INTELLECTUAL PROPERTY CODE

Reviewer by Vin Delgado, La Salle Law

Q: What is the scope of intellectual property rights?

(1)   Copyright and Related Rights;
(2)   Mark (trade, service and collective);
(3)   Geographic indications;
(4)   Industrial designs;
(5)   Patents;
(6)   Layout designs (Topographies) of Integrated Circuits;
(7)   Protection of Undisclosed Information. (Sec. 4.1, IPC, as amended)

Q: Differentiate trademark, copyright, and patent from each other.

Trademark Copyright Patent

Technical solution of a
Any sign to distinguish Literary or artistic work problem which is new,
As to subject
the goods or services of which are intellectual involves an inventive step
matter
an enterprise creations and is industrially
applicable
Acquired through Acquired from the moment Acquired through
How acquired
registration and use of creation application with the IPO
Generally up to fifty (50)
Term of right Ten (10) years years after death of the Twenty (20) years
author

Q: Define a technology transfer arrangement.

A: These are contracts/arrangements involving the transfer of systematic knowledge for the manufacture
of a product, the application of the process, or rendering a service including management contracts, and
transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer
software except computer software developed for mass market. (Sec. 4.2, IPC, as amended)

Q: What is the reciprocity rule?

A: Any person who is a national of, or is domiciled in, or has real and effective industrial establishment
in, a country:

a)   Which is a party to any convention, treaty or agreement relating to intellectual property rights or
the repression of unfair competition, to which the Philippines is also a party; or
b)   Its laws extend reciprocal rights to Philippine nationals;

shall be entitled to benefits to the extent necessary to give effect to such convention, treaty, or reciprocal
law, in addition to the rights which any owner of an intellectual property right is otherwise entitled under
IPC. However, any condition imposed by a foreign country on a Philippine national seeking protection of
intellectual property rights in that country, shall be reciprocally be enforceable upon that country’s
nationals in Philippine jurisdiction.

Q: What are the powers of the IPO?

A: IPO, as headed by a Director General, administers and implements the declared State policies, which
shall have the following functions:

a)   Examine applications for grant of letters of patent for inventions and register utility models and
industrial designs; registration of marks, geographic indications and integrated circuits;
 b)   Registers, settle disputes relating to, develop and implement strategies to promote, and facilitate
technology transfer arrangements (TTAs);
c)   Adjudicate contested proceedings affecting intellectual property rights applying when applicable
equitable principles of laches, estoppel, and acquiescence.

PATENT

Q: What is a Patent?
A: It is a Protection/right given to any technical solution of a problem in any field of human activity which
is:
(1)   New;
(2)   Involves an inventive step; and
(3)   Is industrially applicable.

It may be, or may relate to, a product, a process, or an improvement.

Q: What are the non-patentable inventions?

(1)   Discoveries, scientific theories and mathematical methods, and in case of drugs and medicines, the
mere discovery of a new form or new property of a known substance which does not result in the
enhancement of the known efficacy of the substance, or the mere discovery of any new property
or new use for a known substance, or the mere use of a known process unless such known process
results in a new product that employs at least one new reactant;
(2)   Schemes, rules and methods of performing mental acts, playing games or doing business and
computer programs;
(3)   Methods for treatment of the human or animal body by surgery or therapy and diagnostic
methods;
(4)   Plant varieties or animal breeds or essentially biological process for the production of plants or
animals;
(5)   Aesthetic creations;
(6)   Anything which is contrary to public order or morality; and
(7)   Those which form part of prior art. (Sec. 23, IPC)

Q: Explain the rule on non-prejudicial disclosure.

A: The disclosure of information contained in the application during the twelve (12) months preceding the
filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:
(1)   The inventor;
(2)   A patent office and the information was contained:
a.   In another application filed by the inventor and should not have been disclosed by the
office; or
b.   In an application filed without the knowledge or consent of the inventor by a third party
which obtained the information directly or indirectly from the inventor; or
c.   A third party which obtained the information directly from the inventor. (Sec. 25, IPC)

Q: What are the patentable inventions under the Intellectual Property Code?
A: The Patentable Inventions are:
(1) A useful machine;
(2) A product;
(3) A process;
(4) An improvement of a machine, product of process;
(5) Micro-organisms; and
(6) Non-biological and microbiological processes.
Q: Explain the rules on ownership of a patent.

Solo Invention 1. Inventor;

2. His heirs; or
3. Assigns.
Joint Invention Patent shall be owned jointly by the inventors.
First-to-File Rule If two or more persons invented separately and independently of each other,
or two or more persons have filed separate applications for patent, the
ownership of the patent shall be awarded to:

1. The person who filed an application;

2. The applicant who has the earliest filing date or the earliest priority date.
Commissioned Work General Rule: Person who commissioned the work

Exception: Otherwise provided in the contract

During the court of an Employee: if the incentive activity is not a part of his regular duties; or
employment contract
Employer: if the invention is the result of the performance of his regularly-
assigned duties, unless there is an agreement to the contrary.

Q: When is “right of priority” applicable?

A: The right of priority given to a patent applicant is only relevant when there are two or more conflicting
patent applications on the same invention. Because a right of priority does not automatically grant letters
patent to an applicant, possession of a right of priority does not confer any property rights on the applicant
in the absence of an actual patent. (El Du Pont De Nemours v. Director Francisco, 2016)

Q: What are the rights conferred by a patent (remedies)?

A: It depends.
(1)   When the subject matter is a product: Right to restrain, prohibit and prevent any unauthorized
person or entity from making, using, offering for sale, selling, or importing the product.
(2)   When the subject matter is a process: Right to restrain, prohibit, and prevent any unauthorized
person or entity from manufacturing, dealing in, using, offering for sale, selling or importing any
product obtained directly or indirectly from such process.

Q: What constitutes patent infringement?

A: The making, using, offering for sale, selling, or importing a patented product, or a product obtained
directly or indirectly from a patented process, or the use of a patented process without the authorization of
the patentee constitutes patent infringement. (Sec. 76.1, IPC)

Q: What are the two tests in determining patent infringement?

A: First, Literal infringement where in courts must juxtapose the claims of patent and accused product
within the overall context of claims and specification, to determine whether there is exact identity of all
material elements. Second is the Doctrine of Equivalents wherein infringement also occurs when a device
appropriates a prior invention by incorporating its innovative concept and, albeit with some modification
and change, performs substantially the same function in substantially the same way to achieve substantially
the same result (function-means-and-result test).

Q: What is the doctrine of equivalents?

A: Infringement of patent occurs when a device appropriates a prior invention by incorporating its
innovative concept and albeit with some modifications and changes which performs the same functions in
substantially the same way to achieve the same results.
Q: Who owns the patent if product was created pursuant to a commission?
A: The person who commissions the work shall own the patent, unless the contract otherwise provides.

If employee made the invention in the course of his employment contract, the patent shall belong to:
a)   Employee, if the inventive activity is not part of his regular duties even if employee uses time,
facilities and materials of the employer.
b)   Employer, if invention results from the performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.

Q: What is the purpose of voluntary licensing?

A: The purpose of Voluntary Licensing Contract is to:
a)   encourage transfer and dissemination of technology;
b)   prevent or control practices and conditions that may, in particular cases, constitute an abuse of
intellectual property rights having an adverse effect on competition and trade;
c)   ensure all technology transfer arrangements comply with the IPO.

Q: What is cumpolsory licensing?

A: IPO Director of Legal Affairs may grant license to exploit patented invention, even without the
agreement of patent owner in favor of person who has shown his capability to exploit invention under any
of the following circumstances:
a)   National emergency, or other circumstances of extreme urgency;
b)   Where public interest, in particular, national security, nutrition, health or development of other
vital sectors of national economy as determined by the appropriate agency of the Government so
requires;
c)   Where a judicial or administrative body has determined that manner of exploitation by patent
owner or his licensee is anti-competitive;
d)   In case of public non-commercial use of patent by patentee, without satisfactory reason; or
e)   If patented invention is not being worked in the Philippines on commercial scale, although capable
of being worked without satisfactory reason.

Importation of patented article shall constitute working or using the patent.

Q: How do you cancel a patent?

A: An interested party may, upon petition and payment of required fee, petition to cancel patent or any
claim, or parts of claim on any of the following grounds:

a)   What is claimed as an invention is not new nor patentable;

b)   Patent does not disclose invention in a manner sufficiently clear or complete for it to be carried out
by any person skilled in the art; or
c)   Patent is contrary to public order or morality.

Where grounds for cancellation relate to some of claims or parts of claim, cancellation may be effected to
such extent only. Cancellation shall terminate, with notice of cancellation published in the IPO Gazette, the
rights conferred by patent or any specified claim(s). Unless restrained by Director General, decision/order
to cancel by Director of Legal Affairs immediately executory even pending appeal.

Q: What are the rights of a patent owner in case of infringement?

A: In case of infringement, the patentee has the following rights:
a)   Bring civil action before courts to recover from infringer such damages sustained thereby, plus
attorney’s fees and other expenses of litigation; and
b)   Secure an injunction for the protection of his rights.
 c)   If foreign national – may bring action of infringement, but must meet requirement of Section 3 of
IPC and must not be engaged in business in the Philippines.

Q: Limitations of a patent owner’s rights?

A: Patent owners have no right to prevent third parties from performing the following:

a)   using patent products which has been put on Philippine market by owner of the product, or with
his express consent, insofar as such use is performed after the product has been put out;
b)   Where act is done privately and on a non-commercial scale for a non-commercial purpose:
provided it does not significantly prejudice owner’s economic interest.
c)   Where act consists of making or using exclusively for purpose of experiments that relate to subject
matter of patent invention;
d)   Where act consists of preparation for individual cases, in a pharmacy or by a medical professional,
or a medicine in accordance with a medical prescription or acts concerning medicine so prepared;
e)   Where invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering
Philippine territory temporarily or accidentally.

TRADEMARK

Q: Define a mark.
A: A mark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of
an enterprise and shall include a stamped or marked container of goods. (Sec. 121.1, IPC, as amended)

Q: Define a collective mark.

A: A collective mark is any visible sign designated as such in the application for registration and capable
of distinguishing the origin or any other common characteristic, including the quality of goods or services
of different enterprises which use the sign under the control of the registered owner of the collective mark
(Sec. 121.2, IPC, as amended)

Q: When does protection commence?

A: The rights in a mark are acquired solely through registration. (Sec. 122, IPC, as amended)

Q: Is prior use of a mark still a requirement?

A: No. The Intellectual Property Code has already dispensed with the requirement of prior actual use at
the time of registration. (Ecole de Cuisine Manille v. Contreau & Cie, 2013)

Q: What is the test of ownership?

A: In order to register a trademark, one must be the owner thereof and must have actually used the mark
in commerce in the Philippines for two (2) months prior to the application for registration. (Sec. 2, RA No.
166). One may be an owner of a mark due to its actual use but may not yet have the right to register such
ownership here due to the owner’s failure to use the same in the Philippines for two (2) months prior to
registration.

Note: Under the Paris Convention to which the Philippines is a signatory, a trade name of a national of a
State that is a party to the Paris Convention, whether or not the trade name forms part of a trademark, is
protected “without the obligation of filing or registration". (Cordon Blue of the Philippines v. Renaud Cointreau
& Cie, 2013)

Q: What marks cannot be registered?

A: A mark cannot be registered if it:
 a)   Consists of:
a.   Immoral, deceptive or scandalous matter.
b.   Matter which may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
c.   Flag, coat of arms, or other insignia of the Philippines or any of its political subdivisions,
or of any foreign nation, or any simulation thereof;
d.   Name, portrait or signature identifying:
i.   A particular living individual except by his written consent;
ii.   Of a deceased Philippine President, during the life of his widow, if any, except by
written consent of the widow;
e.   Shapes that may be necessitated by technical factors, by nature of goods themselves, or
factors that affect their intrinsic value;
f.   Color alone, unless defined by a given form.

b)   Consists exclusively of signs or of indication that:

a.   Are generic for the goods or services that they seek to identify;
b.   Have become customary or usual to designate goods or services in everyday language, or
in a bona fide and established trade practice;
c.   May serve in trade to designate the kind, quality, quantity, intended purpose, value,
geographic origin, time or production of goods or rendering of services.

c)   Is identical with registered mark belonging to different proprietor or mark with an earlier filing or
priority date, in respect of:
a.   Same goods, or
b.   Closely-related goods or services, or
c.   If it nearly resembles such mark as to be likely to deceive or cause confusion.

d)   Is identical with, or confusingly similar to, or constitutes a translation of, a mark which is
considered:
a.   By Philippine competent authority whether or not it is registered here, as being already
the mark of a person, and used for identical or similar goods or services;
b.   Well-known, and registered in the Philippines with respect to goods or services which are
not similar to those with respect to which registration is applied for.

e)   Is likely to mislead public, particularly as to nature, quality, characteristics or geographical origin

of goods or services;

f)   Is contrary to public order or morality.

Q: Define a trade name.

A: A trade name is the name or designation identifying or distinguishing an enterprise. (Sec. 121.3, IPC, as
amended)

Q: How is ownership acquired over trade names?

A: Trade names or business names are acquired through adoption and use. Registration is not required.
(Sec. 165, IPC, as amended)

Q: What is the test of dominancy?

A: It is when the competing trademark contains the main or essential or dominant features of another, and
confusion and deception is likely to result, infringement takes place. Actual confusion is not required. Only
likelihood of confusion on the part of the buying public is necessary so as to render two marks confusingly
similar so as to deny the registration of the junior mark (UFC Philippines v Fiesta Manufacturing Co., 2016).
Q: What is the holistic test?
A: Confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and
overall impressions engendered by the marks in controversy as they are encountered in the marketplace.
(Bemis Agricultural Co., Inc. v. Abyadang, 2010)

Q: Can trademark registration be granted when both competing marks refer to one word but with
differing features?
A: Yes. It is hornbook doctrine that emphasis should be on the similarity of the products involved and not
on the arbitrary classification or general description of their properties or characteristics. The mere fact that
one person has adopted and used a trademark on his goods would not, without more, prevent the adoption
and use of the same trademark by others on unrelated articles of a different kind (Taiwan Kolin Corp, LTD.
V. Kolin Electronics Co., Inc., 2015)

Q: Explain the rule on Well-Known Marks.

A: As a general rule, the prohibition on subsequent registration does not include services and goods of
different nature or kind. However, there are exceptions to this rule, namely:
(1)   Internationally well-known mark not registered in the Philippines
Application for registration of a subsequent or similar mark can be rejected only if the goods or
services are similar to those of the internationally well-known mark. (Sec. 123.1(e), IPC, as amended)
(2)   Those registered in the Philippines
Application for registration can be refused even if the goods or services specified in the application
are not identical or similar to those of the intentionally well-known mark.

Q: What are the rights conferred to the owner by registration?

A: The owner of the registered mark shall have the following rights:
(1)   Exclusive protection against reproduction, or imitation or unauthorized use of the mark
(infringement of mark) (Sec. 147, IPC, as amended);
(2)   Prevent entry of imported merchandise into the country containing a mark identical or similar to
the registered mark; (Sec. 166. IPC, as amended) and
(3)   To transfer or license out the mark. (Sec. 149, IPC, as amended)

Q: Is the registration of trademark a mode of acquiring ownership?

A: No. If the applicant is not the owner of the trademark, he has no right to apply for its registration.
Registration merely creates a prima facie presumption of the validity of the registration, of the registrant’s
ownership of the trademark, and of the exclusive right to the use thereof. Such presumption, just like the
presumptive regularity in the performance of official functions, is rebuttable and must give way to evidence
to the contrary (Birkenstock Orthopaedie GMBH and Co. KG v. Philippine Shoe Expo Marketing Corporation, 2013)

Q: What is trademark infringement?

A: Trademark infringement is the unauthorized use in commerce any reproduction, counterfeit, copy or
colorable imitation of a registered mark. The mere unauthorized use of a container bearing a registered
trademark in connection with the sale, distribution or advertising of goods or services which is likely to
cause confusion, mistake or deception among the buyers or consumers can be considered as trademark
infringement (Republic Gas Corp. v. Petron Corporation, 2013).

Q: What are the remedies available to the owner in case of infringement?

(1)   Claim for Damages
The owner of a registered mark is entitled to damages, which is measured by:
a.   the reasonable profit which the complaining party would have made, had the defendant
not infringed his rights;
b.   the profit which the defendant actually made out of the infringement; or
c.   in the event such measure of damages cannot be readily ascertained with reasonable
certainty, then the court may award as damages (Sec. 156.1, IPC, as amended)
 REMEMBER: To be entitled to damages, the owner of the mark infringed must prove that the
infringing acts have been committed with knowledge that such imitation is likely to cause
confusion, or to cause mistake, or to deceive. (Sec. 158, IPC, as amended)

(2)   Impound during the pendency of the action

On application of the complainant (Sec. 156.2, IPC, as amended);

(3)   Injunction (Sec. 156.3, IPC, as amended); and/or

(4)   Criminal Penalty

Imprisonment from two (2) years to five (5) years and a fine ranging from fifty thousand pesos
(P50,000) to two hundred thousand pesos (P200,000) may be imposed upon any person who is
found guilty of committing any acts of infringement or unfair competition. (Sec. 170, IPC, as
amended)

Q: What is unfair competition?

A: It is the passing off (or palming off) or attempting to pass off upon the public of the goods or business
of one person as the goods or business of another with the end and probable effect of deceiving the public.
This takes place where the defendant gives his goods the general appearance of the goods of his competitor
with the intention of deceiving the public that the goods are those of his competitor (Roberto Co v. Keng
Huan Jerryeung, 2014).

Q: Is fraud necessary in order to be guilty or subject to an action of unfair competition under Section
168.2 of RA 8293?
A: Yes. The section provides that “any person who shall employ deception or any other means contrary to
good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business,
or services for those of the one having established such goodwill, or who shall commit any acts calculated
to produce said result x x x.” (Shang Properties Realty Corp., v. St. Francis Development Corp, 2014).

Q: Differentiate between an “action for cancellation of Trademark” and “action for unfair competition?”
A: An action for the cancellation of trademark is a remedy available to a person who believes that he is or
will be damaged by the registration of a mark. In the suit for the cancellation of trademark, the issue of
lawful registration should necessarily be determined. However, registration is not a consideration
necessary in unfair competition. Unfair competition is committed if the effect of the act is "to pass off to the
public the goods of one man as the goods of another; it is independent of registration. (Caterpillar Inc. v.
Samson, 2016)

COPYRIGHT

Q: Define copyright.
A: Copyright is the right to literary and artistic works which are original creations in the literary and artistic
domain protected from the moment of their creation. (Kho v. Court of Appeals, 2002)

Q: When does protection commence?

A: Works are protected from the time of their creation, irrespective of their mode or form of expression, as
well as of their content, quality, and purpose.

Q: Is the copyright and the material object the same?

A: No. The copyright is distinct from the property in the material object subject to it. Consequently, the
transfer or assignment of the copyright shall not of itself constitute a transfer of the material object. Nor
shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or
assignment of the copyright. (Sec. 181, IPC)

Q: Enumerate the various copyrightable works.

A: The following literary and artistic works are protected from the moment of their creation:
(1)   Books, pamphlets, articles and other writings;
(2)   Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in
writing or other material form;
(3)   Letters;
(4)   Dramatic, choreographic works;
(5)   Musical compositions;
(6)   Works of art;
(7)   Periodicals and newspapers;
(8)   Works relative to geography, topography, architecture, or science;
(9)   Works of applied art;
(10)  Works of a scientific or technical character;
(11)  Photographic works;
(12)  Audiovisual works and cinematographic works;
(13)  Pictorial illustrations and advertisements;
(14)  Computer programs; and
(15)  Other literary, scholarly, scientific, and artistic works.

Q: What are derivative works?

A: These are creations based on an existing work, such as:
(1)   Dramatizations, translations, adaptations, abridgements, arrangements, and other alterations of
literary or artistic works; and
(2)   Collections of literary, scholarly, or artistic works and compilations of data and other materials
which are original by reason of the selection or coordination or arrangement of their contents (Sec.
173, IPC, amended)

Q: What are non-copyrightable works?

(1)   Any idea, procedure, system, method or operation, concept, principle, discovery or mere data as
such;
(2)   News of the day and other items of press information;
(3)   Any official text of a legislative, administrative or legal nature, as well as any official translation
thereof (Sec. 175, IPC, as amended);
(4)   Decisions of courts and tribunals — this refers to original decisions and not to annotated decisions
such as the SCRA or SCAD as these already fall under the classification of derivative works, hence
copyrightable;
(5)   Any work of the Government of the Philippines (Sec. 176, IPC, as amended); and
(6)   TV programs, format of TV programs. (Joaquin v. Milan, 1999)

Q: Is a news covering an event or the event itself copyrightable?

A: No. However, an event can be captured and presented in a specific medium. News as expressed in a
video footage is entitled to copyright protection (ABS-CBN Corp., v Felipe Gozon).

Q: What are the rights of a copyright owner?

A: The owner has economic rights which consist of the right to carry out, authorize, or prevent the
following acts:
a.   Reproduction of the work or substantial portion thereof;
b.   Carry-out derivative work;
c.   First distribution of the original and each copy of the work by sale or other forms of transfer of
ownership;
 d.   Rental right;
e.   Public display;
f.   Public performance; and
g.   Other communications to the public. (Sec. 177, IPC, as amended)

The owner also has moral rights which are for reasons of professionalism and propriety, are independent
from the economic rights:
1.   To require that the authorship of the works be attributed to him (otherwise known as "attribution
rights");
2.   To make any alterations of his work prior to, or to withhold it from publication;
3.   Right to preserve integrity of work, object to any distortion, mutilation or other modification which
would be prejudicial to his honor or reputation; and
4.   To restrain the use of his name with respect to any work not of his own creation or in a distorted
version of his work. (Sec. 193, IPC, as amended)

Q: Are moral rights assignable or subject to license?

A: No. Moral rights shall not be assignable or subject to license. (Sec. 198, IPC, as amended)

Q: Explain the concept of droit de suite.

A: Otherwise known as follow up rights, this is an inalienable right to receive to the extent of five percent
(5%) of the gross proceeds of the sale or lease of a work of painting or sculpture or of the original manuscript
of a writer or composer, subsequent to its first disposition by the author. (Sec. 200, IPC, as amended)

The following are the exceptions to this rule:

a.   Prints;
b.   Etchings;
c.   Engravings;
d.   Works of applied art; or
e.   Works of similar kind wherein the author primarily derives gain from the proceeds of
reproductions. (Sec. 201, IPC, as amended)

Q: Explain the lifetime of rights of a copyright owner.

1. For the lifetime of the author of the last surviving author or the last
surviving author, as the case may be and fifty (50) years after his death;
Economic Rights
2. Fifty (50) years from the date that the work was first lawfully published for
anonymous or pseudonymous works.
1. Attribution rights
During the lifetime of the author and in perpetuity after his death (Sec. 198,
Moral Rights IPC, as amended); and
2. Other moral rights
Coterminous with economic rights
Right to proceeds During the lifetime of the author and fifty (50) years after his death

Q: Explain the rules on ownership of copyright.

Solo work/Author Original literary and artistic works

1. According to their agreement; or
2. In the absence of an agreement:
Joint work/Co-authors §   The rules on co-ownership
§   The author of each separable part, if the same can be
identified.
 1. If part of the employee’s regular duties: to the employer
In the course of an employment
2. If not part of the employee’s regular duties: to the employee,
contract
even if he uses the time and facilities of the employer.
1. The work shall be owned by the one who commissioned it;
Commissioned work
2. The copyright to the work shall remain with the creator.
Producer, the author of the scenario, Copyright of an audiovisual work. (Sec. 178.5, IPC, as amended)
the composer of the music, the film
director, and the author of the work
so adapted
Writer Letters. (Sec. 178.6, IPC, as amended)

Q: What are the limitations on copyright?

(1)   Performance of a work, once it has been lawfully made accessible to the public, if done privately
and free of charge or for a charitable or religious institution or society;
(2)   The making of quotations from a published work if they are compatible with fair use and only to
the extent justified for the purpose;
(3)   Communication to the public by mass media of articles on current political, social, economic,
scientific or religious topic, lectures, addresses and other works of the same nature;
(4)   As part of reports of current events (e.g. music played or tunes on the occasion of a sporting event
and such tunes were picked up during a new coverage of the event);
(5)   For teaching purposes, provided that the source and of the name of the author, if appearing in the
work, arc mentioned;
(6)   Recording made in educational institutions of a work included in a broadcast for the use of such
educational institutions, provided that such recording must be deleted within a reasonable period
after they were first broadcast;
(7)   The making of ephemeral recordings by a broadcasting organization by means of its own facilities
and for use in its own broadcast;
(8)   The use made of a work by or under the direction or control of the government, by the National
Library or by educational, scientific or professional institutions where such use is in the public
interest and is compatible with fair use;
(9)   The public performance of a work, in a place where no admission fee is charged; and
(10)  Public display of the original or a copy of the work not made by means of a film, slide, television
image or otherwise on screen or by means of any other device or process (e.g. Public display using
posters mounted on walls and display boards);
(11)  Any use made of a work for the purpose of any judicial proceedings or for the giving of
professional advice by a legal practitioner. (Sec. 184.1, R.A. No. 8293, as amended by RA. No. 10372
[IPC, as amended])

Q: What is the “must carry rule?”

A: The must-carry rule mandates that the local television (TV) broadcast signals of an authorized TV
broadcast station, such as the GMA Network, Inc., should be carried in full by the cable antenna television
(CATV) operator, without alteration or deletion. (GMA Network Inc. v. Central CATV Inc., 2014)

Q: What is the fair use doctrine?

A: Fair use of a copyrighted work for criticism, comment, news reporting, teaching, including multiple
copies for classroom use, scholarship, research, and similar purposes, is not an infringement of copyright.

Q: What are the factors considered under the fair use doctrine?
A: The purpose and character of the use, including whether such use is of a commercial nature or is for
non-profit educational purposes; The nature of the copyrighted work; The amount and substantiality of
the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential
market for or value of the copyrighted work. (Sec. 185, IPC, as amended)
Q: Is mere sale of illicit copies of software programs enough to establish probable cause for copyright
infringement?
A: Yes. The mere sale of the illicit copies of the software programs was enough by itself to show the
existence of probable cause for copyright infringement. (Microsoft Corporation v. Rolando D. Manansala, 2015)

Q: How can a person commit copyright infringement?

A: Copyright infringement is committed by any person who shall use original literary or artistic works, or
derivative works, without the copyright owner's consent in such a manner as to violate the foregoing copy
and economic rights. (Olano v. Lim Eng Co., 2016)

Q: How can a claim of copyright infringement succeed?

A: For a claim of copyright infringement to prevail, the evidence on record must demonstrate: (1)
ownership of a validly copyrighted material by the complainant; and (2) infringement of the copyright by
the respondent. (Olano v. Lim Eng Co., 2016)

Q: Which rules should govern for appeals from decisions of the Director-General of the Intellectual
Property Office?
A: It is the Rules of Court, not the 1962 Revised Rules of Practice, which governs the Court of Appeals'
proceedings in appeals from the decisions of the Director-General of the Intellectual Property Office
regarding the revival of patent applications. Rule 19 of the Rules of Court provides that a court has the
discretion to determine whether to give due course to an intervention. If an administrative agency's
procedural rules expressly prohibit an intervention by third parties, the prohibition is limited only to the
proceedings before the administrative agency. Once the matter is brought before the Court of Appeals in a
petition for review, any prior prohibition on intervention does not apply since the only question to be
determined is whether the intervenor has established a right to intervene under the Rules of Court. (El Du
Pont De Nemours v. Director Francisco, 2016)