LIP: Session 1 1

INTELLECTUAL PROPERTY LAW

Session 1

! IP IN GENERAL
Art. 712. Ownership is acquired by occupation and by intellectual
creation.
Ownership and other real rights over property are acquired and
transmitted by law, by donation, by estate and intestate succession,
and in consequence of certain contracts, by tradition.
They may also be acquired by means of prescription.
Title II. - INTELLECTUAL CREATION
Art. 721. By intellectual creation, the following persons acquire
ownership:
(1) The author with regard to his literary, dramatic, historical, legal,
philosophical, scientific or other work;
(2) The composer; as to his musical composition;
(3) The painter, sculptor, or other artist, with respect to the
product of his art;
(4) The scientist or technologist or any other person with regard to
his discovery or invention. (n)
Art. 722. The author and the composer, mentioned in Nos. 1 and 2 of
the preceding article, shall have the ownership of their creations even
before the publication of the same.
Once their works are published, their rights are governed by
the Copyright laws.
The painter, sculptor or other artist shall have dominion over the
product of his art even before it is copyrighted.
The scientist or technologist has the ownership of his discovery or
invention even before it is patented. (n)
Art. 723. Letters and other private communications in writing are
owned by the person to whom they are addressed and
delivered, but they cannot be published or disseminated without the
consent of the writer or his heirs.
However, the court may authorize their publication or dissemination if
the public good or the interest of justice so requires. (n)
Art. 724. Special laws govern copyright and patent.
UNDERSTANDING COPYRIGHT AND RELATED RIGHTS
WIPO (World Intellectual Property Organization)
Intellectual property refers broadly to the creations of the human
mind. Intellectual property rights protect the interests of creators by
giving them property rights over their creations.
Subject matter protected by intellectual property rights:
literary,
artistic and scientific works;
performances of performing artists,
phonograms, and broadcasts;
inventions in all fields of human endeavor;
scientific discoveries; industrial designs;
trademarks, service marks, and commercial names and
designations;
protection against unfair competition; and
all other rights resulting from intellectual activity in the
industrial, scientific, literary or artistic fields.
The property is not in those copies but in the information or knowledge
reflected in them.
2 MAIN REASONS (Protect intellectual property)
1. give statutory expression to the moral and economic rights
of creators in their creations and to the rights of the public in
accessing those creations
2. promote creativity, and the dissemination and application of
its results, and to encourage fair trade, which would
contribute to economic and social development.
2 BRANCHES OF ONTELLECTUAL PROPERTY
INDUSTRIAL PROPERTY COPYRIGHT
These include patents to protect
inventions, and industrial designs,
which are aesthetic creations
determining the appearance of
industrial products. Industrial
property also covers trademarks,
service marks, layout-designs of
integrated circuits, commercial
names and designations, as well
as geographical indications, and
protection against
unfair competition.
Relates to artistic creations, such
as books, music, paintings and
sculptures, films and technology-
based works such as computer
programs and electronic
databases.
It thus underlines the fact,
recognized in most laws, that the
author has certain specific rights
in his creation which only he can
exercise (such as the right to
prevent a distorted
reproduction). Other rights (such
as the right to make copies) can
be exercised by other persons,
for example, a publisher who has
obtained a license from the
author
Inventions - protection of
inventions under patent law does
not require that the invention be
represented in a physical
embodiment.
There must be an official
notification that a specific, fully
described invention is the
property of a specific owner for a
fixed number of years; in other
words, the protected invention
must be disclosed publicly in an
official register.

Copyright law protects only the
form of expression of ideas,
not the ideas themselves. The
creativity protected by copyright
law is creativity in the choice and
arrangement of words, musical
notes, colors and shapes. So
copyright law protects the owner
of property rights against those
who copy or otherwise take and
use the form in which the original
work was expressed by the
author.
Eg.
Computer programs (not on the
list)
Multimedia productions



LIP: Session 1 2
2 TYPES OF RIGHTS:
I. Economic rights allow the rights owner to derive
financial reward from the use of his works by others.
The rights owner of a work can prohibit or authorize:
its reproduction in various forms, such as printed
publications or sound recordings;
the distribution of copies;
its public performance;
its broadcasting or other communication to the public;
its translation into other languages;
its adaptation, such as a novel into a screenplay.
CONTROL:
1. Reproduction
ALTHOUGH: Certain forms of reproduction of a work are exceptions to
the general rule, because they do not require the authorization of the
rights owner. These exceptions are known as limitations on rights

2. Distribution
3. Rental
4. Importation
Appropriate balance between the rights of the author to control the
integrity of the work by authorizing modifications, and the rights of
users to make changes which seem to be part of a normal use of
works in digital format.
II. Moral rights allow the author to take certain actions
to preserve the personal link between himself and
the work.
The Berne Convention (Article 6bbis) requires Member countries to
grant to authors:
(i) the right to claim authorship of the work, (sometimes called the
right of paternity); and
(ii) the right to object to any distortion or modification of the work, or
other derogatory action in relation to the work, which would be
prejudicial to the authors honor or reputation, (sometimes called the
right of integrity).
- Requires them to be independent of the authors economic
rights, and to remain with the author even after he has
transferred his economic rights
LIMITATIONS ON RIGHTS
1. CERTAIN CATEGORIES OF WORK:
- works are excluded from protection if they are not fixed in
tangible form.
- a work of choreography

2. PARTICULAR ACTS OF EXPLOITATIONS
- Be carried out without authorization.
- There are two basic types of limitations in this category:
(a) free use, which carries no obligation to compensate
the rights owner for the use of the work without
authorization; and
i. quoting from a protected work, provided that
the source of the quotation and the name of
the author is mentioned, and that the extent
of the quotation is compatible with fair
practice;
ii. use of works by way of illustration for
teaching purposes; and
iii. use of works for the purpose of news
reporting.
" Member States may provide for free reproduction
in special cases where the acts do not conflict with
normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of
the author.
" fair use or fair dealing. This allows use of works
without the authorization of the rights owner,
taking into account factors such as the nature and
purpose of the use, including whether it is for
commercial purposes; the nature of the work
used; the amount of the work used in relation to
the work as a whole; and the likely effect of the
use on the potential commercial value of the work.

(b) non-voluntary licenses, which do require that
compensation be paid to the rights owner for non-
authorized exploitation
" created in circumstances where a new technology
for the dissemination of works to the public had
emerged, and where the national legislator feared
that rights owners would prevent the
development of the new technology by refusing
to authorize use of works
DURATION OF COPYRIGHT
Copyright does not continue indefinitely. The law provides for a period
of time during which the rights of the copyright owner exist. The
period or duration of copyright begins from the moment when the
work has been created, or, under some national laws, when it has
been expressed in a tangible form. It continues, in general, until some
time after the death of the author.
The purpose of this provision in the law is to enable the authors
successors to benefit economically from exploitation of the work after
the authors death.
EG: 70 or 50 years after death of the author.
OWNERSHIP, EXERCISE AND TRANSFER OF COPYRIGHT
- When a work is created by an author who is employed for
the purpose of creating that work, then the employer, not
the author, is the owner of the copyright in the work.
- Authors may sell the rights to their works to individuals or
companies best able to market the works, in return for
payment.
- Royalties payment
- Transfers of copyright may take one of two forms:
assignments and licenses.
a. ASSIGNMENT - f all rights are assigned, the
person to whom the rights were assigned
becomes the new owner of copyright
b. LICENSING - owner of the copyright retains
ownership but authorizes a third party to
carry out certain acts covered by his
economic rights, generally for a specific
period of time and for a specific purpose.
(Not carry out economic rights)
- A rights owner may also abandon the exercise of the
rights, wholly or partially.
ENFORCEMENT OF RIGHTS
1. The first concerns advances in the technological means for
creation and use (both authorized and unauthorized) of
protected material. Digital technology in particular makes it
LIP: Session 1 3
easy to transmit and make perfect copies of any information
existing in digital form, including copyright-protected works.
2. The second factor is the increasing economic importance in
the realm of international trade of the movement of goods
and services protected by intellectual property rights.
They may be divided into the following categories: conservatory or
provisional measures; civil remedies; criminal sanctions; measures to
be taken at the border; and measures, remedies and sanctions against
abuses in respect of technical devices.
Conservatory or provisional measures have two purposes:
1. first, to prevent infringements from occurring, in particular to
prevent the entry of infringing goods into the channels of
commerce, including entry of imported goods after clearance
by customs; and
2. second, to preserve relevant evidence in regard to an
alleged infringement.
Civil remedies compensate the rights owner for economic injury
suffered because of the infringement, usually in the form of pecuniary
damages, and create an effective deterrent to further infringement.
- This is often in the form of a judicial order to destroy the
infringing goods and the materials which have been
predominantly used for producing them
Criminal sanctions are intended to punish those who willfully commit
acts of piracy on a commercial scale and, as in the case of civil
remedies, to deter further infringement.
Border measures allow the rights owner to request that customs
authorities suspend the release into circulation of goods that are
suspected of infringing copyright. This is intended to give the rights
owner a reasonable time to commence judicial proceedings against the
suspected infringer, without the risk that the alleged infringing goods
will disappear into circulation after customs clearance.
The rights owner must
(a) satisfy the customs authorities that there is prima facie evidence of
infringement,
(b) provide a detailed description of the goods so that they can be
recognized and
(c) provide a security to indemnify the importer, the owner of the
goods, and the customs authorities in case the goods turn out to be
non-infringing.
- However, it is technically possible to manufacture devices to
circumvent such copy-protection and encryption systems. The
enforcement provisions are intended to prevent the manufacture,
importation and distribution of such devices
RELATED RIGHTS
The law of related rights deems that the productions which result from
the activities of such persons and entities merit legal protection in
themselves, as they are related to the protection of works of
authorship under copyright
Related rights have been granted to three categories of
beneficiaries:
1. Performers - heir creative intervention is necessary to give life
to
2. Producers of phonograms and - recognized because their
creative, financial and organizational resources are necessary to
make sound recordings available to the public in the form of
commercial phonograms; and because of their legitimate
interest in having the legal resources to take action against
unauthorized uses
3. Broadcasting organizations - because of their role in making
works available to the public, and in light of their justified
interest in controlling the transmission and retransmission of
their broadcasts.
TREATIES
The first organized international response to the need for legal
protection of the three categories of related rights beneficiaries was
the conclusion, in 1961 of the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting
Organizations (Rome Convention)
WIPO Performances and Phonograms Treaty (WPPT), which was
adopted in 1996, together with the WCT. Work on a new, separate
treaty on the rights of broadcasters continues at WIPO.
The duration of protection of related rights under the Rome
Convention is 20 years from the end of the year (a) that the recording
is made, in the case of phonograms and performances included in
phonograms; or (b) that the performance took place, in the case of
performances not incorporated in phonograms; or (c) that the
broadcast took place, for broadcasts.
In the TRIPS Agreement and the WPPT, however, the rights of
performers and producers of phonograms are to be protected for 50
years from the date of the fixation or the performance. Under the
TRIPS Agreement, the rights of broadcasting organizations are to be
protected for 20 years from the date of the broadcast. Thus many
national laws which protect related rights grant a longer term than the
minimum contained in the Rome Convention.
The largely unwritten and unrecorded cultural expression of many
developing countries, generally known as folklore or traditional
cultural expressions, may be protected under related rights as
performances, since it is often through the intervention of performers
that they are communicated to the public. By providing related rights
protection, developing countries may also provide a means for
protection of the vast, ancient and invaluable cultural expression,
which is the essence of what distinguishes each culture.
ROLE OF WIPO
Dedicated to promoting creativity and innovation by ensuring that the
rights of creators and owners of intellectual property are protected
worldwide, and that inventors and authors are thus recognized and
rewarded for their ingenuity.
WIPO administers the following international treaties on copyright
and related rights:
Berne Convention for the Protection of Literary and Artistic
Works
Brussels Convention Relating to the Distribution of Program-
Carrying Signals Transmitted by Satellite
Geneva Convention for the Protection of Producers of
Phonograms Against Unauthorized Duplication of Their
Phonograms
Rome Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organizations
WIPO Copyright Treaty (WCT)
WIPO Performances and Phonograms Treaty (WPPT)
WIPO also provides an Arbitration and Mediation Center, which
offers services for the resolution of international commercial disputes
between private parties involving intellectual property.
LIP: Session 1 4
RA 8293
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
Sec. 4. Definitions.-
4.1. The term "intellectual property rights" consists of:
[a] Copyright and Related Rights;
[b] Trademarks and Service Marks;
[c] Geographic Indications;
[d] Industrial Designs;
[e] Patents;
[f] Layout-Designs (Topographies) of Integrated Circuits; and
[g] Protection of Undisclosed Information
4.2. The term "technology transfer arrangements" refers to
contracts or agreements involving the transfer of systematic
knowledge for the manufacture of a product, the application of a
process, or rendering of a service including management contracts;
and the transfer, assignment or licensing of all forms of intellectual
property rights, including licensing of computer software except
computer software developed for mass market.
4.3. The term "Office" refers to the Intellectual Property Office
created by this Act.
4.4 The term "IPO Gazette" refers to the gazette published by the
Office under this Act.
CASES:
ELIDAD C. KHO, doing business under the name and style of
KEC COSMETICS LABORATORY, petitioner, v. HON. COURT OF
APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CRAY, respondents.
G.R. No. 115758
March 19, 2002
FACTS:
- Kho filed a complaint for injunction and damages with a
prayer for the issuance of a writ of preliminary injunction
- petitioners complaint alleges that petitioner, doing business
under the name and style of KEC Cosmetics Laboratory, is
the registered owner of the copyrights Chin Chun Su and
Oval Facial Cream Container/Case, as shown by Certificates
of Copyright Registration No. 0-1358 and No. 0-3678
- she also has patent rights on Chin Chun Su & Device and
Chin Chun Su for medicated cream after purchasing the
same from Quintin Cheng, the registered owner thereof in
the Supplemental Register of the Philippine Patent Office
- respondent Summerville advertised and sold petitioners
cream products under the brand name Chin Chun Su, in
similar containers that petitioner uses, thereby misleading
the public, and resulting in the decline in the petitioners
business sales and income; and, that the respondents should
be enjoined from allegedly infringing on the copyrights and
patents of the petitioner .
- respondents, on the other hand, alleged as their defense
that Summerville is the exclusive and authorized importer,
re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan
- to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said
Taiwanese Manufacturing Company.
- TRIAL COURT GRANTED PRELIMINARY INJUNCTION
- RECONSIDERATION OF RESPONDENTS WAS DENIED
- CERTIORARI WITH CA
ISSUE:
Whether the copyright and patent over the name and container of a
beauty cream product would entitle the registrant to the use and
ownership over the same to the exclusion of others.
HELD:
SC RULED IN FAVOR OF RESPONDENTS
Sec 1, Rule 58: This is the reason why we have ruled that it must be
shown that the invasion of the right sought to be protected is material
and substantial, that the right of complainant is clear and
unmistakable, and, that there is an urgent and paramount necessity
for the writ to prevent serious damage
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.
Trade name means the name or designation identifying or
distinguishing an enterprise.
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.
- Petitioner has no right to support her claim for the exclusive
use of the subject trade name and its container.
- The name and container of a beauty cream product are
proper subjects of a trademark inasmuch as the same falls
squarely within its definition.
- In order to be entitled to exclusively use the same in the
sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did.
- The petitioners copyright and patent registration of the
name and container would not guarantee her the right
to the exclusive use of the same for the reason that
they are not appropriate subjects of the said
intellectual rights.
- Consequently, a preliminary injunction order cannot be
issued for the reason that the petitioner has not proven that
she has a clear right over the said name and container to
the exclusion of others, not having proven that she has
registered a trademark thereto or used the same before
anyone did.
JESSIE G. CHING, petitioner, vs. WILLIAM M. SALINAS, SR.,
WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER
Y. SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I.
SALINAS, NOEL M. YABUT (Board of Directors and Officers of
WILAWARE PRODUCT CORPORATION), respondents.
G.R. No. 161295
LIP: Session 1 5
June 29, 2005
FACTS:
- Jessie G. Ching is the owner and general manager of
Jeshicris Manufacturing Co., the maker and manufacturer of
a Utility Model, described as "Leaf Spring Eye Bushing for
Automobile" made up of plastic.
- Ching and Joseph Yu were issued by the National Library
Certificates of Copyright Registration and Deposit of the said
work described therein as "Leaf Spring Eye Bushing for
Automobile."
4

- Ching requested the National Bureau of Investigation (NBI)
for police/investigative assistance for the apprehension and
prosecution of illegal manufacturers, producers and/or
distributors of the works
- NBI filed applications for search warrants in the RTC of
Manila against William Salinas, Sr. and the officers and
members of the Board of Directors of Wilaware Product
Corporation
- RTC GRANTED THE APPLICATION OF SEARCH WARRANT
(Violation of RA 8293 Secs 177.1 and 177.3)
- ITEMS WERE SEIZED
- The respondents averred that the works covered by the
certificates issued by the National Library are not artistic in
nature; they are considered automotive spare parts and
pertain to technology. They aver that the models are not
original, and as such are the proper subject of a patent, not
copyright.
- petitioner stated that a search warrant is merely a judicial
process designed by the Rules of Court in anticipation of a
criminal case. Until his copyright was nullified in a proper
proceeding, he enjoys rights of a registered owner/holder
thereof.
- The trial court issued an Order

granting the motion, and
quashed the search warrant on its finding that there was no
probable cause for its issuance.
o Work covered by the certificates issued to the
petitioner pertained to solutions to technical
problems, not literary and artistic as provided in
Article 172 of the Intellectual Property Code.
- PETITIONER FILED FOR CERTIORARI IN THE CA
o He insisted that his works are covered by Sections
172.1 and 172.2 of the Intellectual Property Code.
o The petitioner averred that the copyright
certificates are prima facie evidence of its validity
- CA rendered judgment dismissing the petition on its finding
that the RTC did not commit any grave abuse of its
discretion
- The petitioner is praying for the reinstatement of the search
warrants issued, but subsequently quashed, for the offense
of Violation of Class Designation of Copyrightable Works
under Section 177.1 in relation to Section 177.3 of Republic
Act 8293, when the objects subject of the same, are patently
not copyrightable
- PETITIONERS CONTENTION: contending that the revocation
of his copyright certificates should be raised in a direct
action and not in a search warrant proceeding.
- PETITIONERS CLAIMS:
o He claims that R.A. No. 8293, otherwise known as
the Intellectual Property Code of the Philippines,
which took effect on January 1, 1998, provides in
no uncertain terms that copyright protection
automatically attaches to a work by the sole fact
of its creation, irrespective of its mode or form of
expression, as well as of its content, quality or
purpose.
15
The law gives a non-inclusive
definition of "work" as referring to original
intellectual
o Notwithstanding the classification of the works as
either literary and/or artistic, the said law,
likewise, encompasses works which may have a
bearing on the utility aspect to which the
petitioners utility designs were classified.
o The law does not provide that the intended use or
use in industry of an article eligible for patent bars
or invalidates its registration under the Law on
Copyright.
o He has in his favor the benefit of the presumption
that his copyright is valid; hence, the burden of
overturning this presumption is on the alleged
infringers, the respondents herein.
- RESPONDENT AVERRED:
o work of the petitioner is essentially a technical
solution to the problem of wear and tear in
automobiles, the substitution of materials, i.e.,
from rubber to plastic matter of polyvinyl chloride,
an oil resistant soft texture plastic material strong
enough to endure pressure brought about by the
vibration of the counter bearing and thus brings
bushings. Such work, the respondents assert, is
the subject of copyright under Section 172.1 of
R.A. No. 8293.
o a technical solution in any field of human activity
which is novel may be the subject of a patent, and
not of a copyright.
o that no copyright is said to exist if a party
categorically questions its existence and legality.

ISSUE: whether the petitioners utility models are copyrightable and, if
so, whether he is the owner of a copyright over the said models
HELD: PETITION HAS NO MERIT.
It is worthy to state that the works protected under the Law on
Copyright are: literary or artistic works (Sec. 172) and derivative works
(Sec. 173). The Leaf Spring Eye Bushing and Vehicle Bearing Cushion
fall on neither classification. Accordingly, if, in the first place, the item
subject of the petition is not entitled to be protected by the law on
copyright, how can there be any violation?
It bears stressing that upon the filing of the application for search
warrant, the RTC was duty-bound to determine whether probable
cause existed, in accordance with Section 4, Rule 126 of the Rules of
Criminal Procedure.
The RTC is mandated under the Constitution and Rules of Criminal
Procedure to determine probable cause. The court cannot abdicate its
constitutional obligation by refusing to determine whether an offense
has been committed.
20
The absence of probable cause will cause the
outright nullification of the search warrant.
For the RTC to determine whether the crime for infringement under
R.A. No. 8293 as alleged in an application is committed, the petitioner-
applicant was burdened to prove that (a) respondents Jessie Ching and
Joseph Yu were the owners of copyrighted material; and (b) the
copyrighted material was being copied and distributed by the
respondents. Thus, the ownership of a valid copyright is essential.
Ownership of copyrighted material is shown by proof of originality and
copyrightability. By originality is meant that the material was not
copied, and evidences at least minimal creativity; that it was
independently created by the author and that it possesses at least
same minimal degree of creativity.
23
Copying is shown by proof of
access to copyrighted material and substantial similarity between the
two works.
24
The applicant must thus demonstrate the existence and
the validity of his copyright because in the absence of copyright
protection, even original creation may be freely copied.
25

The petitioner cannot seek relief from the RTC based on his claim that
LIP: Session 1 6
he was the copyright owner over the utility models and, at the same
time, repudiate the courts jurisdiction to ascertain the validity of his
claim without running afoul to the doctrine of estoppel.
A copyright certificate provides prima facie evidence of originality
which is one element of copyright validity. It constitutes prima facie
evidence of both validity and ownership
27
and the validity of the facts
stated in the certificate.
28
The presumption of validity to a certificate
of copyright registration merely orders the burden of proof.
The applicant should not ordinarily be forced, in the first instance, to
prove all the multiple facts that underline the validity of the copyright
unless the respondent, effectively challenging them, shifts the burden
of doing so to the applicant
Section 218.2 of R.A. No. 8293 provides:
218.2. In an action under this Chapter:
(a) Copyright shall be presumed to subsist in the work or other subject
matter to which the action relates if the defendant does not put in
issue the question whether copyright subsists in the work or other
subject matter; and
(b) Where the subsistence of the copyright is established, the plaintiff
shall be presumed to be the owner of the copyright if he claims to be
the owner of the copyright and the defendant does not put in issue the
question of his ownership.
A certificate of registration creates no rebuttable presumption of
copyright validity where other evidence in the record casts doubt on
the question. In such a case, validity will not be presumed.
30

But, as gleaned from the specifications appended to the application for
a copyright certificate filed by the petitioner, the said Leaf Spring Eye
Bushing for Automobile is merely a utility model described as
comprising a generally cylindrical body having a co-axial bore that is
centrally located and provided with a perpendicular flange on one of its
ends and a cylindrical metal jacket surrounding the peripheral walls of
said body, with the bushing made of plastic that is either polyvinyl
chloride or polypropylene.
31
L
ikewise, the Vehicle Bearing Cushion is illustrated as a bearing cushion
comprising a generally semi-circular body having a central hole to
secure a conventional bearing and a plurality of ridges provided
therefore, with said cushion bearing being made of the same plastic
materials.
32
Plainly, these are not literary or artistic works. They are
certainly not ornamental designs or one having decorative
quality or value.
Works for applied art include all original pictorials, graphics, and
sculptural works that are intended to be or have been embodied in
useful article regardless of factors such as mass production,
commercial exploitation, and the potential availability of design patent
protection.
It bears stressing that there is no copyright protection for works of
applied art or industrial design which have aesthetic or artistic features
that cannot be identified separately from the utilitarian aspects of the
article.
36
Functional components of useful articles, no matter how
artistically designed, have generally been denied copyright protection
unless they are separable from the useful article.
LEAF SPRING EYE BUSHING FOR AUTOMOBILE
Known bushings inserted to leaf-spring eye to hold leaf-springs of
automobile are made of hard rubber. These rubber bushings after a
time, upon subjecting them to so much or intermittent pressure would
eventually wore (sic) out that would cause the wobbling of the leaf
spring.
VEHICLE BEARING CUSHION
Another object of this utility model is to provide a vehicle bearing
cushion made of polyvinyl chloride, an oil resistant soft texture plastic
material which causes cushion to the propellers center bearing, yet
strong enough to endure pressure brought about by the vibration of
the center bearing.
A utility model varies from an invention, for which a patent for
invention is, likewise, available, on at least three aspects:
1. first, the requisite of "inventive step"

in a patent for
invention is not required;
2. second, the maximum term of protection is only seven years

compared to a patent which is twenty years,

both reckoned
from the date of the application; and
3. third, the provisions on utility model dispense with its
substantive examination
45
and prefer for a less complicated
system.
Being plain automotive spare parts that must conform to the
original structural design of the components they seek to
replace, the Leaf Spring Eye Bushing and Vehicle Bearing
Cushion are not ornamental.
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 it. 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. Accordingly, it can cover only
the works falling within the statutory enumeration or description.
1987 CONSTITUTION
Article 12, Section 14. The sustained development of a reservoir of
national talents consisting of Filipino scientists, entrepreneurs,
professionals, managers, high-level technical manpower and skilled
workers and craftsmen in all fields shall be promoted by the State. The
State shall encourage appropriate technology and regulate its transfer
for the national benefit. The practice of all professions in the
Philippines shall be limited to Filipino citizens, save in cases prescribed
by law.
Article 14, Section 10. Science and technology are essential for
national development and progress. The State shall give priority to
research and development, invention, innovation, and their utilization;
and to science and technology education, training, and services. It
shall support indigenous, appropriate, and self-reliant scientific and
technological capabilities, and their application to the country's
productive systems and national life.
SEC 13: The State shall protect and secure the exclusive rights of
scientists, inventors, artists, and other gifted citizens to their
intellectual property and creations, particularly when beneficial to the
people, for such period as may be provided by law.
SEC 15. Arts and letters shall enjoy the patronage of the State. The
State shall conserve, promote, and popularize the nation's historical
and cultural heritage and resources, as well as artistic creations.
SEC 16. All the country's artistic and historic wealth constitutes the
cultural treasure of the nation and shall be under the protection of the
State which may regulate its disposition.
LIP: Session 1 7
IP CODE:
Sec. 2. Declaration of State Policy. - The State recognizes that an
effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates
transfer of technology, attracts foreign investments, and ensures
market access for our products.
It shall protect and secure the exclusive rights of scientists,
inventors, artists and other gifted citizens to their intellectual
property and creations, particularly when beneficial to the people,
for such periods as provided in this Act.
The use of intellectual property bears a social function. To this
end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and progress
and the common good.
It is also the policy of the State to streamline administrative
procedures of registering patents, trademarks and copyright, to
liberalize the registration on the transfer of technology, and to
enhance the enforcement of intellectual property rights in the
Philippines.
REPUBLIC ACT NO. 10055
AN ACT PROVIDING THE FRAMEWORK AND SUPPORT SYSTEM
FOR THE OWNERSHIP, MANAGEMENT, USE, AND
COMMERCIALIZATION OF INTELLECTUAL PROPERTY
GENERATED FROM RESEARCH AND DEVELOPMENT FUNDED
BY GOVERNMENT AND FOR OTHER PURPOSES
"Philippine Technology Transfer Act of 2009".
OBJECTIVE: This Act aims to promote and facilitate the transfer,
dissemination, and effective use, management, and commercialization
of intellectual property, technology and knowledge resulting from R&D
funded by the government for the benefit of national economy and
taxpayers.
DEFINITIONS:
(a) "Intellectual Property (IP)" is the term used to describe
intangible assets resulting from the creative work of an individual or
organization. IP also refers to creations of the mind, such as
inventions, literary and artistic works, and symbols, names, images
and designs used in commerce.
(b)"Intellectual Property Rights (IPRs)" refer to those rights
recognized and protected in Republic Act No. 8293, otherwise known
as the "Intellectual Property Code of the Philippines".
(c)"Potential IPRs" refer to intellectual property, or the products of
creation and research that form the subject matter of IPRs, but which
are not yet protected by the statutory grant of IP rights.
(d)"Protection of IPs" refers to the statutory grant of rights upon
which the basis of enforcing the right rests, such as issuance of
patents; registration of utility models, industrial designs, and
trademarks or availment of protection of undisclosed information and
other rights as may be provided by law. "Protected IPs", therefore may
refer to issued or pending patents; registered utility models, industrial
designs and trademarks.
(e)"IP Code" refers to Republic Act No. 8293, otherwise known as the
"Intellectual Property Code of the Philippines".
(f)"Intellectual Property Rights Management" refers to the
principles, mechanisms and processes involved in the identification,
assessment, protection, utilization and enjoyment of intellectual
property rights.
(g)"Government Funding Agency (GFA)" refers to any government
agency or instrumentality, or government-owned and/or -controlled
corporation that provides research grants and other technical and
material support, from government appropriations and resources and
those sourced from government-managed Official Development
Assistance (ODA) funds.
(h)"Parent Agency" refers to the Department or agency, which
exercises the power of control or supervision over the GFAs, RDIs or
RDI acting as the GFA itself. In general, where multiple GFAs are
involved, the department or agency, which has the largest financial
contribution, shall be deemed as the parent agency, except as may
otherwise be specifically provided by this Act.
(i)"Research and Development Institute or Institution (RDI)"
refers to a public or private organization, association, partnership, joint
venture, higher education institution or corporation that performs R&D
activities and is duly registered and/or licensed to do business in the
Philippines, or otherwise with legal personality in the Philippines. In the
case of private RDIs, they shall be owned solely by the citizens of the
Philippines or corporations or associations at least sixty per centum
(60%) of the capital of which is owned by such citizens. This does not
include RDIs covered by international bilateral or multilateral
agreements.
(j)"Research Funding Agreement" refers to a contract entered into
by and among the GFA and other funding agencies and the RDI. It
governs ownership of IP, duties and responsibilities of GFAs and RDIs,
technology disclosure, exclusivity of the license, use for
commercialization, establishment of spin-off firms, technologies for
research use, and sharing of income and benefits from technology
commercialization.
(k)"Research Agreement" refers to a contract entered into by RDIs
and researchers, including the agreements between the RDI and
collaborating RDIs.
(l)"Researcher" refers to a natural person who is engaged by the RDI
by employment or other contract, to conduct research with or for the
RDI.
(m)"Spin-off firm or company" refers to a juridical entity that is an
independent business technology taker with a separate legal
personality from the GFA, RDI and researcher created through the
initiative of the researcher-employee who generated the technology.
(n)"Technology" refers to knowledge and know-how, skills, products,
processes, and/or practices.
(o)"Technology transfer" refers to the process by which one party
systematically transfers to another party the knowledge for the
manufacture of a product, the application of a process, or rendering of
a service, which may involve the transfer, assignment or licensing of
IPRs.
(p)"Commercialization" refers to the process of deriving income or
profit from a technology, such as the creation of a spin-off company,
or through licensing, or the sale of the technology and/or IPRs.
(q)"Revenue" refers to all monetary and non-monetary benefits
derived as a result of the development, production, transfer, use
and/or commercialization of IPRs, including income from assignments
and royalties from licenses.
(r)"Research and Development (R&U)" refers to creative work
undertaken on a systematic basis in order to increase the stock of
knowledge, including knowledge of man, culture and society, and to
use this stock of knowledge to devise new applications.
LIP: Session 1 8
COVERAGE:
(a)All R&D activities carried out on behalf and for the interest of the
Philippine government by RDIs receiving grants directly from the
GFAs:
(b)All intellectual property rights derived from R&D activities funded by
government;
(c)All government agencies that fund R&D activities as well as provide
financial, technical or material support to such R&D activities; and
(d)All institutions that implement government funded R&D.
INTELLECTUAL PROPERTY OWNERSHIP:
Section 6. Ownership of Intellectual Property and Intellectual Property
Rights. - The ownership of IPs and IPRs shall be governed by the
following:
(a)In recognition of the fact that RDIs are in a better position to
identify the potential for economic utilization of IPs and IPRs subject to
their possession of the right skills and management capability, the
ownership of IPs and IPRs derived and generated from research
funded by the GFA, whether such funding is in whole or in part, shall,
in general, be vested in the RDI that actually performed the research,
except in any of the following circumstances:
(1)When the RDI has entered into a public, written agreement
sharing, limiting, waiving or assigning its ownership of the IPs or
IPRs generated from its research in favor of the GFA: Provided,
That the same may only be voluntarily executed by the RDI to
protect public interest, and in particular involves national
security, nutrition, health, or the development of other vital
sectors;
(2)In case of failure of the RDI to disclose potential IPRs to the
GFA, whereupon the GFA shall assume the rights to the potential
IPR;
(3)In case of failure of the RDI to initiate the protection of
potential IPRs within a reasonable time from confidential
disclosure to the GFA, which shall in no case exceed three (3)
months from public disclosure, whereupon the GFA shall assume
the rights to the potential IPR; and
(4)In case the RDI ceases to become a Filipino corporation as
defined in Article I, Section 4(i) of this Act.
(b)In case of collaborative research where two (2) or more RDIs
conducted the research funded by the GFA, the RDIs shall own the
IPRs jointly or as otherwise stipulated in the research agreement
between them: Provided, That any research agreement between RDIs
and other funding entities shall be made with the full knowledge of the
GFA: Provided, further, That the agreement shall strictly be in
accordance with the provisions of this Act.
(c)Nothing in this Article shall modify, amend, derogate or prejudice
IPs that will be owned by employees of the RDIs under the IP Code
and other existing laws.
Section 8. Rights and Responsibilities of the RDIs. - The following are
the rights and responsibilities of the RDIs that availed of research
funds from GFAs:
(a)Identify, protect, and manage the IPs generated from R&D funded
by the GFA and pursue commercial exploitation diligently as a required
performance stipulated in the research funding agreement and as
allowed by this Act and other applicable laws.
(b)Provide a means for addressing any shortfall of its performance in
utilizing and commercializing the IP;
(c)Notify the GFA within a reasonable time of all I PR applications,
licenses and assignments made.
(d)Report annually to the GFA on the progress of IP and/or IPR
commercialization efforts and of all agreements entered and licenses
granted;
Section 23. Administrative, Criminal or Civil Liability. - The failure of
the GFA or RDI to fulfill its responsibilities under this Act, or the
violation of any provision by any person, natural or juridical, shall
subject the person involved to appropriate administrative, criminal, or
civil liability, under applicable laws.
Section 27. Applicability to Intellectual Property Created Under
Existing Laws. - The provisions of this Act shall likewise apply to
intellectual property created under existing laws, including, among
others, Republic Act No. 9168 or the "Philippine Plant Variety
Protection Act of 2002".
TODAYS CHALLENGE: PROTECTING COPYRIGHT IN THE
INTERNET
NUMERIANO F. RODRIGUEZ, JR
2013

INTERNET international network of interconnected computers.
- Worldwide human communication.

WHAT ARE COPYRIGHT RELATED RIGHTS AND WHY ARE THEY
IMPORTANT?

COPYRIGHT bundle of rights of authors or creators over their literary
and artistic works

RELATED NEIGHBORING RIGHTS rights granted to or recognized in
favor of performing artists with respect to their performances

- Legal concepts and instruments
- Major means to establish ownership of inventions and
creative ideas

BEGINNING OF COPYRIGHT PROTECTION: A MEANS TO AN END
- Original need to protect copyright
- Should the authors ownership of his works be protected
over the general public interest to access them? OR should
the public interest prevail over the private right of the
authors?
- Monopoly of authors is neither unlimited nor primarily
designed to provide a special private benefit
- Grant which an important public purpose may be achieved
- Copyright act must be construed in light of this basic
purpose

COPYRIGHT LIMITATIONS
- Period during which enjoyment and exploitation are
exclusively reserved to their authors or creators
- Lifetime of author PLUS 50 years after his death
- Some countries: lifetime PLUS 70 years after his death

BALANCING PRIVATE RIGHT v. PUBLIC INTEREST
- Profit from their work is merely a SECONDARY
CONSIDERATION
- Designed to move authors to harness their talents to create
- PRIMARY OBJECT: Lapse of said monopoly, works become
part of the public domain freely accessible by the public
LIP: Session 1 9
- BUT: to effectively motivate the creativity of authors, special
reward must be real and really protected.

INTERNET: BANE OR BOON TO COPYRIGHT AND RELATED RIGHTS
- Made available in internet without the authorization of the
creators
- INTERNET, worlds biggest copy machine
- Whether the law provides legal protection in the internet?
- Copyright law apply to DIGITAL WORKDS

HOW SERIOUS IS THE PROBLEM O COPYRIGHT INFRINGEMENT ON
THE INTERNET?
- IIPA: 23.76% worldwide Internet traffic is copyright
infringing (2011)
- Eg: online piracy, book and journal publishers are plagued
by sites, counterfeit business software products
- ARROYO: Fighting piracy is gihting poverty because it
enables Filipino excellence and enterprise to rise in the
global arena, expanding opportunities and jobs along the
way. It promotes local talent and creativity.

WIPO INTERNET TREATIES?
1. WIPO Copyright Treaty
2. WIPO Performances and Phonograms Treaty

Technological protection measures technolofgies used to control
access to copyright content, prevent users from copying protected
content.
EG:
a. Cryptography
b. Passwords
c. Digital signatures
d. Copy control
e. Serial copy management
f. Digital taping devises

PHILIPPINES LEGAL FRAMEWORK TO PROTECT COPYRIGHT AND
RELATED RIGHTS

1. IP CODE 1998
2. PD 49, before IP Code
3. OPTICAL MEDIA LAW RA 9239 response to the clamor of
the copyright-based industries in the PH (proliferation of
CDs, VCDs, DVDs)
4. Anti-camcording law 2010
5. Electronic Commerce Act of 2009 promote the universal
use of electronic transaction in the government and general
public
a. Penalizes hacking and piracy
b. Hacking unauthorized access in a computer
system or server to corrupt, alter or steal
dommunication devices without knowledge and
consent of the owner
c. Piracy unauthorized reproduction, dissemination,
distribution, importation, use, removal, making
available to the public, works protected or
copyrighted works
6. RA 10372 COPYRIGHT AMENDMENTS TO THE IP CODE
(2013)

QUESTION: Does it meet the challenges of effectively protecting
copyright in the Internet?

a. Articles 11 and 12 of WCT and
b. Articles 18 and 19 of WPPT

1. Liability of internet service providers
VICARIOUS LIABILITY:
a. Having notice of an infringement by another
person and exercising right and ability to control
the former
b. Benefits from the infringements
Sec 216 of the IP Code principle of landlord liability in
identifying persons who commit infringement

ISP NOT LIABLE IF:
a. No actual knowledge of activity
b. Not aware of facts
c. Upon obtaining facts, acts expeditiously to remove or
disable access to the material
d. Do not receive financial benefit
e. Notification of claimed infringement, responds

2. Definition and scope of TPMs technological measure
a. Any technology, device or component that in the
normal course of its operation, controls access to a
protected work, or any rights related to copyright.
3. Implementation of the TPMs and RMIs by the Copyright
Amendments
a. Infringer liable for actual damages
i. Circumvents effective technological
measure
ii. Reasonable grounds to know that it will
induce the infringement
iii. Alters any electronic rights management
from a copy of a work
b. Option of copyright owner, statutory damages
i. Not less than P50K
c. P10K infringer was not aware and had no reason
to believe that his acts constitute infringement of
copyright

OMISSIONS, FOLLOWING QUESTIONS ARISE:
1. After proving the damages, may the court award double
damages in case where defendant distribute, import works
knowing that electronic right management information has
been removed without authority?
2. In case infringer proves that he was not aware, may the
court impose double damages?
3. Are these acts to be considered an aggravating
circumstance?


ADEQUATE LEGAL PROTECTION AND EFFECTIVE LEGAL REMEDIES
legal machinery that is able to produce, protection.

CONCLUSION:

- IP Code, far from perfect
- Amendments seek to bring PH Law to the doorstep of the
digital age
- WIPO came into force in the PH Oct 4, 2002
- New problems are emerging
- Find answers and solutions.

- oOo -

! COPYRIGHT: WHAT WORKS ARE PROTECTED; WHAT
WORKS ARE NOT

IP CODE:

CHAPTER II - ORIGINAL WORKS

Sec. 172. Literary and Artistic Works. -
172.1 Literary and artistic works, hereinafter referred to as "works",
are original intellectual creations in the literary and artistic domain
protected from the moment of their creation and shall include in
particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for
oral delivery, whether or not reduced in writing or other
material form;
(d) Letters;
LIP: Session 1 10
(e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture,
engraving, lithography or other works of art; models or
designs for works of art;
(h) Original ornamental designs or models for articles of
manufacture, whether or not registrable as an industrial
design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-
dimensional works relative to geography, topography,
architecture or science;
(j) Drawings or plastic works of a scientific or technical
character;
(k) Photographic works including works produced by a
process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and works
produced by a process analogous to cinematography or any
process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
172.2. Works are protected by the sole fact of their creation,
irrespective of their mode or form of expression, as well as of their
content, quality and purpose. (Sec. 2, P. D. No. 49a)

Chapter III 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)
173.2. The works referred to in paragraphs (a) and (b) of Subsection
173.1 shall be protected as a new works:

Provided however, That such new work shall not affect the force of
any subsisting copyright upon the original works employed or
any part thereof, or be construed to imply any right to such use of the
original works, or to secure or extend copyright in such original works.
(Sec. 8, P. D. 49; Art. 10, TRIPS)

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

Chapter IV WORKS NOT PROTECTED

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

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)

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 copy right 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 owners. (Sec. 9, Third Par., P. D. No. 49)

CASES:
FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC.,
petitioners, vs. HONORABLE FRANKLIN DRILON, GABRIEL
ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY
FRANCISCO, respondents.
G.R. No. 108946
January 28, 1999
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.
- petitioner BJPI submitted to the National Library an
addendum to its certificate of copyright specifying the
show's format and style of presentation.
- 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
- 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.
- Zosa apologized to petitioner Joaquin and requested a
meeting to discuss a possible settlement.
- Zosa sought to register IXL's copyright to the first episode of
It's a Date for which it was issued by the National Library a
certificate of copyright
- an information for violation of P.D. No. 49 was filed against
private respondent Zosa
- respondent Zosa sought a review of the resolution of the
Assistant City Prosecutor before the Department of Justice.
- DENIED BY SOJ
- HENCE THIS PETITION
- 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.
- SOJ:
o The essence of copyright infringement is the
LIP: Session 1 11
copying, in whole or in part, of copyrightable
materials as defined and enumerated in Section 2
of PD. No. 49. Apart from the manner in which it is
actually expressed, however, the idea of a dating
game show is, in the opinion of this Office, a non-
copyrightable material. Ideas, concepts, formats,
or schemes in their abstract form clearly do not
fall within the class of works or materials
susceptible of copyright registration as provided in
PD. No. 49.
- the substance of the television productions complainant's
"RHODA AND ME" and Zosa's "IT'S A DATE" is that two
matches are made between a male and a female, both
single, and the two couples are treated to a night or two of
dining and/or dancing at the expense of the show. The
major concepts of both shows is the same. Any difference
appear mere variations of the major concepts.
- Petitioners assert that the format of Rhoda and Me is a
product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the presentation
of a point-by-point comparison of the formats of the two
shows clearly demonstrates the nexus between the shows
and hence establishes the existence of probable cause for
copyright infringement. Such being the case, they did not
have to produce the master tape.

ISSUE: Whether format of a show is copyrightable?
HELD:
NO. Sec 2, PD 49
- 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.
- Cinematographic works and works produced by a process
analogous to cinematography or any process for making
audio-visual recordings;
- 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.
FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND
PUBLISHERS, INC., plaintiff-appellant, vs. BENJAMIN TAN,
defendant-appellee.
G.R. No. L-36402
March 16, 1987
FACTS:
- Plaintiff-appellant is a non-profit association of authors,
composers and publishers duly organized under the
Corporation Law of the Philippines and registered with the
Securities and Exchange Commission. Said association is the
owner of certain musical compositions among which are the
songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin,"
"Sapagkat Kami Ay Tao Lamang" and "The Nearness Of
You."
- On the other hand, defendant-appellee is the operator of a
restaurant known as "Alex Soda Foundation and Restaurant"
where a combo with professional singers, hired to play and
sing musical compositions to entertain and amuse customers
therein, were playing and singing the above-mentioned
compositions without any license or permission from the
appellant to play or sing the same. Accordingly, appellant
demanded from the appellee payment of the necessary
license fee for the playing and singing of aforesaid
compositions but the demand was ignored.
- appellant filed a complaint with the lower court for
infringement of copyright against defendant-appellee for
allowing the playing in defendant-appellee's restaurant of
said songs copyrighted in the name of the former.
- ANSWER: mere singing and playing of songs and popular
tunes even if they are copyrighted do not constitute an
infringement
- LC: Dismissed the complaint
ISSUE: Whether or not the playing and signing of musical
compositions which have been copyrighted under the provisions of the
Copyright Law (Act 3134) inside the establishment of the defendant-
appellee constitute a public performance for profit within the meaning
and contemplation of the Copyright Law of the Philippines; and
assuming that there were indeed public performances for profit,
whether or not appellee can be held liable therefor.
HELD: Petition is DEVOID of merit.
PETITIONER ANCHORS:
Section 3(c) of the Copyright Law which provides: SEC. 3. The
proprietor of a copyright or his heirs or assigns shall have the exclusive
right: xxx xxx xxx
(c) To exhibit, perform, represent, produce, or reproduce the
copyrighted work in any manner or by any method whatever for
profit or otherwise; if not reproduced in copies for sale, to sell
any manuscripts or any record whatsoever thereof;
We concede that indeed there were "public performances for profit. "
The word "perform" as used in the Act has been applied to "One who
plays a musical composition on a piano, thereby producing in the air
sound waves which are heard as music ... and if the instrument he
plays on is a piano plus a broadcasting apparatus, so that waves are
thrown out, not only upon the air, but upon the other, then also he is
performing the musical composition."
- If the rights under the copyright are infringed only by a
performance where money is taken at the door, they are
very imperfectly protected. Performances not different in
kind from those of the defendants could be given that might
compete with and even destroy the success of the monopoly
that the law intends the plaintiffs to have. It is enough to
say that there is no need to construe the statute so
narrowly.
- The defendants' performances are not eleemosynary. They
are part of a total for which the public pays, and the fact
that the price of the whole is attributed to a particular item
which those present are expected to order is not important.
LIP: Session 1 12
It is true that the music is not the sole object, but neither is
the food, which probably could be got cheaper elsewhere.
- The object is a repast in surroundings that to people having
limited power of conversation or disliking the rival noise, give
a luxurious pleasure not to be had from eating a silent meal.
If music did not pay, it would be given up. If it pays, it pays
out of the public's pocket. Whether it pays or not, the
purpose of employing it is profit, and that is enough
- It is therefore obvious that the expenses entailed thereby
are added to the overhead of the restaurant which are either
eventually charged in the price of the food and drinks or to
the overall total of additional income produced by the bigger
volume of business which the entertainment was
programmed to attract. Consequently, it is beyond question
that the playing and singing of the combo in defendant-
appellee's restaurant constituted performance for profit
contemplated by the Copyright Law.
- appellee cannot be said to have infringed upon the Copyright
Law. Appellee's allegation that the composers of the
contested musical compositions waived their right in favor of
the general public when they allowed their intellectual
creations to become property of the public domain before
applying for the corresponding copyrights for the same
- A careful study of the records reveals that the song "Dahil Sa
Iyo" which was registered on April 20, 1956 (Brief for
Appellant, p. 10) became popular in radios, juke boxes, etc.
long before registration (TSN, May 28, 1968, pp. 3-5; 25)
while the song "The Nearness Of You" registered on January
14, 1955 (Brief for Appellant, p. 10) had become popular
twenty five (25) years prior to 1968, (the year of the
hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the
songs "Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao
Lamang" both registered on July 10, 1966, appear to have
been known and sang by the witnesses as early as 1965 or
three years before the hearing in 1968. The testimonies of
the witnesses at the hearing of this case on this subject
were unrebutted by the appellant. (Ibid, pp. 28; 29 and 30).
- Under the circumstances, it is clear that the musical
compositions in question had long become public property,
and are therefore beyond the protection of the Copyright
Law.