JUDGMENTS, FINAL ORDERS AND ENTRY THEREOF

Section 1. Rendition of Judgment and Final Orders. — A judgment or final order determining the merits of the case shall be in writing, stating clearly and distinctly the facts and the law on which it is based, signed by the Director, and filed with the appropriate Register of the Office.

Sec. 2. Entry of judgments and Final Orders. — If no appeal is filed within the time provided in these Regulations, the Director shall forthwith cause the entry of the judgment or final order in the appropriate Register of the Office. The date of finality of the judgment or final order shall be deemed to be the date of its entry. The record shall contain the dispositive part of the judgment or final order and shall be signed by the Director, with a certificate that such judgment or final order has become final and executory.

Rule 14

APPEAL

Section 1. Finality of Decision and Order. — (a) The decision and order of the Director shall become final and executory fifteen (15) days after the receipt of a copy thereof by the party affected unless within the said period an appeal to the Director General has been perfected.

(b) Decisions of the Director-General shall be final and executory unless an appeal to the Court of Appeals or Supreme Court is perfected in accordance with the Rules of Court applicable to appeals from decision of Regional Trial Courts.

Sec. 2. Appeal, How Perfected. — Appeal may be perfected by filing a Notice of Appeal with the Director General and the Director and a copy thereof served upon the adverse party within fifteen (15) days from receipt of the order or Decision and upon payment of the corresponding docket fee.

Q. Can administrative agencies impose damages?

A. Yes. There is no limit as to the amount of damages it may award. But it may not impose imprisonment. Q. What kind of determination does the agency make, does it determine guilt?

A. Yes! Without a determination of guilt (or at least, violation), it can’t impose penalties. Q. Describe the appeals process.

A. Administrative Agency  CA  SC

Q. Is there any disadvantage in filing the case with an administrative agency?

A. Yes. Administrative agencies are hesitant to award large amounts of damages, since this is the court’s job, and also because the losing party can file an administrative case against him in the Sandiganbayan for malfeasance. In this case, the government does not defend him. So he is hesitant even to grant temporary relief like injunctions.

Q. Why would you file a case with an administrative agency rather than regular courts?

A. to make sure that the IP issues are appreciated. But if case is clear cut, go to RTC. Decisions of the RTC have more weight because administrative cases are summary and is not bound by the technical rules on evidence. There is more chance that the IPO case will be reversed on appeal.

Q. What kind of cases does the IPO hear?

A. IP code cases. But RTC hears all sorts of cases, so they have lesser competence as to IP laws. Note that in major cities though, there are some courts assigned to hear only IP cases.

Summary of Crim/Civ/Admi Pros and Cons

Criminal Civil Administrative

• Hardest to prove – requires proof beyond reasonable doubt.

- Note that in software piracy, this is easier because there is an

actual 100%

reproduction

• Immediate relief is needed by seizure of means of production. So even if case goes on for 20 years, he can’t manufacture fakes

• Most expensive for the client because you pay trademark investigators to do the test purchases, so police will file for SW. At the Prelim Inves stage, accused will quash SW to claim that evidence obtained is inadmissible. Will also question finding of probable cause by fiscal to DOJ

• Important to pay for storage so evidence seized will not be lost.

• File this when you have to prove substantial copying (case is not 100% copying) and when there is possibility that fair use will be raised as a defense

• It takes VERY long to get an injunction so if you need immediate relief, don’t file this.

• Not as expensive for the client.

• The entire battle is fought at the getting of the injunction. Bulk of the evidence is presented here. If no injunction is obtained, it will be simple matter for the other party to keep extending the case (and keep selling pirated stuff while case is pending)

• File this only when your case is against retailers and you don’t expect to obtain substantial damages.

Delivery under oath – can be done even in civil cases, so no need to get seizure in civil case - to get documents evidencing a) sourcing of goods (to get the big cat)

b) sales (to prove amount of actual damages) Civil ex parte searches and seizures – provided for in the TRIPS Agreement

- did not specify if for civil, criminal, or administrative suits - purposes 1) to prevent evidence from disappearing

2) to prevent infringed goods from entering the commerce of man Developing Countries – criminal cases already allow ex parte searches

- should be available in civil cases also

- called the “Anton Pillar” order – allows goods to be searched and seized which are subject of criminal action without need of filing criminal case

- apply for it in customs and go there (port) and seize Q. Is possession of copyrighted goods punishable?

A. No. But it is criminally punished when it falls under Sec. 217.3 and possessor knows or ought to know that such is copyrighted. Note thought that it is hard to overcome presumption of this knowledge that work is copyrighted.

Q. Does the doctrine of exhaustion of administrative relief apply? Do you have to file administrative case before you file civil/criminal case?

A. No. You can file any case, civil, administrative or criminal. CHAPTER XVIII SCOPE OF APPLICATION SEC. 221. POINTSOF ATTACHMENTFOR WORKSUNDER SECTIONS 172 AND 173. -

221.1. THEPROTECTIONAFFORDEDBYTHIS ACTTOCOPYRIGHTABLEWORKSUNDER SECTIONS 172 AND 173 SHALLAPPLYTO: (A) WORKSOFAUTHORSWHOARENATIONALSOF, ORHAVETHEIRHABITUALRESIDENCEINTHE PHILIPPINES;

(B) AUDIO-VISUALWORKSTHEPRODUCEROFWHICHHASHISHEADQUARTERSORHABITUALRESIDENCEINTHE PHILIPPINES; (C) WORKSOF ARCHITECTUREERECTEDINTHE PHILIPPINESOROTHERARTISTIC WORKSINCORPORATED INA BUILDINGOR OTHERSTRUCTURELOCATEDINTHE PHILIPPINES;

(D) WORKSFIRSTPUBLISHEDINTHE PHILIPPINES; AND

(E) WORKS FIRST PUBLISHED IN ANOTHER COUNTRY BUT ALSO PUBLISHED IN THE PHILIPPINES WITHIN THIRTY DAYS, IRRESPECTIVEOFTHENATIONALITYORRESIDENCEOFTHEAUTHORS.

221.2. THEPROVISIONSOFTHIS ACTSHALLALSOAPPLYTOWORKSTHAT ARETOBEPROTECTEDBYVIRTUEOF ANDINACCORDANCE WITHANYINTERNATIONALCONVENTIONOROTHERINTERNATIONALAGREEMENTTOWHICHTHE PHILIPPINESISAPARTY. (N)

Q. Should the author be the one to cause the publication of the work for his work to obtain protection? A. No. The law does not make a distinction.

Q. A book is published in China by a Chinese. Is it possible for him to obtain protection in RP?

A. Yes. He should publish in RP within 30 days. He does not need to be a Filipino or a resident of RP to obtain the protection.

Q. What if you are not able to publish within the 30 day window, can you ever obtain protection?

A. Yes. If you are a national of a country which ratified the TRIPS or the Berne Convention, the treaty provisions require that protection be extended to all citizens of signatory countries. Therefore, if you publish in Japan, you are automatically given protection in RP.

Q. What if you publish in a non-member country like China, and you miss the 30 day window in the Philippines? How can you obtain copyright protection in TRIPS or Berne Convention signatory countries?

A. Simply publish in a country which ratified the TRIPS but allows for longer period for publication than 30 days.

SEC. 222. POINTSOF ATTACHMENTFOR PERFORMERS. - THEPROVISIONSOFTHIS ACTONTHEPROTECTIONOF PERFORMERSSHALLAPPLY TO:

222.1. PERFORMERSWHOARENATIONALSOFTHE PHILIPPINES;

222.2. PERFORMERSWHOARENOTNATIONALSOFTHE PHILIPPINESBUTWHOSEPERFORMANCES: (A) TAKEPLACEINTHE PHILIPPINES; OR

(B) AREINCORPORATEDINSOUNDRECORDINGSTHATAREPROTECTEDUNDERTHIS ACT; OR

(C) WHICHHASNOTBEENFIXEDINSOUNDRECORDINGBUTARECARRIEDBYBROADCASTQUALIFYINGFORPROTECTIONUNDER THIS ACT. (N)

SEC. 223. POINTS OF ATTACHMENT FOR SOUND RECORDINGS. - THE PROVISIONS OF THIS ACT ON THE PROTECTION OF SOUND RECORDINGSSHALLAPPLYTO:

223.1. SOUNDRECORDINGSTHEPRODUCERSOFWHICHARENATIONALSOFTHE PHILIPPINES; AND 223.2. SOUNDRECORDINGSTHATWEREFIRSTPUBLISHEDINTHE PHILIPPINES. (N)

SEC. 224. POINTSOF ATTACHMENTFOR BROADCASTS. -

224.1. THEPROVISIONSOFTHIS ACTONTHEPROTECTIONOFBROADCASTSSHALLAPPLYTO:

(A) BROADCASTSOF BROADCASTING ORGANIZATIONS THE HEADQUARTERSOF WHICH ARE SITUATEDIN THE PHILIPPINES; AND

(B) BROADCASTSTRANSMITTEDFROMTRANSMITTERSSITUATEDINTHE PHILIPPINES.

224.2. THE PROVISIONS OF THIS ACT SHALL ALSOAPPLY TO PERFORMERSWHO, AND TO PRODUCERS OF SOUND RECORDINGS AND BROADCASTING ORGANIZATIONS WHICH, ARE TO BE PROTECTED BY VIRTUE OF AND IN ACCORDANCE WITH ANY INTERNATIONAL CONVENTIONOROTHERINTERNATIONALAGREEMENTTOWHICHTHE PHILIPPINESISAPARTY. (N)

N. B. United States is a first to register jurisdiction. You obtain copyright by registration. RP is a first to create jurisdiction. You obtain copyright by virtue of creation.

The Berne Convention reinforces the first to create doctrine. US is not a signatory of the Berne. CHAPTER XIX

INSTITUTION OF ACTIONS

SEC. 225. JURISDICTION. - WITHOUT PREJUDICE TO THE PROVISIONS OF SUBSECTION 7.1(C), ACTIONS UNDER THIS ACT SHALL BE COGNIZABLEBYTHECOURTSWITHAPPROPRIATEJURISDICTIONUNDEREXISTINGLAW.

SEC. 226. DAMAGES. - NODAMAGESMAYBERECOVEREDUNDERTHIS ACTAFTERFOUR (4) YEARSFROMTHETIMETHECAUSEOFACTION AROSE.

Prescriptive periods: Civil case – 4 years

Criminal case – follow the RPC based on penalty (i.e., length of imprisonment, amount of fine) CHAPTER XX

SEC. 227. OWNERSHIP OF DEPOSIT AND INSTRUMENTS. - ALL COPIES DEPOSITED AND INSTRUMENTS IN WRITING FILED WITH THE NATIONAL LIBRARYANDTHE SUPREME COURT LIBRARYINACCORDANCEWITHTHE PROVISIONSOF THIS ACTSHALLBECOMETHEPROPERTY OFTHE GOVERNMENT.

SEC. 228. PUBLIC RECORDS. - THESECTIONORDIVISIONOFTHE NATIONAL LIBRARYANDTHE SUPREME COURT LIBRARYCHARGEDWITH RECEIVINGCOPIESANDINSTRUMENTSDEPOSITEDANDWITHKEEPINGRECORDSREQUIREDUNDERTHIS ACTANDEVERYTHINGINITSHALLBE OPENEDTOPUBLICINSPECTION. THE DIRECTOROFTHE NATIONAL LIBRARYISEMPOWEREDTOISSUESUCHSAFEGUARDSANDREGULATIONS ASMAYBENECESSARYTOIMPLEMENTTHIS SECTIONANDOTHERPROVISIONSOFTHIS ACT.

Sec. 229. Copyright Division Fees. - The Copyright Section of the National Library shall be classified as a Division upon the effectivity of this Act. The National Library shall have the power to collect, for the discharge of its services under this Act, such fees as may be promulgated by it from time to time subject to the approval of the Department Head.

Q. What is SB 1704 by Ople?

A. It is on proposed amendments on the copyright portion of the IP Code. Since the Senate has already ratified the WiPO, SB 1704 may be passed. Some relevant provisions of the SB 1704 are:

1. Anti-circumvention measures to beimplemented - Sony and the chip

- would penalize the sale, manufacture and use of the anti-circumvention devices 2. Broader reproduction rights

- broader reproduction rights, temporary and permanent reproduction; internet; right to make work available

3. Terms of Protection extended (from 50 years to 75 years)

4. Enforcement – making the IP Code easier to enforce with stiffer penalties Q. What are some issues on fair use in the internet?

A. Internet gives (or requires) a new way of looking at copyright. It makes it more difficult to enforce the right to control access, disclosure and to prevent alteration (it is easier to make alterations over the internet). Also, there may be several copyright owners in the internet setting. Content maybe owned by the author, the website control the access, etc.

Q. What is the significance of the E-Commerce Act on copyright infringement?

A. The ISP is made liable under the ECA during instances where it allows for the hosting of websites which carries or is the source of infringing materials. So you can go after the website owner and the ISP and the source of their liability would be the violation of the ECA.

Q. When is it possible to use digital works (found over the internet) without infringement?

A. 1. Implied license – when the website where the material is found contains no restrictions on copying 2. Fair use

3. Information posted is part of public domain or is not copyrightable Q. What is contributory infringement?

A. It is when you allow others to make copies. There is no specific provision for contributory infringement in the IP Code. But you can still bring a case for this under a criminal action, making the person who allowed the making of copies an accessory or accomplice. It may not be possible to file a civil case. Note however that SB 1740 provides for contributory infringement.

MAI Systems Corp., until recently, manufactured computers and designed software to run those computers. The company continues to service its computers and the software necessary to operate the computers. MAI software includes operating system software, which is necessary to run any other program on the computer. Peak Computer, Inc. is a company organized in 1990 that maintains computer systems for its clients. Peak maintains MAI computers for more than one hundred clients in Southern California. This accounts for between fifty and seventy percent of Peak's business. Peak's service of MAI computers includes routine maintenance and emergency repairs. Malfunctions often are related to the failure of circuit boards inside the computers, and it may be necessary for a Peak technician to operate the computer and its operating system software in order to service the machine.

In August, 1991, Eric Francis left his job as customer service manager at MAI and joined Peak. Three other MAI employees joined Peak a short time later. Some businesses that had been using MAI to service their computers switched to Peak after learning of Francis's move. On March 17, 1992, MAI filed suit in the district court against Peak, Peak's president Vincent Chiechi, and Francis. The complaint includes counts alleging copyright infringement, misappropriation of trade secrets, trademark infringement, false advertising, and unfair competition. The district court granted summary judgment in favor of MAI on its claims of copyright infringement and issued a permanent injunction against Peak on these claims. The alleged copyright violations include: (1) Peak's running of MAI software licensed to Peak customers; (2) Peak's use of unlicensed software at its headquarters; and, (3) Peak's loaning of MAI computers and software to its customers. Each of these alleged violations must be considered separately.

Held: To prevail on a claim of copyright infringement, a plaintiff must prove ownership of a copyright and a

"`copying' of protectable expression" beyond the scope of a license. MAI software licenses allow MAI customers to use the software for their own internal information processing.[n3] This allowed use necessarily includes the loading of the software into the computer's random access memory ("RAM") by a MAI customer.

However, MAI software licenses do not allow for the use or copying of MAI software by third parties such as Peak. Therefore, any "copying" done by Peak is "beyond the scope" of the license.

It is not disputed that MAI owns the copyright to the software at issue here, however, Peak vigorously disputes the district court's conclusion that a "copying" occurred under the Copyright Act. The Copyright Act then explains, “A work is "fixed" in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”

The district court's grant of summary judgment on MAI's claims of copyright infringement reflects its conclusion that a "copying" for purposes of copyright law occurs when a computer program is transferred from a permanent storage device to a computer's RAM. This conclusion is consistent with its finding, in granting the preliminary injunction, that: "the loading of copyrighted computer software from a storage medium (hard disk, floppy disk, or read only memory) into the memory of a central processing unit ("CPU") causes a copy to be made. In the absence of ownership of the copyright or express permission by license, such acts constitute copyright infringement." We find that this conclusion is supported by the record and by the law.

Peak concedes that in maintaining its customer's computers, it uses MAI operating software "to the extent that the repair and maintenance process necessarily involves turning on the computer to make sure it is functional and thereby running the operating system." It is also uncontroverted that when the computer is turned on the operating system is loaded into the computer's RAM. As part of diagnosing a computer problem at the customer site, the Peak technician runs the computer's operating system software, allowing the technician to view the systems error log, which is part of the operating system, thereby enabling the technician to diagnose the problem. Peak argues that this loading of copyrighted software does not constitute a copyright violation because the "copy" created in RAM is not "fixed." However, by showing that Peak loads the software into the RAM and is then able to view the system error log and diagnose the problem with the computer. MAI has adequately shown that the representation created in the RAM is "sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.

The law also supports the conclusion that Peak's loading of copyrighted software into RAM creates a "copy" of that software in violation of the Copyright Act.

Q. What is the Berne Convention?

Q. What are the pertinent provisions on 1) national treatment, 2) principle of automatic protection and 3) principle of independence of protection?

A.

1. National Treatment

(1) Authors shall enjoy, in respect of works for which they are protected under this convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.

2. Principle of automatic protection

(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.

3. Principle of Independence of Protection.

(3) Protection in the country of origin is governed by domestic law. However, when the author is not a