Final Exam in IPL Atty. John Paul Gaba Jan Uriel David JD – 2 AUF School of Law 10/26/2015

Part I. Choose from the following list the statements that are true (there are 10). Just write/list

down the numbers corresponding to the statements which you believe are true. (20 points)

2. Registration of a copyrightable work is not mandatory in order to secure copyright protection 4. After the end of the term of copyright protection, the work becomes part of the public domain. 8. It is a declared State policy that use of intellectual property bears a social function. 10. Generic marks can never acquire secondary meaning. 11. Protection from a trademark registration is generally territorial in nature. 6. Any agreement that contains provisions on the use of any intellectual property right is a technology transfer arrangement. 12. A regular court (e.g., Regional Trial Court) is a “competent authority” under the law to declare the well-known status of a trademark. 14. Non-use of a mark shall result in the automatic cancellation of a trademark registration. 19. Trademark registration secured from the IPO is different from a business name registration issued by the DTI and corporate name registration issued by the SEC. 20. Civil, criminal, and administrative sanctions are imposed on those found guilty of trademark infringement and unfair competition.

PART II.

1. Valid 2. Valid 3. Valid 4. Valid 5. Valid 6. Valid 7. Not valid- the first phrase in the provision states that “

Licensee shall not modify, develop or otherwise make improvements to Technology, Patents or Copyrights without prior written consent of Licensor…” however under par. 2, Sec. 88 of the IPC, it is mandated that “Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement;” the provision in the arrangement contravenes the stated provision of the law

8. Valid 9. Valid 10. Valid

Part III. Classify each type of mark whether it is “Generic”, “Descriptive”, “Suggestive”, “Arbitrary”, or “Fanciful”, and your reason for your answer. (20 points) 1. “BEAUTIFUL” (for perfume) Arbitrary- although “beautiful” has a common or ordinary meaning, the

meaning is unrelated to a perfume; beautiful is normally used to describe something which is seen, on the other hand, what is enhanced by a perfume is scent. 2. “AGUA” (for water-refilling stations) Generic- “Agua” means water in Spanish, although not the name

of service itself, the mark is the actual name of the product provided by the service 3. “STRONG” (for coffee) Descriptive– because the term “strong” describes coffee and may be considered one its characteristics. 4. “CODAC” (for cameras) Fanciful- the mark is coined or “made up” that has no meaning except as a brand 5. “DELISHOES” (for shoes and sandals) Fanciful- the mark is coined or “made up” that has no meaning except as a brand 6. “MILKTI” (for milk tea) Fanciful- the mark is coined or “made up” that has no meaning except as a

brand 7. “KAPITAN” (for gin) Arbitrary- although “Kapitan” has a common or ordinary meaning, the meaning is unrelated to a gin. Kapitan is a title used for a person. 8. “EL PRESIDENTE” (for rubber shoes) Arbitrary- although “El presidente” has a common or ordinary meaning, that is, “the president” in Spanish, the meaning is unrelated to a gin. “El presidente” is a title for persons and not for shoes. 9. “TOYOMANSI” (for flavored soy sauce) Fanciful- the mark is coined or “made up” that has no meaning except as a brand 10. “DAILY BREAD” (for bread and pastries) Descriptive- although “daily” and “bread” have ordinary meanings when separately used, if combined or used together, it acquires a meaning that describes the product but does not denote the actual name of the product, which is “bread”. A disclaimer for the term “bread”, it being generic, may be used to allow the registration of the entire mark “daily bread”.

PART IV

1. If I will be assigned to hear the case, I will decide in favor of “Showtime!” There is no trademark infringement, copy right infringement, and unfair competition in this case. The requisites for trademark infringement are: 1. The trademark being infringed is registered with the IPO;The trademark is copied by the infringer; 2. The infringing mark is used in the sale or offering for sale of any goods; 3. The use is likely to cause confusion as to the origin of such goods; and 4. The use of the infringing mark is without the consent of the trademark owner. In this case, the third requisite is lacking- “likely to cause confusion…” What “that’s my tomboy” is a talent search for lesbians which is completely different from “that’s my boy” a talent search for young boys. The two are very different from each other which would not cause any confusion to the viewers. A viewer would know how to differentiate the two shows easily. The essential elements of an action for unfair competition are 1. The offender gives his goods the general appearance of the goods of another manufacturer; 2. There is confusing similarity in the appearance of the goods; and 3. There is intent to deceive the public and defraud a competitor. In this case, it must be proven by substantial evidence that there is intent to deceive the public and defraud the competitor. In the case of copyright infringement, the case shall be dismissed. Copyright protects the finished works. It does not protect ideas and concept. Generally, talent shows and segments are done by introducing contestants, these contestants will compete through talent portion and question and answer. This type of show has been the concept of many shows both local and international. Eat Bulaga cannot claim ownership over the concept of a talent show.

2. Plain block letters By filing a trademark application covering a mark represented in plain block letters, it gives the broadest scope of protection to the applicant over those letters or words in whatever font color they may use. Logo or composite mark represented in black and white A registration for a mark in black and white will give the owner maximum rights and wide-ranging protection against all identical or confusingly similar marks of any color. He may use any color which is sufficient to maintain the registration of the mark. Logo or composite mark in color Registration of a mark with claim of colors limits the scope of protection to the specific colors claimed. This is a disadvantage, it is suggested that marks be registered in grayscale or black and white.

3. As mentioned in Asia Brewery, Inc. v Court of Appeals, “the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement…” While holistic test as mentioned in Del Monte v Court of Appeals “mandates that the entirety of the marks in question must be considered in determining confusing similarity…”

In my opinion the test which is more appropriate to use in a trademark case is the holistic test because this prevents other businesses or persons from causing confusion. This test is stricter which would require others to think deeper and be more creative.

4. No. The action cannot prosper because the CD compilation is not copyrightable. Listed under sec. 172, IPC are works that are protected by copyright. These includes different kinds of literary and artistic works. CD compilation of contacts among people cannot be categorized among the listed in the Code. As decided in Feist Publications, Inc., v. Rural Telephone Service Co., the facts under the compilation are not copyrightable and the compilation that used the ordinary way to present the facts are not also copyrightable. The US Supreme Court went further and said that “The only conceivable expression is the manner in which the compiler has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for copyright protection.” In the case at hand, the CD is a collection of facts are presented and arranged in an ordinary manner without any uniqueness and creativity in its presentation. Although it contained a search engine and other user-friendly features which made it easier for users thereof to search a particular name or detail, such search engine and easy search are not unique in a database. However, despite not being copyrightable, Atty. X may file a criminal case against Atty. Y under the Optical Media Board Act.

5. (a) Purpose and character of the use, including whether such use is of a commercial nature or is for non-profit education purposes; The purpose of the use is to move public opinion sufficiently to achieve the legalization of non-medical marijuana in the United States so that the responsible use of cannabis by adults is no longer subject to penalty. This is for a non-profit organization. (b) Nature of the copyrighted work The use is a creative expression. The case for fair use becomes even stronger when there are only a few ways to express the ideas or facts contained in a factual work. (c) Amount and substantiality of the portion used in relation to the copyrighted work as a whole; and The portion taken from the photo to the reproduced copy has a high quantity. The substantial elements of the original photo- the face, the marijuana, and the hand are reproduced in the duplicated photo. (d) Effect of the use upon the potential market for or value of the copyrighted work This factor scrutinizes the expected effect of the use on the market for the copyrighted work. If the proposed use would negatively affect the market for or value of the copyrighted work, this factor would weigh against fair use. In this case, based on the data produced by NORML, Fifty-eight percent of Americans believe that "the use of marijuana should be made legal," therefore the effect of the use would positively affect the photo because of the good percentage approving cannabis. Based on the foregoing, it can be said that there is no copyright infringement based on the four test weighing in favor of fair use.