Copyright Law

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What constitutes copyright – A copyright is an intellectual property right over a literary or artistic work.[1]

Literary and artistic works – Literary and artistic works (the “works”) “are original intellectual creations in the literary and artistic domain protected from the moment of their creation” including:

  • Books, pamphlets, articles and other writings;
  • Periodicals and newspapers;
  • Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form;
  • Letters;
  • Dramatic or dramatico-musical compositions, choreographic works, or entertainment in dumb shows;
  • Musical compositions, with or without words;
  • Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art, models or designs for works of art;
  • Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art;
  • Illustrations, maps, plans, sketches, charts, and three-dimensional works relative to geography, topography, architecture, or science;
  • Drawings or plastic works of a scientific or technical character;
  • Photographic works including works produced by a process analogous to photography or lantern slides;
  • Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;
  • Pictorial illustrations and advertisements;
  • Computer programs; and
  • Other literary, scholarly, scientific and artistic works.[2]

Copytight protection starts from creation – 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.[3]

Best Legal Practices

  • Place symbol “©” to serve as notice – The symbol “©” means the work is under copyright protection. While not required to be placed on copyrighted material, it is best to place the copyright symbol to serve as notice and warning that the same is protected by copyright laws.
  • Copyright as catch-all intellectual property – If a property cannot be registered as a patent or trademark/servicemark, it may be protected under copyright.
  • Publish copyright to establish date of creation – Considering that copyright is protected from the moment it is created, it is important to publish it in order to create evidence as to date of creation. Publication may be done through e-mail or social media.

Derivative works

What derivative works protected by copyright – The following derivative works are 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.[4]

Protected derivative works as new works – The derivative works mentioned above are protected as new works so long as they do 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.[5]

Publisher’s right to publish and right of reproduction – In addition to the right to publish granted by the author, his heirs, or assigns, the publisher has a copyright consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work.[6]

Works Not Protected

What are unprotected subject matter – Other than protected works mentioned earlier, no protection is extended to: (a) 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; (b) news of the day and other miscellaneous facts having the character of mere items of press information; or (c) any official text of a legislative, administrative or legal nature, as well as any official translation thereof. [7]

Best Legal Practices

  • Patent protects invention, while copyright protects expression – A patent protects an invention, including the process by which such is created. Hence, the patent protects the invention, while copyright protects the expression of the process to create such an invention.

No copyright for any work of the Government of the Philippines – No copyright subsists in any work of the Government of the Philippines.[8] However, prior approval of the government agency or office wherein the work is created is necessary for the exploitation of such work for profit.[9] Such agency or office may, among other things, impose as a condition the payment of royalties.[10] No prior approval or conditions are required for the use of any purpose of statutes, rules and regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character.[11]

Government as transferee of copyright – The Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise. [12]

Government use of copyrighted work does not abridge or annul copyright – The publication or republication by the Government in a public document of any work in which copyright is subsisting does not cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owner.[13]

Authors of speeches, lectures, sermons, addresses, and dissertations have exclusive right of making collection of his works –The author of speeches, lectures, sermons, addresses, and dissertations have the exclusive right of making a collection of his works.[14]

Copyright or Economic Rights

Copyright or economic rights of author – Subject to the limitations provided by law, copyright or economic rights consists of the exclusive right to carry out, authorize, or prevent the following acts:[15]

  • Reproduction of the work or substantial portion of the work;[16]
  • Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;[17]
  • The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;[18]
  • Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;[19]
  • Public display of the original or a copy of the work;[20]
  • Public performance of the work;[21] and
  • Other communication to the public of the work.[22]

Best Legal Practices

  • Obtain written license to use – Due to the exhaustive list of protection granted to a copyright owner, any business seeking to use a copyrighted work should obtain a written license. Depending on what may be agreed upon, there may be fees that will have to be paid to the copyright owner.

Ownership of Copyright

Rules on copyright ownership – Copyright ownership is governed by the following rules:[23]

  • Subject to the rules hereunder, in the case of original literary and artistic works, copyright belongs to the author of the work;[24]
  • In the case of works of joint authorship, the co-authors are the original owners of the copyright, and in the absence of agreement, their rights will be governed by the rules on co-ownership. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the author of each part is the original owner of the copyright in the part that he has created;[25]
  • In the case of work created by an author during and in the course of his employment, the copyright belongs:[26]
    • To the employee, if the creation of the object of copyright is not a part of his regular duties even if the employee uses the time, facilities, and materials of the employer. [27]
    • To the employer, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.[28]
  • In the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission, the person who so commissioned the work will have ownership of the work, but the copyright thereto will remain with the creator, unless there is a written contrary stipulation;[29]
  • In the case of audiovisual work, the copyright will belong to the producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted.[30] However, subject to contrary or other stipulations among the creators, the producer will exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work;[31] to the employer, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary;[32] and
  • In respect of letters, the copyright belongs to the writer subject to the law thereon.[33] The employer owns the copyright, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.[34]

Best Legal Practices

  • Stipulate on contract regarding ownership – To settle any doubt on ownership and to avoid any controversy thereon, the contract should clearly stipulate therein as to who will own the copyright of the work.

Rules on anonymous and pseudonymous works – In Intellectual Property Code, the publishers are deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted name leaves no doubt as to the author’s identity, or if the author of the anonymous works discloses his identity.[35]

Transfer of Copyright

Transfer or assignment of copyright – The copyright may be assigned in whole or in part.[36] Within the scope of the assignment, the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright.[37] The copyright is not deemed assigned inter vivos (during one’s life time) in whole or in part unless there is a written indication of such intention.[38] The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication constitute only a license to make a single publication unless a greater right is expressly granted.[39] If two or more persons jointly own a copyright or any part thereof, neither of the owners is entitled to grant licenses without the prior written consent of the other owner/s.[40]

Copyright and material object different – The copyright is distinct from the property in the material object subject to it. Consequently, the transfer or assignment of the copyright does not itself constitute a transfer of the material object.[41] Neither will a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright.[42]

Filing of assignment or license – An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose.[43] Upon recording, a copy of the instrument is to be returned to the sender with a notation of the fact of record.[44] Notice of the record will be published in the IPO Gazette.[45]

Designation of society – The copyright owners or their heirs may designate a society of artists, writers, or composers to enforce their economic rights and moral rights on their behalf.[46]

Best Legal Practices

  • Designate a copyright agent – A copyright owner may designate a copyright agent who will be tasked to protect and enforce the economic and moral rights of the owner. As an agent, the designated person will act for and on behalf of the principal in registering the copyright with the IPO, monitoring and prosecuting copyright infringers, and entering into licensing agreements, among others. This arrangement is a growing trend as it is beneficial to the copyright owner who is relieved from these ministerial tasks in order for him to focus more on creating new works.

Limitations on Copyright

Limitations on Copyright – The following acts do not constitute copyright infringement:[47]

  • The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society;[48]
  • The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries, so long as the source and the name of the author, if appearing on the work, are mentioned;[49]
  • The reproduction or 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, which are delivered in public if such use is for information purposes and has not been expressly reserved, so long as the source is clearly indicated;[50]
  • The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose;[51]
  • The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording, or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use, so long as the source and the name of the author, if appearing in the work, are mentioned;[52]
  • The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions; further, such recording must be deleted within a reasonable period after they were first broadcasted: in addition, such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work;[53]
  • The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast;[54]
  • 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;[55]
  • The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations;[56]
  • 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; so long as either the work has been published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title;[57] and
  • Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.[58]

Best Legal Practices

  • Obtain license when playing music – Business establishment that play music in the background should obtain the license thereof to avoid liability for copyright infringement.
  • Playing radio music in the background – As a workaround, business establishments opt to play radio music in the background if they are unable to get a license.
  • Third party playing music, stipulate on free and harmless clause – Business establishments that hire third parties to play music in the background should make sure that the contract specifically stipulate that the latter will hold the former free and harmless from any copyright infringement. As this is a relatively new trend and there is no settled rule yet, there is no guaranty that courts will absolve the business enterprise from liability as they might consider the playing of music in an establishment as “public performance.”

Fair use of a copyrighted work – The 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.[59] In determining whether the use made of a work in any particular case is fair use, the factors to be considered include:[60]

  • The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;[61]
  • The nature of the copyrighted work; [62]
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole;[63] and
  • The effect of the use upon the potential market for or value of the copyrighted work.[64]

Unpublished work does not bar finding of fair use – The fact that a work is unpublished does not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors.[65]

Best Legal Practices

  • Fair use as defense to complainant against copyright infringement – Fair use is often used as a defense against copyright infringement. Due care should be exercised in claiming fair use as it has a strict and narrow definition. It is best to include a notice of fair use whenever the same is the basis for using a copyrighted work.
  • When in doubt, cite – A good rule of thumb is to cite or make proper attributions when in doubt. As it is said, give credit where it is due.

Work of architecture – Copyright in a work of architecture includes the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original form or in any form recognizably derived from the original. [66] The copyright in any such work does not include the right to control the reconstruction or rehabilitation in the same style as the original of a building to which that copyright relates.[67]

Reproduction of published works in a single copy – Notwithstanding the provisions on copyright or economic rights, and subject to the provisions hereunder, the private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for research and private study, is permitted, without the authorization of the owner of copyright in the work.[68] The permission granted does not extend or cover the reproduction of:

  • A work of architecture in the form of building or other construction;[69]
  • An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means;[70]
  • A compilation of data and other materials;[71]
  • A computer program except as provided in Section 189;[72] and
  • Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author.[73]

Reprographic reproduction by libraries – Notwithstanding the provisions on copyright or economic rights, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction:[74]

  • Where the work by reason of its fragile character or rarity cannot be lent to the user in its original form;[75]
  • Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them;[76] and
  • Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed, or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed, or rendered unusable and copies are not available with the publisher.[77]

Same; Limitations – Notwithstanding the above provisions, it is not permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock. [78] Every library which, by law, is entitled to receive copies of a printed work, is entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock.[79]

Reproduction of computer program – Notwithstanding the provisions on copyright or economic rights, the reproduction of one back-up copy or adaptation of a computer program is be permitted, without the authorization of the author of, or other owner of copyright in, a computer program, by the lawful owner of that computer program, so long as the copy or adaptation is necessary for:[80]

  • The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained;[81] and
  • Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable.[82]

Same; Limitations – No copy or adaptation mentioned above is to be used for any purpose other than the ones determined therein, and any such copy or adaptation is to be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful.[83] The rule on reproduction of computer program is without prejudice to the rule on fair use whenever appropriate.[84]

Importation for personal purposes – Notwithstanding the provisions on copyright or economic rights but subject to the limitation under the rule on fair use, the importation of a copy of a work by an individual for his personal purposes is permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances:[85]

  • When copies of the work are not available in the Philippines and either of the following: (i) not more than one copy at one time is imported for strictly individual use only; or (ii) the importation is by authority of and for the use of the Philippine Government; or (iii) the importation, consisting of not more than three such copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines.[86]
  • When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale, so long as such copies do not exceed three.[87]

Same; When imported copies do not violate rights of copyright owner or annul or limit protection thereof – Copies imported as allowed in the immediately preceding paragraph may not be lawfully used in any way to violate the rights of the copyright owner, or annul or limit the protection secured by the law, and any unlawful use is deemed an infringement and is punishable as such without prejudice to the proprietor’s right of action.[88]

Deposit and Notice

Registration and deposit with National Library and Supreme Court Library – Within three weeks after the first public dissemination of performance by authority of the copyright owner of works subject of copyright protection (literary, artistic, and derivative works), they are to be registered and deposited with the National Library and Supreme Court Library for the purpose of completing the records therein.[89] The registration and deposit is to be done by personal delivery or by registered mail two complete copies or reproductions of the work in such form as the directors of said libraries may prescribe.[90] Only the above mentioned classes of work are to be accepted for deposit by the said libraries.[91]

Same; Certificate of deposit – A certificate of deposit will be issued for which the prescribed fee will be collected and the copyright owner will be exempt from making additional deposit of the works with the said libraries under other laws.[92]

Same; Penalty after written demand for deposit – If, within three weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner is liable to pay a fine equivalent to the required fee per month of delay and to pay to the said libraries the amount of the retail price of the best edition of the work.[93]

Copyright notice – On each copy of a work published or offered for sale, a copyright notice may be placed thereon stating the copyright owner’s name, year of first publication, and, in copies produced after the creator’s death, the year of such death.[94]

Moral Rights

What constitutes moral rights – In addition to his economic rights or a grant of an assignment with respect to such right, the author of a work also has the following moral rights:[95]

  • To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work;[96]
  • To make any alterations of his work prior to, or to withhold it from publication;[97]
  • To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation;[98] and
  • 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.[99]

Waiver of moral rights – A author is allowed to waive his moral rights through a written instrument so long as it does not permit another: (a) to use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author, and (b) to use the name of the author with respect to a work he did not create. [100]

Same; Moral rights as social responsiblity – The law provides the copyright owner moral rights as a matter of social responsibility. The true and proper authors of work should be recognized. Consequently, a moral right cannot be assigned or transferred, but it may be waived.

Term of moral rights – The author’s moral rights lasts during his lifetime, as well as 50 years after his death.[101]

No assignment or license of moral rights – Moral rights cannot be the subject of any assignment or license.[102]

Editing, arranging, and adaptation of work do not contravene moral rights – The necessary editing, arranging, or adaptation of a work, for publication, broadcast, use in a motion picture, dramatization, or mechanical or electrical reproduction, in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used, are not deemed to contravene the author’s moral rights.[103] This rule applies in the absence of a contrary stipulation at the time the author licenses or permits another to use his work, as well as in cases involving the complete destruction of a work unconditionally transferred by the author.[104]

No compulsion on author to create work or for publication of work already in existence; Breach of contract – Subject to being liable for damages arising out of a breach of contract, the author cannot be compelled by an action for specific performance to perform his contractual obligations to create a work or for the publication of his work already in existence.[105]

Contribution to collective work waiver of attribution by default –Unless he reserves it, the contributing author to a collective work is considered to have waived his right to attribution for his contribution.[106]

Enforcement remedies – The author has the same rights and remedies available to a copyright owner for violation of his moral rights, including damages.[107]

Rights to Proceeds in Subsequent Transfers

Sale or lease of work – In every sale or lease of an original work of painting/sculpture or of the original manuscript of a writer/composer, subsequent to the first disposition thereof by the author, the author or his heirs have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%).[108] This right exists during the lifetime of the author and for 50 years after his death.[109]

Same; Works not covered – The provisions in the immediately preceding paragraph does not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions.[110]

Limitations on Protection

Copyright limitations – The rights of performers, producers of sound recordings, and broadcasting organizations, do not apply where the acts warranting protection of their respective copyright are related to:[111]

  • The use by a natural person exclusively for his own personal purposes;[112]
  • Using short excerpts for reporting current events;[113]
  • Use solely for the purpose of teaching or for scientific research;[114] and
  • Fair use of the broadcast subject to the conditions under Section 185 of the Intellectual Property Code.[115]

4-year prescription for damages – There is a 4-year prescription for any damages that may be recovered under the Intellectual Property Code reckoned from the time the cause of action arose.[116]

Copyright infringement

What constitutes copyright infringement – Without prejudice to criminal liabilities, any person infringing a copyright is liable:

  • To an injunction restraining such infringement; the court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods;[117]
  • Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement, and in proving profits the plaintiff is required to prove sales only and the defendant is required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to the court appears to be just and is not to be regarded as penalty;[118]
  • Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them;[119]
  • Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order;[120] and
  • Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case.[121]

Power of court to impound articles to be used as evidence – In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings.[122]

Columbia Pictures, Inc. v. Court of Appeals
G.R. No. 110318, 28 August 1996 (En Banc)

The complainants are Columbia Pictures, Inc., Orion Pictures Corporation, Paramount Pictures Corporation, Twentieth Century Fox Film Corporation, United Artists Corporation, Universal City Studios, Inc., The Walt Disney Company, and Warner Brothers, Inc. With the assistance and after investigation by the National Bureau of Investigation (NBI) of defendant Sunshine Home Video, Inc., complainants initiated a formal complaint with an application for search warrant with the aim of seizing pirated video tapes of copyrighted films, among others. For their application, they offered testimonial evidence of NBI operatives who conducted investigations and operations against defendant. After the search warrant was executed and the items being seized, defendant challenged the validity of the warrant on the ground that the master tapes of the copyrighted film were never presented during the application. Consequently, defendants claimed that the trial court had no probable cause to issue the search warrant.

The trial court quashed the search warrant resulting in the inadmissiblity of evidence of the seized items. Court of Appeals affirmed the trial court.

HELD: Search warrant was valid. “Probable cause for a search warrant is defined as such facts and circumstances which would lead a reasonably discrete and prudent man to believe that an offense has been committed and that the objects sought in connection with the offense are in the place sought to be searched.”

It must be emphasized that “a blind espousal of the requisite of presentation of the master tapes in copyright infringement cases, as the prime determinant of probable cause, is too exacting and impracticable a requirement to be complied with in a search warrant application which, it must not be overlooked, is only an ancillary proceeding.  Further, on realistic considerations, a strict application of said requirement militates against the elements of secrecy and speed which underlie covert investigative and surveillance operations in police enforcement campaigns against all forms of criminality, considering that the master tapes of a motion picture required to be presented before the court consists of several reels contained in circular steel casings which, because of their bulk, will definitely draw attention, unlike diminutive objects like video tapes which can be easily concealed. With hundreds of titles being pirated, this onerous and tedious imposition would be multiplied a hundredfold by judicial fiat, discouraging and preventing legal recourses in foreign jurisdictions.”

Copyright infringement is “a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright.”

“A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know what works he was indirectly copying, or did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril.  In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration.  To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied.  If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute a piracy. The question of whether there has been an actionable infringement of a literary, musical, or artistic work in motion pictures, radio or television being one of fact, it should properly be determined during the trial.  That is the stage calling for conclusive or preponderating evidence, and not the summary proceeding for the issuance of a search warrant wherein both lower courts erroneously require the master tapes.”

Action for unfair competition – An action for unfair competition is based on the proposition that “no dealer in merchandise should be allowed to dress his goods in simulation of the goods of another dealer, so that purchasers desiring to buy the goods of the latter would be induced to buy the goods of the former.”[123]

Caterpillar, Inc. v. Samson
G.R. No. 164605, 27 October 2006

Complainant Caterpillar, Inc. is a foreign corporation engaged in the business of manufacturing shoes, clothing items, among others. Upon the request of complainant, the National Bureau of Investigation (NBI) applied for search warrants against defendant Manolo P. Samson for violations of unfair competition under the Intellectual Property Code. After the execution of the search warrants, defendant’s various merchandise which bore the trademarks “CAT,” “CAT AND DESIGN,” “CATERPILLAR,” “CATERPILLAR AND DESIGN,” “WALKING MACHINES,” and/or “Track-type Tractor and Design”, were seized by the authorities.

After defendant filed a motion to quash the search warrants premised on the ground that he is the owner of such marks (he never denied use of such marks and instead claimed ownership thereof), the trial court denied the said motion. However, the said court directed the release of the merchandise on the ground that there was no criminal action commenced yet. The Court of Appeals affirmed the trial court.

HELD: The seized items may be released. “The samples obtained from the sample purchases are sufficient to represent the thousands of articles that were seized, making it doubtful that the prosecution would have presented each and every article seized from the respondent’s stores.  More likely, the court would not have allowed the presentation of superfluous evidence. The merchandise was also photographed, and more detailed photographs were taken of the particular parts of the merchandise where the trademarks in dispute were attached or used.” Defendant has never denied that these were items bought from his store. 

In the instant case, no criminal action had been prosecuted for almost a year.  Thus, the court had been left with the custody of highly depreciable merchandise.  More importantly, these highly depreciable articles would have been superfluous if presented as evidence for the following reasons: (1) the respondent had already admitted that he is the owner of the merchandise seized, which made use of the trademarks in dispute; (2) the court required the respondent to execute an undertaking to produce the articles seized when the court requires and had already in its possession a complete inventory of the items seized as secondary evidence; (3) actual samples of the respondent’s merchandise are in the possession of the police officers who had applied for the search warrant, and photographs thereof had been made part of the records, and respondent did not dispute that these were obtained from his stores.  Where the purpose of presenting as evidence the articles seized is no longer served, there is no justification for severely curtailing the rights of a person to his property.”

In unfair competition, the most usual devices employed in committing this crime are “the simulation of labels and the reproduction of form, color and general appearance of the package used by the pioneer manufacturer or dealer.” Here, the complainant “specifically identified the device employed by the respondent in deceiving the public into believing the goods that the latter sells are those manufactured by the former – the imitation of the trademarks allegedly owned by the petitioner, namely, ‘CAT,’ ‘CATERPILLAR,’ ‘CATERPILLAR AND DESIGN,’ ‘WALKING MACHINES’ and/or ‘Track-type Tractor and Design’ and the depictions of heavy machinery and equipment, which the petitioner uses to market its products, as well as the statements ‘LICENSED MERCHANDISE CATERPILLAR, INC.’ and ‘WE SHAPE THE THINGS WE BUILD, THEREAFTER THEY SHAPE US’ found on the articles themselves or on their packaging.”

(Note: The issue on unfair competition was not decided in this case as the main issue was on the propriety of the release of the merchandise.)

Hon Ne Chan v. Honda Motor Cor., Ltd.
G.R. No. 172775, 19 December 2007

Upon request of complainants Honda Motor Corp., Ltd. and Honda Phil., Inc. (who uses “Wave” on its motorcycles), the National Bureau of Investigation applied for search warrants against defendants Hon Ne Chan, Yunji Zeng for violations of the Intellectual Property Code (R.A. 8293). After the issuance of the search warrants and their subsequente execution (NBI seized all motorcyles with “Wave” marks), complainant filed a joint motion to quash the search warrants and to return the seized items on the ground that there was no probable cause and that it was in the nature of general warrants as any and all motorcyles bearing “Wave” was seized. The trial court quashed the warrants. The Court of Appeals reversed the lower court’s decision and rule on the validity of the search warrants.

HELD: The search warrants were valid. “Wave” is the model name of complainant’s motorcycles. Consequently, defendant’s possession of any immitation unit which carries the name “Wave” may be the object of the search warrants – regardless of whether there are suffixes attached to it. The authorities then had the power to seize the vehicles, including a “Wave CX110” as it is a species of units under the generic name Wave.

In this case, “it is clearly stated that what [complainants] are complaining about was the alleged violation of the goodwill they have established with respect to their motorcycle models ‘WAVE 110 S’ and ‘WAVE 125 S’ and which goodwill is entitled to protection in the same manner as other property rights.” There is, thus, probable cause.

LEVI STRAUSS (Phils.), Inc. v. Lim
G.R. No. 162311, 04 December 2008

Complainant Levi Strauss, Inc. initiated a Complaint before the Inter-Agency Committee on Intellectual Property Rights against defendant Tony Lim, who was doing business under the name Vogue Traders Clothing Company. The investigation showed that defendant was engaged in the manufacture, sale, and distribution of products similar to the complainant’s and its brand name using “LIVE’s.” After issuance and execution of search warrants by the authorities who seized several items bearing the said brand, a criminal complaint for unfair competition was filed against the defendant. In his defense, defendant claimed that his merchandise are under the brand “LIVE’s” and not counterfeit items of “LEVI’s” which are not confusingly similar, as well as the fact that his mark is a registered trademark and the patch pocket design has copyright protection. The investigating prosecutor did not find probable cause considering that the two marks are not confusingly similar. The DOJ and subsequently the Court of Appeals affirmed the said decision.

HELD: There is no probable cause. “Generally, unfair competition consists in employing deception or any other means contrary to good faith by which any person 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 goodwill, or committing any acts calculated to produce such result.”

Then DOJ Secretary Guingona found the absence of the actual intent to deceive “taking into consideration the differences in spelling, meaning, and phonetics between ‘LIVE’S’ and ‘LEVI’S,’ as  well  as  the  fact  that respondent had registered his own mark. While it is true that there may be unfair competition even if the competing mark is registered in the Intellectual Property Office, it is equally true that the same may show prima facie good faith. Indeed,  registration  does  not  negate unfair competition where the goods are packed or offered for sale and passed off as those of complainant. However, the mark’s registration, coupled with the stark differences between the competing marks, negate the existence of actual intent to deceive, in this particular case.”

Moreover, “where the similarity in the appearance of the goods as packed and offered for sale is so striking, intent to deceive may be inferred.” Here, there is no striking similarity. “Since confusing similarity was not found, the element of fraud or deception could not be inferred.”


[1] Ibid. Section 172.1.

[2] Ibid.

[3] INTELLECTUAL PROPERTY CODE. Section 172.2.

[4] Ibid. Section 173.1.

[5] Ibid. Section 173.2.

[6] Ibid. Section 174.

[7] Ibid. Section 175.

[8] Ibid. Section 176.1.

[9] Ibid. Section 176.2.

[10] Ibid. Section 176.1.

[11] Ibid.

[12] INTELLECTUAL PROPERTY CODE. Section 176.3.

[13] Ibid. Section 176.3.

[14] Ibid. Section 176.2.

[15] Ibid. Section 177.

[16] Ibid. Section 177.1

[17] Ibid. Section 177.2

[18] Ibid. Section 177.3

[19] Ibid. Section 177.4

[20] Ibid. Section 177.5

[21] Ibid. Section 177.6

[22] Ibid. Section 177.7

[23] Ibid. Section 178.

[24] Ibid. Section 178.1.

[25] Ibid. Section 178.2.

[26] Ibid. Section 178.3.

[27] Ibid. Section 178.3 (a).

[28] Ibid. Section 178.3 (b).

[29] Ibid. Section 178.4.

[30] Ibid. Section 178.5.

[31] Ibid. Section 178.5.

[32] Ibid. Section 178.5.

[33] Ibid. Section 178.6 cf. Article 723, Civil Code.

[34] Ibid.

[35] INTELLECTUAL PROPERTY CODE. Section 179.

[36] Ibid. Section 180.1.

[37] Ibid.

[38] Ibid. Section 180.2.

[39] Ibid. Section 180.3.

[40] Ibid.

[41] Ibid. Section 181.

[42] Ibid.

[43] INTELLECTUAL PROPERTY CODE. Section 182.

[44] Ibid. Section 182.

[45] Ibid.

[46] INTELLECTUAL PROPERTY CODE. Section 183. The provisions on the limitations of copyrights is to be interpreted in such a way as “to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder’s legitimate interests” (Section 183.2, Ibid.).

[47] INTELLECTUAL PROPERTY CODE. Section 184.1.

[48] Ibid. Section 184.1 (a).

[49] Ibid. Section 184.1 (b).

[50] Ibid. Section 184.1 (c).

[51] Ibid. Section 184.1 (d).

[52] Ibid. Section 184.1 (e).

[53] Ibid. Section 184.1 (f).

[54] Ibid. Section 184.1 (g).

[55] Ibid. Section 184.1 (h).

[56] Ibid. Section 184.1 (i).

[57] Ibid. Section 184.1 (j).

[58] Ibid. Section 184.1 (k).

[59] Ibid. Section 185.1. “Decompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use” (Ibid.).

[60] Ibid.

[61] INTELLECTUAL PROPERTY CODE. Section 185.1 (a).

[62] Ibid. Section 185. (b) .

[63] Ibid. Section 185.(c).

[64] Ibid. Section 185.(d).

[65] Ibid. Section 185.2.

[66] Ibid. Section 186.

[67] Ibid. Section 186.

[68] Ibid. Section 187.1.

[69] Ibid. Section 187.2 (a).

[70] Ibid. Section 187.2 (b).

[71] Ibid. Section 187.2 (c).

[72] Ibid. Section 187.2 (d).

[73] Ibid. Section 187.2 (e).

[74] Ibid. Section 188.1.

[75] Ibid. Section 188.1 (a).

[76] Ibid. Section 188.1 (b).

[77] Ibid. Section 188.1 (c).

[78] Ibid. Section 188.2.

[79] Ibid. Section 188.2.

[80] Ibid. Section 189.1.

[81] Ibid. Section 189.1 (a).

[82] Ibid. Section 189.1 (b).

[83] Ibid. Section 189.2.

[84] Ibid. Section 189.3.

[85] Ibid. Section 190.1

[86] Ibid. Section 190.1 (a).

[87] Ibid. Section 190.1 (b).

[88] Ibid. Section 190.2.

[89] Ibid. Section 191.

[90] Ibid. Section 191.

[91] Ibid. Section 191.

[92] Ibid.. Section 191.

[93] Ibid. Section 191.

[94] Ibid. Section 192.

[95] Ibid. Section 192.

[96] Ibid. Section 193.1.

[97] Ibid. Section 193.2.

[98] Ibid. Section 193.3.

[99] Ibid. Section 193.4.

[100] Ibid. Section 198.

[101] Ibid. Section 195. “The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. In default of such person or persons, such enforcement shall devolve upon either the author’s heirs, and in default of the heirs, the Director of the National Library” (Ibid.).

[102] Ibid. Section 195.

[103] Ibid. Section 197.

[104] Ibid.

[105] INTELLECTUAL PROPERTY CODE. Section 194.

[106] Ibid. Section 196.

[107] Ibid. Section 199. “Any damage recovered after the creator’s death shall be held in trust for and remitted to his heirs, and in default of the heirs, shall belong to the government” (Ibid.).

[108] Ibid. Section 200.

[109] Ibid.

[110] INTELLECTUAL PROPERTY CODE. Section 201.

[111] Ibid. Section 212.

[112] Ibid. Section 212.1.

[113] Ibid. Section 212.2.

[114] Ibid. Section 212.3.

[115] Ibid. Section 212.4.

[116] Ibid. Section 226.

[117] Ibid. Section 216.1(a).

[118] Ibid. Section 216.1(b).

[119] Ibid. Section 216.1(c).

[120] Ibid. Section 216.1(d).

[121] Ibid. Section 216.1(e).

[122] Ibid. Section 216.2.

[123] Caterpillar, Inc. v. Samson, G.R. No. 164605, 27 October 2006.

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