In Hot Pursuit : Copyright Reform

Foreword

What are these intellectual property rights?  Is there really a need to protect such, particularly copyright right, from transgression? Why it needs to be pursued? Are our current laws not sufficient to see the end of this goal or is there something else that hinders its take off?  To whose shoulders the burden of pushing reforms for copyright should rest to gain popularity domestically?

Brief Background – Intellectual Property Rights in the Philippines

Philippine 1987 Constitution explicitly mandates that the State shall protect intellectual property. Towards that end, the government has made it a State policy to protect and promote intellectual property rights. It further recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilities transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in the Intellectual Property Code of the Philippines.

The Philippine government has been protecting intellectual property rights since 1947, when the first laws on the protection IPR were enacted. Such laws include:

• Republic Act No. 165 otherwise known as “An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the Issuance of Patents and Appropriating Funds Therefore”
• Republic Act No. 166 otherwise known as “An Act to Provide for the Registration and Protection of Trademarks, Trade Names and Service Marks, Defining Unfair Competition and False Marking and Providing Remedies Against the Same, and for other Purposes”

Subsequent to the foregoing, additional laws were enacted and issuances promulgated to further promote and protect intellectual property rights, to wit:

• Republic Act No. 422 transferring the examination of copyright applications to the Bureau of Public Libraries.
• Republic Act No. 623 regulating the use of duly stamped or marked bottles, boxes, casks, kegs, barrels, and other similar containers;  providing, in the case of foreign applicants, for reciprocity and recognition of their priority rights; establishing, in the case of trademarks, principal and supplemental as well as interference proceedings;  extending protection of utility models and industrial designs under the patent system; and providing, in the case of trademark registration, for reciprocity arrangement with other countries.
• Republic Act No. 5434 providing for a uniform procedure for appeals from the decision of quasi-judicial officers including the Director of Patents.
• Administrative Order No. 94 [November 20, 1967] creating a committee to review the Philippine patent system and recommend amendatory laws to further upgrade it.
• Presidential Decree No. 721 creating the Legal Services Division and the Research and Information Division in the Philippine Patent Office. Subsequently, major reorganization of the various Divisions was made in the 1980’s.  The General Organic Chemistry Division and the ChemicalTechnology Division were merged to form the Chemical Division.  The Mechanical-Electrical Division was merged with the Mechanical, Design, Utility Model Division and Electrical Division to form the Mechanical and Electrical Examining Division.
• Presidential Decree No. 1263 amending Republic Acts Nos. 165 and 166, granting authority to the Philippine Patent Office to increase its fees and to spend a portion of its income for priority projects; exempting indigent inventors who filed their application for patent through the Philippine Inventor’s Commission from all fees charged by the Philippine Patent Office; and shortening the period for the grant of a compulsory license from one hundred eighty [180] days to one hundred twenty [120] days from the date the petition is filed in cases where the compulsory license applied for is on a patented product or process involving  any project approved by the Board of Investments [BOI].
• Executive Order No. 133 [February 27, 1987] merging the Philippine Patent Office with the then Technology Transfer Board thereby creating the Bureau of Patents, Trademarks and Technology Transfer  [BPTTT].
• Executive Order No. 60 was issued in 1993 creating the Inter-Agency Committee on Intellectual Property Rights [IAC-IPR] under the Office of the President of the Philippines.
• Department Administrative Orders Nos. 5 and 6 introduced amendments to the Rules of Practice in Patent and Trademark Cases and the Rules of Procedures of the Technology Transfer Registry effective on March 15, 1993.

IPR promotion and protection have also been made a state policy as the 1973 Constitution provides that the exclusive rights to inventions, writings and artistic creations shall be secured to inventors, authors, and artists for a limited period.

The 1987 Constitution, meanwhile, explicitly mandates that the State shall protect intellectual property.

The major turning point in the protection of IPR in the Philippines is the passing and signing into law of the Intellectual Property Code of the Philippines (Republic Act 8293) in 1997. The IP Code repealed the old IP and IP-related laws such as the Republic Act 165 (Patents Law); Republic Act 166 (Trademarks Law); Presidential Decree 49 (Copyright/Related Rights Law); Presidential Decree 285 (Textbook reprinting Law); and Articles 188 and 189 of the Revised Penal Code (on unlawful competition/infringement). Consequent to this was the establishment of the Intellectual Property Office that would administer and implement the State policies declared in the Act.

Intellectual Property Rights (“IPR”)

Intellectual property refers to any creation or product of the human mind or intellect. It can be an invention, an original design, a practical application of a good idea, a mark of ownership such as trademark, literary and artistic works, among other things. Intellectual property rights, on the other hand, are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time.

IPR Protection

Vital to the concern of IPR protection is the acceptance of society that intellectual property is an economic asset in which rights can be allocated to. That it is an income stream that needs management, hence, the provision of the rights. As an asset it is a good and/or service with “definite economic value, and with implications for trade and competition in the market.”

By acknowledging the nature of these rights, it is therefore imperative to device policies and programs towards protecting them. Safeguarding the rights of scientists, artists, and other holders of IP encourages more intellectual property creations. This means more inventions, innovations, discoveries, and scientific discussions that will develop our indigenous science and technology. In addition, the creative geniuses of Filipinos in the fields of arts and music are also promoted to emerge and thrive.

Therefore, by protecting the IPRs, we not only develop our economy though the economic revenues generated by the endeavors, but we also support the growth of our culture. IPR protection also allows efficient and effective technology transfers. A country would only be willing to export its technology if it is confident that it will be able to receive the just economic rents. Numerous studies have concluded a direct relationship between IP protection and foreign direct investments. Hence, foreign investment decisions are also dependent in the state of IPR infringements in a country.   The Philippines has long recognized the significance of IPR protection, especially with the country’s relevant pool of talents in the fields of science, information technology, biotechnology, engineering, arts, and music. It has been a member of the Berne Convention (Literary and Artistic Works) since 1951; Paris Convention (Industrial Property), 1965; WIPO Convention, 1980; Rome Convention (Performers, Producers and Phonograms and Broadcasting Organizations), 1984; TRIPS Agreement, 1995; PCT (patents), 2001; WCT (WIPO Copyright Treaty), 2002; and the WPPT (WIPO Performances and Phonograms Treaty) in 2002.

Copyright and rights related to copyright

Copyright law is enshrined in Chapter IV of Republic Act 8293, otherwise known as the Intellectual Property Code of the Philippines.  Copyright maybe defined as a form of intellectual property which protects the rights of authors and creators of literary and artistic works. It refers to the main act in which, in respect of literary and artistic creation, may be made only by the author or with his authorization. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as their content, quality and purpose.

Also protected through copyright and related (sometimes referred to as “neighbouring”) rights are the rights of performers (e.g. actors, singers and musicians), producers of phonograms (sound recordings) and broadcasting organizations. The main social purpose of protection of copyright and related rights is to encourage and reward creative work.

Copyright provides economic rights which refer to the rights of the author or copyright owner to derive financial reward from the use of his works by others and moral rights which refer to the rights of the author to claim authorship of the work (Right of Paternity) and the right to restrain the use of his name with respect to any work not of his own creation or a distorted version of his work.

Copyright covers literary and artistic works, which is understood to include every original work of authorship regardless of artistic or literary merit.

Works covered by copyright include but are not limited to literary works such as novels, poems and plays; newspaper articles; films and television programs; letters; artistic works including paintings, sculptures, drawing and photographs; architecture; computer programs; and advertisements, maps and technical drawings.

Concept of 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.

The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

The fair use of a copyrighted work for criticism, comment, news reporting, teaching including limited number of copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright.

Issue on Copyright: Infringement

Despite numerous efforts to strengthen the foundation of IPR protection, the state of IPR infringements in the country continues to be a serious concern.  Infringement refers to the act of violating copyright owner’s exclusive rights, such as the right to reproduce, distribute, display or perform the copyrighted work, or to make derivative works, without permission from the copyright holder, which is typically a publisher or other business representing or assigned by the work’s creator.

This is the focal point where IPR protection revolves.

Sec 216 of RA 8293 provides:  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.

At present, among the rampant IPR infringement in our country are: 1) optical media piracy, 2) copyright and trademark violations of all types, 3) importation of counterfeit merchandise, 4) software piracy of all types, and 5) bootleg cable television. The aforementioned are the ones that have the immediate attention of the government and private sectors in the Philippines. Meanwhile, the affected industries of these IPR violations are: 1) Software and IT Services, 2) Music and Recording, 3) Movie and Video, 4) Literary and Publishing, and 5) Merchandising/Manufacturing Industries¹.

The actual pursuit

Chasing something so noble, like the protection of one’s right to his literary and artistic works, should be given preferential attention.  Piracy and theft, two common words associated with infringement, deprive the copyright owners of their exclusive right, specifically the right to be associated with their works and gain financial fruits from them.  Present laws were crafted, initially to encourage creators to create more, not just for profit but create for the love of it.  However, a solid framework is yet to be established to give these creators peace of mind in terms of protecting their creative or copyrighted works.

Take for instance this common scenario: “Juan labored for days and nights and years to come up with an original music composition.  However, since he is just a poor boy and knows nothing and no one to have his work published, he yielded to an advice from a friend to approach Mr. Rich who has the machinery to realize his dream.  Unfortunately, Mr. Rich happens to be a bad guy.  In the end, Juan was left with nothing but the fact that he owns the composition.  Gone was his creation along with his dreams just because he does not have the resources and sufficient knowledge on how to protect his property right, a right that is susceptible to exploitation by those with money and in power.  To further fuel the misery of Juan, no immediate recourse can be had with the implementing body whose primary task is to ensure protection of IPR”. Such is the sad plight of Juan whose only desire is for his work to be recognized and be associated with it.

Sad as it is, that’s a fact of life.  The challenge now is on us, who are equipped with appropriate knowledge to start the fight and see the end of the battle.  In the process, the most important key is sustaining the flame, keeping it burning until the goal is met.  At this point, we cannot just simply turn a blind eye on what is happening around us and pretend that everything is all right.  For once, let’s step back and evaluate how far we have gone in our quest for IPR protection.  Yes, laws were enacted and some were even repealed along the journey toward this end, however, the question remains, “Are we there yet?”  When can we possibly see the day that people alike are no longer beset with uncertainty and doubt when prompted with issues on IPR protection?

Laws for these intellectual properties were installed way back year 1947 but if you’ll look at the line of cases decided at present, you only see a handful of them.  If we take this reality positively, this might lead us to conclude of an effective and efficient implementation of our laws, hence no rampant violations are raised.  On the other side, which I think is the more realistic scenario, we can assume that there are so many infringement cases filed and/or unfiled and undecided that the body tasked to oversee the enforcement, the Intellectual Property Office (“IPO”) and its various branches cannot handle due to certain limitations, be it inherent in the organization or brought about by inefficient management and implementation.  If you further scout around, you’ll likely to stumble on so many cries for reform on various aspects of copyright laws.  Why do you think so? Was it because our current laws, despite of the recent amendments, still lack in substance to fully support State’s policy of protecting various intellectual property rights? And if these laws are sufficient, how can we measure their success? How can we validate?  What gets inspected gets respected.  Can we observe the same in our aspiration to push reforms and positive change towards IPR protection?  What can we specifically do to make a mark?

Borrowing the words of Professor Lawrence Lessig, a famous legal scholar, in one of his talks: “we share too little of our culture and when we do share, too much is done illegally”.  With this view, he calls for the enactment of laws that will allow us to share more legally.  I understand fully where these observations emanate.  Frustrations would likely to build up in cases where ideas and creation are bountiful, actors are aplenty, yet few success stories are told.  Much as I would like to understand the intricacies of each function and the involved work procedures, I still cannot reconcile facts from reality and the reports and related data from the provisions of the laws intended to protect IPR.

Let’s not wait for undesirable things to happen to anyone, before we pull our acts together. One relevant eye opener was the struggle of Aaron Swartz that ended to his committing suicide after being charged of thirteen (13) felonies.  His only vision then is to share free information and social justice. Such a waste of life, I must say.  I was a bit shaken how passionately this young guy fought for what he thinks is right.  I can only wish that through Aaron’s self sacrifice, a tiny spark of heroism in our blood may ignite so we could desire to fight for others and aim to win the battle for them.

Having said that, let’s join our hands together and yield to the call for help of our fellowmen.  With one spirit, let us pursue active promotion of protecting copyright through widespread information campaign, discussion of policies, equipping people with sufficient knowledge of the law through various seminars on the subject, strict implementation and monitoring and timely reporting of any violation to proper authorities.   New legislations, not just amendments, must be passed and financial support must be secured to augment better enforcement of the Intellectual Property (“IP”) laws so we can have an efficient and effective IP protection. Let’s discard the attitude of indifference just because we are not directly affected by their implementation. As said, with developed economies due to revenues generated from IPR protection, we also support the growth of our culture.

With legislations and strong political will in the implementation of these laws, no one can fail.  Support would definitely come in handy from all concerned.  After all, who can say “no” to protection? Definitely, not those who stand to be benefited of these copyright reforms.

Trademark Law in the Eyes of a Social Democrat

The Subject

Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines

–          It is an act prescribing the intellectual property code and establishing the intellectual property office, providing for its powers and functions, and for other purposes.

Statutory bases of the Trademark Law

The first trademark law in place in the Philippines was that which Queen Maria Cristina of Spain promulgated on October 26, 1888. This law accorded trademark rights to the person who registered first.

This law was replaced on March 6, 1903 by Act No. 666 or the Trademark and Trade Name Law of the Philippine Islands, which abandoned prior registration in favor of actual use of the mark as the basis for trademark rights. The Philippines, being then a territory of the United States, incorporated into Act 666 principles upon which the U.S. trademark law was founded on.

R. A.166 repealed Act 666 in 1946, and was itself expressly repealed on January 1, 1998 when Republic Act No. 8293 was enacted in compliance with the WTO TRIPS Agreement.

Legal Definition

“Mark” means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.

“Trade name” means the name or designation identifying or distinguishing an enterprise.

Acquiring Trademark Rights

The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (SECTION 122)

The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director. (Section 124.2)

NON-USE OF MARK, WHEN EXCUSED (Section 152):

•  If caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark
• The use of the mark in a form different from the form in which it is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark
• The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class
• The use of a mark by a company related with the registrant or applicant shall inure to the latter’s benefit, and such use shall not affect the validity of such mark or of its registration: Provided, that such mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services, such use shall inure to the benefit of the registrant or applicant.

Certificate of Registration

A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

Term of Protection

A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by the Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register by the Office.

Unregistrable Marks

A mark cannot be registered if it:

• Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
• Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
•  Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;
• (FIRST TO FILE RULE) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
  (i) The same goods or services, or
  (ii) Closely related goods or services, or
  (iii) (CONFUSING SIMILARITY) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
• (UNREGISTERED INTERNATIONALLY WELL-KNOWN MARKS) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
• (REGISTERED WELL-KNOWN MARKS) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;
• (DESCRIPTIVELY MISLEADING) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
• (GENERIC MARKS) Consists exclusively of signs that are generic for the goods or services that they seek to identify;
• (GENERICIDAL MARKS) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
• (DESCRIPTIVE MARKS) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;
• Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
• Consists of color alone, unless defined by a given form; or
• Contrary to public order or morality

Trademark Rights

The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

INTERNATIONALLY WELL-KNOWN TRADEMARK DILUTION  The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use. (n)

Limitations to Trademark Rights

Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.

Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) ARTICLE 17: Exceptions (FAIR USE OF TRADEMARK) Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Trademark Infringement

Any person who shall, without the consent of the owner of the registered mark:

1.  Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

2.  Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.

Remedies

RECOVERY OF DAMAGES. The owner of a registered mark may recover damages from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.

DOUBLE DAMAGES. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled.

Note:  On application of the complainant, the court may impound during the pendency of the action, sales invoices and other documents evidencing sales. (n)

INJUNCTION.  The complainant, upon proper showing, may also be granted injunction.

DESTRUCTION OF INFRINGING MATERIALS.  In any action arising under this Act, in which a violation of any right of the owner of the registered mark is established, the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other means of making the same, shall be delivered up and destroyed.

In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels of commerce.

The Issue

Does the use of competing marks in a corporate sponsored event fall under trademark infringement?

The Stance of a Social Democrat™

Social democrats, who are we?

Social democrats (“socdems”) are a rare political species in the Philippines even though we may be found in rather high altitudes of government in great disproportion to our actual numbers.  We are the people and institutions that have been formed by its social vision and political practice, and by all those who will be willing to learn from the experience and take up the challenge to continue the struggle. I, for one, believe that we should not only confine our thoughts or philosophies in a box.  True, we are governed by rules that are there to ensure order and stability in our society, but we are also propelled to look beyond and see the other side to have a holistic view of a particular scenario.  In the end, what will distinguish us from the rest of the political kinds are our strong sense of involvement in the cause of our fellowmen and the passion of pursuing said cause in the light of social justice and equity³.

My Viewpoint

Nowhere in the aforementioned paragraphs about trademark infringement can you find violation involving use of competing marks in an event sponsored by another institution, which, to the extreme, may appear as the direct competitor of the event organizer. Concept of unfair competition, though not directly associated with the present case, comes into play when any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result. This definition alone is not in four squares as to the issue at hand but I have to expand my horizon to have a better view in assessing the said issue. And as a social democrat, I am guided by the philosophies far reaching from what is in the words of the law.   

Corporate events or activities are part and parcel of the existence of an organization.  It has become a norm that almost, if not all bonafide companies sponsor an event once or twice a year, to celebrate a milestone or to forge unity and oneness among its employees and even business partners, e.g. suppliers.  In contextualizing the scenario and strictly applying the law, nothing has been infringed in this case.  To label the act as a form of unfair competition, thereby extending its meaning, may tend to mislead, rather than inform all concerned.  Trademark law does not thereby cover every unfair act committed in the course of business; it covers only acts characterized by “deception or any other means contrary to good faith” in the passing off of goods and services as those of another who has established goodwill in relation with these goods or services, or any other act calculated to produce the same result.  Further delving into the particulars provided by the subject act on unfair competition, one may easily cite the catch-all phrase that says: a person shall be guilty of unfair competition “who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another.”  Looking for proper application of social justice and equity on this phrase alone, I can surmise that the competing brand is still not liable of unfair competition.  From jurisprudence¹, unfair competition has been defined as the passing off (or palming off) or attempting to pass off upon the public the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. Deception, passing off and fraud upon the public are still the key elements that must be present for unfair competition to exist.  Attendance of a competing brand in a corporate sponsored event does not fall under any of these key elements.  If we will further analyze the case, deception might have been employed as a ticket or vehicle in entering the event, but the effect is not directed to deceiving the public, rather to the event sponsors themselves.  Just imagine the display of emotion later on if the sponsors find out that a competitor graced their event. To the public, it might appear interesting, seeing competing brands rubbing elbows with each other.  No indication of fraud is committed to the public least is annoyance being caught in a brand brawl. But that’s just there is to it.  You cannot make someone liable for something not provided by law.   Going back to the issue at hand, no such transgression of the subject law is committed.

But wait, we can’t just let this behavior remain unnoticed.  On the side of social justice and equity, I find the act of showing up in an event of a competitor “unethical”.  Ethics² examines the rational justification for our moral judgments; it studies what is morally right or wrong, just or unjust.  Ethics also refers to the specific values, standards, rules, and agreements people adopt for conducting their lives.  Judging the aforementioned conduct, there is little or non-justification at all showing in a corporate sponsored event by a competing brand, if not to antagonize the sponsor.  Companies will not set as standards the presence or attendance of their competitors in their event, except for the possible reason of boasting their accomplishments.  Just the same, it is not right to gain exposure from an occasion paid for by your competitor.  This conduct should be restrained, if not totally prohibited, to uphold fair and healthy competition.  At the end of the day, both characters need to exist to maintain balance in a normal business setting.

We live in a society where laws and customs govern the conduct of its inhabitants.  We cannot simply close our eyes to the fact that there are norms that affect our thinking and emotions when confronted with issues like in this case. These well-accepted practices, though not carved in jurisprudence and laws, somehow fill the vacuum that the law cannot penetrate. 

This article is for academic purposes only and is not a substitute for professional advice where the facts and circumstances warrant. The views and opinion expressed above are those of the author, except on the discussion of the contents of the subject law which is lifted from the Act itself.

 

 

Endnotes

¹sc.judiciary.gov.ph/jurisprudence/2008/november2008/154491.htm

²www.tbs-sct.gc.ca

³www.uow.edu.au/~sharonb/STS300/equity/meaning/index.html

[1]en.wikipedia.org/wiki/Trademark

[2] en.wikipedia.org/wiki/Philippine_trademark_law

[3] www.lawphil.net/statutes/repacts/ra1997/ra_8293_1997.html

[4] Trademark Law in a Knotshell: From Caves to Cyberspace
       September 20, 2007
       By: Ferdinand M. Negre

     http://www.iplaw.ph/ip-views/Trademark–Law-From-Caves-to-Cyberspace.html

[5] opinion.inquirer.net/20767/socdem

 

‎Issue on Data Privacy Act of 2012

Foreword

We lived in a fast-paced, technology driven environment where information about anything and anybody comes in handy. One’s privacy can easily be subjected to intrusion by another, either with good intention or with malice.  Privacy might become a thing of the past if personal information is open to public scrutiny.  If this happens, the provisions on our 1987 Constitution on respect of one’s privacy will be defeated. Our legislatures might have anticipated this, hence the birth of the DATA Privacy Act of 2012.

The Act

The law referred to above was approved by President Benigno S. Aquino III on 15 August 2012 titled RA 10173, otherwise known as “Data Privacy Act of 2012.  It aimed to protect the integrity and confidentiality of personal data collected by the Government and the private sector, thus creating a National Privacy Commission (“NPC”) to carry out the provisions of the said law. The NPC’s powers include handling privacy-related complaints, conducting investigations, issuing orders for compliance and issuing temporary or permanent bans on data processing by named Controllers.

Relevant Terminologies

To better appreciate discussions on the subject, below are the common terms used in RA 10173

• Personal information refers to any information whether recorded in a material form or not, from which the identity of an individual is apparent or can be reasonably and directly ascertained by the entity holding the information, or when put together with other information would directly and certainly identify an individual.
• Privileged information refers to any and all forms of data which under the Rules of Court and other pertinent laws constitute privileged communication.
• Sensitive personal information refers to personal information on individual’s race ethnic origin, marital status, age, color, and religious, philosophical or political affiliations health, education, genetic or sexual life or to any proceeding for any offense committed or alleged  to have been committed by such person, the disposal of such proceedings or the sentence of any court in such proceedings those information issued by government agencies peculiar to an individual which includes, but not limited to, social security numbers, previous or current health records, licenses or its denials, suspension or revocation ad tax returns and those specifically established by an executive order of an act of Congress to be kept classified.
• Personal information processor refers to any natural or juridical person qualified to act as such under this Act to whom a personal information controller may outsource the processing of personal data pertaining to a data subject.
• Data subject refers to an individual whose personal information is processed.

The Scope

The Law covers “all types of personal information and to any natural and juridical person involved in personal information processing including those personal information controllers and processors who, although not found or established in the Philippines, use equipment that are located in the Philippines” with exclusions on the following:

 

• Personal information originally collected from residents of foreign jurisdictions and is processed in the Philippines
• Information on government personnel related to position or function
• Information covered in the Secrecy of Bank Deposits Act (Republic Act No. 1405), the Foreign Currency Deposit Act (Republic Act No. 6426), the Credit Information System Act (Republic Act No. 9510),  Anti-Money Laundering Act  (Republic Act No. 9510, and Republic Act No. 9160, as amended) and other applicable laws
• Information about an individual who is or was performing service under contract for a government institution that relates to the services performed
• Information relating to any discretionary benefit of a financial nature such as the granting of a license or permit given by the government to an individual
• Personal information processed for journalistic, artistic, literary or research purposes

 

Purposes of the law

The Act aims to substantially raise the profile of the Philippines in the data privacy (and business in the data processing) sphere by mandating that all personal information controllers comply with a raft of requirements before any such collecting, holding, processing or use may take place. Relative to that is the leveling of our system to international standards of privacy protection that could boost international investors’ confidence particularly in the booming BPO industry that would eventually create more job opportunities to the inhabitants of our country.

The declaration of policy articulated the importance of our right to be let alone more so in these ever changing time and age; that human right to privacy should be safeguarded and that personal information in Information and Communications Technology (ICT) systems in both the government and private sectors are protected and secured. The Act also ensures that we are protected from the threats of the misuse and abuse of personal and sensitive information.

Significant Provisions

The Act commands collectors, holders and processors of personal and sensitive information to ensure strict compliance in the conduct of their activities.  The information must also be stored only as long as it is needed or “for the establishment, exercise or defense of legal claims, or for legitimate business purposes, or as provided by law.” Lack of consent from the data subject will not stop the processing should it be related to the fulfillment of a contract he has previously entered, to comply with legal obligation, in cases of life and health, and to serve the greater interests of the public.  In some cases where the information is found to be incomplete, outdated, false, and/or unlawfully obtained, the data subject can demand for its withdrawal, blocking or removal.

General Data Privacy Principles

In adhering to the principles of transparency, legitimate purpose and proportionality,  processing of personal information is allowed subject to the compliance of this Act and other pertinent laws allowing disclosure of information to the public.  Following are the criteria for a legit gathering, keeping, storing or processing of personal information:

• Specified and legitimate purpose
• Fair and lawful processing
• Accurate, relevant and up to date processing
• Adequate and not excessive relative to the purpose for which they are collected and processed
• Reasonable time of data retention
• Kept in form to permit identification of data subjects

The Accountability Principle

“[e]ach personal information controller is responsible for personal information under its control or custody, including information that has been transferred to a third party for processing, whether domestically or internationally, subject to cross-border arrangement and cooperation.”

Norms for lawful processing of Personal Information

• The Data Subject has given his/her consent, which must be evidenced by written, electronic or recorded means
• The processing is necessary to the execution of a contract with the Data Subject or to fulfill  the Data Subject’s requests prior to entering into the contract
• The processing is necessary for compliance with the legal obligations of the Controller
• The processing is necessary to protect the vital interests of the Data Subject (such as his/her life or health)
• The processing is necessary to respond to national emergencies, or
• The processing is necessary for the purposes of the legitimate interests of the Controller or third party recipients of the personal information, subject to the fundamental rights of the Data Subjects

Rights of Data Subject

As the main character in this ACT, data subject enjoys the following concessions relative to the reasonable access of his personal information:

• His/her personal information which has been processed
• Sources from which the personal information has been obtained
• Names and addresses of the recipients to whom the personal information has been disclosed
• The manner by which the personal information was processed
• Reasons for disclosing the personal information
• Information on any automated processes by which the personal information may be used as the sole basis for decisions which will affect the Data Subject, and
• The date of last access or modification of the personal information.

The Controller/organization is required by the Act to indemnify a person against all such damage that a Data Subject suffers as a result of any inaccurate information or unauthorized use of his/her personal information, This places considerable pressure on Controllers to ensure that the personal information they collect and use is collected and processed in accordance with the Act, the Principles and the consent from the Data Subject, as well as kept accurate, up to date and secured. In case the data subject finds that the information stored in the information system is incomplete, outdated, false, unlawfully obtained, used for unauthorized purposes, or no longer necessary, he can demand its withdrawal, blocking or removal of the subject information. And if the harm caused to him is grave, he can sue the erring parties for whatever damages he may have sustained as a consequence of the mishandling or misuse of his information.

Penalties

To ensure compliance to this act, certain penalties are established.  Severe sanctions include criminal prosecution for first time breaches, no second chances are available.  Furthermore, any breach where 100 or more persons are harmed or affected will be subject to the maximum penalties. If the person who breaches the Act is an alien, he/she shall be deported from the Philippines without further proceedings after serving any prison term and/or paying any penalties levied.  Any combination or series of acts as defined in Sections 25 to 32 shall make the person subject to imprisonment ranging from three (3) years to six (6) years and a fine of not less than One million pesos (Php1,000,000.00) but not more than Five million pesos (Php5,000,000.00).

Extent of Liabilities

Imposition of penalties varies depending on the kind of perpetrators, to wit:

            If the offender:

• is a corporation, partnership or any juridical persons, penalties shall be directed to officers who participated in or through their gross negligence allowed the commission of the crime
• is an alien, he/she shall be deported from the Philippines without further proceedings
• is a public official or employee, aside from the penalties prescribed in this Act, he shall suffer perpetual or temporary absolute disqualification from office, as the case may be

The Implementing body

The law created a National Privacy Commission (“Commission”), an independent body, tasked with the administration of the provisions of this Act and to monitor and ensure compliance against international standards set for data protection.  It comprised of a Privacy Commissioner and two Deputy Privacy Commissioners who are vested with broad powers to implement the law and process complaints from the public. They shall be appointed by the President for a term of three years and may be reappointed for another term of three years. The members of the commission have to be experts in information and communications technology and data privacy. The Commission is empowered to approve codes of conduct and issue cease and desist orders. The Commission may recommend that the Department of Justice prosecute cases and impose penalties, which could include up to six years in prison for the unauthorized processing of sensitive personal information.  Moreover, the Commission is also mandated to draft the implementing rules and regulations (“IRR”) which is expected to provide clear guidelines on dealing with data breach, the establishment of data breach policies and response plans, and the establishment of safety standards, including the execution of confidentiality agreements.  Lastly, the Commission shall ensure that confidentially of collected information is maintained and observed at all times.

The Issue

Is giving out someone else’s number to a third person without the consent of the said person violative of the Data Privacy Act of 2012?

Author’s Point of View

Having discussed the salient features of this Act, let us now take a glance on the issue at hand.  Applying the words of the law, one could easily come up with a logical interpretation in dealing with unauthorized dissemination of personal information.

One’s telephone number, which is peculiar or identifiable to belong to a particular person, falls under the definition of personal information within the purview of this Act. As articulated, anything that when put together with other information would directly and certainly identify a person is regarded as personal information.  One who owns a phone number can be identified as the owner of such especially if the subscription is under his name, though we have no hard and fast rule on this proof of ownership as telecommunication companies allow subscription of a number of lines under one customer, not to forget the prepaid facilities available.  For purposes of discussing this issue, let us assume that ownership of the phone number is vested on a particular person whom we can refer as the Data subject.  Unless due to scarcity of resources or other personal reasons, no two persons own similar or identical phone number.  Telecommunications companies structured a distinct and unique phone numbers to each of its subscribers to establish order in the conduct of their businesses so they could provide a systematic process relative to quality product and excellent service to its customers.  Just imagine taking a subscriber’s complaint with reference to a particular phone number owned by more than one subscriber, not to mention the possibility of that number to be owned by more than one service provider. What a chaotic and disorderly communications facilities we could have experienced.  As a recipient of the said service, no one would like to have his number shared with another person. It is in this context that privacy of information is applicable in this case.

The phone number, as the subject of this case is by nature, susceptible to being arbitrarily circulated.  It may be likened to a virus that once it hits a particular organ in the body, there is no way of stopping its flow.  That’s why, to be classified under personal information, a person’s phone number may be subjected to proper collection, handling, processing, retention and dissemination. As the owner of a particular phone number, a person has the freewill in the disposition of his number, as a matter of right.  Should he want to publicize the same, it’s entirely up to him.  Should he want to use it to some purposes as long as they are not contrary to law, morals, public order or policy, the choice resides with him and him alone.  No policies or laws are allowed to infringe this right, lest one faces grave threats of getting penalized for breach of one’s privacy. 

To be a party to an unauthorized dissemination of personal information on the other hand, is another story.  In dealing with the current issue, qualification sets in.  Applying different scenarios to test if the act is violative of the subject law, one major point to consider is the intent of the party who gives out another person’s number to someone else. If there is an unauthorized disclosure but the intent is good, for instance, in an emergency case where a telephone number is required to deter a crime or to save one’s life, the act of divulging one’s number without the concerned person’s consent maybe justified. It is in this light that intrusion to one’s privacy maybe classified as unintentional.  If later on, an adverse event arises, one may raise the defense of protecting the higher good, which is preservation of life. However, if the incident is silent on the intent and unauthorized disclosure is committed without justifiable reasons, one may face the penalties stipulated in Section 32 of this Act. On the contrary, if the end is mind is to maliciously cause damage or injury to the owner of the number or to people who may be collaterally affected by the ill intent, then, it could easily be deduced that a breach of data privacy took place.  As such, one may seek redress under the provisions of this ACT and correspondingly the penalties provided by the said Act should apply, depending on the gravity of the offense committed.  Again, what is being suppressed in this case is the proliferation of unauthorized sharing of information if it is founded on ill will. Penalties that are imposable in this case are that enshrined in Section 31 of this Act as such offense can be clearly classified as malicious disclosure of personal information. 

Final words

Indeed, handling of personal information, be it privileged or sensitive, must be done with utmost care, for the very reason that invasion of one’s privacy runs counter to the basic rights that an individual possesses under our Constitution.  To avoid getting caught red handed and be subjected to penalties as prescribed by RA 10173, one must uphold the right to be let alone, respect the sanctity of personal information and adhere to policies laid down by our State in the carrying out of its duties to afford protection and general welfare to its people.  That goes without saying, sharing of information is good as long as consent of the concerned parties are sought.  Remember, negligence in the handling of personal information is made punishable under this Act.  Further, personal information handlers should bear in mind that where personal information is concerned, there should be no room for any mistake, intentional or otherwise, that negligence relative to data handling is a grave offense and no amount of reason could stand as a matter of defense.

With the passing of this Act, an individual is vested with rights which he can enforced in case of breach of privacy, i.e. the right to know if his/her personal information is being processed and how it is being used as well as the right to demand removal or destruction of his/her stored personal data from a system unless there is a legal basis for such information to be kept or processed.

I lauded our government for an excellent foresight that paves the way to the existence of a law that protects, not just the interest of its inhabitants but importantly, it breathes life to the mandate of our Constitution on respecting and upholding one’s privacy.

 

This article is for academic purposes only and is not a substitute for professional advice where the facts and circumstances warrant. 

 

Endnotes

 

[1]Republic Act 10173- Data Privacy Act of 2012

www.gov.ph/2012/08/15/republic-act-no-10173

 

[2]Philippine Information Agency

www.pia.gov.ph/news/index.php?article=1781346143986

 

[3]Raul J. Palabrica_Philippine Daily Inquirer_Data Privacy Act of 2012

business.inquirer.net/tag/data-privacy-act

 

[4] Hunton & Williams LLP_ Philippines President Aquino Signs Data Protection Legislation

www.huntonprivacyblog.com/…/philippines-president-aquino-signs-data…

 

[5] Janette Toral

digitalfilipino.com/republic-act-no-10173-data-privacy-act-of-2012

[6] What is RA 10173 of Data Privacy Act of 2012 – Scope and Penalties

gb-sb.blogspot.com/2012/…/what-is-ra-10173-or-data-privacy-act-of.html