I. INTRODUCTION (1) Basis of the Intellectual Property Law (R.A. 8293, as a m e n d e d ) Section 2. Declaration of State Policy.

- The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. (n) (2) Importance of Adopting Laws protecting Intellectual Property Rights The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. (3) Philippine commitment to the GATT-TRIPS agreement Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country 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 extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.(n)General Agreement on Tariffs and Trade (G A T T ) was a collection of treaties governing access to the economies of treaty adherents with no institutionalized body administering the agreements or dependable system of dispute settlement. (4) Did RA 8293 repeal existing laws on intellectual property? NO. Republic Act 8293 Section 239.1 All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed. Thus, only inconsistent provisions or parts of RA 165, RA 166, PD 49 and PD 285 were repealed. 5) Intellectual Property Rights Trademark, P a t e n t s Sec. 4.1, R.A. 8293 Section 4. Definitions. - 4.1. The term "intellectual property rights "consists of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS). Copyright and

(6) Republic Act No. 8293 Intellectual Property Law T w e n t i e t h C e n t u r y M u s i c C o r p . v s . A i k e n 422 U.S. 151 Facts 20Th Century Music Corporation copyrighted songs were received on the radio in Aikens food shop from a local broadcasting station, which was licensed by the American Society of Composers, Authors and Publishers to perform the songs, but Aiken had no such license. 20th Century Music then sued Aiken for copyright infringement. The District Court granted awards, but the Court of Appeals reversed. Issue

Whether the reception of a radio broadcast of a copyrighted musical composition can constitute copyright infringement when the copyright owner has licensed the broadcaster to perform the composition publicly for profit? Held Aiken did not infringe upon 20th Century exclusive right, under the Copyright Act, "[t]o perform the copyrighted work publicly for profit, "since the radio reception did not constitute a "performance" of the copyrighted songs. To hold that Aiken "performed" the copyrighted works would obviously result in a wholly unenforceable regime of copyright law, and would also be highly inequitable, since (short of keeping his radio turned off) one in Aiken's position would be unable to protect himself from infringement liability. Such a ruling, moreover, would authorize the sale of an untold number of licenses for what is basically a single rendition of a copyrighted work, thus conflicting with the balanced purpose of the Copyright Act of assuring the composer an adequate return for the value of his composition while, at the same time, protecting the public from oppressive monopolies. The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. The immediate effect of our copyright law is to secure a fair return for an "author's" creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good. "The sole interest of the United States and the primary object in conferring the monopoly," this Court has said, "lie in the general benefits derived by the public from the labors of authors." When technological change has rendered its literal terms ambiguous, the Copyright Act must be construed in light of this basic purpose. On what basis may one claim a copyright in such a work? Common sense tells us that 100 uncopyright able facts do not magically change their status when gathered together in one place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope. Facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. See Harper Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, "no matter how crude, humble or obvious" it might be. Why facts are not copyrightable? No one may claim originality as to facts. This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. One who discovers a fact is not its "maker" or "originator." The discoverer merely finds and records. Illustrative Example Census-takers do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. Census data therefore do not trigger copyright because these data are not "original" in the constitutional sense. The same is true of all facts-- scientific, historical, biographical, and news of the day. "They may note copyrighted and are part of the public domain available to every person." Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Thus, even a directory that contains absolutely nobprotectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets,

each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. Originality requires independent creation plus a modicum of creativity:"While the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like." Author- in a constitutional sense is to mean "he to whom anything owes its origin; originator; maker. Effect on International Conventions and on Principle o f R e c i p r o c i t y Sec. 3 & 231 Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country 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 extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.(n) Section 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. (n) Mirpuri vs. CAG.R. No. 114508, Nov. 19, 1999 C o v e r a g e o f I n t e l l e c t u a l P r o p e r t y R i g h t s Sec. 4.1 Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information (n, TRIPS). Kho vs. CA, G.R. No. 115758, March 19, 2002 Facts Kho is doing business under the name and style of KEC Cosmetics Laboratory, the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office. Summerville advertised and sold Khos cream products under the brand name Chin Chun Su, in similar containers that Kho uses, thereby misleading the public, and resulting in the decline in the Khos business sales and income; and, that the Summerville should be enjoined from allegedly infringing on the copyrights and patents of the Kho. Summerville on the other hand, alleged as their defense that they are the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies; that KEC Cosmetics Laboratory of the of Kho obtained the copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. On December 20, 1991, Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of preliminary injunction, against the Summerville General Merchandising and Company (Summerville, for brevity) and Ang Tiam Chay.

Issues Whether the copyright and patent over the name and container of a beauty cream product would entitle the registrant to the use and ownership over the same to the exclusion of others? Held Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. Kho has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioners copyright and patent registration of the name and container would not guarantee her right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

Functions of IPO Section 5. Functions of the Intellectual Property Office (IPO). - 5.1. To administer and implement the State policies declared in this Act, there is hereby created the Intellectual Property Office (IPO) which shall have the following functions: a) Examine applications for grant of letters patent for inventions and register utility models and industrial designs; b) Examine applications for the registration of marks, geographic indication, integrated circuits; c) Register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer; d) Promote the use of patent information as a tool for technology development; e) Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; f) Administratively adjudicate contested proceedings affecting intellectual property rights; and g) Coordinate with other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country. 5.2. The Office shall have custody of all records, books, drawings, specifications, documents, and other papers and things relating to intellectual property rights applications filed with the Office. (n) The Intellectual Property Office Section 6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and assisted by an Assistant Director. These Bureaus are: a) The Bureau of Patents; b) The Bureau of Trademarks; c) The Bureau of Legal Affairs; d) The Documentation, Information and Technology Transfer Bureau; e) The Management Information System and EDP Bureau; and f) The Administrative, Financial and Personnel Services Bureau.

LAW ON COPYRIGHT ( 1 ) D e f i n i t i o n s Sec. 171 171.10 Section 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; 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, of 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 (Sec. 41 (E), P.D. No. 49 a); 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 a part of his regularly prescribed official duties. ( 2 ) P r o t e c t i o n , w h e n c o m m e n c e d Sec. 172.2 Section 172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a). ( 3 ) I d e a / E x p r e s s i o n D i c h o t o m y Sec. 175 Section 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof (n)Note: Ideas are the building blocks of creative expression. They will differ with the particular subject matter involved.

(4) Works Protected ( a ) L i t e r a r y o r A r t i s t i c W o r k s . Sec. 172- 172.2 Section 172. Literary and Artistic Works. - 172.1. Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (a) Books, pamphlets, articles and other writings; (b) Periodicals and newspapers; (c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; (d) Letters; Note: Requisite: For short message sending (sms) or text messages sufficient intellectual effort. (e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; Note: Laban notation transcription of choreographic notes (f) Musical compositions, with or without words; Note: With or without words because there two separate rights for the composition and lyrics. (g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; Note: Furniture have functional purpose. Ching Case: (h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art; (i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science; (j) Drawings or plastic works of a scientific or technical character; (k) Photographic works including works produced by a process analogous to photography; lantern slides; (l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings; (m) Pictorial illustrations and advertisements; (n) Computer programs; and Note: Computer program are copyrightable in this jurisdiction but not patentable. (o) Other literary, scholarly, scientific and artistic works. 172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a) Notes When work is created? A work is created when two requirements are Originality and some form of expression. The work must have their origin in the labor of the author. Original as the term is used in copyright means only that the work was independently created by the author (as opposed to copy from the other works) and that it possess at least some minimal degree of creativity. The distinction is one between creation and discovery: the fist to person to find a particular fact has not created the fact: he or she has merely discovered its existence. However, it is not necessary, to qualify for copyright protection, that works should pass a test of imaginativeness. The right to obtain a copyright on a book depends on originality of the authors work and not upon any standard of merit. 2nd Requirement: Expression In order for a work to be entitled protection, there must at least be some verifiable expression of the intellectual product. Idea is not protected, only the expression. There is creation when an idea is expressed in some tangible medium. ( b ) D e r i v a t i v e W o r k s Sec. 173 Section 173. Derivative Works. - 173.1. The following derivative works shall also be protected by copyright: (a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and

(b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. (Sec. 2, [P] and [Q], P.D. No. 49) 173.2. The works referred to in paragraphs (a) and (b) of Subsection173.1 shall be protected as new works: Provided however, That such new work shall not affect the force of any subsisting copyright upon the original works employed or any part thereof, or be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS) Note: Derivative works are original work. There must be compliance of the requirements: 1. must borrow the original and expressive content 2. the work must alter not merely copy. / must have substantial variation Article 5 of civil code. No right can spring from an unlawful act. ( c ) P u b l i s h e d E d i t i o n o f W o r k Sec. 174 Section 174. Published Edition of Work. - In addition to the right to publish granted by the author, his heirs, or assigns, the publisher shall have a copyright consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work. (n) Note: Separate right of the publisher exclusively on typographical arrangement.