TRADEMARK AND

COPYRIGHT
Sir Dave
 Actual Use/DAU
WOWOWEE Hotels – registered owner of the trademark
“W”
WEEWEEWOW Realty – filed a petition for cancellation for
non-use because the former has no hotel or
establishment in the Philippines
WOWOWEE’s defense – it maintains an interactive
website www.whotels.ph that can be used to make
reservations and bookings

Who is correct?
Actual Use
WOWOWEE is correct

Interactive website may constitute proof of actual use

that is sufficient to maintain the registration of the
same. It is intended to produce a discernable
commercial effect or activity within PH or to establish
commercial interaction with local consumers. (W Land
Holdings, Inc. v. Starwood Hotels and Resorts Worldwide
G.R. No. 222366, 2017)
Actual Use
Chen Inc – a Taiwanese company which manufactures
tires with the mark “LightYear”
Clark Enterprises – a PH registered corporation imported
tires from Chen Inc. from 2009 – 2014
In 2015 Chen filed a trademark application and was
issued the same.
Clark - sought the cancellation of the mark of Chen
claiming it had a better right to register.

Who has the better right?

Actual Use
Chen has the better right. Chen’s prior actual use of the
trademark even in another country bars Clark from applying
for the registration of the same trademark.
While RA 8293 removed the previous requirement of proof of
actual use prior to the filing, proof of prior and continuous
use is necessary to establish ownership of trademark. Such
ownership of the trademark confers the right to register the
trademark.
Also, a mere distributor does not own the trademark to the
goods he distributes and his rights over the trademark
cannot prevail over the owner.
Well-known mark
A went to Kluwer University (KU) in Germany for his PHD. He
completed his degree with the highest honors in the shortest
time. When he came back, he decided to set-up his own
graduate school in his hometown in Zamboanga and named
it Kluwer Graduate School of Business of Mindanao.
KU did not like unauthorized use of its name by its top
alumnus no less and filed a petition to cancel the
registration of A.

Will the petition to cancel prosper?

Well-known mark
Yes. A registered the trademark in bad faith. Under the Paris
Convention, foreign marks that are still accorded protection
against infringement and/or unfair competition in other
countries that are also signatories to the Convention without
need of registering the trademark.
It can also be cancelled on the basis that Kluwer is a well-
known mark and entitled to protection as KU and KGSBM
belong to the same class of services, ie education.
It can also be based on the fact that Kluwer is a trade name
that KU has adopted and used before its use and
registration by A. (Ecole de Cuisine Manille, Inc. v. Renaud
Cointreau & cie, G.R. No. 185830, 2013)
Well-known mark
The Supreme Court ruled that "Harvard" is the trade name of the
world famous Harvard University, and it is also a trademark of
Harvard University. Under Article 8 of the Paris Convention, as well
as Section 37 of R.A. No. 166, Harvard University is entitled to
protection in the Philippines of its trade name "Harvard" even
without registration of such trade name in the Philippines. This
means that no educational entity in the Philippines can use the
trade name "Harvard" without the consent of Harvard University.
Likewise, no entity in the Philippines can claim, expressly or
impliedly through the use of the name and mark "Harvard," that its
products or services are authorized, approved, or licensed by, or
sourced from, Harvard University without the latter's consent.
(Fredco Manufacturing Corp. vs. President and Fellows of Harvard
College, GR No. 185917, 2011)
Non-competing goods
Laberge Inc - manufactures after-shave lotion, shaving
cream and deodorants with the trademark “PRUT”.
JG – who manufacture briefs and underwear registered
the trademark “PRUT” for its products.

Can JG also use the trademark PRUT for its products?

Non-competing goods
Yes. The limit of the trademark is stated in the certificate
issued to Laberge. It does not include briefs and
underwear which are different products protected by
Laberge’s trademark. (Faberge Inc. v. IAC, G.R. No.
71189, 1992)
Descriptive Term
CPI – in 2001, trademark “San Francisco Coffee”

SFCRI – in 1995, business name “San Francisco Coffee &

Roastery, Inc.”

CPI’s defense – mere descriptive/generic term

Does CPI’s use of the trademark San Francisco Coffee

constitutes infringement of SFCRI’s tradename San
Francisco Coffee & Roastery, Inc., even if the tradename
is not registered?
Descriptive Term
Yes. SFCRI has acquired an exclusive right to the use of the
trade name “San Francisco Coffee & Roastery, Inc” since the
registration of the business name. However, this does not
mean that respondent has exclusive use of the geographic
word “San Francisco” or the generic word “coffee”.
Geographic or generic words are not, per se, subject to
exclusive appropriation. It is only the combination of the
words “San Francisco Coffee” that is protected against
infringement on matters related to the coffee business to
avoid confusing or deceiving the public. (Coffee Partners, Inc.
v. San Francisco Coffee and Roastery, Inc. G.R. No. 169504,
2010)
Descriptive Term
St. Francis Development Corp – “St. Francis Square’
Shang Properties – “St. Francis Towers” and “St. Francis
Shangri-la Place”

Is there infringement like the previous case?

Descriptive Term
None. The term is ineligible for trademark registration. In
general, a geographically-descriptive mark, because of its
general public domain classification, is perceptibly disqualified
from trademark registration.
IP Code provides that a mark cannot be registered if it “consists
exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods
or services”, because these “descriptive geographical terms are
in the ‘public domain’ simply because every seller should have
the right to inform customers of the geographical origin of his
or her goods or services.
Descriptive Term
Is there exception to the previous rule?
Doctrine of Secondary Meaning
Yes. A geographically descriptive mark can still be registered if
the same has acquired a secondary meaning. This means, that
a descriptive mark no longer causes the public to associate the
goods with a particular place, but to associate the goods with a
particular source (seller or producer).
It must be shown that the purchasers come to immediately
associate the mark with only the seller or producer of the
goods. In other words, the mark itself has acquired another
meaning no longer that of a particular place, but it has come
to mean that the goods or services are that of the seller or
producer.
Doctrine of Secondary Meaning
This doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that,
in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his
product (Ang vs. Teodoro, G. R. No. 48226, December 14,
1942).
Dominancy Test
NS Northern Organic Fertlizer’s “NS D-10 PLUS”

Berris’ “D-10 80 WP”

Confusingly similar or not?

Dominancy Test
Yes. Applying the Dominancy Test, the Court finds Abyadang’s
"NS D-10 PLUS" is similar to Berris’ "D-10 80 WP" and that
confusion or mistake is more likely to occur. Undeniably, both
marks pertain to the same type of goods – fungicide with 80%
Mancozeb as an active ingredient and used for the same group
of fruits, crops, vegetables, and ornamental plants, using the
same dosage and manner of application. They also belong to
the same classification of goods under R.A. No. 8293. Both
depictions of "D-10," as found in both marks, are similar in size,
such that this portion is what catches the eye of the purchaser.
Undeniably, the likelihood of confusion is present (Berris
Agricultural Co., Inc., v. Norvy Abyadang, G.R. No. 183404,
October 13, 2010).
Dominancy Test
Nestle’s “NAN”

5M Enterprise’ “NANNY”

Confusingly similar or not?

Dominancy Test
Yes. Applying the dominancy test, the Court finds that NANNY is
confusingly similar to NAN. NAN is the prevalent feature of Nestles
line of infant powdered milk products. It is written in bold letters
and used in all products. The line consists of PRE-NAN, NAN-H.A.,
NAN-1, and NAN-2. Clearly, NANNY contains the prevalent feature
NAN. The first three letters of NANNY are exactly the same as the
letters of NAN. When NAN and NANNY are pronounced, the aural
effect is confusingly similar. NANNY and NAN have the same
classification, descriptive properties and physical attributes. Both
are classified under Class 6, both are milk products, and both are
in powder form. Also, NANNY and NAN are displayed in the same
section of stores the milk section (Societes Des Products Nestle vs.
Dy,Jr.,, G.R. No. 172276, August 8, 2010).
Dominancy Test
Societe Des Produits Nestle’s “Master Roast” and “Master
Blend”

CFC’s “Flavor Master”

Dominancy Test
Yes. If the ordinary purchaser is "undiscerningly rash" in buying
such common and inexpensive household products as instant
coffee, and would therefore be "less inclined to closely examine
specific details of similarities and dissimilarities" between the two
competing products, then it would be less likely for the ordinary
purchaser to notice that CFC’s trademark FLAVOR MASTER
carries the colors orange and mocha while that of Nestle’s uses
red and brown. The application of the totality or holistic test is
improper since the ordinary purchaser would not be inclined to
notice the specific features, similarities or dissimilarities,
considering that the product is an inexpensive and common
household item. (Societe Des Produits Nestle, S.A. and Nestle
Phils. v. CA, GR. No. 112012, April 4, 2001).
Dominancy Test
McDonald’s Corp’s “Big Mac”

L.C. Big Mak Burger’s “Big Mak”

Dominancy Test
Applying the dominancy test, L.C. Big Mak Burger’s use of the
"Big Mak" mark results in likelihood of confusion. Aurally the
two marks are the same, with the first word of both marks
phonetically the same, and the second word of both marks
also phonetically the same. Visually, the two marks have both
two words and six letters, with the first word of both marks
having the same letters and the second word having the
same first two letters (McDonald’s Corp v. L.C. Big Mak
Burger, Inc., G.R. No. 143993, August 18, 2004).
Confusion as to business
UFC’s Papa

Barrio Fiesta’s Manufacturing’s “Papa Boy & Device”

Confusion as to business
Since UFC's product, ketchup, is also a household product
found on the same grocery aisle, in similar packaging, the
public could think that UFC had expanded its product mix to
include lechon sauce, and that the "Papa Boy" lechon sauce is
now part of the "Papa" family of sauces (UFC Philippines vs.
Barrio Fiesta Manufacturing, G.R. No. 198889, January 20,
2016).
Totality or Holistic Test
Emerald Garment’s “STYLISTIC MR. LEE”

H.D. Lee’s “LEE”

Totality or Holistic Test
The holistic test mandates that the entirety of the marks in
question must be considered in determining confusing
similarity. Applying the foregoing, Emerald’s "STYLISTIC MR.
LEE" is not confusingly similar to H.D. Lee’s "LEE" trademark.
Emerald's trademark is the whole "STYLISTIC MR. LEE."
Although on its label the word "LEE" is prominent, the
trademark should be considered as a whole and not
piecemeal. The dissimilarities between the two marks become
conspicuous in view of the following variables.
Totality or Holistic Test
First, the products involved in the case at bar are, in the main, various
kinds of jeans. These are not your ordinary household items like catsup,
soysauce or soap which are of minimal cost. Maong pants or jeans are
not inexpensive. Accordingly, the casual buyer is predisposed to be
more cautious and discriminating in and would prefer to mull over his
purchase. Confusion and deception, then, is less likely. Second, like his
beer, the average Filipino consumer generally buys his jeans by brand.
He does not ask the sales clerk for generic jeans but for, say, a Levis,
Guess, Wrangler or even an Armani. He is, therefore, more or less
knowledgeable and familiar with his preference and will not easily be
distracted. Finally, more credit should be given to the ordinary
purchaser who is not the "completely unwary consumer" but is the
"ordinarily intelligent buyer" considering the type of product involved
(Emerald Garment v. CA, G.R. No. 100098, December 29, 1995).
Idem sonans rule
Two names are said to be "idem sonantes" if the attentive ear
finds difficulty in distinguishing them when pronounced
(Martin v. State, 541 S.W. 2d 605).
Similarity of sound is sufficient to rule that the two marks are
confusingly similar when applied to merchandise of the same
descriptive properties (Marvex Commercial v. Director of
Patent, G.R. No. L-19297, December 22, 1966).
Trademark Dilution
It is the lessening of the capacity of a famous mark to identify
and distinguish goods or services, regardless of the presence
or absence of (1) competition between the owner of the
famous mark and other parties; or (2) likelihood of confusion,
mistake or deception. Subject to the principles of equity, the
owner of a famous mark is entitled to an injunction against
another person’s commercial use in commerce of a mark or
trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of the
mark (Levi Strauss & Co., vs. Clinton Apparelle, Inc., G.R. No.
138900, September 20, 2005).
TRADEMARK INFRINGEMENT
Use without consent of the trademark owner of any
reproduction, counterfeit, copy or colorable
limitation of any registered mark or trade name.
Such use is likely to cause confusion or mistake or
to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such
business.
TRADEMARK INFRINGEMENT
a. The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer;
b. The infringing mark or trade name is used in connection with
the sale, offering for sale, or advertising of any goods, business or
services; or the infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods,
business or services;
c. The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers or
others as to the goods or services themselves or as to the source
or origin of such goods or services or the identity of such
business; and
d. It is without the consent of the trademark or trade name owner
or the assignee thereof
Counterfeit Goods vs. Colorable
Imitation
Counterfeit - any goods, including packaging, bearing
without authorization a trademark which is identical to
the trademark validly registered in respect of such
goods, or which cannot be distinguished in its essential
aspects from such a trademark, and which thereby
infringes the rights of the owner of the trademark in
question under the law of the country of importation.
Colorable Imitation - "such a close or ingenious imitation
as to be calculated to deceive ordinary purchasers, or
such resemblance of the infringing mark to the original
as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, and to cause him
to purchase the one supposing it to be the other.
UNFAIR COMPETITION
Employing deception or any other means contrary
to good faith by which a person passes off his
goods or business or services for those of one who
has already established goodwill thereto.
UNFAIR COMPETITION
Trademark Infringement Unfair Competition

Unauthorized use of a The passing off of one’s

trademark. goods as those of another.

Fraudulent intent is Fraudulent intent is essential.

unnecessary.

GR: Prior registration of the Registration is not necessary

trademark is a prerequisite to
the action.
XPN: Well-known marks
Persons Guilty of Unfair Competition
1. Any person, who is selling his goods and gives them
the general appearance of goods of another
manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or in
any other feature of their appearance, which would be
likely to influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other than
the actual manufacturer or dealer, or who otherwise
clothes the goods with such appearance as shall deceive
the public and defraud another of his legitimate trade, or
any subsequent vendor of such goods or any agent of
any vendor engaged in selling such goods with a like
purpose;
Persons Guilty of Unfair Competition
2. Any person who by any artifice, or device, or who
employs any other means calculated to induce the
false belief that such person is offering the services
of another who has identified such services in the
mind of the public;
3. Any person who shall make any false statement
in the course of trade or who shall commit any
other act contrary to good faith of a nature
calculated to discredit the goods, business or
services of another.
Elements
a. Confusing similarity in the general appearance of
the goods, and
b. Intent to deceive the public and defraud a
competitor.
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. 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.
Copyright
A right over literary and artistic works which are
original intellectual creations in the literary and
artistic domain protected from the moment of
creation
Duration
GR: Copyright shall last during the lifetime of the
author and 50 years after his death.

Please check other rules

Term of Moral Right
Section 193. 1 (Attribution Right) shall last during
the lifetime of the author and in perpetuity after his
death while the other moral right shall be
coterminous with economic rights.
Elements of copyrightability
1. Originality – Must have been created by the
author’s own skill, labor, and judgment without
directly copying or evasively imitating the work
of another
2. Expression/Fixation – Must be embodied in a
medium sufficiently permanent or stable to
permit it to be perceived, reproduced or
communicated for a period more than a
transitory duration.
Time when copyright vests
Principle of automatic protection - 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
Time when copyright vests
Juan Xavier wrote and published a story similar to
an unpublished copyrighted story of Manoling
Santiago. It was, however, conclusively proven that
Juan Xavier was not aware that the story of
Manoling Santiago was protected by copyright.
Manoling Santiago sued Juan Xavier for
infringement of copyright. Is Juan Xavier liable?
Time when copyright vests
YES. Juan Xavier is liable for infringement of
copyright. It is not necessary that Juan Xavier is
aware that the story of Manoling Santiago was
protected by copyright. The work of Manoling
Santiago is protected from the time of its creation.
Copyright as distinct from material
object
GR: The copyright is distinct from the property in the material
object subject to it. Consequently, the transfer or assignment of
the copyright shall not 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.

XPN: Work of Architecture - Copyright in a work of architecture

shall include 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: Provided, That the copyright in any such work
shall 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
Copyrightable Works
a. Books, pamphlets, articles and other writings
b. Lectures, sermons, addresses, dissertations prepared for Oral delivery,
whether or not reduced in writing or other material form
c. Letters
d. Dramatic, choreographic works
e. Musical compositions
f. Works of Art
g. Periodicals and Newspapers
h. Works relative to Geography, topography, architecture or science
i. Works of Applied art
Copyrightable Works
j. Works of a Scientific or technical character
k. Photographic works
l. Audiovisual works and cinematographic works
m. Pictorial illustrations and advertisements
n. Computer programs; and
o. Other literary, scholarly, scientific and artistic works (IPC, Sec. 172.1).
DERIVATIVE WORKS
a. Dramatizations, translations, adaptations, abridgements,
arrangements, and other alterations of literary or artistic
works;
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. (IPC, Sec. 173).
NON-COPYRIGHTABLE WORKS
1. 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
4. Pleadings
5. 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
6. Any work of the government of the Philippines
NON-COPYRIGHTABLE WORKS
7. TV programs, format of TV programs (Joaquin v. Drilon,
G.R. No. 108946, Jan. 28, 1999)
8. Systems of bookkeeping; and
9. Statutes.
News, as expressed in a video
footage
Broadcasting organizations have not only copyright on but
also neighboring rights over their broadcasts.
Copyrightability of a work is different from a fair use of a
work for purposes of news reporting. (ABS-CBN Co. vs.
Gozon, G.R. No. 195956, 2015)
Problem
X, an amateur astronomer, stumbled upon what appeared
to be a massive volcanic eruption in Jupiter while peering at
the planet through his telescope. The following week, X,
without notes, presented a lecture on his findings before the
Association of Astronomers of the Philippines. To his dismay,
he later read an article in a science journal written by Y, a
professional astronomer, repeating exactly what X
discovered without any attribution to him. Has Y infringed
on X's copyright, if any?
Problem
No, because no protection extends to any discovery, even if
expressed, explained, illustrated, or embodied in a work.
For any work of the government of
the PH
GR: Conditions imposed prior the approval of the
government agency or office wherein the work is created
shall be necessary for exploitation of such work for profit.
Such agency or office, may, among other things, impose as
condition the payment of royalties.

XPN: No prior approval or conditions shall be 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 administration agencies, in deliberative
assemblies and in meetings of public character
Are Directories Copyrightable?
NO. Directories are not copyrightable and therefore the use of them
does not constitute infringement. The IPC mandates originality as a
prerequisite for copyright protection. This requirement necessitates
independent creation plus a modicum of creativity. Since facts do not
owe their origin to an act of authorship, they are not original, and
thus are not copyrightable.
A compilation is not copyrightable per se, but is copyrightable only if
its facts have been "selected, coordinated, or arranged in such a way
that the resulting work as a whole constitutes an original work of
authorship." Nonetheless, a compilation that is copyrightable receives
only limited protection, for the copyright does not extend to facts
contained in the compilation (Feist Publications, Inc. v. Rural
Telephone Service Co., 499 U.S. 340).
Economic Rights
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 (dramatization, translation, adaptation,
abridgement, arrangement or other transformation of the 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
g. Other communications to the public.
Moral Rights
Moral rights – For reasons of professionalism and propriety, the author
has the right:
a. To require that the authorship of the works be attributed to him
(attribution right)
b. To make any alterations of his work prior to, or to withhold it from
publication
c. To preserve integrity of work, object to any distortion, mutilation or
other modification which would be prejudicial to his honor or
reputation; and
d. 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
Rules on Ownership
Original literary and artistic works - Author of the work.

Joint authorship - Co-authors – in case of works of joint authorship; in

the absence of agreement, their rights shall be governed by the rules
on co-ownership.
Rules on Ownership
Anonymous and pseudonymous works
The publishers shall be 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
Rules on Ownership
In the course of employment
The employee, if not a part of his regular duties even if the employee
uses the time, facilities and materials of the employer.
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.
Rules on Ownership
Letters
In respect of letters, the copyright shall belong to the writer subject to
the provisions of Article 723 of the Civil Code.

Civil Code of the Philippines

Article 723. Letters and other private communications in writing are
owned by the person to whom they are addressed and delivered.
Rules on Ownership
T, an associate attorney in XYZ Law Office, wrote a newspaper
publisher a letter disputing a columnist’s claim about an incident in
the attorney’s family. T used the law firm’s letterhead and its
computer in preparing the letter. T also requested the firm’s
messenger to deliver the letter to the publisher.

Who owns the copyright to the letter?

Rules on Ownership
T, since he is the original creator of the contents of the letter.
Rules on Ownership
Solid Investment House commissioned Mon Blanco and his son Steve,
both noted artists, to paint a mural for the Main Lobby of the new
building of Solid for a contract price of P2M.

a. Who owns the mural? Explain.

b. Who owns the copyright of the mural?
Rules on Ownership
a. The mural is owned by Solid. It commissioned the work and paid
Mon and Steve Blanco P2M for the mural.
b. Even though Solid owns the mural, the copyright of the mural is
jointly owned by Mon and Steve, unless there is a written
stipulation to the contrary
Limitations on Copyright
Sec. 184, 185, 186 and Sec 187 of IPC
Debates
Allowed reproduction as long as source is clearly indicated. (Rapler,
Inc. v. Bautista, G.R. No. 222702, 2016)
Material for the blind etc.
Shall not constitute infringement if exclusively for the use of the blind,
visually- and reading-impaired persons and not for a profit basis and
shall indicate the copyright owner and the date of the publication.
Problem
In a written legal opinion for a client on the difference between
apprenticeship and learnership, Liza quoted without permission a
labor law expert’s comment appearing in his book entitled
“Annotations on the Labor Code.” Can the labor law expert hold Liza
liable for infringement of copyright for quoting a portion of his book
without his permission?
Problem
No. Liza cannot be held liable for infringement of copyright. Any use
made of a work for the purpose of judicial proceedings or for giving of
professional advice by a legal proceedings or for giving of professional
advice by a legal practitioner shall not constitute infringement of
copyright [Sec. 184 (k), IPC].
Problem
May a person have photocopies of some pages of the book of
Professor Rosario made without violating the copyright law?
Problem
YES. 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, shall be permitted, without the
authorization of the owner of copyright in the work. This rule
contemplates that reproduction of the book shall not extend to an
entire book or a substantial part thereof
COPYRIGHT INFRINGEMENT
It is 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.
Piracy
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 the
statute to the oner of the copyright. (Habana v. Robles)
A person infringes a right protected
under this Act when one:
a. Directly commits an infringement;
b. Benefits from the infringing activity of another person who commits
an infringement if the person benefiting has been given notice of the
infringing activity and has the right and ability to control the activities
of the other person;
c. With knowledge of infringing activity, induces, causes or materially
contributes to the infringing conduct of another
Problem

In an action for damages on account of an infringement of a

copyright, the defendant (the alleged pirate) raised the defense that
he was unaware that what he had copied was a copyright material.
Would this defense be valid?
Problem

No. In copyright infringement, intent is irrelevant. A person may

consciously or unconsciously copy or infringe a copyrighted material
and still be held liable for such act.
Subconscious Copying Doctrine

It contemplates infringement or plagiarism by copying from another

work but committed subconsciously from memory rather than
conscious use by deliberately copying.
DOCTRINE OF FAIR USE

“Fair use” permits a secondary use that “serves the

copyright objective of stimulating productive thought and
public instruction without excessively diminishing the
incentives for creativity”.
The fair use of a copyrighted work for criticism, comment,
news reporting, teaching including limited number of copies
for classroom use, scholarship, research, and similar
purposes is not an infringement of copyright.
Factors that should be considered in
order to determine fair use
1. Purpose and character of the use, including whether such
use is of a commercial nature or is for non-profit educational
purpose;
2. Nature of the copyrighted work;
3. Amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and
4. Effect of the use upon the potential market for or value of
the copyrighted work.
Plagiarism

Plagiarism means the theft of another person’s language,

thoughts, or ideas. To plagiarize is to take (ideas, writings, etc.)
from (another) and pass them off as one’s own. The passing off
of the work of another as one’s own is thus an indispensable
element of plagiarism.
Plagiarism presupposes intent and a deliberate, conscious
effort to steal another’s work and pass it off as one’s own (In
the matter of the charges of plagiarism against Associate
Justice Mariano C. Del Castillo, A.M. No. 10-7-17-SC, October 12,
2010).