LAWS ON INTELLECTUAL PROPERTY Course Outline Atty. Risel G. Castillo-Taleon Intellectual Property Rights in General 1. Intellectual Property Rights - Sec. 4 IP Code & Right of a Foreigner to Sue for Protection of IP Rights — Sections 3 and 160 2. Differences between Copyrights, Trademarks and Patent I Trademarks 1. Definition of Marks, Collective Marks, Trade Names, Siogan - Sec. 121 2. Acquisition of Ownership of Mark a. Sec. 122 . Birkenstock GmbH vs. Phil Shoe Marketing GR #194307, Nov. 29, 2013, 3. Acquisition of Ownership of Trade Name — Sec. 165 4, Non-Registrable Marks a. Sec. 123 b. Secondary Meaning, Sec. 123.2 c. Fanciful, Arbitrary, Suggestive, Composite and Coined Marks 5. Prior Use of Mark as a Requirement — Sec. 122, 152 Dgpasihon 6. Tests to Determine Confusing Similarity betweenMarks a. Dominancy Test 1. Asia Brewery, Inc. vs. Court of Appeals, et al. G.R. No. 103543 2, McDonald's Corporation vs. L.C. Big Mak Burgers, Inc. G.R. No. 143993, 3. Societes Des Produits Nestle, S.A. et al. vs. Court of Appeals, et al. G.R. No 112012 b. Holistic Test 41, Emerald Garment Manufacturing Corp. vs. CA, G.R. No. 100098 2. Bristol Myers Co. vs. Dir, Of Patents & United American Pharmaceuticals, Inc., G.R. No. L-21587, May 19, 1966 7. Well-Known Marks a. Sec. 123 (e) (f) b. Criteria 8. Rights Conferred by Registration - Sec. 147 9. Use by Third Parties of Names, ete, Similar to Registered Mark ~ Sec. 148, 10. Infringement and Remedies a, Trademark Infringement 1. Sec. 185 2. Confusion of goods vs. confusion of business (2%. Parallel Importation > Tihowwkon I Woden, Keb Whur is crefation eye Sebati 8 Lergedor dhe Til1. Sec, 156-157, 179 2. Civil vs. Criminal Infringement . Jurisdiction 1. AM No. 2-1-11 SC, Feb. 9, 2002 2. AM No. 03-03-03 SC, July 1, 2003 3. Sec. 10.2 4, Requirement of Notice 11. Unfair Competition a. Sec. 168 b. Infringement vs. Untair Competition ¢. Pilipinas Shell Petroleum, et al. vs. Romars Int'l. GR 189669, Feb. 16, 2018 f. So saaeed Senge Math a7 wi EWilausle Pdicts CoN Basses tad carl Gn 08540, Sep" 2014 12, Trade Names or Business Names. 13. Collective Marks ‘ 14. Qa {- Cah 14. Cases I Ml. Copyright 1. DEFINITION OF COPYRIGHT 1.1It is the element of a person's ownership of his intellectual creation that permits him (author, composer or artist) to exclusively print, publish and vend the product of his creation. a. Common law copyright - That which secures to the owner exclusivity until its public dissemination,b. Statutory copyright - That which secures protection and exclusivity in the owner by force of law even when the work has been made accessible to the public. 2. TERRITORIAL APPLICATION OF COPYRIGHT LAWS (IP CODE) Our copyright laws have no extra-territorial operation and the rights granted under our laws can only be infringed by acts done within our territorial jurisdiction 3. COPYRIGHT IS DISTINCT FROM TRADEMARK AND PATENTS A. 1. Pearl & Dean Phils. Inc. vs. Shoemart, Inc. 409 SCRA 23 (2003) 2. Kho vs. Court of Appeals 379 SCRA 410 (2002) 3. Ching vs. Salinas 462 SCRA 241 (2005) B. Denicola Test - This test inquires into which aspects of the work are dictated by the functional constraints of the article and which aspects reflect unconstrained perspective of the artist (Prof. Robert Denicola) ©. Can an article of Commerce serve as a trademark and at the same time enjoy patent and copyright protection? 4, COPYRIGHT OVER LITERARY AND WORKS IS VESTED FROM THE MOMENT OF CREATION 1. Sec. 172.1 First paragraph 2. Seo. 172.2 3. Unilever Phils., Inc. vs. CA 498 SCRA 334 5. WORKS PROTECTED BY COPYRIGHT A. 4. Original works ~ Sec. 172 2. Derivative works - Sec. 173 B. Requirements of originality ~ An original work is that which requires originality in skill or labor in execution such that the works became individual either in matter, forms, arrangement or treatment (not necessarily original thought, idea or research) 1. Samboy vs. Levi Strauss 378 SCRA 3646. WORKS NOT PROTECTED BY COPYRIGHT 1. Sec. 175 2. Sec. 176 7. RIGHTS CONFERRED BY COPYRIGHT 1. Economic Right - Sec. 177 2. Moral Rights - Sec. 193 3. Rights of Performers, Producers of Sounds Recording and Broadcasting Organizations ~ Secs. 203, 204, 206, 208 8, LIMITATIONS OF COPYRIGHT 1. Sec. 184, 187 2. Fair use of Copyright Work ~ Sec. 185 a. Reproduction of Computer Program — Sec. 189 3. Importation for Personal Purposes ~ Sec. 180 9. OWNERSHIP OF COPYRIGHT 1. Sec. 178 2. Anonymous & Pseudonymous Works ~ Sec. 179) 10, DURATION OF COPYRIGHT 1. Sec. 213 11, INFRINGEMENT 1. Infringement vs. Plagiarism Infringement or piracy is any violation of the owner's exclusive rights conferred by law while plagiarism is confined to the incorporation in ‘one’s own work that of another without the proper acknowledgment thereof.f 2. Animus furandi or intention to pirate is not an element of copyright infringement 3. An acknowledgement of the sources of the work infringed is not @ defense to an infringement action. 4. Secs. 216, 217 5. Presumption of Authorship - Sec. 219 12. PRESCRIPTION OF ACTION 1. Section 226 Ill. Technology Transfer Arrangements 41. Voluntary License Contract ~ Sec. 85, 90, 91 Prohibited Clauses ~ Sec. 87 Mandatory Provisions - Sec. 88 2. Compulsory Licensing Grounds - Sec. 93, 96, 97 Requirement to Obtain a License - Sec. 95 3. Period to File a Petition - Sec. 94 IV. Patents 1. Patentable Inventions - Sec. 21, 23, 24, 25, 26, 27 2. Non-Patentable Inventions ~ Sec. 22 3. Ownership of a Patent 1. Right to a Patent - Sec. 26 b. First-to-File Rule - Sec. 29 . Inventions Created Pursuant to a Commission ~ Sec. 30 4d. Right of Priority - Sec. 314, Grounds for Cancellation of a Patent - Sec. 61 5. Remedy of the True and Actual Inventor - Sec. 29, 67, 68, 70 6. Rights Conferred by a Patent - Sec. 71, 55 7. Limitations of Patent Rights - Sec. 71, 72 a. Prior User — Sec. 73 b. Use by the Government - Sec. 74 8. Patent Infringement ~ Sec. 76 [Link] No 02-1-11 SC 2, Samson vs. Jurisdiction dated Feb. 19, 2002 Cabanos, June 28, 2005 GR 161693 Criminal action for Patent Infringement — Sec. 64 Tests in Patent Infringement i, Literal Infringement - Sec 754 ii, Doctrine of Equivalents ~ Sec. 75.2 Defenses in Action for Infringement - Sec. 81 Contributory Patent Infringement - Sec. 75.1 9. Assignment and Transmission of Rights ~ Sec. 103-107