible remedies of the trademark owner and/or their authorized
dealers against the parallel importer. Relevant jurisprudence both domestic and foreign
touching on related issues shall be scrutinized to see whether they might also be applicable.

The last chapter summarizes the remedies available to the manufacturer and/or
authorized dealer under the existing laws. After evaluating the present laws and
jurisprudence, a recommendation shall be made outlining some measures that trademark
owners can take to protect their interest more effectively.
 IS COMPULSORY REPRINTING COPYRIGHT INFRINGEMENT?

Ramon E.A. Gatchalian (1995)

Abstract:

Intellectual property rights of creators in the Philippines have long enjoyed the
protection and recognition accorded to them by the State in line with the latter’s policy to
encourage a creative environment where ideas and their corresponding expressions thrive
with the least possible interference. Where creators are guaranteed a haven for their
intellectual creations such that they are assured that their rights over the same are not
purely fictional ones, the drive to further create becomes a passion, not to mention, also a
profitable venture since creators need not have to live in fear of intellectual pirates lurking
in the shadows who are all just waiting for the opportunity to infringe upon their rights with
impunity.

Being a property right in itself, creators, as owners of these rights are entitled to
exclude others from the use and enjoyment thereof. Hence, should anyone infringe upon these
sacred rights of theirs, they have the prerogative to bring an action against the infringers.
However, though it may seem that creators have a veritable monopoly right over their
intellectual creations, the truth is not all what it seems since the State is vested with the
power to regulate property rights.

One such form of regulation of intellectual property rights is compulsory reprinting.

The Book Reprint Law (P.D. No. as amended) was enacted as a police power measure by Mr.
Marcos in the seventies in order to curb the exorbitant pricing of textbooks in order that the
same could be made affordable to the average student. This little piece of executive legislation
deviated extensively from our commitment under the Brussels Act, leaving much margin in
its wake on the part of the other member-states. Despite a barrage of criticisms from these
countries denouncing the statutory mutation, the Book Reprint Law and its subsequent
amendments have managed to survive for twenty years now since its inception without
having been scrutinized under the microscope of the Supreme Court. Given its track record,
it would be only prudent to assume that it would stay healthy over the next twenty years but
given the recent ratification of the GATT, the elusive statute may yet face its toughest
challenge: the prospects of extinction.

This thesis seeks to delve into the propriety of retaining the Book Reprint Law in our
stature books given our obligations under the Berne Convention and the GATT Agreement
on TRIPS. In the following pages, the author will proceed to show that there is a need to
scrap the same and to align our compulsory reprinting laws with said treaties.
 THE COPYRIGHTABILITY OF TRADEMARKS: AN INNOVATION OF P.D. 49

Leo S. Romero (1995)

Abstract:

The enactment into law of P.D. 49 (the Intellectual Property Law) greatly expanded
the scope of copyright in the Philippines. Among other changes, the new law extended the
protective mantle of copyright to works which theretofore had not been so protected.
One class of works newly covered by P.D. 49 was that of prints, pictorial illustrations,
advertising copies, labels, tags and box wraps. These works differ from the other works
covered by copyright in that they are usually created for commercial rather than artistic
purposes. The seemingly unqualified wording of P.D. 49, along with the failure of the law to
provide a definition for these works, gives the impression that all works falling within this
class are covered by copyright. The result is the apparent grant of copyright protection to
works which, by conventional legal standards, are more properly the subjects of trademark
protection rather than copyright.
This situation is aggravated by the almost total lack of governmental control over the
acquisition of copyright. Unlike trademarks, copyright is acquired without need of any
formalities, and without having to go through formal hearings. The Copyright Office, unlike
the Bureau of Patents, Trademarks and Technology Transfer, has no discretion when it
comes to the issuance of certificates of copyright registration.

In this thesis, the author will attempt to discuss two aspects of this problem. First, he
will examine existing jurisprudence and attempt to formulate standards for determining
whether a work which is already the subject of trademark protection may also be covered by
copyright. Second, he will also discuss the present shortcomings of Copyright Office and
suggest how it may be made into a more effective implementing body of the copyright law
 TRADEMARK PARODY: INFRINGEMENT, UNFAIR COMPETITION OR
CONSTITUTIONALLY PROTECTED EXPRESSION?

Allan G. Kato (1995)

Abstract:

In this day and age, the success of a commercial venture greatly depends upon the
trademark chosen by it. Successful marks are guarded like bank vault. Any indication of an
infringement by another enterprise results in litigation. The entrepreneur goes out of his way
to protect his property, and rightly so, since trademarks which have been proven to be
successful acquire goodwill to the business establishment using the mark. In fact, the
manifestation of a truly renowned trademark is its financial value.

Despite the prospect of impending litigation, however, numerous entrepreneurs have

succeeded in riding on the popularity of established marks. On the one hand, there are
persons who copy, or unscrupulously alter, in a subtle manner, the trademark of others with
the aim of confusing the consumer into thinking that he or she is buying the original product.
On the other hand, there are the parodists. They deliberately alter an established trademark
to provoke laughter from the consumer. Whether or not these parodies infringe trademark
rights continues to be a gray area; even in the United States, where trademark cases are too
numerous to quantify.

The main defense of the parodists is the sacred constitutional right of freedom of
expression. Truly, this right guaranteed by organic law occupies a high pedestal in the
hierarchy of rights. However, it remains to be seen whether a parody of a trademark for
commercial purposes constitutes protected expression.
This work will delve into the issue of trademark parody and freedom of expression. It
will endeavor to resolve the conflict between infringement and unfair competition in relation
to freedom of expression, and will seek to provide solutions and recommendations regarding
the propriety of a trademark parody.
 WELL-KNOWN MARK VERSUS THE LOCAL PRIOR USE OF THE SAME MARK: A
CASE OD CONCURRENT RIGHT OF USE

Geronimo L. Sy (1995)

Abstract:

Trademark cases have become increasingly significant in the world of commerce the
past years. The distinguishing function of marks and goodwill generated is valuable to the
trademark owner.

Laws and jurisprudence have evolved to extend protection to trademarks and punish
infringers. The advent of the Paris Convention for the Protection of Industrial Property was
a step in this direction. Thus, well-known marks acquired a kind of protection with use in
international trade as the determining factor.
As a result, local users of the same marks as the well-known mark were denied
registration over the mark or existing registrations cancelled. The mandate was the
protection of intellectual property rights and to dispense with the image of the developing
Philippines as a haven for intellectual piracy.

But a peculiar situation arose. Under the Philippine laws, the principles of
territoriality and first used are followed. The local user of the same mark has used the mark
in the Philippines and had acquired ownership thereof. Evidently, such use must be in good
faith and not coupled with any fraudulent intent. Such local prior user was consequently
deprived of his property right by the denial of registration or cancellation of registration.

Which then is to prevail? Article 6bis of the Paris Convention unqualifiedly calls for
the prohibited use of a mark similar to a well-known mark. There is no room for any local
prior user. On the other hand, in the absence of fraud, it is possible for two similar marks to
be produced for and marketed in different and separate markets to eventually be sold in each
other’s market. The local prior user should be equally protected and not discriminated
against.
The solution lies in the recognition of the right of concurrent use. This means that a
mark may be owned by two different owners at the same time. There will be co-existence of
similar marks.

This has various consequences as to the right of action for infringement or unfair
competition, registration, nature of goods, territory and likelihood of confusion on the
consuming public.
Trademark laws as it is will be inadequate to meet its end of protecting the public’s
interest. The amendatory remedies of adequate specified distinction and defensive
registration should be resorted to justify recognition of the right of concurrent use.
 CYBERTHEFT: A STUDY ON THE EXTENT OF COPYROGHT INFRINGEMENT IN
LOCAL BULLETIN BOARD SYSTEMS AND THE CORRESPONDING LIABILITIES
ARISING THEREFROM

Jeffrey N. Ong (1997)

Abstract:

The aim of the study is to define the extent of copyright infringement occurring in the
Philippine Bulletin Board Systems as well as the corresponding liabilities arising therefrom.
The paper discusses in detail on-line activities which constitute acts of infringement and
attempts to specify the proper liability regime to govern such violations.

The paper concludes that there exists continuous copyright infringement on a massive
scale in local bulletin board systems. These violations not only go unsanctioned, but they
remain unregulated as well. The blatant disregard for copyright ownership either stems from
an alarming state of ignorance of the law on copyright, or from the absence of any regulatory
mechanism, governmental or otherwise, to control this form of abuse. The paper thus
recommends that the adoption of a strict liability regime, insofar as sysop liability is
concerned, would achieve the most equitable solution under the present circumstances.
 THE PLIGHT OF FOREIGN TRADEMARKS IN THE PHILIPPINES: A QUESTION OF
USE

Ronald A. Ledesma (1997)

Abstract:

Trademark laws in the Philippines have been under fire from many sectors for being
inadequate and unprogressive. The problem lies in our lackluster performance in the
implementation and enforcement of our trademark laws as well as our resistance in adapting
well-known international policies in trademark protection.

It is not surprising in the light of this sorry state of affairs that we have been placed
in the United States Trade Representative “priority watch” list of trading partners with
inadequate intellectual property protection. As signatories of the Paris Convention, that
should not have been the case. But, in light of the present state of affairs, we seem more
interested in protecting existing perceived job-generating interests than preserving
international cooperation in trade and establishing a reputation of “intellectual property
consciousness”. Case in point is Philip Morris Inc. v. Court of Appeal. On the one hand, the
Supreme Court has held that foreign corporations not engaged in business in the Philippines
may maintain a cause of action for infringement … when the legal standing to sue is alleged.
On the other, in the same case, this Court has ruled that although a foreign corporation may
have the personality to file a suit for infringement, it may not necessarily be entitled to
protection under our laws due to the absence of actual use of the emblem in the local market.
Actual use in this case has been implied to mean “doing business in the Philippines or having
a license to do so.” As such, a contradiction in policies seems to have arisen.

The matter to be dealt with in this paper is the question of “use” as referred to in
above mentioned case. What does it mean? Does it entail necessarily that the owner of the
trademark should be doing business in the Philippines before seeking redress from our
Courts? What are the implications of such a ruling on the remedies available to foreign
corporations with respect to their right to file a suit for infringement of trademarks? Perhaps
there is a need now to evaluate the validity of the policy requiring that actual use in
commerce in the Philippines is a pre-requisite to the acquisition of ownership over a
trademark. On the other hand, perhaps what really needs to be done is to clearly define the
scope of “actual use in commerce” as a concept, in order to provide a visible guide for foreign
trademark owners to follow to protect their marks.

It is this writer’s opinion that such is incongruous with our avowed policy of protecting
intellectual property trademarks, a violation of treaty obligations with regard to the Paris
Convention and unwarranted by Philippine Laws. In this light, recommendations are made
amending Republic Act 166 to make it responsive to the call of trademark protectionism.
 CYBERLAW: PROTECTING COPYRIGHT ON THE WORLD-WIDE WEB

Larissa Kristina G. Lambino (1998)

Abstract:

The impact of the Internet’s digital environment on copyright law is the subject of
intensifying controversy. The Internet’s digital medium, known for its global network and
instantaneously transmissible data, assimilates the feature of a computer, a photocopier, a
facsimile machine, and an electronic mailing system. This is a disturbing development to
copyright advocates, who believe that traditional protection accorded to copyright may be
eroded.

The premise underlying this discussion is the belief that reasonable protection should
be accorded to intellectual property – whether existing in tangible form or in the Internet’s
digital code. Since the application of the copyright holder’s exclusive rights has traditionally
been applied to physical works, the study will analyze how this protection translates to
digitized works on the Internet. In line with this, compelling reasons for excluding the
application of traditional concepts in copyright law to the Internet will be made clear. To
complete the study, the need for uniform international copyright protection will be
demonstrated, and standards of liability for copyright infringement delineated.

Within the framework of existing law. The discussion will demonstrate the manner in
which copyright may be protected on the Internet; perhaps not in the same manner as for the
typical printed, audio and video media, but to the most effective degree possible and
appropriate for this medium.
 IN DETERMINING THE EXISTENCE OF TRADEMARK INFRINGEMENT WHICH IS
THE BETTER TEST TO APPLY: THE HOLISTIC TEST OR THE DOMINANCY TEST?

Jerome de Guzman (1998)

Abstract:

Trademark infringement occurs when there is a confusing similarity between two

trademarks. In determining this confusing similarity, Philippine jurisprudence developed
two tests. The Dominancy Test and the Holistic Test. The former examines and compares the
dominant parts of the two trademarks while the latter examines and compares the two
trademarks as a whole.

Due to the existence of these two tests, conflicting cases arose. Decisions of the lower
courts or agencies were reversed by the Supreme Court by applying a different test than what
the lower court or agency applied. Even the Supreme Court applied different tests in
establishing confusing similarity between trademarks. Decided cases on trademark
infringement will be studied to show that the Holistic Test is more adequate in determining
any violation of the trademark law.
LAW ON BIODIVERSITY CONSERVATION AND INTELLECTUAL PROPERTY RIGHTS
OF INDIGENOUS PEOPLES

Marie Grace Christina Garong Faylona (1998)

Abstract:

Over the years, indigenous peoples have received significant recognition of their
stewardship in terms of caring for the environment. Their indigenous ecological knowledge
continues to develop to embody a more effective system of natural resource management
leading to an increase in biological diversity. Furthermore, their knowledge of medicinal
plants has notably contributed to a growing consciousness among pharmaceutical companies
of their value to research and development. The need to go beyond the commercial value
generally attributed to indigenous knowledge must be considered.

There are apparent inconsistencies in the current intellectual property regime which
must likewise be addressed. Appropriate legal measures must be taken by redefining the
concept of intellectual property, in the light of patent protection, as befits indigenous
knowledge.
 DOMAIN NAME DISPUTES: RESOLVING THE RIGHTS OF TRADEMARK OWNERS
AND DOMAIN NAME REGISTRANTS UNDER R.A. 8293

Christine Marie Palanca Quirino (1999)

Abstract:

The world now speaks one language as networks of computers communicating via
common protocols known as TCP/IP united to form the Internet. While these protocols
facilitated the interoperability of the Internet, no one foresaw that they could also be the
source of dissension. Each computer is identified on the Internet by its IP number. These
numbers proved cumbersome; thus, each computer is matched with an alphanumeric string
known as a domain name. By their very nature, domain names are easy to remember. This
characteristic attracted the interests of business who sought to register their trademarks as
domain names but found them registered by owners of identical or similar trademarks as
domain names but fund them registered by owners of identical or similar trademarks or by
speculators hoping for instant wealth. The problem lies in the fact that trademark law allows
the concurrent use of domain names whereas the interoperability of the Internet mandates
that every domain name must be unique. The Internet is ungoverned and in the absence of
any international agreement, these domain name disputes are presently being decided by the
courts under municipal law. Should a domain name dispute arise which falls within the
jurisdiction of Philippine courts, the provisions of R.A. 8293 is effective in resolving domain
name disputes between trademark owners and domain name registrants.

This study examines the five major classifications of domain name disputes which are
infringement, dilution, arbitrage, character string conflicts and parody and preemption. An
analysis of the provisions of R.A. 8293 in relation to these disputes is then made to determine
whether or not the present provisions are comprehensive enough to resolve them. Should the
provisions of R.A. 8293 prove insufficient, amendments are proposed to address this new
development in Internet law.
This thesis states that R.A. 8293 effectively resolves the rights of trademark owners
and domain name registrants in cases of infringement but must be amended in order to
address the problems of dilution and speculation. Character string conflicts are best
determined under the first-come- first-served policy whereas parody and preemption are still
too novel to merit any review of legislation.

This study recommends that R.A. 8293 be amended to include provisions on the power
of the courts or the Director of Legal Affairs of the Intellectual Property Office to order the
cancellation or transfer of a domain name if jurisdiction over the registrar is obtained;
otherwise, to order the domain name registrant to cause the cancellation of the name or its
transfer to the prevailing party.

This study also recommends that R.A. 8293 be likewise be amended to include
provision against dilution of a mark in order to afford complete protection in cases involving
dilution and speculation. Internet law is rapidly evolving to address the developments arising
from new technology; by amending R.A. to respond to these changes, let it be said that
Philippine law has kept pace.
 INTELLECTUAL PROPERTY AND SECURED TRANSACTIONS: THE USE OF
INTELLECTUAL PROPERTY AS COLLATERAL

Christian Luna De Jesus (1999)

Abstract:

Much excitement has been generated by the attention intellectual property is getting
all over the world. Indeed, much of what makes modern living gratifying involves the
different kinds of intellectual property; from the books we read, the movies we watch, the
music we listen to, and the clothes we wear. The role intellectual property plays in modern
man’s life does not end here, and much potential is in store. The dawning of the 21st century
brings with it the inevitable commercialization of intellectual property, particularly the use
of intellectual property as collateral in secured transactions. The Philippines is not that far
behind other jurisdictions when it comes to intellectual property legislation. In fact, the
enactment of Republic Act No. 8293, otherwise known as “The Intellectual Property Code,”
signaled both our commitment to the world community and our intent to utilize this form of
property to our advantage. Are we, however, ready to face the new dispensation where
intellectual property will be much more than a “property” and a “right,” but becomes a highly
valuable asset to spur economic growth? Not yet.

The key lies with the masterful blending of intellectual property and commercial laws.
Consideration must be given to the fact that the framers of our present commercial laws did
not have “intellectual property” in mind when they legislated. On the other hand, the expert
intellectual property lawyers behind the Intellectual Property Code did not really touch upon
the commercial aspect of copyrights, trademarks and patents, other than the requirement of
recording the assignment of the same with the Intellectual Property Office. It is easy to
understand why this has happened: for years intellectual property lawyers believed the
subject of security interests did not concern them.
The proponent takes on the challenge of establishing the role of intellectual property
as collateral in secured transactions in the Philippine context, both in its substantive and
procedural aspects. The inevitable ambiguity and conflict arising from our legal system, in
which intellectual property laws and commercial laws are framed independently of each
other, are clarified and resolved. The paper seeks to avert resort to litigation to resolve some
issues in connection with the use of intellectual property as collateral. Often Congress does
not make clear the breadth of legislation, and even where it attempts to do so, cases arise
around the fringes of legislation concerning the permissible scope of statutory control. On the
other hand, a careful and attentive legislative process is likely to reduce the uncertainty
produced by issues and make unnecessary some costly litigation. Because many cases are
predictable and can have implications far beyond parties in litigation, such issues should be
identified and decided within the legislative process when possible. Courts should not be
burdened institutionally when Congress decides the breadth and balance of laws. The
proponent gives particular recommendations on how to attach and perfect security interests
over intellectual property; the relationship between the creditor and debtor; foreclosure in
the event of default; and answers to some specific issues that may arise. In the end, a new
“Intellectual Property Mortgage Law” is introduced as the meeting ground for intellectual
property and commercial laws.
 PROTECTING TRADE SECRETS: AN ANALYSIS ON THE INADEQUACY OF
PHILIPPINE LAWS

Anna Corina V. Cruz (1999)

Abstract:

Information is the oxygen of the modern age. It is a comprehensive factor vital to the
smooth operation of government, economy, and society in general. It is not unthinkable for
persons to fight for control of information as they used to battle for control of territory in the
past.

Today, a piece of information can be as valuable as a factory is to a business. The theft

of that information can do more harm than if an arsonist burned down that factory.

In today’s information agree, more value is attached to intellectual property than any
other kind of property. It has been said, “the future of the nation depends in no small part in
the efficiency of industry, and the efficiency of industry depends in no small part on the
protection of intellectual property.” More so if such information gives advantage over one’s
competitors. Trade secrets and confidential information are jealously guarded commodities
for almost every business. The explosive growth of new technology, the rapid turnover of key
employees in the high-tech industry, and the proliferation of computer software contribute to
the increasing importance of protecting trade secrets.

Undoubtedly, the intense competition in business only makes the value of confidential
information soar.

Hence, vigilance in its protection is requires. Once a trade secret is made public, all
ownership over it is lost. Its value is diminished, and the holder of the secret loses whatever
advantage he may have. It becomes available to others for use without fear of legal reprisal
from the original owner.
This thesis looks into the various ways by which the law gives protection to trade
secrets. While realizing its importance, an evaluation of the present laws reveals gaps in its
protection. It is this paper’s objective to expose and fill in those gaps.
 THE PROTECTION OF PLANT VARIETIES IN THE PHILIPPINES

Andres David M. Bolinas (1999)

Abstract:

The Philippines recognizes the importance and benefits of protecting plant varieties.
In January 1, 1998, the Intellectual Property Code took effect in the country. As of this date,
there is a pending bill in the Philippines Senate (Senate Bill No. 108) calling for plant variety
protection or plant breeder’s right. The Intellectual Property Code and the pending Senate
bill are the product of the country’s compliance with the Agreement on Trade-Related Aspects
of Intellectual Property Rights of the TRIPS of the GATT Uruguay Round.

The Intellectual Property Code is a potent source of protection of plant varieties.

However, it covers all types of inventions and is too broad to tackle the various issues
pertinent to plant varieties. It is inflexible to cater to the needs of a developing country like
the Philippines. The challenge for our country’s leaders now is to create a sui generis system
of plant variety protection which is responsive and applicable to the Philippines setting, and
which recognizes our disadvantages as a developing country. This sui generis system must
recognize and protect the rights of plant breeders, and at the same time, uphold the social
and economic rights or our country and its citizens.
 TRADEMARK REGISTRATION: A LICENSE TO STEAL

Joanne Pineda Vina (1999)

Abstract:

Intellectual Property Law is there to recognize and protect the finer manifestations of
human achievements. Although some would argue that the grant of exclusive proprietary
rights is a form of monopolistic behavior, it can be argued back that only with the security of
monopoly profits will companies make sufficient investment in research to develop new
technologies. It is only just and proper that the appropriate rewards be given to these
achievements.

With the globalization of business, world powers have raised the protection of
intellectual property rights as an economic and trade issue. As a signatory to the General
Agreement of Tariffs and Trade (GATT) and the Trade Related Aspects of Intellectual
Property Rights (TRIPS), the Philippines had to enact a new Intellectual Property Code to
conform our laws with said treaty agreements.
The most salient feature of the Intellectual Property Code is the adoption of the first-
to-file system as opposed to the first-to-use system. Prior use as a requirement for
registration has been abandoned to expedite the registration process and align our laws with
the prevailing global trend. Section 122 of the said law provides that “the rights in a mark
shall be acquired through registration made validly in accordance with the provisions of the
law.” Thus whoever first registers the mark will own the rights thereto. With the passage of
the law, it is hoped that the Philippines will be recognized as a country which protects
Intellectual Property Rights and that confidence will grow among foreign investors which
confidence will result in increased foreign investments in the Philippines.

The question is, how well does the first-to-file system protect trademark owners? Will
registration not be used as a license to steal by a person simply because he was the first to
register it in the Intellectual Property Office? Well-known marks are protected. Section 123
(e) provides that a mark which is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent authority of the Philippines to be
well-known internationally and in the Philippines, whether or not it is registered here, as
already the mark of a person other than the applicant for registration, and used for identical
or similar goods or services, shall not be registrable. It is the smaller companies with the
lesser known marks which are not protected. Lesser known marks would be those marks
which are registered in their home country, with a minimum level of goodwill therein and a
good potential for market success internationally but which have not yet attained the
popularity and reputation enjoyed by a well known mark. These companies would be so busy
growing themselves and their business, investing hard-earned money in marketing research,
product development and advertisement to build goodwill. When it I finally time to expand
their business across borders they discover someone in the target countries is already using
their trademarks.

It is the proposition of this thesis that the State should make the new Intellectual
Property Code responsive to situation such as trademark/trade name speculation or arbitrage
by imposing stricter administrative, civil and criminal sanctions to those who abuse the first-
to-file systems, in effect using it as a license to steal intellectual property rights.
 A BASIC CODE FOR CYBERSPACE

Peter O. Kho (2000)

Abstract:

The jurisdiction of the nation within its own territory is necessary, exclusive and
absolute. It is susceptible of no limitation not imposed by itself. Nationals and aliens,
including non-residents, are bound by its laws, and no process from a foreign government can
take effect for or against them within the territory of the local state without its permission.

This paper proposes to make an exception to this rule and seek to curtail the sovereign
power of a State so far as the control over Internet is concerned, because such unbridled
power may adversely affect rights of all citizens using the Web.

The purpose of Sovereignty and State Power is to maintain peace and order. There
are situations where this end would be difficult to achieve through local police power or
legislation alone due to the elusive nature of the medium. The same goal however, may best
be attained by a concerted effort among countries that are hooked in Cyberspace.

In ratifying an International Treaty that provides a minimum set of conduct online,

circumvention of laws universally regarded as menace may be avoided. These include virus
explosion, child pornography, piracy, online fraud and violation of individual privacy.
 WHETHER OR NOT REPUBLIC ACT 8293 OTHERWISE KNOWN AS THE
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES IS APPLICABLE TO
UNAUTHORIZED LINKING AND FRAMING DISPUTES IN CYBERSPACE

Jennifer D. Fajelagutan (2000)

Abstract:

Cyberspace is a world where legal principles breakdown. Unlike with some current
topics in Internet-related law, such as personal jurisdiction, domain name disputes, obscenity
and free speech, with linking and framing law, we have very few authoritative reference
points. There is no status and no self-regulatory rules. The author is not aware of any
comprehensive proposal for linking and framing regulation (or non-regulation for that
matter) within the Internet community, but only of some casual, hortatory or etiquette type
suggestions appearing irregularly on some sites.

Few would deny the primacy of linking and framing for the web. Restrictions on
linking tend to limit the Web’s core activity, the one from which it derives its name. On the
one hand, Purists decry any form of linking and framing restrictions and fear steeper slopes
that would erode its activity to a point where the Web would become nothing but a slow-
loading, dial-up interactive television. On the other hand, there are also laws that are aimed
to curtail the genuinely misleading linking practices that will surely benefit the linking
culture of the Web by supplying a measure of reliability and integrity in linking. The
challenge for linking law is not how to delimit the Internet into familiar intellectual property
concepts, but rather how to balance these somewhat conflicting objectives the free-flow of
information in the Web vis-à-vis the protection of intellectual property rights in cyberspace.
 DECIDING THE NAPSTER CASE: PEER-TO-PEER FILE SHARING OF MUSIC FILES
AND THE NEED TO AMEND THE INTELLECTUAL PROPERTY CODE

Theresa H. Dizon (2002)

Abstract:

Copyright laws were made for the purpose of protecting the ownership rights of the
creator over his artistic or literary works to ensure that he is properly compensated for the
use of the same by others. As technology advances, enforcement of the traditional copyright
laws is providing to be a complex exercise. Often, existing rules are inadequate to squarely
answer the issues involved in the high-tech environment, especially those issues introduced
by the advent of the greatest medium of communication and information created to date –
the Internet.

The Napster case exemplifies the culmination of the legal battle between technology
and copyright. There are currently two rival information age ideologies represented in the
Napster case. First is the movement, which contends that information out to be free and
freed. Second is the cry of the content creators that if they are not paid for their effort, there
will be no information available over the Net. As it develops, there are lessons to be learned
from the Napster case, which may very well be the landmark case to strike a balance between
copyright and technology in the Internet.

In light of the Napster case, the Philippine Congress must reevaluate the Intellectual
Property Code in order to determine if it remains vigilant in the protection of copyright,
precisely with the view of the Internet in mind – its open nature, the speed and efficiency of
gaining information therefrom, the convenience of new innovations, and the temptation to
abuse the same, must all be considered. Without a Philippine copyright law that addresses
directly the capabilities and dangers of the Internet, Philippine Courts may decide future
copyright and technology conflicts by choosing to uphold one at the expense of the other.
 KODAK PIANOS? ROLEX RADIOS? HONDA TVS? PILLSBURY MILK? TIDE
SHAMPOO? TANG LOLLIPOPS? WHAT’S IN A NAME? TRADEMARK DILUTION

Katrina Erika Natividad Zialcita (2002)

Abstract:

Trademarks play an ever increasing role in today’s complex commercial world. Every
person relies on trademarks every day. Almost everything a person uses and consumes from
the coffee drank, the shampoo used, to the mattresses slept on, the car used to drive to work,
the cellular phone used to make calls, was bought by brand name, which is another way of
saying “trademark.”

Trademarks indicate the source of origin of goods or services and distinguish the goods
or services from the goods or services of others. Trademarks protect consumers from being
misled. They ensure free competition by protecting the goodwill of the entity that owns the
mark. Trademarks also protect a proprietary name or symbol used with the goods or services.
Often the success of a product or service depends more on its name or packaging than on the
product or service itself.
The present Trademark law, embodies in the New Intellectual Property Code of the
Philippines, prevents a person or company from using a trademark which is confusingly
similar to another party’s trademark for similar products or services. However, under the
present state of things, a trademark owner has a difficulty in prohibiting the use of the same
or similar mark on dissimilar goods or services which was not likely to result in consumer
confusion. This has resulted in the dilution of the trademark, a “death by a thousand cuts”,
or “the slow whittling away”, of a established trademark’s selling power through its
unauthorized use by others on dissimilar products.

There is a need to address trademark dilution, an infection which, if allowed to spread will
inevitably destroy the value of the trademarks. Until now, the problem of dilution is
unnoticed in the Philippines.
 THE INADEQUACY OF EXISTING LAWS ON BIOPIRACY

Mari Jennifer M. Bruce (2002)

Abstract:

Present developments in biotechnology have enabled man to manipulate and

commercialize biological material in countless unpredictable ways. All biological life,
including human beings, down to specific DNA segments, are now potential resources to be
utilized or exploited. In the Asian region alone, there is a silent but reckless “gold rush”, one
where a handful of genomic companies and their pharmaceutical partners are rushing to
privatize the genes of plants, animals and humans to sell for profit. The commodity they now
seek to exploit is not gold but biological information. This has led to an increase in active
exploration by governments, corporate and private individuals for novel biologies that offer
potential for the development of a marketable commodity. In the process, activities termed
as ‘biopiracy’ are occurring.

Already, biopirates, skirting the loosely crafted anti-biopiracy laws in the Philippines
and at times with the help of some Philippine scientists, have successfully acquired patents
for a pain-killing snail, a cancer-curing tree, and several vegetables and fruits that are
remedies to diabetes. One patent holder alone earned as much as $80M, and sadly, patent
monopolies such as these lead to adverse effects not only to the economy, but also more
importantly, to the individual lives of indigent Filipinos and to biodiversity.

There is then an impending need to provide, not only our citizens, but also our
environment, ample protection against biopirates and biopiracy. Existing laws on biopiracy
have proved inadequate, allowing biopirates to unscrupulously take and patent even endemic
varieties of plants and animals, hindering the Filipino’s access to, and exploitation of his own
natural resources.
This paper takes the first step in attempting to curtail biopiracy by identifying specific
acts that constitute biopiracy in an attempt to provide an accurate definition of the term,
taking into account the present state of biopiracy, its incidents and the existing laws relating
to the matter. This paper further proposes remedies for the effective regulation of
bioprospecting activities in the country.
 TRANSCENDING THE BORDERS: JURISDICTION AND THE CHOICE OF LAW IN
COPYRIGHT INFRINGEMENT OF THE INTERNET

Maria Christina Hernandez (2002)

Abstract:

Early in the sixties, the Internet was born. What began as a project for a little circle
of computer geeks, military and tactical experts, and a handful of universities, has now
become a world of its own. The Internet transcends space and time, where one can go right
into the heart of French society without boarding a plane, and where the farthest recesses of
Kazakhstan are available for exploration at the click of a button. The creation of the Internet
has changed the way we communicate by allowing us to connect with people in the farthest
regions, to transfer data and relay information in real time, that is, transfer is completed and
made accessible with the click of a button. The creation of the Internet has changed the way
we communicate by allowing us to connect with people in the farthest regions, to transfer
data and relay information in real time, that is, transfer is completed and made accessible
with the click of a button, obviating the need to go through what is now affectionately called
“snail mail”. While this benefit certainly has brought people together in a shorter period of
time, one effect of this hyper-transmissibility of information involves the issue of copyright.

In general, Copyright pertains to the protection of literary and artistic works. This
right allows the creator exclusive use and control over his creation, which if violated may be
the subject of an infringement suit and a claim for damages.

The general principle followed by most countries with regard to protection is explained
by Justice Paras, citing Wolff, “Patents, Copyrights, Trademarks and Tradenames are in the
absence of a treaty protected only the state that granted or recognized them.”

The problem arises in cases where material protected by copyright is coursed through
the Information Superhighway, these works posted on the Internet take the digitized form,
an in most cases, anybody with access to the Internet can easily make copies, send or transmit
these copies probably even before the author of such work can say “copyright infringement”.
How then does a state exercise or give protection to such information? It is thus of great value
to determine precisely when works are protected, what this protection covers, and the
remedies available if the protection has been encroached upon by unauthorized person.

The existing framework to some extent remains applicable in light of the Internet, but
further examination is required to address the inadequacy of the territorialist approach of
Copyright Protection. Principles on attachment of protection, jurisdiction, and the applicable
choice of law, need to be reconsidered to respond to the needs of copyright holders of works
on the Internet.

The Age of the Internet has come and is here to stay, and just as people have adapted
their behavior to the new and amazing discoveries and inventions of the past, so too, should
these inextricable rights of creation adapt, if intellectual creation is to flourish and lead us
to the next Age.
FIRST-TO-INVENT V. FIRST-TO-FILE: WHICH IS THE MORE APPROPRIATE PATENT
SYSTEM FOR THE PHILIPPINES

Christopher D. delos Reyes (2003)

Abstract:

The New Intellectual Property Code of 1998 took effect last January 1, 1998. It caused
several changes in our patent laws. One of the changes is the shift from the first-to-file system
for patent registration. This issue has created a noise in the United States. However, it did
not create even a stir here in the Philippines. The Filipino inventors accepted the shift
without any serious opposition. It seems that this matter is trivial to them.

However, such shift should not be left unturned. The inventors in small businesses in
the United States opposed the shift. They opposed it featuring that the success of the first-
to-invent system as shown by the proliferation of significant inventions patented there will
no longer continue. They believe that the application of the firs-to-file system will discourage
their inventors due to intellectual piracy as one may simply file a patent application ahead
of the first inventor and get the patent. These are serious issues that must be addressed.
Thus, there is a need to determine whether the shift is good or bad for this country. Is the
shift a good development for this country? To resolve this, one must determine which between
the first-to-invent and the first-to-file system is the more appropriate patent system in this
jurisdiction.

The proponent in this thesis proposes that the shift is good for this country. This is
based on the finding that the first-to-file system is the more appropriate patent system in the
Philippines. But, the proponent has found defects in this system causing disadvantages to
our Filipino inventors. To remedy this, the proponent proposes that an alternative relief
should be given to the true and actual Filipino inventor. Such relief should not be limited
exclusively through recourse to the courts. An option should be granted through the Bureau
of Legal Affairs. Through this suggestion, the proponent believes that any form of injustice,
which may arise under the first-to-file system, may be obviated or at least minimized. The
Filipino inventors must be adequately protected in the same way as they are protected under
the first-to0invent system. It is not only due to the mandate on the State to protect their
exclusive rights on their respective creations but also as recognition that their protection is
essential for the development of science and technology in this country.
 OWNING ANIMAL INVENTIONS: PATENTING ANIMAL BREEDS

Irwin C. Nidea Jr. (2003)

Abstract:

After centuries of fusing, melting, forging, and burning inorganic materials to create
useful things, we have come to a time in mankind’s development when we are splicing,
recombining, and transforming living material into commercial goods. Scientists are
mapping the genomes of many animals, and creating a huge genetic library of the same for
commercial exploitation.

While genetically modified animals have the potential to positively affect many
aspects of our lives, from what we eat to the way we treat diseases, it is also an industry that
requires the investment of enormous financial capital for the research and development of
new products. Thus, multinational companies that created these genetically modified
animals are asking for protection. They want such particular life form to be registered as
their own.
With substantial capital, unity of purpose and action through organization,
multinational companies act in such complete unison on such critical matters as the fixing of
prices, the determination of the quantity of goods or articles to be made available in the
market, and even the choice of the goods or articles they would or would not utilize or allocate.
The fears of disruption of the national economy through the violation of the law prescribing
monopoly and of the complete subservience of local farmers and consumers alike, can be
placed completely at their mercy if they are given the intellectual property right over a
particular strain of animal from which we derive our food.
This is in contravention of the conventional law that life is not a patentable property.
But in liberalizing such restriction, men may be able to utilize nature’s fullest potential and
uncover the veil of its deadly mysteries.
 RESOLVING THE PATENTABILITY OF SOFTWARE PROGRAMS AND BUSINESS
METHODS IN THE METHODS IN THE PHILIPPINES

Herbert V. Lo (2003)

Abstract:

The computer is a powerful symbol of technological process. Once a prohibitively

expensive and specialized piece of equipment, the computer has become a tool of nearly
universal application, transforming such diverse fields as engineering, communication,
entertainment, medicine business, education, mathematics, and science. The computer
defines our technological era as the steam engine defined the early years of the industrial
revolution; indeed, the term used to characterized our modern times is no longer “the space
age,” but “information age.”

The most direct contribution of the law to technological advancement rests in the
grant of economic incentives to the inventors via the patent system. The primary law
governing the patent system in our country is the Intellectual Property Code of the
Philippines (IP Code), which grants to an inventor or his legal successor, in return for the
disclosure of the invention to the public, the right for a limited period of time, to exclude
others from making, using, selling, or importing the invention within the territory of the
country that grants the patent. The IP Code defines a patentable inventions as any technical
solution of a problem in any field of human activity which is new, involves an inventive step
and is industrially applicable; it may be or may relate to, a product or process, or an
improvement of any of the foregoing.

In 1999, the U.S. Federal Circuit Court, in State Street Financial v. Signature
Financial, has expanded subject matter patentability of 35 U.S.C. § 101 to include software
programs and business method. As a result, a good number of e-commerce patents, which are
a combination of software and business method patents, were granted by the USTPO.

Our laws and jurisprudence in intellectual property is heavily influenced by the U.S.
The question is whether we should allow the patentability of software programs and business
methods given the fact that Sec. 22 of the IP Code specifically excludes methods of doing
business and programs for computer from patent protection.
This paper reviews the development of the subject matter patentability in the U.S.,
Europe and Japan and looks into the efforts of these countries to harmonize their patent
laws. It examines the current legal status of software and business method patents and
determines which standard of subject matter patentability should be adopted by the
Philippines. It makes a proposal to amend the IP Code in order to align Philippine standard
of patentability with the world practice.
 INTELLECTUAL PROPERTY RIGHTS: THE LACK OF CONCLUSIVE STANDARD IN
DETERMINING TRADEMARK INFRINGEMENT

Fides C. Victorio (2004)

Abstract:

Trademark and service marks play a vital role in the lives of manufacturers, sellers,
and businessman. When they employ certain trademarks or service marks upon their
products, goodwill or reputation will necessarily be attached to the same. Their primary
function, therefore is to distinguish one product from the other in order to avoid confusion.
Trademarks and service marks been considered as special property that Philippines law
affords its owners protection form infringers.
When a registered trademark is believed to be infringed by another, the owner of the
registered mark may as a remedy, file an infringement suit to avoid incurring a greater
degree of damage. At present, many cases involving trademark infringement have already
been resolved by the Supreme Court using two tests it developed to determine if infringement
exists. These two tests are the dominancy and holistic tests. These tests when applied by the
courts have caused confusion, diversity and instability in our judicial decisions, a dilemma
that should be addressed the soonest possible time because it affects the stability and
predictability of judicial decisions as well as the integrity of our justice system

This study re-examines the cases decided by the Supreme Court applying the
dominancy and the holistic tests. This study aims to establish a resolution that will help our
courts in come up with a conclusive standard in determining trademark infringement taking
into account the effects it may cause to the country’s legal system and economy. The endeavor
of this study is to harmonize the conflicting application of the dominancy and the holistic
tests for the proper and just disposal of the issue on trademark infringement.
 THE REGISTRATION OF SOUNDS AND SMELLS AS TRADEMARKS

Ma. Aurora N. Gonzales (2004)

Abstract:

A trademark is an imprint which stimulates minds eventually finding its place in the
sphere of human memory. It is a powerful tool which effects a system of association to the
origin and perceived quality of products. Simply put, an initial identification of marks
matures to familiarity and leads to memory recall. Prospectively, trademark recognition
serves as an incentive to merchants whose positive response fuels investment and invigorates
commerce. In the best sense, it is geared toward the protection of the consuming public who
through experience has indulged in that unique process of association.

Philippine law and jurisprudence has defined a “trademark” as including any word,
name symbol, emblem, sign or device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish them from those
manufactured, sold, or dealt in by other. Under the 1997 Intellectual Property Code, “mark”
is a visible sign capable of distinguishing the goods (trademark) and services (service mark)
of an enterprise. Realistically, marks are not limited to visual signs in the literal sense of the
word visual. There have been successful registrations of sounds and smells as trademarks in
foreign jurisdictions. Rationalizing on this point, we are very much aware that human sense
perception is not limited to vision. Cathy Newman illustrates, “What is left of the most
beautiful lady in the world when you turn out the light?’ Jean-Paul Guerlain asks in response.
It is late afternoon in his Paris office, which overlooks the broad sweep of he Champs-Elysees,
and the light is dimming in the room of faded gold. You don’t see her hair, you don’t see her
breasts, you don’t see her jewels or the beauty of her eyes. What is left? The feminine charm
of her voice and her perfume.” Sounds and Smells have as much, if not more, distinctive
energy as visual images possess.
The seemingly restrictive definition of a “mark” deserves serious examination. It
should be given a liberal interpretation in harmony with the more expansive definition given
in the old trademark law continuously found in Philippine jurisprudence, the international
commitments of the country, and finally, the ultimate goal of modernizing the trademark
registration process which was clearly sought in the enactment of the Intellectual Property
Code of the Philippines.

This study submits the permissiveness of the registration of sounds and scents as
trademarks.
IMPLEMENTING ARTICLE 11 OF WIPO COPYRIGHT TREATY IN PHILIPPINE LAW:
ANALYSIS AND RECOMMENDATIONS FOR PHILIPPINE COMPLIANCE

Jonas Sia Khaw (2005)

Abstract

Recent advancements in digital technology and the proliferation of copyrighted works

in digital form, have raised numerous problems with respect to the enforcement of copyright
law in the digital environment. The illegal reproduction of digital works and other forms of
digital piracy, are currently being done in massive scale and has made traditional copyright
infringement remedies inadequate. First, acts of copyright infringement, which are usually
done in private, are hard to detect. Second, filing suit against every individual who commits
copyright infringement is prohibitively expensive and highly impractical for copyright owners
or holders given the fact that a significant number of people commit acts of infringement

Alternative remedies such as licensing, the employment of technological protection

measures (TPMs) in digital works to prevent infringement, or a combination of both, referred
to as Digital Rights Management Systems, have also proven inadequate in curbing digital
piracy. The problems encountered with respect to combating private infringements are
likewise encountered in cases of breach of licenses. TPMs, though very effective in preventing
the infringing acts of numerous unskilled individuals, can eventually be defeated by a few,
skilled individuals called hacker given a matter of time. Hackers can then easily disseminate
easy-to-use and user-friendly tools, mainly computer programs, for the circumvention of
TPMs to countless unskilled people, through the Internet, thereby allowing acts of
infringement to be carried out once again.

In response to these problems, the WIPO Copyright Treaty (WCT) was created. Article
11 of the WCT requires Contracting Parties to “provide adequate legal protection and
effective legal remedies against the circumvention of effective technological measures that
are used by authors in connection with the exercise of their rights under this Treaty or the
Berne Convention and that restrict acts, in respect of their works, which are not authorized
by the authors concerned or permitted by law.” This “anti-circumvention” provision gives
additional protection to copyrighted digital works by providing legal protection against the
circumvention of TPMs. This measure, if properly implemented in domestic legislation, has
several advantages. First, it allows copyright owners to prevent hackers from circumventing
TPMS. Second, because skilled hackers are relatively few in number, prosecuting such
hackers will not present much of a problem for copyright owners. Third, by being able to
prevent acts of illegal circumvention, the effectiveness of TPMs in preventing infringements
will be restored.

The Philippines is a signatory to the WCT and the treaty has taken effect with respect
to the Philippines on 4 October 2002. However, the Philippines currently lacks domestic
implementing legislation for compliance with Article 11 of the WCT.

This paper seeks to provide a framework for implementing the anti-circumvention

provision of the WCT in the Philippines. First, it will present an overview of the problems in
digital copyright. Second, it will analyze Article 11 of the WCT and determine what are the
obligations required under it. Third, it will discuss free speech issues in prohibiting the
dissemination of tools or computer progress for circumvention and copyright fair use issues
in prohibiting TPM circumvention. Lastly, it will give recommendations on how the
Philippines should implement the anti-circumvention provision of the WCT in its domestic
law.
 CYBERSQUATTING LIABILITY- APPLYING TRADEMARK LAW AND TORT LAW TO
COMBAT CYBERSQUATTING

Adrian Dimacali (2006)

ABSTRACT:

The thesis deals with classical cybersquatting. Classical cybersquatting is the act of
registering and using a domain name that is identical to a trademark of another with the bad
faith intent to sell the domain name to the trademark owner for a profit.

Cybersquatting is not expressly sanctioned under any Philippine law. The objective of
the thesis is to establish how cybersquatting liability may be grounded in existing Philippine
law, particularly trademark law and torts law.

It has been suggested by some legal authorities that cybersquatting may be covered
by the infringement provisions of the IP Code and by the piracy provisions of the E-Commerce
Act. However, the thesis will show that classical cybersquatting is not infringement. Hence,
cybersquatting cannot be covered by infringement law.

Cybersquatting is punishable under the other areas of trademark law, namely

dilution and unfair competition. Dilution is the lessening of the capacity of the famous mark
to identify and distinguish goods or services regardless of any likelihood of confusion mistake,
or deception or the presence of any competition between the owner of the famous mark and
the other party.

On the other hand, unfair competition, in general is any lawful act that causes injury
to one’s competition. In particular, unfair competition is the act of passing off one’s goods or
service as those of another. However, the development of jurisprudence does not support a
narrow definition of unfair competition. The tendency of the courts has been to widen the
scope of protection in the field of unfair competition. Cybersquatting is an act unfair
competition. An analysis of cybersquatting will show that, in essence, it passes the unfair
competition requirements of (1) unlawful act that injures the competitor, and (2) passing off.

Articles 19, 20, and 21 of the Civil Code serve as the basis for a tort action, where the
offensive conduct is done intentionally and not merely through fault or negligence.
Cybersquatting is an abuse of fight. It is a subversion of the principles of the internet and is
detrimental to society. As such it is an act that falls under the scope of the rules on human
relations, articles 19, 20 and 21. Thus, cybersquatting liability may be grounded on tort law.
 GROKSTER AWAKENS THE NAPSTER: DEFINING THE LEGAL FRAMEWORK FOR
ONLINE FILE SHARING SOFTWARE DEVELOPERS AND COPYRIGHT HOLDERS

Dominadore Imperial Lim (2006)

ABSTRACT:

Copyright protection exists not only for the protection of the creators, but more
importantly for the advancement of knowledge. It is rightly viewed as a future-facing
institution necessary to social progress insofar as it promotes the acquisition of information.
In the years to come, technology and copyright will naturally fit into the scheme of things
where each one’s mechanisms will eventually fall into place.

While it is the exclusive right of the creator to determine how his or her work is
distributed, the public has shown their overwhelming support for online file sharing
technology. Assuming the fact that online file sharing will always be around, the content
industries should adjust to the market the same way they learned to adjust to the radio or
the VCR. Online file sharing must be allowed to grow and innovate and not be stifled by a
total ban on operating such technology.

The Napster case in 2001 presented the issue of infringement and the process of
inducing one to commit infringement. This ruling was recently awakened by the Grokster
decision in 2005.

The concept, idea, and architecture of online file sharing is not certain nor should it
be dictated by any law banning it. Software writers cannot predict its future, yet it is true
that while all this is happening millions of files of copyrighted content are continuously being
downloaded. There is therefore a need for a clearer synthesis.

A more balanced synthesis would be possible where the analysis focuses not just on
the general idea of who commits infringement or induce another to commit infringing activity
with actual knowledge thereof, and if he has exercised all the necessary means in his power
to prevent the infringement, regardless of financial benefits gained from the infringing acts
of others.
 KAY GANDA NG ATING MUSIKA…GAYA GAYA? RESEMBLANCE IN MUSICAL
COMPOSITIONS WITHIN THE CONTEXT OF PHILIPPINE COPYRIGHT LAWS:
ESTABLISHING A STANDARD TO DETERMINE INFRINGEMENT

Pamela Ann Trajano Cayabyab (2006)

ABSTRACT:

The Philippine music industry has been rocked with reports alleging certain local
bands of creating rip-off music. Rip-off is a crude term for copying or imitating music. Some
local musicians have been branded outright as music plagiarists or in legal parlance,
copyright infringers. Unfortunately, their compositions tops record sales contributing
significantly in sustaining local music industry. With songwriters being easy objects of
infringement threats, they suffer tarnished reputations and possible economic losses. A
further problem arises since the songs from which these bands allegedly to have copied their
music, enjoy copyright protection. Looking at the perspective of composers whose creations
are infringed, they too suffer a similar fate—they are robbed off the fruits of their concrete
creative works, economically or otherwise. Resultant damage this arises to either side. With
this scenario, the purpose of our copyright laws to protect the rights of intellectual creators
seem to have been rendered inutile; and the effectiveness of the laws appears to be weak.

This reported prevalence of ripping-off music poses a challenge to the country’s

copyright legislation. Resort to the eight-year-old IP Code of the Philippines for a standard
to determine musical composition infringement yields negative result. The initial query thus
of how to ascertain infringement in musical compositions cannot be addressed. Unlike in
other countries where criteria are formulated to test fully this concern. Therefore, a workable
test should be established first to aid in determining infringement. To address this problem,
this thesis shall propose a standard to determine the same.
As culled from American jurisprudence, these two must be considered: first, existence
of similarities in protected elements of a musical piece (as obtained from a prior segregation
of non-protectable elements from the particular expression of the work); and second,
existence of similarities in the overall impression of the musical composition. With a standard
on hand, the opposing interests of composers who create songs with semblances from other
songs, on one hand, and that of subsisting copyright holders, on the other hand, can be
harmonized.

This thesis shall be divided as follows: Chapter I shall provide a prelude to the nature
of musical composition, first, as an artistic expression, and second, as a legally protected
creation. Chapter II shall deal with the history of music copyright laws to establish the
context and basis for granting copyright. Chapter III shall discuss in detail the legal
provisions on copyright, and related local jurisprudence on intellectual property. This is to
show that indeed there is a lack of applicable standard in determining music composition
infringement in Philippine copyright laws. Chapter IV shall present issues on resemblances
in musical compositions. Attention shall be given to the differences in approaches used in
instances of verbatim copying, and in cases of songs bearing only aural semblances. Chapter
V shall be devoted for the search for a workable standard. Initially, the competing interest of
composers and copyright holders will be tackled. This will be followed by a resolution of the
different points of disagreement using the various strategies to ascertain substantial
similarity and access. This study shall conclude in Chapter VI with a presentation of the
proposed standard and a discussion of its consistency with the intent of our copyright laws.
OPTICAL DISKS THE PERFECT MEDIUM FOR PIRACY: AN EXAMINATION OF THE
OPTICAL MEDIA ACT OF 2004 AND THE PROTECTION IT AFFORDS THE CONTENT
CREATORS

Culbert G. Reynes

ABSTRACT:

The compact disc and the digital video disc have become the standard for the
distribution of music, film and software because of its diminutive size, longer shelf life, far
superior quality and the sheer amount of date stored in such a small package. Its most glaring
advantage over previous media however was the extremely low reproduction costs.

This has not escaped the observation of enterprising individuals who saw a huge
potential for counterfeit copies. The popularity of the optical disk who saw a huge potential
for counterfeit copies. The popularity of the optical disk as a medium for copyright
infringement has harmed movie, software and music industries both foreign and local,
tremendously and deprives the Philippine economy of millions of pesos in legitimate
revenues.
Amid the clamor of copyright owners and producers, the Optical Media Act of 2003
was enacted in early 2004 to regulate the manufacture, mastering, replication, importation
and exportation of optical media and has provided stiffer penalties for violators. While the
Act also punishes the sale and distribution of illegal optical media, its main focus is to stop
infringement at its source. While it may prove to be an effective strategy, there may be other
way to protect copyright owners.

This thesis, therefore, consists of an analysis of the protection provisions of the Optical
Media Act and explore the possibility of applying the theory of landlord liability as a
compliment to the Act.
 OPTICAL PIRATES: DETERMINING THE LIABILITY OF MANUFACTURERS AND
DISTRIBUTORS OF CIRCUMVENTION DEVICES FOR COPYRIGHT INFRINGEMENT

John Paul Pe A. Nabua (2006)

ABSTRACT:

Advances in both analog and digital technology offer content owners new
opportunities for distributing their works and offer consumers new means for receiving and
enjoying these works. Such advances, however, also pose a serious challenge such as how
works can be protected in a world where duplication is easy and inexpensive, where every
copy made whether from the original or another copy is perfect, and how distribution to users
around the world can be accomplished virtually cost-free and immediately in the market.
This challenge is particularly acute in today’s world where an individual consumer no longer
simply receives works, but can also send and re-distribute such works to others. Further
complicating the challenge of protecting works is the fact that copyrighted works now flow in
an environment that encompasses consumer electronic devices, computers, satellites and
global networks.
However, the steady progression in digital technology has given rise to an
exponentially increasing number of problems and issues with respect to the enforcement of
copyright in the digital age. It is precisely because of these issues that the WIPO Copyright
Treaty was enacted so that copyright in the digital world can be guaranteed protection.

One of the means of protecting copyrighted works in digital form through the use of
technological measures backed up by legal protection has been incorporated in the anti-
circumvention provisions of the WIPO Copyright Treaty specifically Article 11 which states
that, “Contracting parties shall provide adequate legal protection and effective legal remedies
against the circumvention of effective technological measures that are used by authors in
connection with the exercise of their rights under this Treaty or the Berne Convention and
that restricts acts, in respect of their works, which are not authorized by the authors
concerned or permitted by law.” The WPPT contains a similar anti-circumvention provision
in Article 18. The WIPO Copyright Treaty and the WPPT have been acceded to by the
Philippines on 4 October 2002.

However, despite having been a signatory of these treaties, the Philippines is yet to
enact a domestic law that addresses the issue of circumvention devices which happen to be
found in devices such as DVD players and gaming consoles being proliferated in the market.
One industry that has been benefiting from the absence of such a law is the market for pirated
optical media to the detriment of the copyright holders of the works contained in such forms
of medium. The question then arises on how the Philippines can comply with its international
obligations under the WIPO internet treaties with respect to its anti-circumvention
provisions.

This work has two main objectives. First, it aims to determine whether or not
manufacturers and distributors of Circumvention Devices are liable under Philippine Law
in compliance with the anti-circumvention provisions of the WIPO Internet Treaties. After
providing a negative answer to the first query, the work will then proceed to its second
objective which is to arrive at a set of guidelines and a proposed legislation which the
Philippines can enact in order to properly comply with the anti-circumvention provisions of
the WIPO internet treaties.
 REVERSE ENGINEERING OF SOFTWARE: WHY COPYRIGHT PROTECTION IS NOT
ENOUGH

Giancarlo Romano M. Leuterio (2006)

ABSTRACT:

Software, in our jurisdiction, is protected solely by the law on copyright. The

intellectual property protected in this category includes literary, artistic and scientific works,
originating in an “author” of such work. The remedy granted by the Copyright Law for
encroaching on rights of authorship is Infringement, which will be shown in this paper to be
more beneficial to unauthorized use than to legal acquisition of software. It raises doubts as
to sufficiency of the current law.
Reverse engineering is a process of finding out how something works by examining
and disassembling the finished product. Often, it is a means to develop competitive products.
As applied to software (or “computer programs” under our laws) this has raised several
objections from the side of authors, including: (1) the act itself requires use and adaptation,
which are rights exclusive to the author; and (2) the purpose of the act is to inevitably produce
new works, which can be detrimental to the author’s business. Because of both procedural
and substantive defects, Copyright law fails to address this problem.

On one hand, the absence of clear standards as well as the allocation of the burden of
proof has operated and is bound to operate against the author of the original work, in favor
of distinct rights of the offending party. The offending party can be either a person who legally
acquired the software or the license to use it, or a person who is in that regard partially or
entirely unauthorized. Even though the law is indiscriminate as to criminal intent, because
infringement has more clearly defined the rights of an assignee or licensee, there are less
regulations on unauthorized use. Furthermore, liability depends on establishing such fact in
court, which is skewed in favor of the offender. Present technology makes it even easier.

On the other hand, Copyright law protects “expressions of ideas” and not “mere ideas”.
It is extremely difficult, if not impossible, to distinguish expression from ideas in a computer
program. This has already become apparent, particularly in western countries. In response,
some countries have opted to either make other intellectual property laws (such as patent
and trade secret law) applicable in certain cases, or to enact supplementing laws. There is,
however, a third option creating a dedicated law.
 SURVEY EVIDENCE IN TRADEMARK LITIGATION: OVERCOMING LEGAL
OBJECTION TO ADMISSIBILITY AND WEIGHT

Joan Pauline Reyes (2006)

ABSTRACT:

The journey towards intellectual protection has led us to a not-so-momentous hall. It

has come down to a matter of proof. Where do we go from here? Although protection for the
trademark owners and the consuming public is the celebrated cause for trademark actions,
the means, sad to say, fall short of justifying the end.

The present Trademark Law, as embodied in the New Intellectual Property Code of
the Philippines prevents a person or a company from using a trademark which is likely to
cause confusion or to cause mistake or to deceive for similar goods. Authorities stress that
the keystone in trademark infringement, unfair competition or other passing-off cases is
likelihood of confusion. But proving likelihood of confusion or establishing preliminary issues
such as secondary meaning or lack of distinctiveness or even a claim of dilution is not always
an easy task to accomplish. The difficulty in establishing the existence of these issues lies in
the participation of a non-party to a trademark litigation—the common purchaser. Provisions
in the Trademark Law are replete with psychological notions, assumptions and findings
addressed to the psyche of a common purchase. Issue such as likelihood of confusion,
secondary meaning, lack of distinctiveness, dilution for trademark actions, all require delving
into the otherwise complex minds of the purchasing public. Yet, differing standards, qualities
and consequent impressions inhere every purchase. Recognizing the necessary role of a
common purchaser in trademark disputes thus, requires an objective means to extricate his
impression.

Actions or proceedings in trademark disputes, as provided by law, may either come in

the form of an administrative proceeding, a civil action or a criminal complaint, depending
on the nature of the relief sought and the forum chosen. Regardless, establishing one’s case
will prove to be difficult if only a limited form of evidence is allowed to be offered. Our rules
of evidence strictly declare as incompetent and thus inadmissible, testimony as to facts
without the personal knowledge of the witness, those which are derived from his own
perception. Hearsay evidence or testimony without personal knowledge is excluded because
the adverse party is unable to cross-examine the hearsay declarant to test his perception,
memory, articulateness and sincerity. In the realm of Trademark Law, however, where the
factual disputes are centered in the existence of likelihood of confusion, secondary meaning,
genericness or dilution and necessarily tested by the purchasers’ perceptions and buying
decisions, there is no fixed formula as to what form of evidence may prove that which is
entirely in the mind of a purchaser. The intangible nature of the gravamen of trademark-
related cases warrants the acceptance of survey evidence in deciding trademark disputes
here in the Philippines. While the United States’ Federal Rules of Evidence and other
numerous Federal Courts’ cases have espoused the allowance of such evidence, opposition as
to its reliability and accuracy, and even questions as to the applicable rule remain an issue
worthy of resolution. In the same vein, while no express provision prohibits the use of survey
as evidence, a closer look at the Philippine Rules of Court engenders doubt as to the
admissibility of survey evidence in court proceedings. Moreover, the probative weight of such
evidence has yet to be given attention in deciding trademark cases.

Resolution of the issues on the necessity and unreliability of survey evidence,

determination of the evidentiary nature of survey and clarification of the rules governing
survey evidence to permits its admission in proving likelihood of confusion, secondary
meaning, genericness, or dilution in trademark cases and studying the probative weight of
such evidence, guided by the end view of protecting the trademark owner and the buying
public is the thesis of the proponent.
 THE PROPRIETY OF A POLICY ADOPTING PATENTABILITY: ESTABLISHING A
PHILIPPINE LEGAL FRAMEWORK OF THE HUMAN GENE AS INTELLECTUAL
PROPERTY

Neil Energytte Gill Baldonado (2006)

ABSTRACT:

Developments in biotechnology have allowed human genes to be isolated from its

source, the human body, and purified as a wholly new product of man. Through this exercise,
human gene patents have been granted in several jurisdictions, including the US. Philippine
law has not provided a definite answer to the question of human gene patentability. Neither
has there been occasion for the courts to consider this novel issue. Though not as
technologically advanced as the US or other jurisdictions where the question of human gene
patenting has been answered, the issue will inevitably reach Philippine shores.

While the Philippines lacks proper capital to exploit its natural resources, patent law
provides an alternative source of revenue not reliant solely on capital. The primary source of
innovation is the fertile minds of men. It is time the Filipino people cultivate theirs. Human
gene patenting represents a substantial number of biotechnology patents hence it represents
an important emerging filed in patent law.

The complete decoding and subsequent publication of the human genome by the
Human Genome Project has stimulated international public interest in human gene patents.
Most of the comments generated from the public are packaged as moralistic, religious or
ethical stance. While these comments are meritorious for their own account, the question of
human gene patenting is essentially a legal question. Few comments pose the question in a
legal and public policy point of view.

This article endeavors to submit human gene patenting under a legal and public policy
examination. This article, through its examination of the legal and public policy issues,
wishes to take the first step towards creating a legal framework for human gene patenting
that is harmonious with existing Philippines statutory law and public policy.
A CRITIQUE OF MCDONALD'S V BIG MAK: DOMINANCY TEST AS THE DOMINANT
TEST IN DETERMINING TRADEMARK INFRINGEMENT

Sara Jane A. Suguitan (2007)

ABSTRACT:

Under the law, the requisites of trademark infringement are (1) the validity of
plaintiff’s mark; (2) plaintiff’s ownership of such valid mark; and (3) the use of the mark or
its colorable imitation by the alleged infringer which results in likelihood of confusion. The
third requisite is the most critical. In arriving at the existence of such likelihood, courts are
to apply either the dominancy test or the holistic test. However, the tests have proved to be
conflicting, such that when applied to the same set of facts, each yields a result contrary to
that of the other.

This vacillation between the two tests reflects case law’s fixation in choosing which is
the better test. It overlooks the bigger picture as painted by the policy of the law- these tests
are but means, the end is to determine likelihood of confusion. The more precise way to
achieve this end is for the courts understand two stages examining the competing marks. The
first stage is for a court to act as a court by considering the extrinsic factors involved, such
as distribution channels, target market, etc. in order to grasp a holistic view of the context in
which these trademarks are used. Having put the marks into context, the second stage is for
a court to step into the shoes of a consumer, whose perception is critical in determining
whether or not there is confusing similarity, and to decide which dominant feature remains.

On August 2004, the Supreme Court issued a verdict in McDonald’s Corporation vs.
L.C. Big Mak Burger, Inc. abandoning the holistic test in favor of the dominancy test.
Although the correct test was used, we shall see that the Court’s finding of likelihood of
confusion rests of shaky ground. In this case, although similarity exists among the dominant
features of the competing marks, it is not the confusing similarity which is the gravamen of
the offense of trademark infringement.

This thesis seeks to examine what the Court claims to be an explicit abandonment of
the holistic test and the relation of the McDonald’s ruling to the Philippine trademark law in
general. The dominancy test is in line with the statutory scheme, and its application must be
handled very carefully to give effect to the two pronged policy of the law, to protect the
average Filipino consumer from confusion and to protect the trademark owner’s goodwill.
 CRITICIZING THE CRITICS: EXAMINING LEGITIMATE INTERESTS IN DOMAIN
NAMES AND THE FREEDOM OF SPEECH AND EXPRESSION IN THE PHILIPPINES

Anna Noreen T. Devanadera (2007)

ABSTRACT:

The emergence of the internet has made people’s life easier. As a research tool, it
quickly evolved to help businessmen in advertising their products, goods and services.
Advertising through the internet is the cheapest cost in order to reach millions of people
throughout the globe. Businessmen started setting-up websites as a tool to advertise their
products. Websites require that a person register a domain name to be used as internet
address in order for such to be located in the world wide web. Businessmen then thought that
the most logical thing to do, in connection with their purpose of advertising, is to register and
use their trademarks as domain names. However, the use of trademarks as domain names
poses more issues than what people expected.

The registration of a domain name is usually on a “first-come, first serve” basis. There
are really no fixed requirements on the registration of domain names, for as long as such
domain name has not been registered, a person may be allowed to exercise ownership over it.
When these companies try to register their trademarks or trade names as their domain
names, Internet registrars deny their application on the ground that another person has
already registered that trademark or trade name. this results to the filing of complaints by
trademark or trade name owners on the ground that the use results to trademark
infringement.

Trademark laws in the United States provide for exceptions in trademark

infringement. One of which is the noncommercial use of the trademark or trade name. this
exception was also adopted by the ICANN, in the formulation of the UDRP. The UDRP
requires the complainant to prove three (3) elements, to wit: (1) the trademark is confusingly
similar; (2) rights and legitimate interest on the domain name has become one of the most
divisive among the elements because of the defense of the exercise of freedom of speech and
expression.

This thesis will delve on the issue of rights and legitimate interests of a person in the
ownership of a domain name when such is used as a criticism site to exercise the freedom of
speech and expression. It will also discuss the applicability of the Intellectual Property Code
of the Philippines when it comes to domain name disputes and its relation to trademark
infringement.
 FINDING THE CURE: A PROPOSAL TO AMEND THE INTELLECTUAL PROPERTY
CODE IN ORDER TO INCLUDE PROVISIONS ON "INTERNAL EXHAUSTION" AND
"EARLY WORKING FOR REGULATORY APPROVAL"

Ma. Theresa Laiz

ABSTRACT:

One of the major concerns of every household is having the right budget for health
care. If a member of a family gets sick, the auxiliary concern is the cost of the treatment.
Tuberculosis or pneumonia, curable diseases, can lead to death if not properly or immediately
addressed. These are just two of the many diseases that have corresponding cures and which
first world countries are no longer afflicted with.

Although unavailability of such medicines can be attributed to many factors such as

marketing and economic forces, this study intends to research on the legal aspects which is
responsible for creating an environment conducive only for the patent holders without having
due regard to the needs of the impoverished public.
The need to introduce a change in the legal structure is dictated not merely by
conscience but more so, by the fundamental law of the land and the country’s international
commitments. Although TRIPS is also an international commitment, the property rights
protected by the said treaty can be secondary to the primordial right to life.

The flexibilities in the TRIPS serve as a room for the Philippines to tailor its laws
according to the economic and social requirements of the country. In order to strengthen the
local industry and to guarantee effective competition, the local laws must expressly include
the right of generic manufacturers to experiment on a patented invention and then get
regulatory approval in order to make the drigs available as soon as the patent of the innovator
expires. Lastly, the law must also include a provision on “international exhaustion” to
guarantee that medicines from the same innovators, but distributed outside the Philippines,
will be available to the Filipinos.
 HIT ME BABY ONE MORE TIME: THE LIABILITY OF META TAG AND
CYBERSTUFFING USERS UNDER THE INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES

Juan Miguel C. De la Fuente

ABSTRACT:

“The internet has no such organization- files are made available at random locations.
To search through this chaos, we need smart tools, programs that find resources for us.” –
Clifford Stoll, Silicon Snake Oil, 1995.

Life is often too short to go about wandering the world searching for that which we
seek and want. That is why we rely on the past experience of persons to help point us to the
right direction and to aid in our journey. The internet is the world and a search engine is the
person that helps us navigate the immense density and chaos we all know as the World Wide
Web.
As the internet boom began, many people flocked to the net to find exactly what they
wanted and needed. Surfing the web used to be done by word of mouth, or by mere random
entries, however these methods were just too time consuming and simply not enough. It was
akin to a helpless wandered travelling without a map, hoping with every flip of a page for
that data which would deliver him to information ecstasy. New technologies were needed and
created to categorize and simplify the way people charted the information superhighway.

The simplest solution created was through the use of a mathematical algorithms
encoded in a search engine program. Searching was done via keywords. Targeting words and
expressions which were either embedded as metatags or those found on the face of the
webpage. The search engine became the eyes and ears in the virtual world of ones and zeros.

As internet traffic increased, many industries and business saw the internet as an
alternative avenue to reach more customers and to deliver more specific information to the
neediest surfer. This then brought about stiff competition to be number one on any search
result list. Because of this web page owners sought to embed in their webpage’s Tradenames
and trademarks of their rival companies or products which would necessarily allow their
pages to be “hit” and viewed when a surfer looked for such similar products. This practice
would lure the surfer into a competitor’s website which relied on the tradename or mark of
another established competitor. This, in essence, is a free ride of the coattails of other
trademark owners and is possibly a case trademark/name infringement, or unfair
competition.

This thesis will delve into the issue of Metatag and cyberstuffing usage vis-à-vis
Tradenames and name infringement under RA 8293. And what constitutes the fair use of
tradenames fro purposes metatag and cyberstuffing.
 IP AS SUBJECTS OF INVOLUNTARY TRANSACTIONS

Marianne R. Palisoc (2008)

ABSTRACT:

Intellectual property has been gaining ground as one of the most valuable assets that
a person may possess. In recent years, focus has been towards the protection of these works
not only in one’s own country but also in other parts of the world. Even with these
developments, it seems that the full potential of such property has not been exploited in the
sense that there has been very little use of said property in enforcement of judicial actions
such as attachment and execution of judgments.

It would be in the best interest of both the obligor and oblige if in the enforcement of
judgment or even prior thereto, the property made to answer for such would be sufficient. It
affords the oblige to satisfy the full amount of his claim and it affords the obligor security and
may eliminate the necessity of having to exhaust all his resources in order to satisfy the
judgment. In effect, it encourages stability of transactions. One may argue that the current
circumstances address this situation. However, it must be conceded that there exists great
developments in intellectual property and the current trend of doing business has
considerably advanced such that one must be adaptive to changes. For one thing, intellectual
property has emerged to be an asset of great value and such has not been used to its full
potential. The fact that intellectual property has rarely been judicially attached or made to
answer for the enforcement of a judgment does not mean that it would be an impossibility. It
is in this context that the need becomes apparent for making intellectual property a subject
of involuntary transactions such as attachment and execution similar to other properties.

By doing so, it becomes necessary to determine the available methods of valuation by

which intellectual property may be assessed and the recording methods to effectively subject
the property to a lien. An examination of the remedies provided by law as compared with the
recording requirements of the laws governing intellectual property is necessary. Likewise, a
review of acceptable accounting standards in the country and those recognized worldwide for
valuing intellectual property is in order. However, resort to foreign laws and jurisprudence
regarding writs of attachment or execution on intellectual property is needed because
admittedly, such a practice is not prevalent in the Philippines.

It is the thrust of this paper to advance the notion that as intellectual property is
admittedly also property, it can be subjected to the same uses as its traditional tangible
counterparts, hence can be subject to liens. Despite such observation, this paper would be
limited to its use as properties which can be attached or made to answer for a judgment
although other aspects, if any, may be cited for illustrative purposes or to strengthen
arguments. One must also consider that intellectual property has inherent peculiarities,
which would justify a slight deviation from the way that other properties are treated. This
would lead to the inevitable conclusion that the current laws must be reformed to conform to
the situation contemplated to enable a clearer and more specific treatment of the matter.
 MONOPOLY OF IP: FINDING THE GOLDEN MEAN BETWEEN ANTI-TRUST AND IP
PRINCIPLES

Paolo P. Macapagal

ABSTRACT:

The Philippine market has been described merely as a retail market. In other words,
majority of the industries are concerned with the production and marketing of standard
products such as food and beverages. Hence, the Philippine market is not anything like that
of the US in which a significant portion of the industries are engaged in the production of
new innovations such as embedded chips and nanobots.

This description of the Philippine market however would only be absolutely true if it
was used a decade earlier. Time has ushered in new changes in the market conditions and it
continually does so. Through globalization, transfer of technology has been a lot easier and
because of an ever-changing face of the market and consumer demands companies have
answered with new innovations that 10-14 years ago would have been unthinkable. Hence,
it can be safely stated that the Philippines has now penetrated or at the very leas has laid
the grounds for an IP-rich industries. Specifically, the Communication, Medicine and
Microchip industries (Ex: Intel, Glaxo-Smith-Kline, PLDT, SMART).

A law that would assist in promoting and nurturing this IP-rich industry is RA 8293
or the Intellectual Property Code and at the same the Antitrust principles articulated in the
1987 Constitution, the Revised Penal Code and the Civil Code. In the United States,
Antitrust refers to laws that govern competition and prohibit certain anticompetitive
practices. Essentially, the conduct restricted by the antitrust laws includes price-fixing, tying
contracts and conspiracies in restraint of trade and monopolization.

Despite this cooperative outlook it appears that there is a divergence when it comes
to both its application. Antitrust law and intellectual property law each try to benefit
consumers by stimulating innovation. Antitrust law protects competitive markets so that
innovators are not suppressed by agreement or by excessive economic power. Intellectual
property law provides incentives to inventors, giving them the right to be free of competition
in the sale of their inventions for a limited time. When control over an invention also provides
control over a relevant market for antitrust purposes the policies behind the two areas of law
come into tension.

In light of the foregoing, this work proposes that despite the tension between
Intellectual Property Rights and Antitrust Principles a balance can be achieved through
clear-cut guidelines in the application of both. It will explain that there is a need to delineate
the line between that is per se illegal and those that fall under the rule of reason (weighing
the anti-competitive effects against the pro-competitive effects). Lastly, it will recommend
tests and guidelines in its implementation. Most important of which is the determination if
by the mere fact that one is a holder of patent already translates into having market power
(ex. Power to raise and maintain prices above competitive levels, power to dictate the supply
and demand in the market or the power to exclude unjustly competitors in the market). The
fundamental target of the recommendations is to establish the golden mean in the application
of both Intellectual property Rights and Antitrust principles in order to ensure that the
common goal of both – to benefit the consumers through free market and to secure the rights
of inventors and pioneers thereby guaranteeing innovations—are fulfilled effectively and
legally sans the conflict and tension.
 THE NEED FOR THE CODIFICATION OF THE DOCTRINE PROHIBITING
COPYRIGHT INFRINGEMENT AUTHORIZATION IN THE PHILIPPINE IP CODE

Jose Paolo A. Patajo (2008)

ABSTRACT:

Every person naturally wants to be acknowledged for his or her own creative work.
The onslaught of the World Wide Web and e-commerce has placed a high premium on
creativity, as information technology has allowed people to share and swap thoughts, ideas,
visions, and reflections at a click of a button. The emergence of technologies such as peer-to-
peer file sharing software and hyperlinks have proven to be a challenge to modern day
copyright law due to their peculiar nature as to copyright infringement authorization. This,
however, has been addressed in jurisdictions such as the United States of America and
Australia through the doctrine of authorization of copyright infringement, or contributory
infringement. Unfortunately, there is no such provision of law or doctrine in the Philippines.
This leaves the intellectual property rights of the people of the Philippines vulnerable to
indirect infringers of copyrighted works.
 A CRITIQUE OF SEHWANI, INC VS IN N OUT INC.: PH RECOGNITION OF WELL-
KNOWN MARKS

Abraham A. Gutoc (2009)

ABSTRACT:

Trademarks are one of the most valuable assets of a business. For one, a name is
everything. As such, laws and jurisprudence have increasingly extended protection to
trademarks and punish those who violate the lawful rights of trademark owners. A step
towards this direction is the Paris Convention for the Protection of Industrial Property. It
created a special protection in favor of well-known marks. The Convention provided
protection for trademarks which have become well-known in one country through use in
another or other countries but have not been registered or possibly even used in the country
where protection is sought. This rule has come to be known as the well-known marks doctrine
which specifically provides an exception to an engrained territoriality to an engrained
territoriality principle in trademark law.

Under the Intellectual Property Code, the requisites to be protected under the mantle
of a well-known mark are (1) a mark is identical with or confusingly similar to, or constitutes
a translation of a mark and (2) that the mark is well-known internationally and in the
Philippines, whether or not it is registered here provided, that in determining whether a
mark is well-known, account shall be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including knowledge in the Philippines which has
been obtained as a result of the promotion of the mark. The second requisite is the most
critical . in the determination of a well-known mark, international recognition and Philippine
recognition of a mark must be shown.

On October 2007, the Supreme court pronounced in Sehwani, Inc. vs. In-N-Out Burger
Inc. that subject trademark in dispute is a well-known mark within the meaning of the law.
The court cited the 1999 Joint Recommendation Concerning Provisions on the Protection of
Well-known marks whereby the World Intellectual Property Organization declared that a
mark should be protected in a country even if the mark is neither registered nor used in that
country. However, the WIPO itself in the recommendation considers certain factors in the
determination of a well-known mark, which the ruling did not consider.

This thesis seeks to examine the ruling in Sehwani, Inc. vs. In-N-Out Burger, Inc.
specifically on the issue of whether or not the subject mark in dispute is a well-known mark
which should be protected under Philippine law. What were the factual considerations of the
Supreme Court in declaring the mark “In-N-Out” well known internationally and in the
Philippines? Does the ruling conform to prior decisions of the Intellectual Property Office?
Should the ruling in Sehwani set a precedent in the determination of well-known marks?

The well-known mark doctrine was born out of international agreements. Foreign
jurisprudence on the matter will surely prove to be enlightening on the standard in which a
well-known mark should be determined. A question to be addressed is whether the standard
of international repute alone, as illustrated in the case is sufficient to declare that a mark is
well-known.
 AN APPLICATION OF THE POST-SALE CONFUSION DOCTRINE IN THE PH
JURISDICTION: ADDRESSING A JURISPRUDENTIAL GAP IN THE APPLICATION OF
THE IP CODE

Gerald James Buendia Reyes (2010)

ABSTRACT:

Today's consumer-led markets are constantly being bombarded with new products,
new labels, new services and less obvious or more cosmetic changes in product image,
packaging, and benefits offered. Despite ever increasing market segmentation, most market
segments are no longer dominated by a single overbearing market leader as in the past, but
by several evenly matched competitors who for the most part compete for consumer loyalty
by distinguishing their products. This is not always easy in that competing products
ordinarily offer the same benefits or product profile. To gain a decided edge in this ever
crowded market, consumer preference and consumer behavior have become the playground
of marketers and producers. It has now become an imperative to attain a high "top of mind
awareness" in order for a product to survive and thrive. The success of a product now depends
on how its marketers are able to separate their products and elevate them to a higher plain
in the minds of consumers through branding.

Brand marketing is essentially a marketing process which seeks to establish a product

in the market by increasing the awareness of the consumers about the product and
developing a high "perceived value" as well. This is done through massive media campaigns
using above-the-line and below-the-line advertising.

Brand marketing campaigns, depending on the competitive level of a products market,

may span a good's lifetime, until it is taken off the market. For this reason, branding
initiatives have become increasingly expensive, time consuming, and difficult. Not only does
a marketer need to consider the image his goods need to project in order to sell, but also the
medium by which the image desired is to be conveyed to its target market. Moreover,
branding, while increasingly necessary or at least desirable in today's market place, has also
become is high risk in terms of investment loss due to the low probability of success of a
campaign. For each successful campaign, there are many more which simply end in
frustration and market failure.

As a result, marketers and producers now place as much premium in the creative
elements of their banding strategies as in the recognized necessity to protect these elements.
Hence, Intellectual Property Rights (IPR) has experienced a boom in popularity and strategic
value for many businesses. This is the result of the increasing necessity for branding and
distinguishing competing products from each other. In an ideal world, market competition is
healthy, ethical and fair. In the real world, however, there will always be those profit driven
businessmen who prefer to take the shortcut and take a free ride on the hard earned goodwill
of his competitors. This is where IPR comes in to protect the investment of companies from
competitors who seek to unfairly take advantage of the branding success that their product
has experienced by: imitating, reproducing or counterfeiting the product itself, its trade
dress, its logo, and other characteristics. This interplay between the necessity for branding
and protection has in many ways revolutionized both fields of endeavor. As branding
philosophies evolve, imitators keep pace and the pressure for IPR to extend its ability to
afford effective protection progressively increases.

Traditionally, IPR steps in to protect the external distinguishing features or the

temporary indicators associated with the product. These include trademarks by which a
product is known and identified in the market; product dress which include such things as
container shape, color themes, and packaging; and sundries which are temporary identifiers
such as hang tags, paper labels and product flyers. The reasons why these features are
protected is obvious, they are the most dominant sensual feature of any product. The degree
in which these elements are protected varies from jurisdiction to jurisdiction; ranging from
little or no protection to potentially competition stifling protection.

In the Philippines, the law that seeks to protect intellectual property is Republic Act
No. 8293 otherwise known as The Intellectual Property Code of the Philippines. This law has
since been amended twice in the areas of layout designs (topographies) of Integrated Circuits
(Republic Act No. 9150) and more recently in the area of patents (Republic Act No. 9502) also
known as The Universally Accessible Cheaper and Quality Medicines Act of 2008. The former
relates to an adaptation to a new technology which the latter is a social legislation which
relaxed patent protection under certain circumstances.

The questions sought to be answered by this thesis are:

1. Should the Intellectual Property Code (IPC) of the Philippines

be applied in a limited manner where its scope will not allow for the protection of the
actual raw unpackaged product?
2. Does the IPC cover and penalize confusion which takes place
after the point-of-sale or in the post-sale context?
3. Using certain tests, does the IPC provide windows for rights
violations against the smaller producers, by the bigger manufacturers and
corporations, when the IPC prevents the smaller producers from making similar
products?
4. Lastly, is the Philippines as a 3rd world country, ready for such
a law that will provide total protection of Intellectual Property Rights, and if so, will
such law benefit the country, especially the less fortunate members of our society?
 CHASING DOWNLOADS: DETERMINING IDENTITIES OF JOHN DOE COPYRIGHT
INFRINGEMENT THROUGH THE DISCOVERY POWERS OF THE COURT

Concepcion, Anthony Chadd R. (2010)

ABSTRACT:

The implementation of copyright laws has always been a fertile for a for litigation,
and today's communication technologies have proven to be its most fierce challenge yet. The
Internet, its scope and reach, coupled with the uptake of unrestricted media distribution
online and its inherent characteristic of user anonymity, has long sparked a sour note with
copyright owners, particularly in the music industry, who continuously fight what seems to
be a losing skirmish. Copyright owners particularly in the United States have had some legal
victories of late, attacking the distribution channels making the piracy possible, but the
victories are short lived, there being always an emerging alternative channel of data
distribution. Today, multiple options are available for peer-to-peer ("P2P") data distribution,
each one presenting different degrees of what may be regarded as technical sophistication,
effectively dodging the legal weaknesses of its predecessors, and in such a manner as to
"overtake" the ambit of laws. It seems therefore that technology is always steps ahead.
To protect their rights and the music industry from what they project to be substantial
loss of business from piracy, music copyright owners in the U.S. have since changed tactics.
Likewise using emerging network technology, copyright owners are able to determine the
channels, and ultimately the machines, transmitting and receiving infringing traffic. The
information, though technically complete to mount an infringement case, is legally
unsubstantiated there being no connection between network traffic and device to an actual
person sought to be made liable. To remedy such legal deficiency, the copyright owners file
"John Doe" copyright infringement cases in court, coupled with a subpoena to the Internet
service provider concerned, compelling production of subscriber information based on
network traffic. Essentially, the result is a circumstantial matching of a cause of action on
one hand, and a liable person on another, thereby unmasking persons from behind the device.
Internet anonymity in the U.S. has apparently come to this legal end.

Considering the use of such legal strategy employed abroad, this work seeks to
examine the viability of such a legal stance within Philippine jurisdiction, and how our
present set of laws would receive such strategy by comparing our current set of copyright
laws and procedural rules with that of the United States, and ultimately test its application
in the Philippines.
 THE PHILIPPINES AND INTERNATIONAL REGISTRATION OF TRADEMARKS: AN
EXAMINATION OF PHILIPPINE ACCESSION TO THE MADRID PROTOCOL

Alpheus D. Macalalad (2010)

ABSTRACT:

Entities use trademarks in order to associate their goods with the goodwill and quality
that their products offer. Trademarks are registered in order to prohibit other entities from
using the trademarks without the consent of the registered trademark owner, thus
preventing non-owners from abusing the goodwill of the trademark owner by defrauding the
consumers.

Gaining the exclusive use of a certain trademark generally requires registration.

Trademark registration traditionally follows the law of the countries in which it will be used.
Thus, entities who wish to use their trademark in several countries are obliged to register
the trademark in each country where such trademark will be used. This process is
complicated and expensive.
In order to simplify the registration process, the Madrid Protocol was brought into
force. Using the International System of Trademark registration, trademarks registered in a
Madrid Protocol member-state would also be considered as registered in other member-
states, thereby cutting procedural steps and expenses.

Currently, 81 states have acceded to the Madrid Protocol, not including the
Philippines. However, following the trend in international Trademark Law, the Philippines
is pressured to follow. This Thesis explores perceived issues under a constitutional backdrop,
the probable effects in the Philippine IP environment, and the experiences of other countries
who have acceded to the Madrid Protocol. Recommendations on the changes to the
Intellectual Property Code are suggested.

Given the current status of Philippine Trademark Law, the Philippines definitely has
the capacity to accede. Accession will surely bring about changes in the process of registration
of marks. These changes may bring about the promised benefits under the Madrid Protocol,
but may also have some consequences which the Philippines should prepare for.
 APPLES AND ORANGES: A COMPARATIVE STUDY OF PLAGIARISM IN THE
ACADEME, IN THE JUDICIARY, AND IN THE SCIENCES

Maria Yvet Caringal-De Castro (2011)

ABSTRACT:

Plagiarism is an offense that is often associated with lying, cheating, or intellectual

theft. Despite this association with intentional offenses, there is debate over whether or not
intent is a proper element of the offense. Plagiarism is an ethical violation that is governed
by institutional standards; but is often interchangeably used, and confused with Copyright
Infringement. In the absence of a uniform definition and left to a regime of self-regulation,
various applications have surfaced in the academe, the judiciary, and the field of scientific
research that have led to public dissatisfaction over the divergence in its application.

Against this landscape, it is suggested that an industry-wide definition of plagiarism

consistent with Moral Rights be adopted in each of the three fields in order to achieve the
following: First, a leveling of public expectations; second, greater clarity and consistency in
upholding Moral Rights consistent with the Berne Convention for the Protection of Literary
and Artistic Works, our own Constitution, Civil Code, and Copyright Law; and third, a more
even playing field for persons similarly situated.

Within the objective phase, the (1) act of using or appropriating, and (2) the subject
matter of ideas or expressions belonging to others without consent from the owner, and
without attribution is sufficient to constitute plagiarism. This should be the general rule
applicable to the academe, the judiciary in the performance of non-judicial functions, and the
sciences consistent with the observance and protection of Moral Rights. In the performance
of judicial functions, malice or bad faith becomes an additional element for plagiarism to
apply.
Following this, a subjective phase is suggested considering the following: (a) amount
and pervasiveness of the appropriation; (b) the manifest intent of the actor as determined
from overt acts and surrounding circumstances; and (c) the frequency of commission.
Thereafter, a graduated scheme of disciplinary actions and penalties that are clearly
identified, communicated, and enforced in order to: (1) Ensure proportionality of punishment
and offense; (2) Encourage reformation and discourage repetition; and (3) communicate a
willingness and readiness to guard against abuse.

Plagiarism being context-specific, it is difficult, if not impractical to legislate a statute

uniformly applicable to all fields. Instead, it is better to strengthen self-regulatory
mechanisms in the academe, the judiciary, and the sciences. Specific to the judiciary, it is
recommended that Cannon 22 of the Code of Professional Responsibility governing the bench
and the bar be amended to reflect the norm of attribution in legal writing consistent with
Moral Rights principles. In all instances, improperly acknowledged work should be corrected.
 BRIDGING THE INTERSTICE IN THE ADVENT OF TECHNOLOGICAL
DEVELOPMENTS: THE LINKAGE OF SUBSTANTIAL HUMAN INTERVENTION,
CREATIVITY, ORIGINALITY, AND THE NATURE OF COMPUTER PROGRAM TO
COMPUTER-GENERATED WORKS IN DELINEATING ITS APPLICABILITY TO
COPYRIGHT AND THE FAIR USE DOCTRINE

James Michael A. Gregorio (2011)

ABSTRACT:

The 1987 Philippine Constitution recognizes the protection of intellectual property

rights by providing that the State shall protect and secure the exclusive rights of scientists,
inventors, artists, and other gifted citizens to the intellectual property and creations,
particularly when beneficial to the people, for such period as may be provided by law.

Intellectual property laws on copyright have always upheld the rights of authors and
public interest. The primary purpose is to fc3ter creation and dissemination of intellectual
works for the public welfare. Secondarily, it gives authors the reward due to them for their
contribution to society. A computer program is protected under the copyright laws. However,
due to advancements in technology, the copyright of a work "created" by a computer is not
explicitly covered by our present IP Code and existing laws that protect intellectual property
rights.

The point of contention is whether the "work of authorship" as provided in the

Constitution and statutes allows the protection of intellectual property rights of copyright in
computer-generated works where there is a supposed lack of human authorship. This thesis
aims to fill in the supposed lack of human authorship by the legal right of the person who
employs the computer program to be rewarded for the contribution to society for fostering the
creation and intellectual work.
The reluctance to subject computer-generated works to copyright is a result of the
non-recognition of the human authorship of the resulting works. However, past judicial
decisions have supported the human authorship of computer-generated works by the user
who created a work by his own mental conception, which was not merely trivial and could be
regarded as his own. As long as the user employs creativity and the work derived is
substantial and original, the expression would be subject to copyright.

Fair use has historically served as a flexible and adaptable mechanism for balancing
the interests of copyright owners, their competitors or potential competitors, and the public
to fulfill the larger purposes of copyright law which have traditionally been understood to be
promoting the production and dissemination of knowledge. Corollary to the applicability of
copyright to computer-generated works, taking into consideration the four-fold criteria for
determining fair use, the proponent of this thesis suggests that the doctrine of fair use applies
to this type of intellectual creation.
 CULTURAL INTEGRITY UNDER THE IPRA AS A DEFENSE AGAINST TRADEMARK
REGISTRATION OF TRIBAL NAMES, MARKS, AND SYMBOLS

Natassia Fortea (2011)

ABSTRACT:

The indigenous peoples of the Philippines have always possessed distinctive

characteristics which have set them apart from the rest of society, which they have managed
to preserve through the years. It is a State policy and constitutional mandate that indigenous
peoples should be allowed to freely exercise and preserve their cultures and traditions, with
the aid of the State. Among the rights granted to the indigenous peoples are cultural integrity
and cultural diversity or the right to preserve, develop, and protect indigenous cultural
heritage for the past, present, and future generations.

Traditional knowledge plays an important role in the lives of the indigenous peoples.
This includes works of art, literary works, oral teachings, songs, dances, indigenous
knowledge, and indigenous processes. Indigenous names, marks and symbols also fall under
traditional knowledge. As part of their cultural heritage, the indigenous peoples possess
collective intellectual property rights over indigenous names, marks, and symbols. Recently,
however, indigenous names, marks, and symbols are being used by private individuals and
multinationals for commercial purposes. Unfortunately for the indigenous peoples, the
present laws on intellectual property rights in the Philippines do not cover the realm of
indigenous community rights. How, then, can they save their cultural heritage from
becoming commercialized which may eventually lead to a slow death of their culture?

The protection of indigenous intellectual property is premised on the idea of cultural

survival while the protection that the present intellectual property laws covers extends
mostly to commercial purposes. Thus, the two have conflicting ideologies.
An amendment to the current laws on trademark under the Intellectual Property
Code via a sui generis legislation may just fill the gap between the two conflicting ideologies:
a set of intellectual property laws with a more humanitarian approach. In addition, a clear
set of guidelines may just save an entire community from experiencing cultural death.
IP RIGHTS VS. RIGHT TO DEVELOPMENT: RESOLVING THE CONFLICT BETWEEN
THE IP RIGHTS AND THE TRANSFER OF ENVIRONMENTALLY SOUND
TECHNOLOGIES TO THE PHILIPPINES IN RESPONSE TO THE GLOBAL
PHENOMENON OF CLIMATE CHANGE

Clarissa Bettina Filamor Faylona (2011)

ABSTRACT:

Super typhoon Ondoy and hurricane Katrina are only two examples of the
catastrophic natural disasters brought about by the effects of climate change. In their wake,
they have instilled in the world, a sense of urgency to mitigate future "climate change
modified" calamities. The effects of climate change are so far reaching that it defies
geographic and temporal boundaries. Even those countries that barely emit greenhouse gases
are very much affected by the changes to the environment. Thus, it is essential that the
international community cooperate if the world is to be successful in avoiding any greater
devastating natural events.

There, however, seems to be an inverse relationship between development and

environmental protection. Through the last century, the line that differentiated developed
and developing countries has mainly been the level of industrialization. With
industrialization comes an increase in the pollution output of a country, not least of which
are greenhouse gases. While developing countries have the right to development, the recent
focus on the environment has shown development through industrialization to be
impracticable or at least unsustainable. The Philippines, being a country most in danger of
the effects of climate change due to its geography, must pursue sustainable development.
One potential solution to mitigate and adapt to the effects of climate change and, at the same
time, to allow a country to sustainably develop is the transfer of environmentally sound
technologies as recognized by States under the United Nations Framework Convention on
Climate Change, the Kyoto Protocol and the Trade-Related Aspects of Intellectual Property
Rights Agreement.
Environmentally sound technologies are green alternatives to the technologies that
give rise to a nation's development. Though it is a valid solution to the problem of
development through green means, the primary problem is the access to these technologies.
Few developing countries are willing to allocate their scarce resources when cheaper, though
dirtier, alternatives are available. On the other hand, developed countries, who are often the
owners of the intellectual property rights over environmentally sound technologies, are
generally unwilling to transfer technologies at a low cost.
This paper will analyze whether a country's right to sustainably develop is limited by
intellectual property rights as it hinders the transfer of environmentally sound technologies
to developing countries. In the end, it will provide a possible solution that the Philippines can
adopt in order to facilitate the transfer of environmentally sound technologies in the exercise
of its right to sustainably develop.
 LEGAL DILEMMAS ON IP RIGHTS IN THE BIOMEDICAL INDUSTRY THE
PATENTABILITY OF STEM CELLS AND DERIVATIVE PRODUCTS

Rene Sy Grapilon, MD (2011)

ABSTRACT:

Stem cells are the basic building blocks of our body: the most basic cell from which our
bodies are made which is found in all multi-cellular organisms. Stem cells retain the ability
to renew themselves through mitotic cell division and can differentiate into a diverse range
of specialized cell types like muscle, nerve, organs, bone, and even blood. They are formed at
conception and eventually become specialized to become all the different tissues of the body.

Stem Cell technology is a fairly new concept in the Philippine arena and is just
beginning to draw some attention. Currently, there are NO laws specifically designed to deal
with stem cell research in the Philippines. In fact, some institutions in the United States
want to build relationships with their counterparts in the Philippines for clinical trials since
there are no specific laws concerning this new technology in our country. As a result, they
can easily do more research on the topic without having the burden of legal issues arising
therewith.

The main purpose of this study is to dissect the legal dilemmas and intricacies on the
Intellectual Property Rights of the researcher or the owner of the patent in devising either a
product, or derivative product of stem cell technology. The theory is to provide the Philippines
with possible legal measures it needs to undertake in securing the rights of researchers or
owners of methods, products, or derivative products in obtaining a patent in the Philippines
(if ever the they are indeed rightfully patentable). Likewise, the dissertation aims to connect
Philippine Patent Laws with its international implications.

he paper will begin with an Introduction to give a historical background on Stem Cell
Technology proceeding to the current trends of Stem Cell Research in the Philippines and
the business involved in Biomedical Engineering. It will then discuss the legal and ethical
issues in the world and in the country. Then, the composition will explain the concept of
obtaining a Patent for Stem Cells in the Philippines. Subsequently, the thesis will talk about
International Patent Laws in relation to Philippine Patent Laws and the process of obtaining
a legitimate patent that will protect the researcher or the owner in devising either a method,
product, or derivative product of stem cell technology. After that, the paper will revolve on
intricacies of obtaining a patent for genetically similar products and delineating the possible
legal boundaries that arise from this; followed by discussing the legal framework on how to
protect the Filipino Patent from duplication by a foreign counterpart. Towards the end,
composition will make conclusions and recommendations in the promotion of laws and
statues regarding biomedical rights of the patent holder in the Philippines, in the protection
of the work against local or foreign infringements, as well as Executive Treaties/International
Treaties that can be done to further guard the researcher or the owner of the patent.
 PROTECTION OF THE FICTIONAL CHARACTER WHEN FICTION BECOMES
REALITY – SEPARATE COPYRIGHTABILITY OF THE FICTIONAL CHARACTER: A
PROPOSAL TO AMEND THE IP CODE IN ORDER TO PROTECT THE FICTIONAL
CHARACTER FROM REALITY

John Alexander Abad Gregorio

ABSTRACT:

Fictional characters engage in an important position in the 21st century culture, with
a growing and favorable recognition of the commercial value attaching to that fictional
character. Businesses can make millions of pesos by using the fictional characters on shirts,
mugs and other merchandise to further their business. It is the responsibility of the law to
provide protection to the owner of the fictional character, preventing abuse and creating
channels to neutralize the injustice that may have already arisen in the unauthorized use of
the fictional character in merchandising.
In our jurisdiction, there is no specific law governing merchandising of a character. It
is through the use of the current laws in Intellectual Property that one must use to protect
themselves from the unauthorized usage of their property for business and commerce. Our
Intellectual Property law should be further developed to extend to an individual his right
over his property in connection with the promotion or sale of goods or services.

A fictional character has some protection to a certain extent in Copyright, Trademark

and Unfair Competition, but it is not enough to adequately address the situation where the
character is used in merchandise. There is a need to protect the economic and artistic
interests of the creator of the fictional character. It is in Copyright Law where the need to
amend arises. 1 will dive deeper into the United States jurisdiction and search for an answer.
It is in the United States where our Intellectual Property Laws were greatly influenced and
it is also in the United States where the birth of protecting the fictional character took place.
My quest will begin there but the journey will end in Philippine law for protection will arise
for the fictional character.

I will propose that the law on Copyright must be amended to enhance the protection
of the fictional character once the character is used for various merchandises. For this to
happen, I will do several amendments and additions in the Intellectual Property Code, more
specifically in the copyright law. As a result, the owner will have an exclusive right to carry
out, authorize or prevent the merchandising of characters. Therefore, the fictional character
will be protected.
 SECURE TESTS IN THE PHILIPPINES: DETERMINING THE EXTENT OF
COPYRIGHTABILITY, INDICATORS OF COPYRIGHT INFRINGEMENT, AND THE
PERMISSIBILITY OF THE FAIR USE DOCTRINE

Han Christian V. Docena

ABSTRACT:
The copyrightability of secure tests is well established in U.S. jurisprudence.
American courts have consistently granted copyright protection to secure tests and held
persons liable for copyright infringement. They have also resolved the application of the
doctrine of fair use vis-à-vis the peculiar nature of secure tests.

This is not the case in the Philippines. The Supreme Court has yet to decide a
landmark case involving the copyrightability of secure tests, much less copyright
infringement in relation to the fair use defense and limitations on copyright. Secure tests are
also not expressly mentioned in the enumeration of literary and artistic works in R.A. 8293.
These inadequacies received unfavorable international attention in 2010 when a U.S.-based
licensing entity, acting in desperation, banned Filipino physical therapy graduates from
taking their secure test. The licensing entity had tried to enforce its copyright in Philippine
courts, but to no avail.

As a party to international agreements and treaties on intellectual property, the

Philippine government is obliged to address this issue lest it be held liable for breach. It is
bound to protect the copyright not only of its nationals, but also of nationals of other states.

The thesis will analyze and determine the copyrightability of secure tests under the
idea/expression dichotomy, fact/expression dichotomy and the merger doctrine. The
indicators of copyright infringement of secure tests will also be explored. Finally, the thesis
will also discuss whether any fair use of secure tests should be allowed considering the
confidential nature of secure tests.
 CLICK HAPPY: IN DEFENSE OF THE INDIVIDUAL USERS FOR ACTS OF P2P
SHARING OF MP3S ONLINE

Arc Aldrin N. Tolentino (2012)

ABSTRACT:

Peer-to-peer file sharing over the Internet is a commonly used system today that has
made the transmission of information and communication online amongst individual users
more convenient and effective. The system allows individual users to transfer files with ease
from their personal databases to other users, to which the receiver has an option to either
utilize the digital material for personal use or transfer it. But with the complexity of
technology and the lack of regulation towards its use, peer-to-peer sharing programs have
been utilized by users illegally to commit copyright infringement. As a result of these illicit
acts, several Internet Service Providers or ISPs have been held liable for acts of infringement.

The main defense used by ISPs is that it is erroneous for the Courts to hold them
liable because the proximate cause of copyright infringement are the individual users who
download and share. Although, the Courts have decided that individual users cannot be held
liable because it is impractical to do so due to their sheer number and ISPs are said to have
the initial responsibility over the protection of copyright work and its distribution over the
Internet.

With various States being concerned in the protection of intellectual property rights,
some have taken action by promulgating laws that impose civil or criminally liability against
individual users for peer-to-peer sharing as seen in Digital Economy Act of 2010 of United
Kingdom and the Hadopi Law of France. Following this international trend, the Philippines
has also taken action by proposing Senate Bill No. 880 and H.B. No. 3841, which amends RA.
8293 or the Intellectual Property Code of the Philippines, in order to make individual users
directly liable for acts of infringement.

With most of us being included in the group of "individual users" who may be subjected
to possible criminal and civil liability, the rights of individual users to the fair use of peer-to-
peer sharing and its products, specifically music recordings or
MP3s, are placed under scrutiny by law. With this is mind, we are faced with the questions
whether or not it is just to hold every individual criminally or civilly liable for peer-to-peer
sharing even if it involves fair use and good faith. Also, whether or not the proposed
amendments are sufficient to the currents issues on copyright infringement without
impairing the freedom and rights of individual users.

This study reveals the weakness of Philippine law in holding individual users liable
for copyright infringement. It also justifies why it is unreasonable to impose civil and criminal
liability against individual users for their peer-to-peer sharing activities, and why the
defenses of individual based on fair use, the substantial non-infringing use doctrine, and
economic reasons are valid.
 COMBATING BIOPIRACY: HARMONIZING THE CONVENTION OF BIODIVERSITY
AND THE TRIPS IN RELATION TO THE PROTECTION OF INDIGENOUS
TRADITIONAL KNOWLEDGE AND GENETIC RESOURCES

Marie Yasmin M. Sanchez (2012)

ABSTRACT:

Biopiracy or the theft of traditional knowledge and genetic resources without just
compensation is a global environmental issue international agreements — the Convention
on Biological Diversity (CBD) and the World Trade Organization (WM) Treaty on Trade-
Related Aspects of Intellectual Property Rights (TRIPS). The CBD establishes sovereign
national rights over biological resources and commits member countries to conserve them,
develop them for sustainability, and share the benefits resulting from their use. The TRIPS,
on the other hand, aims to promote adequate and effective protection of intellectual property
rights IPRs to reduce impediments to international trade.

However, there are perceived inconsistencies between the two laws, which have been
the subject of international debate. While the CBD promotes the right of indigenous or local
communities to prohibit IPRs on genetic resources, TRIPS requires the provision of 'PRY on
these resources. Moreover, the CBD provides that access to genetic resources shall be subject
to prior informed consent from these communities, just compensation and equitable benefit
sharing. In TRIPS, there are no such provisions, leading some developing countries,
communities and authors to believe that TRIPS facilitates biopiracy. Despite this, many
countries, including the Philippines, are signatories to both treaties.

Generally, when a conflict exists between two treaties dealing with the same subject
matter, the applicable rule, as provided for by Article 30 of the Vienna Convention on the
Law of Treaties, is that the latter law prevails over the first. Applying this, TRIPS will prevail
since it came into force after the CBD. The problem, however, is that the subject matter of
the CBD and TRIPS basically differ. CBD deals with the protection of biodiversity, while
TRIPS deals with the protection of IPRs. States should thus endeavor to simultaneously
implement and harmonize both treaties to fully ratify them and provide greater protection
against biopiracy.

One way to do this is to allow communities the right to patent their traditional
knowledge and genetic resources, in line with the current IPR system.

However, a deeper analysis of the CBD, TRIPS and other related laws will show that
traditional knowledge and genetic resources do not fit into the current IPR system. For
instance, inventions protected by patent law must be new, non-obvious and useful.
Indigenous knowledge may be an invention, but because it is passed down from one
generation to another, it may not meet the level of novelty needed for patent protection
Moreover, patents are limited in duration and are vested on "inventors." On the other hand,
traditional knowledge is normally not attributed to a single "inventor" but is communally
held. Finally, maintaining and enforcing a patent can be quite expensive and burdensome for
indigenous communities.
 Thus, the better solution would be to identify a sui generis system of IPRs that will
specifically cater to the subject matter. This can be done on the international level through
an amendment of the TRIPS, and on the national level, through sui generis laws. This way,
the TRIPS and CBD can be harmonized and consequently, greater protection can be afforded
to traditional knowledge and genetic resources in order to prevent biopiracy
 DIGITAL ATTACHMENT RESOLVING THE ISSUE OF PROPERTY RIGHTS OVER A
DOMAIN NAME UNDER PHILIPPINE LAW IN RELATION TO THE ISSUE OF
EXECUTION

Joanna Pauline C. Pimentel (2012)

ABSTRACT:

Human society not only moves in the physical world with clear boundaries and
territorial limitations but human activities extend beyond the physical. Technological
advancements in the recent years have forced the change in human behavior in relation to
certain activities and utilities provided by the Internet. Internet users have email accounts,
social networking accounts, blogs and other marketing related- media such as domain names
and online billboards. Although users are engaged in these on a daily basis and publicly claim
exclusive rights over them, the law is not clear on the issue of property rights over them.

Among those mentioned, there is one digital object that has been the subject of
property rights litigation over the past decade, which is the focus of thesis. Domain names
are valuable commodities on the Internet for they have become an important tool in business.
There exists a growing secondary market of domain names, which allows for buying and
selling. The question of property rights has been given different court interpretations.
Foreign jurisprudence introduced different characterizations of what a domain name is in
relation to different purposes. One of which is the issue of whether a domain name is property
that can be attached to satisfy judgment awards.

The Philippine courts have not encountered similar issues but it would not be long for
such to reach the courts here. The aim of this thesis is to examine whether a domain name
constitutes property under the Philippine law and as such, whether it is a kind of property
that can be subject of attachment under the law.
In so doing, this thesis argues that a domain name constitutes property that belongs
to the registrant or the buyer of the domain name and it is a kind of property that can be
subject of attachment for the satisfaction of money judgments.

A domain name is essentially an identifier of an Internet Protocol address of a

computer which makes it easier for users to locate each other on the Internet. Domain names
are registered through the Domain Name system. After registration, the registrant acquires
certain exclusive rights to the use of the domain names. These rights are akin to that of
property rights enjoyed by a property owner under Philippine law. Having the characteristics
of property, and having considerable value, judgment creditors should be able to attach
domain names. However, Philippine law does not adequately address the issue because of
the lack of law and appropriate rules applicable for this kind of object. A domain name is very
unique for it has certain characteristics that are not present in all other intangible things.
As such, appropriate guidelines are necessary to aid the courts in the proper and clear
understanding of the subject matter since it involves adequate technical knowledge.
Furthermore, there is a need to formulate rules to extend the application of attachment laws
to domain names.
 WHEN ART MEETS FUNCTION: WHERE DO YOU DRAW THE LINE? A PROPOSAL
FOR CODIFYING A SEPARABILITY TEST IN WORKS OF APPLIED ART UNDER THE
INTELLECTUAL PROPERTY CODE AND AN ANALYSIS OF THE
COPYRIGHTABILITY OF FASHION DESIGNS

Melissa Asuncion Abogado Ursua (2012)

ABSTRACT:

Copyright aims to "promote the progress of science and the arts." In the realm of the
arts, copyright becomes an incentive for artists to thrive and continue harnessing their
creative impulses; so that in the end creativity will flourish and contribute to the
development of the country.

Art is almost always associated with painters, sculptors, poets, and writers. They give
life to the pure art forms or "works of art," which are indubitably subject to copyright
protection. But there are also instances when an artist creates art and fuses it with function-
-the product is called a "work of applied art " Since function cannot be properly appropriated
through copyright, only the artistic feature in works of applied art is subject to copyright
protection. This is referred to as the "separability doctrine" in copyright law.

A perfect example of the fusion of art and function is seen in an ornately-designed

dress created by a fashion designer. The dress is indeed a "work of applied art " The
separability doctrine is thus applicable to fashion designs, and entitlement to copyright
protection will depend on whether the separability requirement is met. Ultimately, the issue
that should be determined is whether under the present state of our Intellectual Property
Code, a fashion designer can sue manufacturers, or other designers that copy his designs, for
copyright infringement.

As a precursor, there is a necessity to inquire into the nature of the separability

doctrine in works of applied art The application of this doctrine is twofold: physical and
conceptual separability. Physical separability does not present any difficulty because it only
requires "physical" separation which is a straightforward task The complexity lies when
physical separation is impossible and therefore there is a need to resort to "conceptual
separability" of the artistic features of the useful article. A clear-cut application of r-
conceptual separability" remains to be elusive due to conflicting decisions under American
jurisprudence, and the proliferation of different tests and interpretations.

This thesis therefore aims to forestall a similar situation in our jurisdiction through
a proposal to adopt and codify a specific conceptual separability test for works of applied art.
This will guide judges in the application of the requirement on separability. In this endeavor,
there will be an analysis of the different conceptual separability tests, and a consideration of
various factors that will influence the choice of test to adopt in our jurisdiction. This will lead
to a discussion on the copyrightability of fashion designs using the proposed separability test
This study intends to address a gray area in copyright law, with the end goal of putting our
designers and artists at the forefront of copyright protection.
 AMBUSHED GLORY: AMBUSH MARKETING AS A VIOLATION OF IP RIGHTS

Jefferson Wilfredo P. Ferrer (2013)

ABSTRACT:

Fair play is a fundamental principle in sports. In whatever sporting event,

participants are expected to adhere to the unspoken policy of honesty, fair dealings and
respect amongst each other.
In major sporting events, these guiding principles have been given life by some of most
renowned athletes of the world in some of the most memorable moments throughout the
years.

And yet, there are some who while engaging in enterprise or endeavors surrounding
these major sporting events deliberately disregard the basic foundation on they stand. A
notable example would be those who engage in ambush marketing.

Ambush marketing has become a much deliberated and reported concern in the global
sporting scene. This marketing scheme has caused losses to the organizers and official
sponsors alike of some of the biggest sports events in the world.
Despite the threat that ambush marketing poses to a number of countries, only a few
have been able to set response measures against it. The reason being that, while the general
idea of ambush marketing is undoubtedly contemptible, the acts by which it can be carried
out are for the most part legal.

This paper looks into the nature of ambush marketing making reference to materials
from the different parts of the world. It likewise explores the possibility of applying the
relevant provisions of the Intellectual Property Code as elucidate by jurisprudence from both
the Philippine and foreign court. In the end, the paper suggest guideposts to determine
whether the pertinent laws could be enforced to the case of ambush marketing.
 BENCHMARKING MEASURES TO CURB INTERNET PIRACY: FINDING THE MOST
FEASIBLE ENFORCEMENT MECHANISM TO POLICE THE INTERNET AND STOP
THE TECH SAVVY "PIRATANG PINOY"

Marlita I. Vallestero-Dagsa (2013)

ABSTRACT:

Over the years, the problem of online infringement or Internet piracy has grown
considerably. Reports and studies of various copyright industries have shown the enormous
global impact of online piracy not only in the online businesses but also in the global economy
in general. To this end, many countries have adopted various enforcement mechanisms to
curb Internet piracy like the ``notice and takedown" procedure and the so-called "three-strike
protocol". The Philippines has not been spared with this problem although it has the
necessary legal framework to address it especially with the passage of Republic Act No. 10372
which amended various copyright provisions of the Intellectual Property Code of the
Philippines. Of particular importance is the provision on secondary liability in cases of
copyright infringement. However, even with legal framework in place, there is a need for a
mechanism that is sufficient and effective to deter Internet piracy and thereby ensuring that
the rights of copyright owners are adequately and effectively protected.

This study will present how piracy is committed in the digital and networked
environment. The paper will also discuss briefly the different international legal frameworks
adopted to protect copyright and related rights in the Internet as well as legal framework for
protection of such rights here in the Philippines. The global state of online piracy today and
in particular, in the Philippines will also be presented based on the reports of various
copyright industries and the result of the research of the proponent. This paper will also
present an analysis of the various models adopted by other jurisdictions to combat online
infringement and show that the Philippines is way behind due to lack of effective enforcement
mechanism in place to protect copyright owners in the internet and to address Internet
piracy. After the analysis of the various models, the proponent will recommend the most
feasible enforcement mechanism that could be adopted here in the Philippines bearing in
mind the advantages and the disadvantages of the various systems.
 INTELLECTUAL PROPERTY AND TRADITIONAL KNOWLEDGE: NARROWING THE
PERCEIVED LIMITATIONS IN THE USE OF THE INTELLECTUAL PROPERTY
RIGHTS SYSTEM IN THE ACCESS, BENEFIT-SHARING, AND PROTECTION OF
TRADITIONAL KNOWLEDGE

(2013)

ABSTRACT:

The intellectual property rights (IPR) system protects and secures the exclusive rights
of scientists, inventors, artists, and other gifted citizens to their intellectual property and
creations, particularly when beneficial to the people, for such period as may be provided by
law. On the other hand, the indigenous peoples and indigenous cultural communities are
entitled to the recognition of the full ownership and control and protection of their cultural
and intellectual rights.

In this regard, the IPR system covers the intellectual creations of the indigenous
peoples including their traditional knowledge (TK) or their indigenous knowledge systems
and practices. However, there are perceived limitations and gaps in using the IPR system to
protect TK. The notion of exclusive and individual proprietary rights and the limited period
of protection under the IPR system are considered not consistent to the collective, communal
nature, and intergenerational characteristics of TK The United Nations World Intellectual
Property Organization (WIPO) recognizes these perceived limitations in undertaking text-
based negotiations of an international instrument on IPR and TK

Nonetheless, a deeper understanding of the IPR system and the experiences in other
countries on the protection of TK could narrow these perceived gaps of using the IPR regime
to protect TK. The harmonization of the rules and regulations being implemented by the
relevant government agencies would enable the IPR system to prevent the misappropriation
of TK and to use this system to provide equitable sharing of benefits on the access and use of
TK, including those associated with genetic resources.

The harmonization of the implementing rules and regulations by the various

government agencies neither requires the passage by the Congress of new legislations nor
leads to the amendments of the Intellectual Property Code of the Philippines (IP Code) or the
Indigenous Peoples Rights Act of 1997 (IPRA) which are the main statutes implementing the
IPR system and the protection of TK, respectively. In this regard, this recommendation is not
only more feasible but can immediately be studied and implemented.

The protection of TK also requires international legal standards to ensure the

protection beyond the country's jurisdiction. In this regard, the country's accession to the
Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of
Benefits Arising from their Utilization to the Convention on Biological Diversity would
provide the additional legal and policy framework to enhance the protection of TK associated
with genetic resources. The country's support to the WIPO negotiations to have an
international instrument protecting the TK within the IPR system would also complement
the initiatives to prevent the misappropriation of TK and provide the fair and equitable
sharing of benefits arising from the access and use of TK.
 IT TAKES TWO TO TANGO: DETERMINING THE LIABILITY OF BUYERS OF
PIRATED DISCS UNDER THE AIDING AND ABETTING PROVISION OF THE IP CODE

Gian Carlo E. Miranda (2013)

ABSTRACT

As part of the treaty obligations of the Philippines under the TRIPS Agreement, the
Intellectual Property Code was enacted. This led to the specific guidelines in the protection
of Intellectual Property rights. Despite the existence of this law, the Philippines has
remained as one of the countries with a reputation for being notorious in copyright piracy.
The existing laws impose criminal sanctions against the selling distribution and reproduction
of the pirated goods but the buyers patronizing these products are left without any liability.
In order to significantly reduce the level of piracy in the country, it is the aim of this thesis
to determine the liability of the buyers under the aiding and abetting infringement provision
of the IP Code. The study will take into proper context the existing Philippine and US
jurisprudence in explaining the concept of contributory infringement in relation to aiding and
abetting. The issue of enforcement and practicality will also be included in the discourse and
the constitutional guidelines in light of conducting are and seizure. Lastly, the thesis aims to
comprehend the nature of liability of buyers through an analogy of piracy and theft which
leads to the comparative discussion of fencing and buying pirated discs.
 THE APPLICATION OF COPYRIGHT TO INTERNET MEMES

Miguel Antonio L. Mendoza (2013)

ABSTRACT

In 1976, evolutionary biologist Richard Dawkins invented the term “meme” in his
book, “The Selfish Gene.” The term referred to a new kind of replicator, similar to genes,
which could propagate themselves throughout society by spreading from the mind of one
person to another.

In the years that passed since Dawkins wrote his book, memes have undergone many
developments. The rise of the internet age, in particular, has ushered in aperiod of
unprecedented growth for memes. On the internet, memes are able to proliferate greatly
within short spans of time.

The propensity to multiply has led memes to become an immensely powerful tool to
spread information. They have been used as a means to create, such as when promoting a
brand, campaign, or idea. At the same time, they have also been used as a means to destroy,
such as when harnessed to criticize or ridicule a person or entity. Indeed, the internet has
made the meme an invaluable tool for speech and communication.

However, a danger looms over internet memes. The fundamental characteristics

which accompany memes, such as the arbitrary copying and appropriation of works in order
to create new meme expressions, place them diametrically in opposition to the principles of
copyright law. It thus seems, upon a cursory inspection, that the vast majority of internet
memes could potentially be brought crashing down by a few irate copyright owners, seeking
to make meme contributor’s answerable for arbitrarily appropriating their works.
There is a way out of this conundrum, but it requires the application of a dizzying
array of copyright principles and legal defenses. This application, moreover, requires an in-
depth analysis of each particular expression of an internet meme, as well as the component
elements which expression is made of.

In order to facilitate an organized and legally sound analysis, it is necessary to develop

a step-by-step framework that will help determine the status of each internet meme
expression. By developing such a framework, a tool may be provided by which internet meme
contributors may be able to defend themselves against claims of infringement, and by which
society may add another safeguard to strengthen the right to speech against those who would
seek to suppress it.
 AN OPEN DOOR TO SOFTWARE PATENTS? EXAMINING THE PATENTABILITY OF
COMPUTER IMPLEMENTED INVENTIONS IN THE PHILIPPINES

Jose Justin T. Santos (2014)

ABSTRACT

Time has shown the great economic potential of good computer solutions to myriad of
man’s problems. The strong demand for product and services that employ new and innovative
computer technology has created a large vibrant industry worth billions of dollars.
Intellectual property rights for computer creations have long been made available to protect
investment in this field of industry, so as to incentivize innovation. However, the distinct
characteristics of the computer and software aspects of computer creations mean that the
two are protected under different rights.
On the one hand, hardware components are physical products, for which a patent may
be obtained, provided the invention meets all the requisites of patentability laid down in the
Intellectual Property Code. New Hardware components are properly classified as inventions
since they are products, technical in character. On the other hand, software and computer
programs are not patentable. Under the Intellectual Property Code, computer programs are
specifically included in the enumeration of literary and artistic works protected by copyright.

However, software is not only descriptive, it is also functional. It is meant to be run

on a computer, and once run its functionality will be realized. Software processes
implemented through the use of a computer are now often the only solution to the problems
faced by an increasingly computer dependent society. These solutions can be technical and
innovative, characteristics that usually confer patentability on an invention.

This Thesis seeks to show that despite the provisions of the Intellectual Property
Code, software processes are patentable in the Philippines within the framework of the so-
called computer-implemented inventions.
INNOVATION AND INTELLECTUAL PROPERTY THE LEGALITY OF GENE PATENTS

Golda Margareth D. Argel (2014)

ABSTRACT

Even thought they have been in our families since time immemorial, our genes do not
belong to us. In the United States alone, at least 41 percent of our genes have become the
intellectual properties of corporations. These patents claims contradict an intuitive sense
that our DNA is no less than our heart or lungs.

In the Philippines, to be granted a patent, an invention must meet three requirements

provided in Sec. 21 of the IPC: (1) novelty, which requires that the invention must be new,
(2) industrial applicability, or that it must be useful, and (3) inventive step or that it should
have been obvious at the time the invention was made to a person having ordinary skill in
art to which the subject matter pertains. Also, jurisprudence has long held that products of
nature and laws of nature are not patentable subject matter.
Considering the fact that the patent laws of our country have been initially patterned
after the United States’ laws, the jurisprudence of the latter therefore holds a persuasive
effect in our court’s decisions. In the United States case of Association for Molecular
Pathology v. Myriad Genetics, Myriad Genetics developed a diagnostic kit known as
BRCAnalysis which determines a person’s risk of developing diseases like breast or ovarian
cancer, and the like. Myriad claims to have discovered the exact location of Breast Cancer 1
and Breast Cancer 2, also known as BRCA1 and BRCA2, which are the genes used in the
said kits. Myriad successfully acquired a patent not for the kit but for the genes themselves.
Because of this, Myriad controlled all research and manufactures of kits involving the BRCA
genes since 1995. The United States Supreme Court recently ruled in June 13, 2013 that the
patents were invalid for being naturally occurring DNA, however, it gave Myriad a partial
victory when it ruled that the complimentary DNA or cDNA, can be patented since it is not
occurring in nature.

The thesis talks about the legality in granting patents on genes, whether natural,
modified, or synthetic. The legal issue sought to be answered is whether or not these types of
genes are patentable subject matter as required by the Intellectual Property Code.

Genes cannot be patented under the Philippine law since (1) it fails to satisfy the
statutory requirement that it be novel and non-obvious, and (2) it falls with the law of nature
exception. Separating a gene from its surrounding genetic material is not an act of invention.
Even when removed from the body, they are still products of nature, and their associations
with the diseases are laws of nature. No creation or alteration was made in the DNA therefore
it is obvious to any person skilled in science or genetic engineering.

The cDNA, which is a synthetic type of DNA, is not any different from a plain DNA.
DNA is made up of paired sequences of nucleotides- the exons and introns, The exons are
critical to making a living thing while the introns can be removed and still make a protein.
Essentially, a cDNA is a mere DNA without the introns. In genes used for diagnostic kits,
only the exons matter. The Myriad case therefore makes cDNA like a backdoor to DNA
patents without actually patenting DNA. For being naturally occurring and obvious, patents
should also not be granted for cDNA.

Granting genetic patents would also violate several rights provided in the
Constitution. The Constitution provides that the state recognizes its duty to protect and
promote the health of the people and to promote research and development in the field of
Science and Technology. To allow patents on the genes would violate the rights of researches
and scientists from conducting further improvement and research on medical breakthroughs.
The Constitution also recognizes the vital role of Science and technology in economic
development. The gene patents would also violate the rights of patients and the public in
general, who are prevented from having access to better treatments at a more affordable
coast. The constitution provides that the state has the duty to make health services available
to the public at an affordable cost. Such a monopoly serves to profit one company at the
expense of the public good.

Lastly, it should be noted that the primary purpose of the patent system is to foster
innovation. The government awards the patent holder certain exclusive rights over his
invention in return for sharing information about the invention so that others can improve
or “invent around” it. As an example, when the first cellphone was invented, the inventor
Martin Cooper of Motorola was able to patent it and in return, he was required to publish
information so that other inventors invent alternative devices. Hence the abundance of cell
phone companies we have today. But genes are different from cell phones because they are
not inventions and other researchers cannot invent alternative genes, there is nothing to
invent around. Because this gene is the foundation for future innovations, patenting it can
inhibit advances in medical research.

From the foregoing, my thesis submits that a gene does not rise to the level of an
invention and may not acquire patent protection. Whether or not the patent is for an isolated
natural DNA or merely a cDNA, these are products of nature and neither purification nor
complementary forms of genes would qualify it for patentability.
 LAW FIRM: REGULATION OF LAW FIRM NAMES AND ITS TRADEMARK LAW
IMPLICATIONS

Karla Margarita L. Herrera (2014)

ABSTRACT

The practice of law is a profession and a public trust. It has been governed by a code
of conduct and by core values designed to regulate the action of practitioners and to maintain
the integrity of the profession in the face of external pressures. As a while, the legal
profession in the Philippines has been conservative. Strict regulations are placed in order
prevent abuse and to safeguard the practice of law. The strict rules are a constant reminder
that the practice of law is not just any occupation, but one imbued with public interest
because of its nature and significant rile lawyers play in society. Members of the Bar
recognize that by virtue of such membership, certain private rights are limited. Some of these
limitations are embodied in the Code of Professional Responsibility. One of the many rules
set in place include an absolute prohibition of the retention of a public officer’s name in the
firm name. The rationale for the rule is to prevent the law firm from using his name to attract
legal business and to avoid suspicion of undue influence.

The Code of Professional Responsibility has remained unchanged since the time it was
promulgated. A question that can thus be raised is whether such Code is still reflective of the
changes that has since altered the conduct of the legal profession. Admittedly, principles of
administration of justice and public service is still at the very core of the practice of law. It
is, however, submitted that the traditional ethical view of such practice as a profession and
not a business should be corrected. This thesis seeks to establish that there is trade in the
practice of law and as such certain business principles, including Trademark law principles,
are compatible therewith. The thesis will ultimately make a finding that law firms,
particularly respective firm names, are entitled to be protected as trademarks and/ or trade
names. Given such protection, the provisions regulating the use of such firm names,
specifically the prohibition against retention of a public officer’s name in the firm name, will
revisited to determine whether or not law firms are unduly deprived of their right to be
protected under the Intellectual Property Code thereby exposing the firm to the dangers of
the market which include the possibility of infringement.

The absolute prohibition against the use of the name of a partner who becomes a
public office mates an over-inclusive and universal prohibition that does not accomplish any
real practical result in terms of regulation. It is posited that such absolute prohibition is
disproportionate to the evil sought to be prevented because such evil is merely perceived
which does not stand on any factual or legal basis. Furthermore, not only does the prohibition
put primacy to the interest of lawyers, it also deprives the general public of the information
value of the firm name. In the final analysis, the thesis advocates for an amendment of the
rule whereby law firms are not deprived of their Trademark rights while still adhering to the
principles of administration of justice and public service.
 PATENTABILITY OF ISOLATED BIOLOGICAL SUBSTANCES IN THE PHILIPPINES

Monica G. Bugayong (2014)

ABSTRACT

The State shall protect and secure the exclusive rights of scientists, inventors, artists.
and other gifted citizens to their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by law. (Section 13, Article 14 of
the 1987 Philippine Constitution)

Our patent system is based on a fundamental principle: the government grants a

limited monopoly to inventors and artists to encourage them to create more new and useful
inventions and thereafter to disclose such inventions to the public. Me primary purpose of
the patent system, therefore, is not the reward of the individual inventor but the
advancement of the arts and sciences. Secondly, it promotes disclosures of inventions to
stimulate further innovation and to permit the public to practice the invention once the
patent expires. Hence, the ultimate goal of a patent system is to bring new ideas and
technologies into the public domain through disclosure. Clearly, two interests are at stake
here. On one side is the public who will benefit from new ideas; on the other are the inventors
who must be protected. The law then attempts to strike an ideal balance between the two
competing interests.

Our patent law, as embodied in Republic Act 8293 (Intellectual Property Code of the
Philippines), provides that "any technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially applicable shall be patentable.-
It likewise provides for a list of iron patentable inventions which include discoveries,
scientific theories, mathematical and business methods; computer programs, aesthetic
creations and anything which is contrary to public order or morality.

With the advent of biotechnology, there has been a significant interest as to the
patentability of biological substance, especially those which are merely isolated, in contrast
to their modified counterparts. Like any other field of Invention, these biological substances
such as DNA, proteins, bacteria, cells and tissue cultures are generally considered patentable
and qualify as an invention in most jurisdictions so long as such substances are (1) novel, (2)
involve an inventive step, and (3) are capable of industrial application.

Philippine patent practice and jurisprudence with respect to these biological

substances is relatively new and thus not well-settled and or uniform unlike in other foreign
jurisdictions. Hence, the primary aim of this study is to determine whether isolated (pure)
biological substances are patentable in the Philippines and what are the standards' used by
the intellectual Property Office in assessing as patentability. In order to attain this objective,
the proponent will conduct a patent search of IPO-granted biological patents and analyze
how these patents are treated with regard to patentability of pure (isolated) biological
substances, in contradistinction with those that are modified (genetically or otherwise).
Finally, the proponent shall recommend guidelines or standards in determining the
patentability of biological substances/materials, more particularly those which are isolated
and pure. In doing so, the proponent will study the pertinent laws, guidelines/standards and
jurisprudence relied upon by foreign jurisdictions like the United States and Europe to test
how it applies to our jurisdiction, taking into consideration our current practice in patent law
and existing jurisprudence, if any.
 PATIENTS OVER PATENTS: HARMONIZING THE WTO TRIPS AGREEMENT AND
THE PROVISIONS OF RA 9502 OTHERWISE KNOWN AS THE UNIVERSALLY
ACCESSIBLE CHEAPER AND QUALITY MEDICINES ACT

Dan Abraham G. Guinigundo (2014)

ABSTRACT

THE advent of modern technology has forced public health and patent rights to engage
in a continuous joust for supremacy. The clamor of disease-stricken citizens and drug
manufacturers across all notions has given birth to the' WTO Agreement On Trade Related
Aspects of Intellectual Property, to which the Philippines is u party. The TRIPS Agreement
binds Members to observe minimum standards with respect to intellectual property rights-
while affording them sufficient flexibility in the implementation of the same. Members are
not without restriction however, as they are still bound to respect the paramount clauses of
the Agreement, among which is the non-discrimination clause, which obliges the Philippines
to make patent rights available without discrimination as to the field of technology.
In an effort to restore equilibrium between manufacturers and consumers, the
Philippines amended the Intellectual Property Code by enacting Republic. Act No. 9502,
which takes advantage of the flexibilities provided for in the TRIPS Agreement. R.A. 9502
imposed an additional standard for drugs and medicines only, ostensibly making the
patentability requirement more onerous to satisfy for products falling under such field of
technology. It is in this regard that the measure introduced by R.A. 9502 has raised questions.
as to its potential contravention of the non-discrimination clause.
The global consensus with respect to patentability requirements seems to tip the scale
in favor of denying patent rights when claimed on the basis of miniscule and insignificant
alterations to an existing invention. In the Philippine context, the objectives and principles.
of Republic Act No. 9502 cite public health as the primary rationale behind the adaptation of
the flexibilities under the TRIPS Agreement. However, the impetus of public health must be
balanced with an equal application of such statutory limits across all fields of technology.
Such noble intentions must not be construed as blanket authorities for Congress to enact
measures that are directly repugnant to the State's international responsibilities. A treaty
engagement is not a mere moral obligation hut creates a leg-ally binding obligation on the
parties. By their voluntary act, nations may surrender some aspects of their state power in
exchange for greater benefits under international agreements. Under the universal doctrine
of pacta sunct servanda and as codified by the Vienna Convention on the Law of Treaties, the
Philippines is obliged to comply with its international obligations in good faith and cannot
renege on its duties by mere reason of a prohibition found in domestic law. By amending the
IPC to include an additional standard, R.A. 9502 has in fact committed discrimination per se
against drugs and medicines, as proscribed by the non-discrimination clause of the TRIPS
Agreement.

In arriving at a sound recommendation, the thesis acknowledges that the Section 6

amendment of R.A. 9502 wav intended to curb the oppressive practice of “evergreening" and
is but on attempt to stoke competition to bring down drug prices. However, because the
principle of non-discrimination forms a cornerstone of the international IP system, it would
be a manifest error to ignore the country’s treaty obligations. For this' reason, the thesis
recommends that R..4. 9502 be amended, applying the stricter requirement to all inventions
without discrimination. As opposed to its repeal, expanding the scope of the restriction strikes
a balance between (i) complying with international obligations and (it) fostering a fertile
environment for competition.

With allusion to the old adage: the end does not always justify the means.
 THE STABILIZATION OPTION- FREEZING CURRENT LAW FOR INVESTMENTS IN
THE INCLUSIVE GROWTH OF THE PHILIPPINES

Tristan Matthew T. Delgado (2014)

ABSTRACT

In a republican legal system that is characterized by constant change, can a State simply
guarantee the certainty of its laws? This question naturally hounds the concept of a
stabilization clause, a commitment by the Government to investors that a definite set of laws
governing an investment project shall remain in force throughout its duration, regardless of
any future change thereof. A World Bank recommendation, the stabilization clause stands as
a direct response to every deep pocketed investor's concern for a favorable investment climate
in a host country. Foremost among the factors that attract investors are regulatory certainty
and legal stability. As it basks in its newfound glory as Asia's rising star, the Philippines
seeks to steer investments into its shores and fund projects that will result to an inclusive
economic growth for its people. The stabilization clause therefore beckons as a legal tool to
attract investors. However, its nature and scope require a prudent scrutiny with the critical
lens of the legal eye. While it has thrived in foreign jurisdictions, the stabilization clause
must be weighed against the seemingly protective legal framework governing how business
is done in the country. It must be consistent with the Constitution and must overcome the
limitations set by the inherent powers of government. The stabilization clause is legally valid
if adopted in the Philippines. It is supported by the Constitutionally-enshrined policy of
providing incentives to needed investments to propel the engines of the national economy.
The stabilization clause does not derogate the plenary power of Congress as it may be
characterized like other laws that comprise the government's investment incentives
framework - it stands only as an exception to a general rule. Similarly, this plenary power
cannot be used to impair a vested property right, which, following the ruling in La Bugal
B'Laan v. Ramos, accrues over the benefits of a stabilization clause. This thesis also
distinguishes large-scale, high-risk, and long-term investments which are entitled to a
stabilization clause, from all other investments. It argues that the investments entitled to
the stabilization clause serve not only private concerns but also an overriding public interest
because the by-product of these investments includes an improved infrastructure, a demand
for skilled labor, and an opportunity for technology transfer in favor of Filipinos. These
outcomes are the features of an inclusive economic growth. At the same time, the stabilization
clause shall be limited only to tax, fiscal, and similar laws because these are after all, the
'rock bottom of investor concerns. As long as it does not allow the State to shred its
commitments under international law and its responsibility to uphold social justice, human
rights, and environmental preservation in exchange for a hefty treasury, the stabilization
clause shall firmly stand in the Philippine legal firmament. Lastly, this thesis shows that
Philippine law has long embodied the concept of legal stability in the form of Article 1250 of
the Civil Code. Ultimately then, as it fits well within the bounds of the Philippine legal
system, the stabilization clause proves that the law could be properly used as a tool to achieve
the goal of an inclusive economic growth for the Filipino people.
 WHEN COPYRIGHT AND MASHUPS COLLIDE: A CLAMOUR FOR AN EXPANDED
TRANSFORMATIVE USE DOCTRINE

Leslie Ann M. Pacheco

ABSTRACT

There is a seemingly irreconcilable conflict between the evolving legal concept of intellectual
property rights and society's evolving notions of originality. At the same time that persons
are given increasing levels of legal protection for works with increasing complexity of form,
such complexity brings with it a conceptual blur between the original work of art and its
duplicate. It is precisely because of the vesting dominion over complex creations, like modern
music, that the very notion of property has changed over the years --from ownership of land,
to contractual rights, to intangible personal property, like shares of stock and goodwill, and
finally to rights over "messages” and products of the mind. This transformation in the
foundational legal concept of the intellectual work is at variance with the artistic imperative
to create transformative works. Since artistic transformation necessarily tests the limits of
the meaning of originality, this variance is exemplified by a clash between increasing legal
protection for evolved intellectual creations vis-a-vis the rebellious strain of artistic
transformation.

The phenomenon of mashup music epitomizes this clash. A mashup music is one where
elements- of existing songs IVO sound recordings are transposed into new songs. While
copyright protection for original works of music is intended to incentivize artistic creativity,
bestowing exclusive claims, not only upon the holistic structure of musical notes, but also
upon eclectic combinations and permutations of the song's original elements may he so broad
as to stifle the same artistic creativity that copyright lair' values in the first place. The
tendency of affirming copyright protection over musical integrity from being fragmented and
appropriated into a collage (for dissemination as an independent and distinct intellectual
work in itself) broadens the scope of protection over a vast and unscircumscibable set of
transformation in which the original form of the musical piece is susceptible. Consequently,
it narrows the scope of immunities enjoyed by new artists and those whose all is precisely
characterized by bricolage and eclecticism.

The legality of mashup music the context of copyright law has never bee judicially
pronounced in Philippine jurisdiction, but it is reasonable to expect that the jurisprudential
trend in the United States and the analogous application of the existing legal framework for
intellectual property in the Philippines will retitle, mashup music as an instance of copyright
infringement. We are therefore faced with a policy question which may potentially expand or
restrict the artistic liberty, the one hand, and of exclusive proprietary rights over existing
artistic creations on the other.
 WHEN IS AN ORIGINAL WORK AN ORIGINAL?

Joliza Janelle D. Salgado (2014)

ABSTRACT

Originality is the sine qua non of copyright. This requirement is the bedrock copyright
protection - any author that strives to have their work copyrighted must establish that their
work is original. Therefore. the problem lies with the subjective interpretation originality.
How does one measure originality? What elements should the work have to be considered
original? Is there a method in existence to resolve this predicament? This thesis will
harmonize the diverging views of jurisprudence to produce guidelines and parameters to
assist with this legal issue.
The copyright law of the Philippines has its origin from the United States. The copyright law
of the United States purposely left the definition of originality undefined so that case law will
develop a standard. The Courts in turn have different explanations and requirements for this
essential requirement. Hence, their decisions created this gray area as regards originality.

The threshold of originality us currently set low to encourage “creative output for the
benefit of the public.” In other words, the ultimate goal is for the benefit of the public welfare
and the reward for the author only comes second. This begs the question- if an author does
not have motivation to create more work due to the lack of exclusive incentives and protection
derived from the law, isn’t that detrimental to the progress of the public as well? The
proponent is of the position that the law changes over time. In order to promote progress, the
law must realize that to protect the public also entails protecting the author.

New developments in technology now make it easy to copy a previously copyrighted

work or to appropriate an element of the public domain as one’s own./ The low threshold of
copyright protection should not be allowed to prejudice the rights of authors to justify the
public’s benefit to utilize a work. This thesis will endeavor to strike a balance between these
two opposing rights by creating guidelines and parameters to determine the fundamental
requirement of originality.
 A FAST CHANGING WORLD NEEDS A PROACTIVE LAW: EXPANDING THE
LIMITATION IN OUR COPYRIGHT LAW TO ADDRESS THE PROBLEM OF ORPHAN
WORKS

Ruth Kristine A. San Pedro (2015)

Abstract
The creation of the internet signaled tile advent of the digital age. Information
technology has empowered people to do what used to be impossible and has managed to cut
across borders, thus creating a "Global Village" where physical boundary is no longer a limit.
Coupled with the reality of rapid technological advancement, the world is shifting to a digital
age sooner than later. This shift brought about drastic change in the way authors express
their original work and in the public's expectation as to how these works should be made
available to them and be used by them.
It has become a common practice for people to utilize and share documents,
photographs, audio files, and other copyrighted work they find on the internet, more so if the
works are no longer commercially available, thinking that everything online is free for all
and can be used as they please. Individuals and institutions alike, in their quest for a digital
world, at times, encroach upon the private rights of authors when they convert works into
digital form without obtaining permission. This is precisely where the problem of orphan
work comes in. The term may be unfamiliar, but the concept is definitely familiar. Most
people have encountered orphan works in their day-to-day lives. Orphan works are
copyrighted works whose owner cannot be identified or located. Situations involving this
class of work are growing now more than ever because of the elimination of formalities such
as registration and the extension of term of protection afforded to copyright holders. These
mandatory provisions are in response to growing cases of infringement, but the reactive
approach in dealing with copyright issues created other problems in the process. Users are
left with the daunting task of finding the missing owner, which undoubtedly would require
time, effort, and resources, without any guarantee of positive results. On the other hand, use
without the necessary permission would entail risk of serious criminal and civil sanctions.
Undesirable conditions involved with the use of orphan works serve as an undeniable
deterrent to any prospective user who would rather do away with the use of any works
possibly falling within this category. This results in undue curtailment of the main purpose
of copyright, which is to benefit society through the progress of science and useful arts, as it
hamstrings prospective users and allows orphan works to remain in a state of limbo with no
one to benefit.

In the Philippines, the problem of orphan works is already brewing. As more and more
Filipinos become known in the field of arts. production of literary and artistic works will
surge, and the demand to exploit pre-existing works will likewise increase. The Intellectual
Property Office of the Philippines has come across concerns involving orphan works, but as
of today the issue is still being discussed internally. Although the law provides certain
defenses to infringement for uses of copyrighted work, it proved to be insubstantial in solving
the orphan works problem. This thesis therefore proposes to rectify the situation through an
amendment of the Intellectual Property Code by providing a limitation that would specifically
deal with the problem of orphan works. Providing a clear definition of orphan works and
establishing guidelines in determining the class of work that will fall within its scope will
serve the purpose of copyright by ensuring that these works remain beneficial, both to the
owner and to society. In the end, this will invariably result to the general welfare as rights
and interests of private authors and the public are balanced and protected.
 EAGLE'S EYES: DIGITAL MAPPING SERVICE AND ITS LEGAL IMPLICATIONS

Aliza P. Giltendez (2015)

ABSTRACT

Technology... is a queer thing. It brings you great gifts with one hand, and it stabs you in
the back with the other.

- C.P. Snow, New York Times (March 15,1971)

Whichever direction you look at, everything you see is a creation of great scientific
minds, called technology. The entire world is apparently too preoccupied with the growth of
technology. Over time, it has developed into something more than the usual personal
computers, television sets, and other home appliances. Technology has become more
complicated and multifarious in keeping up with the necessities and demands of mankind.
Now, various products of technology that tend to be helping people to live their lives with
more extravagance surround people.
Technological advancement made it possible for human beings to be present, although
not physically, anywhere one wishes to be. This is made possible by digital mapping services
such as Google Street View, Google Earth, Bing Maps, Streeiside and other similar services
developed by private entities that are now being introduced to and being utilized by the public
in locating areas that they lack knowledge of. With the use of a fingertip, one can virtually
travel the world, no expenses incurred. It must be remembered, however, that like everything
else in this world, technology has its own advantages and disadvantages. Technology
undeniably brought comforts to our daily chores. Despite the benefits it has contributed to
the society, there remain questions as regards its legality in so far as it is in violation of one
of the inherent rights of a human being, the right to privacy. Our legal system has, since time
immemorial, acknowledged the freedom of an individual to be free from unreasonable
intrusion. With this, it has been admitted that although not all technologies create legal
implications, the subject of this study, on the contrary, presents more than just one.

Due to globalization, the heightened privacy protection of one's person and properties
is slowly deteriorating. Many people have probably not yet recognized how the extent of
digital services, a product of technology, has affected the rights of individuals and how it
alters the way the society works. The provisions of the Constitution and other statutory
provisions have consistently condemned the violations of the right to privacy. The right to
privacy may not only be invoked against government interferences but may be made
applicable against private persons. The provisions of the New Civil Code, for one, provides
for causes of action that may hold digital mapping providers or DMPs liable.

The extent of the coverage of the services provided by the DMPs through the use of an
extensive technology is boundless. DMPs' services would without question capture and
publish images not intended to be disclosed or to be seen by the public or third parties, as it
is in this study, to the detriment of those whose faces and private properties appearing on
the said images. It is but the inherent and constitutionally based state's obligation to protect
the citizenry and its properties from unwarranted intrusion. Thus, the government can
impose boundaries and sanctions in the exercise of its police power.
 MY FAIR COPY: BALANCING IP RIGHTS AND THE RIGHT TO EDUCATION IN
LIGHT OF THE AMENDMENT TO THE FAIR USE LIMITATION ON COPYRIGHT BY
RA 10372

Rosemarie Louise C. Cupin (2015)

ABSTRACT

Copyright involves a precarious balancing of rights and interests. On one hand, the
property rights of the copyright holder and on the other, the equally valuable right of every
person to quality education. Authors and distributors have been granted statutory protection
over their economic rights, recognizing that their works of labor are entitled to compensation.
Students and teachers are likewise entitled to the information contained in such works in
furtherance of their pursuit of a quality education. It boils down to the question of which to
prioritize economics or education.

In the Philippines, this tension is especially felt in our schools. Everyday, students
and teachers alike reproduce copyrighted material without authority, circumventing the
authors' statutorily protected exclusive economic rights. This is not illegal in so far as such
reproduction falls under the parameters of fair use. However, in light of recent legislation,
copying for classroom use has become even more restrictive for students and teachers. The
amendment to the provision on reproduction for classroom use as fair use puts both
consumers and the newly created Bureau of Copyright in a conundrum as to the extent of
allowable copying. What exactly does "limited number of copies- mean?

This seemingly innocuous amendment to the fair use limitation skews the balance in
favor of copyright holders, further broadening their monopoly over their work. This unduly
restrains the right of students to a quality education by adding to the already astronomical
prices of education in the country. Photocopying materials is ubiquitous in the educational
institutions of the Philippines and affords students and teachers alike more affordable access
to educational materials.

This thesis questions the propriety of the amendment brought about by Republic Act
No. 10372 to Section 185 the Intellectual Property Code. Bearing in mind the development
and nature of fair use as a defense for alleged infringers and the realities of the Philippine
educational system, this paper aims to come up with an equitable standard that balances the
rights of authors and publishers, on one hand, and students and teachers, on the other.

There is an undeniable need to balance the oft-conflicting interests of authors and

their readers. Only when this balance is struck can both parties enjoy their rights. It would
be unconscionable to allow one to have monopoly over their work to the detriment of the
other; or one to enrich himself without compensating the other. With the amendment of
Section 185 of the Intellectual Property Code on reproduction of copyrighted materials for
classroom use as fair use, there is need to re-evaluate the State policy on protecting property
rights vis-a-vis its policy on education. This amendment needs to he stricken down for unduly
restraining the students to a quality education and disregarding the principle that property
bears a social function.
 SECONDARY COPYRIGHT INFRINGEMENT IN LIGHT OF THE AMENDMENTS TO
THE IP CODE AS PROVIDED IN SEC 22 OF RA 10372: THE LIABILITIES OF PARTIES
IN A CROWDFUNDING TRANSACTION TO THIRD PERSONS SHOULD THE
CROWDFUNDING PROJECT INFRINGE THE COPYRIGHT OF THE LATTER

Mariel Claire D. Gonzales (2015)

ABSTRACT

The 1987 Constitution expressly provides in Article XI V, Section 13 that the State
shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations, particularly when beneficial to the
people, for such period as may be provided by law. Presently, this State policy has been
strengthened thru the enactment of the Intellectual Property Code of the Philippines (R.A.
8293) and thru the signing of several international conventions on intellectual property
rights, the leading one being The Convention Establishing the World Intellectual Property
Organization.

Still in pursuit of the greatest protection the State can offer to its citizens, the
Legislature recently enacted a law (R.A. 10372) amending certain provisions of our
Intellectual Property Code. A notable provision under such law, and the focus of this study,
is the definition of copyright infringement. Under the present amendment, one may be liable
for copyright infringement thru direct commission, benefiting from the infringing conduct of
another and by inducing the commission or materially contributing to an infringing act. On
the other hand, while the protection of intellectual property has been progressing, novel ways
of breathing life into ideas and transforming them into original works have also risen. One
of which is thru Crowdfunding.

Crowdfunding is a means of supporting the development of a project by donating one's

own finances together with a larger group of people or a "crowd." The question now arises as
to the relationship that is formed between and among the parties in a crowdfunding
transaction with respect to funding potentially infringing works and, consequently, their
liabilities to third-party copyright owners. Foreign jurisprudence proves instructive as
regards secondary liability in the form of either vicarious infringement or contributory
infringement. Consequently, in light of the new definition of copyright infringement under
R.A. 10372, the proponent submits that the secondary liability, if any. of one who supports a
project thru crowdfunding and that of Crowdfunding websites, should be determined to serve
as a precedent for future infringement cases coming under Philippine laws and also as
another pillar to support the State's policy of protecting intellectual property rights.
THE ESTABLISHMENT OF NON-CONVENTIONAL TRADEMARKS IN LIGHT OF THE
ACCESSION BY THE PHILIPPINES TO THE MADRID PROTOCOL

Ken Xavier T. Lukban (2015)

ABSTRACT

Humans are given senses for a reason and that is to be able to perceive and feel
everything that life has to offer. Everyday, we immediately associate a variety of sensations
to specific experiences and objects. As soon as we feel that sensation, we already have an
object in mind. This association is precisely the purpose of trademarks and its registration
and protection is founded upon the association of the product and the sensation. Human
perception was never designed to be limited; therefore, the recognition of trademarks should
not be limited as well.

Intellectual property is the field of law that is most susceptible to the global economy
and global technology development. Currently, there is a rapid exchange of communication
and knowledge which significantly changes the landscape of intellectual property more so of
trademarks. The evolution of the legal field of trademarks globally has provided the
significance of Philippine trademark laws to be competitive with the growth of this field
globally.

Presently, the Intellectual Property Code of the Philippines limits the definition of
trademarks to those only visible. Undoubtedly, we consciously or unconsciously associate
goods and services to our human perception that expands further than visible objects. The
gap in the law is staggering given the definition of trademark in other jurisdictions and the
international agreements that the Philippines is a part of Moreover, the establishment of
non-conventional trademarks is significant and necessary since the accession by the
Philippines to the Madrid Protocol.
The examples of non-conventional trademarks in foreign jurisdictions are voluminous
and the guidelines and safeguards are well developed through decided cases and executive
issuances. The Philippines has also non-conventional trademarks albeit of the visible variety.
This proves the capability of handling the registration and protection of non-conventional
trademarks as long as there are proper rules and regulations governing them.
The expansion of the Philippines' trademark law is not only relevant and significant
but also necessary given the global landscape of the economy and intellectual property law.
Furthermore, the current global landscape of trademark law calls for an immediate
amendment to the Intellectual Property Code of the Philippines in order to be competitive
with the globalized system. In every drastic change, there will always be challenges, however,
the long-term fruits to be harvested shall overshadow these initial challenges.
 A CLASS OF ITS OWN ON: THE NEED FOR SUI GENERIS LEGISLATION
PROTECTING FASHION DESIGNS

Ana Isabel F. Castelo (2016)

ABSTRACT

"Fashion is not something that exists in dresses only. Fashion is in the sky, in the street,
fashion has to do with ideas, the way we live, -what is happening." - Coco Chanel

The fashion design industry is one that relies on continuous innovation and enormous
investments. As seasons pass, styles change. Designers constantly create new designs of their
own, but some may take inspiration from or pay homage to past designs. The popularity of
fashion in society makes it a profitable industry for imitators and counterfeiters to infiltrate,
thus costing the industry billions in losses. Thus, it may be said that the paradox in the
fashion industry is that inspiration allows it to thrive, but imitation is its greatest adversary.
At present, because of the unique nature of fashion designs, they are ineffectively protected.
Fashion designs serve both an aesthetic and functional purpose, just as with other works of
applied art. However, the criteria for protection under the traditional Intellectual Property
regimes do not adequately cover fashion designs. Depending on the standards in particular
jurisdictions, fashion designs may or may not be copyrightable or patentable. Trademark
protection only encompasses the trademark or trade dress, not the designs in themselves. In
the Philippine context, fashion designs may be protected under the Intellectual Property
Code, but such protection is inadequate. These forms of protection do not take into account
the nature of fashion designs, just as is the case with traditional Intellectual Property rights
in general. The proliferation of counterfeits in the Philippines and the advent of globalization
have been challenging for both designers and fashion stores, and the difficulty in obtaining
protection over designs with current Intellectual Property laws make it imperative to
reexamine the rights of fashion designers over their designs. As such, the distinction between
fashion designs and other works that are currently protected under Intellectual Property
laws shows the need for sui generis legislation protecting fashion designs. It is necessary to
give equal protection over fashion designs that is not being afforded them in the way such
other designs are given.
 COPYRIGHT TERM EXTENSION

Enriquito L. Cruz (2016)

ABSTRACT

On January 1, 1998, the United States of America effected the Sonny Bono Copyright
Extension Act, otherwise known as the Mickey Mouse Extension law. The law was effected
due to the pressures of various copyright holders and the change in the terms of protection
given to authors in the European Union. Depending on when the copyright was acquired, the
law extended the rights of ordinary copyright holders from a total of 70 to 95 years. However,
the Sonny Bono Copyright Extension Act was opposed by various sectors and eventually
reached the Federal Supreme Court of the United States. In the case of Eldred v. Ashcroft,
the United States Supreme Court stated that the extension was within the ambit of the
constitution and that the interest of the private copyright owner and public was met by the
said law. The historical term extensions of copyright in the Philippines, United States, and
European Union is not a new concept. The Philippines continues to adjust its copyright law
by increasing or decreasing its term of protection or other factors that affect the term of
protection in other ways. The reason for the increase or decrease in the term of protection is
to find the perfect balance between private and public rights, in order to fulfill the primary
constitutional mandate of copyright which is to benefit the people of Philippines, but such
increase or decrease should also comply with the equal protection clause when valuating
which should be given protection and how long the protection should last.

The general increase in life span of the author and kins, the increase of awareness in the
media and entertainment in the Philippines, and complying with trade agreements are the
primary motivations for increasing term limits. The technological changes throughout the
years and increasing demand and recognition for non-traditional copyright as the same level
as traditional art also merits the increase of terms of non-traditional copyrights to at least
the same level as traditional art as the non-increase would tantamount to relative
unconstitutionality already. While increase awareness of freedom of speech and need for
more outlets by the people is the primary motivation for decreasing the limits. In this thesis,
the copyright extension laws of various countries will be analyzed and put into Philippine
context - specifically as to what provisions in the foreign laws can and cannot be applied. The
number of years of extension, especially in the realm of pictures and audio-visual and public
domain issues will also be delved

upon. The underlying philosophies, history, socio-economic, political, and cultural aspect of
copyright would be revisited to shed light on the basis of Copyright Law. This thesis proposes
the possibility of extending copyright terms without offending the Constitution and will
propose parameters that would balance the Constitutional rights of the people to the public
domain and free speech with the rights of the copyright owners to moral and economic rights,
and the growth of the arts industry.
 GOOGLE BOOKS DECISION: A PIVOTAL CASE ON PHILIPPINE FAIR USE
EXEMPTION TO COPYRIGHT INFRINGEMENT

Roxanne Viel C. Santos (2016)

ABSTRACT

In this age of interconnectivity, the ease with which data, information, and
copyrighted works are accessed, shared, manipulated, and transformed poses an everyday
challenge on our copyright laws. That delicate balance between protecting the moral and
economic rights of copyright owners and promoting exchange of information and ideas had
never been so difficult to achieve than it is now. Indeed, the copyright and fair use dichotomy
has never been so sorely tested, oftentimes depending even on the legal tradition espoused -
the Anglo-American fair use and the Continental Europe droit d'auteur.

Needless to state, the utility, extent, and reach of the fair use doctrine created
controversy in recent years worldwide, one of the most prominent of which relates to a
revolutionary digital card catalog called Google Books. Found as fair use, the Google Books
case resurfaced the need to scrutinize fair use under the lens of the Berne Convention's
Three-Step test.

The validity of Google Books decision in the Philippines, a state party to the Berne
Convention and various international treaty obligations, is at best uncertain. Despite having
similarities in the copyright law, including the fair use provision, we lack clear and adequate
standards on fair use. With recent developments in legislation as guide, it is likely that a
decision favoring restrictive copyright interpretation will be issued because of the need to
combat piracy and strengthen protection of copyright owners. However, the Supreme Court,
in ABS-CBN Corporation v. Gozon, et. al introduced into and acknowledged in our
jurisprudence the expansion of the fair use doctrine to include transformative and meta-use
of copyrighted works without clearly delineating clear and adequate standards. Without
adequate guidelines from the Court in other appropriate cases, and without implementing
rules or official pronouncements (of issuances) from the Bureau of Copyright the apparent
expansion of the fair use defense under the ABS-CBN case signaled the possibility of creating
a murky copyright system which may substantially weaken if not obliterate copyright
protection. In addition, these doctrines seemingly place the Philippines in violation of the
Three-Step Test. The need for a harmonized copyright system that adheres to fair use's
flexibility and international obligations while maintaining an optimal balance between
competing rights of the copyright owners and the public requires delineation of Free Fair Use
and Paid Fair Use, a return to the pre-Republic Act No. 10372 definition of fair use, and
recognition of author's moral rights in all instances. It is, thus, recommended that
amendments be made in the IP Code: 1) allowing multiple copies of copyrighted works of
falling within the ambit of fair use; 2) defining transformative use or met a copyrighted work;
and 3) requiring payment and determining of just compensation in case of transformative
use or meta-use of a copyrighted work for purposes enumerated in Section 185.1 of the IP
Code after mediation of the Bureau of Copyright and Other Related Rights. With these,
perhaps, the ideals of protecting the rights of copyright holders and the public will be
ultimately be achieved.
RECONCILING THE RIGHT TO HEALTH, INTELLECTUAL PROPERTY RIGHTS, AND
INTERNATIONAL TRADE & INVESTMENT OBLIGATIONS IN TOBACCO CONTROL:
A CASE STUDY ON THE AUSTRALIAN PLAIN PACKAGING ACT AND THE
PHILIPPINE GRAPHIC HEALTH WARNINGS LAW

Perpetua Calliope Chua Ngo (2016)

ABSTRACT

The right to health is a protected right enshrined in numerous international instruments.

States, in complying with their obligations, have sought to prevent the spread of the "tobacco
epidemic." Seeking to curb tobacco consumption, Article 11 of the -Framework Convention on
Tobacco Control ("FCTC') requires State Parties to restrict cigarette packaging by adding
vivid graphic health warning signs. Australia's 2011 Plain Packaging Act and the
Philippines' 2014 Graphic Health Warnings Law are laws enacted to protect the right to
health enshrined under their respective treaty obligations.

With European Union Member States emulating Australia's Plain Packaging requirement
and the high mortality rate brought about by tobacco-related diseases, the need to ascertain
the legality of these laws have never been so imperative. In this case, both the Plain
Packaging Act and the Graphic Health Warnings Law do not violate the right to property
and the TRIPS Agreement with regard to intellectual property rights, and trade &
investment obligations, especially in light of the purpose of these laws to mitigate the spread
of the tobacco epidemic by educating current and prospective consumers of the deleterious
effects of tobacco smoke to the life and health of both smokers and innocent bystanders alike.
The only difference in the laws is that the Australian government may face claims of
expropriation, and consequently be in breach of its investment obligations upon its failure to
pay just compensation for its highly restrictive requirements.

In arriving at such conclusion, mere technical requirements of the international trade &
investment law should not deter adjudicatory bodies from harmonizing the seemingly
conflicting obligations and taking into account existing principles of international law
pursuant to Article 31 of the Vienna Convention on the Law of Treaties. Accordingly, changes
have to be made in the interpretation and preparation of trade and investment treaties by
treating tobacco as a sui generis exception.
THE INTERPLAY OF PATENTS AND ANTITRUSTS: WHICH SHALL PREVAIL WHEN
CONFLICT ARISES?

Siegfrid S. Suarez (2016)

ABSTRACT

"If I had asked people what they wanted, they would've said faster horses." -Henry Ford of
Ford Motor Co.

It appears on the surface that antitrust and patent laws are two complementary and
separate laws. Both principles were made to foster economic development. Indeed, on the
surface, it is correct that the two laws play different and distinct roles. The intellectual
property laws were conceptualized in order to foster creativity and to accommodate
businesses. Antitrust laws and principles, on the other hand, present restrictions on business
practices which in effect restrains trade and effective market flow. With the recent passage
of the Philippine Competition Act, it is just a matter of time before conflict arises between
the rights of the patent holders, on the one hand, antitrust laws, i.e., the provisions of the
Philippine Competition Act, on the other. The two principles will hit a crossroad when a
grantee of a patent is forced by the government or a private individual, through antitrust
laws, to share his or her invention, contrary to the exclusive rights given by the patent grant
under Republic Act No. 8293, otherwise known as the "Intellectual Property Code." How then
should our legal system resolve this conflict? As the Philippines seeks to escape the economic
plague that has made the country "The Sickman of Asia", it has taken steps to set forth the
framework for both Intellectual Property Rights and Antitrust. The grant and use of patents
are governed by the Intellectual Property Code. On the other hand, provisions on Antitrust
are found in the recently passed Republic Act No. 10667, otherwise known as the "Philippine
Competition Act". Without the limitations on both antitrust and patents, and their reach
when they conflict with each other, the Courts will not be able to properly adjudicate cases
involving this issue. This thesis aims to provide a more definite mechanism by which to settle
the conflict that may arise in implementing the rights of the patent holder, on the one hand,
and the protective provisions of the Antitrust, on the other, through a proposed legislation to
amend existing laws.

It is the proposition of the author, that, generally, the rights of the patent holder
should prevail and be protected in case of conflict with the provisions on Antitrust. Patents
are recognized as regulated monopolies. Limitations, which can be found in the Intellectual
Property Code, have been in place to ensure the fairness of a patent grant. Based on the study
conducted in other jurisdictions, it appears, however, that though the rights of the patent
holder should prima facie prevail and be protected, the rights of the patent holders will give
way to antitrust provisions in the following instances: a. when there is fraud in obtaining the
patent; b. when a patent holder prevents the emergence of a new technology, process, or
invention; and c. when an infringement suit has been instituted merely to interrupt business
relations of the competitor.
 The thesis could not have come at a better time as the Philippine Competition Act was
enacted into law a few days prior to the submission of this thesis. Such legislation is an
implied recognition that anti competitive acts are on the rise and should be regulated. On the
other hand, the countless technologies in human development would show that people are
only limited by their thoughts. More patents are expected to be filed in the near future in the
search for the next big thing. The increase in occurrences of antitrust and of patent
registrations would both indicate that the arising of conflict between the two in this
jurisdiction is inevitable, and should be addressed beforehand.
 APIS: UNPROTECTED, COPYRIGHTABLE OR PATENTABLE?

Karl Leslie D. So Chan (2017)

ABSTRACT

A long-standing lawsuit between two giants of the software industry has brought the
intellectual property status of Application Programming Interfaces (APIs) into controversy.
APIs are generally defined as a set of routines, protocols and tools for building software and
applications. These have been used by developers for interoperability, simplification, and
standardization in programming. There are three main types of APIs, namely Web Services
API, Source Code API, and Legacy API. The study mainly covers Source Code API, which is
also known as a Library-based or a Class-based API. While the concept of APIs has existed
jOr as long as programming itself, its importance has grown significantly within the past
decade.
In Oracle v. Google (2014), the United States Court of Appeals for the Federal Circuit (CAFC)
had caused confusion to intellectual property law after it held the structure, sequence and
organization of an API as copyrightable. The Supreme Court of the United States (SCOTUS)
has not disturbed the decision as it declined to rule on its appeal by Google. The Copyright
Act and jurisprudence of the United States persuasively influences Intellectual Property law
in the Philippines, especially on innovative and landmark topics not tackled locally. This is
if the law or jurisprudence is found reasonable and in harmony with public policy and other
laws of the adopting jurisdiction. However, this ruling should not be adopted locally.

The ruling has sparked many critiques and debates from professionals in the field of
programming and Intellectual Property due to its use of the phrase "structure, sequence, and
organization" as well as its generalization of the term API. The terminology of "structure,
sequence, and organization" under the Whelan Test has long been abandoned by recent
jurisprudence, due to its overbroad and flawed understanding of a computer program's
method of operation. The use of this broad terminology brings a danger of copyrighting what
should instead be unprotected matter Therefore, the study provides sample guidelines on
filtration of uncopyrighted matter in computer programs using the Altai Test, which will
cover Source Code APIs as an example.

Through the Altai Test, also known as the Abstraction-Filtration-Analysis Test, certain
aspects of a computer program which are not legally protected by copyright are removed
through the Filtration step. In this step, both the merger doctrine and the scenes a faire
doctrine are applied to computer programs to hold certain elements as unprotected matter
(1) f there are only a limited number of ways to implement the same due to efficiency reasons
and () if there are constraints in coding due to external factors such as those inherent in the
software or programs. APIs, which are created to achieve interoperability between these
softwares and programs, may be considered as fair use under § 185.1 of the Intellectual
Properly Code. Thus, the study proposes that objects used for interoperability following the
guidelines of Atari Games v. Nintendo (1992) be filtered out as unprotected matter through
the Filtration step in the Altai Test, an example being Source Code APIs due to its highly
functional nature and use for interoperabilitv.
 BALANCING THE SCALES: ASSESSING COPYRIGHT PROTECTING AND ITS
IMPACT ON PHILIPPINE VOCATIONAL EDUCATION

Elaine S. Mendoza (2017)

ABSTRACT

Education has been an essential tool for development. It covers both formal and
informal education. However, with the current condition of the education and labor sectors
of the Philippines, j here results in a growing need to improve on informal education, that is,
vocational training and skills development. Under Republic Act No. 7796, Technical
Education and Skills Development Authority (TESDA) is the government agency tasked to
provide quality vocational education. Fundamental to providing quality vocational education
is access to quality content. Thus, access to learning materials, such as books and similar
references, is important in order for TESDA to fulfill its statutory mandate.

Unfortunately, TESDA 's access to quality content is limited due to the fact that
copyright laws serve as a barrier to free access of literary and scholarly works. Under
domestic and international law, authors have exclusive rights over their works, allowing
them to prevent anyone from any unauthorized use or reproduction. Nonetheless, it is not
only the function of copyright law to protect authors and reward them for their labor and
creativity; its purpose is also to promote development by encouraging creativity by means of
access to protected works.

Albeit the exclusive rights granted to authors and in support of the public social
function of copyright, there exist limitations and exceptions to copyright protection. These
limitations and exceptions, as evaluated with reference to Philippines' technical and
vocational education and training, however, fail to address the problem of access to quality
content and materials, thereby hampering TESDA's statutory mandate to provide quality
vocational education. On the one hand, those provided under Philippine national law fail to
cover the bases to solve the gap in fulfilling TESDA 's statutory mandate. On the other hand,
under international law, the Appendix to the Berne Convention could have helped the
vocational education sector by means of granting non-transferable licenses. However, the
value and relevance of the Appendix now becomes futile or of no use, as the conditions
contained therein are too complex and no domestic legislation endeavors to put it into effect.
For these reasons, the Proponent proposes the passage of a proposed law to maximize the
faculties and access mechanism provided in the Appendix to the Berne Convention.
Thenceforth, this proposed law can aid in making clear the conditions, bearing in mind the
status and condition of the Philippine technical and vocational education and training sector.
EFFECTIVELY EFFECTIVE: DEFINING EFFECTIVE TECHNOLOGICAL MEASURES
UNDER PHILIPPINE COPYRIGHT LAW

Miguel Franco T. Dimayacyac (2017)

ABSTRACT

The Internet has changed the game. It has made information sharing many times
easier and faster. However, this revolutionary improvement has made copyright
infringement easier. Copyright holders immediately scrambled to protect their work
Fortunately, in 1996, the World Intellectual Property Organization has required its member-
states to provide adequate protection for the technological measures that copyright owners
avail of to protect their work. At first glance, the requirement was a success as most countries
adopted laws granting protection and adequate legal remedies for the technological
measures. However, when enforcement came about, there was an ambiguity on whether a
form of technological measure could be given legal significance and protection as given by
law.
A technological measure is given legal significance if it will be considered an "effective"
one. However, the WIPO Copyright Treaty and the WIPO Performances and Phonograms
Treaty did not define nor explain what "effective" mean. Therefore, it seems that is up to the
domestic legislature of the various WIPO member-states to define the term. In the
Philippines, the Intellectual Property Code, although it grants protection to effective
technological measures, also did not define the term effective." Moreover, the Intellectual
Property Code makes the circumvention of an effective technological measure circumstance
which raises the sanctions to the maximum allowed by law for copyright infringement. Faced
with a serious consequence for violation of such provision therefore, there is a legal necessity
to define the term and set the relevant parameters.

This thesis seeks to define and set the parameters for an effective technological
measure under Philippine Copyright Law. After examination of the concepts and drafting
history of the WIPO Treaties, survey of various implementing legislations in the world's
major legal systems, and court decisions interpreting the relevant provisions of these
implementing legislations, this thesis submits that a technological measure to be considered
effective should only be circumvented by the user knowingly, coupled with specialized
knowledge, tools, or skill, wherever obtained, should directly control or manage access or use
of the relevant part of the work, at the discretion of the copyright owner, and the
unauthorized access or use of the protected work is practically impossible without
circumvention.
 INDIRECT TRADEMARK INFRINGEMENT: EXAMINING THE SECONDARY
LIABILITY OF PHYSICAL INTERMEDIARIES IN THE SUPPLY CHAIN OF
COUNTERFEIT GOODS

Ercles John L. Cuizon (2017)

ABSTRACT

Trademarks play a vital role in the commercial field. Their protection benefits not just the
trademark owner, but also the consuming public. Goodwill for the product or business is
established through marks known for each product or service, which in turn distinguishes
one product from the other. It must be protected against an infringing act like counterfeiting.
However, in the supply chain of goods, persons who commit the infringing acts interact with
physical intermediaries such as suppliers of raw materials, transport operators, and owners
of commercial establishments used in conducting the sale of counterfeits. Expanding the
concept of trademark infringement is necessary because infringing acts are done with the
contribution or aid of other parties who benefit or induce a party to commit intellectual
property violations. This concept provides another avenue for government authorities to
improve efficiency in the enforcement of IP laws. This legal step enables the intermediaries
to guard themselves from the unlawful infringing conducts of their buyers of materials,
clients of services, or tenants, under the risk of sanctions provided by law in case of non-
compliance. The legislative amendment to the IP Code in 2013 through R.A.10372 imposed
secondary liability against indirect infringement of copyright. However, questions arise as to
its non-imposition on trademark infringement, which makes imposition of secondary liability
unavailing for trademark registrants. As a consequence, trademark owners have questioned
in various occasions the rationale behind the law and the non-application of trademark
provisions. IP law practitioners and IP enforcement agencies, noticed that while tenants in
commercial establishments can be made directly liable by law against intellectual property
violations (i. e. conduct raids, search warrants, confiscation and seizure of counterfeit items),
the commercial establishments cannot be made liable for infringements of tenants. As a
result, repealed acts of trademark infringement by tenants take place without the owner of
the commercial establishment being made liable under the IP Law. In addition, other
intermediaries are not also made liable for the infringing acts of another to which they
provide raw materials, transportation, and other services. The common-law doctrines of
contributory and vicarious infringement for landlord liability are recognized in U.S.
jurisdiction where provisions of the Philippine Intellectual Property laws are derived. The
legal step against secondary infringement has been put into legislation through the 2013
amendment of the IP Code but only to copyright infringement. The imposition of secondary
liability also to trademark infringement can be a remarkable fiat in protecting IP rights for
foreign entities and local enterprises, as well as citizen. While secondary liability is already
imposed by law for copyright and patent, trademark registered owners must also be similarly
protected in light of the equal protection clause. The Philippines as one of the signatories to
international agreements concerning intellectual or industrial property rights should adopt
certain doctrines in other jurisdictions. A state duty of protecting intellectual property rights
is not inclusively for the benefit of its citizens and registered owners domiciled in the country,
but it entails an obligation to the international community as well, especially to trademark
owners and entities which are domiciled in other countries that are signatories of
international industrial or intellectual property treaties. In this paper, the proponent seeks
to establish through both domestic and international law, that the amendments to the
copyright provisions in imposing secondary liability on indirect infringement must also be
imposed on trademark provisions. The thesis features a finding that IP rights are similarly
affected by the damages caused by infringement of existing rights, considering relevant
economic and proprietary aspects and the nature of these rights. The study evaluates how
the doctrines operate in foreign jurisdictions, and features their applicability to trademark
provisions in view of the 2013 amendment to copyright, the State's underlying international
obligations, and the vision of establishing comprehensive legal steps to ending counterfeits
in the supply chain.
 LOST IN NEVERLAND: ESTABLISHING LIABILITY FOR THE UNLAWFUL TAKING
OF VIRTUAL COMMODITIES IN ONLINE GAMES

Emmanuel Benito C. Dulay (2017)

ABSTRACT

The online gaming industry is on the rise. The past five years has seen a spike in the revenues
brought in by online games. Competitive games such as Dota 2 and League of Legends are
more popular than ever before. Tournaments are being held al l over the world, pitting the
best teams against one another to bring home heaps of cash. Not only that, but staple games
such as World of Warcraft are still bringing in tons of money. In fact, the Warcraft Universe
released a new expansion last August 2016.

Unfortunately, however, the rise of the online gaming industry is not without its fair share
of drawbacks. Its undeniable popularity has opened another avenue for others to commit
malicious and unlawful acts. In particular, numerous instances have occurred where players
have lost their virtual in-game items to other players who employ fraud, deceit, and other
unlawful techniques to obtain them. This is because some of these in-game items are assigned
a value that can be translated into real-world money. As a result, these items become
attractive targets of unlawful "taking."

Crimes such as robbery and theft contemplate situations where personal items are in the
physical possession or control of one person, and such items are taken with or without force.
Consequently, questions remain as to whether these virtual game items come within the
ambit of provisions of the Revised Penal Code that cover unlawful taking of property.

This thesis seeks to establish whether or not criminal penalties can be meted out to the
unlawful taking of virtual game items. Moreover, this thesis aims to set forth other possible
redresses available to the victim of the unlawful "taking." With this, the Author will argue
that virtual game items should be susceptible to theft or robbery under the Revised Penal
Code provisions. This will be done by discussing the elements of the aforesaid criminal
penalties, and determining the applicability of each to these virtual items.

After a thorough analysis, the Author will conclude that the unlawful taking of virtual
commodities is punishable under the pertinent provisions of the Revised Penal Code on theft
and robbery. In the event that the penal provisions do not apply, liability still besets the
offender by virtue of a tort. While the Author understands the challenges of establishing
liability for the unlawful taking of the virtual items, the Author suggests that the same is
the more practical and equitable course of action given the direction in which modern society
treads forward.
 MY DNA IS YOURS TOO: EXPLORING THE PHILIPPINE PATENT ELIGIBILITY OF
COMPLEMENTARY DNA AS A PRODUCT AND AS PART OF A PROCESS USING THE
OPPOSING US AND AUSTRALIAN STANDARDS AND ESTABLISHING A PHILIPPINE
PATENT GUIDE FOR NUCLEIC ACIDS

Maria Patricia P. Cruz. M.D. (2017)

ABSTRACT

Over the decades, patent applications and issuances around the world have included life
forms and other natural phenomena. One particular interest, which has grown exponentially,
has been the patent eligibility of DNA, including the isolated nucleic acid sequences and
cDNA.

In the United States, the US Supreme Court held that a naturally occurring isolated DNA
segment is a product of nature and mere isolation does not make it patentable. Isolated DNA
lacked the element of creation or alteration and contains the same genetic information as the
one found in the sequence. However, cDNA is patent eligible because it was altered and
therefore not naturally occurring.

In Australia, the Australian High Court decided that isolated nucleic acids are not
patentable. However, Australian High Court had a different position when it comes to cDNA.
It held that cDNA is not patent eligible since, although synthesized, only replicates a
naturally occurring sequence of exons.

In the Philippines, the growth of biotechnology invites influx of application for gene patents.
With the opposing decisions of the US. Supreme Court and the Australian High Court
regarding the patentability of cDNA and comparison and contrast of the Us and Australian
patent law with the Philippine patent law, this study determines the Philippine patentability
of cDNA as a product and as a part of a process. Absence of strong and reliable Philippine
standards to determine the patentability of isolated DNAs including cDNAs makes it difficult
to draw the line between the right to property, privacy, research and competition on one hand
and the right to intellectual property upon the other.

A claim for cDNA as a product carrying genetic information is not patentable under the
Philippine patent law as it only replicates the naturally occurring sequence of exons and
codes for the same gene. However, a process of diagnosis, synthesis and isolation using cDNA
maybe patentable subject to other requirements of novelty, inventive step and industrial
applicability. Lastly, the author proposes a Philippine Guide to patentability of' nucleic acids
that is applicable, unique and responsive to the Philippine setting.
 PATENT EXISTENCE V LEGAL RIGHTS: EXAMINING THE APPLICATION OF
INJUNCTIVE RELIEF TO ENFORCE LETTERS PATENT

Alfonso P. Cruz (2017)

ABSTRACT

This paper discusses a controversy as found in the Intellectual Property Code of the
Philippines vis-a-vis the application of the same in the Rules of Procedure for Intellectual
Property Rights Cases ("Rules') promulgated by the Supreme Court. Section 2, Rule 17 of the
Rules gives ground for a patent holder to apply for a temporary restraining order or
injunction based merely on the fact that they have a patent. However, Section 81 of the Code
allows the defendant to raise the defense of the invalidity of the patent in an action for
infringement. This issue is explored in full within the thesis including an overview of the
Philippine patent process, examples of infringement cases, a discussion regarding damages
and a variety of recommendations that can be implemented to alleviate the controversy. The
thesis argues that the patent holder should be entitled to injunctive relief despite the
provision of-Section 81 of the IP Code that allows the alleged infringer to raise the invalidity
of the patent as a defense. There are compelling arguments why a patent holder should be
entitled to a preliminary injunction despite the fact that Section 81 of the IP Code allows the
defendant, or alleged infringer, to raise the defense of invalidity of patent. The decision of the
Intellectual Property Office ("IPO '), granted with the power to issue a letters patent, should
be given great respect by the Regional Trial Court ("RTC") as a commercial court. The IPO
has the expertise and experience regarding patents and inventions. The RTC does not have
the same level of expertise and experience regarding patents and inventions. The RTC should
not substitute its judgement for the judgement of the IPO unless there is a clear showing of
grave abuse of discretion on the part of the latter in granting the letters patent. This is
because the decisions of the IPO, the administrative body charged with the implementation
and enforcement of intellectual property rights, are presumed valid. Pending trial on the
merits, the alleged infringer should be prohibited from manufacturing and selling the
allegedly infringing product. Otherwise, irreparable damage will be inflicted on the goodwill
of the patents holder and on the brand of the product which could totally destroy the
marketability of the product. In the balancing of interests, it is better to temporarily prohibit
the manufacture and sale of the allegedly infringing product. In the long run, giving
injunctive relief to patent holders, during the pendency of the trial on the merits, will
strengthen the system of patents and patent protection. It will encourage more research and
development of products which will be beneficial for people. And finally, granting the
injunctive relief will prevent patent infringers from "gaming" the judicial system.
 SCREENSHOTS IN THE CONTEXT OF COPYRIGHT LAW

Denise Christianne D. Castelo (2017)

ABSTRACT

Screenshots are one of the results of the emergence of technology that poses questions
regarding the legality of its use. Given that creating a screenshot is now easy and within the
reach of the hand, using screenshots has become a common practice to Internet users.
Screenshots have become a powerful yet convenient tool to visually represent a work or
visually communicate a work to other persons. The common use of screenshots, however,
"does not mean anyone can use a screenshot, anytime, without risking infringement.
Screenshots are generally covered by copyright and should be used with the permission of
the copyright holder." Given the widespread nature of the Internet and the enthusiasm that
the Philippine citizens have over the use of electronic devices and the Internet, copyright
infringement cases involving screenshots are bound to happen. The piimary issue that this
study aims to answer is whether the creation and use of screenshots constitute a violation of
copyrights of the authors of the works found therein. Corollarily, this thesis also aims to
determine how the current laws and well-established and accepted principles on Copyright
be applied to screenshots. It is important to tackle these issues since screenshots are already
being used to circumvent measures adopted by websites and social networking sites to
prevent its users from obtaining works found therein thru directly saving a copy of the work

The issues were addressed in light of the relevant existing copyright laws of the Philippines
and its well-established principles. To address any gap, foreign cases —specifically U.S. cases
—which deals with the same or related issues were used.

A screenshot can be defined as the image produced when a user takes a photograph of any
work or material as it appears on the screen of any electronic or computer device, including
all the elements of a website or software's interface, at a given time to obtain and use
copyright protected digital works especially when the website or software does not allow
directly saving or obtaining the copyright protected digital works. As such, screenshots are
mere reproductions within the law, because it lacks in originality and the copyright
protectable elements. This means that any unauthorized use of copyright protected works of
another would be an infringement. As shown by the discussion in this thesis, the very nature
of a screenshot places its creation and use in opposition to certain copyright laws and
principles. This, however, is not without exception as the Fair Use defense may be invoked
by the creators and users of screenshots. By the very nature of screenshots, however, it is
difficult to categorize screenshots to outright infringing or non-infringing since it normally
contains more than one material or work of another. Thus, •a _framework, which partakes
of a four- fold test, is suggested to be applied to each particular screenshot in order to answer
the problem mentioned above — whether a screenshot infringes on the copyright of the
content owners. By using this framework, creators and users of screenshots would be guided
on how to use the same in accordance with the law and the subsisting copyrights of the
content owners. Likewise, content owners would be guided as to how they can protect their
rights in cases when their works are appropriated thru screenshots.
THE PROBLEM OF OBSCURE NAMES: EVALUATING THE LEGAL CONSEQUENCES
OF THE FAILURE TO DISTINGUISH BETWEEN ACQUISITION RULES OF
OWNERSHIP VIS A VIS REGISTRATION RIGHTS AS APPLIED TO UNKNOWN
TRADENAMES IN ECOLE DE MANILLE VS COINTREAU

Ernesto C. Naval III (2017)

ABSTRACT

A "Trademark", in essence, is a name or logo that exemplifies the goodwill of a

merchant as it relates to his business and goods. Every time a businessman sells goods
bearing a distinctive mark, he develops his reputation with his customers in relation to the
goods that he sells, thus resulting in ownership of a property right in the form of a tradename
or a trade 'logo' as the case may be; this ownership, however, is not absolute. Before the
advent of modern modes of cross-border transportation, merchants were primarily confined
to selling their goods within a small geographical territory; this meant that a glassware
merchant in Venice would only be gain repute among fellow Venetians, and that he would be
foolish to expect that a Galapagan denizen would have consumed his goods with the same
level of fervor as his countrymen. In the modern context, this means that a person owns a
trademark only in places where he conducts business. For example, a certain Pedro -- a
vendor who sells balut exclusively in the United States -- using the tradename "Itlog ni
Pedro", will only be able to protect his mark in the United States. However, in the modern
world where commerce is done in a much more pervasive scale, this principle of territoriality
of trademarks appears antiquated. Many starting entrepreneurs may want to cater to an
international consumer base may be faced with the dilemma of international enforcement.
Even the Philippine Supreme Court, the highest court of the land, often struggled with the
question of territoriality, and one case that obliquely tackled this issue is Ecole De Cuisine
Manille v. Cointreau, involving a Filipino corporation imitating the French tradename "Le
Cordone Bleu".
An important query thus arises: Can a foreign trademark user truly have legitimate
rights in the Philippines notwithstanding lack of physical business within the country? The
Supreme Court first explored the predicament in Fredco v. Harvard where it emphasized
that there are grounds to protect the rights of foreign trademark users, notwithstanding their
failure to qualify their marks as "internationally known" --concerning marks which would
have been protected under the auspices of the Paris Convention. The proponent will explore
the nuances of this proposition, and the issue may thus be resolved by a thorough discussion
of important concepts, namely: territoriality, the remedies afforded to the original foreign
user whose trademark design was replicated in had faith. and the concept of internationally
protected well-known marks.
 THE SMELL OF SUCCESS- THE INTELLECTUAL PROPERTY RIGHTS OF SCENTS

Kristine Sherika P. Chy (2017)

ABSTRACT

Scents should be granted intellectual protection under the law, in the form of trademark
registration and under the laws of unfair competition. Foreign and international
jurisprudence on the intellectual protection of scents have varying stands on this matter.
However, considering that certain jurisdictions have recognized and granted intellectual
protection to scents, under the principle 21. comity and treaty obligations, as well as equal
protection, the Philippines should then be obliged to recognize these rights. At the very least,
the law should be re-examined as to address cases of certain business models in the perfume
industry committing unfair competition, yet somehow are able to maneuver around the law.
If ultimately lawmakers decide to grant scents intellectual protection, various factors
regarding implementation will come into play. Questions such as what makes a fragrance
distinctive, or what makes one particular fragrance protectable and the other not, will have
to be considered. The graphical representation of a scent is a particular issue, which however
could be addressed with a combination of various methods and recent developments in
technology. The law will have to be revised to accommodate intellectual protection of
fragrances, and guidelines, particularly for of a working scent classification system, must be
created to implement the registration of scent marks.
 TRADE SECRETS PROTECTION: A REVIEW ON THE POWERS GRANTED TO THE
PHILIPPINE COMPETITION COMMISSION UNDER SECTION 12 OF RA 10667 AND
RULE IV SECTION 13 OF THE IMPLEMENTING RULES AND REGULATIONS
THEREOF

Marisse D. Aldeza (2017)

ABSTRACT

In the history of human experience, free market is fueled by information — coined to be the
currency of democracy. But as all things are, there is always a limitation, a censorship of
some sort. The objective of any competition law is to find balance between competing interests
of competitors while protecting the welfare of the consumers. In the Philippines, demands to
have a sound competition policy have gone through several administrations. On July 2015,
Philippine Competition Act or Republic Act No. 10667 was born. By virtue of the said law, a
Philippine Competition Commission was created. Recently, the Commission published the
Implementing Rules and Regulations of the Competition Act. Under the said law, the
Commission was given, in the exercise of its investigatory function, the power to investigate
and inquire on any relevant matter. Corollary to this investigatory power is the power to
issue contempt orders in case of non-compliance.

The objective of this Thesis is to analyze and to delve into the inadequacy of trade
secret protection under Philippine law and its possible outcome with the passage of the
Competition Act. The provisions of RA 10667, as of this writing, remains silent as to the
limitation of the power of the Commission to compel disclosure of matters under its
investigatory power. Our existing obligation under the TRIPS Agreement, Rules on Evidence
on privileged communication and the court pronouncement in the case of Air Philippines v.
Pennswell in relation to the right to information under the 1987 Philippine Constitution,
provide that trade secrets cannot be disclosed unless there is a compelling public interest to
do so. Thus, it is not subject to compulsory disclosure without showing of an overwhelming
public necessity.

The proponent acknowledges that a sound competition policy is much needed in a

developing country. Stricter and clearer provisions, however, to harmonize existing rules on
evidence and giving full regard to the recognition of exceptions to right to information is
needed to achieve the efficiency that the competition law aims to amplify in the first place.
In the absence of overwhelming public necessity, the Commission must he precluded from
inquiring on matters considered to be trade secrets. To ultimately address this issue, this
Thesis will provide a draft of amendments to Section 12 of RA 10667 and a draft of a proposed
unified trade secret law applicable to the Philippine jurisdiction.

Thomas Jefferson, Panelist's Remarks on U.S. Communications Policy, U.S. General

Accounting Office, Washington D.C. (1991).
 WEAVING CULTURES: ADDRESSING GAPS IN THE INTANGIBLE HERITAGE
CONVENTION AND THE TRIPS TOWARDS PROSPECTS FOR A SUI GENERIS
FRAMEWORK OF PROTECTION FOR INDIGENOUS CRAFTS AND WEAVING
CULTURAL APPROPRIATION

Julian Elizar D. Torcuator (2017)

ABSTRACT:

This study problematizes whether or not the forced application of current intellectual
property rights concepts with intangible cultural heritage (ICH) of indigenous people may be
inadequate as a mechanism for the protection of indigenous ICH. The study focuses on the
cultural appropriation of indigenous crafts and weaving which produces the problems of 1.
Depriving the indigenous community source of a viable economic resource; and 2.
Commodifying indigenous culture in ways unacceptable to the indigenous culture. In essence,
when indigenous weavings, crafts, and artistry are appropriated and commodified, what is
infringed upon is not merely intellectual property rights, individual or communal, in the
conventional sense. Rather, indigenous culture is also transgressed and cheapened The most
promising protection available to safeguard the integrity of indigenous cultural heritage in
the form of traditional cultural expressions (TCE), and the accompanying, traditional
knowledge (TK) involved in making them, is through: 1. Laws for the protection of intellectual
property rights; and 2. Laws for the protection, preservation, and promotion of cultural
heritage, specifically intangible cultural heritage/ intangible cultural properties. However,
the protection accorded by the current legal regime for the protection of intellectual
properties would be inadequate when made to apply to indigenous cultural heritage which
have been possessed and developed through years of experience and cultural development,
communal in nature, unaltered by mainstream civilization, and which have been possessed
by indigenous cultural communities since time immemorial. Further, the lack of protection
is added to by a tension between preserving ICH and intellectual property commercialization,
thereby adversely affecting indigenous communities whose ICH are culturally appropriated
without their consent, and/or in ways that are unacceptable to their traditional customs. On
the other hand, indigenous crafts and weavings, and to some extent, the traditional
knowledge thereto are also a viable economic resource for indigenous communities, especially
those belonging to developing countries and are in impoverished conditions. Therefore, this
study proposes that in acknowledging that commercial activities may emerge from certain
forms of ICH, such as products of trade in relation to these elements of ICH, there must be
additional legal safeguards with regard to intellectual property laws as well as laws for the
protection and promotion of cultural heritage that promotes the flourishing of indigenous
cultural identity, while concurrently protecting indigenous ICH from commercial use and
other forms of cultural appropriation that will distort the inherent value and meaning of the
ICH.
 LLM

EXPERT ADVICE EXAMINING THE APPLICATION OF THE ATTORNEY CLIENT

PRIVILEGE TO CONSULTANTS

Miguel Angelo C. Rosario

ABSTRACT

Consultants permeate every facet of modern life. In business, medicine, accounting,

information technology, and even sports, consultants share their technical expertise to keep
our complex world running smoothly. The bread and butter of every consultant are the unique
set of skills they possess. When confounded with a technical or complicated problem, people
turn to consultants who are experts in their respective fields to help resolve the problem.
Lawyers are not immune to the plight of the common people. Too often, a case will arise which
involve technical matters outside the lawyer's knowledge. In such cases, the lawyer may turn
to a consultant to better understand the intricacies of the issue. The thesis will study the
implications of such situation on the rules on the attorney-client privilege. Lawyers are
covered by the attorney-client privilege. Consultants are not. A problem presents itself when,
pursuant to the desire to render the appropriate legal service, the lawyer requests the
assistance of a consultant. Since no privilege exists between the consultant and the client,
the former is free to divulge any information he or she may come across to the detriment of
the client. To determine if the attorney-client privilege applies to a consultant, the rationale
behind the grant of the privilege is examined. Centuries of development on the rules of
privilege are studied to ascertain if there is a justibing policy which can bolster the extension
of the attorney-client privilege to consultants. The study will then survey the current
jurisprudential doctrines guiding privileged communications. The three rationales behind
the grant, as well as the new formulas crafted by jurisprudence will serve as barometers to
test the applicability of the attorney-client privilege to consultants. In the end, the thesis will
propose amendments to the current rules on privileged communications to accommodate the
emerging right of consultants to the attorney-client privilege and foster the policies protected
by the privilege.
 PROMOTION OF FREE TRADE AND INNOVATION THROUGH THE TRIPS
AGREEMENT REDEFINING TECHNOLOGY TRANSFER ARRANGEMENTS AND
RETHINKING THE APPROACH FOR ITS EVALUATION IN THE PHILIPPINE
SETTING

Atty. Jennifer A. Baloboa-Cahig

ABSTRACT:

The anti-competitive effect of technology transfer arrangements or the market

monopolization through licensing agreements on patents, know-how and mixed patent and
know-how is a global business issue related to the WTO Treaty on TRIPS. TRIPS encourages
innovators to surrender possession of secret knowledge in exchange for the protection of
temporary exclusivity in the use of intellectual property. TRIPS also contains competition
rules that promote fair trade practices and prevent market monopoly.
However, there are perceived inconsistencies because IPRs confer exclusive rights upon
innovators whereas competition rules keep markets open. I Moreover, competition rules do
not subject the exercise of IPRs to competition law principles but merely provide WTO
Members with substantial discretion to enact and enforce domestic competition legislation to
prevent 1PR abuse. Thus, developing countries do not use the TRIPS competition flexibilities
to promote access to technology and control anti-competitive conduct in inward technology
transfer, allowing some to think that IPRs and competition rules are incompatible.

One solution is to provide uniform technology transfer-related competition rules which are
obligatory upon all WTO Members. However, there is no one-size-fits-all approach. Thus, the
better solution is to make mandatory guidelines which consider the specific needs of the WTO
Members. This can be done on the international level through an amendment of the TRIPS,
and on the national level, through localized technology transfer-related competition rules.
This will harmonize IPRs and competition rules and promote innovation, dynamic efficiency
and long-term economic growth.
 THE PH REAL ESTATE INVESTMENT TRUST A STUDY ON THE
CONSTITUTIONALITY OF THE PROVISIONS OF THE MINIMUM PUBLIC
OWNERSHIP REQUIREMENT UNDER SEC MC NO. 2 SERIES OF 2011 AND THE VAT
UNDER RR NO. 13 2013

Ma. Ivana F. Callangan

Abstract

Republic Act No. 9856 also known as An Act Providing the Legal Framework for Real Estate
investment Trust and for Other Purposes (P-REIT) seeks to promote the development of the
capital market, democratization of wealth by broadening the participation of Filipinos in the
ownership of the real estate in the Philippines, and the development of infrastructure
projects. The P-REIT provides for an enabling regulatory framework and environment
wherein real estate investment trusts are utilized to assist in achieving the aforementioned
objectives. It postulates the corporate requirements before and after the registration, the
mechanism of the new investment scheme and also certain incentives granted to the
investors. In spite of the substantial amount of incentives provided for by this policy, together
with its implementing rules and regulations, the P-REIT remains to be unattractive to the
investing public to date since its promulgation in 2009. There are two controversial issues
raised by the private sector, which explains its non-viability: (a) the increase to 67%
minimum public ownership (MPO) requirement; and (b) the imposition of the value-added
tax (VAT) on the transfer of real property by the sponsor to the REIT pursuant to Section
40(C)(2) of the National Internal Revenue Code (NIRC). This thesis therefore, probed into
both issues and determined whether indeed they are constitutionally infirm. First, the
sudden increase of the MPO requirement from one-third of the outstanding capital stock to
67% constitutes a violation against the doctrine delegate potestas nonpotest delegari.
Jurisprudence provides for conditions sine qua non, without which, the issuance should be
declared null and void. Out of the four requisites, three of them were not complied with to
wit: (a) lack of germaneness to the declared policy in R.A. 9856, (b) promulgation on a
contingent basis, therefore not in accordance with the prescribed procedure, and (c)
unreasonableness due to the rate impracticability when compared side to side with other
successful REITs. Second, the government erroneously imposes VAT on the subject
transactions as they are categorized as tax-free exchanges (TFE's). Therefore, these transfers
cannot be classified as actual sales nor transactions deemed sales but just mere
reorganizations. Therefore, the researcher submits that both the new MPO and VAT
requirements under their respective implementing rules and regulations are
unconstitutional. The 67% MPO requirement issued by the SEC, therefore, must yield to the
one-third MPO requirement under the law and its originally implemented rules and
regulations. The imposition of VAT on transfers under Section 40(C)(2) of the Tax Code
pursuant to Revenue Regulations Nos. 10-2011 and 13-2011 must also revert to the
rectification as embodied in Revenue Regulations No. 4-2007, which retains the exemption
provided for these TFE's under the Tax Code.