Ipl Prelims

January
24, 2018

This has been asked 4x already in the bar exam. Distinguish patent for invention
from trademark and copyright.

Patentable Trademark Copyright
invention
Definition Any technical Visible sign capable *According to dean, The IPC
solution of a of distinguishing does not define copyright.
problem in any goods or services. The law enumerates on the
field of human copyrightable works and the
activity which is Trade name non copyrightable works but
(NISIA) (according to did not define copyright.
dean)-‐ name of
New enterprise It is intangible, incorporeal
Inventive Step distinguished from rights granted by statute to
Industrially another. the creator/ author of
Applicable literary, artistic, scientific,
and scholarly works (LASS).
It may be, or The right consists of certain
may relate to a economic and moral rights
product, or on terms specified by statute
process, or an for limited period of time.
improvement
(PPI) Xptn: Right of attribution-‐ It
is not delimited by time. It is
forever. It is not the same as
economic rights which lasts
only 50 years after the death
of the author. Right of
attribution is in perpetuity.

Ex: Despite for instance the
fact that the composer
assigns his right to the
composition in favor of
another, the assignee may
have the right to modify or
transform the work.
However, he cannot claim
that he is the author of music
composition despite the
transformation. That belongs
to the original author of
composition.
MERC REV2 2018 1 TRANSCRIBED BY JOYCE GO

*N.B. “granted by statute”-‐ it
means that the law
enumerates the
copyrightable works. There
can be no copyright unless
the works are enumerated
by law.
Terms of 20 years from 10 years from 50 years from the death of
protection application. application. author (generally)

Q: Is that Q: Is it extendible? Q: Is there a copyright that
extendible? A: Yes. It is lasts only for 25 years?
A: No. In cases of increment of 10 A: Yes. Broadcast works-‐ 25
industrial design years (no limit to years;
however, the the number of
terms of extensions) How about audio visual? 50
protection is 5 years.
years from
registration and
renewable for
not more than 2
consecutive
periods of 5
years each.

Utility model-‐ 7
years from
application

Patent is confined over invention;
Trademark is confined over goods;
Copyright is confined over literary and/ or artistic works.

It is important to know the distinction, because THESE RIGHTS ARE NOT
INTERCHANGEABLE. If you made a mistake, say you apply for a patent, a product
which is copyrightable or appropriate for trademark, THEN YOU WILL HAVE NO
RIGHT OR WHATSOEVER.

Remember the case of SALINAS v. CHING?
• Ching, the owner of Eye leaf Bushing (made up of plastic), applied for
copyright. And miracle of all miracles, it was granted, he was able to get a
certificate of copyright over an eyeleaf bushing. Somebody uses that eye leaf
bushing. This is not copyrightable for god sake! Is there a copyright in this
case? None, because eye leaf bushing is inappropriate for copyright. It is
MERC REV 2 2018 TRANSCRIBED BY JGMG

more appropriate for patent/ utility model. But since he did not apply for
patent or utility model, then no right granted to him.
• Kho v. CA-‐ medical cream (pampaputi, pampagwapo, pampakinis ng mukha)
– it is subject for patent; what about the container of the cream? It is
appropriate for trademark. But Kho applied for copyright, which was granted
also. Since he did not apply patent over the cream, or trademark over the
design of the container, then estoppel will not apply, and he will not be
entitled over the rights.
• Pearl & Dean v. Shoemart-‐ This is about a utility light box that contains 4
sheets that is sandwiched by posters and illuminated with back lights. It
could have been appropriate for patent or utility model but he did not apply
for it. So no right can be granted over the patent. Is it copyrightable? It is not
aesthetic. What is copyrightable is the posters sandwiched by the 4 sheets.
• Manly Sportwear v. Dadodette Enterprises-‐ Trading goods, basketball,
volleyball, nagapply siya for copyright. Is it copyrightable? No. Mistake do
happen and if you apply for wrong right/ remedy, then no right is accorded.
As the SC said, these rights are not interchangeable. The essence of
infringement is any act in violation of the rights either patent holder,
trademark holder, or author or creator. That is what infringement is all
about. But you have to know first is it appropriate for patent? Copyright?
Trademark?

Q: What are the rights granted over patent?
A: Any act of MUSOI (making, using, selling, offering for sale, importing) the
product/ process/ improvement of patent invention.

Q: What about trademark?
A: It authorizes the use of registered trademark.

Q: What about copyright?
A: Certain moral or economic rights

Q: This was asked in bar. Give me an example of product of commerce which is
susceptible to different rights.
A: Salinas v. Ching-‐ Eye leaf bushing;

• Eye leaf bushing is a utility model. If the aesthetic design can be detached
from the usefulness of the article then the design is copyrightable. If the
design can be used as a patent for handicraft, it is likewise subject to patent
over the design.
• Denicola test – If you can detach the aesthetic design from the usefulness of
the article, then the design itself is copyrightable, otherwise it is not
copyrightable and only appropriate for utility model.


January 25, 2018

This was asked 2 years ago. Is hoarding an act violative of IP Code?
Hoarding, in the case of Coca Cola v. Gomez, the accumulation of empty bottles to
limit the regulation of bottled product, is it violative of IP Code? Does it amount to
unfair competition?

The manager of pepsi cola accumulated empty bottles of coca cola. The objective is
to limit the regulation of bottled product. Can be used for recycled. The SC said that
it does not amount to violation of IP Code. It is an act of bad faith but not an act in
violation of intellectual property rights. Why does it not amount to unfair
competition? Because the essence of unfair competition is you pass of goods as
manufactured by another, right? It gives an appearance that you are the
manufacturer to deceive your purchaser. In this case, when you accumulated the
bottles, you are not passing off the public that it is your own manufactured bottles.
That act however is in violation of RA 623. RA 623 penalizes or prohibits the use of
any bottle, container, cylinder tank for the purpose different from that intended by
the manufacturer/ owner.

There is only one exception that is the use of bottles, receptacles, containers for
native products like suka, patis, toyo. So you can use pepsi bottles to contain suka,
patis, toyo without violation of RA 623. Unfortunately you do not see anymore patis,
toyo, suka no? Because now we have SM bonus for suka, SM bonus for toyo….

Now this was asked in the bar. Let’s say there is a cylinder tank that bears a
registered trademark. What if the trademark is scraped off/ peeled off? Let’s say a
LPG gas placed or stored inside that cylinder tank. Does that amount to infringement
of trademark or unfair competition?

Trademark Infringement -‐ No.
Unfair Competition? No. You are not passing the LPG gas as manufactured by a
particular manufactured.

What law is then violated? RA 623. It penalizes or prohibits any act that uses the
bottle, container, tank for the purpose different from what is intended by the
manufacturer or owner.

What is patent? It is an exclusive right granted to an inventor over his invention/
utility model/ industrial design. He can use it for sale, commerce, or industry. So
there are 3 types of patent. Patent over invention, patent for utility model, and
patent for industrial design. If you are not certain if it is appropriate for patent over
invention or patent for utility model, can you do it double application?

A: No. You must be sure of the elements of the patent.
Q: What is the element for patent over invention that is not present in patent for
utility model?

A: INVENTIVE STEP
Q: What is the rationale behind the law on patents? (This was asked in the bar)
A:

1. Foster reward invention. You have the right to use it exclusively. Any act of
MUSOI without your consent amounts to infringement and you are entitled
for payment of royalties.
2. To promote disclosure of invention. To stimulate further invention. One of
the requirements in application for patent, you have to disclose the invention
right? This is to stimulate further invention.
3. Permit the public to practice invention once the patent expires. Once it
expires, it becomes public dominion.

A gadget which if attached to the engine, cuts consumption to ½ is that
patentable? Of course. It is NISIA (new, has inventive step, and industrially
applicable).

A device/ gadget that converts rain water to softdrinks. Is it patentable? Yes.
NISIA.

Q: What is patentable invention?
A: Any technical solution of a problem in any field of human activity that is
NISIA. It may be a product, process or improvement (PPI)

Q: What are the elements of patentable invention? NISIA

1. Newness/ Novelty
2. Inventive Step
3. Industrially Applicable

Q: When does it satisfy the element of “newness”? – It is not new if it forms prior
art.

It forms prior art if:

a.) it has been made available to public anywhere in the world before the filing
date of application
b.) the whole contents of an earlier published application

Q: What do you mean by priority date? As you know, an application for patent
filed in any country, signatory to a convention… is considered to be filed in the
Philippines as of the date of application in foreign country. The local application
claims that foreign application within 12 months from filing the foreign
application.

The SC said that priority right DOES NOT GRANT PATENT.

Q: This was asked in the bar. An enzyme was developed injected to an animal
that would make it tender before the act of slaughtering. Is the solution
patentable?
A: No. Because there was no showing that it was used for commerce/ industry.
The third element of patentable invention is industrial applicability. It has to be
used for commerce/ industry. So if 3rd element is not present, then patent right
will not be granted.

But let’s say for example, to make the cow tender before it is slaughtered, and it
can be sold for retail/ various customers, then 3rd element is present and the
enzyme now becomes patentable.

Q: What are the non-‐ patentable inventions?
A: DST-‐ PVBACPOM

D-‐ Discovery, scientific theories, mathematical methods
S-‐ schemes and methods to perform mental acts and playing games
T-‐ treatment for animal/ human body
PVB-‐ plant varieties, animal breed
AC-‐ Aesthetic creations
POM-‐ contrary to public order and morality

Q: If Einsteen is alive today, can he obtain a patent over his discovery?
A: No. Discovery is not patentable.
Q: Law on gravity?
A: No.
Q: Yoga? Pusoy Dos? Baccarat? Lucky Nine?
A: No. (schemes/rules in performing mental act, playing games)
Q: The art of making good deal?
A: No. Methods are not patentable.
Q: Acupuncture?
A: No. methods not patentable.
Q: This was asked in the bar. Dr. Juan Dela Cruz invented a cure for Alzheimer.
The cure consists of series of exercises and new medicines. Are these
patentable?
A: Medicines are patentable but the series of exercises are not.
Q: Why is it biological process is not patentable (plant varieties, animal breeds)?
A: Because you cannot appropriate nature. No one can appropriate nature. It is
made available to anybody. Thus, no one can claim exclusivity.
Q: This was asked in the bar. Somebody invented a bogus coin method. It is an
old game that makes you capable of winning all the coins inside the box by
inserting the bogus coin method. Is it patentable?
A: No. Contrary to public order

Q: Who has the right to patent?
A: Inventors/ Heirs/ Assigns (IHA)

The assignee can obtain the patent.
Q: This was asked in the bar, Juan Dela Cruz invented a product that satisfies all
the elements for patent. But he is not into enterprising, so he was approached by
Pedro Reyes to put up a corporation and the contribution is his invention. So he
subscribed to shares of stock of the proposed corporation in consideration for
his patent. Can the corporation or would be the heirs that can apply for the
patent?

The subscription to shares of stock to the proposed corporation and the
consideration is his invention. Can the corporation apply for patent?

A: No. The corporation cannot apply for patent. Because subscription is not the
same as assignment. The law dictates “ASSIGNMENT OF PATENT” not
subscription of shares, right? And when we say assignment, it has to comply with
the requirements of assignment under IP Code.

It should be heirs and not the corporation that may apply for the patent upon
death of the owner.

Q: When two persons jointly made an invention, then the right belongs to them
jointly. What about if there are 2 persons with the same invention but separately
and independently of each other, who has the right to the patent?
A: First to file rule. That’s on the premise that the invention is made
independently and separately of each other.

Q: Does IPO determine fraud? Does IPO determine who is the real inventor?
A: No it does not determine who is the actual inventor. The presumption is the
one who applies is the inventor. If there are 2 applicants, then the first one to
apply will be granted the patent. If it turns out that the applicant is not the
inventor and acquired it through fraud, then there are remedies available in so
far as invention is concerned but the IPO does not determine if you are true and
actual owner to simplify procedure.

Favorite topic in the bar re patent: What about inventions granted pursuant to a
commission? Distinctions must be made between inventions made pursuant to a
commission under er-‐ ee relationship and inventions made pursuant to a
commission without er-‐ ee relationship.

Q: If the inventions are made pursuant to er-‐ ee relationship, who owns the A:
patent? It depends upon the inventive activity. If it is part of his regular duties,
then the patent belongs to the employer. But if the inventive activity does not
form part of regular duties, the patent belongs to the employee even though he
may have used the time and facilities of the employer without prejudice to the
rights of employer in terminating ee (under labor code).

Q: What about if there is no er-‐ ee relationship?

A: It belongs to the one who commissioned the patent unless otherwise
stipulated.
Q: How do you compare this with copyright? This is a favorite topic in the bar. In
case of commissioned work for copyright, remember that Isaacson was
commissioned by Steve Jobs to do an autobiography of Steve Jobs? He would like
to be known by his children because he has no time for his family, with his
children, He is so busy with putting his company, so for his daughter to know
about him, a book was made. Who owns the book?

A: The one who commissioned, Steve Jobs.
Q: Who owns the copyright? Who has the right to reproduce? Who has the right
to moral and economic rights?
A: It is the author. It is Isaacson

** But for patent it is different. The one who commissioned the work owns the
patent. So it is not the inventor.

I was watching this movie, forever young. His girlfriend incurred accident and
based on diagnosis it would take years to preserve her body. Gibson company
invented machine to preserve the body of his girlfriend for 25 years. After 25
years, by chance, nabuksan yung machine, buhay yung girlfriend niya and they
saw each other. Who owns the patent?

A: It is Mel Gibson, the one who commissioned the patent.

Q: In terms of patent, under the law, it is 20 years from filing date of application.
What happenes after 20 years?
SC: It becomes public dominion, so no more infringement of patent. It would not
have basis. Anyone can MUSOI the product.

Q: What are the remedies of inventor in case he was deprived of the patent? So
earlier we have said that patent is granted to the first one who applied. It is
possible then that the patent can be granted to someone who is not the inventor.
For as long he is the first one to apply for the application. So what would be the
remedies of the inventor in that case? Can the inventor file action for
infringement of patent? This was asked in the bar in case of Creser Precision
Systems v. CA.

A: The SC said that ONLY THE PATENT HOLDER MAY FILE AN ACTION FOR
INFRINGEMENT OF PATENT.
Q: Can he file an injuction with damages on the ground that he is the true and
actual inventor?
A: No. (Creser v. Precision)
Q: What about the phrase “action for infringement maybe filed by the patent
holder or any person in interest over the patent” is that phrase “any person in
interest” include the true and actual inventor?

A: No. That phrase means THE HEIRS/SUCCESSORS/ASSIGN OF THE PATENT
HOLDER BUT NOT THE TRUE AND ACTUAL INVENTOR.
Q: So what is now the remedy of the true and actual inventor?
A: There are 2 provisions, 67 and 68. One involves the fraud, the other does not
include fraud as element.
Q: Let’s say there are 2 applicants. It was granted to the one who did not apply
first, what would be the remedy to the one entitled to the patent? So nabigay sa
2nd filee. Ano remedy ng first filee?
A: Within 3 months from grant of the patent he can file an action in court. And
once there is judgment affirming that he has right over the patent, he has the
right to prosecute the application as his own.

If no patent would be granted yet to the 2nd filee, he can be substituted for the
applicant. If once granted, he may asked the court to cancel. IN CASE OF FRAUD
NO NEED TO WAIT FOR 3 MONTHS FROM FINALITY OF JUDGMENT. So there is
fraud, he can file an action in court, and once it becomes final, he’ll be substituted
with the patent holder with entitlement to damages.

Q: What are the rights conferred by the patent?
A: Right to prohibit, restraint, or prevent anyone from MUSOI the
product/process/improvement.
Q: What about medicines? If medicines are introduced anywhere in the world
will the act of importation of bringing medicine to the Philippines amount to
infringement of patent?
A: As you know, there is a law that supersedes IP Code, that is Cheaper
Medicines Act 2008. If medicine is available anywhere in the world, it can be
imported in the Philippines by any 3rd party without infringement of patent. So
the element is that it must be introduced in any part of the world. Not just in the
Philippines.
Q: This was asked in the bar last year. Does the government have to apply for
compulsory license before it can import let’s say a medicine needed to cure an
illness?
A: So as you know the government can import medicines without having to
obtain compulsory license when it comes to importation.
Q: What do you mean by infringement of patent?
A: Any act in violation of the rights of the patent holder amounts to infringement.
Any act of MUSOI without the consent of patent holder.

What are the tests to determine infringement of patent?
1.) Literal infringement-‐ side by side with each other. They are exactly the same
in all material things.
2.) Doctrine of equivalents-‐ same function, same means, same results test. This 3
must concur. The accused product appropriated the inventive step with
slight modifications. The accused products performs a function in the same
way to accomplish the same result.


Smith Kline v. CA-‐ Identity of results is not only the test to determine
infringement of patent. I’m talking of doctrine of equivalents. Same function,
same means, same results.

In this case, there is a medicine that can eliminate parasite in animals, right?
It is not enough to warrant conclusion that there is infringement of patent, so
it must be shown that this medicine has the same result, same means, same
function.

Likewise asked in the bar, what are the following defenses in case of
infringement of patent? What are the valid defenses?

a.) Lack of intent to infringe the patent-‐ not valid because it is special law
and the intent is not necessary.
b.) IPO urged in granting the patent (Manzano v. CA)-‐ not valid defense. The
presumption of regularity in performance of duties.
c.) Patent does not disclose the details such that it does not stimulate further
invention-‐ it can be a ground.
d.) Prescription-‐ valid defense. If those acts are exclusive to the patent
holder, then upon expiration the term can be invoked.

Q: Other than MUSOI of the product, what is the other right granted to a
patent holder?
A: Right to enter licensing agreement. There are 2 kinds: compulsory and
voluntary. Voluntary is based on the will of the patent holder and assignee
upon terms and conditions acceptable to both of them. Compulsory is not
premised on the mutual will of the patent holder and licensee, instead it is
applied before the director of legal affairs.

Q: Is it violative to the rights of the patent holder? Does it amount to undue
taking of his property? (Smith Kline v. CA)
A: There is no violation of due process because the patent holder is entitled
to payment of royalty. And there be acknowledgement by the licensee that
the inventor is the patent holder. So there is no violation.
Q: Who fixes the terms of compulsory license?
A: Director of Legal Affairs
Q: Who determine the amount of royalty
A: Director of Legal Affairs

This was asked in the bar: medicines are manufactured with limited quantity
but medicines are needed to cure a particular illness. What is the remedy
available to the government?
A: compulsory licensing. Where public safety or public health requires it.
Q: Is it excuse in payment of royalty?
A: Obviously not.


Q: What are remedies in case of infringement?
A: civil action for infringement – you can also pray for actual damages.

Q: Does the law allow the grant of moral damages in cases of patent infringement?
How about exemplary?
A: No. Only infringement for copyright that allows moral/ exemplary damages. In
patent/ trademark infringement, there is no entitlement to moral or exemplary
damages.

Q: Can the court award damages on top of actual damages?
A: Yes provided that the award does not exceed 3x the amount of such actual
damages.

For patent – 3x
For trademark-‐ double
For copyright-‐ moral and exemplary

Q: What else can be prayed for? What about provisional remedy? What is
appropriate?
A: injunction to restrain the acts of infringement while the case is pending
Q: What else can be prayed for?
A: The goods, items, paraphernalia, equipment, tools used for infringement can be
confiscated, seized or impounded.
Q: What about criminal remedy?
A: Unlike trademark and copyright infringement where one act may give rise to
criminal remedy/action, for patent infringement, the law says, that there must be an
act declared as infringement by court. Once the court declares that it amounts to
infringement, and the acts are repeated, then the acts that are repeated will give rise
to both criminal and civil remedy. So there ought to be a declaration of patent
infringement. And acts repeated will give rise to both criminal and civil remedy.

Sa trademark and copyright, pag one act, pwede na mag give rise to criminal
remedy. But for patent, it must be declared on the acts amounting to.

Other than that, they can likewise be destroyed if they are outside of commerce BUT
ONLY AFTER THE COURT RENDERS JUDGMENT. What you can only pray for is to
seize/ confiscate/ impound but not to destroy them if there is still no judgment.

January 31, 2018

Q: What are the defenses available to the person charged with infringement of
patent? Are the grounds for cancellation of patent, the same defense available to the
person charged with infringement of patent?
A: Yes. The grounds for cancellation of patent are the very same defenses that can be
raised in an action for patent infringement.


1. Does not have elements of patentable invention
2. Non-‐ patentable invention
3. Contrary to public/ morality
4. Patent was not issued to the true/ actual inventor

Q: Is there anything required of the applicant before a patent maybe granted by the
IPO in relation to stimulation for invention? One of the rewards or objective of
patent invention is to stimulate further invention, right? How can it be
accomplished? What requirements peculiar to file objective of stimulating for
invention such that if it’s not present, then an action/ petition for recognition of
patent maybe filed or that be put in a defense in an action for patent infringement?

A: He does not disclose the manner by which can be carried out by a person skilled
in art. If the patent does not make this disclosure, then the patent maybe cancelled
or it can be a defense in an action for patent infringement.

Q: What are the other defenses?
A:

5. The making of the patent or using the patent falls within the limitations of
patent.

Q: What are the limitations?
A:

MPEM Very Good P

M-‐ Market; the product becomes available in the market
P-‐ the act of using is in Private in non-‐ commercial scale, as long as it does not
exploit the economic interest of the patent holder.
E-‐ Experimentation; For experimentation purpose, scientific purpose
M-‐ Medicine; Preparation of medicine
V-‐ Vessel coming from Philippines for that exclusive use only
G-‐ Government (when public interest requires)
P-‐ Doctrine of Prior User

Various remedies to patent holder in action for patent infringement-‐

1. It can ask for actual damages-‐ for the damages incurred as a consequence of
the infringement patent.
2. On top of actual damages or above the amount of actual damages, the law
allows the court to grant other damages, as long as the “other damages” do
not exceed 3x the amount of actual damages.
3. As a provisional remedy, the patent holder may pray for issuance of
preliminary injunction to restrain any act of infringement if the case is
pending.

4. Also as a provisional remedy, an order from the court to seize/ impound
paraphernalias, documents, tools, equipments used in relation to the
infringement.
5. Search order, seizure order in intellectual property, enforcement in
intellectual property – to confiscate/ seize articles, paraphernalias, tools
used in relation to infringement.
6. Once judgment becomes final then preliminary injunction (PI) becomes final
injunction and the court may also issue an order to destroy anything outside
of commerce of those tools and equipment used in relation with the
infringement.
7. Criminal remedy-‐ the acts of infringement must be declared by the court as
such. And in spite the declaration of the court, and the acts of infringement
are repeated, then it will give rise both to civil and criminal liability.
8. Action for damages-‐ can only be maintained within 4 years from date of
commission of the acts. It is premise on the assumption that the infringer
knew on the existence of the patent. However if the term or prescription of
Philippine patent is described, it amounts to notice to the whole world that
the product is _____.

Q: What about defenses available to the person charged with patent infringement?
Let’s take a look to the remedies.

In the case of Creser v. CA-‐ The infringement for patent/ action for patent
infringement can only be filed by the patent holder. So if the one who filed is not the
patent holder, then obviously then the defendant can have move the case to be
dismissed on the ground that the plaintiff has no personality.

Other defenses, we have said earlier, the grounds for cancellation of patent are also
defenses in patent infringement suit. What are the grounds for cancellation of
patent?

A:

1.It does not have all the elements of patent (NISIA)
2. The patent does not disclose the manner of invention by which it maybe carried
out by the person skilled in the art.
3. Contrary to morality
4. Prescription

On top of these defenses, in the act of making, using falls within the limitations of
patent. So what are the limitations of patent? Our keyword is MPEM Very Good.

M-‐ Market-‐ it has been put in the market already.
P-‐ private use in a non-‐ commercial scale; as long as it does not exploit the economic
interest of patent holder.
E-‐ Experiment/ scientific purpose.

M-‐ Medicine.
V-‐ Use of a product in a Vessel coming in the Philippine territory and exclusive for
that purpose.
G-‐ Government (the public interest requires but subject to the requirement of
COMPULSORY LICENSING)

With respect to importation of medicines in the Philippines, the government need
not file the petition for compulsory licensing, right? Under the Cheaper Medicine Act
of 2008, once medicine is introduced anywhere in the world, then the act of
importation pursuant to the exclusive right of patent holder is no longer exclusive
under that law. So the public may likewise may import the medicine to the
Philippines without infringement of patent. It is not subject to the rules on
compulsory license.

P-‐ Doctrine of prior user-‐ person invented a product which will all have the
elements of patent but did not apply for patent. Then another person invents the
same product independent of course of the inventor but this time, more enterising
and applies to the product.

Q: Can the patent holder secure injunction to restrain the first inventor to use his
product?
A: No. Because he was already an inventor prior to the grant of patent in favor of the
patent holder. So he was acting in good faith in using his erstwhile patented product.
So the elements are:

1.) Prior use
2.) In good faith of the same product before the patent is granted to somebody
else.

Q: What about defense of good faith? This was asked in the bar. Is good faith a
defense?
A: No. Good faith is not a defense because it is not an element of patent
infringement. Bottom line is if you perform any of those acts in violation of the
rights of patent holder. Remember the essence of infringement whether patent,
trademark of copyright is the performance of an act in violation of the rights of the
patent holder, registrant of trademark, or the author/ composer of a copyright
work. The act of MUSOI of PPI regardless of good faith amounts infringement.

Q: What about the defense that the IPO made a mistake in the grant of patent
(Manzano v. CA)
A: That’s not a good defense because there is a presumption of regularity in the
performance of duties. The IPO is presumed to acted correctly, rightfully, and
lawfully in the grant of patent. Unless it is cancelled. The presumption stands that it
is valid without prejudice of course to file for cancellation of patent. And unless such
petition prospers, the ruling or the grant of petition stands.


Let’s take up trademark.
Q: What is trademark?
A: It is any visible sign capable of distinguishing goods or services. If you see an
apple with a bite, It is proceeded right away that it is an apple product. When you
are apple user, it evokes a certain quality… You are rich. It is an essence a property
right. A property right is entitled to protection not only to protect the registrant but
also protect public from deceptive claim. In china noh, maraming apple with a bite
but not apple products. Oppo diba.

Trademark includes stamped or marked container goods. The container must have a
stamped mark. It is nothing without a mark.

Kho v. CA-‐ The name of container of a beauty cream product maybe appropriate
object of trademark.
Empty cylinder tank that bears the stamped mark appropriate subject likewise for
trademark. LPG Tank of gasul by petron and shellane by shell.

Q: What about tradename?
A: Tradename is a name that designates or identify or distinguish an enterprise.
Q: How do you distinguish trademark from tradename?
A: Tradename is the name designated in the enterprise, trademark is the design that
identifies the goods. More importantly. TRADE NAME NEED NOT BE REGISTERED
IN THE IPO AS A CONDITION FOR PROTECTION/ CONDITION FOR INFRINGEMENT
SUIT. This is because the requirement of registration for tradename was delienated
in the IPO. Unless the trademark is registered, there can be no trademark
infringement.

Case of Coffee partners – Trade name need not be registered in the IPO.
Unauthorized use of trade name already amounts as infringement.
Q: What if trade name forms part of the trademark?
A: Then that case, trade name ought to be registered with the IPO.

We all know that trademark knows no boundaries, right?
This was asked in the bar: Does the owner of a trademark have a right of property to
protect others from MSOI of the article to which it was attached? In other words, can
you enjoin the sale of smart phones? Can apple enjoin sale of smart phones?
A: It cannot. It can ENJOIN THE USE of the trademark apple for smart phones but not
preventing the sale of article on which trademark attaches.
Q: How are trademark rights acquired?
A: Trademark is acquired through REGISTRATION AND USE.
Q: Do you need to prove prior use?
A: No need.
Q: So what is basis that trademark is acquired through registration and use?
A: When you applied for registration, you are presumed to be the owner of the
trademark. But you need not prove or establish proof of prior us. There is a
presumption of ownership of trademark. Use is necessarily however to establish

ownership. OWNERSHIP IS WHAT CONFERS THE RIGHT TO REGISTER. Registration
does not confer ownership. Just because you register, it does not mean that you own
the trademark. You own the trademark? It gives you the right to register the
trademark.

Q: This was asked in the bar. The last one, two years ago. What do you mean by first
to file rule in the context of trademark?
A: The applicant that first file for an application of trademark will be entitled to
registration.
Q: Is it the same as first to file in patent?
A: In case of two pending application, the one that will be granted is the one first to
file.
Q: Mistakes happen right? What if the IPO issues or registers the trademark in favor
of applicant. It turns out that the registrant is not the owner. What are the remedies
available to the actual of owner of trademark?
A: The actual owner of trademark can file for cancellation.
Q: Can he file for infringement trademark?
A: No. He has no right.
Q: Is it possible for the IPO to issue two certificates of trademark registration in
favor of two applicants?
A: Yes. It is possible?
Q: Is there a case in your outline or not in your outline that SC issues two certificates
for the same trademark to two different persons?
A: E.Y. Industrial Sales v. Shien Dar-‐ Trademark VESPA for air compressor.
Q: Who is entitled to uphold the trademark registration? Is it the one who procured
it first?
A: It is THE ACTUAL OWNER AND NOT THE DISTRIBUTOR who use in trade or
commerce or industry is the one entitled to the certificate not necessarily the first
one who procures the certificate.

Q: ABC got it first for example. XYZ was issued the certificate corresponding for the
same trademark VESPA. ABC procured certificate of trademark registration filed a
petition to cancel the trademark of XYZ. But instead of IPO cancelling XYZ’s
certificate, it cancelled ABCs. Is that possible? Is it allowed? It was done in that case.
Even if not prayed for XYZ. ABC ang nagfile, pero yung kay ABC yung kinancel. That
is held to be valid. Why? Is IPO bound by technical rules of evidence?

A: IPO is not technical bound by rules of evidence but based on proceedings. Based
on the proceedings, it was XYZ who was the one who first use it in trademark or
commerce and ABC was just a distributor. Then the right of XYZ as owner shall be
upheld rather than a right of mere distributor.
Q: What are the cases where declaration of actual use (DAU) is necessary in
connection to trademark? This is not asked in the bar by the way.
A:


1. Within 3 years from FILING. Otherwise if not acted within 3 years, it will be
declared to be abandoned/ withdrawn. This is the case of Mattel v.
Francisco. So the applicant for trademark registration admitted in his
pleading that he has not used the trademark for more than 3 years. So the
IPO can MOTU PROPRIO declare the application to have been abandoned/
withdrawn on the strength of that admission.
2. With 1 year from the 5th anniversary, you have to declare DAU. Otherwise the
IPO can motu propio or by a motion of any concerned party remove it from
register of trademark.

Certificate of registration is only a prima facie proof that registrant is the owner
of trademark. A prima facie proof that it registration is valid and prima facie
presumption that it is used for the goods specified in the certificate or goods
related thereto.

FIGARO is my client (blab la bla bought it from De Jesus Family). It was found out
that the trademark Figaro is not registered, the name Figaro. It was named to
former president. Former president naman the owner of binalot. She was the
one who had the trademark registered in her name.

Q: Can Figaro file an action for trademark infringement against that registrant?
A: No. The first element of trademark infringement is registration of trademark.
Q: Can we file however an action for injunction to restrain her from using the
trademark while the case is pending on the ground that you are the owner of
trademark?
A: We can. Because injunction does not require registration of trademark. It only
requires proof that you are the owner of the trademark. So we presented proofs
in evidence. The parties’ agreement, publication fees, atty’s fees (it all came
funds from Figaro), and presented in evidence the very person who
conceptualized and designed the trademark figaro (with his eyes closed and
blind folded).
Q: Is that action for damages and preliminary injunction entitle to us to the
registration of trademark?
A: No. We have to file petition for cancellation of trademark with IPO.
Q: What is the premise/ rationale?
A: The premise is while the IPO issues certificate of trademark registration, that
only constitutes PRIMA FACIE PROOF THAT SHE OWNS THE TRADEMARK and
the registration is valid. It can be overcome however with evidence to the
contrary.

Q: Case of Ecole cuisine (This was asked in the bar). The trademark cordon bleu
for chicken. So there is a culinary school in Paris France owned by registered
name Cointreau, the partnership in Paris. The ______ of that culinary school bears
the trademark of cordon bleu in the Philippines (ecole cuisine). When Cointreau
learned about the registration of trademark, in the name of ecole cuisine, it filed
petition for cancellation of trademark in the IPO. There is no showing in actual

use in trade or commerce in the Philippines. The question is, can the trademark
of ecole cuisine be cancelled?
A: Yes. Proof of prior use in any country that is signatory to Paris convention
bars the application for trademark registration in favor of any other person.

To understand better we have Fortune Tobacco v. Philip Morris case-‐ Fortune
Tobacco uses trademark Mark VII. Predominant word is Mark. Philip Morris filed
an action for trademark infringement in the Philippines on the ground that Mark
VII is confusingly similar with Mark. 2 defense raised by Fortune Tobacco:

1.) Philip Morris is not doing business in Philippines, therefore he cannot
maintain a suit.
2.) There is no proof or showing that the trademark Mark is being used in the
Philippines. Therefore Philip Morris cannot claim that he is being prejudiced
by the use of Mark VII.

On the first issue, as we taken up in Corporation law, an action for enforcement
of intellectual property rights maybe filed and maintained by a foreign
corporation despite lack of license. Because the contractual obligation is in Paris
Convention that imposes upon countries the obligation to accord and enforce
intellectual property rights from citizens and nationals of countries signatory to
convention. As you all know, Paris convention is now part of IP Code.

On the second issue, SC upheld the argument of Fortune Tobacco that because
Mark as a trademark not used in the Philippines, it cannot bring any prejudice/
harm. Therefore, there is nothing wrong in having trademark Mark VII. Now that
principle has been abandoned in the case of ecole cuisine.

As we said, the use of trademark in commerce or industry, anywhere in the
world, signatories to Paris Convention, BARS THE APPLICATION FOR
TRADEMARK REGISTRATION by any other person/ entity. Why? Because that
person is not the owner of the trademark. So he is the owner? The first one to
use it in trade or commerce. As we said, it is not the registration that confers
ownership of trademark. It is ownership that confers the right to register. The
first one to use is the owner. He alone should obtain certificate trademark
registration.

Same principle in Birkenstock case. SC upheld the right of birkenstock, because
as the first one to use, he is the owner of trademark and subsequent registration
maybe cancelled upon motion/ petition of actual owner.

Term of protection from trademark infringement – 10 years can be extended
with an increment of 10 years subject to the requirement of DAU (within 1 year
of 5th anniversary of certificate of registration)


Q: Regarding trademark that can be registered, there are 2 tests to determine
likelihood of confusion. Under the Dominancy test, the focus is dominant feature
of trademark. Under holistic test, it is the entirety of trademark. Now, can you
please give me 5 cases where the SC applied the dominancy test and holistic test.

Dominancy Test:
1. Papa (for ketchup) v. Papa boy (for lechon sauce)
*Papa is arbitrary
2. Macjoy v. Mcdo and Big Mak v Big Mac
*For hamburger, always dominancy test
3. Stylized “S” of Sketchers v. Strong shoes
4. D10 plus v. D10 80
5. Dermalin v. Dermaline
6. Universal Converse Device and Converse Chuck Taylor
7. Nan v. Nanny
8. Master Roast v. Flavor Master

Holistic Test:

1. Levi Strauss v. LSJ
2. LEE v. Stylistic Mr. Lee
3. Diaz v. People
4. San Miguel v. Asia Brewery

(BREAK-‐-‐-‐ naputol na yung record after nito.)

In Lotus case, so soya and edible oil were grouped together under the same
classification. Products are grouped accordingly. Camia ham and lark are also
grouped together. SC said these are unrelated to one another and therefore the
registrant KOLIN cannot prevent the registrant kolin for household appliances. So
what are the tests to determine if they are related and not related to each other. It is
not the classification made but by the:

a.) nature and purpose of the product.
b.) Market channels of commerce – how they are sold? Where they are sold?
c.) Price and lifespan of product

What is the test to be applied in likelihood of confusion? Depends on facts of the
case. However the ULTIMATE TEST is “is the public likely to be deceive by these 2
competing trademarks?”

Q: What else cannot be registered?
A: Well known mark. There are 2 kinds.

a.) Well known mark registered in the Philippines and-‐ protection extends even
to dissimilar goods and services.

b.) well known mark that is not registered in the Philippines-‐ protection
extends all similar goods and services.

Q: Who determines if it is a well known mark? Is it the country of origin or country
of use?
A: SC said either coming from country of origin or country of use taking into account
the knowledge and relevant sector of the public. NOT GENERAL PUBLIC but
RELEVANT SECTOR OF THE PUBLIC.

For example. Is Barbizon is a well known mark? Guys, do you know Barbizon mark?
Because if you know, I doubt your gender. Barbizon is a well known mark for
Lingerie. In this case we take note the relevant sector, the women sector. And not
the general public (Mirpuri v. CA).

In-‐n-‐out case-‐ It is a well known mark in the country of origin. Not well known in the
Philippines but well known in country of origin then it is entitled to protection
likewise.

Madrid protocol-‐ One filing multiple registration or coverage.
If you register in a country that adhered to Madrid protocol, then the protection
extends to all countries signatories to adhering the Madrid protocol. Pag sinabi
nating well known mark, if it is registered in the Philippines, the protection extends
to similar and dissimilar goods right? If not registered, only to similar goods. Now
what if it is registered in the Philippines? So it is extendible to similar and dissimilar
goods. What about in other countries signatory to adhering the Madrid protocol?
Will that well known mark be likewise protected for dissimilar (?) goods or
services?

A: Yes. That’s why one filing, multiple registration or coverage.
Q: Is Madrid protocol constitutional? Does it not violate IP Code? Does it requires
senate concurrence? (This was asked in the bar last year, in political law)
A: The Madrid protocol is only an executive agreement not treaty therefore it does
not require senate concurrence.

For IP purposes, does Madrid protocol conflict with the law in IP Code? In the case
of IP association v. Ochoa (in his capacity as executive secretary), the SC said there is
no conflict between the two because it states under the Madrid protocol, it takes
into account the requirements of the local laws. Meaning you cannot register it
under the Madrid protocol unless you comply with the requirements of your local
laws.

Q: What about the so called theory of Dilution? (Levi Strauss v. Clinton Apparelle)
A: Paddocks and Dockers-‐ Not yet acquired a famous mark but if it acquired the
status of a famous mark, it is the owner that can secure injunction if the use would
cause impairment/ dilution of his goodwill. In that case, the owner of the famous

mark may apply/ secure for injunction to restrain the use of that famous mark for
other products/ services if such would be impaired/ diluted of its goodwill.

Example: Louis Vuitton is a famous mark. What if Louis Vuitton is used as a
trademark for toiletries or napkins? Can Louis Vuitton (assuming not registered in
the Philippines) get an injunction to restrain the use for toiletries? YES, because the
use of that will dilute its goodwill.

Q: (Not yet asked in the bar) What are the remedies of an owner of a well known
mark that is not registered in the Philippines?
A:

a.) May oppose the application for registration of a trademark that is identical
with a well known mark for similar goods or services.
b.) If one is granted already, the owner of the well known mark may file petition
for cancellation of registration.
c.) Unfair competition-‐ Even if it is not yet registered in the Philippines, unfair
competition may still be prosecuted because unfair competition is not
dependent on registration of trademark. It is passing of goods as
manufactured by a particular manufacturer without the element of
registration.

What else need not be registered?
*Misleading mark
*Descriptive mark
*Generic mark
*Color, sign, shapes

unless it acquired a SECONDARY MEANING. And the public associates this erstwhile
generic mark, descriptive mark for a particular manufacturer in this case entitled to
protection.
Minimum period/ years of use to acquire the status of secondary meaning-‐ 5 years
use in commerce and trade.

*Ang Tibay v. CA-‐ Ang Tibay is descriptive, it means durable. It would not have been
possible for registration right? But because of long use of Ang Tibay for combat
shoes, it acquired secondary meaning.
*Lyceum case-‐ Lyceum is generic mark that cannot be appropriated. Lyceum filed a
petition with SEC to compel all schools with the name “lyceum” to drop the word
lyceum in their school name/ corporate name. SC said lyceum is generic term for
“school of facility of learning and instruction” cannot be subject for appropriation.

*Ong v. People-‐ Is Marlboro a generic mark? Neither generic or descriptive.
*Papa is arbitrary mark
*Master is suggestive mark

*Arbitrary and suggestive marks can be registered since they are not descriptive
marks or generic marks.
* Saint Francis case-‐ Saint Francis Development Corporation owned by Roxas family
was the first one who adopt or use “Saint Francis” as the name for its condo project.
Then came Shangrila Properties. It also adopted “Saint Francis” as the name for its
condo project.

Q:Can Saint Francis Development Corporation prevent Shangrila properties from
adopting the name or mark “Saint Francis” for its condo project?
A: Why “Saint Francis” btw? It’s near Saint Francis church in mandaluyong/SC said,
has it acquired secondary meaning? No. The use of “Saint Francis” is confined to one
locality and only for one condo project. It cannot be said that the use is pervasive in
scope and nature. It does not acquired a secondary meaning yet for the public to
associate “Saint Francis” with Saint Francis Development Corporation.

Q: Trademark infringement? What is the essence of trademark infringement?
A: Unauthorized use of the registered trademark in connection with sale of goods
without the consent of the registrant.

Requisites: RIS-‐ LC

R-‐ Register; It must be registered with IPO.
I-‐ Imitated, reproduced or copied or applied on labels or receptacles
S-‐ Sale of similar goods
L-‐ Likelihood of confusion to public
C-‐ Consent of registrant was not obtained

Favorite topic in bar: How do you distinguish trademark infringement from unfair
competition?

Trademark Infringement Unfair Competition
Essence Unauthorized use of a Passing off goods as
registered trademark manufactured by another
Infringement Must be registered with Does not require
IPO as a condition trademark registration-‐
precedent maybe initiated and
prosecuted despite the
fact that it is not
registered with IPO
Intent is not necessary Intent is necessary
Only applies to SIMILAR May apply even to
GOODS dissimilar goods but the
essence is passing off
goods as those of another.


For example (4th distinction): Ang Tibay shoes v. Ang Tibay ketchup-‐
Q: Can Ang Tibay prevent adoption of Ang Tibay for Ketchup?
A: No.
Q: But if the manufacturer of the ketchup passes off to the others, then the ketchup
manufactured by Teodoro Family, then there is unfair competition although not
trademark infringement.

Also in the case of Saint Francis Development Corp., one of the issues is “was there
unfair competition on the part of Saint Francis Shangrila properties in adopting the
name “Saint Francis” for condo project? The SC dismissed the trademark suit,
likewise dismissed the suit for unfair competition. Shangrila Properties sold its
condo units and does not pass off its units as constructed by “Saint Francis
Development Corporation”. There’s no attempt to mislead the public nor tend to
give them the appearance that they are constructed by Saint Francis Development
Corporation. In that case, there is no unfair competition.

Recent case (Roberto Co v. Keng Huan) – In this case the SC reiterated the rule that
without trademark registration, there can be NO TRADEMARK INFRINGEMENT but
there can be unfair competition.

So same principle in the case of caterpillar v. Samson-‐ No trademark infringement
unless the trademark is first registered. But registration not necessary when it
comes to unfair competition.

Q: *Not yet asked in the bar Does the act of refilling empty industrial tank that bears
a registered trademark amount to trademark infringement, unfair competition or
both?

Remember the case, shell owns the trademark shellane for LPG gas. And then petron
owns trademark gasul also for LPG gas. So the trademarks gasul and shellane are
stamped or marked on empty containers. Now REGASCO, refilled its empty cylinder
tank that bears trademark gasul and petron with its own LPG gas and sells to its
customers. So shellane and petron sued REGASCO for trademark infringement and
unfair competition. So how many crimes are committed? How many violations of IP
rights are committed?

A: SC said that there is both trademark infringement and unfair competition. SC said,
mere UNAUTHORIZED USE OF A CYLINDER TANK THAT BEARS A REGISTERED
TRADEMARK IN CONNECTION WITH SALE OF LPG GAS BY ITSELF IS TRADEMARK
INFRINGEMENT.

At the same time, the act of refilling empty cylinder tank that bears trademark
amounts to unfair competition because REGASCO IS PASSING OFF TO THE PUBLIC,
TO ITS CUSTOMERS, THAT INSIDE OF ITS TANK, IT IS MANUFACTURED OR OWNED
BY SHELL/PETRON WHEREIN FACT IT IS OWNED BY REGASCO. THERE IS
FRAUDULENT INTENT ON THE PART OF REGASCO.

Remedies available of the trademark registrant:

1. Action for trademark infringement in case of unauthorized use of trademark
for same goods or similar goods. This is coupled with prayer for damages
that the owner of trademark suffered, meaning
a.) there is profit which he could have meet had there be no infringement or
b.) profit that defendant made

2. Damages as the court may determine based on the percentage of gross sales
of the defendant. If cannot be ascertained, reasonable percentage of gross
sales of the defendant. (If we will compare it to copyright later on, it is not
based on percentage but based on the sales of the defendant). Damages
maybe doubled in case of intent to deceive the public or defraud the
complainant. (remember our case here, for patent it may be tripled)
3. To impound, seize, confiscate the invoices, documents, paraphernalia,
receptacles used in connection with infringement
4. Preliminary injunction to restrain the acts of infringement in case it is
pending.
5. Once, the case is decided by the court, the P.I becomes final injunction and
court order may likewise be obtained to destroy these items carried out.

Del Rosario case-‐ *Not yet asked in the bar
Q: Can you claim for damages if the warrant is issued under Rule 126 of Rules of
Court?
A: There are 2 rules governing issuance of search orders:

1. Under Rule 126 of RoC-‐ In anticipation of violation of the IP Code
2. Rules on search and seizure orders to inform property rights based on the SC
circular.

Q: Where can a person claim for damages? Can the person whose articles were
seized and searched or confiscated claim for damages in the same court that issued
the search warrant under Rule 126? Is it in the same court or another court?
A: If the search warrant was issued under Rule 126, in anticipation of a criminal
offense, the damages cannot be prayed for or recovered on the same court without
first limiting of its jurisdiction or only for the purpose of determining probable
cause to issue search warrant. However, if the search and seizure order was granted
by the court pursuant to the rules on issuance of orders to protect property rights,
then the damages should be prayed for and recovered on the SAME COURT who
granted the search seizure order.

When you apply an action for trademark infringement, you may ask the court for
preliminary injunction right? Search and seizure order. Okay, if the court grants it
then articles, receptacles, goods confiscated. It turned out that there is a basis for
trademark infringement. Where can the owner of those seized articles file and

recover damages? IN THE SAME COURT THAT GRANTED THE SAME SEIZURE
ORDER AND NOT IN DIFFERENT COURT.

Remedies under IP Code in case of trademark infringement:
Q: Now let’s say there is a pending application for trademark registration. So ABC
owned the trademark. Registered in the IPO and there’s a pending application for
the same trademark. What are the remedies available to the registrant?

A:
1. To oppose the application of registration on the ground that the trademark is
similar or identical with the registered trademark.
2. If trademark has been registered or granted, the owner of trademark may
petition for cancellation of the same thing. (Shien Dar Case)

Q: Can the registrant of the trademark file a petition for trademark cancellation with
the IPO against a subsequent registrant trademark at the same time action for
trademark infringement?
A: Yes as long as the admin proceedings are commenced first it does not bar the
filing of application for damages in trademark infringement with appropriate court.
Q: What if there is an action for trademark infringement. Can the respondent as a
defense file a petition for cancellation of trademark?
A: No because once the court acquires jurisdiction over the case, it bars admin
proceedings. So the defense or remedies available to respondent is to answer or
respond to the charge accordingly.
Q: What if there are 2 registrants of the trademark. One of them filed a petition for
trademark cancellation with the IPO. Does that stop the filing of an action for
trademark infringement?
A: No, as long as mauuna yung admin proceeding it does not bar an action with the
court conferred by law.
Q: Let’s say the petition for trademark cancellation filed by the respondent in the
action for trademark infringement became final. What will happen now with the
action for trademark infringement. Will it be dismissed?
A: Once the IPO rules on the petition for cancellation of trademark that acquired
finality, then the action for trademark infringement will have no more leg to stand.
As long as mauna yung IPO, declaring that the trademark shall be cancelled, it
acquires finality. In that case, respondent in action for trademark infringement was
able to file petition for cancellation of trademark ahead on the action for trademark
infringement. And then the IPO concluded on that case and declared the trademark
by the plaintiff in an action for infringement must be cancelled. But the SC that
action then would have no more leg to stand on because based on registered
trademark, which has been cancelled by the IPO.

Limitations to actions for infringement:
1. The owner not entitled to recover profit or damages unless the acts
committed (?) with a knowledge that such limitation deriving the cause to
confusion.

But knowledge is presumed as you all know. The letter r with circle amounts notice
to the whole world that the trademark is registered. Therefore knowledge is
presumed on the part of the infringer.

Q: Is a good faith a defense in a suit?
A: In trademark infringement, just like patent, just like in copyright, it is not a
defense.
Q: Does the doctrine of prior user also apply to infringement of trademark?
A: Yes, by express provision of law. Registered mark has no effect in any person who
in good faith before filing or after date was using the trademark solely for his
business.

Other limitations:
Q: If the infringer is engaged solely in the business of printing the mark or other
printing materials, can he be held liable for damages? So the act is limited to printing
the infringed trademark.
A: So the remedy available to the registrant is only injunction to restrain/ prevent
further printing but not damages.
Q: What about if infringement is part of advertisement in newspaper/magazine?
A: The remedy of owner is injunction on publisher for future publication but not
damages

Case of Shangrila v. CA-‐ Shangrila restraurant along west avenue, was the first one
to registered the trademark ahead of Shangrila properties. That restaurant has
become famous because Pope John Paul II eat in that restaurant. So there is a room
noh dedicated to Pope John Paul. As we said, the principles are, pag nauna yung
admin proceeding it does not deprived the court with jurisdiction to entertain
action for trademark infringement coupled with damages. But if the action is filed
first, then it is bar to the filing of admin proceeding _____ with the IPO to prevent
multiplicity of suits.

FIGARO case-‐ We obtained a favorable judgment with the IPO but we did not
implead IPO as defendant. Judgment of RTC has the effect of suspending the
proceedings with the IPO right? So pag nauna yung admin, he can file action in court.
Na once the court rendered judgment, admin proceeding suspended to give way to
court action. Despite the decision of RTC, the IPO went on with its proceeding. It did
not heed the order or judgment of the court. So we argued that it should stop
because Shangrila v. CA. But they said “we are not part of the case”. Henceforth, even
if it is not in IP Code, when you go to practice, you implead IPO as a nominal part.

February 07, 2018

Important doctrines (Side comments of Dean Divina in recitation; Di ko na ininclude
yung cases na walang side comments si dean):


1.) Pearl and Dean v. Shoemart-‐ Copyright, trademark, and patent are different
property rights so they cannot be interchanged. They can be interrelated but
cannot be interchanged. Utility box is appropriate for patent. He however
obtained copyright. No patent, no protection.

2.) Jessie Ching v. Salinas-‐ copyright owner of eye leaf bushing cannot prevent
others from manufacturing and selling the same eye leaf bushing because
eye leaf bushing is not proper object for copyright.

3.) Aguas v. Deleon-‐ Tiles for flooring are involved in this case; By express
provision of law, what to be patented are product that satisfied the element
of NISIA as well as PPI. Process or improvement can be the proper subject of
patent independently of the patented product. The inventor has no exclusive
right to improve the process. It can be improved by anyone.

4.) E.I. Dupont v. Director Emma C. Francisco-‐ Right to priority; You may have
the product satisfied all the elements for patent, and unless you comply with
the procedures then no patent should be granted to you and no rights on
patent are likewise granted.

5.) Manzano v. CA-‐ While the Bureau of Patent grants the patented, there is a
presumption of regularity in performance of duties. The presumption is the
product satisfies all elements for patent/copyright/trademark as the case
maybe.

6.) Creser Precision Systems v. CA-‐ An action for infringement of patent can only
be initiated by the patent holder, successor, or assign. The right to patent
does not include the TRUE INVENTOR. It is limited to heirs or assigns. The
remedies concomitant to patent infringement cannot be filed or pursued by
someone who is not patent holder.

Remember our discussion on remedies available in case of action for patent
infringement. Actual damages, injunction to restrain action of infringement.
Additional damages may awarded by the determination of court as long as it
does not exceed the actual amount of damages. These remedies are the
whole package of ______ in action for patent infringement. Injunction cannot
be prayed in court by someone who is not a patent holder.

The remedy available to him is to file appropriate action in court and be
declared as one who is entitled to patent. But not infringement and not
prayer for issuance of injunction to restrain the patent holder from
performing acts that correspond to the ones that we are talking about.

7.) Smith Kline v. CA-‐ There can be no infringement of patent unless there is
identity of claims. So if in the body of patent does not include Abendazole,

there it cannot restrain others from manufacturing that medicine with that
kind of substance.

Another important doctrine in this case-‐ The SC that there are two tests to
determine if there is infringement of parasite.

1.) Doctrine of equivalents
2.) Doctrine Literal Infringement

Under both tests, SC said that there is no infringement of patent. On
literal infringement, you juxtapose the claims of the patented product
and the used (?) product. Smith Kline does not include in registration the
substance of Abendazole.

On the application of doctrine of equivalents, SC said there ought to be
concurrence of same function, same means, and same result test. Result
is not only the consideration, those 3 must concur.

8.) Phil. Pharmawealth Inc. v. Pfizer-‐ The rights granted by the patent holder are
exercisable only on the term of the patent. Once the term expires, then the
rights that once exclusive, becomes public dominion, and can MUSOI the
patented product without infringement of patent.

Procedural aspect-‐ You assail the interlocutory order via petition for
certiorari under sec. 65; You apply the rules of court suppletorily. So an
order denying a motion for extension of ______ can be assailed by petition for
certiorari. So certiorari was a right remedy.

9.) Prince v. United Laboratories-‐ This was asked in the bar. Is it the Bureau of
Patents that determines the royalty for compulsory licensing? It does not
require concurrence of patent holder. The IPO or appropriate department
can set the terms and conditions of compulsory licensing even the amount of
royalty.

However, it is no longer bureau of patent but DIRECTOR FOR LEGAL
AFFAIRS.

10.) Smith Kline v. CA (on compulsory licensing)-‐
Q: The grant of compulsory licensing does it amount to deprivation of
property without due process of law? Because as you all know, the concept
of compulsory licensing is that any person, the grantee of compulsory
license, by director of legal affairs, may exploit the patented invention of
another. Does it not violate due process?
A: It does not because compulsory licensee would have to acknowledge who
the patent holder is and the patent holder is entitled of payment of royalties.

So it is not for free. The amount shall be determined by the Director of Legal
Affairs.

Trademark:

11.) Pribhdas Mipuri v. CA-‐ Well known mark is entitled to protection in
the Philippines even if not registered in the Philippines. In essence, the gist
of Paris Convention is that it is now crystalized under Sec. 3 of Director of
Property Holder. Any country signatory to Paris Convention must respect,
recognize and enforce IP Rights or citizens or nationals of other countries
signatory to Paris Convention. Even if trademark abroad for example is not
registered here in the Philippines, the owner of the trademark is still entitled
to protection in the sense that no other person may claim ownership of the
trademark. The actual owner may oppose the application or registration of
the local entity or once granted, may file petition for this cancellation.

Remember the case of Ecole Cuisine right? Cordon bleu is not a well known
mark right? But it is protected as long as it is registered in any country that
is signatory to paris convention. So even if it not well known, for as long as it
is signatory to paris convention bars the application for registration of any
other person.

12.) Intellectual Property Association v. Ochoa-‐ Madrid protocol is only an
executive agreement not a treaty therefore it does not require senate
concurrence. It does not conflict with the IP Code because registration under
Madrid protocol must be taken into account.

13.) Kho v. CA-‐ He applied for copyright for the container but it is not
proper object for copyright that’s why he cannot restrain others from using
the same container for the sale of the product. It is more appropriate for
trademark.

Trademark, copyright, and patent cannot be interchanged. They are different from
each other. Proper remedy should be applied accordingly.

14.) E.Y. Industrial Sales v. Shien Dar-‐ The first person to use the
trademark in trade and commerce is the owner and as owner, he has the
right of trademark to be registered on his name. Ownership confers the right
to register and registration does not confer ownership.

The ultimate consideration is “who owns the trademark”. As you know in this case, 2
certificates of trademark registration were issued by IPO, for the same product, for
the same trademark, air compressor. Obviously, you cannot have 2 certificates of
registration over the same product in favor of 2 different persons. One has to be
cancelled. Now whose trademark shall be cancelled? Is it the one who prayed for it?
SC said that IPO will determine who is entitled to registration, the one who can show

or present evidence as the one who first use in trade and commerce. So his
trademark registration shall be upheld.

15.) Superior Commercial Enterprises v. Kunnan Enterprises-‐ The action for
trademark infringement be dismissed in whatever stage it maybe once the
trademark of _____ action for infringement has been cancelled. This is because one
of the elements of infringement suit is no longer present, that is a registered
trademark.

(Keep in mind in this case that the petition for cancellation is filed ahead of the
action for trademark infringement. If trademark infringement is filed first, the
remedy available to defendant is not to file petition for cancellation but to file an
answer to the action for infringement and the same answer invoked the same
defenses appropriate for cancellation of patent.)

16.) Birkenstock v. Philippine Shoe Expo-‐ The registration is not a mode of
acquiring ownership of trademark. The fact the Phil. Shoe Expo was able to
register the trademark does not mean that it is the owner if there is showing
that the other person is using trademark ahead of the registrant.

Significance of trademark registration:
a.) It established a prima facie presumption that the registrant is the owner of
trademark.
b.) The presumption of prima facie that the registrant is owner of trademark is
“valid”.
c.) The right to use trademark for the goods specified in the certificate and the
goods related are correct. The 2 rights are only prima facie.

It can be overcome by evidence to contrary.

17.) Kolin v. Kolin-‐ electronic products (like regulators, adaptors, and
transformers or similar accessories) v. household appliances

Doctrine of unrelated goods-‐ The owner of registered trademark cannot
preclude others from adopting, using the same trademark for unrelated goods.

Q: If products are grouped together arbitrary, does it mean that they are related
to each other? Because both products (electronic and household appliances) are
categorized under the same classification.
A: The fact that they are grouped together under the same classification are NOT
ENOUGH BASIS to conclude that they are related products.
Q: What are the factors that are taken into account as held by the SC?
A:

a.) Market channels-‐ how are the products sold
b.) Usefulness, purpose and nature of products

c.) Lifespan
d.) Price differentials

18.) Mattel Inc. v. Francisco-‐ While the requirement of proof of prior use has been
eliminated in the registration for trademark, the applicant must still declare
actual use from 3 years from the filing of application and within one year from
the 5th anniversary of trademark registration.

Judicial admission in a pleading that trademark has not been used for more than
3 years can be construed by IPO as abandonment or revocation of trademark
infringement.

19.) Mcdonalds v. L.C. Big Mak-‐ The SC applied dominancy test when it comes to
burgers. Big Mak with “k” is simarly confusing with Big Mac with letter “c”.

20.) Societe Des Produits Nestle v. CA-‐ Master is neither generic nor descriptive. It
is a suggestive mark, and as such can be registered. Application of dominancy
test, “flavor mastor” is confusingly similar with “master roast”, master being the
dominant word. Also, ordinary purchaser rule, when it comes to purchase of
ordinary items, there is no more time for comparison or mulling of things over
as SC puts it, we apply the dominancy test.

21.) Mcdo v. Macjoy-‐

Q: Is it more of confusion or product or confusion of origin?
A: Confusion of origin; That the hamburger sandwich, products of macjoy is
produced by mcdonalds corporation. The SC applied dominancy test in the
confusion as to source.

February 17, 2018

1.) Emerald Garment v. CA-‐ SC applied holistic test and applied the discerning
purchaser rule. Levi’s is ready to wear whereas jeans of Diaz is made-‐to-‐
order. SC enumerated the elements for trademark infringement (RIS-‐ LC)
a.) Trademark must be REGISTERED.
b.) It must be IMITATED.
c.) The SALE of goods or similar goods
d.) There is LIKELIHOOD of confusion
e.) CONSENT of registrant was not obtained

2.) UFC v. Fiesta Barrio-‐ papa ketchup v. papa boy for lechon sauce; The SC said
that the public maybe confused as to believe that papa boy lechon sauce was
manufactured by the manufacturer of papa ketchup.


*Concept of expansion of business-‐ It takes away from UFC the right to penetrate or
right to offer products related to the product it is to be offered. Papa is arbitrary
mark. It is not generic or descriptive mark and arbitrary mark can be registered.

3.) Mighty Corporation v. La Campana Fabrica-‐ gallo for wine and gallo for
cigarettes; Not related to each other.

Doctrine of unrelated goods-‐ Owner of registered trademark cannot preclude
or restrain others from manufacturing, using, or even registering the same
trademark for unrelated goods. It is because the scope of protection under
the certificate of trademark registration is only limited on the goods
specified on the certificate.

Gallo mark does not yet acquire “distinctiveness” to acquire the status of a “well
known mark”.

4.) Sehwani v. In-‐N-‐Out-‐ The Paris Convention was amended to expand the
concept of well known mark. The well known mark even if it is not registered
in Philippines or any other countries, it is enough that it is registered in the
country of origin. Of course, the concept of “well known mark” only applies
to trademark over goods. It does not apply to patent or copyright. It only
applies to similar goods unless of course it is registered in the Philippines.

Q: What is the criterion for determining if it is a well known mark? If not
prevalent in the Philippines, can it still qualify as a well known mark?
A: A mark maybe well known in a country of origin or country of use. Not
limited to country for use. Take into account the KNOWLEDGE OF
RELEVANT SECTOR OF THE PUBLIC.

5.) Fredco Manufacturing v. President and Fellows of Harvard College-‐
Q: Is Harvard trademark? Tradename? Is it both trademark or tradename?
A: SC said that it is tradename and at the same time trademark. The name
“Harvard” is a tradename but the visible design of Harvard is trademark.

6.) Faberge v. IAC-‐ “Brut” for toilet articles such as shaving cream, lotion and
other items v. “Brute” for briefs; The norm for expansion of business applies
only to SAME GOODS or SIMILAR GOODS. Underwear and toilet articles are
not grouped together under same classification and that’s the reason why SC
did not apply the norm for expansion of business.

7.) Conrad v. CA-‐ The action for trademark cancellation was filed first. If it was
filed first by the first owner of trademark, it does not deprive from filing an
action for trademark infringement and injunction for damages. Doctrine of
primary jurisdiction is not applicable in this case.


8.) Shangrila v. CA-‐ There are 2 registrations for shangrila. One is by shangrila
properties the other is shangrila developers group. Despite for petition for
trademark cancellation filed by shangrila developers group, the developers
group can still file an action for trademark infringement for the use of
trademark of shangrila. Why? Because unless cancelled, the trademark still
subsists.

What about Superior v. Kunnan? What happened in this case, the petition for
trademark cancellation was acted upon by the Bureau of Patent. Resolution
was rendered by Bureau of Patent and it became final. It cancelled the
trademark “Kennex” so therefore the action for trademark infringement was
that there was no more leg to stand on.

9.) Levi Strauss v. Clinton Apparelle-‐ “Dockers” v. “Paddocks”; SC said that under
theory of dilution, it is not the likelihood of confusion that is material. That is
not the issue. The issue is lessening or diminution of the goodwill.

*Theory of dilution of goodwill-‐ It dilutes or impairs its goodwill.
Q: Can the aggrieved party file an action for infringement?
A: No. One of the elements of trademark infringement is LIKELIHOOD OF
CONFUSION. Kung ang pinaguusapan ay hindi likelihood of confusion, so you
cannot file an action for trademark infringement. You can only file an action
for injunction and perhaps damages.
Q: Was this applied in this case?
A: No. Because “dockers” does not acquire yet the status of a “famous mark”

10.) Tanduay Distillers v. Ginebra-‐
Q: Why is it that san Miguel is entitled to injunction, to restrain tanduay from
the trademark “kapitan ginebra”?
A: The injunction was not granted. It was remanded by the lower court to
determine if San Miguel has acquired an exclusive right to trademark
“Ginebra” and it is only then that it can ask to be entitled for the issuance of
preliminary injunction.

11. Caterpillar v. Samson-‐ Distinction of unfair competition v. trademark
infringement
Trademark Infringement Unfair Competition
Essence Unauthorized use of a Passing off goods as
registered trademark manufactured by another
Infringement Must be registered with Does not require
IPO as a condition trademark registration-‐
precedent maybe initiated and
prosecuted despite the
fact that it is not
registered with IPO

Intent is not necessary Intent is necessary
Only applies to SIMILAR May apply even to
GOODS dissimilar goods but the
essence is passing off
goods as those of another.

12. Del Monte Corp. v. CA-‐ The ultimate test is WON that the public is likely to be
deceived. If you notice, walang dominancy test, walang holistic test right? But
similarity of features of the two competing trademark.

13. Asia Brewery v. CA-‐ There is no trademark infringement because pale and pilsen
are generic and descriptive that cannot be appropriated. There is no unfair
competition because printed at the back of the bottle of asia brewery is
“manufactured by asia brewery corporation” therefore it belies the claim that asia
brewery is passing off its beers as owned and manufactured by san Miguel beer.

February 21, 2018
*Century Chinese Case-‐ 2 ways to obtain search warrant for enforcement of IP
Rights:

1.) Rule 126-‐ You can apply for search warrant in anticipation of criminal
offense or violation of law like the IP Code. The only requirement to convince
the judge under Rule 126 is that there must be probable cause. The
application for search warrant under Rule 126 is not a prejudicial question.
2.) Issuance of search and seizure order pursuant to the rules of SC or
enforcement of IP Rights-‐ You apply it as a provisional remedy in the action
for trademark infringement. To confiscate, seize, and impound, all materials
in relation to trademark infringement.

Q: Where do you ask for damages in case for a wrongful search or seizure or
properties or paraphernalias? Meaning there is no trademark infringement yet
right?
A: If the search is issued under Rule 126, you apply for damages in a SEPARATE
ACTION IN ANOTHER COURT whereas if unlawful search and seizure is pursuant
to rules of SC, You apply for damages THE SAME COURT THAT GRANTED THE
SAME SEIZURE ORDER NOT IN ANY COURT.

(di ko na sinama yung 6 kasi nasa previous discussions ni sir wala naman
nadagdag ayan lang yung sa century chinese)

Copyright:

It is intangible, incorporeal right granted by statute to the creator for certain literary
or artistic works whereby it is invented for a limited period of time certain
economic and moral rights on the term prescribed by statute.

*Incorporeal and intangible right-‐ You don’t see it, you don’t touch it, you don’t feel
it but it is a right for certain purposes.
*granted by statute-‐ Only the law can grant copyright. It is true that if a work is
protected from the moment of creation, then that work must be copyrightable in the
first place. So now copyright subsists except on those works enumerated by law. It is
the law that grants copyright, not the creation. But it is the law that confers
copyright.
*Juan v. Juan (2017)-‐ Trademark “Lavandera”; ABC was the first one to register
trademark “lavandera”, first one to use trademark “lavandera”. It turns out that
there is another corporation owned by the brother of the stockholder of ABC using
trademark “lavandera”. So ABC filed an action with the court for the cancellation of
trademark, injunction, and damages. And the RTC ruled that neither them entitled
the trademark registration because “lavandera” is part of musical composition as
early as 1940. So the RTC ruled that neither abc or xyz owns the trademark because
this trademark is part of the musical composition. So the judge was obviously
confused with trademark and copyright no. Trademark is a visible sign attaches to
the goods. It distinguishes the goods from another. It maybe part of a musical
composition right? But trademark is different from copyright. So trademark
“lavandera” can be registered as a trademark even if it had been part of a musical
composition.

*Granted by the statute to the creator or author of original literary or artistic work-‐
so there can be no copyright except on the works enumerated by statute. So in other
words, it must fall within the enumeration under IP Code. If it is not under the
enumeration, then no copyright subsists.
*Creator or author of original literary or artistic work-‐ If you want to be expansive,
“literary, artistic, scholarly, or scientific work”. But for bar exam purposes, literary
and artistic works suffice. Scholarly or scientific work is subsumed by literary or
artistic work.
*Whereby it is invested or granted certain economic or moral rights-‐ As you know
there are 2 types of rights, economic or moral. It can only be enjoyed on the terms
specified by statute. There is a period for copyright except for right of attribution.
*Granted to author or assignee-‐ Right to work maybe assigned, and in this case, it is
the assignee who will be entitled to the copyright.
*It is protected from moment of creation-‐ It means that it need not be registered
with the National Library and Supreme Court. Registration in the Supreme Court is
necessary for legal _______ (5:47) right? But the registration with the National Library
and SC is not a condition precedent for the opposition of copyright. For as long as it
is a work specified by law, then the creator is protected from the moment of
creation despite non-‐ registration.
*Columbia v. CA (Under P.D. 49)-‐ It is infringement on copyright; If the work is not
registered with the national library and SC, the only remedy available to the author
or creator is injunction to restrain acts of infringement. But it cannot ask for
damages. So without registration, then the author or creator cannot ask for damages
but limited to injunction, to restrain any act of infringement. Now, that is no longer

the rule under the IP Code. THERE IS NO LIMITATION ON WHAT CAN BE PRAYED
OR ASKED IN CASE OF COPYRIGHT INFRINGEMENT. So, the author or creator may
ask for actual, moral damages despite the fact that it is not registered with the SC
and national library. It is consistent with what the law provides that right to
copyright subsist from moment of creation.

*The object must be original creation in literary or artistic domain and it is not
indefinite as you know. After a certain period, it becomes public dominion. That’s
why you remember, those of you who have Samsung phones, or any smart phones
for that matter, they are allowed to free books like kindle. Kindle offers on a
complementary basis to subscribers classic books. So those works for more than 50
years from the death of the author. Why do they offer it for free? Because there are
no more economic rights. These works become public dominion because the term of
copyright has already ended. So we said that the only right in perpetuity is the right
of attribution.

Remember the bar examination? Juan dela cruz as a musical composition, let’s say
the tempo is ballad, and they assigned this right to Pedro Reyes. Pedro Reyes
transformed this ballad to rock. Can he do so? Yes. Having been assigned the right,
Pedro can transform the work as he pleases. But can he ______ ought the creator of
musical composition? He cannot because it is forever belonged to Juan Dela Cruz
(Because he did not compose it). Pedro, if he claims to be the owner of that
composition, then he is guilty of infringement of copyright. Why? Because the
essence of infringement is ANY ACT IN VIOLATION OF RIGHTS GRANTED BY LAW.
Patent holder for patent, trademark registrant for trademark, or author or creator
for copyright. So any act in violation of economic or moral rights amounts to
copyright infringement.

Q: How broad is the right granted in copyright?
A: The rights are derived from the grants and can be enjoyed only with respect to
works and by persons on terms specified by statute.

Cases to refresh your memory:
*Eye bushing-‐ Copyright was obtained by the owner of eye bushing. But can he
restrain others from selling and manufacturing eye bushing? SC said in the case of
Ching v. Salinas, no copyright subsist on eye bushing because it is not copyrightable
in the first place. It is not literary or artistic. It is more appropriate for patent for
utility model. Not having been obtained patent for utility model, then he does not
have the right to the patent and therefore any act of manufacturing or selling would
not amount to infringement of patent. He should have complied for patent and not
copyright.
*Light boxes-‐ not copyrightable. What is copyrightable are the posters sandwiched
by those 4 sheets illuminated by backlight. Any act of manufacturing will not
amount of infringement of copyright.
*Medical cream and the name of container (Kho v. CA)-‐ They obtained the copyright
on the container of the beauty cream product. The name in container. So this is

appropriate for trademark, not copyright that’s why the act of using the container
will not amount to infringement of container.
*Manly Sportswear v. Dadodette Enterprises-‐ No copyright on goods because they
are not intellectual creations despite the fact that the owner was able to obtained a
certificate of copyright registration on the use.

So these cases confer that copyright subsists only on the works specified by statute.
Copyright is NOT ACQUIRED BY VIRTUE OF REGISTRATION.

Q: When is starting point of protection of copyright?
A: From the moment of creation regardless of its content, quality, and purpose. It
may be a lousy musical composition, but in so far as the author is concerned, he is
entitled to protection from moment of creation.
Classification of works: Original and derivative works.

Original literary and artistic works as enumerated by law:

1. Books, pamphlets, articles and other writings
2. Periodicals and newspapers

If you notice gazette and directories were excluded; Under P.D. 49 they were
included right? Not anymore in the IP Code. Why? Is yellow directory
copyrightable? It is not. It is functional listing of telephone numbers,
addresses of subscribers of telephones not copyrightable. That’s why you
don’t see gazette and directory anymore. They are not literary or artistic;
They are functional listing of names, telephones numbers of subscribers.

Lotus notes (ginagamit ng mga architect)-‐ not copyrightable;
Cookbook-‐ is it a book? Not copyrightable. Only listing of ingredients.
Q: What if it tell you method of cooking pochero, binagoongan or adobo?
A: System or method are likewise not copyrightable.
3. Lectures, sermons, addresses, dissertations prepared for oral delivery whether
or not reduced in writing or other material form-‐ thesis defense is obviously
copyrightable; lectures, sermons of homilies of priests are likewise
copyrightable.

Compilation of lectures of professors-‐ copyrightable;
Q: If distributed to classmates is it a case of infringement of copyright?
A: It ought to be. Lectures are copyrightable even though it may not be expressed
in writing. (But no enforcement because professors even appreciate that lectures
are being collated by students.)

4. Letters
Q: Are text messages copyrightable? Let’s say Diana and paolo exchanging text
messages. Administrator of facility took a look of the messages and then

published it without consent of Diana and paolo. Is there an infringement of
copyright?
A: Text messages are AKIN to letters that’s why there’s copyrightable. And even
if it may not be a letter, it falls under “other literary or artistic work”. There’s an
encompassing clause. So for sure, even if it will not fall under letters, it will fall
under “other literary or artistic work”.

But if it is only “K”, “I love you”, “were na u”-‐ these are not copyrightable; not
literary or artistic.

Asked in the bar, who owns the letters?
A: Owned by beneficiary or recipient but copyright belongs to author or composer
therefore in case of publication of love letter by the recipient without the consent of
author, then copyright infringement was obtained. Any act of violation of economic
or moral rights is infringement of copyright.

5. Dramatic or dramatico-‐ musical compositions; choreographic works or
entertainment in dumb shows;

*Pantomime-‐ copyrightable

6. Musical compositions, with or without words;
7. Works of drawing, painting, architecture, sculpture, engraving, lithography or
other works of art; modelsor design for works of art;

Q: Is UP Oblation statute copyrightable? They have campus in bgc right? It was
replicated in bgc campus. I was asked if there was copyright infringement if bgc
campus uses it without consent from UP?
A: Well, in all likelihood, UP obtained a copyright to the sculpture. It asked the
consent of the sculptor to replicate the statute. In all likelihood as I said. Or if there
is none, then they have to obtain the consent of the sculptor. Right to
communication to public BELONGS TO THE CREATOR NOT TO THE RECEPIENT OF
THE COPYRIGHTABLE WORK.

The urban legend of UP oblation statute is Fernando Poe Sr.

Q: Can an ornamental design qualify also as an industrial design?
A: Yes. If that design can be used as a pattern for handicraft or pattern for industrial
product, then the design itself is capable for being covered by industrial design
independently of copyright.

9. Illustrations, maps, plans, sketches, charts and three-‐ dimensional works
relative to geography, topography, architecture or science;


There’s a recent case (Olano v. Co), hatchdoor design or sketch. Hatchdoor
design is copyrightable but the hatchdoor itself is not copyrightable. Why?
Because it is not entirely aesthetic. Hatchdoor is for practicality.

What is hatchdoor? It is a secret door but it looks like a window.
10. Drawings of plastic works of a scientific or technical character;
11. Photographic works;
12. Audiovisual and cinematographic works
13. Pictorial Illustrations;-‐ Charlie brown is a pictorial illustration and
copyrightable.
14. Computer programs;
15. Other literary, scholarly, scientific and artistic works.

Derivative works:

1. Dramatizations, translations, adaptations, abridgements, arrangements, and
other alterations of literary or artistic works;

The right to derivative work belongs to the author of the literary or artistic
work. But the author of the real work may give its consent to derivative
work. Derivative work is dependent on the original work.

Abridgement-‐ it means shortening like case digest; Condensing books.

2. Collections of literary, scholarly, or artistic works-‐
Ex: All of the dissenting opinions of Isagani Cruz, All of the ponencia of Justice
Panganiban.

Works that are not protected-‐ INIGTA

I-‐IDEAS, system, procedure, method, discovery;
Q: Is format of tv show copyrightable?
A: No. What maybe copyrightable is the audiovisual work. The episode or the
program but not the format of tv show itself.

Q: Asked in the bar; Somebody discovered a planet let’s say farther than
pluto using high power telescope. And he conducted a lecture of discovery. A week
after the lecture, he found his lecture in the journal. Can he sue the one who cause
the publication of the lecture in the journal?
A: No. Discovery is not copyrightable DESPITE THE FACT THAT IT IS
EMBODIED IN THE WORK.

Lectures may be copyrightable, but if it pertains to discovery, then it is NOT
copyrightable. So lectures are qualified by non-‐ discovery or principle.

N-‐ NEWS of the day

Q: What about expressions of news captured in a particular medium like
video footage?
A: SC said expressions of news like video footage are copyrightable like in the
case of ABS-‐ CBN v. Gozon.

Remember the case, the homecoming of Angelo Dela Cruz no? I think he is an
iraquee. Anyway, ABS-‐ CBN has the exclusive right to cover his arrival or
homecoming. ABS-‐ CBN captured the footage but Reuters subscribed to ABS-‐ CBN.
So Reuters was able to get a copy of the video footage and GMA 7 is subscriber of
Reuters. GMA7 published this video footage of ABS-‐ CBN without its consent. So
ABS-‐ CBN sued Gozon of GMA7 for copyright infringement. The defenses of Gozon
are:

a.) News of the day are not copyrightable;
b.) Lack of intent to infringe because he got it from Reuters on its valid
subscription from Reuters.

Let’s take the 2nd defense first. Is the intent to infringe an element of
infringement of copyright? Well we know all the answer. Intention of
infringement is not an element of copyright infringement. The violation of the
law is what consumes to the criminal offense regardless of intent.

What about the 1st defense? SC said that it’s true, news of the day is not
copyrightable. But expression of news, the video footage noh, it requires framing
of shots is a literary or artistic work. It requires creativity, that’s why it is
copyrightable.

Remember that essence of infringement of copyright is violation of certain
economic or moral right of the author. That’s why good faith is not a defense.

Photocopying of book is rampant in civil law. Just do not photocopy of ABE
Domondon because it contained a curse; If you copy his book you will never pass
a bar.

Q: Is there an exception , can I claim that I will use the book for private study and
not commercial purpose? Can you claim it as a defense?
A: No. It applies to thesis but not to books.
Q: So what is your defense?
A: If you photocopy a book, make sure that you only photocopy by few pages.
Not substantial portions of the work.

I-‐ ITEMS of pressed information

Q: Can you tweet and retweet current events?
A: Yes. Because it is a mere item of pressed information.

G-‐ Works of GOVERNMENT

Q: There’s a congressman who works in a bill. Before he introduce the bill to
the congress, another congressman copied it and introduced as his own. Can the
congressman who first draft the bill sue the other congressman for copyright
infringement?
A: No. Works of government are not copyrightable. Bills are not
copyrightable.
Q: Can you compile SC decisions? Can you share it with your classmates?
A: Yes. There is no copyright infringement because works of government are
not copyrightable.
Q: When they are copyrightable?
A: The moment it is exploited for profit. That’s why REX bookstore had to get
the consent of government for compiling or collating SC decisions (SCRA); But if
there is no profit component, then no copyright subsists on works of government.

T-‐ TEXTS of legislative, administrative or legal nature
A-‐ Delivery for public ASSEMBLIES

Lectures are copyrightable right? But if the lectures or sermons are given in
public assemblies, then no copyright infringement is committed by express
provision of law.

Q: What about the so called Denicola test? The case we cited a while ago concerning
sketch of hatchdoor.
A: Denicola test-‐if the design element can be detached from the usefulness of the
article then the design element by itself is copyrightable. But if the design element is
a merger of aesthetic or function consideration, and you cannot detach it from the
usefulness of the article, then the design is not copyrightable.

Q: Asked in the bar, X came up with the new way of presenting telephone directory
making research of directives more efficient. You just type the key numbers of
friends in the directory. Is it copyrightable?
A: No. System or method is not copyrightable by express provision of law.

Scope of protection of copyright-‐ it is immediate as you know. Protected from the
moment of creation regardless of lack of registration from national library or sc.

Q: What are the so-‐ called economic rights?
A: Exclusive right to carry out, authorize or prevent the following acts:

1. Reproduction of work or substantial portion of works-‐ The key is substantial
portion of the work. What makes it substantial portion of the work? Is it
based on the number of pages? As you know in the case of Habana v. Robles,
it is not dependent on the number of pages but it is the effect of the work

itself. Is the reproduction diminish the value of the work? If yes, then there is
violation of economic right of the author.

Habana v. Robles-‐ Both of them are teachers and authors of book pertaining
to grammar. Argument ng isa both of us teach grammar and obviously
contain the same examples. The only problem is that there is no proper
attribution. He claimed it to be his own. Had there been proper attribution,
there would have been no infringement of copyright. That’s why he was sued
for infringement.

The defense of the other teacher is that “these are just examples, not
substantial portions of the work is copied”. SC said that it is not about the
quantity but the EFFECT OF THE WORK. Does it injure? Does it diminish the
work of the author? If the answer is yes, then there is infringement of
copyright.

Q: There’s a bar question about the work of Tasaday (ingenuous cultural
community) . There’s a critique about their work. Is the critique infringement
of copyright?
A: Yes. The critique copied substantial portions of the original work. It is not
compatible with fair use.

2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of work;
3. The first public distribution of the original and each copy of the work by sale
or other forms of transfer of ownership (First sale doctrine)

Q: Let’s say you bought 10 books for 2k and decided to sell it for 8k. Is there
infringement of copyright?
A: No, under the first sale doctrine. The right of author pertains on the FIRST
PUBLIC DISTRUBUTION of the original or each copy of the work. Now once
original have been made available, then the owner has every reason to do
whatever he wants to do as he pleases with the work that he purchased.

If he purchased the book, photocopied it and shared with classmates the
reproduction of book, or substantial portion, then there’s infringement of
economic right of author.

If he purchased certain numbers of copies, and sold it for high price, first sale
doctrine will apply.

Q: Sale of illicit copies of software program? Is there’s infringement of
copyright?
A: Yes there’s infringement of copyright.
Q: How about copying of a pirated copy?

A: Yes. Essence of copyright infringement is PERFORMANCE OF ANY ACT IN
VIOLATION OF THE ECONOMIC OR MORAL RIGHTS OF THE AUTHOR.

February 21, 2018

Economic rights of author consists of CARRY OUT, AUTHORIZE, OR PREVENT the
following acts:

1. Reproduction of work or substantial portion thereof
-‐ If it is for private study for one copy, it does not constitute infringement
of copyright but that exception does not apply to books. It applies for
example to thesis (as long as ONE COPY for private study)
-‐ Right to reproduce belongs to the author

Q: How do we define substantial?
A: (Habana v. CA) not dependent on number of copies but the effect on the
work to the extent that it was sensibly diminished.

2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
-‐ Part of economic right to carry out derivative work; Derivative work by
itself is COPYRIGHTABLE (3:11.02)

3. The first public distribution of original and each copy of the work by sale or
other forms of transfer of ownership;

-‐ First sale doctrine
Q: Bar Exam (2013): Somebody purchased books of medicine in Bangkok,
because price are there are cheaper compared to Philippine price. He
purchased copies and brought home books and sold for a price 20% above
the purchase price. Is there any right violated?
A: Having purchased the book, he owns it and he has the right to sell them for
whatever price he wants.
Q: Is it consistent with IP Code?
A: The test is compatibility with the fair use. It is not true that importation is
prohibited. Depends on the facts of the situation.

4. Rental of the original or a copy an audiovisual or cinematographic work;

5. Public display of the original or a copy of the work;

Public display-‐ If somebody paints a mural, he alone has the right to display.
He may not be happy with the final finish of his work, and he may opt not to
display. If somebody displays it without his consent, that is violation of his
economic right.


6. Right to public performance

Remember Adele? Adele composed a song after those hits, I forgot the title…
Anyway, supposed sang it without her consent, it is an infringement of
economic right because she has the right to public performance.

7. Other communication to the public of the work

Regardless of the medium can be via internet or any mode is part of
economic right of the author.

Moral Rights-‐ Keyword is AAWOR

A-‐ ATTRIBUTION; That is the only right in perpetuity. Forever he will be the
author of the work. No one else can claim ownership. If somebody claims
ownership other than the author, then there is infringement of moral right of
the author.
A-‐ ALTERATION; The right to alter work
W-‐ WITHHOLD publication;
I don’t know if you have the seen movie Ms. Reed (?) from Netflix. It is a
beautiful movie that won the best picture and best actress. I think the best
supporting actor was James Caan. So basically she captured James Caan because
James Caan was a writer. Tinali niya nilagay niya sa bahay. He tied his hands, he
tied his entire body to force James Caan to write a book with an ending
acceptable to the _______. An author should have liberty of freedom but James
Caan succumb to the pressure of ______ but eventually found a way to have an
ending that is acceptable to him and to _______.

Q: Supposing you are commissioned by somebody, “I would like the ending to be
this way” or “I would like my autobiography this way” and there’s contract with
that. And you decided not to publish it because you are not happy with your
work. Can you be compelled by the one who commissioned to you to publish the
work?
A: No. The right to withhold publication pertains to the author. The author
maybe liable for breach of contract but he cannot be compelled to publish his
work since the right to publish work is one of the economic rights. And
withholding publication is also a moral right of author.

O-‐ OBJECT to any distortion, mutilation, or other modification of, or other
derogatory action which would be prejudicial to his honor or reputation.

Remember one time they changed the tempo of national anthem? In the states
you are allowed to change the tempo, the manner by which you want to sing it
diba? So iba ibang klase kapag star spangled banner. Sa pilipinas, nung si Martin
Nivera, ginawang (anyone is laughing di ko marinig). The right to modify belongs

to the author. The heirs of Felipe nagreklamo. That’s not the way it should be
sung.

R-‐ RESTRAIN the use of his name for work that is not his.

OWNERSHIP OF COPYRIGHT
Q: Who owns the copyright?
A: The author

Q: Remember this bar exam question, Rudy and Bernie. Rudy likes to paint, he is a
fine arts student. But his work was lying around in dormitory (he shares his dorm
with Bernie). One day Rudy visited the cafeteria and noticed/ saw painting that he
painted. He confronted the owner of the cafeteria and he was told that Bernie, the
dormmate, sold the painting to the cafeteria operator. Operator confronted Bernie.
Bernie said that he is the owner because he was the first one to have it registered
with the National Library. So he is the author of painting?
A: Obviously, it is not the one who registered but the owner. Copyright belongs to
the author/ composer/ creator of literary or artistic work.

Q: Another bar exam question (2008), Eloise is an accomplished writer, she was
invited by EIC of Dyaryo de Manila to contribute column with the newspaper for 5k
per article. She was able to submit let’s say 3 articles for a period of 3 months. The
newspaper did not become profitable so after 6 months, it closed shop. Does Eloise
need to secure the permission of publisher to publish her article?
A: No. As author, she has the right to “carry out” the reproduction of her work. The
author is the owner and not the publisher unless of course if the right is granted or
assigned to the publisher.
Q: Supposing Dyaryo de Manila would like to make a compilation, the best columns
of newspaper, and one of them includes the column or article of Eloise. Can Eloise
stop the publication of the best articles of Dyaryo de Manila?
A: Yes. That’s part of her economic right. To prevent the reproduction of her work. It
is not the publisher but the author who is the owner of the work.

Q: Another bar exam question (2010), Couples in Boracay. Valentino took
photograph of his girlfriend Mona Lisa in a skimping bikini. Sold the photograph to a
newspaper and uploaded the same on the internet. The girlfriend, Mona Lisa sued
Valentino for infringement of copyright. Will the suit prosper?
A: No, it will not prosper because she does not own the photograph. It is the one
who took the photograph who is considered the owner and not the subject of the
photograph. The subject may sue for “infringement of her right to privacy” but not in
relation to IP right.

Now what about Joint authorship? In case of joint authorship, the rules on co-‐
ownership will apply. Exception is in case of work that consists various parts and
this part can be use separately and authorship can be identified likewise separately.


Example: Law Review; EIC would invite professors to publish articles in our law
review. The works of various parts is to be used separately and author can be
identified from the others. Copyright belongs to the author of the work which he
created. That’s why I don’t like to submit articles to our law review. You know why?
Because there’s a policy that we have the right to reject if it does not conform to our
standards.

Works done of the employee of another-‐ With respect to work done by an employee,
we have to make a distinction between work done by somebody. Is it a pursuant to
er-‐ ee relationship? Or is it a commissioned work? If it is pursuant to er-‐ ee
relationship, meaning the work is done by employee, then the thing of consideration
is the object of copyright. Is it part of his regular duties? If the object is part of his
regular duties then the copyright belongs to the employer. Otherwise, it belongs to
employee even though he uses the time, money, and facilities of the employer.

Ex: All employees of _____ were asked by publisher to write articles or books. Who
owns the book?
A: (Di ko maintindihan kung anong name ng er na binigay na example ni dean pero
sabi niya na yung employer yung may-‐ari) because its part of the duties of
employees to write a book.

Q: Jollibee waiter, while serving a langhap sarap hamburger were able to compose a
beautiful poem. Who owns the copyright of the poem?
A: It is the waiter even though he may have composed it with the time of employer.

Q: Bar Exam Question (2011), Associate attorney in a law firm wrote a newspaper
publisher a letter disputing a claim about an incident in the family of attorney. The
lawyer made use of the stationary, letterhead, and computer of the law firm. Who
owns the letter? Is it the publisher to whom he gave the letter? Is it the law firm
because he is an employee?
A: Again the thing of consideration is, “is it part of his regular duties”? A letter that
disputed the claim of his family is not part of his regular duties. It is not a pleading
submitted or prepared as an associate of the law firm. Therefore it belongs to the
associate and not the law firm even though he may have used the time and facilities
of his employer.

Commissioned work-‐ favorite topic in the bar.
The one who commissioned the work owns the work ___________ (22:20.25).
Bar question (2004)-‐ Juan and Pedro are noted artists whose paintings are highly
prized by collectors. DL commissioned them to paint a mural at the main lobby of
hospital for children for 2m pesos.

Q: O wag na lang yan. Father Abano commissioned the former dean of fine arts to do
a mural for 400 years of UST (Everyone is laughing di ko ulit marinig). Who owns
the mural?
A: I, because I commissioned the work. I can take it anytime I want.

Q: But who has the right to public performance? Public display? And all the rights
pertaining to the creator?
A: The one who created it UNLESS OTHEWIRSE STIPULATED BY THE PARTIES.

Remember our comparison? For patent, the one who commissioned the work owns
the patent, right? But for copyright, the one who commissioned the work owns the
work but copyright belongs to the author unless otherwise stipulated.

LIMITATIONS TO COPYRIGHT
The performance of following acts will NOT give rise or constitute to copyright
infringement.

Keyword: Pregnant Queen Iris Page Jumping Infant

P-‐ PUBLIC performance of the work; One should be made accessible to the public;
Once made accessible to the public, if done privately, free of charge or for charitable
or religious purpose.

Have you ever wondered why you can sing songs to professors on birthday? It is
because it has already been made to the public by composer or singer. And it is done
privately, free of charge. That’s why you can sing songs of Adele, of Wency Cornejo.

Q-‐ QUOTATIONS for as long as it is done with proper attribution and compatible
with fair use.

Just because you make a quotation for publish work, it does not mean that there is
no infringement of copyright. It has to be compatible with fair use and there ought
to be attribution.

Q: Remember the example I gave about the Tasaday (bar exam question)? There
was an article about tasaday (indigenous community), and there was a critic about
the work of the tasaday. He made an attribution that he copied the article. Is there
A: Yes, because it is not compatible with fair use. One of the elements of fair use
remember “amount of substantiality of portion of work copied or used.

I-‐ INFORMATION purposes only;
R-‐ REPORT of current events
I-‐ ILLUSTRATIONS for teaching purposes only;
S-‐ Recording made by SCHOOLS; But it does not include cinema repertoire.
Q: Can you UST for example record UAAP games and make available the same
to students?
A: Yes. Recording made by school is a limitation of copyright. But after
publication, it has to be removed or deleted right away.

PAGE (BACKWARDS MNEMONICS SO LETTER E MUNA)

E-‐ EPHEMERAL Recording; Ephemeral means temporary. Limited to broadcasting
organization. Ephemeral cannot be made by any other person or other entity except
by broadcasting organization.
G-‐ Under supervision, control and direction of GOVERNMENT;

ABS-‐ CBN v. PMSI-‐ Issue is WON cable provider can carry signals of local stations.
Meaning can they include in the repertoire programs the local programs of abs-‐cbn,
gma7, and other local stations? ABS-‐ CBN objected because the cable provider
carried out signal of abs-‐ cbn without the consent of abs-‐ cbn. Is that broadcast an
infringement of copyright of abs-‐ cbn?

A: It does not infringe the copyright.

1.) The cable provider does not have the power to change the content of the cable
program. It is on a “as is” basis.
2.) It is pursuant to must-‐ carry rule of NTC that obligates cable provider to carry
signals of local stations to afford the public wider choice of programs.

GMA v. CATV-‐ The issue is WON the paid advertisements can be broadcast without
the infringement of copyright. The SC expanded the “must carry rule” to include
even the paid advertisements. So that act does not infringe the copyright of the local
station.

A-‐ No ADMISSION fee; Public performance of work. Let’s say victims of eruption of
Mt. Pinatubo or victims of typhoon. The artist is to perform or render songs
obviously for charitable purpose.

P-‐ PUBLIC display where ownership has already been transferred; It is similar to
first sale doctrine but first sale is more applicable to books. Let’s say the painting
has already been sold already. So the buyer displayed without having to get the
consent of the painter.

J-‐ JUDICIAL proceedings and giving of legal advice

Q: Are you required to make an attribution?
A: Unlike quotations wherein you are required to make attribution, with
respect to judicial proceedings, it is not required under the law.

I-‐ Reproduction of work for visually IMPAIRED persons; As long as it is not for
profit.
F-‐ Compatible with FAIR use.

Factors to consider in fair use (PNAE):

1. PURPOSE-‐Is it for profit or non-‐ profit?
2. NATURE of work

3. AMOUNT of work or substantially copied
4. EFFECT of the use upon the potential market for value of the copyrighted work

Q: Asked in the bar (2017), Virtucio was a composer of Ilocano songs who has been
quite popular in the Ilocos Region. Pascuala is a professor of music in a local
university with special focus in indigenous music. When she heard the musical
works of Virtucio, she purchased a CD of his works. She copied the CD and sent the
second copy to her Music class with instructions for the class to listen to the CD and
analyze the works of Virtucio.

Did Pascuala thereby infringe Virtucio’s copyright?

A: No infringement because it is compatible with fair use. It was use for teaching
purposes.

Keyword for original and literary artistic works: Blood Pressure of Lady Love Dips
of Medical Doctor Oscar Indigo Says Press the Chest (2x) Or something will happen.

B-‐ BOOKS
P-‐ PERIODICALS
L-‐ LECTURES, sermons, homilies, dissertations
L-‐ LETTERS
D-‐ DRAMATIC or dramatico-‐ musical compositions
M-‐ MUSICAL compositions
D-‐ DRAWINGS, paintings, architecture, sculpture, or other works of art
O-‐ ORNAMENTAL design
I-‐ ILLUSTRATIONS, maps, plans, sketches
S-‐ Drawings of SCIENTIFIC character
P-‐ PHOTOGRAPHIC work
C-‐ CINEMATOGRAPHIC work
P-‐ PICTORIAL illustrations
C-‐ COMPUTER programs
O-‐ OTHER literary or artistic works

** Take note: Copyright subsists only on the works enumerated by law. If it is not
there, copyright does not subsist.

TERM OF COPYRIGHT-‐ life of the author plus 50 years after his death
Joint authorship-‐ 50 years after the death of the last surviving author
Anonymous and Pseudonymous works-‐ 50 years from date of publication; If not
publish, then from the date of the making. Except in the meantime, the identity of
the author has been determined, then 50 years after death of the author.

Remember on works of desiderata (compilation of beautiful messages)-‐ At first we
do not know the author. But eventually, he was identified. So the copyright of course
subsists after identification, 50 years after death of the author.

Q: What is the only one that sticks out as not 50 years?
A: Works of applied art (25 years); broadcasts (25 years)
Q: How do you distinguish broadcast from audiovisual work?
A: If it is audio and visual, hearing and seeing, then it is 50 years. If it is only hearing
like in radio, then only 25 years.

Exercise for infringement copyright:

1. Jail breaking ( to remove restrictions on work)-‐ No infringement; It is only an
aggravating circumstance that will double ( 45:06.51) the amount of
damages but not copyright infringement.
2. Importation of original dvd and cds of music as well as foreign books in the
Philippines-‐ No infringement HOWEVER it must be compatible with fair use.
3. Composer of music assigns his right and 50 years after death, the new owner
changed the tempo of ballad to rock and claimed the owner of the revised or
transformed musical composition-‐ There is infringement despite alteration
or transformation because the right of attribution is in perpetuity.
4. Photocopied a book and distributed to students for part of study group only
for private use-‐ When it comes to books, cannot reproduce itself or
substantial portion thereof. What can be photocopied is thesis or similar
works but does not include books.
5. Possession of a copy of copyrighted material-‐ There is infringement. Mere
possession of pirated copy is infringement of copyright.
6. Commercial reproduction of work for visually impaired persons-‐ There is
infringement. Because it is COMMERCIAL. It has to be for “non-‐ profit”
reproduction of work for the use of visually impaired persons.
7. CD burning-‐ There is infringement.
8. Photocopying a book by a librarian-‐ Book ni Manresa for example or ni
Sanchez Roman you cannot lend in library but librarian allowed to reproduce
it because if its RARITY.
9. Reprinting of a book that has gone out of stock by the library-‐ Infringement;
Q: So who can reprint the book that has gone out of stock without committing
A: If it is done by the national library/ public library. If done by private
library it amounts to copyright infringement.
10. Owner of a mall or lessor of establishment where lessee commits acts of
infringement is he likewise liable (he knows that infringing activity is being
done in his premises)-‐ Yes.
Q: What are the conditions? Who are liable? The Buyer? Seller? Owner of the
mall? Or all?
A: The buyer is liable because possession of pirated copy amounts to
infringement. The seller is likewise liable because he reproduced the pirated
copy. The owner of the mall is also liable on the following conditions:

1. There is an infringing activity.

2. He has knowledge of Infringement.
3. He has ability to control the infringement but he did not.
4. He benefited from the acts of infringement
Q: Does it mean that he gets percentage from sale?
A: It need not be percentage from the sale. Rental paid by itself is
considered already as something that he benefited.

Q: When is copyright infringement committed?
A: It is committed by any person who shall use literary or artistic work without the
consent of the author and if there is a performance of any act that is in violation of
economic or moral rights of author or creator.

Infringement can be done in various ways:
1.) Direct infringement
2.) Benefiting from infringement activity
3.) Inducing to commit an infringement

Remedies of copyright owner against infringer:

1. Civil action for infringement-‐ whether trademark, patent, or copyright is a
common remedy.
2. Items that you can pray for in an action for copyright infringement-‐
a.) Actual damages plus profits which infringer made
b.) If profit cannot be determined, sale of the defendant (not just percentage
of the sale of defendant unlike in trademark)

Q: Can actual damages be doubled?
A: For patent it can be tripled upon discretion of court. For trademark it can
be doubled if there is intent to deceive public. Now for copyright, it can be
doubled if there is circumvention of technological measures or if there is an
alteration of electronic management rights.

So if there is jail breaking, it increases the amount of damages. Twice the
amount; or there is alteration of electronic management rights meaning you
remove any mark to identify the author or creator is alteration of
management right and that will increase the amount of actual damage.
3. Provisional remedies:
a.) Injunction-‐ to restrain acts of infringement
b.) Seizure order-‐ to impound or seize paraphernalias and receptacles used
in the infringement
c.) Destroy without compensation to the owner all items used in relation to
infringement.

Now if you read the law, with respect to impounding, it says on the
dependency of the action. But when it comes to destruction of materials,
there must be a finding of a court that there is infringement.

d.) Moral or exemplary damages-‐ can be awarded by express provision of
law. No moral or exemplary damages on patent or trademark but there
can be one upon discretion of the court when it comes to copyright
infringement. This is on top of doubling of damages in case of alteration of
electronic management right. So moral and exemplary damages are not in
lieu of doubling the amount. It can be on top of the actual damages or
twice the amount of actual damages in those aggravating circumstances
that we discussed.

Another exercise for copyright infringement:

1. Bringing DVD or importation of CDs in Philippines-‐ No infringement as
long as it is compatible with fair use.
2. Jail breaking-‐ No infringement but only an aggravating circumstance to
double the amount of actual damages.
3. Downloading music from internet and sharing the file to another; And
then uploaded it in his own device and listened to it-‐ If the downloaded
site is a recording company that US government is trying to shut down,
then it amounts to infringement of copyright. In other words, it depends
on where you copied it.
4. Composer of music assigns his right and 50 years after his death, new
owner changes the tempo from ballad to rock and claimed the new owner
of the composition-‐ There is infringement because attribution is in
perpetuity.
5. Buy a book and sell it for higher price than acquisition-‐ No infringement
in application of first sale doctrine;
6. Use of pirated software-‐ Of course there is infringement.
7. Possession of temporary copy of copyrighter material (meaning
possession of infringed material)-‐ Yes it amounts to infringement even if
temporary.
8. CD burning-‐ Infringement
9. Photocopying of thesis without permission of author, single copy only for
private study-‐ No infringement
10. Reproduction of one copy of work of architecture-‐ Infringement of
copyright because works of architecture, books, and computer programs
are not part of exception.
11. Book that is out of stock, re-‐ printed by national library-‐ No infringement.
12. Book that is out of stock, re-‐ printed by private library-‐ There is
infringement.
13. Bill pirated by another congressman-‐ No infringement because copyright
does not subsist on works of government.
14. Lecture about discovery if reduced into writing-‐ No infringement because
discovery is not copyrightable.
15. Somebody discovered efficient filing system-‐ Not copyrightable

16. Collecting classics (those that are used more than 50 years after death of
the author and sell the compilation)-‐ No infringement because it has
become a public dominion.
17. Back-‐ up copy of computer program-‐ No infringement by express
provision of law.
18. Back-‐ up copies of computer program-‐ Infringement. Back-‐ up “copy” sabi
sa law not “copies”. Only one.
19. Subject of photograph; Can he complain for infringement of copyright?-‐
No. Intrusion to right of privacy but not infringement of copyright.
20. Re-‐ broadcast of a tv program after 25 years of the last broadcast-‐ There
is infringement; because tv program must last 50 years.
21. Re-‐ broadcast of radio program after 50 years of the last broadcast-‐ No
infringement. Radio program only lasts for 25 years.



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