ALTERNATIVE ANSWER

sale or other forms of transfer of ownership,” Since this would be the effect of including her column in the anthology.

Copyright; Infringement (2007)

No.III. Diana and Piolo are famous personalities in showbusiness who kept their love affair secret. They use a special instant messaging service which allows them to see one another’s typing on their own screen as each letter key is pressed.

When Greg, the controller of the service facility, found out their identities, he kept a copy of all the messages Diana and Piolo sent each other and published them. Is Greg liable for copyright infringement?

Reason briefly. (5%) SUGGESTED ANSWER:

Yes, Greg is liable for copyright infringement. Letter are among the works which are protected from the moment of their creation (Section 172, intellectual Property Code; Columbia Pictures, Inc. v Court of Appeals, 261 SCRA 144 [1996]). The publication of the letters without the consent of their writers constitutes infringement of copyright.

ALTERNATIVE ANSWER

No, Greg is not liable for copyright infringement. There is no copyright

protecting electronic documents. What are involved here are text messages, not letter in their ordinary sense. Hence, the protection under the copyright law does not extend to text messages (Section 172, Intellectual Property Code).

The messages that Diana and Piolo exchanged through the use of messaging service do not constitute literary and artistic works under Section 172 of the Intellectual Property Code. They are not letter under Section 172(d).

For copyright to subsist in a “message”, it must qualify as a “work” (Section 172 Intellectual Property Code). Whether the messages are entitled or not to copyright protection would have to be resolved in the light of the provision of the Intellectual Property Code.

Note: Since the law on this matter is not clear, it is suggested that either of the above of the above suggested answers should be given full credit.

Denicola Test (2009)

No.I. (A) The Denicola Test in intellectual property law states that if design elements of an article reflect a merger of aesthetic and functional considerations, the artistic

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aspects of the work cannot be conceptually separable from the utilitarian aspects; thus, the article cannot be copyrighted.

SUGGESTED ANSWER:

True. Applying the Denicola Test in Brandir International, Inc. v.Cascade Pacific Lumber Co. (834 F. 2d 1142, 1988 Copr.L.Dec. P26), the United States Court of Appeals for the Second Circuit held that if there is any aesthetic element which can be separated from the utilitarian elements, then the aesthetic element may be copyrighted.

(Note: It is suggested that the candidate be given full credit for whatever answer or lack of it. Further, it is suggested that terms or any matter originating from foreign laws or jurisprudence should not be asked.)

Infringement; Claims (2010)

No.XV. While vacationing in Boracay, Valentino surreptitiously took photographs of his girlfriend Monaliza in her skimpy bikini. Two weeks later, her photographs appeared in the Internet and in a national celebrity magazine.

Monaliza found out that Valentino had sold the photographs to the magazine, adding insult to injury, uploaded them to his personal blog on the Internet.

(A) Monaliza filed a complaint against Valentino damages based on, among other grounds, violation of her intellectual property rights. Does she have any cause of action? Explain. (2%)

SUGGESTED ANSWER:

Monaliza cannot sue Valentino for violation of her intellectual property rights, because she was not the one who took the pictures (Subsection 178.1 of the Intellectual Property Code). She may sue Valentino instead for violation of her right to privacy. He surreptitiously took photographs of her and then sold the photographs to a magazine and uploaded them to his personal blog in the Internet (Tolentino, Commentaries and Jurisprudence on the Civil Code of the Philippines, Vol. I, 1987 ed., p. 169).

(B) Valentino’s friend Francesco stole the photographs and duplicated them and sold them to a magazine publication. Valentino sued Francisco for infringement and damages. Does Valentino have any cause of action? Explain. (2%)

SUGGESTED ANSWER:

Valentino cannot sue Francesco for infringement, because he has already sold the photographs to a magazine (Angeles vs. Premier Productions, Inc., 6 CAR (2s) 159).

ALTERNATIVE ANSWER:

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Yes, as the author of the photographs, Valentino has exclusive economic rights thereto, which include the rights to reproduce, to distribute, to perform, to display, and to prepare derivative works based upon the copyrighted work. He sold only the photographs to the magazine; however, he still retained some economic rights thereto. Thus, he has a cause of action against infringement against Francesco.

(C) Does Monaliza have any cause of action against Francesco? Explain. (2%)

SUGGESTED ANSWER:

Monaliza can also sue Francesco for violation of her right to privacy.

Infringement; Trademark, Copyright (2009)

No.XV. After disposing of his last opponent in only two rounds in Las Vegas, the renowned Filipino boxer Sonny Bachao arrived at the Ninoy Aquino International Airport met by thousands of hero-worshipping fans and hundreds of media photographers. The following day, a colored photograph of Sonny wearing a black polo shirt embroidered with the 2-inch Lacoste Crocodile logo appearedon the front page of every Philippine newspaper.

Lacoste International, the French firm that manufactures lacoste apparel and owns the Lacoste trademark, decided to cash in on the universal popularity of the boxing icon.

It reprinted the photographs, with the permission of the newspaper publishers, and went on a world-wide blitz of print commercials in which Sonny is shown wearing a Lacoste shirt alongside the phrase ―Sonny Bachao just loves Lacoste.‖

When Sonny sees the Lacoste advertisements, he hires you as lawyer and asks you to sue Lacoste International before a Philippine court:

(A) For trademark Infringement in the Philippines because Lacoste International used his image without his permission:

(2%)

SUGGESTED ANSWER:

Sonny Bachao cannot sue for infringement of trademark. The photographs showing him wearing a Lacoste shirt were not registered as a trademark (Pearl & Dean (Phil.), Inc. v.

Shoemart, Inc., 409 SCRA 231 (2003)).

(B) For copyright infringement because of the unauthorized use of the published photographs; (2%)and

SUGGESTED ANSWER:

Sonny Bachao cannot sue for infringement of copyright for the unauthorized use of the photographs

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showing him wearing a Lacoste shirt.

The copyright to the photographs belong to the newspapers which published them inasmuch as the photographs were the result of the performance of the regular duties of the photographers (Subsection 173.3 (b), Intellectual Property Code (IPC)).Moreover, the newspaper publishers authorized the reproduction of the photographs (Section 177, Intellectual Property Code).

(C) For injunction in order to stop Lacoste International from featuring him in their commercials. (2%)

Will these actions prosper? Explain.

SUGGESTED ANSWER:

The complaint for injunction to stop Lacoste International from featuring him in its advertisements will prosper. This is a violation of subsection 123, 4(c) of the IPC and Art.169 in relation to Art.170 of the IPC.

(D) Can Lacoste International validly invoke the defense that it is not a Philippine company and, therefore, Philippine courts have no jurisdiction? Explain. (2%)

SUGGESTED ANSWER:

No. Philippine courts have jurisdiction over it, if it is doing business in the Philippines. Moreover, under Section 133 of the Corporation Code, while a foreign corporation doing business in the

Philippines without license to do business, cannot sue or intervene in any action, it may be sued or proceeded against before our courts or administrative tribunal (De Joya v.

Marquez, 481 SCRA 376 (2006)).

Patent: Non-Patentable; Method of Diagnosis & Treatment (2010)

No.XIX. Dr. Nobel discovered a new method of treating Alzheimer’s involving a special method of diagnosing the disease, treating it with a new medicine that has been discovered after long experimentation and field testing, and novel mental isometric exercises. He comes to you for advice on how he can have his discoveries protected.

Can he legally protect his new method of diagnosis, the new medicine, and the new method of treatment? If no, why? If yes, how? (4%)

SUGGESTED ANSWER:

Dr. Nobel can be protected by a patent for the new medicine as it falls within the scope of Sec. 21 of the Intellectual Property Code (Rep. Act No. 8293, as amended). But no protection can be legally extended to him for the method of diagnosis and method of treatment which are expressly non-patentable (Sec.

22, Intellectual Property Code).

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Trademark; Unfair Competition (2010)

No.XVIII. For years, Y has been engaged in the parallel importation of famous brands, including shoes carrying the foreign brand MAGIC. Exclusive distributor X demands that Y cease importation because of his appointment as exclusive distributor of MAGIC shoes in the Philippines.

Y counters that the trademark MAGIC is not registered with the Intellectual Property Office as a trademark and therefore no one has the right to prevent its parallel importation.

(A) Who is correct? Why? (2%) SUGGESTED ANSWER:

X is correct. His rights under his exclusive distributorship agreement are property rights entitled to protection.

The importation and sale by Y of MAGIC shoes constitute unfair competition (Yu v. Court of Appeals, 217 SCRA 328 (1993)). Registration of the trademark is not necessary in case of an action for unfair competition (Del Monte Corporation v. Court of Appeals, 181 SCRA 410 (1990)).

ALTERNATIVE ANSWER:

Y is correct. The rights in a trademark are acquired through registration made validly in accordance with the

Intellectual Property Code (Section 122 of the Intellectual Property Code).

(B) Suppose the shoes are covered by a Philippine patent issued to the owner, what would your answer be? Explain. (2%)

SUGGESTED ANSWER:

A patent for a product confers upon its owner the exclusive right of importing the product (Subsection 71.1 of the Intellectual Property Code). The importation of a patented product without the authorization of the owner of the patent constitutes infringement of the patent (Subsection 76.1 of the Intellectual Property Code). X can prevent the parallel importation of such shoes by Y without its authorization.