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 Juan Xavier wrote and published a story similar to an unpublished copyrighted story of Manoling Santiago.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 gas-saving 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 IPO’s 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.