2024 AUSL Last Minute Tips - Finals in Intellectual Property Law under Bernie Guerrero

Last Minute Tips - Finals in Intellectual Property Law
Macaraeg, Paul John; 2024 : Highlighted core concepts in Yellow
Summary of RA 8293, as amended
As to Copyright
Elements ORIGINAL WORKS

Sec. 172. Literary and Artistic Works. - 172.1 Literary and artistic works, hereinafter referred to as "works", are
(1) original intellectual creations in the
(a) literary and
(b) artistic domain
protected from the moment of their creation
(i) Other literary, scholarly, scientific and artistic works.
DERIVATIVE WORKS
SEC. 173. Derivative Works. – 173.1. The following derivative works shall also be protected by copyright:
(a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and
(b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or
coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P.D. No. 49)
# Years General Rule - Lifetime of Creator/ Co-Creators + 50 years either from Release, Broadcasting, Play
Protected Applied Art - 25 years
Broadcasts - 20 years
Renewal NONE
Except SEC. 175. Unprotected Subject Matter. Notwithstanding the provisions of Section 172 and 173, no protection shall extend, under this law,
to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof. (n)
1 | Last Minute Tips - Finals in Intellectual Property Law (Macaraeg, Paul John ; 2024 )
SEC. 176. Works of the Government. - 176.1. No copyright shall subsist in any work of the Government of the Philippines. However, prior
approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such
agency or office may, among other things, impose as a condition the payment of royalties. No prior approval or conditions shall be
required for the use of any purpose of statutes, rules and regulations, and speeches, lectures, sermons, addresses, and dissertations,
pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public
character. (Sec. 9, first par., P.D. No. 49)
Limitation 176.2. 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 works. (n)
176.3. Notwithstanding the foregoing provisions, 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 in a public document of any work in which
copyright is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such
work without the consent of the copyright owner. (Sec. 9, third par., P.D. No. 49)
SEC. 184. Limitations on Copyright. -

184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright:
(a) The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or
if made strictly for a charitable or religious institution or society; (Sec. 10(1), P.D. No.49)
(b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose,
including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of
the author, if appearing on the work, are mentioned; (Sec. 11, third par., P.D. No. 49)
(c) The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or
religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information
purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, P.D. No. 49)
(d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means
of photography, cinematography or broadcasting to the extent necessary for the purpose; (Sec. 12, P.D. No. 49)
(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is
made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the
author, if appearing in the work, are mentioned;
(f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools,
universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first
broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema
repertoire of feature films except for brief excerpts of the work;
(g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; (h)
The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is compatible with fair use; (i) The public performance or the
communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or
communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other
limitations as may be provided in the Regulations; (n) (j) Public display of the original or a copy of the work not made by means of a film,
slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been
published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author
or his successor in title; and (k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional
advice by a legal practitioner. (l) The reproduction or distribution of published articles or materials in a specialized format exclusively for
the use of the blind, visually- and reading-impaired persons: Provided, That such copies and distribution shall be made on a nonprofit
basis and shall indicate the copyright owner and the date of the original publication. (As amended by Republic Act No.10372 or an Act
Amending certain provisions of Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines, and for other
Purposes)
184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not
conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interests.
Remarks SEC. 177. Copyright or Economic Rights. - Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the
exclusive right to carry out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer
program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the
copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work (Sec. 5, P.D. No. 49a)
SEC. 186. Work of Architecture. - Copyright in a work of architecture shall include the right to control the erection of any building which
reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original;
Provided, That the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style
as the original of a building to which that copyright relates. (n)
SEC. 188. Reprographic Reproduction by Libraries 188.1. Notwithstanding the provisions of Subsection 177.1, any library or archive
whose activities are not for profit may, without the authorization of the author or copyright owner, make a limited number of copies of the
work, as may be necessary for such institutions to fulfill their mandate, by reprographic reproduction:
(a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form;
(b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is
necessary to supply them; when this is considered expedient, to persons requesting their loan for purposes of research or study instead
of lending the volumes or booklets which contain them; and
(c) Where the making of such limited copies is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered
unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost,
destroyed or rendered unusable and copies are not available with the publisher. (As amended by Republic Act No.10372 or an Act
Amending certain provisions of Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines, and for other
Purposes)
SEC. 189. Reproduction of Computer Program. - 189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1) back-up
copy or adaptation of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a
computer program, by the lawful owner of that computer program: Provided, That the copy or adaptation is necessary for:
(a) The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program
has been obtained; and
(b) Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained
copy of the computer program is lost, destroyed or rendered unusable.
SEC. 193. Scope of Moral Rights. - The author of a work shall, independently of the economic rights in Section 177 or the grant of an
assignment or license with respect to such right, have the right:
193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be
indicated in a prominent way on the copies, and in connection with the public use of his work;
193.2. To make any alterations of his work prior to, or to withhold it from publication;
193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be
prejudicial to his honor or reputation; and 193.4. To restrain the use of his name with respect to any work not of his own creation or in a
distorted version of his work. (Sec. 34, P.D. No. 49)
Creative Commons
https://www.wur.nl/en/article/what-are-creative-commons-licenses.htm
Optional Licence Elements
ICON RIGHTS DESCRIPTIONS
You let others copy, distribute, display, and perform your copyrighted work — and
derivative works based upon it — only if they give credit the way you request.
Attribution (BY)
You must attribute the original work when you create an adaptation.
Derivatives are licensed under the same or compatible licence as the original.
ShareAlike (SA)
By definition, the ShareAlike licences have very few compatible licences.
You let others copy, distribute, display, and perform your work — and derivative works
Non-commercial (NC) based upon it — but for non-commercial purposes only.
You let others copy, distribute, display, and perform only verbatim copies of your work –
but not derivative works based on it.
No Derivative Works (ND) It lets you make and use changes privately – but you cannot share your adaptation with
others.
However, if the content is copied without changes, the copy is not considered a derivate.
https://westernsydney.pressbooks.pub/cclicensingattribution/chapter/open-licence-conditions/
Air Philippines vs Penswell
172835 December 13, 2007 Chico-Nazario, J.
Jurisprudence
TRADE SECRETS ARE PRIVILEGED INFORMATION NOT SUBJECT TO COMPULSORY DISCLOSURE

The Supreme Court held in the case of Chavez vs. Presidential Commission on Good Government, 299 SCRA 744, p. 764, that "the drafters of the Constitution also
unequivocally affirmed that aside from national security matters and intelligence information, trade or industrial secrets (pursuant to the Intellectual Property Code and other
related laws) as well as banking transactions (pursuant to the Secrecy of Bank Deposit Act) are also exempted from compulsory disclosure." Trade secrets may not be the
subject of compulsory disclosure. By reason of [their] confidential and privileged character, ingredients or chemical components of the products ordered by this Court to be
disclosed constitute trade secrets lest [herein respondent] would eventually be exposed to unwarranted business competition with others who may imitate and market the same
kinds of products in violation of [respondent’s] proprietary rights. Being privileged, the detailed list of ingredients or chemical components may not be the subject of mode of
discovery under Rule 27, Section 1 of the Rules of Court, which expressly makes privileged information an exception from its coverage.13
DEFINITION OF TRADE SECRET

A trade secret is defined as a plan or process, tool, mechanism or compound known only to its owner and those of his employees to whom it is necessary to
confide it.16 The definition also extends to a secret formula or process not patented, but known only to certain individuals using it in compounding some article of
trade having a commercial value.17
A trade secret may consist of any formula, pattern, device, or compilation of information that:
(1) is used in one's business; and
(2) gives the employer an opportunity to obtain an advantage over competitors who do not possess the information.18 Generally, a trade secret is a process or
device intended for continuous use in the operation of the business, for example, a machine or formula, but can be a price list or catalogue or specialized customer
list.19 It is indubitable that trade secrets constitute proprietary rights. The inventor, discoverer, or possessor of a trade secret or similar innovation has rights
therein which may be treated as property, and ordinarily an injunction will be granted to prevent the disclosure of the trade secret by one who obtained the
information "in confidence" or through a "confidential relationship."20
TEST OF TRADE SECRET

American jurisprudence has utilized the following factors21 to determine if an information is a trade secret, to wit:
(1) the extent to which the information is known outside of the employer's business;
(2) the extent to which the information is known by employees and others involved in the business;
(3) the extent of measures taken by the employer to guard the secrecy of the information;
(4) the value of the information to the employer and to competitors;
(5) the amount of effort or money expended by the company in developing the information; and
(6) the extent to which the information could be easily or readily obtained through an independent source.22
INGREDIENTS ARE TRADE SECRET

By and large, the value of the information to respondent is crystal clear. The ingredients constitute the very fabric of respondent’s production and business. No doubt, the
information is also valuable to respondent’s competitors. To compel its disclosure is to cripple respondent’s business, and to place it at an undue disadvantage. If the chemical
composition of respondent’s lubricants are opened to public scrutiny, it will stand to lose the backbone on which its business is founded. This would result in nothing less than the
probable demise of respondent’s business. Respondent’s proprietary interest over the ingredients which it had developed and expended money and effort on is incontrovertible.
Our conclusion is that the detailed ingredients sought to be revealed have a commercial value to respondent. Not only do we acknowledge the fact that the information grants it
a competitive advantage; we also find that there is clearly a glaring intent on the part of respondent to keep the information confidential and not available to the prying public.
Facts
Petitioner Air Philippines Corporation is a domestic corporation engaged in the business of air transportation services. On the other hand, respondent Pennswell, Inc. was
organized to engage in the business of manufacturing and selling industrial chemicals, solvents, and special lubricants.
On various dates, respondent delivered and sold to petitioner sundry goods in trade, covered by Sales Invoices No. 8846,4 9105,5 8962,6 and 8963,7 which correspond to
Purchase Orders No. 6433, 6684, 6634 and 6633, respectively. Under the contracts, petitioner’s total outstanding obligation amounted to ₱449,864.98 with interest at 14% per
annum until the amount would be fully paid. For failure of the petitioner to comply with its obligation under said contracts, respondent filed a Complaint8 for a Sum of Money on
28 April 2000 with the RTC.
In its Answer,9 petitioner contended that its refusal to pay was not without valid and justifiable reasons. In particular, petitioner alleged that it was defrauded in the amount of
₱592,000.00 by respondent for its previous sale of four items, covered by Purchase Order No. 6626.
xxx
According to petitioner, respondent’s products, namely Excellent Rust Corrosion, Connector Grease, Electric Strength Protective Coating, and Anti-Seize Compound, are
identical with its Anti-Friction Fluid, Contact Grease, Thixohtropic Grease, and Dry Lubricant, respectively. Petitioner asseverated that had respondent been forthright about the
identical character of the products, it would not have purchased the items complained of. Moreover, petitioner alleged that when the purported fraud was discovered, a
conference was held between petitioner and respondent on 13 January 2000, whereby the parties agreed that respondent would return to petitioner the amount it previously
paid. However, petitioner was surprised when it received a letter from the respondent, demanding payment of the amount of ₱449,864.94, which later became the subject of
respondent’s Complaint for Collection of a Sum of Money against petitioner.
Issue
Respondent sought reconsideration of the foregoing Order, contending that it cannot be compelled to disclose the chemical components sought because the matter is
confidential. It argued that what petitioner endeavored to inquire upon constituted a trade secret which respondent cannot be forced to divulge. Respondent maintained that its
products are specialized lubricants, and if their components were revealed, its business competitors may easily imitate and market the same types of products, in violation of its
proprietary rights and to its serious damage and prejudice.
Ruling
It is thus clear from the foregoing that a party cannot be compelled to produce, release or disclose documents, papers, or any object which are considered trade secrets. In the
instant case, petitioner [Air Philippines Corporation] would have [respondent] Pennswell produce a detailed list of ingredients or composition of the latter’s lubricant products so
that a chemical comparison and analysis thereof can be obtained. On this note, We believe and so hold that the ingredients or composition of [respondent] Pennswell’s
lubricants are trade secrets which it cannot be compelled to disclose.
Columbia Pictures Inc. v. Court of Appeals
110318 August 28, 1996 Regalado, J.
Jurisprudence
INVOKING COPYRIGHT NEED NOT BUSINESSES LICENSED

Neither is the appointment of Atty. Rico V. Domingo as attorney-in-fact of petitioners, with express authority pursuant to a special power of attorney, inter alia —
as acts constitutive of "doing business," the fact that petitioners are admittedly copyright owners or owners of exclusive distribution rights in the Philippines of
motion pictures or films does not convert such ownership into an indicium of doing business which would require them to obtain a license before they can sue
upon a cause of action in local courts.
20TH CENTURY FOX RULING REQUIRING PRESENTATION OF MASTER TAPE IS NOT CONTROLLING IN ENTRAPMENT, NOT A STRICT REQUIREMENT
Withal, even the proposition that the prospectivity of judicial decisions imports application thereof not only to future cases but also to cases still ongoing or not yet
final when the decision was promulgated, should not be countenanced in the jural sphere on account of its inevitably unsettling repercussions. More to the point, it
is felt that the reasonableness of the added requirement in 20th Century Fox calling for the production of the master tapes of the copyrighted films for determination
of probable cause in copyright infringement cases needs revisiting and clarification.
xxx
Accordingly, to restrict the exercise of discretion by a judge by adding a particular requirement (the presentation of master tapes, as intimated by 20th Century Fox)
not provided nor implied in the law for a finding of probable cause is beyond the realm of judicial competence or statesmanship. It serves no purpose but to stultify
and constrict the judicious exercise of a court's prerogatives and to denigrate the judicial duty of determining the existence of probable cause to a mere ministerial
or mechanical function. There is, to repeat, no law or rule which requires that the existence of probable cause is or should be determined solely by a specific kind of
evidence. Surely, this could not have been contemplated by the framers of the Constitution, and we do not believe that the Court intended the statement in 20th
Century Fox regarding master tapes as the dictum for all seasons and reasons in infringement cases
Facts
Complainants thru counsel lodged a formal complaint with the National Bureau of Investigation for violation of PD No. 49, as amended, and sought its assistance in their anti-film
piracy drive. Agents of the NBI and private researchers made discreet surveillance on various video establishments in Metro Manila including Sunshine Home Video Inc.
(Sunshine for brevity), owned and operated by Danilo A. Pelindario with address at No. 6 Mayfair Center, Magallanes, Makati, Metro Manila.
On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search warrant with the court a quo against Sunshine seeking the seizure, among others, of pirated
video tapes of copyrighted films all of which were enumerated in a list attached to the application
xxx
A Motion for reconsideration of the Order of denial was filed. The court a quo granted the said motion for reconsideration and justified it in this manner:
It is undisputed that the master tapes of the copyrighted films from which the pirated films were allegedly copies (sic), were never presented in the proceedings for the issuance
of the search warrants in question. The orders of the Court granting the search warrants and denying the urgent motion to lift order of search warrants were, therefore, issued in
error. Consequently, they must be set aside. (p. 13, Appellant's Brief)5
Petitioners thereafter appealed the order of the trial court granting private respondents' motion for reconsideration, thus lifting the search warrant which it had theretofore issued,
to the Court of Appeals.
Issue
(1) Inceptively, we shall settle the procedural considerations on the matter of and the challenge to petitioners' legal standing in our courts, they being foreign corporations not
licensed to do business in the Philippines.
(2) We now proceed to the main issue of the retroactive application to the present controversy of the ruling in 20th Century Fox Film Corporation vs. Court of Appeals, et al.,
promulgated on August 19, 1988,36 that for the determination of probable cause to support the issuance of a search warrant in copyright infringement cases involving
videograms, the production of the master tape for comparison with the allegedly pirate copies is necessary.
Ruling
(1) Based on Article 133 of the Corporation Code and gauged by such statutory standards, petitioners are not barred from maintaining the present action. There is no showing
that, under our statutory or case law, petitioners are doing, transacting, engaging in or carrying on business in the Philippines as would require obtention of a license before they
can seek redress from our courts. No evidence has been offered to show that petitioners have performed any of the enumerated acts or any other specific act indicative of an
intention to conduct or transact business in the Philippines.
(2) The case of 20th Century Fox Film Corporation vs. Court of Appeals, et al., 164 SCRA 655 (August 19, 1988) (hereinafter 20th Century Fox) was inexistent in December of
1987 when Search Warrant 87-053 was issued by the lower court. Hence, it boggles the imagination how the lower court could be expected to apply the formulation of 20th
Century Fox in finding probable cause when the formulation was yet non-existent.
xxx xxx xxx
In short, the lower court was convinced at that time after conducting searching examination questions of the applicant and his witnesses that "an offense had been committed
and that the objects sought in connection with the offense (were) in the place sought to be searched" (Burgos v. Chief of Staff, et al., 133 SCRA 800). It is indisputable, therefore,
that at the time of the application, or on December 14, 1987, the lower court did not commit any error nor did it fail to comply with any legal requirement for the valid issuance of
search warrant.
Joaquin v. Drilon
108946 January 28, 1999 Mendoza, J.
Jurisprudence
SUBSTANTIAL SIMILARITY IS THE ESSENCE OF COPYRIGHT INFRINGEMENT

The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must
present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for the issuance of a search warrant.
FORMAT OF A SHOW IS NOT COPYRIGHTABLE

The format or mechanics of a television show is not included in the list of protected works in §2 of P.D. No. 49. For this reason, the protection afforded by the law
cannot be extended to cover them.
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing right
regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects
and by the persons and on terms and conditions specified in the statute. 12
Facts
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970
to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of copyright specifying the show's format and style of presentation.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on RPN Channel 9 an episode of It's a Date, which was produced by IXL
Productions, Inc. (IXL). On July 18, 1991, he wrote a letter to private respondent Gabriel M. Zosa, president and general manager of IXL, informing Zosa that BJPI had a
copyright to Rhoda and Me and demanding that IXL discontinue airing It's a Date.
Issue
Both public and private respondents maintain that petitioners failed to establish the existence of probable cause due to their failure to present the copyrighted master videotape
of Rhoda and Me. They contend that petitioner BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are not
covered by copyright protection under P.D. No. 49.
Ruling
The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the very nature of the subject of petitioner BJPI's copyright, the
investigating prosecutor should have the opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game shows is insufficient; the presentation of the master videotape in evidence was indispensable to the
determination of the existence of probable cause. As aptly observed by respondent Secretary of Justice:
A television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the general copyright/format of both dating game shows.
Habana v. Robles
GR Date Ponente
Jurisprudence
LIFTING OF SUBSTANTIAL PORTIONS AND EXAMPLES IN ENGLISH TEACHING BOOK CONSTITUTES COPYRIGHT INFRINGEMENT
We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the
same in her book is an infringement of petitioners' copyrights.
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. 27
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. 28
EXTENT OF INJURY IN COPYRIGHT INFRINGEMENT

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.
Hence, there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles committed. Petitioners' work as authors is the product of their long and
assiduous research and for another to represent it as her own is injury enough. In copyrighting books the purpose is to give protection to the intellectual product of an author.
This is precisely what the law on copyright protected, under Section 184.1 (b). Quotations from a published work if they are compatible with fair use and only to the extent
justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the
author, if appearing on the work, are mentioned.
Facts
Petitioners are authors and copyright owners of duly issued certificates of copyright registration covering their published works, produced through their combined resources and
efforts, entitled COLLEGE ENGLISH FOR TODAY (CET for brevity), Books 1 and 2, and WORKBOOK FOR COLLEGE FRESHMAN ENGLISH, Series 1.
Respondent Felicidad Robles and Goodwill Trading Co., Inc. are the author/publisher and distributor/seller of another published work entitled "DEVELOPING ENGLISH
PROFICIENCY" (DEP for brevity), Books 1 and 2 (1985 edition) which book was covered by copyrights issued to them.
In the course of revising their published works, petitioners scouted and looked around various bookstores to check on other textbooks dealing with the same subject matter. By
chance they came upon the book of respondent Robles and upon perusal of said book they were surprised to see that the book was strikingly similar to the contents, scheme of
presentation, illustrations and illustrative examples in their own book, CET.
Issue
(1) whether or not, despite the apparent textual, thematic and sequential similarity between DEP and CET, respondents committed no copyright infringement;
Ruling
(1) We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in
her book is an infringement of petitioners' copyrights.
Ong Ching Kian Chuan v. Court of Appeals
130360 August 15, 2001 Quisimbing, J.
Jurisprudence
INJUNCTION EMANATES FROM THE EXERCISE OF A VALID LEGAL RIGHT

To be entitled to an injunctive writ, petitioner must show, inter alia, the existence of a clear and unmistakable right and an urgent and paramount necessity for the writ to prevent
serious damage.18 From the above discussion, we find that petitioner's right has not been clearly and unmistakably demonstrated. That right is what is in dispute and has yet to
be determined. In Developers Group of Companies, Inc. vs. Court of Appeals, 219 SCRA 715, 722-723 (1993), we held that in the absence of proof of a legal right and the injury
sustained by the plaintiff, an order of the trial court granting the issuance of an injunctive writ will be set aside, for having been issued with grave abuse of discretion.
Conformably, there was no abuse of discretion by the Court of Appeals when it issued its own order to restrain the enforcement of the preliminary injunction issued by the trial
court.
Facts
Petitioner Wilson Ong Ching Kian Chuan ("Ong"), imports vermicelli from China National Cereals Oils and Foodstuffs Import and Export Corporation, based in Beijing, China,
under the firm name C.K.C. Trading. He repacks it in cellophane wrappers with a design of two-dragons and the TOWER trademark on the uppermost portion. Ong acquired a
Certificate of Copyright Registration from the National Library on June 9, 1993 on the said design.
Ong discovered that private respondent Lorenzo Tan repacked his vermicelli he imports from the same company but based in Qingdao, China in a "nearly" identical wrapper. On
September 16, 1993, Ong filed against Tan a verified complaint for infringement of copyright with damages and prayer for temporary restraining order or writ of preliminary
injunction with the Regional Trial Court in Quezon City. Ong alleged that he was the holder of a Certificate of Copyright Registration over the cellophane wrapper with the
two-dragon design, and that Tan used an identical wrapper in his business.
xxx
Private respondent, for his part, avers that petitioner has no "clear right" over the use of the copyrighted wrapper since the PAGODA trademark and label were first adopted and
used and have been duly registered by Ceroilfood Shandong not only in China but in nearly 20 countries and regions worldwide. Petitioner was not the original creator of the
label, but merely copied the design of Ceroilfood Shandong. Private respondent presented copies of the certificates of copyright registration in the name of Ceroilfood Shandong
issued by at least twenty countries and regions worldwide which although unauthenticated are, according to him, sufficient to provide a sampling of the evidence needed in the
determination of the grant of preliminary injunction.11 Private respondent alleges, that the trademark PAGODA BRAND was registered in China on October 31, 197912 while the
trademark LUNGKOW VERMICELLI WITH TWO-DRAGON DEVICE was registered on August 15, 1985.13
Issue
The issues for our determination are: Was the issuance of the writ of preliminary injunction proper? Was there grave abuse of discretion committed by the Court of Appeals when
it set aside the order of the trial court, then issued a judgment touching on the merits?
Ruling
The only issue brought before the CA involved the grave abuse of discretion allegedly committed by the trial court in granting the writ of preliminary injunction. The Court of
Appeals in declaring that the wrapper of petitioner is a copy of Ceroilfood Shandong's wrapper went beyond that issue touched on the merits of the infringement case, which
remains to be decided by the trial court.19 In our view, it was premature for the Court of Appeals to declare that the design of petitioner's wrapper is a copy of the wrapper
allegedly registered by Ceroilfood Shandong. That matter remains for decision after appropriate proceedings at the trial court.
Sambar v. Levi Strauss & Co.
GR Date Ponente
Jurisprudence
COPYRIGHT DOES NOT ADHERE TO THE FIRST TO FILE RULE

Finally, regarding the cancellation of petitioner’s copyright, private respondents deny that the trial court ruled that the arcuate design of Europress jeans was not the same as
Levi’s arcuate design jeans. On the contrary, the trial court expressly ruled that there was similarity. The cancellation of petitioner’s copyright was justified because petitioner’s
copyright can not prevail over respondents’ registration in the Principal Register of Bureau of Patents, Trademarks, and Technology Transfer. According to private respondents,
the essence of copyright registration is originality and a copied design is inherently non-copyrightable. They insist that registration does not confer originality upon a copycat
version of a prior design.
Facts
On September 28, 1987, private respondents, through a letter from their legal officer, demanded that CVS Garment Enterprises (CVSGE) desist from using their stitched arcuate
design on the Europress jeans which CVSGE advertised in the Manila Bulletin.
Atty. Benjamin Gruba, counsel of CVSGE, replied that the arcuate design on the back pockets of Europress jeans was different from the design on the back pockets of Levi’s
jeans. He further asserted that his client had a copyright on the design it was using.
Thereafter, private respondents filed a complaint against Sambar, doing business under the name and style of CVSGE. Private respondents also impleaded the Director of the
National Library. Summons was sent to Sambar in his business address at 161-B Iriga corner Retiro, La Loma, Quezon City.
Issue
Did petitioner infringe on private respondents’ arcuate design?
Ruling
On the contrary, the trial court expressly ruled that there was similarity.
NBI - Microsoft Corporation v. Hwang
147043 June 21, 2005 Carpio, J.
Jurisprudence
INFRINGEMENT AND PIRACY ARE THE SAME

We held in Columbia Pictures, Inc. v. Court of Appeals:42
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. (Emphasis supplied)
AUTHORIZED REPLICATOR VS DISTRIBUTOR

The Agreement defines an authorized replicator as "a third party approved by [Microsoft] which may reproduce and manufacture [Microsoft] Product[s] for [Beltron]
xxx."52 An authorized distributor, on the other hand, is a "third party approved by [Microsoft] from which [Beltron] may purchase MED53 Product."54 Being a mere
reproducer/installer of one Microsoft software copy on each customer’s hard disk or ROM, Beltron could only have acquired the hundreds of Microsoft CD-ROMs
found in respondents’ possession from Microsoft distributors or replicators.
Facts
In May 1993, Microsoft and Beltron entered into a Licensing Agreement ("Agreement"). Under Section 2(a) of the Agreement, as amended in January 1994, Microsoft authorized
Beltron, for a fee, to:
(i) xxx reproduce and install no more than one (1) copy of [Microsoft] software on each Customer System hard disk or Read Only Memory ("ROM"); [and]
xxx
Afterwards, Microsoft learned that respondents were illegally copying and selling Microsoft software. Consequently, Microsoft, through its Philippine agent,7 hired the services of
Pinkerton Consulting Services ("PCS"), a private investigative firm. Microsoft also sought the assistance of the National Bureau of Investigation ("NBI"). On 10 November 1995,
PCS employee John Benedic8 Sacriz ("Sacriz") and NBI agent Dominador Samiano, Jr. ("Samiano"), posing as representatives of a computer shop,9 bought computer
hardware (central processing unit ("CPU") and computer monitor) and software (12 computer disks ("CDs") in read-only memory ("ROM") format) from respondents. The CPU
contained pre-installed10 Microsoft Windows 3.1 and MS-DOS software. The 12 CD-ROMs, encased in plastic containers with Microsoft packaging, also contained Microsoft
software.11 At least two of the CD-ROMs were "installers," so-called because they contain several software (Microsoft only or both Microsoft and non-Microsoft).12 Sacriz and
Samiano were not given the Microsoft end-user license agreements, user’s manuals, registration cards or certificates of authenticity for the articles they purchased. The receipt
issued to Sacriz and Samiano for the CPU and monitor bore the heading "T.M.T.C. (PHILS.) INC. BELTRON COMPUTER."13 The receipt for the 12 CD-ROMs did not indicate
its source although the name "Gerlie" appears below the entry "delivered by."14
Issue
The question now, is whether the products were unauthorized because TMTC has no license to sell Microsoft products, or is it unauthorized because R.R. Donnelley has no
authority to sell said products here in the Philippines.
Ruling
Furthermore, some of the counterfeit CD-ROMs bought from respondents were "installer" CD-ROMs containing Microsoft software only or both Microsoft and non-Microsoft
software. These articles are counterfeit per se because Microsoft does not (and could not have authorized anyone to) produce such CD-ROMs. The copying of the genuine
Microsoft software to produce these fake CD-ROMs and their distribution are illegal even if the copier or distributor is a Microsoft licensee. As far as these installer CD-ROMs are
concerned, the Agreement (and the alleged question on the validity of its termination) is immaterial to the determination of respondents’ liability for copyright infringement and
unfair competition.
Manly Sportwear Manufacturing Inc. v. Dadodette Enterprises
165306 September 20, 2005 Ynares-Santiago, J.
Jurisprudence
SEARCH WARRANT MUST EMANATE FROM FINDING THAT PRODUCTS ARE ESTABLISHED COUNTERFEITS - COPYRIGHT CERTIFICATE AS PRIMA FACIE
EVIDENCE
Moreover, the trial court was acting within bounds when it ruled, in an ancillary proceeding, that the copyrighted products of petitioner are not original creations. This is because
in the determination of the existence of probable cause for the issuance or quashal of a warrant, it is inevitable that the court may touch on issues properly threshed out in a
regular proceeding. In so doing, it does not usurp the power of, much less preclude, the court from making a final judicial determination of the issues in a full-blown trial.
Consequently, MANLY’s assertion that the trial court’s order quashing the warrant preempted the finding of the intellectual property court has no legal basis.
As pertinently held in Solid Triangle Sales Corp. v. Sheriff, RTC, Q.C., Br. 93:13
When the court, in determining probable cause for issuing or quashing a search warrant, finds that no offense has been committed, it does not interfere with or encroach upon
the proceedings in the preliminary investigation. The court does not oblige the investigating officer not to file an information for the court’s ruling that no crime exists is only for
purposes of issuing or quashing the warrant. This does not, as petitioners would like to believe, constitute a usurpation of the executive function. Indeed, to shirk from this duty
would amount to an abdication of a constitutional obligation.
xxx
Further, the copyright certificates issued in favor of MANLY constitute merely prima facie evidence of validity and ownership. However, no presumption of validity is created
where other evidence exist that may cast doubt on the copyright validity. Hence, where there is sufficient proof that the copyrighted products are not original creations but are
readily available in the market under various brands, as in this case, validity and originality will not be presumed and the trial court may properly quash the issued warrant for
lack of probable cause.
Facts
On March 14, 2003, Special Investigator Eliezer P. Salcedo of the National Bureau of Investigation (NBI) applied for a search warrant before the Regional Trial Court (RTC) of
Quezon City, based on the information that Dadodette Enterprises and/or Hermes Sports Center were in possession of goods, the copyright of which belonged to Manly
Sportswear Mfg., Inc. (MANLY).5
After finding reasonable grounds that a violation of Sections 172 and 217 of Republic Act (RA) No. 82936 has been committed, Judge Estrella T. Estrada of RTC-Quezon City,
Branch 83, issued on March 17, 2003 Search Warrant No. 4044(03).7
Respondents thereafter moved to quash and annul the search warrant contending that the same is invalid since the requisites for its issuance have not been complied with.
They insisted that the sporting goods manufactured by and/or registered in the name of MANLY are ordinary and common hence, not among the classes of work protected
under Section 172 of RA 8293.
Issue
Hence it filed a petition for certiorari10 before the Court of Appeals which was denied for lack of merit. The appellate court found that the trial court correctly granted the motion
to quash and that its ruling in the ancillary proceeding did not preempt the findings of the intellectual property court as it did not resolve with finality the status or character of the
seized items.
Ruling
Besides, no copyright accrues in favor of MANLY despite issuance of the certificates of registration and deposit16 pursuant to Section 2, Rule 7 of the Copyrights Safeguards
and Regulations17 which states:
Sec. 2 Effects of Registration and Deposit of Work. The registration and deposit of the work is purely for recording the date of registration and deposit of the work and shall not
be conclusive as to copyright ownership or the term of the copyrights or the rights of the copyright owner, including neighboring rights.
At most, the certificates of registration and deposit issued by the National Library and the Supreme Court Library serve merely as a notice of recording and registration of the
work but do not confer any right or title upon the registered copyright owner or automatically put his work under the protective mantle of the copyright law. It is not a conclusive
proof of copyright ownership. As it is, non-registration and deposit of the work within the prescribed period only makes the copyright owner liable to pay a fine.18
ABS-CBN Broadcasting Corporation v. Philippine Multi-Media System Inc.
175769 January 19, 2009 Ynares-Santiago, J.
Jurisprudence
BROADCASTING VS REBROADCASTING
Section 202.7 of the IP Code defines broadcasting as “the transmission by wireless means for the public reception of sounds or of images or of representations
thereof; such transmission by satellite is also ‘broadcasting’ where the means for decrypting are provided to the public by the broadcasting organization or with its
consent.”
On the other hand, rebroadcasting as defined in Article 3(g) of the International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of which the Republic of the Philippines is a signatory, 21 is “the simultaneous
broadcasting by one broadcasting organization of the broadcast of another broadcasting organization.”
PMSI IS NOT REBROADCASTING

The Director-General of the IPO correctly found that PMSI is not engaged in rebroadcasting and thus cannot be considered to have infringed ABS-CBN’s broadcasting rights
and copyright, thus:
ELEMENTS OF REBROADCASTING
The elements of such category are as follows:
1. There is transmission of sounds or images or of representations thereof;
2. The transmission is through satellite;
3. The transmission is for public reception; and
4. The means for decrypting are provided to the public by the broadcasting organization or with its consent.
It is only the presence of all the above elements can a determination that the DTH is broadcasting and consequently, rebroadcasting Appellee’s signals in violation of Sections
211 and 177 of the IP Code, may be arrived at.
CABLE RETRANSMITTING OF SIGNAL OF FREE CHANNELS IS NOT REBROADCASTING CONSTITUTING COPYRIGHT INFRINGEMENT
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers receive in its unaltered form. PMSI does not produce, select,
or determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin or author of such programs. Insofar as Channels 2
and 23 are concerned, PMSI merely retransmits the same in accordance with Memorandum Circular 04-08-88. With regard to its premium channels, it buys the
channels from content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does not perform the functions of a broadcasting organization; thus, it
cannot be said that it is engaged in rebroadcasting Channels 2 and 23.
xxx
Thus, while the Rome Convention gives broadcasting organizations the right to authorize or prohibit the rebroadcasting of its broadcast, however, this protection
does not extend to cable retransmission. The retransmission of ABS-CBN’s signals by PMSI – which functions essentially as a cable television – does not therefore
constitute rebroadcasting in violation of the former’s intellectual property rights under the IP Code.
xxx
The carriage of ABS-CBN’s signals by virtue of the must-carry rule in Memorandum Circular No. 04-08-88 is under the direction and control of the government
though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications and broadcast services/facilities in the
Philippines.26 The imposition of the must-carry rule is within the NTC’s power to promulgate rules and regulations, as public safety and interest may require, to
encourage a larger and more effective use of communications, radio and television broadcasting facilities, and to maintain effective competition among private
entities in these activities whenever the Commission finds it reasonably feasible.27
Facts
Petitioner ABS-CBN Broadcasting Corporation (ABS-CBN) is licensed under the laws of the Republic of the Philippines to engage in television and radio broadcasting.4 It
broadcasts television programs by wireless means to Metro Manila and nearby provinces, and by satellite to provincial stations through Channel 2 on Very High Frequency
(VHF) and Channel 23 on Ultra High Frequency (UHF). The programs aired over Channels 2 and 23 are either produced by ABS-CBN or purchased from or licensed by other
producers.
ABS-CBN also owns regional television stations which pattern their programming in accordance with perceived demands of the region. Thus, television programs shown in
Metro Manila and nearby provinces are not necessarily shown in other provinces.
Respondent Philippine Multi-Media System, Inc. (PMSI) is the operator of Dream Broadcasting System. It delivers digital direct-to-home (DTH) television via satellite to its
subscribers all over the Philippines. Herein individual respondents, Cesar G. Reyes, Francis Chua, Manuel F. Abellada, Raul B. De Mesa, and Aloysius M. Colayco, are
members of PMSI’s Board of Directors.
xxx
However, on April 25, 2001,6 ABS-CBN demanded for PMSI to cease and desist from rebroadcasting Channels 2 and 23. On April 27, 2001,7 PMSI replied that the
rebroadcasting was in accordance with the authority granted it by NTC and its obligation under NTC Memorandum Circular No. 4-08-88,8 Section 6.2 of which requires all cable
television system operators operating in a community within Grade “A” or “B” contours to carry the television signals of the authorized television broadcast stations.9
Issue
ABS-CBN contends that PMSI’s unauthorized rebroadcasting of Channels 2 and 23 is an infringement of its broadcasting rights and copyright under the Intellectual Property
Code (IP Code);18that Memorandum Circular No. 04-08-88 excludes DTH satellite television operators; that the Court of Appeals’ interpretation of the must-carry rule violates
Section 9 of Article III19 of the Constitution because it allows the taking of property for public use without payment of just compensation; that the Court of Appeals erred in dismis
Ruling
After a careful review of the facts and records of this case, we affirm the findings of the Director-General of the IPO and the Court of Appeals.
There is no merit in ABS-CBN’s contention that PMSI violated its broadcaster’s rights under Section 211 of the IP Code which provides in part:
xxx
In the case at hand, Appellant is not the origin nor does it claim to be the origin of the programs broadcasted by the Appellee. Appellant did not make and transmit on its own but
merely carried the existing signals of the Appellee. When Appellant’s subscribers view Appellee’s programs in Channels 2 and 23, they know that the origin thereof was the
Appellee.
ABS-CBN Corporation v. Gozon
195956 March 11, 2015 Leonen, J.
Jurisprudence
FOOTAGE IS COPYRIGHTABLE, NEWS EVENT IS NOT

To be clear, it is the event itself or the arrival of Angelo dela Cruz which is not copyrightable because that is the newsworthy event. However, any footage created
from the event itself, in this case the arrival of Angelo dela Cruz, are intellectual creations which are copyrightable. Thus, the footage created by ABS-CBN during
the arrival of Angelo dela Cruz, which includes the statements of Dindo Amparo, are copyrightable and protected by the laws on copyright.77
xxx
It is true that under Section 175 of the Intellectual Property Code, "news of the day and other miscellaneous facts having the character of mere items of press
information" are considered unprotected subject matter.83 However, the Code does not state that expression of the news of the day, particularly when it underwent
a creative process, is not entitled to protection.
FAIR USE AND THE FOUR FACTOR TEST

This court defined fair use as "aprivilege 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:
a. The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
d. The effect of the use upon the potential market for or value of the copyrighted work.
INFRINGEMENT IS MALUM PROHIBITUM HENCE GOOD FAITH IS IMMATERIAL

Infringement under the Intellectual Property Code is malum prohibitum. The Intellectual Property Code is a special law. Copyright is a statutory creation:
Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing right
regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the statute.128
The general rule is that acts punished under a special law are malum prohibitum.129 "An act which is declared malum prohibitum, malice or criminal intent is
completely immaterial."130
Facts
The controversy arose from GMA-7’s news coverage on the homecoming of Filipino overseas worker and hostage victim Angelo dela Cruz on July 22, 2004. As summarized by
the Court of Appeals:
Overseas Filipino worker Angelo dela Cruz was kidnapped by Iraqi militants and as a condition for his release, a demand was made for the withdrawal of Filipino troops in Iraq.
After negotiations, he was released by his captors and was scheduled to return to the country in the afternoon of 22 July 2004. Occasioned by said homecoming and the public
interest it generated, both . . . GMA Network, Inc. . . . and [petitioner] made their respective broadcasts and coverage of the live event.7
ABS-CBN "conducted live audio-video coverage of and broadcasted the arrival of Angelo dela Cruz at the Ninoy Aquino International Airport (NAIA) and the subsequent press
conference."8 ABS-CBN allowed Reuters Television Service (Reuters) to air the footages it had taken earlier under a special embargo agreement.9
ABS-CBN alleged that under the special embargo agreement, any of the footages it took would be for the "use of Reuter’s international subscribers only, and shall be considered
and treated by Reuters under ‘embargo’ against use by other subscribers in the Philippines. . . . [N]o other Philippine subscriber of Reuters would be allowed to use ABS-CBN
footage without the latter’s consent."10
GMA-7, to which Gozon, Duavit, Jr., Flores, Soho, Dela Peña-Reyes, and Manalastas are connected, "assigned and stationed news reporters and technical men at the NAIA for
its live broadcast and non-live news coverage of the arrival of dela Cruz."11 GMA-7 subscribes to both Reuters and Cable News Network (CNN). It received a live video feed of
the coverage of Angelo dela Cruz’s arrival from Reuters.12
GMA-7 immediately carried the live news feed in its program "Flash Report," together with its live broadcast.13 Allegedly, GMA-7 did not receive any notice or was not aware
that Reuters was airing footages of ABS-CBN.14 GMA-7’s news control room staff saw neither the "No Access Philippines" notice nor a notice that the video feed was under
embargo in favor of ABS-CBN.15
Issue
The main issue in this case is whether there is probable cause to charge respondents with infringement under Republic Act No. 8293, otherwise known as the Intellectual
Property Code. The resolution of this issue requires clarification of the concept of "copyrightable material" in relation to material that is rebroadcast live as a news story. We are
also asked to rule on whether criminal prosecution for infringement of copyrightable material, such as live rebroadcast, can be negated by good faith.
Ruling
In this case, however, respondents admitted that the material under review — which is the subject of the controversy — is an exact copy of the original. Respondents did not
subject ABS-CBN’s footage to any editing of their own. The news footage did not undergo any transformation where there is a need to track elements of the original.
xxx
Surely, private respondent has a copyright of its news coverage. Seemingly, for airing said video feed, petitioner GMA is liable under the provisions of the Intellectual Property
Code, which was enacted purposely to protect copyright owners from infringement.108
News as expressed in a video footage is entitled to copyright protection. Broadcasting organizations have not only copyright on but also neighboring rights over their broadcasts.
Copyrightability of a work is different from fair use of a work for purposes of news reporting.
Olano v. Lim Eng Co
195835 March 14, 2016 Reyes, JR., J.
Jurisprudence
ELEMENTS OF COPYRIGHT INFRINGEMENT

Copyright infringement is thus committed by any person who shall use original literary or artistic works, or derivative works, without the copyright owner's consent in such a
manner as to violate the foregoing copy and economic rights. For a claim of copyright infringement to prevail, the evidence on record must demonstrate: (1) ownership of a
validly copyrighted material by the complainant; and (2) infringement of the copyright by the respondent.50
UTILITY OBJECTS NOT COVERED BY COPYRIGHTABILITY

From the foregoing description, it is clear that the hatch doors were not artistic works within the meaning of copyright laws. A copyrightable work refers to literary
and artistic works defined as original intellectual creations in the literary and artistic domain.63
A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an opening that resembles a window equipped with an escape for use in
case of fire or emergency.64 It is thus by nature, functional and utilitarian serving as egress access during emergency. It is not primarily an artistic creation but
rather an object of utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information" is
excluded from copyright eligibility.65
ART THAT CAN BE SEPARATED FROM UTILITY MAY BE COPYRIGHTABLE

From the foregoing description, it is clear that the hatch doors were not artistic works within the meaning of copyright laws. A copyrightable work refers to literary
and artistic works defined as original intellectual creations in the literary and artistic domain.63
A hatch door, by its nature is an object of utility. It is defined as a small door, small gate or an opening that resembles a window equipped with an escape for use in
case of fire or emergency.64 It is thus by nature, functional and utilitarian serving as egress access during emergency. It is not primarily an artistic creation but
rather an object of utility designed to have aesthetic appeal. It is intrinsically a useful article, which, as a whole, is not eligible for copyright.
A "useful article" defined as an article "having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information" is
excluded from copyright eligibility.65
Facts
Sometime in 2002, LEC was invited by the architects of the Manansala Project (Project), a high-end residential building in Rockwell Center, Makati City, to submit
design/drawings and specifications for interior and exterior hatch doors. LEC complied by submitting on July 16, 2002, shop plans/drawings, including the diskette therefor,
embodying the designs and specifications required for the metal hatch doors.8
After a series of consultations and revisions, the final shop plans/drawings were submitted by LEC on January 15, 2004 and thereafter copied and transferred to the title block of
Ski-First Balfour Joint Venture (SKI-FB), the Project's contractor, and then stamped approved for construction on February 3, 2004.9
LEC was thereafter subcontracted by SKI-FB, to manufacture and install interior and exterior hatch doors for the 7th to 22nd floors of the Project based on the final shop
plans/drawings.10
Sometime thereafter, LEC learned that Metrotech was also subcontracted to install interior and exterior hatch doors for the Project's 23rd to 41st floors.11
On June 24, 2004, LEC demanded Metrotech to cease from infringing its intellectual property rights. Metrotech, however, insisted that no copyright infringement was committed
because the hatch doors it manufactured were patterned in accordance with the drawings provided by SKI-FB.12
Issue
It may be observed that in the Resolution dated August 18, 2005 issued by the investigating prosecutor, the primary issue was whether the hatch doors of LEC fall within
copyrightable works.
Ruling
Since the hatch doors cannot be considered as either illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or
science, to be properly classified as a copyrightable class "I" work, what was copyrighted were their sketches/drawings only, and not the actual hatch doors themselves. To
constitute infringement, the usurper must have copied or appropriated the original work of an author or copyright proprietor, absent copying, there can be no infringement of
copyright.55
xxx
In the present case, LEC's hatch doors bore no design elements that are physically and conceptually separable, independent and distinguishable from the hatch door itself. The
allegedly distinct set of hinges and distinct jamb, were related and necessary hence, not physically or conceptually separable from the hatch door's utilitarian function as an
apparatus for emergency egress. Without them, the hatch door will not function.
Filipino Society of Composers, Authors and Publishers Inc. v. Anrey Inc.
233918 August 9, 2022 Lazaro-Javier, J.
Jurisprudence
ASSIGNEE OF COPYRIGHT HAS STANDING IN AN INFRINGEMENT SUIT

There should really be no question as to FILSCAP's authority to sue on behalf of its members. From the foregoing, it is evident that the first element of copyright infringement
has been satisfied: that FILSCAP has the authority to collect royalties and/or license fees and sue for copyright infringement. As an assignee of copyright, it is entitled to all the
rights and remedies which the assignor had with respect to the copyright.
DOCTRINE OF MULTIPLE PERFORMANCE

This doctrine provides that a radio ( or television) transmission or broadcast can create multiple performances at once. The doctrine was first determined in Buck v.
Jewell-LaSalle Realty (Jewell) wherein the U.S. Supreme Court noted that the playing of a record is "a performance under the Copyright Act of 1909," and that "the
reproduction of the radio waves into audible sound waves is also a performance." Ultimately, the U.S. Supreme Court in Jewell concluded that the radio station.
owner and the hotel operator simultaneously performed the works in question. It cited that it is "the duty of the. courts to give full protection to the monopoly of
public performance for profit which Congress has secured to the composer."
PLAYING RADIO BROADCAST IN LOUDSPEAKER FOR PUBLIC CONSTITUTES COPYRIGHT INFRINGEMENT

The act of playing radio broadcasts containing sound recordings through the use of loudspeakers amounts to an unauthorized communication of such copyrighted
music to the public. This falls within the definition of Section 171.3 of RA 82931 and in relation to performances and sound recordings, Section 202.9 of the same
law defines "communication to the public."2
COMMUNICATING TO PUBLIC VS PUBLIC PERFORMANCE

Here, the patrons of Anrey's restaurant were able to listen to and perhaps enjoy the radio broadcast of sound recordings, What Anrey did was to make the radio broadcast of the
sound recordings audible to its restaurant's clientele, but not the sound recordings themselves. To repeat, Anrey did not render the sound recordings themselves within the
hearing of the restaurant patrons. Anrey did not have possession, much less, control of the sound recordings. What it did was merely to turn on the radio and allow the broadcast
to be heard within the premises of its restaurant.
On the other hand, as defined, the public performance of the work pertains to sound recordings, those objects in which sounds were fixed or recorded. Who made the sound
recordings audible to the restaurant's patrons was the radio station. It was the radio station that made possible the sound recordings to be within the hearing of the patrons. The
radio station was the entity which exercised the public performance of the work and the sound recordings; not Anrey.
Too, Anrey did not exercise the right to communicate the work or the sound recordings to the public. It was not the one that transmitted to the public, by any medium, the .
representations of sounds fixed in sound recordings. The radio station was the entity possessing or controlling the sound recordings and the one which transmitted them to the
public. Anrey was also not responsible for making the sound recordings available to the public in such a way by which members of the public may access these works from a
place and time individually chosen by them. The patrons of Anrey's restaurant could not have accessed the sound recordings when it turned on the radio and left it switched on
for their listening pleasure. Hence, Anrey could not have communicated the sound recordings to the public.
HOMESTYLE EXCEPTION IN COPYRIGHT INFRINGEMENT
Here, copyright should be limited where to do otherwise would be oppressive to the marginalized and underrepresented, those who cannot afford beyond what the
ubiquitous radio could afford. The homestyle exemption in the United States could be adapted to help us define what private means in Section 184(l)(a) of RA 8293.
This exemption has been explained thus: The elements of Section 110(5) that Edison must satisfy are (1) that it uses a single receiving apparatus in its stores; (2)
that the receiving apparatus is of a kind commonly used in private homes; and (3) that Edison does not further transmit or broadcast to the public the transmission
it receives (the "second transmission" restriction). The Court finds that Edison has satisfied each of these elements through its Radio Policy.
The first element is satisfied ih that each store that Edison owns and operates only uses one radio receiver at a time. The Court finds no merit in BMI's argument
that the Court should focus on the number of stores, and thereby the total number of radios that Edison operates nationwide, rather than on the number of radios
per store. The homestyle exception makes no sense unless it is applied on a store-by-store basis, to see whether each store is operating one set of simple radio
equipment without extensive augmentation. It does not matter whether the owner repeats this compliance process for two or more stores.
Edison also satisfies the second factor, in that its Radio Policy requires the use of simple, low grade radio-only receivers, only two speakers may be attached to a
radio receiver, and only portable box speakers are allowed. Edison's strict enforcement of its Radio Policy ensures that the abuses reported in other cases do not
occur in its stores; abuses such as where high powered equipment, or equipment attached to large numbers of speakers, or equipment augmented by voice-over
intercom systems and the like were passed off as "homestyle" radio systems. See, e.g., Plaintiffs Reply and Opposition Memorandum, Appendix A; National
Football League, supra, 792 F.2d at 731 (citing cases).
xxx
Lastly, the Court finds that Edison has complied with the "second transmission" restriction of the homestyle exception. What this restriction means is that the
homestyle operator may not rebroadcast or secondarily broadcast a radio transmission to the public without liability. A simple example of conduct that would
violate this restriction is where the operator tapes a radio broadcast in order to play it later, with or without editing or augmentation. Certain comis have declared
that other, less well defined conduct violates the restriction, such as where the speakers are so far from the receiver, or are remotely placed in a room different from
the receiver, that the playing of the broadcast through the remote speakers constitutes a second transmission to the public. See Claire's Boutiques, supra, 754 F.
Supp 1332, fn. 17 (citing cases). The Court doubts the validity of an analysis of the distancing of the speakers in various stores, but in any case finds that Edison's
policy to place the two speakers no more than fifteen feet from the receiver is well within the range of any modest homestyle setup, and does not violate the second
transmission restriction. 6
Facts
These rights, however, are being challenged by respondent Anrey, Inc. (Anrey) when they were assessed by FILSCAP to pay annual license fees for the public exhibition of the
copyrighted works ofits members. The assessment came after a representative of FILSCAP, Ms. Ivy Labayne, conducted several days (between the months of July and
September 2008) of monitoring over the chain of restaurants owned by Anrey in Baguio City.
FILSCAP sent several letters to the establishments concerned, informing them that an unauthorized public performance of copyright music amounts to infringement and urging
them to secure licenses from FILSCAP and avoid prosecution. These demands fell on deaf ears, thus, FILSCAP filed a Complaint for Copyright Infringement against Anrey
before the Regional Trial Court (RTC) in Baguio City, asking the court to award the following: a)r'l 8,900.00 as compensatory damages; b) r'300,000.00 as nominal damages; c)
r'l00,000.00 as exemplary damages; and d) r'S0,000.00 as attorney's fees and litigation expenses.
In its Answer, Anrey denied playing any copyrighted music within its restaurants. It claimed that the restaurants it had been operating randomly and passively sounded off
whatever was already being broadcasted on the radio their individual store was tuned in. In the alternative, Anrey argued that assuming it was sounding off copyrighted music
inside its restaurants, the radio station had already paid the corresponding royalties, thus, FILSCAP would be recovering twice: from the station, and from it, simply because it
tuned in on a broadcast intended to be heard by the pub]ic. Anrey maintained as well that even if the reception were to be considered a performance, this act would not qualify
as a public performance since the broadcast was played for the benefit of its staff and not for its customers.
Issue
The genuine issue is one.of law, i.e., whether the reception of a public radio station's broadcast of music and the passive playing of this music via public radio broadcast and
reception as background music in a restaurant owned by Anrey amounts to a violation of Section 177.6 of RA 8293, or the right of public performance of the work of the
copyright owner or the latter's assignee FILS CAP.
Ruling
Because there was no public perfonnance or communication to the public of the sound recordings which Anrey's restaurant patrons heard, we cannot conclude that there was
infringement of the rights assigned to FILSCAP or that the latter is entitled to damages.

2024 AUSL Last Minute Tips - Finals in Intellectual Property Law under Bernie Guerrero

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Macaraeg, Paul John; 2024 : Highlighted core concepts in Yellow

Summary of RA 8293, as amended

Elements ORIGINAL WORKS

SEC. 184. Limitations on Copyright. -

177.1. Reproduction of the work or substantial portion of the work;

177.6. Public performance of the work; and

Optional Licence Elements

TRADE SECRETS ARE PRIVILEGED INFORMATION NOT SUBJECT TO COMPULSORY DISCLOSURE

DEFINITION OF TRADE SECRET

TEST OF TRADE SECRET

INGREDIENTS ARE TRADE SECRET

INVOKING COPYRIGHT NEED NOT BUSINESSES LICENSED

xxx xxx xxx

SUBSTANTIAL SIMILARITY IS THE ESSENCE OF COPYRIGHT INFRINGEMENT

FORMAT OF A SHOW IS NOT COPYRIGHTABLE

EXTENT OF INJURY IN COPYRIGHT INFRINGEMENT

INJUNCTION EMANATES FROM THE EXERCISE OF A VALID LEGAL RIGHT

COPYRIGHT DOES NOT ADHERE TO THE FIRST TO FILE RULE

Did petitioner infringe on private respondents’ arcuate design?

INFRINGEMENT AND PIRACY ARE THE SAME

AUTHORIZED REPLICATOR VS DISTRIBUTOR

PMSI IS NOT REBROADCASTING

1. There is transmission of sounds or images or of representations thereof;

2. The transmission is through satellite;

3. The transmission is for public reception; and

FOOTAGE IS COPYRIGHTABLE, NEWS EVENT IS NOT

FAIR USE AND THE FOUR FACTOR TEST

b. The nature of the copyrighted work;

INFRINGEMENT IS MALUM PROHIBITUM HENCE GOOD FAITH IS IMMATERIAL

ELEMENTS OF COPYRIGHT INFRINGEMENT

UTILITY OBJECTS NOT COVERED BY COPYRIGHTABILITY

ART THAT CAN BE SEPARATED FROM UTILITY MAY BE COPYRIGHTABLE

ASSIGNEE OF COPYRIGHT HAS STANDING IN AN INFRINGEMENT SUIT

DOCTRINE OF MULTIPLE PERFORMANCE

PLAYING RADIO BROADCAST IN LOUDSPEAKER FOR PUBLIC CONSTITUTES COPYRIGHT INFRINGEMENT

COMMUNICATING TO PUBLIC VS PUBLIC PERFORMANCE

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