SUMMARY INTELLECTUAL PROPERTY LAW WELL UPDATED

SUMMARY INTELLECTUAL PROPERTY
Intellectual Property Law: Cram Another
Allan Verman Ong Day LAW
1
SY 2002-2003
WELL UPDATED
Intellectual Property Law
RA 8293

- for the protection of creative works/intangible goods (goods that are expressions of the mind)
- framework: “What are they really protecting?”

Tangibles Inventions
Property Patents Utility Models
Industrial Industrial Designs
Property Trade Secrets
Intangibles
Trade Marks



Creative Copyrights
Rights
Neighboring Rights

Patents – grants by the State given to someone so he will have monopoly right over his property
- in exchange for you revealing something 1)new, 2) useful, and 3) has an inventive step, state
gives you protection
- Utility Model – no inventive step so lesser right and protection but it is still useful
- Industrial Design – has an artistic/aesthetic appeal

Trade Secrets – anything that will provide business with competitive advantage,
e.g. list of customers of marketing company
- not protected under the IP Code, but governed by contracts
e.g. employee contracts

Trademarks – don’t protect innovation, protects goodwill
- specific mark on goods – trademarks, servicemarks, certification marks, geographic indicators,
trade names, trade dress
- even if not registered, as long as there is goodwill, you can sue
- a “business identification system”
- before Jan. 1, 1998, RP used first to use system (whoever uses first has the trademark) with an
exception to internationally known marks (e.g. Lacoste case)
- now, RP is a first to file jurisdiction

Q. Before Jan. 1, 1998, an RP company registered Lacoste trademark, used it. It was first to use. Lacoste
filed trademark infringement suit. It was proven that the brand was already known in RP by people who had
travelled to Europe. Since RP is first to use jurisdiction, RP company has trademark?
A. No. Falls under internationally known marks exception

,Allan Verman Ong Intellectual Property Law: Cram Another Day 2
SY 2002-2003

Q. McDo came to RP in 1970. In 1980s, they had huge marketing campaign so they became known in RP. Big
Mack was a large hamburger chain in the provinces. In 1980, McDo filed trademark infringement case. It was
proven that some people actually think Big Mack is affiliated with McDo and was creating confusion.
A. Big Mack wins. Trademark protects goodwill. McDo’s goodwill was established in 1980. It was proven here
that Big Mack was already established in RP before McDo became known because of the mktg campaign.

Q. You have carinderia, “Cooking Ina Mo”. Neighbor sets up “Cooking ng Ina Mo Rin.” Trademark infringement?
A. Maybe not. It does not cause/create confusion.

Creative Rights – protect unique expression of an idea
1. copyright – moral right
- what is protected is unique expression of an idea. So Einstein’s e=mc2 is not
protected, but the dissertation where he explained the idea is protected.
2. neighboring rights – performer’s rights
- what is protected is not idea but distinct/unique expression

Technology Transfer Agreements – e.g. licensing.
Aside from patents, copyrights, there are other means of protecting property in other nations

Q. Do intangibles have to be registered to enjoy protection?
A. Generally, industrial property must be registered. No need to register in creative rights – the moment you
create it, it’s yours. Registration of books in the National Library is only proof of copyright

US – computer programs are protected by patents. In RP, only copyright.

International Treaties Protecting Copyrights
1. Berne Convention – for protection of literary works, established in Aug. 1, 1951.
Core Principles:
1. national treatment – nationals from different states should have protection of their own works
2. principle of automatic protection – no need to register copyrights
3. principle of independence of protection – treat foreigners the way you protect nationals

2. TRIPS Agreement – Trade Related Aspects of IP Rights, a sub-agreement of the GATT,
Principles:
1. Establishment of minimum standards of protection as to enforcement of IPR transnationally
2. National treatment – of the IP owner
3. Most favored nation principle – treat all signatories similarly, no special treatment should be given
to any nation

Q. When can you not invoke copyright?
A. When there is: 1. Conflict with normal exploitation of work
2. When it prejudices the right of legitimate owner of right of work

Issues:
copyright protection like Mickey Mouse are gradually entering public domain (since copyright lasts until 50
years after the death of creator) so there are moves to extend the term protection
but Shakespeare works are public domain – so is extending term a good thing?
- US passed the Sonny Bono copyright extension act

3. WIPO Copyright Treaty - ratified Feb. 2002, protecting rights of authors in new technologies

,Allan Verman Ong Intellectual Property Law: Cram Another Day 3
SY 2002-2003
- new technologies include internet and digital works
- now, temporary copies are protected (temporary – something you download from internet)
- new rights are created:
1. right to distribution
2. rental right – right of author to rent out cinematic works, phonograms, computer programs
- you can’t rent out your copy of Windows 2002 CD. But if your Palm Pilot breaks
down and you rent a Palm with Windows, it’s okay, since computer program isn’t the
“thing of rent”
3. right of communication to public – wire/wireless means

Principles:
1. circumvention of technology measures – e.g. DVD contents handling system
2. concealment of infringement – search and seizure is given in civil cases
- before, state files for search warrant, now, since civil case, private party can file for search
warrant and get injunction
3. protection is granted from the time of creation

NOTE: WIPO treaty is already ratified but still need enabling legislation, either in the form of new law of
amendment of the IP Code


PART IV
THE LAW ON COPYRIGHT
Copyright
– is a bundle of rights e.g. JKR can sell various rights like right to publish (Scholastic), right to make a movie
from her story (Warner), right to make toys from characters (e.g., Mattel)
– a “negative right” since it prevents you from enjoying, deriving benefit
– property protected is “intellectual”
– use consists of derivative rights, e.g. reproduction, translation, dramatization

Q. Database, is this protected?
A. Facts alone are not protected (same for multimedia). But if you do some arrangement on the information,
that is protected.

Q. Creativity = Originality?
A. No. In copyright, what is important is originality. As long as it is yours, it is protected.

List of Ateneo Grads – public domain
List of Ateneo Grades who worked in Judiciary – protected
if someone else rearranges your list and does your list in alphabetical order – you can sue
if there is distinction in the way the facts were selected, coordinated, arranged and presented,
copyrightable
Novelty – an essential element in patentability
- means that no one else in the world has come up with the same invention anywhere, anytime
- not the same with originality, although in both, you come up with a new idea
- if you develop it without outside influence, you can copyright. Several people can own the
copyright but only one person can hold the patent

SEC. 171. DEFINITIONS. - FOR THE PURPOSE OF THIS ACT, THE FOLLOWING TERMS HAVE THE FOLLOWING MEANING:
171.1. "AUTHOR" IS THE NATURAL PERSON WHO HAS CREATED THE WORK;

, Allan Verman Ong Intellectual Property Law: Cram Another Day 4
SY 2002-2003

171.2. A "COLLECTIVE WORK" IS A WORK WHICH HAS BEEN CREATED BY TWO (2) OR MORE NATURAL PERSONS AT THE
INITIATIVE AND UNDER THE DIRECTION OF ANOTHER WITH THE UNDERSTANDING THAT IT WILL BE DISCLOSED BY THE
LATTER UNDER HIS OWN NAME AND THAT CONTRIBUTING NATURAL PERSONS WILL NOT BE IDENTIFIED;


171.3. "COMMUNICATION TO THE PUBLIC" OR "COMMUNICATE TO THE PUBLIC" MEANS THE MAKING OF A WORK
AVAILABLE TO THE PUBLIC BY WIRE OR WIRELESS MEANS IN SUCH A WAY THAT MEMBERS OF THE PUBLIC MAY ACCESS
THESE WORKS FROM A PLACE AND TIME INDIVIDUALLY CHOSEN BY THEM;


171.4. A "COMPUTER" IS AN ELECTRONIC OR SIMILAR DEVICE HAVING INFORMATION-PROCESSING CAPABILITIES, AND A
"COMPUTER PROGRAM" IS A SET OF INSTRUCTIONS EXPRESSED IN WORDS, CODES, SCHEMES OR IN ANY OTHER FORM,
WHICH IS CAPABLE WHEN INCORPORATED IN A MEDIUM THAT THE COMPUTER CAN READ, OR CAUSING THE COMPUTER TO
PERFORM OR ACHIEVE A PARTICULAR TASK OR RESULT;


171.5. "PUBLIC LENDING" IS THE TRANSFER OF POSSESSION OF THE ORIGINAL OR A COPY OF A WORK OR SOUND
RECORDING FOR A LIMITED PERIOD, FOR NON-PROFIT PURPOSES, BY AN INSTITUTION THE SERVICES OF WHICH ARE
AVAILABLE TO THE PUBLIC, SUCH AS PUBLIC LIBRARY OR ARCHIVE;


171.6. "PUBLIC PERFORMANCE," IN THE CASE OF A WORK OTHER THAN AN AUDIOVISUAL WORK, IS THE RECITATION,
PLAYING, DANCING, ACTING OR OTHERWISE PERFORMING THE WORK, EITHER DIRECTLY OR BY MEANS OF ANY DEVICE OR
PROCESS; IN THE CASE OF AN AUDIOVISUAL WORK, THE SHOWING OF ITS IMAGES IN SEQUENCE AND THE MAKING OF
THE SOUNDS ACCOMPANYING IT AUDIBLE; AND, IN THE CASE OF A SOUND RECORDING, MAKING THE RECORDED SOUNDS
AUDIBLE AT A PLACE OR AT PLACES WHERE PERSONS OUTSIDE THE NORMAL CIRCLE OF A FAMILY AND THAT FAMILY’S
CLOSEST SOCIAL ACQUAINTANCES ARE OR CAN BE PRESENT, IRRESPECTIVE OF WHETHER THEY ARE OR CAN BE PRESENT AT
THE SAME PLACE AND AT THE SAME TIME, OR AT DIFFERENT PLACES AND/OR AT DIFFERENT TIMES, AND WHERE THE
PERFORMANCE CAN BE PERCEIVED WITHOUT THE NEED FOR COMMUNICATION WITHIN THE MEANING OF SUBSECTION
171.3;

171.7. "PUBLISHED WORKS" MEANS WORKS, WHICH, WITH THE CONSENT OF THE AUTHORS, ARE MADE AVAILABLE TO
THE PUBLIC BY WIRE OR WIRELESS MEANS IN SUCH A WAY THAT MEMBERS OF THE PUBLIC MAY ACCESS THESE WORKS
FROM A PLACE AND TIME INDIVIDUALLY CHOSEN BY THEM: PROVIDED, THAT AVAILABILITY OF SUCH COPIES HAS BEEN
SUCH, AS TO SATISFY THE REASONABLE REQUIREMENTS OF THE PUBLIC, HAVING REGARD TO THE NATURE OF THE WORK;


171.8. "RENTAL" IS THE TRANSFER OF THE POSSESSION OF THE ORIGINAL OR A COPY OF A WORK OR A SOUND
RECORDING FOR A LIMITED PERIOD OF TIME, FOR PROFIT-MAKING PURPOSES;


171.9. "REPRODUCTION" IS THE MAKING OF ONE (1) OR MORE COPIES OF A WORK OR A SOUND RECORDING IN ANY
MANNER OR FORM;


171.10. A "WORK OF APPLIED ART" IS AN ARTISTIC CREATION WITH UTILITARIAN FUNCTIONS OR INCORPORATED IN A
USEFUL ARTICLE, WHETHER MADE BY HAND OR PRODUCED ON AN INDUSTRIAL SCALE;


171.11. A "WORK OF THE GOVERNMENT OF THE PHILIPPINES" IS A WORK CREATED BY AN OFFICER OR EMPLOYEE OF THE
PHILIPPINE GOVERNMENT OR ANY OF ITS SUBDIVISIONS AND INSTRUMENTALITIES, INCLUDING GOVERNMENT-OWNED
OR CONTROLLED CORPORATIONS AS PART OF HIS REGULARLY PRESCRIBED OFFICIAL DUTIES.


CHAPTER II
ORIGINAL WORKS