INTELLECTUAL PROPERTY LAW

1.
5%
1.
Juan Xavier wrote and published a story similar to an unpublished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? [2%]
2.
May a person have photocopies of some pages of the book of Professor
Rosario made without violating the copyright law? [3%] (1998)
1.
Yes. Juan Xavier IB 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.
2. Yes. Tie private reproduction of a published work in a single copy, where the
reproduction is made by a natural person exclusively for research and private *tudy, is
permitted, without the authorization of the owner of the copyright in the work.
2.
6%
(a)
In what way is an infringement of a trademark similar to that which
pertains to unfair competition.
(b)
K-9 Corporation, a foreign corporation alleging itself to be the registered
owner of trademark "K-9" and logo "K" an Inter-Partes case with the Intellectual
Property Office against Kanin Corporation for the cancellation of the latter's mark
"K-9" and logo "K". During the pendency of the case before the Intellectual
Property Office, Kanin Corporation brought suit against K-9 Corporation before
the Regional Trial Court for infringement and damages. Could the action before
the Regional Trial Court prosper? Why? (2003)
3.

(1.)
S Development Corporation sued Shangrila Corporation for using the
"S" logo and the tradename "Shangrila". The former claims that it was the first to
register the logo and the tradename in the Philippines and that it had been using
the same in its restaurant business.
Shangrila Corporation counters that it is an affiliate of an international
organization which has been using such logo and tradename "Shangrila" for over
20 years.
However, Shangrila Corporation registered the tradename and logo in the
Philippines only after the suit was filed.
a)
Which of the two corporations has a better right to use the logo and the
tradename? Explain.
b)
How does the international affiliation of Shangrila Corporation affect the
outcome of the dispute? Explain.
(5%)
(1) a) S Development Corporation has a better right to use the logo and tradename, since it
was the first to register the logo and tradename. (Sectionl23(d), Intellectual Property Code)
ALTERNATIVE ANSWER:
(1) a) S Development Corporation has a better right to use the logo and tradename, because
its certificate of registration upon which the infringement case is based remains valid and
subsisting for as long as it has not been cancelled. (Shangrila International Hotel
Management v. CA, 359 SCRA 273 [201])

ANSWER:
b) Since Shangrila Corporation is not the owner of the logo and tradename but is merely an
affiliate of the international organization which has been using them it is not the owner and
does not have the rights of an owner. (Section 147, Intellectual Property Code)
ALTERNATIVE ANSWER:
b) The international affiliation of Shangrila Corporation shall have no effect on the outcome
of the dispute. Section 8 of the Paris Convention provides that "there is no automatic
protection afforded an entity whose tradename is alleged to be infringed through the use of
that name as a trademark by a local entity." (Kabushi Kaisha Isetan v. JAC, 203 SCRA 583
[1991]
(2.)
Cezar works in a car manufacturing company owned by Joab. Cezar is
quite innovative and loves to tinker with things. With the materials and parts of
the car, he was able to invent a gas-saving device that will enable cars to
consume less gas. Francis, a co-worker, saw how Cezar created the device and
likewise, came up with a similar gadget, also using scrap materials and spare
parts of the company. Thereafter, Francis filed an application for registration of
his device with the Bureau of Patents. Eighteen months later, Cezar filed his
application for the registration of his device with the Bureau of Patents.
a)
Is the gas-saving device patentable? Explain.
b)
Assuming that it is patentable, who is entitled to the patent? What, if any,
is the remedy of the losing party?
c)
Supposing Joab got wind of the inventions of his employees and also laid
claim to the patents, asserting that Cezar and Francis were using his materials
and company time in making the devices, will his claim prevail over those of his
employees? Explain.
(5%) (2005)
(2) a) It is patentable because it is new, it involves an inventive step and it is industrially
applicable. (Section 21, Intellectual Property Code)
b)
Francis is entitled to the patent, because he had the earlier filing date (Section 29,
Intellectual Property Code). The remedy of Cezar is to file a petition in Court for the
cancellation of the patent of Francis on the ground that he is the true and actual inventor,
and ask for his substitution as patentee. (Sections 67 and 68, Intellectual Property Code)
c)
The claim of Joab will not prevail over those of his employees, even if they used his
materials and company time in making the gas-saving device. The invention of the gassaving device is not part of their regular duties as employees. (Section 30.2(a), Intellectual
Property Code)
4.
Supposing Albert Einstein were alive today and he filed with the Intellectual
Property Office (IPO) an application for patent for his theory of relativity
expressed in the formula E=mc2. The IPO disapproved Einstein's application on
the ground that his theory of relativity is not patentable.
Is the IPO's action correct? 5% (2006)
Yes, the IPOs action is correct. Section 22 of the Intellectual Property Law expressly states
that discoveries, scientific theories and mathematical methods are among those matters
which are not patentable.

5.
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? 5% (2006)
6.
10%
A.
BR and CT are noted artists whose paintings are highly prized by collectors.
Dr. DL commissioned them to paint a mural at the main lobby of his new hospital
for children. Both agreed to collaborate on the project for a total fee of two
million pesos to be equally divided between them. It was also agreed that Dr. DL
had to provide all the materials for the painting and pay for the wages of
technicians and laborers needed for the work on the project.
Assume that the project is completed and both BR and CT are fully paid the
amount of P2M as artists' fee by DL. Under the law on intellectual property, who
will own the mural? Who will own the copyright in the mural? Why? Explain. (5%)
Under Section 178.4 of the Intellectual Property Code, in case of commissioned work, the
creator (in the absence of a written stipulation to the contrary) owns the copyright, but the
work itself belongs to the person who commissioned the creation. Accordingly, the mural
belongs to DL. However BR and CT owns the copyright, since there is no stipulation to the
contrary.