IMPORTATION RIGHT OF FILIPINOS BASED ON TREATIES OR CONVENTIONS

OVERVIEW: PRE-AMENDMENT OF R.A. No. 8293 (IP LAW)

 Republic Act (R.A.) No. 8293, entitled, “An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for Other Purposes,otherwise known as the Intellectual Property Code, was signed into law on June 6, 1977 and took effect on January 1, 1998. The State took cognizance of the verity, it having declared the same in its underlying policy, that an effective intellectual property system is vital to national development, progress and the common good, including the terms of our trade relations with foreign partners around the globe. The present Code has governed the protection not only of its very own subjects but also of those encased by other jurisdictions. It has sought to secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property, particularly, when beneficial to the people. The construing amendments brought by the 1998 Code – in place of Presidential Decree (P.D.) 49,[1] R.A. No. 165[2] which were the former Copyright and Patent Laws, respectively, and R.A. No. 166[3] which provided for the protection of Trademarks, Tradenames and Service-marks, and other accompanying amendatory laws – were intended to make its provisions consistent with the General Agreement on Tariffs and Trade (GATT) and its supplementary Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement).

THE ADVENT OF R.A. NO. 10372[4]

In order to carry out the principles of the Constitution, and in view of the interests of primary stakeholders termed as the “holders of copyright and users of protected works” in this area of the law, the Philippines appropriately deals with the effect of treaties and conventions, as well as the extension of foreign law rights to the Filipinos, by putting into preferment the propriety of amendments.

According to Black’s Law Dictionary, in practice, amendment refers to any writing made or proposed as an improvement of the principal writing; whereas, in the context of legislation, amendment simply speaks of a modification or alteration proposed to be made in a bill on its passage, or in an enacted law. From these two concepts of “amendment,” it may be inferred that whatever modification it is to be made in the subject, aims to actually improve it. “Improvement” was the key driver of the Legislature in arriving at the concluding stand of R.A. No. 10372 to modify or repeal pertinent provisions of the present Intellectual Property Code. Besides, the Philippines adheres to the effects of treaties and/or conventions to which it has been a party, respecting issues contemplated in Intellectual Property and International Trade Laws.

One of the most, if not the most, contentious provisions of R.A. No. 10372 are contained in Section 14,[5] which deleted Sections 190.1[6] and 190.2[7] of R.A. No. 8293, in their entirety. Prompting the novel objectives of the updates in the IP law of the country, first query that stirs the mind of the informed public revolves around the less acceptable rationale of our lawmakers and the Government in pursuing the controversial amendments. The amended Section 190 (formerly Section 190.3 of R.A. 8293) now reads, “Subject to the approval of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation or exportation of infringing articles prohibited under Part IV of this Act and under relevant treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported or before they are exported. (Sec. 30, P.D. No. 49).[8]

The substance of the disputable action is that there was once an explicitly protected positive right which was exactly the same right impliedly excised by the lawmakers, putting such right in complete silence when they deleted with full force the aforementioned provisions.

The Congress intentionally deleted the sections which expressly contain such right to import copyrighted works even over the objection of the copyright owner, unwittingly creating an importation right in favor of copyright owners, and permitting a Customs Officer to question whether any right of importation of copyrighted works for personal use still exists. The removal of the right implies that it was done intentionally to deny individuals that right.[9]

Director General Ricardo R. Blancaflor (DG Blancaflor) of the Intellectual Property Office(IPO)-Philippines, however, argues, as he speaks for and in behalf of said Office during an interview conducted by Raissa Robles,[10] that such move of the lawmakers justifies the aim of the Government to accede to the “intelligent norm” of international exhaustion.[11]

THE PRINCIPLE OF EXHAUSTION OF INTELLECTUAL PROPERTY RIGHTS

The World Intellectual Property Organization (WIPO), in its official online portal, briefly explains the different forms of exhaustion of rights of an IP owner with respect to their scope. Exhaustion refers to one of the limits of IP rights, or in a clearer perspective, the extent or degree of control that an IP owner can exercise over the distribution of his copyrighted work(s). When a copyrighted work or material, after an authorized sale, has been marketed by a purchaser with the consent of the IP owner, the IP rights of commercial exploitation over the given work or material, can no longer be availed of by the IP owner as they are already in a state of being exhausted. Be the concept explained in a manner suited to the interested layman, when rights are exhausted, they indeed go through some means of transformation where all part of it is consumed. Or, in a more refined explanation in the legal parlance, each legitimate sale of a copyrighted work or material extinguishes the IP owner’s exclusive rights over the work or material sold, and the purchaser takes a title without further restraint or obligation under the copyright law.[12] Once such copyrighted work or material is subjected to subsequent acts of resale, rental, lending or other forms of commercial use by third parties, the IP owner loses the privilege to control or oppose the same, unless the law specifically provides otherwise.[13] In other words, there is a fairly broad consensus that this approach, however, may apply only within the context of the domestic market, at the least.

Many sources and reference materials, which pertain to copyright and have been in works for compilation specifically for law students, consistently reiterate the two (2) principal kinds of exhaustion: (1) national and (2) international exhaustion. The concept of national exhaustion does not allow the IP owner to control the commercial exploitation of goods put on the domestic market by the IP owner or with his consent. Herein, parallel imports or the importation of original copyrighted work, material, or article sold or distributed abroad, can be opposed by the IP owner or his authorized licensee based on the IP right. In the case of international exhaustion, the IP rights are exhausted once a given work, material, or article has been sold or distributed by the IP owner or with his consent in any part of the world.[14] With Sections 109.1 and 190.2, as DG Blancaflor would reiterate in his series of explanations on the deletion of the same, the Philippines had actually been in pursuit of national exhaustion which policy seems to be interpreted by some IP and International Trade Law scholars as a non-tariff barrier under the World Trade Organization (WTO).

The WIPO has put emphasis on the fact that limitations to copyright and other related rights vary from country to country, or from state to state, due to reasons grounded on social, economic and historical conditions. Thus, the question as to what extent of the sale or distribution of an IP protected work, material, or article abroad, can exhaust the IP rights over the same in the context of domestic law, becomes crucial and relevant only in cases of parallel importation. The principle of exhaustion of IP rights, therefore, can be said to have produced undeviating effects not on the reproduction but on the control over the distribution of copyrighted work or material embodying the IP rights.[15]

PARALLEL=INFRINGING IMPORTATION?

There is a conflict between intellectual property rights and international [free] trade and this more often than not, concerns the issue of parallel imports. If premised on the practice or rules of international trade, parallel import is not different from an ordinary one as the former’s implications under the law is complicated. The connection of the IP owner to that of the parallel importer is indeed not that which relates to any contractual obligations.

Considered a distinctive kind of trade, parallel importation refers to the import of goods, or copyrighted works, materials or articles in the case of copyright, outside the distribution channels contractually negotiated by the IP owner.[16] The imported work then is sometimes considered as a “gray market import,” which in fact, is original, only the distribution channels are not controlled by the IP owner. Professor Chung-Lun Shen (Taiwan),[17] in her opinions which mainly discuss the conflicting views between the interest of free trade with a reflecting benefit on customers and the interest of rights by the appropriate IP owner, published in the Journal of International Commercial Law and Technology, emphasizes that “the reason that gray market is gray is that the genuine goods never violate intellectual property laws, but the unauthorized import sparks a dispute about whether the import infringes in the distribution right under intellectual property laws.[18]

Nevertheless, albeit being non-counterfeit, such “gray marketed article or material subject to copyright protection” is imported from another country or state without the permission of the IP [copyright] owner. This contemplates the second element (out of four as enumerated by Shen) forming parallel or gray market import which rests on the authorization of the owner of IP rights. Based upon the right of importation that an IP right confers upon the IP owner, as earlier mentioned, the latter may try to oppose such importation in order to separate markets.

It is worthy to note that parallel importation in most jurisdictions, is also known as “infringing importation.” Infringing importation is not defined under the present IP Code of the Philippines, but it is, under the U.S. Copyright Law[19] after which the Philippine Code was patterned. Thus, adopting the definition in the foreign law to make it applicable to Philippine setting with some modification and emphasis: Any importation without the authority of the owner of copyright, of copies of a work that have been acquired outside the Philippines is an infringement of the exclusive right to distribute copies.

Taking into consideration the authority of the Bureau of Customs under the special instruction of the Secretary of Finance, to block importation of the copyrighted works based on letters sent by foreign publishers, the latter has the power, nevertheless, to so provide an ensuring statement to the effect of preserving parallel importation.[20] This could be the Government’s means of qualifying certain acts of Filipinos returning from abroad, bringing into the country, some copyrighted works, while somehow assuring the respective foreign publishers of a remedy. In respect of this encouraging policy, another interpretation of infringing information may be of substance – that infringing or parallel importation may also occur when a genuine product, made with the consent of the IP owner, is imported into the Philippines against the wishes of the IP owner.

Take for instance: Y is a Filipino, importing without the consent of the intellectual property owner and/or of his exclusive licensee in the country of importation. In this particular case, the IP owner is not disputing that the imported product (which could be book, CD/DVD, etc.) is made with his consent, as the same is not pirated or counterfeit. But he is contending that the importation is made without his consent.

FIRST SALE DOCTRINE[21] [22] (ESSENTIALLY) IS EXHAUSTION DOCTRINE[23]

How is the Filipino, the very subject that the Government is ought to protect, placed at a saddening point?

He runs out of defenses, notwithstanding, the first sale doctrine; it is because “personal purpose,” which, at the least, opens the window for another valid defense, was dragged out of the amended IP Law. As earlier discussed, the former provisions embodied in Section 190 of R.A. No. 8293, provide for the exceptions to any importation without the copyright owner/holder’s permission regardless of whether the copyrighted work is lawfully made which essentially means, an individual without copyright in the Philippines, may be so permitted to import still. Hence, there is no liability if: (1) the importation is for use by the government, (2) the person importing the goods will use them for her own private use, or (3) the goods will be used for educational or religious purposes.[24]

With the passage of the amendments, the only consolation left (if that could be interpreted this way) is the implied fact that a Filipino can bring in books, movies or music into the country, that can no longer be subject to restrictions in quantity. He may now bring in copies of the copyrighted works mentioned in a number exceeding three (3). The Government says, insofar as a certain copyrighted work is legally purchased, a Filipino can bring in as many copies as he wants. And, this substantially misleads the general public. As Professor Jose Jesus Disini (Atty. JJ Disini), a Harvard University law graduate, now teaching Technology and the Law at the University of the Philippines College of Law, expresses it in his points of critique of the then proposed amendments, the ‘would-be’ complete removal of Sections 190.1 and 190.2 creates an importation right “that only the copyright owner/holder or his/its licensees have the authority to import the works into the Philippines.[25]

INFRINGEMENT VIS-À-VIS FAIR USE

Infringement is defined by David Bainbridge[26] in this manner: “Intellectual property law gives rights to the owner of that property permitting him to do certain acts in respect of the thing in which the right subsists. Any person who does one of these acts without the permission or authority of the right-owner is said to infringe the right unless the act concerned is permitted by law or whatever defense which apply,” The adoption of this definition is further strengthened by the new provisions under Section 216 on Infringement.[27]

Be it remembered, the legislature recognizes the practicality and wisdom of the judicial doctrine of fair use by subsequently incorporating the same in the law. As Funa[28] succinctly puts it in his discussions, “fair use is a privilege lodged in the person other than the owner of copyright to use the copyrighted work or material in a reasonable manner without the latter’s consent, notwithstanding the monopoly granted to the owner of the copyright.”

Fair use is that use which is legally permissive as may be determined from the nature of factors for consideration enumerated in Section 185.1 of R.A. 8293, namely: (1) the purpose and character of the use; (2) nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole and; (4) the effect of the use on the potential market for or value of the copyrighted work.[29] The factors for consideration or to be considered, however, are not exclusive. Funa avers that there are other factors that may be taken into account for the legislation of the fair use doctrine which principle was not intended to narrow or enlarge the rights of third parties within the context of fair use.

Inasmuch as the list provided for by law is concerned, “personal use” was not mentioned, but was, nonetheless, recognized in the fair use clause under Section 212 of R.A. 8293. The problem is, the enumeration under such provision was also deleted. With the passage of R.A. No. 10372, Section 212 now reads, “(Limitations on Rights) The provisions of Chapter VIII shall apply mutatis mutandis to the rights of performers, producers of sound recordings and broadcasting organizations.” Again the main objective is for the Philippines, to finally succumb to the obligations under the policy of the international exhaustion and to eventually encourage parallel importation and importation of goods or copyrighted works, materials or articles in bulk or in commercial quantities, subject to conditions of requisite licenses that are granted to sole distributors of these products in the Philippines.”

SUPPORT FOUND IN INTERNATIONAL TREATIES OR CONVENTIONS RE: IMPORTATION

Fr. Aquino has forwarded that the rationale for such requirements as the doctrines of fair use and the exclusions from protection under the Copyright Law, stems from the fact that the public has a stake in the creations of its members. As such, he stresses that there is good reason to abide by the general rule:

If one wants to enjoy the protection of his IP rights, he may avoid all that may render his work available to the public domain and do all what is required to obtain protection. Where the opportunity exists then for the operation of law to make one’s creation freely available, it will put it beyond the pale of any monopoly.

The monopoly(ies) that the law grants creators are incentives so that eventually their creative outputs may be made available to the public. Consideration of the economic interests constituted in IP rights, was one of the priorities of the Uruguay Round of the General Agreement on Tariffs and Trades (GATT)[30] that engendered the WTO.[31]

The GATT was originally created by the Bretton Woods Conference as part of a larger plan for economic recovery after World War II. The GATT’s main purpose was to reduce barriers to international trade. This was achieved through the reduction of tariff barriers, quantitative restrictions and subsidies on trade through a series of different agreements. The GATT was an agreement, not like any organization, which was supposed to become a successful International Trade Organization like the World Bank or International Monetary Fund (IMF). But such was not ratified, so it remained simply an agreement. The functions of the GATT then have been replaced by the WTO.[32]

The WTO establishes rules for international trade through consensus among its member states resolving disputes between these states that are all signatories to its set of trade agreements such as the TRIPS Agreement. The fundamental principles mainly concern trading system which shall, among others, be free of discrimination in the sense that one country cannot privilege a particular trading partner above others within the system, nor can it discriminate against foreign products and services increase international trade by promoting lower trade barriers and providing a platform for the negotiation of trade and to the member states’ business(es).

EFFECT TRIPS AGREEMENT (A.K.A “AGREEMENT”) HAVE ON THE RECOGNITION OF IP RIGHTS OF PERSONS/INDIVIDUALS OTHER THAN MEMBER COUNTRIES’ OWN NATIONALS

In its official online page, the WTO details that the TRIPS Agreement, which came into effect on January 01, 1995, is to date the most comprehensive multilateral agreement on IP. It covers, among others, copyright area of IP including its related rights i.e., the rights of performers, producers of sound recordings and broadcasting organizations.[33]

Three (3) Main Features: Standards[34]

The Agreement sets out the minimum standards of protection to be provided by each Member in respect of each of the main areas of IP it covers. It sets standards pertaining to the subject matter to be protected, the rights to be conferred and permissible exceptions to such rights and the minimum duration of protection, by requiring that the substantive obligations of the main conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) in their most recent versions, must first be complied with. With the significant exception of the provisions of the Berne Convention on moral rights,[35] all the main substantive provisions of these conventions are incorporated by reference and thus become obligations under the TRIPS Agreement between the TRIPS Member countries.[36] In sum, Members of the WTO are obligated to “accord the treatment provided for in this Agreement to the nationals of other Members” provided these meet the criteria set forth in the foregoing conventions.

Preliminary procedures include knowing the ‘persons’ who must thus benefit from the treatment provided for in the Agreement. Article 1.3 defines who these persons are and they are referred to as “nationals” who may be natural or legal and have close attachment to other Members without necessarily being nationals.[37] This is followed by queries or criteria applied with respect to all WTO Members, whether or not they are party to the conventions earlier mentioned.

Articles 3, 4 and 5 of the Agreement[38] include fundamental rules on national and most-favoured nation (MFN) treatments of all ‘foreign’ nationals which are common to all categories of IP covered by TRIPS. National Treatment clause forbids discriminations between Members’ own nationals and the nationals of other Members. In other words, it implicates treating foreigners and locals equally; imported as well as locally-created copyrighted goods, materials, articles or works should be treated equally at least after the foreign works have entered the market. On the other hand, the MFN Treatment clause forbids discrimination between nationals of other Members. Member countries cannot normally discriminate between their trading partners, and in effect, should manage to grant ‘someone’ some special favor (such as lower customs duty rate[s] for one of their products, goods or works) and it necessarily follows that one has to do the same for all other WTO Member countries, therefore.

Article 13 requires Members to confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the owner/holder of the copyright. This is a horizontal provision that applies to all limitations and exceptions permitted under the provisions of the Berne Convention as incorporated into the TRIPS Agreement.[39] As such, exceptions must be applied in a manner that does not prejudice the legitimate interests of the copyright owner.[40]

It must be acknowledged that as a sort of counterbalance to the minimum standards of protection, there are provisions in the Berne Convention limiting the strict application of the rules regarding exclusive right. It provides for the possibility of using protected works in particular cases, without having to obtain the authorization of the owner of the copyright, and without having to pay any remuneration for such use. Those exceptions, which are commonly referred to as free use of protected works, are included in Articles 9(2) (reproduction in certain special cases), 10 (quotations and use of works by way of illustration for teaching purposes), 10bis (reproduction of newspaper or similar articles and use of works for the purpose of reporting current events) and 11bis(3) (ephemeral recordings).[41]

CONCLUSION

As regards National Exhaustion Policy vs. International Exhaustion

This conclusion – that the national exhaustion of intellectual property rights constitutes a non-tariff barrier under the WTO – seems to be based on a misleading knowledge of the basic spirit of the WTO. If this be accorded full support, view would imply that the promotion of international free trade under the WTO triumphs any other interest. And when parallel imports spark the conflict between international free trade and intellectual property rights, it becomes the upshot that the international exhaustion policy backing up free trade always surpasses the national exhaustion policy protecting intellectual property rights. The opinion that the national exhaustion policy is to be interpreted as a non-tariff barrier under the WTO, stems from the foregoing conflict. From the perspective that both international free trade and intellectual property exhaustion share equal positions for interest consideration under the WTO, provisions of the TRIPS Agreement especially Article 6 of the same must be respected; in the same vein that any interpretation which may attempt to preclude the national exhaustion policy under the WTO is tantamount to emptying the overall goals of the TRIPS Agreement, as embodied in its Preamble i.e., Recognizing also the special needs of the least-developed country Members in respect of maximum flexibility in the domestic implementation of laws and regulations, in order to enable them to create a sound and viable technological base.

If this is exactly what the lawmakers intended – to authorize parallel importation in view of the fact that the copyrighted work is original and authentic only that there has been a subliminal problem in its distribution – in deleting Section 190.1 of R.A. 8293, Atty. JJ Disini has this to say: the Philippines already allows parallel importation even without deleting Section 190.1 which impliedly adheres to national exhaustion policy and this can be seen from the fact that importation of used books for local resale without the formal authority from the copyright owner is allowed.

As regards possible importation rights in the guise of international treaties/conventions

Disclaimer effect seems to be consistent in all concerned or mentioned conventions and/or treaties including the WIPO Copyright Treaty, a special agreement within the meaning of Article 20 of the Berne Convention for the Protection of Literary and Artistic Works, as regards Contracting Parties that are countries of the Union established by that Convention.[42] The contracting parties or member states, whichever is the case, are under the obligations to observe the efficiency of national legislation of a certain state or country, that, notwithstanding the existence of permissions or grants as regards importation right by its nationals, the same may not surpass interests lodged in the national level. While contracting parties or member states/countries may provide for limitations of or exceptions to the rights granted to copyright owners in certain special cases that do not conflict with a normal exploitation of the work, and do not unreasonably prejudice the legitimate interests of such copyright owners, the same privilege lies in the obligation of these parties or states to prefer enforcing their national legislations.

 

 

______________________

FOOTNOTES

 

[1] DECREE ON THE PROTECTION OF INTELLECTUAL PROPERTY, November 14, 1972.

[2] AN ACT CREATING A PATENT OFFICE, PRESCRIBING ITS POWERS AND DUTIES, REGULATING THE ISSUANCE OF PATENTS, AND APPROPRIATING FUNDS THEREFOR, June 20, 1947.

[3] AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADE-MARKS, TRADE-NAMES AND SERVICE-MARKS, DEFINING UNFAIR COMPETITION AND FALSE MARKING AND PROVIDING REMEDIES AGAINST THE SAME, AND FOR OTHER PURPOSES, June 20, 1947.

[4] AN ACT AMENDING CERTAIN PROVISIONS OF REPUBLIC ACT NO. 8293, OTHERWISE KNOWN AS THE “INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES”, AND FOR OTHER PURPOSES, July 23, 2012.

[5] Section 14. Sections 190.1. and 190.2. of Republic Act No. 8293 are deleted in their entirety.

[6] 190. Importation for Personal Purposes xxx xxx xxx
190.1. Notwithstanding the provision of Subsection 177.6, but subject to the limitation under the Subsection 185.2, the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances:

(a) When copies of the work are not available in the Philippines and:

(i) Not more than one (1) copy at one time is imported for strictly individual use only; or

(ii) The importation is by authority of and for the use of the Philippine Government; or

(iii) The importation, consisting of not more than three (3) such copies or likenesses in any one

invoice, is not for sale but for the use only of any religious, charitable, or educational society or, institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines.

(b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving `from foreign countries and are not intended for sale: Provided, That such copies do not exceed three (3).

[7] 190. Importation for Personal Purposes xxx xxx xxx

190.2. Copies imported as allowed by this Section may not lawfully be used in any way to violate the rights of owner the copyright or annul or limit the protection secured by this Act, and such unlawful use shall be deemed an infringement and shall be punishable as such without prejudice to the proprietor’s right of action.

[8] [R.A. 10372] Section 15. Section 190.3. of Republic Act No. 8293 is hereby renumbered and amended as the sole provision under Section 190 to read as follows: “SEC 190. Importation and Exportation of Infringing Materials. – xxxxxx xxx

[9] Professor Jose Jesus (JJ) Disini. “Executive Summary for Position Paper on the Amendments to the Intellectual Property Code.”

[10] Raissa Robles is an investigative journalist who currently writes for several foreign publications. Writing on politics, anti-terrorism and a wide-range of issues, she has contributed to several local and foreign publications including Asiaweek of the Time-CNN Group, Asia Incorporated magazine, The Time of London, BBC Radio, Riyadh Daily newspaper, Voice of America, Philippine Daily Inquirer, Philippine Center for Investigative Journalism and Vera Files. She has also published two biographical books, namely: (a) To Fight Without End: The Story of a Misunderstood President, and (b) Trianggulo. Robles took up English Literature, major in Imaginative Writing, at the University of the Philippines where she graduated magna cum laude and to hone her skills in journalism, she attended a course at the International Institute for Journalism in Berlin.

[11] Robles, Raissa (2013). Amended IP Code “disadvantageous” to students, teachers, researchers – says copyright expert-lawyer Ping Peria. Exclusive by Raissa Robles. Retrieved from http://raissarobles.com/2013/02/16/amended-ip-code-disadvantageous-to-students-teachers-researchers-says-copyright-expert-lawyer-ping-peria/. 2015-05-26.

[12] Funa (Ed. 2012, 634) asserts that the Patent Exhaustion Doctrine, in aid of explaining First Sale Doctrine in Copyright, was most famously described in Adam vs. Burke, as cited in Dufresne (2009). The Exhaustion Doctrine Revived? Assessing the Scope and Possible Effects of the Supreme Court’s Decision.

[13] International Exhaustion and Parallel Importation. http://www.wipo.int/sme/en/ip_business/export/international_exhaustion.htm. Retrieved 2015-05-26.

[14] Ibid., (WIPO), Note [13].

[15] Dizon, Michael (2009). Doctrine of Exhaustion of Intellectual Property Rights. Law and ICT. https://michaeldizon.wordpress.com/2009/01/20/doctrine-of-exhaustion-of-intellectual-property-rights/. Retrieved 2015-05-26.

[16] Ibid., (WIPO), Note(s) [13] [14].

[17] Associate Professor, Department of Law, National Chengchi University, Taiwan (clshen@nccu.edu.tw).

[18] Chung-Lun Shen. “Intellectual Property Rights and International Free Trade: New Jurisprudence of International Exhaustion Doctrine Under the Traditional Legal System.” Journal of International Commercial Law and Technology, Volume 7, Issue 3 (2012).

[19] Section 602, Title 7, Chapter 6 of the U.S. Code. – (a) Infringing Importation or Exportation.—(1) Importation.— Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501. Retrieved from https://www.law.cornell.edu/uscode/text/17/602. 2015-05-26.

[20] Robles, Raissa (2013). Amended IP Code “disadvantageous” to students, teachers, researchers – says copyright expert-lawyer Ping Peria. Exclusive by Raissa Robles. http://raissarobles.com/2013/02/16/amended-ip-code-disadvantageous-to-students-teachers-researchers-says-copyright-expert-lawyer-ping-peria/. Retrieved 2015-05-26.

[21] The first sale doctrine, under Section 109(a) of the (U.S.) Copyright Act of 1976, allows a purchaser of a copyrighted good to resell the item without the copyright holder’s permission, as long as there has been an initial sale by the copyright owner.

[22] Dennis B. Funa, (2012). Intellectual Property Law (2012 ed., p. 634).

The concept of First Sale has accepted two (2) definitions, to wit:

(a) One which “provides that an individual who knowingly purchases a copy of a copyrighted work from the copyright holder receives the right to sell, display or otherwise dispose of that particular copy, notwithstanding the interest of the copyright owner.[22]”

(b) Another provides that “the copyright owner’s right to control the sale of a particular copy of a work ends after the owner’s first transfer of that copy.”

[23] Funa further asserts that the first sale doctrine is also known as the exhaustion doctrine, although the latter term is more commonly associated with patents and trademarks.

[24] Ibid., Sections 190.1 and 190.2 of R.A. No. 8293, Note(s) [6] [7].

[25] Professor Jose Jesus (JJ) Disini. “A Position Paper on the Amendments to the Intellectual Property Code.”

[26] David Bainbridge worked as a civil engineer in local authorities and civil engineering contractors (design, contract management of construction projects and development of computer software) before embarking on a career in law. Was a senior lecturer in law at Staffordshire University from 1987 to 1990. He was educated at University College, Cardiff (University of Wales); the University of Central England, Birmingham and the Inns of Court School of Law, London. His publications include numerous books and journal articles in the fields of intellectual property law and information technology law. His main research interests include intellectual property and information technology law. He is particularly interested in the interaction between law and new and emerging technologies.

[27] “Section 22. Section 216 of Republic Act No. 8293 is hereby amended to read as follows:

SEC. 216. Infringement. – A person infringes a right protected under this Act when one:
“(a) Directly commits an infringement;

“(b) 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;

“(c) With knowledge of infringing activity, induces, causes or materially contributes to the infringing conduct of another.

“216.1. Remedies for Infringement. – Any person infringing a right protected under this law shall be liable:

“x x x

[28] Atty. Dennis B. Funa is the Managing Partner of the Funa Tantuan & Fortes law Offices. He obtained his Bachelor of Laws degree at the San Beda College of Law.  Atty. Funa was a 1997 scholar of the London-based International Bar Association (IBA) in its Biennial conference in New Delhi, India. He was a 1999 scholar of the Association for Overseas Technical Scholarships in Tokyo, Japan. In his professional career, he has represented the country as speaker in various international intellectual property-related conventions, such as in the World Intellectual Property Organization (WIPO) – Asia Pacific Conference on New Technology and Enforcement of Copyright held in Indonesia in 1995, and in the WIPO-ASEAN Regional Round Table on IPR Cooperation and the TRIPS Agreement held in Thailand in 1996, as well as in several IP-related diplomatic conventions, under the auspices of the United Nations, in Geneva, Switzerland between 1996 and 1997.  He is presently a Commissioner in the Commission on Bar Discipline of the Integrated Bar of the Philippines, serving since 2002.

[29] Section 185. Fair Use of a Copyrighted Work. – 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. Decompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include:
(a) The purpose and character of the use, including whether such use is of a commercial nature or

is
for non-profit educational purposes;

(b) The nature of the copyrighted work;

(c) The amount and substantiality of the portion used in relation to the copyrighted work as a
whole;

and

(d) The effect of the use upon the potential market for or value of the copyrighted work.

[30] Uruguay Round Agreement: TRIPS/
Trade-Related Aspects of Intellectual Property Rights – The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994.

[31] Fr. Ranhilio Callangan Aquino. “Intellectual Property Rights: Protecting Economic Interests.”

[32] Wikipedia.org. http://en.wikipedia.org/wiki/General_Agreement_on_Tariffs_and_Trade. Retrieved 2015-05-31.

[33] Overview: TRIPS Agreement. https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm. Retrieved 2015-06-01.

[34] TRIPS Agreement: Part II, Standards Concerning Availability, Scope and Use of Intellectual Property Rights. http://www.wipo.int/treaties/en/text.jsp?file_id=305907. Retrieved 2015-06-01.

[35] Article 6bis
 Moral Rights:
1. To claim authorship; to object to certain modifications and other derogatory actions;
 2. After the author’s death; 3. Means of redress

(1) Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

(2) The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorized by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained.

(3) The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.

[36] Ibid., Note [32].

[37] TRIPS Agreement: Article 1Nature and Scope of Obligations

xxx xxx xxx

  1. Members shall accord the treatment provided for in this Agreement to the nationals of other Members.[1]  In respect of the relevant intellectual property right, the nationals of other Members shall be understood as those natural or legal persons that would meet the criteria for eligibility for protection provided for in the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits, were all Members of the WTO members of those conventions.[2]  Any Member availing itself of the possibilities provided in paragraph 3 of Article 5 or paragraph 2 of Article 6 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for Trade-Related Aspects of Intellectual Property Rights (the “Council for TRIPS”).

[38] TRIPS Agreement: Article 3
 National Treatment

  1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection[3] of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits.  In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement.  Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for TRIPS.
  1. Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade.

Article 4
 Most-Favoured-Nation Treatment

With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members.  Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member:

(a) deriving from international agreements on judicial assistance or law enforcement of a general nature and not particularly confined to the protection of intellectual property;

(b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention authorizing that the treatment accorded be a function not of national treatment but of the treatment accorded in another country;

(c) in respect of the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement;

(d) deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.

Article 5
 Multilateral Agreements on Acquisition or Maintenance of Protection

The obligations under Articles 3 and 4 do not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights.

[39] Part II 
Standards Concerning the Availability, Scope and Use of Intellectual Property Rights; Section 1: Copyright and Related Rights

Article 9
 Relation to the Berne Convention

  1. Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto.  However, Members shall not have rights or obligations under this Agreement in respect of the rights conferred under Article 6bis of that Convention or of the rights derived therefrom.

[40] Part II 
Standards Concerning the Availability, Scope and Use of Intellectual Property Rights; Section 1: Copyright and Related Rights

Article 13
 Limitations and Exceptions

Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.

[41] Article 9
Right of Reproduction:
1. Generally; 2. Possible exceptions; 3. Sound and visual recordings

(1) Authors of literary and artistic works protected by this Convention shall have the exclusive right of authorizing the reproduction of these works, in any manner or form.

(2) It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.

(3) Any sound or visual recording shall be considered as a reproduction for the purposes of this Convention.

Article 10 
Certain Free Uses of Works:
1. Quotations; 2. Illustrations for teaching; 3. Indication of source and author

(1) It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.

(2) It shall be a matter for legislation in the countries of the Union, and for special agreements existing or to be concluded between them, to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice.

(3) Where use is made of works in accordance with the preceding paragraphs of this Article, mention shall be made of the source, and of the name of the author if it appears thereon.

Article 10bis 
Further Possible Free Uses of Works:
1. Of certain articles and broadcast works; 2. Of works seen or heard in connection with current events

(1) It shall be a matter for legislation in the countries of the Union to permit the reproduction by the press, the broadcasting or the communication to the public by wire of articles published in newspapers or periodicals on current economic, political or religious topics, and of broadcast works of the same character, in cases in which the reproduction, broadcasting or such communication thereof is not expressly reserved. Nevertheless, the source must always be clearly indicated; the legal consequences of a breach of this obligation shall be determined by the legislation of the country where protection is claimed.

(2) It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public.

Article 11
 Certain Rights in Dramatic and Musical Works:
1. Right of public performance and of communication to the public of a performance;
 2. In respect of translations

(1) Authors of dramatic, dramatico-musical and musical works shall enjoy the exclusive right of authorizing:

(i) the public performance of their works, including such public performance by any means or process;
(ii) any communication to the public of the performance of their works.

(2) Authors of dramatic or dramatico-musical works shall enjoy, during the full term of their rights in the original works, the same rights with respect to translations thereof.

Article 11bis 
Broadcasting and Related Rights:
1. Broadcasting and other wireless communications, public communication of broadcast by wire or rebroadcast,
public communication of broadcast by loudspeaker or analogous instruments;
 2. Compulsory licenses; 3. Recording; ephemeral recordings

(1) Authors of literary and artistic works shall enjoy the exclusive right of authorizing:

(i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images;
(ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one;
(iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sounds or images, the broadcast of the work.

(2) It shall be a matter for legislation in the countries of the Union to determine the conditions under which the rights mentioned in the preceding paragraph may be exercised, but these conditions shall apply only in the countries where they have been prescribed. They shall not in any circumstances be prejudicial to the moral rights of the author, nor to his right to obtain equitable remuneration which, in the absence of agreement, shall be fixed by competent authority.

(3) In the absence of any contrary stipulation, permission granted in accordance with paragraph (1) of this Article shall not imply permission to record, by means of instruments recording sounds or images, the work broadcast. It shall, however, be a matter for legislation in the countries of the Union to determine the regulations for ephemeral recordings made by a broadcasting organization by means of its own facilities and used for its own broadcasts. The preservation of these recordings in official archives may, on the ground of their exceptional documentary character, be authorized by such legislation.

[42] WIPO Copyright Treaty: Article 1, Relation to Berne Convention. http://www.wipo.int/treaties/en/text.jsp?file_id=295166. Retrieved 2015-06-01.

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s