Copyright 2019 Comparisons

Last Updated February 12, 2019

Contributed By Villaraza & Angangco

Law and Practice

Authors



Villaraza & Angangco was founded in 1980 under the leadership of young lawyers, including now Philippine Supreme Court Justice Antonio T Carpio. Villaraza & Angangco (V&A Law) has approximately 60 lawyers and over 100 highly trained non-legal staff, with its headquarters in Metro Manila. It is a full-service firm whose practice is divided into three main departments: litigation, corporate and commercial law, and IP, with expertise in other specialised fields, such as taxation, labour, banking and finance, mining and natural resources, power and energy, gaming, and telecommunications and ICT. V&A Law’s IP department is one of the top-ranked IP practices in the Philippines and is composed of nine lawyers, whose expertise includes molecular biology, domain name systems and internet architecture, petroleum products, applied physics and instrumentation, fashion design, advertising and mass media, computer science, materials engineering and the liberal arts. The firm regularly advises large pharmaceutical, banking, petroleum, mass media and clothing companies.

The historical roots of the copyright system of the Philippines may be traced to the time of Spanish Rule. On 10 January 1879, the Spanish Law on Intellectual Property was approved and came into force in 1880. This was the first known copyright law in the Philippines. Under this law, copyright was declared a property right governed by civil law but with special legislative provisions.

The Treaty of Paris, signed in December 1898, ended Spanish rule over the Philippines in favour of the Americans. Significantly, the Treaty of Paris contained a provision regarding intellectual property rights and, specifically, copyright:

“The rights of property secured by copyrights and patents acquired by Spaniards in the Island of Cuba and in Puerto Rico, the Philippines and other ceded territories, at the time of the exchange of the ratifications of this treaty, shall continue to be respected…”

On 6 March 1924, Act no 3134 entitled “An Act to Protect Intellectual Property,” otherwise known as the “Copyright Law of the Philippine Islands,” was passed by the Philippine Legislature. Act no 3134 was based on the US Copyright Law of 1909.

On 14 November 1972, while the Philippines was under Martial Law, former President Ferdinand Marcos issued Presidential Decree no 49 (“PD 49”) entitled “Decree on the Protection of Intellectual Property,” which repealed Act no 3134.

Following the events of the 1986 People Power Revolution and the deposal of President Marcos, the 1987 Constitution was ratified. Section 13, Article XIV of the 1987 Constitution expressly provides for the protection of intellectual property rights as state policy, to wit:

“The State 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 period as may be provided by law.”

Pursuant thereto, Republic Act no 8293, or the “Intellectual Property Code” (“IP Code”), was passed in 1998. The Intellectual Property Code is currently the main governing law with respect to copyright and other related rights, as well as all other intellectual property rights in the Philippines. In 2012, Republic Act no 10372, entitled “An Act Amending Certain Provisions of Republic Act no 8293, Otherwise Known as the ‘Intellectual Property Code of the Philippines’ and for Other Purposes,” revised several provisions of the IP Code in relation to copyright and other related rights.

The principal sources of law regulating copyright are:

  • Section 13, Article XIV of 1987 Constitution, insofar as it establishes a state policy for the protection of intellectual property rights;
  • the IP Code, as amended, as the main copyright law in the Philippines; and
  • Republic Act no 386, or the Civil Code of the Philippines, with respect to the general law on contracts and property, which suppletorily applies to matters relating to the ownership and transfer of intellectual property rights.

The Philippines is party to the following international treaties/conventions in relation to the protection of copyrights and other related rights:

  • the Bern Convention for the Protection of Literary and Artistic Works;
  • the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organization;
  • the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS);
  • the World Intellectual Property Organization (WIPO) Performances and Phonograms Treaty (2002);
  • the WIPO Copyright Treaty; and
  • the Convention Establishing the World Intellectual Property Organization.

In addition, as a member of the Association of Southeast Asian Nations (ASEAN), the Philippines is a signatory to the ASEAN Framework Agreement on Intellectual Property Cooperation.

Section 3 of the IP Code grants foreign copyright-holders reciprocal rights. Copyright-holders who are nationals or are domiciled or have a real and effective industrial establishment in a country that 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 granted under such convention, treaty or reciprocal law, as well as to the rights under the IP Code.

With specific application to copyright, the IP Code recognises a presumption of validity for works recorded in an international register pursuant to an international treaty to which the Philippines is or may become a party, subject to certain exemptions.

The IP Code also provides for reverse reciprocity of foreign laws. Under Section 231 of the IP Code, any condition, restriction, limitation, requirement, penalty or other similar burden imposed by the law of a foreign country on a Philippine national seeking intellectual property protection in that country will be reciprocally enforceable upon the nationals of that country within the jurisdiction of the Philippines.

For a work to benefit from copyright protection in the Philippines, it is essential that the work must be original, ie it has been independently created and has a minimum of creativity. The work should also be a copyrightable work. Sections 172 (Literary and Artistic Works), 173 (Derivative Works) 174 (Published Edition of Work), list the general types of works subject to copyright protection while Sections 175 (Unprotected Subject Matter) and 176 (Works of the Government) indicate matters that are not subject to copyright.

In particular, ideas, procedures, systems, methods or operations, concepts, principles, discoveries or mere data as such are not subject to copyright protection, 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, as well as any official text of a legislative, administrative or legal nature, as well as the legal translations thereof, are also not protected under the law.

A work does not need to be registered or subject to other formal requirements in order to access copyright protection. Copyright protection over a copyrightable work exists from the moment of creation. In fact, Section 191 of the IP Code specifically states that the registration and deposit of a copyright is not a precondition of copyright protection.

Copyrightable works may be registered and deposited with the Copyright Division of the National Library of the Philippines, the Supreme Court Library (with respect to works in the field of law only), and with the Bureau of Copyright and Other Related Rights, as deputised by the National Library. However, registration is not necessary to obtain copyright protection since such protection exists from the moment of creation of a copyrightable work. The purpose of registration and deposit is to complete the records of the National Library and the Supreme Court Library.

Deposited works are considered public records and are open to public inspection, subject to safeguards that may be issued by the National Library.

Copyrightable works are enumerated under Sections 172 (Literary and Artistic Works), 173 (Derivative Works), and 174 (Published Edition of Work) of the IP Code. A list of works that are not protected by copyright are also provided in Sections 175 (Unprotected Subject Matter) and 176 (Works of the Government).

The enumeration of copyrightable works provided by the IP Code, particularly in Section 172.1 thereof, is not exclusive. This is evident from the use of the phrase “shall include in particular.” Furthermore, Section 172.2 of the IP Code states that “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.” Hence, so long as a work of art meets the general requirements for protection, copyright protection for such work is automatically granted in the Philippines from the moment of creation.

Software enjoys copyright protection in the Philippines. Computer programs are listed under Section 172.1 of the IP Code as literary or artistic works subject to copyright protection. The general requirements for the protection of literary or artistic works apply to software or computer programs.

Under Section 22.2 of the IP Code, computer programs are not patentable. Therefore, software does not enjoy cumulative protection as copyrightable and from patent registration.

Section 173.1(b) of the IP Code grants protection to compilations of data as derivative works. A database may therefore enjoy copyright protection in the Philippines to the extent that it is an original work by virtue of the manner of selection, coordination, arrangement and presentation of its contents, but not as to its content as such. Exhaustive databases in which the data is arranged according to basic rules (eg alphabetically as in a phone directory) are usually not protected under copyright law.

Under Section 172.1(h) of the IP Code, original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art, are considered works that are protected by copyright, provided that they comply with the essential elements of a copyrightable work, ie they must be original and must be minimally creative and artistic. If the work is registrable as an industrial design, the design protection will be cumulative with the copyright protection over the ornamental design or model.

Fictional Characters

Present laws, rules and regulations and jurisprudence are silent on this matter. Nonetheless, it is submitted that the general rule on copyright applies. If the characters are fleshed out as part of a written story or drawn in a comic book or a graphic novel, the character enjoys copyright protection as the story and the comic book or graphic novel enjoys copyright protection. However, note that Section 175 of the IP Code provides that a mere idea or concept is unprotected subject matter.

TV Formats and the Like

In Joaquin Jr v Drilon G.R. No 108946, 28 January 1999, the Supreme Court ruled that the general format of TV game shows is not copyrightable. The court ruled that “a television show includes more than mere words can describe because it involves a whole spectrum of visuals and effects, video and audio, such that no similarity or dissimilarity may be found by merely describing the general copyright/format of both dating game shows.” This conforms to Section 175 of the IP Code, which states that a mere idea, system, concept or principle is unprotected subject matter. However, the TV programme or show as an audio-visual work is protected by copyright under Section 172.1 (l) of the IP Code.

Sport Events

Present laws, rules and regulations and jurisprudence are silent on this matter. However, it is submitted that broadcasts of sports events may be protected under the related rights granted to broadcasting organisations. Under the IP Code, broadcasting organisations enjoy the exclusive right to carry out, authorise and prevent: (a) the rebroadcasting of their broadcasts; (b) the recording in any manner of their broadcasts for communication to the public; and (c) the use of such records for fresh transmissions or for fresh recording. Based on the foregoing, the recording of a sports event made and broadcasted by an organisation is protected.

Notably, in ABS-CBN Corporation v Felipe Gozon et al, G.R. no 195956, 11 March 2015, the Supreme Court of the Philippines held that news footage is copyrightable, to wit:

“News or the event itself is not copyrightable. However, an event can be captured and presented in a specific medium. As recognized by this court in Joaquin, television ‘involves a whole spectrum of visuals and effects, video and audio.’ News coverage in television involves framing shots, using images, graphics, and sound effects. It involves creative process and originality. Television news footage is an expression of the news.

News as expressed in a video footage is entitled to copyright protection.  Broadcasting organizations have not only copyright on but also neighboring rights over their broadcasts.  Copyrightability of a work is different from fair use of a work for purposes of news reporting.”

In view of the above pronouncement of the Supreme Court in ABS-CBN Corporation v Felipe Gozon et al, it is arguable that the footage of a sports event made by a broadcasting organisation is not only protected under related rights, but is copyrightable as well as “audio-visual works” or works produced by any process for making audio-visual recordings.

Multimedia works

Section 172.1 (l) of the IP Code classifies as copyrightable work “audio-visual  works  and  cinematographic  works  and works produced by a process analogous to cinematography or any process for making audiovisual recordings.” Whether the medium be analogue or digital, multimedia works as audio-visual works are copyrightable subject matter.

Museums and Exhibitions

Present laws, rules and regulations and jurisprudence are silent on this matter.

Websites

Websites involve multiple and different forms of creative works such as images, text, music, photographs, graphic design and source code. Copyright will protect all of these works separately, ie an article in a website will have separate copyright protection from the photographs used. Furthermore, the way in which the elements in a website are arranged or presented may also be protected by copyright.

Recipes

Recipes may be copyrighted, but only to the extent of their original and specific presentation. While third parties may freely use the information found in the recipe, they are prohibited from copying the particular manner in which the information is expressed.

Perfumes

Present laws, rules and regulations and jurisprudence are silent on this matter.

Maps

Maps are specifically listed as copyrightable works in Section 172.1(i) of the Intellectual Property Code.

Section 171.1 of the IP Code defines an “author” of a copyrightable work as a “natural person” who has created the work. A corporation cannot be considered an author of a work but may be the owner of such copyright or related rights by proper assignment or transfer.

There are currently no specific laws and/or rules in the Philippines regarding copyright in relation to Artificial Intelligence (AI). However, computer programs are deemed copyrightable literary or artistic works under Section 172(n) of the IP Code. Thus, the AI code may be considered authored by its developer/s. As to the authorship of works created by AIs, this remains a topic of contention. Nonetheless, the definition of “author” under Section 171.1 of the IP Code clearly limits the same to “natural persons,” which leads to the conclusion that AIs may not be considered authors of original works, at least under existing laws.

How is the author generally identified (name, pseudonym, etc)? Does your system establish a presumption on the authorship of a work (for example, one is considered the author of a work if he or she is indicated as such on the same work according to general practice)?

Section 219 of the IP Code provides that the natural person whose name is indicated on a work in the usual manner as the author is presumed to be the author of the work, in the absence of contrary evidence. This applies even if the name is a pseudonym, as long as the author is identifiable. The person or body corporate whose name appears on an audio-visual work in the usual manner shall be presumed to be the maker (owner) of the work, in the absence of contrary evidence.

Note that a copyright registration and deposit does not carry with it the presumption of ownership of the copyright by the registrant or depositor. Nonetheless, a copyright registration and deposit does require the submission of a notarised affidavit stating the following:

  • at the time specified therein, copyright subsisted in the work;
  • the affiant or the person named therein is the owner of the copyright; and
  • the copy of the work annexed thereto is a true copy thereof.

Such Affidavit is considered prima facie proof of the matters stated therein, including ownership over the copyright involved.

see 3.1 Author of Copyrightable Work.

see 3.1 Author of Copyrightable Work.

With respect to works of joint authorship, Section 178.2 of the IP Code provides that the co-authors are considered the original owners of the copyright. Their rights shall be governed by the rules on co-ownership unless they have agreed to the contrary. Neither of the joint-owners may grant a licence for the work without the prior consent of the other owner/s. However, if their respective contributions are easily identifiable and may be used separately, the author of each part is considered the original owner of the copyright therein.

Under Section 171.2 of the IP Code, a “collective work” is defined as “a work 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 the contributing natural persons will not be identified.” Thus, when an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless expressly reserved.

Derivative works such as dramatisations, translations, adaptations, abridgements, arrangements and other alterations of literary or artistic works, as well as collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection, coordination or arrangement of their contents are protected as new works under Section 173 of the IP Code. The protection granted to derivative works does not affect any subsisting copyright upon the original works employed, nor imply any right to use such works or to secure or extend copyright in such original works.

The following rules under Section 178 of the IP Code shall apply to copyright ownership in the case of works created in the course of employment:

  • the copyright shall belong to the author-employee if the work was not made in the course of his regular employment, even if the author uses the time, facilities and materials of the employer; and
  • if the work is the result of the performance of the author’s regular duties, the employer shall own the copyright, unless there is an express or implied agreement to the contrary. (Section 178.3, IP Code).

Thus, a work created in the course of employment may be the subject of an agreement between the author-employee and the employer, including the ownership of the copyright. The parties are free to establish the terms and conditions of such an agreement, provided that they are not contrary to law, morals, good customs, public order or public policy. Note that an assignment or licence of copyright inter vivos must be in writing. In addition, under the Civil Code of the Philippines, an assignment of a right produces no effect against third parties unless it appears in a public instrument.

Since the agreement is between parties in an employer–employee relationship, a possible concern is that the agreement will be considered a contract of adhesion. While contracts of adhesion are not invalid per se, Philippine courts have declared such contracts void when the weaker party is completely deprived of the opportunity to bargain on equal footing. Therefore, an agreement regarding copyright ownership over a work created by an employee should be clear, unambiguous and equitable.

If the work is commissioned outside of an employer–employee relationship (ie, consultancy or freelance), the copyright is owned by the author although the work itself is owned by the person who commission and paid for it, unless there is a written stipulation to the contrary.

Under Section 176.1 of the IP Code, works created by an officer or employee of the government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as part of his/her regularly prescribed official duties, are considered “works of government,” in which no copyright subsists.

However, under Republic Act no 100551, otherwise known as the Philippine Technology Transfer Act of 2009 and its Implementing Rules and Regulations (IRR), officers or employees of the government who are granted special authority to conduct research and development for a limited period are not deemed to be “performing regularly prescribed official duties.” As such, copyright exists in works created by the said officers or employees. If the work is derived and generated from publicly funded research, whether in whole or in part, ownership over the copyright is vested in the Research and Development Institute (RDI) whose researcher(s) actually authored the work pursuant to the Research Funding Agreement (RFA). This is because the RDI is required to include a provision in the Research Agreement requiring the author/s of a work produced through public funds to assign copyright over the said work to the RDI. Since the government is not precluded from receiving and holding copyrights transferred to it, the Philippine Government may ultimately own the copyright over publicly funded works through transfers from the RDI.

For works authored by government officers or employees that are not publicly funded, the rules on copyright ownership for works created in the course of an employment under Section 178.3, and for commissioned works under Section 178.4 of the IP Code, shall apply.

Specific to universities, the applicable rules on copyright ownership will depend on whether the work is derived or generated from publicly funded research. If the work is publicly funded, the Philippine Technology Transfer Act of 2009 and its IRR shall apply. Otherwise, the IP Code provisions shall apply – in which case, ownership may be ultimately determined through agreement of the parties. In addition, the IP Code provides a directive to schools and universities to adopt their own intellectual property policies that would govern use and creation of intellectual property of the learning institution and its employees.

To illustrate, the University of the Philippines (UP), a state university, implements its own Intellectual Property Rights Policy, which determines, among other things, the rules on copyright ownership for works created by its faculty members, researchers, students, staff and visiting professors. Under this policy, copyright on all works generally remain with the creator, subject to the mandatory assignment thereof to the appropriate government agency for works that are:

  • produced through public funding, including university funds;
  • commissioned works or those created at the direction and control of the university through its officials or designates for a specific project or purpose;
  • works whose authorship cannot be attributed to one or a discrete number of authors; and
  • works whose authorship cannot be attributed to one or a discrete number of authors because it is the result of simultaneous or sequential contributions over time by multiple authors.

In the case of articles and other writings published without the names of the authors or under pseudonyms, Section 179 of the IP Code dictates that the publisher is presumed to represent the author unless the contrary appears. As the author’s representative, the publisher is entitled to protect and enforce the author’s rights. Such presumption does not apply where the pseudonyms or adopted names leave no doubt as to the author’s identity, and shall cease once the author of an anonymous work discloses his/her identity.

Under Section 177 of the IP Code, copyright holders have exclusive control over:

  • reproduction of the work or a substantial portion thereof;
  • dramatisation, translation, adaptation, abridgment, arrangement or other transformation of the work;
  • the first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
  • rental of the original or a copy of an audio-visual 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;
  • public display of the original or a copy of the work; and
  • other communication to the public of the work.

In addition, Section 200 of the IP Code grants the creator or his heirs an inalienable right to participate in the gross proceeds of the sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, to the extent of 5%.

The wording of Section 177 of the IP Code, “copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts” indicates an exclusive list of economic rights. In the case of Pearl & Dean (Phil), Inc v Shoemart Inc G.R. no 148222, 15 August 2003, the Supreme Court held that copyright is a purely statutory right. Accordingly, the rights are limited to what the statute confers and can cover the works falling within the statutory enumeration or description. Based on this, it is submitted that copyright protection vests only such rights as are provided under the law.

However, copyright issues that may arise due to technological progress may be covered under the current definitions of “reproduction” and “communication to the public.” Section 171.3 of the IP Code defines “communication to the public” as any communication to the public “… and includes 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.” Section 171.9 of the IP Code defines “reproduction” as “the making of one (1) or more copies, temporary or permanent, in whole or in part, of a work or a sound recording in any manner or form …” These definitions are sufficiently broad to cover copyright infringements using technology such as online streaming.

The term of economic rights depends on the type of work and authorship involved.

The protection granted to literary and artistic works and derivative works subsists for the duration of the author’s lifetime and for 50 years after his/her death.

In the case of works of joint ownership, economic rights remain for 50 years after the death of the last surviving author.

In the case of anonymous or pseudonymous works, economic rights remain for 50 years from the date of its first lawful publication or, if not published, from its creation. If the author is identified before the expiration of the said term, the economic rights shall subsist for 50 years after the death of the identified author, or of the last surviving author.

In the case of works of applied art, protection remains for 25 years from the date of its making.

In the case of photographic works, protection subsists for 50 years from its publication, or if not published, from its making.

Finally, in the case of audio-visual works, including those produced by a process analogous to photography or any process for making audio-visual recordings, protection remains for 50 years from the date of publication, or if not published, from its making.

Economic rights are alienable. An inter vivos assignment or licensing of a copyright, in whole or in part, must be in writing to be valid and should appear in a public instrument in order to be effective against third parties.

Any exclusivity in the economic rights in a work may be exclusively licensed. The copyright owner, in turn, has the right to regular statements of account from the assignee or licensee with regard to the assigned or licensed work.

For other conditions, please see 3.4 Regulation on Collaborated Works.

As a general rule, economic rights subsist for 50 years after the death of the author and may be exercised by his/her heirs. There are no prohibitions against transmission of the rights upon the death of the author. Accordingly, such heirs may transmit the economic rights to a third party even after the death of the author.

Under Section 193 of the IP Code, the moral rights of an author in relation to their work are as follows:

  • right of attribution, or the right to require that the authorship of the works be attributed to him/her, in particular, that his/her name be indicated in a prominent way on the copies, and in connection with the public use of his/her work;
  • right of alteration, or the right to make any alterations to his/her work prior to, or to withhold it from publication;
  • right of integrity, or the right to object to any distortion, mutilation or other modification of, or other derogatory action in relation to his/her work that may prejudice his/her honour or reputation; and
  • right to restrain the use of his/her name with respect to any work not of his/her own creation or in a distorted version of his/her work.

The author’s right of attribution shall last during his/her lifetime and in perpetuity after his/her death. However, his/her rights of alteration, integrity and to restrain the use of his/her name shall be coterminous with the economic rights, ie, during the author’s lifetime and 50 years after his/her death.

The moral rights of an author are not assignable or subject to license although they may be waived by a written instrument, subject to certain limitations.

Under Section 198 of the IP Code, moral rights shall not be assignable or subject to license. Upon the death of the author, the posthumous enforcement of such rights may be charged to an individual, partnership, corporation or society, through a written instrument filed with the National Library. In the absence thereof, the enforcement will devolve upon the author’s heirs, or in default of such heirs, the Director of the National Library.

Under Philippine contract law, an unemancipated minor cannot give consent to a contract. However, a contract entered into by a minor is valid and binding unless annulled by a proper court action. Such a contract may be ratified and made valid, expressly or impliedly, either by the guardian of the minor, or by the minor him/herself upon reaching majority. In the Philippines, the age of majority is 18 years.

Please see 3.4 Regulation on Collaborated Works. In addition, where the licensing of a copyright involves the transfer of systematic knowledge, such as the licensing of computer software that is not developed for mass market, this will be considered a Transfer Technology Arrangement (TTA). Registration of the TTA with the Documentation, Information and Technology Transfer Bureau (DITTB) is not required for its validity, provided that the agreement conforms with the provisions of Section 87 (Prohibited Clauses) and 88 (Mandatory Provisions) of the IP Code. Non-conformance of the TTA will render it unenforceable in the Philippines, unless it is approved and registered with the DITTB.

Section 177.3 of the IP Code grants the copyright owner the exclusive right to carry out or authorise only the first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership. Hence, after the first sale or transfer, the copyright owner loses control over the subsequent disposition of such work or effectively “exhausts” his/her right over it. This applies only to the copyright owner’s exclusive rights in relation to the first public distribution of his/her work and does not apply to other economic rights nor moral rights. In addition, an author and his/her heirs retain an inalienable right to at least 5% of the gross proceeds from each sale or lease of an original painting, sculpture or manuscript subsequent to the first disposition by the author.

Republic Act no 8792, or the Electronic Commerce Act of 2000 (“E-Commerce Act”) punishes violations of intellectual property rights through the use of telecommunication networks such as the internet.

Notably, under Section 30 the E-Commerce Act, a service provider is not liable for infringement in connection with third party material that passes through its systems, provided that:

  • the service provider does not have actual knowledge, or is unaware of the facts or circumstances from which it is apparent that the making, publication, dissemination or distribution of such material is unlawful or        infringes any rights subsisting in the material;
  • the service provider does not directly commit any infringement or other unlawful act, induce or cause another party to commit the same, and/or
  • the service provider does not financially benefit from such action committed by a third party.

Section 6(n) of the E-Commerce Act IRR defines a “service provider” as a provider of:

  • online services or network access, or the operator of facilities therefor, including entities offering the transmission, routing or providing of connections for online communications, digital or otherwise, between or among points specified by the user, of electronic data message or electronic documents of the user’s        choosing; or
  • the necessary technical means by which electronic data message or electronic documents of an originator        may be stored and made accessible to a designated or undesignated third party.

Hence, the definition of a service provider is sufficiently broad to cover user generated content (UGC) and social networking sites.

Section 177 of the IP code exclusively grants to the composer of musical compositions the right to carry out, authorise or prevent among others, the reproduction of the work or a substantial portion thereof, and the public performance of the work. Hence, under Section 178.5 of the IP Code, copyright over audio-visual works belong, separately, to the producer, the author of the scenario, the composer of the music, the film director and the author of the work adapted. Subject to agreement between the individual copyright holders, the producer generally exercises the copyright to an extent required for the exhibition of the work, except for the right to collect performing licence fees for the performance of musical compositions.

FILSCAP, as the Collective Management Society (CMO) for music copyright owners in the Philippines, handles synchronisation rights for copyrighted music of its members. 

Section 183 of the IP Code states that copyright owners may designate a society of artists, writers or composers to enforce their economic and moral rights on their behalf. The Philippine Intellectual Property Office (IPO) Office Order no 13-173, Series of 2013, provides the rules and regulations on the accreditation of CMOs by the Bureau of Copyright and Other Related Rights (BOC) of the IPO.

The following CMOs are present in the Philippines:

  • the Filipinas Copyright Licensing Society, Inc (FILCOLS) is a CMO for authors, publishers and other rights-holders in the text and image sector. It is a member of the Brussels-based International Federation of Reproduction Rights Organization;
  • the Filipino Society of Composers, Authors and Publishers, Inc (FILSCAP) is a CMO for composers, lyricists and music publishers, which handles the copyrighted musical compositions of its members and the members of its affiliate foreign collective societies. FILSCAP is a regular member of the Paris-based International Confederation of Societies of Authors and Composers (CISAC), the umbrella organisation of all composer               societies around the world;
  • the Filipino Visual Arts and Design Rights Organization (FILVADOR) is a CMO for visual arts and design, recognised by the World Intellectual Property Organization (WIPO), the National Commission for Culture and        the Arts (NCAA) and the Cultural Center of the Philippines (CCP);
  • the Performing Rights Society of the Philippines (PRSP) is a CMO for actors, singers, musicians and other performers. PRSP is composed of the following member societies and organizations: (a) Organisasyon ng Pilipinong Mangaawit (OPM); (b) Katipunan ng mga Artista sa Pelikulang Pilipino at Telebisyon (KAPPT); (c) Asosasyon ng Musikong Pilipino (AMP); (d) Philippine Legitimate Stage Artists Group, Inc; and (e) Film Academy of the Philippines (FAP); and
  • Sound Recording Rights Society, Inc or Sounds Right (SRRS) is a CMO for producers of sound recordings and performing artists. It is composed of member-companies/record labels who are engaged in the business of music publishing, among others. The SRRS was accredited by the IPO in 2015.

Under Office Order no 13-173, a CMO’s primary function is to collectively manage copyright and/or related rights, including:

  • negotiating the grant of licences to users of protected works;
  • collecting royalties and other forms of remuneration for the use of protected works;
  • collecting proceeds for subsequent transfers of the originals of paintings, sculptures and manuscripts;
  • collecting additional remuneration for subsequent communication or broadcast of a performance;
  • collecting single equitable remuneration for the broadcast, other communication to the public or public performance of a sound recording; and
  • distributing the abovementioned collections to the rights-holders.

Apart from the foregoing, the CMO may enforce moral rights, and sue and enforce administered rights depending on the agreement with its members.

As an accredited organisation by the IPO, a CMO also has duties owed to the IPO in connection with its activities, such as:

  • submitting audited financial statements for publication on the IPO website;
  • notifying the IPO of meetings, which are, at least, open to its general membership, and welcome a representative to such meetings;
  • submitting to the IPO whatever requests for information involving the CMO and its stakeholders;
  • complying with the rules and orders of the IPO; and
  • reporting to the IPO any amendments to its statutes, changes relative to its business (including changes to the authorised collecting agents, if any).

The documents pertaining to the application for accreditation of CMOs and other relevant documents and/or agreements such as licensing agreements, license fee rates and the like are available on the IPO website at: https://www.ipophil.gov.ph/services/copyright/notice-of-publication.

The IP Code itself and Office Order no 13-173 are silent on the matter of the application of antitrust laws to CMOs. It is notable, however, that Republic Act no 10667 of the Philippine Competition Act exempts agreements protecting intellectual property rights from the application of the law. Specifically, Section 15 of the Act allows IP rights-holders to impose restrictions and/or conditions on agreements for the transfer or licence of their IP rights, which ordinarily would be considered anti-competitive.

No response provided.

The IP Code provides a “fair use” clause (Section 185), as well as lists of exceptions to copyright protection, namely:

  • Section 184 with regard to non-infringing use of copyright works;
  • Section 188 with regard to reprographic reproduction by libraries; and
  • Section 189 with regard to reproduction of computer programs.

The lists of limitations specific to copyright protection under the IP Code are comprehensive but are sufficiently broad to cover analogous circumstances. However, the exceptions granted under the law must be interpreted in a manner that does not conflict with the normal exploitation of the copyrighted work, and does not unreasonably prejudice the rights-holder’s interest.

Interpretations of the law made by the Supreme Court of the Philippines through its decisions form part of the laws themselves. Thus, interpretations of the Supreme Court aid in understanding the parameters of the “conditions” provided under the IP Code to determine whether an act is allowed without the copyright-holder’s consent.

Under Section 185 of the IP Code, there are four determining factors to consider whether the use of a copyrighted work is allowed as “fair use,” namely:

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

On the other hand, the following actions are considered exceptions to or limitations on copyright under Section 184 of the IP Code:

  • the reproduction or distribution of published articles or materials in a specialised format exclusively for the use        of the blind, visually- and reading-impaired persons, provided that such copies and distribution shall be made on a non-profit basis and shall indicate the copyright owner and the date of original publication;
  • 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;
  • 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, provided that the source and the name of the author, if appearing on the work, are mentioned;
  • reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topics, 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, provided that the source is clearly indicated;
  • 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;
  • 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, provided        that the source and the name of the author, if appearing in the work, are mentioned;
  • recordings made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions, provided that such recordings must be deleted within a reasonable period after they were first broadcast. This exception shall not apply to audio-visual works, which are part of the general cinema repertoire of feature films except for brief excerpts of the work;
  • making of ephemeral recordings by a broadcasting organisation by means of its own facilities and for use in its own broadcast;
  • 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;
  • 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 purposes only, whose aim is not profit making;
  • 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, provided that 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/her successor in title; 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.

The general exception granted to reproductions of copyrighted works for private use under PD no 49 was repealed by the IP Code. However, Section 187.1 in relation to Section 187.2 of the IP Code allows 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. Such permission shall not extend to the reproduction of:

  • a work of architecture in the form of a building or other construction;
  • an entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means;
  • a compilation of data and other materials;
  • a computer programme except as allowed under Section 189 of the IP Code; and
  • any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interest of the author.

In addition, in determining fair use of a work, Section 185 of the IP Code includes as a factor, the purpose and character of the use of a copyrighted work, ie, whether it is commercial or for non-profit in nature. Thus, the use of a copyrighted work for private consumption or the mere possession or ownership of a private copy may be considered fair use, analogous to the exceptions granted under Section 184 of the IP Code. This is, however, tempered by another factor for consideration, which is the effect of the use upon the potential market for or value of the copyrighted work. Hence, fair use in relation to private copies may be decided on a case-by-case basis depending on the work involved and the effect of such private copies on the commercial value of the work.

Both the IP Code and Republic Act 10066, or the “National Cultural Heritage Act,” are silent on the reproduction of cultural goods. It is submitted that cultural goods may be protected as literary or artistic works, provided that they are original and only within the term of protection granted under the IP Code.

With respect to buildings in public places, the copyright protection granted to works of architecture includes the right to control the erection of any building that reproduces the whole or a substantial part of the work, either in its original form or in any form recognisable derived from the original.

As literary or artistic works subject to copyright protection, the creator of cultural goods/buildings has exclusive control over the reproduction of the whole or a substantial portion of the same. Considering that the definition of “reproduction” under Section 171.9 of the IP Code includes the making of copies, temporary or permanent, in whole or in part, in any manner or form, the reproduction of such works in other media such as photographs or videos may be considered an infringement of their copyright. It bears noting, however, that the fair use exemption may apply to such reproductions.

The E-Commerce Act grants service providers (such as internet service providers) a general exemption from liability for third party infringing materials that pass through their systems, provided that they have no knowledge of them, do not knowingly benefit financially from them, and did not induce or cause another to commit the infringement. Such exemption, however, does not affect their contractual obligations as well as their obligations as a service provider under a licensing or other regulatory regime, or their civil liability, which may serve as basis for injunctive relief issued by a court under any law requiring the service provider to take or refrain from taking actions necessary to remove, block or deny access to any material, or to preserve evidence of a violation of law.

The exemption granted under the E-Commerce Act to service providers is consistent with Section 216 of the IP Code on who is liable for copyright infringement. Insofar as the internet service provider serves exclusively as an intermediary, without direct participation in the infringing activity, the service provider is exempt from liability, subject to the imposition of injunctive orders to assist in the prosecution of the parties liable for the infringement. However, aiding and abetting third party infringers shall make an intermediary liable for copyright infringement under Section 216 of the IP Code.

There is no express mention of satire or parody work in the IP Code. However, in the case of ABS-CBN Corporation v Felipe Gozon et al, supra, the Supreme Court expressly stated that “a parody using a substantial amount of copyrighted work may be permissible as fair use as opposed to a copy of a work produced purely for economic gain.”

Great weight is afforded to the constitutional rights to free speech, to information, and other human rights embodied in Article III (Bill of Rights) of the 1987 Philippine Constitution, and in other binding international legal instruments.

The IP Code itself recognises the need to balance the interests of intellectual property holders with public interest. Section 185 of the IP Code establishes the “fair use” exception, which allows the use of copyrighted works for criticism, comment, news reporting, teaching, including multiple copies for classroom use, scholarship, research, and similar purposes. Similarly, the limitations on copyright protection under Section 184 of the IP Code generally relate to the non-commercial use of copyright for information dissemination, as well as educational, religious and charitable purposes, provided that they do not unduly prejudice the rights-holder’s legitimate interests.

Of specific importance to the right to information is Section 176 of the IP Code, which states that no copyright subsists in works of the government. Accordingly, no prior approval or conditions may be imposed on the use for any purpose of statutes, rules and regulations, speeches, lectures, sermons, addresses and dissertations pronounced, read and rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. This is consistent with the constitutional right to information on matters of public concern, which ensures free access to official records, documents, papers, official acts, transactions or decisions, as well as government research data used as the basis for policy development.

When there is, however, conflict between a regulation and freedom of speech (or other constitutional right), as in the case of intellectual property protection on the one hand, and a constitutional right or freedom in the other, the courts have applied the Balancing of Interests Test, which requires a conscious and detailed consideration of the interplay of the interests observable in a given type of situation.

There are at least three neighbouring rights recognised in the Philippines under the IP Code:

  • the rights of performing artists in their performances;
  • the rights of producers of sound recordings in their phonograms; and
  • the rights of broadcasting organisations in their broadcasts.

Rights of Performers

Embodied in Sections 203 and 204 of the IP Code, performing artists are given both economic and moral rights to their performances. Their economic rights pertain to their exclusive right to authorise the following:

  • the broadcasting and other communication to the public of their performance;
  • the fixation of their unfixed performance;
  • the direct or indirect reproduction of their fixed performance;
  • the first public distribution of the original and copies of their fixed performance;
  • the commercial rental to the public of the original and copies of their fixed performance, even after distribution; and
  • the making available to the public of their fixed performances by wire or wireless means.

Performers are also granted the moral right to be identified as the performers of their performances.

Once the performing artist has authorised the broadcasting or fixation of their performance, the protections above become inapplicable. For each communication to the public or broadcast of a performance subsequent to the first, the performer shall only be entitled to an additional remuneration equivalent to at least 5% of the original compensation received for the first communication or broadcast, without prejudice to the performer’s right to agree to more favourable terms.

For performances not incorporated in recordings, the rights of performers expire after 50 years from the end of the year in which the performance took place. For recorded performances, such rights expire after 50 years from the end of the year in which the recoding took place.

Rights of Producers of Sound Recordings

Under Section 208 of the IP Code, producers of sound recordings shall enjoy the exclusive right to authorise:

  • the direct or indirect reproduction of their sound recordings, in any manner or form;
  • the placing of these reproductions on the market and the right of rental or lending;
  • the first public distribution of the original and copies of their sound recordings; and
  • the commercial rental to the public of the original and copies of their sound recordings, even after distribution.

In addition, performers and sound producers are entitled to a single equitable remuneration for the use of a commercially published sound recording for the purposes of broadcasting, communication to the public, or public performance, with the intention of profit. The parties shall share the remuneration equally, unless there is agreement to the contrary.

For performances not incorporated in recordings, the rights of producers of sound recordings expire after 50 years from the end of the year in which the performance took place. For sound and/or image recordings, such rights expire after 50 years from the end of the year in which the recording took place.

Rights of Broadcasting Organisations

Under Section 211 of the IP Code, broadcasting organisations shall have the exclusive right to carry out the following:

  • the rebroadcasting of their broadcasts;
  • the recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose of communication to the public of television broadcasts of the same; and
  • the use of such records for fresh transmissions or for fresh recording.

The rights of broadcasting organisations shall last for 20 years from the date the broadcast took place.

The IP Code is silent as to the designation of societies for the management of neighbouring rights. In practice, however, existing CMOs do manage neighbouring rights, such as the PRSP for performing artists and the SRRS for sound producers.

Refer to discussion in 3.4 Regulation on Collaborative Works.

By express provision of the IP Code, the limitations to copyright in general under Chapter VIII of the IP Code, including the “fair use” clause, as well as the specific exceptions under Section 184, also apply to neighbouring rights.

Under Section 216 of the IP Code, a copyrighted work is infringed when a person:

  • directly commits an act of infringement;
  • benefits from the infringing activity of another person who directly commits an act of infringement, if the person benefitting has been given notice of the infringing activity and has the right and ability to control the activities of the person directly committing the infringement; or
  • induces, causes, or materially contributes to the infringing conduct of another person, with knowledge that it is an infringing activity.

Direct acts of copyright infringement occur when a person, without the authority, licence or consent of the copyright owner, violates any of the economic and moral rights of the copyright holder enumerated under Sections 177 and 193 of the IP Code, respectively. It must be borne in mind, however, that copyright protection in the Philippines is territorial, subject to statutory recognitions of the principle of reciprocity as well as the protection to works granted by international conventions and/or agreements to which the Philippines is a party. Thus, as a general rule, copyrightable works are protected from infringement in the Philippines provided their author is a Philippine national or habitual resident, or if the work is created or performed within the Philippines, pursuant to Sections 221 to 224 of the IP Code. Nonetheless, the Philippines grants limited reciprocity rights to nationals or persons domiciled in States that grant similar reciprocal rights to Philippine nationals. The Philippines is also a party to the Bern Convention for the Protection of Literary and Artistic Works, which grants similar copyright protection to nationals, habitual residents, or to works first published in a State-party to the Convention.

Copyright infringement in the Philippines is punished by the mere fact of voluntary commission. In the case of ABS-CBN Corp v Gozon, supra, the Supreme Court held that lack of intent to commit a criminal act, or good faith, is not a defence, whether in a civil or a criminal action for copyright infringement.

However, the Philippines recognises certain limitations to the economic rights of copyright holders and these may be raised as defences in either a civil or a criminal action for copyright infringement. For instance, the economic rights of the copyright holder are subject to statutory limitations under Sections 184 to 190 of the IP Code, such as the allowance for fair use of a copyrighted work by persons other than the copyright holder. Fair use of a copyrighted work is determined by considering:

  • the purpose and character of the use, including whether the use is for a commercial or a non-profit educational purpose;
  • the form and nature of the copyrighted work;
  • the amount and substantiality of the portion used; and
  • the effect of the use upon the potential market for or value of the copyrighted work.

The right to privacy in the context of the information society is protected through Republic Act no 10173, otherwise known as the Data Privacy Act of 2012. The law protects personal information of natural and juridical persons in the Philippines, and regulates the processing, use, transfer, distribution and publication thereof. However, personal information processed for journalistic, artistic, literary or research purposes are exempted from its scope.

Thus, in the absence of an established legal or regulatory framework for the interplay between privacy rights and copyright, it is submitted that relief for privacy-related issues in relation to copyright regulations may be obtained through courts based on established tests, such as the Balancing of Interests Test.

With respect to copyright infringement in the information society, existing copyright laws and regulations apply regardless of the mode or media through which infringement is committed. This is emphasised by Section 33(b) of the E-Commerce Act, which expressly punishes intellectual property infringements committed through the use of telecommunication networks such as the internet. With the amendment to the definition of copyright infringement under the IP Code, even intermediaries such as internet service providers may now be held liable, subject to certain conditions. Under Section 216 of the IP Code in relation to Section 30(b) of the E-Commerce Act, an internet service provider may be held liable for copyright infringement if it directly commits the infringing activity, knowingly benefits from the infringing activity of third party, or induces or causes another to commit an act of infringement. Further, albeit currently untested, Section 6 of Republic Act no 10175 or the Cybercrime Prevention Act of 2012 states that crimes defined and penalised by special laws, such as copyright infringement under the IP Code, shall be punishable by a penalty one degree higher than that provided for in the special law concerned, if they are committed with the use of information and communications technologies. It is expected that Philippine copyright laws with respect to the information society will jurisprudentially develop soon.

There are generally two types of proceedings to remedy copyright infringement in the Philippines – administrative actions and judicial actions. In certain cases, provisional or urgent remedies in the form of preliminary attachment, injunction, writs of search and seizure, among others, may also be availed of before commencing or even while administrative and/or judicial actions are pending (see Rules 57, 58 and 126, Philippine Rules of Court; Rules 4 and 5 of the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights (“IPV Rules”); and Rule on Search and Seizure in Civil Actions For Infringement of Intellectual Property Rights, A.M. no 02-1-06-SC, 30 January 2002).

Administrative actions before the IPO include enforcement actions to impose measures for compliance with intellectual property laws, and Intellectual Property Violation (IPV) cases to administratively redress violations of IP laws. Customs-related actions may also be brought before the Bureau of Customs.

Enforcement actions coursed through the IPO typically lead to visitorial, compliance and inspection orders relating to persons and/or premises alleged to be in violation of intellectual property rights, while IPV cases may result in the condemnation or seizure of infringing goods, imposition of fines, cancellation of permits and/or licenses granted by the IPO, among others. Meanwhile, customs-related actions could lead to the monitoring and seizure of infringing goods passing through Philippine borders.

Judicial actions may either be civil or criminal. Civil actions allow for the seizure and/or destruction of infringing goods, injunction orders, and award of damages, among others, whereas criminal actions may result in the imposition of penalties in the form of fines and imprisonment.

Neighbouring rights are subject to the same remedies and procedures applicable to copyright, as set out under Sections 216 to 217 of the IP Code. This includes administrative actions before the IPO, and civil and/or criminal judicial actions before the regular courts.

Moral rights may be enforced and violations thereof redressed through the same remedies and procedures applicable to the infringement of economic rights, including administrative actions before the IPO and judicial actions before the regular courts.

An action for a declaratory judgment of non-infringement is not available in the Philippines. At most, a potential infringer may bring an action before the appropriate RTC to determine any question of construction or validity arising from a copyright law, rule or regulation. This, however, pertains to the law itself and not to existing rights of third parties that may be infringed upon.

Since copyright exists from the time of its creation without need of registration, a potential infringer cannot question the existence of such copyright and its ownership except by raising the appropriate defences in a copyright infringement case.

Though not a court, the Bureau of Legal Affairs (BLA) of the IPO exercises quasi-judicial functions in relation to administrative IPV cases. The BLA has original jurisdiction over such cases where the total damages claimed are not less than PHP200,000. Its proceedings are governed by the IPV rules.

Regional Trial Courts (RTCs) that have been specifically designated as Special Commercial Courts have jurisdiction over all civil and criminal actions for violations of intellectual property rights, including copyright-related proceedings. Its proceedings are governed by A.M. no 10-3-10-SC or the Rules of Procedure for Intellectual Property Rights Cases (“IPR Rules”) and suppletorily, by the Rules of Court.

As for the particular RTC or venue where one may file a case, this depends on whether the action is civil or criminal. For civil actions, these must be filed with the RTC with a branch designated as a Special Commercial Court that has territorial jurisdiction over the residence of the plaintiff, the defendant, or, in case of non-resident defendants, wherever such non-resident defendant may be found in the Philippines. In the case of criminal actions, these must be filed with the RTC with a branch designated as a Special Commercial Court that has territorial jurisdiction over the place where a violation of intellectual property rights has occurred. In places where there is no RTC with a branch designated as a Special Commercial Court, the civil or criminal action must be filed in the nearest RTC with a branch designated as a Special Commercial Court within the same judicial region.

Note, however, that based on the IPR Rules, certain Special Commercial Courts in the National Capital Judicial Region, namely, Quezon City, Manila, Makati and Pasig City, are authorised to act on applications for the issuance of writs of search and seizure in civil actions for violations of the IP Code, which shall be enforceable nationwide. Within their respective territorial jurisdictions, the Special Commercial Courts where the violation occurred shall have concurrent jurisdiction to issue the writ of search and seizure.

As a rule, all parties whose interests will be affected by the court’s action in an infringement proceeding must be impleaded if, without them, no final determination of the case can be had.

In civil actions for infringement, the indispensable parties are the plaintiff/s and the defendant/s. Under Section 180 of the IP Code, the licensee is entitled to all the rights and remedies that the licensor had with respect to the copyright. Thus, the plaintiff/s may be the copyright holder, the assignees and licensees, the copyright holder’s heirs; and with respect to the enforcement of moral rights, those charged with the posthumous enforcement of copyrights in case of enforcement of moral rights, or in default thereof, the Director of the National Library. The same rules apply to administrative IPV cases before the IPO.

In criminal actions for infringement, the indispensable parties are the public prosecutor and those who stand accused of the crime. The participation of the offended party in a criminal action for infringement is limited. The offended party is considered to be a private complainant to the crime, whose interests are only with respect to the extent of the civil liability attached to the crime of copyright infringement.

As a rule, judgments will take effect only between the parties and their successors-in-interests. Thus, unless impleaded in an action, a judgment cannot have any effect against persons who are not parties or successors-in-interests to the parties impleaded in a case. If impleaded, however, third parties may be held liable to the full extent allowable by copyright law.

All actions, whether administrative, civil, or criminal, have corresponding legal fees which must be advanced by the plaintiff/s or complainant/s upon commencement of proceedings. The amount of legal fees varies depending on the nature of the action, the amount of damages being claimed, and the inclusion of prayers for provisional remedies.

There are no pre-requisites or pre-conditions to initiate an IPV violation case or a judicial case for copyright infringement. As soon as a person has violated the rights of a copyright holder, there is a cause of action to institute the applicable infringement case. Note, however, that no damages may be recovered under the IP Code, including for copyright infringement under Section 216, after the lapse of four years from the time the cause of action arose.

Once an administrative IPV case or a judicial action has been instituted, the parties will be mandatorily referred to mediation prior to proceeding with a trial on the merits.

While not necessary, there are benefits in sending cease-and-desist or demand letters prior to resorting to an IPV case or a judicial action. For instance, the appropriate prior cease-and-desist letter could be treated as an extrajudicial demand that could trigger a claim for legal interests starting from the date when the extrajudicial demand was made. In the case of criminal actions, sending out the appropriate letters also puts the alleged infringer on notice that a copyright subsists on the work being infringed and, thus, potentially allows the courts to double the award of damages in the case of deliberate infringement, pursuant to Section 216.1(e) of the IP Code.

Urgent measures are available for copyright holders in both administrative IPV and judicial infringement proceedings, most of which require the prior filing of a main action. However, an IP rights-holder who intends to file an action against an alleged infringer may request for the issuance of a writ of search and seizure before commencing the main infringement action.

Where any delay is likely to cause irreparable harm to the IP rights-holder, or if there is demonstrable risk of evidence being destroyed, an IP rights-holder may apply ex parte for the issuance of a writ of search and seizure, directing the alleged infringer to admit authorised persons into his property, and to allow the search, inspection, copying, photographing, audio and audio-visual recording, and seizure of any document or article specified in the order. This application may be filed by an IP rights-holder who intends to commence a civil action for infringement. If the IP rights-holder fails to file a case with the appropriate court within 31 calendar days from the date of issuance of the writ, the writ will be set aside and the seized documents and articles returned to the alleged infringer. Such failure may also result in damages in favour of the alleged infringer, upon order of the court.

An IP rights-holder who has already commenced an action may request for the following urgent measures:

  • the issuance of an order of preliminary attachment, which allows a copyright holder to have the property of the adverse party taken into the custody of the IPO or of the court as security for the satisfaction of any judgment that may be recovered;
  • the issuance of a temporary restraining order (TRO), which is an injunction effective for a period of 20 days from service; and
  • the issuance of an order of preliminary injunction, which is an order requiring a person to do, or refrain from doing, particular act/s.

Under IPO Office Order no 019, Series of 2002, or the IPV Rules, a preliminary attachment may issue in an administrative IPV case for the following, among others:

  • in an action for recovery of a specified amount of money or damages on a cause of action arising from a violation of the IP Code against a party who is about to depart from the Philippines with intent to evade the execution of judgment;
  • in an action against a party who does not reside and is not found in the Philippines, or on whom summons may be served by publication; or
  • in an action against a party who has removed or disposed of his property, or is about to do so, with intent to defraud the aggrieved party.

The foregoing grounds shall also apply for the issuance of an order of preliminary attachment for cases before the regular courts.

A preliminary injunction and/or a TRO will issue only once the applicant has established to the court’s satisfaction the following conditions:

  • that the applicant is entitled to the relief demanded, and the whole or part of such relief consists in restraining        the commission or continuance of the act/s complained of, or in requiring the performance of act/s for a limited period or perpetually;
  • that the commission, continuance or non-performance of the act/s complained of during the litigation would probably work injustice to the applicant; or
  • that the actions of another are probably in violation of the applicant’s rights in relation to the subject of the action, tending to render the judgment ineffectual.

As a general rule, the applicant for the foregoing measures shall be required to submit a verified affidavit executed by a person who has personal knowledge of certain grounds allowing for the issuance of the relevant writ or order, and to post a bond as security in favour of the adverse party for damages which the latter may sustain due to the issuance of the writ or order.

Refer to discussion in 7.14 Available Urgent Measures, for the issuance of a writ of search and seizure.

In addition, discovery measures are available under the IPV rules, IPR rules, as well as the rules of court, including the conditional examination of witnesses to obtain relevant information and evidence from the alleged infringer, or from persons not involved in administrative and judicial actions for infringement. In the case of non-compliance, the IP rights-holder may request for the issuance of orders compelling participation of the person against whom discovery is requested, by way of a subpoena ad testificandum and duces tecum, or that said person be declared in contempt and appropriately penalised.

These discovery measures may be requested before the IPO in relation to a pending IPV case; or before the RTC in relation to a pending judicial action for infringement. Depositions made by the applicant of his own testimony or that of another regarding any matter that may be cognisable in any Philippine court may be made before a main infringement action is commenced under Rule 24 of the rules of court.

See 7.14 Available Urgent Measures.

As a rule, only the properties of the adverse party may be the subject of an order of preliminary attachment. Thus, intermediaries must be impleaded in an administrative IPV case or in a judicial action for copyright infringement before such order may be issued against their properties. As discussed above, an intermediary such as an internet service provider is generally exempted from liability, except when it directly commits an act of infringement, financially benefits from another’s act of infringement, or induces, causes, or materially contributes to the infringing conduct of another person, with knowledge that it is an infringing activity.

An order of preliminary attachment may also be addressed to an intermediary with respect to the adverse party’s property in the former’s possession or control. Under the rules of court, third parties may be required to attend before the court in which the action is pending and be examined on oath respecting such properties. Thereafter, they may be ordered to deliver the properties of the adverse party in their possession to the court to await judgment in the action.

Pursuant to the rules of court, prosecution of copyright infringement, whether administrative, civil or criminal, does not generally require the presentation of expert witnesses. However, in the case of Microsoft Corp v Manansala, G.R. no 166391, 21 October 2015, it was clarified that the testimony of expert witnesses may be received in evidence on a matter requiring special knowledge, skill, experience or training that the witness is shown to possess, such as when the copyrighted work is a computer software and the alleged act of infringement thereof may be better shown by witnesses who have expertise in computer software.

The burden of proof for copyright infringement cases depends not only on the type of copyrighted work involved, but on the type of case filed. For administrative cases, substantial evidence shall be sufficient. Substantial evidence is such relevant evidence that a reasonable mind might accept as adequate to support or justify a conclusion. For civil cases, a preponderance of evidence, or such evidence that is superior to the other, is sufficient. Finally, for criminal cases, proof beyond reasonable doubt shall be necessary to obtain a conviction. This refers to that degree of proof, which, excluding the possibility of error, produces moral certainty.

As discussed above, the registration and deposit of a copyrighted work does not carry with it the presumption of ownership of the copyright by the registrant or the depositor. However, in copyright infringement cases, copyright is presumed to subsist in the work, and the complainant is presumed to be the copyright owner if he/she claims to be so through an affidavit evidence executed pursuant to Section 218 of the IP Code. The affidavit serves as prima facie evidence of copyright ownership. A mere denial of the subsistence of the copyright and/or the complainant’s ownership thereof based on lack of knowledge is insufficient to rebut the presumption.

Furthermore, other presumptions found in the IP Code shall also apply in infringement cases. Thus, the natural person whose name is indicated on a work as the author will be presumed to be the author of the work. Similarly, the person or body corporate whose name appears on an audio-visual work is presumed to be the maker of said work. Further, a statement concerning a work recorded in an international register in accordance with an international treaty to which the Philippines is or may become a party is presumed to be true. All foregoing presumptions are not conclusive and may be disputed by contrary evidence.

In administrative IPV cases before the IPO, sanctions may be in the form of condemnation or seizure of infringing goods, imposition of fines, cancellation of permits and/or licences granted by the IPO, among others.

In civil actions for copyright infringement, the court may order a permanent injunction against infringing acts, the seizure and/or destruction of infringing goods, the payment of all legal costs, and to award damages, among others. Alternatively, the copyright owner may elect, at any time before final judgment is rendered, to recover instead of actual damages and profits, an award of statutory damages in a sum equivalent to the filing fee of the infringement action but not less than PHP50,000. The amount of statutory damages may be doubled if the infringer is found to have deliberately committed the crime.

In criminal actions for copyright infringement, in addition to sanctions available in civil actions, the court may also order the imposition of penalties in the form of fines and imprisonment (see Section 217, IP Code). The schedule of imposable fines and imprisonment penalties are as follows:

  • imprisonment of one to three years, plus a fine ranging from PHP50,000-150,000 for the first offence;
  • imprisonment of three years and one day to six years, plus a fine ranging from PHP150,000-500,000 for the second offence; and
  • imprisonment of six years and one day to nine years, plus a fine ranging from PHP500,000-1,500,000 for the third and subsequent offences.

If a person is found to have committed copyright infringement, the infringer must pay for all legal costs and expenses, as a matter of course unless otherwise ordered by the IPO or the regular courts. A certain sum of attorney’s fees may also be charged to the infringer, but only upon order of the IPO or the regular courts.

Court proceedings in the Philippines are lengthy due to, among other factors, the congestion in the courts’ dockets. Cases typically last, on average, between one and five years, and in some cases, even longer.

Administrative proceedings before the IPO are resolved faster. On average, the IPO is able to resolve cases before it within one to three years. On a negative note, decisions of the BLA in connection with IPV cases are appealable to the Court of Appeal, and thereafter to the Supreme Court, which tends to delay the actual enforcement of the BLA’s decision. The prevailing party may request for an execution of the BLA’s decision pending appeal, subject to the payment of a bond, which may be stayed by the payment of a counterbond.

IPO and court decisions are enforced by sheriffs, with the assistance of other deputised personnel such as the Philippine National Police. In the case of seizures, the infringing goods and/or related paraphernalia are forcibly taken and disposed of in the manner prescribed in the decision being enforced. In the case of permanent injunctions to cease infringing operations, establishments are closed down, padlocked, and the appropriate notices are placed on the entrances of such establishments, informing the public of the reason for the closure of the establishment. In the case of garnishment of debts and credits, such as bank accounts, the appropriate orders are served upon the debtors and/or creditors commanding the delivery to the prevailing party the garnished amount in cash or cheque within a certain number of days.

Copyright infringement is an administrative, civil and criminal offence in the Philippines.

As an administrative offence, an IPV case may be commenced by filing a verified complaint with the BLA of the IPO. The administrative jurisdiction of the BLA, however, is limited to actions for copyright infringement where the claimed total amount of damages is not less than PHP200,000. The institution of an IPV case is independent and without prejudice to the filing of a civil or criminal action with the regular courts.

As a civil offence, an action for copyright infringement may be commenced by filing a complaint under oath directly with the RTC designated as a Special Commercial Court that has territorial jurisdiction over the residence of the plaintiff, the defendant, or, in case of non-resident defendants, wherever such non-resident defendant may be found in the Philippines.

As a criminal offence, an action for copyright infringement may be commenced by filing a complaint-affidavit with the appropriate public prosecutor for the purpose of conducting the preliminary investigation. In the case that the public prosecutor finds probable cause that the crime of copyright infringement has been committed, an information shall be filed with the RTC designated as a Special Commercial Court that has territorial jurisdiction over the place where the crime has probably been committed. In places where there is no RTC with a branch designated as a Special Commercial Court, the information shall be filed in the nearest RTC designated as a Special Commercial Court within the same judicial region.

In all actions, the appropriate legal fees must be paid so as to commence the action.

Under the Customs Administrative Order no 9-2008, a copyright holder may record the copyrighted work with the Bureau of Customs. On the basis of such record, the Bureau of Customs may monitor and seize infringing goods passing through Philippine borders. A copyright owner may also request either the Bureau of Customs to issue an alert or hold order against any importation suspected to contain infringing goods. Notwithstanding the non-recordation of the pertinent work and copyright, the Bureau of Customs may, on its own, conduct random inspections of goods/shipments in connection with the discharge of its police functions over imports and exports.

Once the application for recordation has been submitted to the Bureau of Customs in complete form, the Bureau will issue a Customs Memorandum Circular addressed to all Collector of Customs, setting forth the fact of recordation together with a description or model of the registered work. The Collector of Customs will distribute copies of documents containing the relevant data among the front-line customs assessment officers, and direct them to monitor imports accordingly.

On the basis of reliable information, the Bureau may on its own initiative, or upon request, issue an alert or hold order against imports suspected to contain infringing goods. Articles placed under such order will then be examined by the assigned customs examiner in the presence of the copyright owner or his agent and the consignee or his agent within 24 hours from receipt of the notice of the alert or hold order. If the copyright holder or authorised representative fails to appear, the Bureau may proceed with the examination and dispose of the goods depending on the results of the examination. If, after the examination, no basis is found to subject the goods to seizure proceedings, the alert or hold order will be immediately lifted and the processing of the import entry will continue. However, if there is prima facie evidence that the goods should be subjected to seizure proceedings, the matter will be referred to the Collector of Customs within 24 hours for the issuance of a warrant of seizure and detention against the shipment.

Upon seizure of the infringing shipment, the importer or owner of the shipment will be given a written notice of seizure, granting them the opportunity to be heard. After the notice is served, the collector will immediately set the case for hearing. The case will be decided within 20 working days therefrom.

The decision of the BLA in an administrative IPV case may be appealed to the director of the IPO within 30 days from receipt of the adverse decision, or the adverse resolution of a motion for reconsideration. The decision of the IPO director may further be elevated to the Court of Appeal through a petition for review under Rule 43 of the rules of court within 15 days from receipt of said decision.

Decisions of the RTC in civil actions for copyright infringement may be raised to the Court of Appeals via a petition for review under Rule 43 of the rules of court.

Decisions on criminal actions for copyright-related cases may also be directly appealed to the Court of Appeals, this time through a notice of appeal in accordance with Rule 122 of the rules of court. As a general rule, however, an acquittal in a criminal copyright case may not be appealed as it would place the accused in double jeopardy. The offended party may appeal only the civil aspect of the case.

The decision of the Court of Appeals in exercise of its appellate jurisdiction may be raised to the Supreme Court via a petition for review on certiorari under Rule 45 of the rules of court.

An appeal to the Court of Appeals from the decision of either the RTC or of the IPO implies a full review of the facts of the case, although the factual findings of either the RTC or of the IPO are accorded great weight and respect by the Court of Appeals. Generally, the Court of Appeals will not disturb the factual findings of the RTC and, more so, of the IPO since it is jurisprudentially recognised that the IPO has the expertise to deal with intellectual property rights. Under exceptional circumstances, however, the Court of Appeals may conduct a full review of the facts of the case.

A petition for review on certiorari with the Supreme Court is generally limited to legal review, unless there are compelling circumstances that would require the Supreme Court to make a review of the factual findings in the case.

As a general rule, parties will not be allowed to introduce new evidence at the appeal stage before the Court of Appeals and the Supreme Court. However, there may be instances when new evidence will be allowed, such as in the case of newly discovered evidence that could not have been produced during trial despite reasonable diligence and which if presented would probably alter the result of the case.

Alternative dispute resolutions, particularly conciliation, mediation and arbitration, are common for the settlement of copyright-related issues in the Philippines.

Conciliation is perhaps the most common method since most copyright-related issues in the Philippines are resolved by the parties themselves through discussions and mutual concessions and/or compensation, even before the institution of any action against each other and without the aid of a mediator.

Once an action is instituted, however, whether administrative, civil or criminal, the parties are required by Philippine regulations to come to mediation. Often, copyright-related issues are settled through mandatory mediation conferences before a third party mediator and/or by the judge.

Villaraza & Angangco

V&A Law Center
11th avenue corner 39th Street
Bonifacio Global City 1634
Metro Manila
Philippines

+63 2 988 6088

+63 2 988 6000

ip.department@thefirmva.com www.thefirmva.com
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Villaraza & Angangco was founded in 1980 under the leadership of young lawyers, including now Philippine Supreme Court Justice Antonio T Carpio. Villaraza & Angangco (V&A Law) has approximately 60 lawyers and over 100 highly trained non-legal staff, with its headquarters in Metro Manila. It is a full-service firm whose practice is divided into three main departments: litigation, corporate and commercial law, and IP, with expertise in other specialised fields, such as taxation, labour, banking and finance, mining and natural resources, power and energy, gaming, and telecommunications and ICT. V&A Law’s IP department is one of the top-ranked IP practices in the Philippines and is composed of nine lawyers, whose expertise includes molecular biology, domain name systems and internet architecture, petroleum products, applied physics and instrumentation, fashion design, advertising and mass media, computer science, materials engineering and the liberal arts. The firm regularly advises large pharmaceutical, banking, petroleum, mass media and clothing companies.

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