BENGZON

NEGRE
UNTALAN

COPYRIGHT LAW
Intellectual Property Attorneys

FERDINAND NEGRE June 9, 2018

Copyright Infringement?

http://adage.com/article/advertising/philippines-tourism-bureau-drops-mccann-demands-apology/309416/
http://adage.com/article/advertising/philippines-tourism-bureau-drops-mccann-demands-apology/309416/
What about this?
And what about this?
Extent of Protection: Original Works

 Section 172. Literary and Artistic Works. - 172.1. Literary and

artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected
from the moment of their creation…
Extent of Protection: Original Works

 Section 172. Literary and Artistic Works. - 172.1. Literary and artistic
works, hereinafter referred to as "works," are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation…
Extent of Protection: Original Works

 Section 172. Literary and Artistic Works. - 172.1. Literary and artistic
works, hereinafter referred to as "works," are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation…
Subject Matter of Copyright: “Work”
Section 172. Literary and Artistic Works. - …and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or
not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or
entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
Subject Matter of Copyright: “Work”
Section 172. Literary and Artistic Works. –
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to
photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
 Audiovisual & cinematographic
works

Musical compositions

Books, articles &

other writings

Dramatic or dramatico-
musical compositions
Computer
programs
Letters

Works of drawing, painting,

architecture, sculpture and other
Extent of Protection: Original Works

 Section 172. Literary and Artistic Works. - 172.1. Literary and artistic
works, hereinafter referred to as "works," are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation…
Review: Acquisition of Copyright

▪ No formalities required (Automatic Protection), but it must be original

and it must be an artistic or literary work:
a. Original
– personal involvement or creativity: authorship
– “a modicum level of creativity”
b. Artistic or Literary Work = Expression
– Vs. Functional or Technical Work
Review: Acquisition of Copyright

▪ Automatic Protection: “From Moment of Creation”

a. Registration?
b. Deposit?
c. ©?
d. Fixed or Expressed?

Proof of Ownership?
Sec. 218 – Affidavit Evidence
Extent of Protection: Derivative Works
Section 173. Derivative Works. - 173.1. The following derivative works
shall also be protected by copyright:

(a) Dramatizations, translations, adaptations, abridgments,

arrangements, and other alterations of literary or artistic works; and

(b) Collections of literary, scholarly or artistic works, and

compilations of data and other materials which are original by reason
of the selection or coordination or arrangement of their contents.
DERIVATIVE WORKS

 Dramatizations,
translations,
arrangements and
other alterations of
literary or artistic
works
DERIVATIVE WORKS

 Collections of literary,
scholarly or artistic
works, and compilations
of data which are
original by reason of
selection or
coordination or
arrangement of their
contents
Extent of Protection: Derivative Works

173.2. The works referred to in paragraphs (a) and (b) of Subsection 173.1
shall be protected as new works: Provided however, That such new work
shall not affect the force of any subsisting copyright upon the original works
employed or any part thereof, or be construed to imply any right to such use
of the original works, or to secure or extend copyright in such original
works.
Extent of Protection: Economic Rights
1. Reproduction of the work or substantial portion of the work;
2. Dramatization, translation, adaptation, abridgment, arrangement;
3. The first public distribution of the original and each copy of the
work;
4. Rental of an audiovisual or cinematographic work, a work
embodied in a sound recording, a computer program, a
compilation of data and other materials or a musical work in
graphic form,;
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work. (Sec. 177, IPC)
DURATION OF ECONOMIC RIGHTS

WORK TERM OF PROTECTION

Literary and Artistic Works Life of the author + 50 years after his death
Derivative Works

Joint Authorship Life of the last surviving author + 50 years after his death

Anonymous or Pseudonymous Works 50 years from date it is first lawfully published

If before expiration of said period the author’s identity is revealed or

no longer in doubt, the rule on Literary and Joint Authorship applies

Work of Applied Art 25 years from date of making

Photographic works If published – 50 years from publication

Audiovisual works Unpublished – 50 years from making

Performances not incorporated in recordings 50 years from end of the year in which performance took place

Sound recordings and performances incorporated therein 50 years from end of the year in which recording took place

Broadcasts 20 years from the date of broadcast

DURATION OF ECONOMIC RIGHTS

 For the term of

protection subsequent
to death of author,
when do you start
count?
DURATION OF ECONOMIC RIGHTS

 From date of death or

publication
 BUT... Term begins
from January 1 of the
year following the
event that gave rise to
them

Lyman Frank Baum

(May 15, 1856 – May 6, 1919)
DURATION OF ECONOMIC RIGHTS

(August 25, 1939) (February 14, 2013)

MORAL RIGHTS

Allows the author to take certain actions to

preserve the personal link between himself and
the work.
 MORAL RIGHTS

1. Right of Attribution Paternity Right

2. Alteration and Non-Publication Right
3. Right to Preservation of Integrity
4. Right against False Attribution
DURATION OF MORAL RIGHTS

 During the lifetime of the author and in

perpetuity after his death - Paternity Right/Right
of Attribution

 Coterminous with Economic Rights - Alteration

and Non-Publication Right; Right to Preservation
of Integrity; and Right against False Attribution
EXPIRATION OF COPYRIGHT
 Transfers to the PUBLIC DOMAIN
 Examples:
Copyright Infringement
Elements:

 Ownership of a valid copyright

◼ Proof of Ownership: Sec. 218 – Affidavit Evidence
 Exercise of any of the exclusive economic rights in Section 177

 without the consent of the copyright owner

◼ UNLESS: FAIR USE
Copyright Infringement

1. Is there an unauthorized use of a by valid copyright? If yes…

2. Is the use fair? If not…

COPYRIGHT INFRINGEMENT.
Copyright and Public Domain [Exceptions]

Works not Protected:

a. Duration of Copyright – Expired?
b. Unprotected Subject Matter
o Ideas, procedure, system, method of operation, concept, principle,
discovery and mere data (Sec. 175)
o News of the day & mere items of press information (Sec. 175)
o …even if they are expressed, explained, illustrated or embodied in a work
o Official text (and official translations thereof) of a legislative,
administrative or legal nature (Sec. 175)
o Works of the Government (Sec. 176)
Copyright Infringement and Fair Use
[Limitations]

Limitations
▪ The Fair Use Exception – fair use for criticism, comment, news
reporting, teaching including limited [multiple] number of copies for
classroom use, scholarship, research and similar purposes. (Sec. 185)
Copyright Infringement and Fair Use

Factors to be considered in determining fair use (Sec. 185)

1. Purpose & character of the use

2. Nature of the copyrighted work

3. Amount & substantiality of the portion used in relation to the

copyrighted work as a whole; &
4. Effect of the use upon the potential market for or value of the
copyrighted work.
Copyright Infringement
 Who is liable for infringement?
 Directly commits an infringement;
 Benefits from the infringing activity of another person who commits an
infringement if the person benefiting has been given notice of the infringing
activity and has the right and ability to control the activities of the other
person;
 With knowledge of infringing activity, induces, causes or materially
contributes to the infringing conduct of another

Q: is hacking a copyright infringement?

Copyright Infringement
Section 216. Remedies for Infringement. - 216.1. Any person infringing a right
protected under this law shall be liable:

(a) To an injunction restraining such infringement. The court may also

order the defendant to desist from an infringement, among others, to prevent
the entry into the channels of commerce of imported goods that involve an
infringement, immediately after customs clearance of such goods.

(b) Pay to the copyright proprietor or his assigns or heirs such actual
damages, including legal costs and other expenses, as he may have incurred due
to the infringement as well as the profits the infringer may have made due to
such infringement, and in proving profits the plaintiff shall be required to
prove sales only and the defendant shall be required to prove every element of
cost which he claims, or, in lieu of actual damages and profits, such damages
which to the court shall appear to be just and shall not be regarded as penalty.
 Copyright Infringement
Section 216. Remedies for Infringement. - 216.1. Any person infringing a right protected under
this law shall be liable:
(c) Deliver under oath, for impounding during the pendency of the action, upon such
terms and conditions as the court may prescribe, sales invoices and other documents evidencing
sales, all articles and their packaging alleged to infringe a copyright and implements for making
them.
(d) Deliver under oath for destruction without any compensation all infringing copies or
devices, as well as all plates, molds, or other means for making such infringing copies as the
court may order.
(e) Such other terms and conditions, including the payment of moral and exemplary
damages, which the court may deem proper, wise and equitable and the destruction of
infringing copies of the work even in the event of acquittal in a criminal case.
216.2. In an infringement action, the court shall also have the power to order the seizure and
impounding of any article which may serve as evidence in the court proceedings.
Copyright Infringement
Section 216. Remedies for Infringement. - 216.1. Any person infringing a right protected under
this law shall be liable:
(c) Deliver under oath, for impounding during the pendency of the action, upon such terms
and conditions as the court may prescribe, sales invoices and other documents evidencing sales,
all articles and their packaging alleged to infringe a copyright and implements for making them.
(d) Deliver under oath for destruction without any compensation all infringing copies or
devices, as well as all plates, molds, or other means for making such infringing copies as the court
may order.
(e) Such other terms and conditions, including the payment of moral and exemplary
damages, which the court may deem proper, wise and equitable and the destruction of infringing
copies of the work even in the event of acquittal in a criminal case.

216.2. In an infringement action, the court shall also have the power to order the seizure and
impounding of any article which may serve as evidence in the court proceedings.
Application
ABS-CBN v. Gozon
G.R. No. 195956, March 11, 2015
J. Leonen
BENGZON
NEGRE
UNTALAN
Intellectual Property Attorneys

ABS-CBN v. Gozon
First Issue
 Is the video footage subject of copyright protection?
 Is a fact copyrightable?

“Section 175. Unprotected Subject Matter. - Notwithstanding the provisions

of Sections 172 and 173, no protection shall extend, under this law, to any
idea, procedure, system, method or operation, concept, principle, discovery
or mere data as such, even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other miscellaneous facts having
the character of mere items of press information; or any official text of a
legislative, administrative or legal nature, as well as any official translation
thereof.”
Is a fact copyrightable?
 Television news footage is an expression of the news

- ABS-CBN v. Gozon
“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.”
“The idea/expression dichotomy is a complex matter if one is trying to
determine whether a certain material is a copy of another. This
dichotomy would be more relevant in determining, for instance, whether
a stage play was an infringement of an author's book involving the same
characters and setting. In this case, however, respondents admitted that
the material under review — which is the subject of the controversy — is
an exact copy of the original. Respondents did not subject ABS-CBN's
footage to any editing of their own. The news footage did not undergo
any transformation where there is a need to track elements of the
original.”
The Second Issue

 Is good faith (lack of knowledge of OR intent to commit

infringement) available as defense in copyright infringement cases?
 Volitionvs. Criminal Intent
 5 seconds of 2 minutes and 40 seconds?
lack of knowledge as a defense

SC:

“Habana and Columbia Pictures did not require knowledge of the

infringement to constitute a violation of the copyright. One does not
need to know that he or she is copying a work without consent to
violate copyright law.”
Volition vs. Criminal Intent

“Volition, or intent to commit the act, is different from criminal intent.

Volition or voluntariness refers to knowledge of the act being done.
On the other hand, criminal intent — which is different from motive,
or the moving power for the commission of the crime — refers to the
state of mind beyond voluntariness. It is this intent that is being
punished by crimes mala in se.”
Intent to Infringe

SC:

“Thus, unless clearly provided in the law, offenses involving

infringement of copyright protections should be considered malum
prohibitum. It is the act of infringement, not the intent, which causes
the damage. To require or assume the need to prove intent defeats the
purpose of intellectual property protection.”
SC:

“Infringement under the Intellectual Property Code is malum prohibitum. The

Intellectual Property Code is a special law. Copyright is a statutory creation:
xxx
Unlike other jurisdictions that require intent for a criminal prosecution of
copyright infringement, the Philippines does not statutorily support good faith as a
defense. Other jurisdictions provide in their intellectual property codes or relevant
laws that mens rea, whether express or implied, is an element of criminal copyright
infringement.”
SC:

“The Intellectual Property Code requires strict liability for copyright

infringement whether for a civil action or a criminal prosecution; it
does not require mens rea or culpa: xxx “
Nature of Fair Use
“GMA-7's rebroadcast of ABS-CBN's news footage without the latter's
consent is not an issue. The mere act of rebroadcasting without
authority from the owner of the broadcast gives rise to the probability
that a crime was committed under the Intellectual Property Code.”

 DidSC create a presumption here?

 What exactly is the nature of fair use as a defense?
Revisiting Fair Use in the PH
SECTION 184. Limitations on Copyright. - 184.1. Notwithstanding the
provisions of Chapter V, the following acts shall not constitute
infringement of copyright:
 (a) The recitation or performance of a work, once it has been lawfully
made accessible to the public, if done privately and free of charge or if
made strictly for a charitable or religious institution or society;
 x x x
 (k) Any use made of a work for the purpose of any judicial proceedings or
for the giving of professional advice by a legal practitioner.
Revisiting Fair Use in the PH

 Section 185 of the IP Code

185.1. The fair use of a copyrighted work for criticism, comment, news
reporting, teaching including multiple copies for classroom use,
scholarship, research, and similar purposes is not an infringement of
copyright…
A note on the TRIPs Agreement

SECTION 5: CRIMINAL PROCEDURES

Article 61
Members shall provide for criminal procedures and penalties to be applied at
least in cases of wilful trademark counterfeiting or copyright piracy on a
commercial scale. Remedies available shall include imprisonment and/or
monetary fines sufficient to provide a deterrent, consistently with the level of
penalties applied for crimes of a corresponding gravity... Members may
provide for criminal procedures and penalties to be applied in other cases
of infringement of intellectual property rights, in particular where they are
committed wilfully and on a commercial scale.
TRIPs Agreement

SECTION 5: CRIMINAL PROCEDURES

Article 61
Members shall provide for criminal procedures and penalties to be applied at
least in cases of wilful trademark counterfeiting or copyright piracy on a
commercial scale. Remedies available shall include imprisonment and/or
monetary fines sufficient to provide a deterrent, consistently with the level of
penalties applied for crimes of a corresponding gravity... Members may
provide for criminal procedures and penalties to be applied in other cases
of infringement of intellectual property rights, in particular where they are
committed wilfully and on a commercial scale.
Last Issue: May Corporate Directors/Officers as such be held
Liable for Copyright Infringement?

Republic Gas v. Petron Corporation (GR 194062, June 11, 2013)

“Petitioners, being corporate officers and/or directors, through whose act,
default or omission the corporation commits a crime, may themselves be
individually held answerable for the crime. Veritably, the CA appropriately pointed
out that petitioners, being in direct control and supervision in the management and
conduct of the affairs of the corporation, must have known or are aware that
the corporation is engaged in the act of refilling LPG cylinders bearing the marks
of the respondents without authority or consent from the latter which, under the
circumstances, could probably constitute the crimes of trademark infringement and
unfair competition. The existence of the corporate entity does not shield from
prosecution the corporate agent who knowingly and intentionally caused the
corporation to commit a crime.”
- ABS-CBN v. Gozon:

Corporate directors are liable for copyright infringement only if they

actively participated in its commission
- SC:

“Mere membership in the Board or being President per se does not

mean knowledge, approval, and participation in the act alleged as
criminal. There must be a showing of active participation, not
simply a constructive one.”
 Difference in the treatment of Corporate directors in the ABS-CBN
and Republic Gas cases:

 Nature of the corporate directors’ roles in the business operations

◼ Direct Control and Supervision = Must Have Known (Constructive
Knowledge)
II. In re Justice Del Castillo
On April 28, 2010, the SC issued a decision which dismissed a
petition filed by the Malaya Lolas Organization in the case of
Vinuya vs Romulo. Atty. Herminio Harry Roque Jr., counsel for
Vinuya et al, questioned the said decision. He raised, among
others, that the ponente in said case, Justice Mariano del Castillo,
plagiarized three books when the honorable Justice “twisted the
true intents” of these books to support the assailed decision. As
such, Justice del Castillo is guilty of plagiarism, misconduct, and
at least inexcusable negligence.
In re Del Castillo
 No Plagiarism
 According to Black’s Law Dictionary: Plagiarism is the “deliberate
and knowing presentation of another person’s original ideas or
creative expressions as one’s own.”
 This cannot be the case here because as proved by evidence, in the
original drafts of the assailed decision, there was attribution to the
three authors but due to errors made by Justice del Castillo’s
researcher, the attributions were inadvertently deleted. There is
therefore no intent by Justice del Castillo to take these foreign
works as his own.
In re Del Castillo: the relevant issues

 Is plagiarism the same as copyright infringement?

 May plagiarism be copyright infringement at the same time?

 Can there be plagiarism without copyright infringement?

 May copyright infringement be plagiarism at the same time?

 Can there be copyright infringement without plagiarism?
Copyright Infringement? Plagiarism?

http://adage.com/article/advertising/philippines-tourism-bureau-drops-mccann-demands-apology/309416/
Copyright Infringement?
Recap
 Extent of protection: Original + Creative Works
 Economic Rights
 Exceptions:
 Public Domain;
◼ Section 175
◼ Expired Term

 Limitations:
 Fair Use as a matter right
◼ Section 184
◼ Section 185

 Plagiarism is an ethical issue different from, but may overlap with,

copyright infringement
BENGZON
NEGRE

THANK YOU FOR LISTENING!

UNTALAN
Intellectual Property Attorneys

FERDINAND M. NEGRE