Intellectual Property Law

Intellectual Property refers to any creation or product of the mind or of

one’s intellect. It can be of any form which are of original in nature such as
an invention, original design, and an application of an idea, trademark or a
literary and artistic works. According to RA 10372 or the Intellectual Property
Code of the Philippines of 2013, as amended, the term intellectual property
rights consist of copyright and related rights, trademark and service marks,
geographic indications, industrial designs, patents, layout designs of
integrated circuits and protection of undisclosed information.
Intellectual creations are thought to be necessary for the success of the
economy of the nation. This is because intellectual property allows the
recognition and control over the commercialization of a creation or
invention. An effective Intellectual Property Code ensures the development
of domestic and creative activity to facilitate the transfer of technology in
order to attract foreign investment and to ensure market access for products.
An effective Intellectual Property Code also allows the protection of
the rights of the creator, inventor, scientist, composer or any person as an
author of an idea to security of use of his idea alone without any
infringement on his rights is tantamount to a blatant disrespect on his hard
work and effort depriving him of his proprietary rights. Under this code, an
original work is secured and protected under the time of the inception of the
idea itself.

The Evolution of Intellectual Property Law

Prior to the enactment of RA 8293 or the Intellectual Property Code of the
Philippines, there were early laws that protects the intellectual rights in our
country. These laws includes:
1. Republic Act 165 – which is an Act Creating a Patent Office, Prescribing
its Powers and Duties, Regulating the Issuance of Patents, and
Appropriate Funds that took effect on June 20, 1947.
2. Republic Act 166 – which is an Act to Provide for the Registration and
Protection of Trademarks, Trade-Names and Service-Marks, Defining
Unfair Competition and False Marketing and Providing Remedies
against the same and for Other Purpose which took effect on June 20,
1947.
3. Presidential Decree No. 49 – which is a Decree on the Protection of
Intellectual Property which took effect on November 14, 1972 by the
late President Ferdinand E. Marcos.

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 4. Presidential Decree No. 285 – which is a Decree Authorizing the
Compulsory Licensing or Reprinting of Educational, Scientific or
Cultural Books and Materials as a Temporary or Emergence Measure
whenever the Prices thereof become exorbitant as to be detrimental to
the National Interest.
5. Article 188 and 189 of the Revised Penal Code – which is a provision in
the Penal Code that gives sanction on substituting and altering trade-
marks and trade-names and for unfair competition and fraudulent
registration of trade-mark or trade-name which took effect on
December 8, 1930.
6. Proclamation No. 137 – which states that the Philippines expressed the
Making Public of the Accession of the Republic of the Philippines to
the Berne Convention for the Protection of Literary and Artistic
Works, which was revised in Brussels on June 26, 1948. The main
objective of the Convention is to protect in as effective and uniform a
manner as possible the rights of authors over their literary and artistic
works
On June 6, 1997, various laws protecting intellectual works was merged
and became comprehensive through Republic Act 8293 or otherwise known
as the Intellectual Property Code of the Philippines. Section 2 of its
Declaration of State Policies states that “It shall protect and secure exclusive
rights of scientist, inventors, artist and other gifted citizens to their
intellectual property and creations, particularly when beneficial to the
people for such periods as provided in this act.”
The Intellectual Property Code of the Philippines has 5 parts such as The
Intellectual Property Office, Law on Patents, Law on Trademarks, Service
Marks and Trade Names, Law on Copyright and Final Provisions. Intellectual
Property Rights under this code includes copyright and related rights,
trademarks and service marks, geographic indications, industrial designs,
patents, layout designs of integrated circuits and protection of undisclosed
information.
There are features in this new code that are significantly changed to suit
current needs during its publication. Some of the featured changes includes
a shift from the first-to-invent system to the first-to-file system. For
inventions, the period for grant was increased to 20 years from filing from
the 17 years from the previous law. For utility modes, the grant was increased
to 7 years without renewal from the previous 5 years, with renewal of
another 5 years. Examinations are no longer mandatory on the new law but
is available upon request. Under the new law, publication is effected after 18
months from the filing date or priority date. Also, under the new law,
penalties for infringement was increase to 300,000 php and/or 6 months to 3

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years of imprisonment from the previous 10,000 php fine and/or
imprisonment of 5 years.
On July 23, 2012, RA 8293 or the Intellectual Property Code was amended
by RA 10372 to enhance the application of such law with the collaboration of
various government agencies that can help protect intellectual rights. Most
of the amendments in R.A. 8293 as stated in R.A. 10372 or the revised IP
Code are on provisions pertaining to the Law on Copyright. The powers of
the Director General and Deputy Director General were broadened to
include enforcement functions supported by concerned agencies such as the
Philippine National Police (PNP), the National Bureau of Investigation
(NBI), the Bureau of Customs (BOC), the Optical Media Board (OMB), and
the Local Government Units (LGUs), among others. This is a strategic move
to intensify the government’s fight against pirated merchandise, protecting
both the creators and the consumers. Another section added, is on the
Adoption of Intellectual Property Policies by schools and universities to
safeguard the intellectual creations of the learning institutions and its
employees.

Copyright Law
The Philippine copyright law is enshrined in Republic Act 8293 Part IV
Section 171 – Section 229. Copyright can be defined as a form of intellectual
property that protects the rights of the authors and creators of literary and
artistic “works”. Our version of the Copyright Law is based on the law of the
United States. Our law also protects trademarks, patents and even various
forms of intellectual property.

Pearl and Dean v. SHOEMART

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

Copyright, in the strict sense of the term, is

purely a statutory right. Being a mere statutory
grant, the rights are limited to what the statute
confers. It may be obtained and enjoyed only with
respect to the subjects and by the persons, and on
terms and conditions specified in the statute.
Accordingly, it can cover only the works falling within
the statutory enumeration or description.8
Trademark, copyright and patents are different
intellectual property rights that cannot be
interchanged with one another. A trademark is any
visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods. In relation thereto, a trade name

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 means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of
a copyright is confined to literary and artistic works
which are original intellectual creations in the literary
and artistic domain protected from the moment of
their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in
any field of human activity which is new, involves an
inventive step and is industrially applicable.

What “works” are protected by the copyright law?

Our Copyright Law protects an Original Work and a Derivative Work.
An original work is a creation that is unique and original that without the
author of such creation it would not have had existed. It concerns itself with
the roots of the creation and its creator. Our Copyright Law protects such
original creations and is inscribed in Article 172 of the Intellectual Property
Code.
Part IV, Chapter II, Original Works - Sec. 172 of the said code states
that, literary works and artistic works, hereinafter referred to as “works”, are
original intellectual creations in the literary and artistic domain protected
from the moment of their creation and shall include in particular:
a) Books, pamphlets, articles and other writings
b) Periodicals and newspapers
c) Lecture, sermons, addresses, dissertations prepared for oral
delivery, whether or not reduced in writing or other material
form
d) Letters
e) Dramatic or dramatico-musical compositions; choreographic
works or entertainment in dumb shows
f) Musical compositions with or without words
g) Works of drawing, painting, architecture, sculpture,
engraving, lithography, or other works of art; models or
designs for works of art
h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art
i) Illustrations, maps, plans, sketches, charts and three
dimensional works relative to geography, topography,
architecture or science
j) Drawings or plastic works of scientific or technical character
k) Photographic works includes works produced by a process
analogous to photography, lantern slides

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 l) Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any
process for making audiovisual recordings
m)Pictorial illustrations and advertisements
n) Computer Programs
o) Other literary, scholarly, scientific and artistic works
On the other hand, a derivative work is a new, original product that
includes aspects of a preexisting, already copyrighted work. Also known as a
"new version," derivative works can include musical arrangements, motion
pictures, art reproductions, sound recordings or translations. They can also
include dramatizations and fictionalizations, such as a movie based on a
play. Such work is also protected as stated in the provisions of Section 173 –
174 of the above mentioned code which states that:
Section 173. Derivative Works – the following derivative works shall also
be protected by copyright.
a) Dramatizations, translations, adaptations, abridgements,
arrangements and other alterations of literary or artistic works
b) Collection of literary, scholarly or artistic works, and compilations of
data and other materials which are original by reason of the selection
or coordination or arrangement of their contents
Section 174. Published Edition of Work – in addition to the right to
published granted by the author, his heirs or assigns, the publisher shall
have a copyright consisting merely of the right of reproduction of the
typographical arrangement of the published edition of work.
As stated, the rights afforded to the creator of these original works starts
from the creation of their products and thus reserves their right to exclusive
reproduction of such products. Economic rights are also to be enjoyed
exclusively by the creators of such works. Any action in contrary amounts to
infringement and is punishable under our law.

What works are not protected by the copyright law?

Under the law on Intellectual Property, Section 175 to be specific, no
protection shall extend to any idea, procedure, system method or operation,
concept, principle, discovery or mere data as such, even if they are
expressed, explained, illustrated or embodied in a work; news of the day and
other miscellaneous facts having the character of mere items of the press
information, or any official text of a legislative, administrative or legal nature
as well as any official translation thereof.

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 Section 176.1 of the same code also states that no copyright shall
subsist in any work of the Government of the Philippines.
Section 176.2 also states that the author of speeches, lectures, sermons,
addresses and dissertations mentioned in the preceding paragraphs shall
have the exclusive right of making a collection of his work.
Finally, Section 176.3 states that the government is not precluded from
receiving and holding copyrights transferred to it by assignment, bequest or
otherwise, nor shall publication or republication by the government is a
public document of any work in which copyright is subsisting be taken to
cause any abridgment of annulment of the copyright or to authorize any use
or appropriation of such work without the consent of the copyright owner.

Who owns the copyright?

Under the law on Intellectual Properties, the copyright shall belong to
the author of the work. In case the there is a joint ownership, the co-author
shall share ownership of the copyright, in the absence of a prior agreement.
The right sharing shall be governed by the rules on co-ownership. However,
if the work consist of different parts distinct for separate owners, the
ownership and copyright shall correspond to those distinct parts as separate
owners.

Rupa Marya, et al. v. Warner/Chappell Music,

Inc., et al.
Case No. CV 13-4460-GHK (MRWx)

Facts: Plaintiff Rupa Marya, Robert Siegel, Good

Morning to You Production Corp., and Majar
Productions, LLC filed a class action to declare invalid
defendants Warner/Chappell, Inc. and Summary
Birchard, Inc.’s purported copyright in the famous
song Happy Birthday to You. This classic melody of
Happy Birthday is the same as that of another song
called Good Morning to All. At some time before
1893, Mildred Hill Party wrote Good Morning. Mildred
composed the music with Patty’s Help and Patty
wrote the lyrics. The lyrics of Good Morning are
similar to those of Happy Birthday. In 1893, Mildred
and Patty assigned their rights to the manuscript
containing Good Morning and other songs to Clayton
F. Summy. A copy of the assignment is not available
but both party does not dispute the assignment
occurred. That same year Mr. Summy published a
manuscript in, and filed for copyright registration of a
songbook titled Song Stories for Kindergarten. After

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Mildred died, Jessica Hill, a third Hill sister, filed for
the renewal of the copyright to Song Stories in 1921
as one of Mildred’s heirs. Under the Copyright Act of
1909, works could receive copyright protection for
two consecutive 28 years. Accordingly, copyright
protection for the Song Stories, including the song
Good Morning, expired in 1949.
Hill sisters filed a class action suit against Summy Co.
in the District of New York not for infringement of
Happy Birthday but by using the same tune on Good
morning to You and Happy Birthday to You, claiming
that they also wrote that song at the same time
when they wrote the Good Morning song but settled
the case in 1944 entering a new agreement with
Summy Co. The Hill sisters, via the Hill Foundation,
assigned all their rights in eleven different copyrights
including E51990, E51980 and the Song Stories
Copyright. After the third agreement, Summy Co.
filed three lawsuit alleging copyright infringement
related to Happy Birthday. E51990 is not mentioned
in the complaints for any of these lawsuits. When
describing the song Happy Birthday, the complaints
each said that one of the song, entitled Good
Morning To All, later became popularly known as
Happy Birthday To You, the opening lines of the
verses later written by Patty S. Hill for the Song.
On April 21, 2014 plaintiffs filed their FACC in this
action and contends that the defendants do not own
copyright in the Happy Birthday lyrics and that they
should be compelled to return the millions of dollars
of unlawful licensing fees that they have collected by
wrongfully asserting copyright ownership in Happy
Birthday lyrics.

Conclusion: Patty nor Mildred nor Jessica ever did

anything with their common law rights in the lyrics.
For decades, with the possible exception of the
publication of The Everyday Song Book in 1922, the
Hill sisters did not authorize any publication of the
lyrics. They did not try to obtain federal copyright
protection. They did not take legal action to prevent
the use of the lyrics by others, even as Happy
Birthday became very popular and commercially
valuable. In 1934, four decades after Patty
supposedly wrote the song, they finally asserted
their rights to the Happy Birthday/Good
Morning melody — but still made no claim to the
lyrics.

Defendants ask us to find that the Hill sisters

eventually gave Summy Co. the rights in the lyrics to
exploit and protect, but this assertion has no support

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 in the record. The Hill sisters gave Summy Co. the
rights to the melody, and the rights to piano
arrangements based on the melody, but never any
rights to the lyrics. Defendants' speculation that the
pleadings in the Hill-Summy lawsuit somehow show
that the Second Agreement involved a transfer of
rights in the lyrics is implausible and unreasonable.
Defendants' suggestion that the Third Agreement
effected such a transfer is circular and fares no
better. As far as the record is concerned, even if the
Hill sisters still held common law rights by the time of
the Second or Third Agreement, they did not give
those rights to Summy Co.

In the event that the author is under the employment of another, the
copyright shall belong to the employee if the creation of the object of
copyright is not a part of his regular duties even if the employee uses the
time, facilities and materials of the employer. On the other hand, the
ownership and copyright shall belong to the employer if the work is the
result of the performance of his regularly assigned duties, unless there is an
agreement, expressed or implied to the contrary.
In the event that the work is commissioned by another person who
pays for it and the work is made in pursuance of the commission, he who
pays shall have ownership over the creation but the copyright shall remain
with the creator, unless there is an agreement for the contrary.
In case of audiovisual work, the copyright shall belong to the producer,
the author of the scenario, the composer of the music, the film director and
the author of the work so adapted.
For letters, obviously the copyright shall belong to the writer of the
letter.
In the event of writers or authors who are under pseudo names or does
not wish to become known, the publishers shall be deemed to represent the
authors of those articles or writings, unless the contrary appears, or the
pseudonyms or adopted name leaves no doubt as to the author’s identity or
if the author of the anonymous works discloses his identity.

What are the rights enclosed in Copyright or Economic Rights?

In pursuance to Section 177 of RA 8293 or Intellectual Property Code,
copyright or economic right shall consist of the exclusive right to carry out,
authorize or prevent the following acts:
a) Reproduction of the work or substantial portion of the work
(Right of Reproduction)

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 b) Dramatization, translation, adaptation, abridgement,
arrangement or other transformation of the work
c) The first public distribution of the original and each copy of the
work by sale or other form of transfer of ownership (Right of
Distribution)
d) Rental of the original or a copy of an audiovisual or
cinematographic work, a work embodied in a sound recording, a
computer program, a compilation of data and other materials or
a musical work in graphic form, irrespective of the ownership of
the original or copy which is the subject of the rental
e) Public display of the original or a copy of the work
f) Public performance of the work
g) Other communication to the public of the work
In addition to the above cited provision, moral and proprietary rights
are also afforded to the creator or author of an original work, by allowing
them to assert proprietary gains over their work through reproduction and
distribution. Moral rights are also included in this code that no other person
may deface, modify or destroy a legitimately obtained copy of a copyrighted
work. Moral rights are meant to protect the reputation of the author.

Can copyrights be transferred or assigned?

Under the code, Section 180.1 – 180.3, copyrights may be assigned in
whole or in part, within the scope of the assignment. By then, the assignee is
entitled to all the rights and remedies which the assignor had with respect to
the copyright. However, the assignment needs to be declared expressly
through a writing indicating such intention.
In the case of literary, photographic or artistic work intended for
publication use, it shall constitute only a license to make a single publication
unless a greater right is expressly granted. If there are 2 or more co-owners
or co-authors who shares copyrights to such materials, all of them must
express their intentions in writing. No license shall be granted without the
express writing of the other.

What are the limitations on copyright?

Copyright violations arises from the unauthorized usage and
distribution of works without the author’s knowledge, consent or authority.
However, to unify claims and settle disputes, the law on Intellectual
Properties limits the circumstances that constitutes an infringement. These
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limitations are enshrined in Section 184 – 190 of the Intellectual Property
Code. One of the most notable exemption for infringement is the Fair Use of
a Copyrighted Work found in Section 185. Fair use is a doctrine in our law
that allows an individual to use a copyrighted work of another without its
permission provided that the use is fair and reasonable and that it does not
substantially impair the value of the materials and does not deprive the
author of its proprietary gains.
ABS-CBN Corporation v. Felipe Gozon
G.R. No. 195956, March 11, 205

This court defined fair use as "a privilege to use the

copyrighted material in a reasonable manner without the
consent of the copyright owner or as copying the theme or
ideas rather than their expression."[115] Fair use is an
exception to the copyright owner's monopoly of the use of
the work to avoid stifling "the very creativity which that
law is designed to foster."[116]
Determining fair use requires application of the four-factor
test. Section 185 of the Intellectual Property Code lists four
(4) factors to determine if there was fair use of a
copyrighted work:
1. The purpose and character of the use, including whether
such use is of a commercial nature or is for non-profit
educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value
of the copyrighted work.
First, the purpose and character of the use of the
copyrighted material must fall under those listed in Section
185, thus: "criticism, comment, news reporting, teaching
including multiple copies for classroom use, scholarship,
research, and similar purposes."[117] The purpose and
character requirement is important in view of copyright's
goal to promote creativity and encourage creation of
works. Hence, commercial use of the copyrighted work can
be weighed against fair use.
The "transformative test" is generally used in reviewing the
purpose and character of the usage of the copyrighted
work.[118] This court must look into whether the copy of
the work adds "new expression, meaning or message" to
transform it into something else.[119] "Meta-use" can also
occur without necessarily transforming the copyrighted
work used.[120]
Second, the nature of the copyrighted work is significant in
deciding whether its use was fair. If the nature of the work

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 is more factual than creative, then fair use will be weighed
in favor of the user.
Third, the amount and substantiality of the portion used is
important to determine whether usage falls under fair use.
An exact reproduction of a copyrighted work, compared to
a small portion of it, can result in the conclusion that its
use is not fair. There may also be cases where, though the
entirety of the copyrighted work is used without consent,
its purpose determines that the usage is still fair.121 For
example, a parody using a substantial amount of
copyrighted work may be permissible as fair use as
opposed to a copy of a work produced purely for economic
gain.
Lastly, the effect of the use on the copyrighted work's
market is also weighed for or against the user. If this court
finds that the use had or will have a negative impact on
the copyrighted work's market, then the use is deemed
unfair.

As for published works, Section 187.1 of this code specifically instructs

that the reproduction should be made by an individual exclusively for
research and private study. In addition, Section 187.2 points out that the
permission granted in the preceding section mentioned does not include the
reproduction of the following:
a) A work of architecture in the form of building or other construction
b) An entire book or a substantial part thereof or of a musical work in
graphic form by reprographic means
c) A compilation of data and other materials
d) A computer program except as provided in section 189.

Oftentimes, most of the students from school and universities who prefer
to photocopy the whole book or reproduce it in any other manner is
unknowingly committing a copyright infringement to the author of the book
in violation of 187.2 (b) for a an entire book was reproduced in a manner that
deprives the creator of its proprietary gains.

When does infringement of copyrights arise?

Violations on copyright arises when there is an authorized use or
reproduction of a copyrighted work or any instances in contrary to what was
stated in the Intellectual Property Code on Copyrights. Copyrights is a
statutory law and has the principle of exclusivity. Circumstances not
described on the enumerated list constitutes no violations to such code.
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 Pacita I. Habana v. Felicidad C. Robles
G.R. No. 131522, July 19, 1999

When is there a substantial reproduction of a book? It

does not necessarily require that the entire
copyrighted work, or even a large portion of it, be
copied. If so much is taken that the value of the
original work is substantially diminished, there is an
infringement of copyright and to an injurious extent,
the work is appropriated.
In determining the question of infringement, the
amount of matter copied from the copyrighted work
is an important consideration. To constitute
infringement, it is not necessary that the whole or
even a large portion of the work shall have been
copied. If so much is taken that the value of the
original is sensibly diminished, or the labors of the
original author are substantially and to an injurious
extent appropriated by another, that is sufficient in
point of law to constitute piracy.
Infringement of a copyright is a trespass on a private
domain owned and occupied by the owner of the
copyright, and, therefore, protected by law, and
infringement of copyright, or piracy, which is a
synonymous term in this connection, consists in the
doing by any person, without the consent of the
owner of the copyright, of anything the sole right to
do which is conferred by statute on the owner of the
copyright.
In cases of infringement, copying alone is not what is
prohibited. The copying must produce an "injurious
effect". Here, the injury consists in that respondent
Robles lifted from petitioners' book materials that
were the result of the latter's research work and
compilation and misrepresented them as her own.
She circulated the book DEP for commercial use did
not acknowledged petitioners as her source.

Validity Period of Copyright

Each “work” once copyrighted has a validity that an author or creator
can enjoy. Beyond these validities, the copyrighted works become a part of
the public domain where it is no longer protected by the copyright law and
the public can access the work without fear for infringement.
1. Literary Works – are valid throughout the lifetime of the author plus
50 years from the time of his/her death.

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 2. Applied Arts – are valid for 25 year from making the works.
3. Photographic Works – for published works, valid for 50 years from the
publication. In unpublished works, valid for 25 years from the making
of the work.
4. Audio-visual work – if published, are valid for 50 years from the date of
publication. If unpublished, valid for 50 years from making the work.
5. Sound recording – are valid for 50 years from the recording took place.
6. Broadcast recording – are valid for 20 years from the date of broadcast.

Amendments on the Copyright Law

Most of the amendments mentioned in RA 10372 are meant to amend
the provisions under the Copyright Law of RA 8293. It broadens
collaboration between government agencies on fighting infringement and
for the quick apprehension of violators. The powers of the Director General
and Deputy Director General were broadened to include enforcement
functions supported by concerned agencies such as the Philippine National
Police (PNP), the National Bureau of Investigation (NBI), the Bureau of
Customs (BOC), the Optical Media Board (OMB), and the Local Government
Units. This strategic move is to intensify the fight on against illegal and
pirated merchandise, protecting both the creators and the consumers.
In addition, another section was added in the adoption of the
Intellectual Property Policies for schools and universities to safeguard the
intellectual creations of the learning institutions and its employees.

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