Sulit.com.ph owned by Naspers of South Africa has lost to Sulit.ph owned by Anton Sheker in their domain dispute litigation. This arbitration legal action was filed with the World Intellectual Property Organization (WIPO) through the Internet Corporation for Assigned Names and Numbers (ICANN) Rules for Uniform Domain Name Dispute Resolution Policy (UDRP).

Not wanting to boast inconsiderately, yours truly represented the victorious party. Modesty aside, I can claim to be the first lawyer to successfully defend a domain dispute for Philippine domains against a foreign corporation.

For details on the case, you may obtain a copy of the decision HERE.

Latest News from the Web

Globe Telecom was too fast to sign?

The leading post paid mobile phone company slipped up in their creative marketing. They labelled their new mobile internet device with a famous supercar manufacturer. The Italian car maker has sent a cease and desist notice. Click HERE for more.

U.S. Record companies are about to cry

A tiny provision in the U.S. Copyright law has provided a source of justice to recording artists. We have heard that these recording companies have bled their artists dry with the exploitation of the songs. Well, now it’s payback time! Click HERE for more.

Lamebook is now open!

For those with little connections or having difficulty with social networking, a parody site has settled a lawsuit wherein Lamebook.com will continue to operate. I will accept your friend request if you sign up. Click HERE for more.

Apple started the robotic age

In the never ending battle of the smartphone operating systems, the computer company named after a fruit has claimed that the Android system was invented by a former employee that jumped ship. Whatever happens, time to sell your Nokia. Click HERE for more.

Thank you.

——————————-

Rod Vera is an attorney practicing intellectual property law. You may contact him at Phone: +63.2.829.3102; FAX: +63.2.820.1193; E-Mail: rpv@vera-iplaw.com

Licensing

Roughly, this is a contractual agreement wherein an owner of an intellectual property whether patent, copyright or trademark, allows a second party use of the IP on a temporary basis. Usually, the compensation for the temporary use is in the form of royalties.

Patents

The IP Code provides the form and substance of a license agreement. There are prohibited clauses (Sec. 87), mandatory provisions (Sec. 88) and must be registered with the Documentation, Information and Technology Transfer Bureau of the DTI (Sec. 92).

Trademarks

License agreements must provide for quality control or else it won’t be valid. They have to be filed with the IPO and shall remain confidential. Failure to file will make the license agreement without effect to third persons. (Sec. 150).

Copyrights

Moral rights are retained by the author irrespective of a license agreement (Sec. 193). The limitations on copyright are actually valid licenses obtained without prior consent (Secs. 184 to 190).

Latest News from the Web

Could this be a movie too?

Twitter has been sued for patent infringement. Apparently, somebody already obtained a patent for “a method and system for creating an interactive virtual community of famous people” That means you and I can’t be part of that social network site, unless you are more famous than me.   http://bit.ly/i07su5

It ain’t the Bratz Pack

Mattel has been granted a second trial against MGA Entertainment. The former already won a $100 million judgement but was overturned on appeal. Spare your daughters, buy locally made dolls. http://bloom.bg/gMfF5E

Newspaper to grant scholarhips?

The student riots in England produced income for a student photographer. The student who previously sold a picture to Skynews has accused the Daily Mail of using the same photo without authorization. He must be taking a business course.   http://bit.ly/hH7Qln

Taking the fight from the ring to the Courts

Owners of the UFC have filed a lawsuit against a company what offered live streaming of the former’s broadcasts. I wonder when they will take off their gloves…   http://bit.ly/hMqYOB

——————————-

Rod Vera is an attorney practicing intellectual property law. You may contact him at Phone: +63.2.829.3102; FAX: +63.2.820.1193; E-Mail: rpv@vera-iplaw.com

Sec. 22 Non-Patentable Inventions

The following shall be excluded from patent protection:

x x x x

22.1. Discoveries, scientific theories and mathematical methods;

22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

Jurisprudence on the matter (U.S. Case)

Bilski v. Kappos, 561 U.S. ____, June 29, 2010 (Link to Case)

An application for patent that seeks protection for a claimed invention that explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes denied by the Patent Office. The US Supreme Court affirmed the Patent Office to deny the patent. The latter initially denied the application on the basis of the machine-or-transformation test which determines a process as (1) tied to a particular machine or apparatus; (2) it transforms a particular article into a different state or thing. Since patent was considered a business method, application was denied. On final appeal to the US Supreme Court, the application was still denied but held that the machine-or-transformation test not exclusive to determine patentability. The test is only a useful and investigative tool.

The Supreme Court said that the law was not written to remain stagnant. Rather than disapprove that “business methods” are patentable, the Court decided to affirm the denial of the patent application because the “process” involved abstract ideas. The Court also categorically stated that this particular decision is not meant to define what a patentable process is, but rather to adapt a new construction of the law in the light of the current age.  Hence, the Court did not make an absolute prohibition on the patentability of business methods.

Latest News from the Web

Praying at breakfast could be infringement

The International House of Pancakes (IHOP) is suing the International House of Prayer (IHOP) of Kansas City. Citing trademark infringement and dilution as the former’s causes of action, the pancake restaurant was the prayer group to kneel to them.  http://bit.ly/9Wratn

Warren Buffet is the new ice Queen

Dairy Queen has filed an injunction suit against Yogubliz Inc. to halt the sales of Blizz Frozen Yogurt and Blizzberry products. Dairy Queen says that the aforementioned products will create confusion with their Blizzard Ice Cream. And just in time for the cold winter approaching.  http://bit.ly/9UNPtU

Photographic Porn Star she is not

A photographer (now 21) has successfully sued an adult film company for misusing her self portrait photograph (taken when she was 14!) on the cover of an adult film. She discovered the said video three years ago, titled “Body Magic”. What was she doing in an adult shop when she saw the video?  http://bit.ly/azJ6IW

——————————-

Rod Vera is an attorney practicing intellectual property law. You may contact him at Phone: +63.2.829.3102; FAX: +63.2.820.1193; E-Mail: rpv@vera-iplaw.com

Sec. 22 Non-Patentable Inventions

The following shall be excluded from patent protection:

x x x x

22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.

Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection.

Jurisprudence on the matter (U.S. Case)

Diamond v. Chakrabarty, 447 U.S. 206, (1980)

The U.S. Supreme Court declared that a patent may be declared on a process of producing bacteria as well a patent/invention on live, human-made microorganism. The bacteria were considered as a product of human ingenuity and it was a non-naturally occurring manufacture. Hence, the U.S. grants patents on life created in a laboratory.

Latest News from the Web

Glee is becoming glum

Finally some sadness in that happy show “Glee”. The cast feels they are not getting enough. They won’t be singing as happy as in the first season.  http://bit.ly/dq8vQ4

The Earl of Sandwich is rolling in his grave for not getting a trademark

A man with initials “JH” of the restaurant group “BLT” is suing Bistro owner and former star chef Laurent Tourondel for opening another restaurant, LT Burger.  http://bit.ly/cdweKc

Update: Legal “mind tricks” actually work

From the fear of being sued, a company has changed their name to avoid any legal entanglements from a potential lawsuit. Light bulb moment: Jedi Law Academy? Applicants welcome. http://bit.ly/cQhNLO

Your Poker Face won’t work me, Baby.

Artists Lady Gaga and Justin Bieber have sent “Cease and Desist” notices to a comic book publication. They that comic book would be trademark infringement. What bothers me is that Gaga and Justin have the same lawyer. Who knew….   http://bit.ly/bXWjuM

Sec. 165. Trade Names or Business Names

165.1. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name.

165.2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.

(b) In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Jurisprudence on the matter

Coffee Partners, Inc. vs. San Francisco Coffee Roastery Inc., G.R. No. 169504, March 3, 2010

The Supreme Court declared that trade names are protected even without registration as a trademark. Also, the Supreme Court stated that corporations have an exclusive right to the use of its name. Any use by a third party even with a slight variation could be tainted with fraud because such “riding on” use could induce persons to believe that they are dealing with the corporation which has given a reputation to the name.

Latest News from the Web

“This isn’t the company you are looking for”

George Lucas, the big honcho of the Star Wars franchise is locking in on Jedi Mind tricks. Does he need to see my identification?  http://tcrn.ch/95NVpy

Can anyone monopolize “book”?

The trendy networking site, Facebook (Are you in my list of friends?)  is trying to stop “Teachbook”. Well, there goes my non-violence advocacy idea down the drain… “Peacebook”. http://huff.to/cO73Fq

Go after the hands that feed them

Since the major film studios can’t stop piratical downloading, they might was well go after how they make money since they don’t charge their users. http://bit.ly/diUFpR

You are now an infringer when you buy “replacement ink”

In some strange twisting of the law, Lexmark is suing companies making replacement ink cartridges. How come they didn’t sue when we used replacement ribbon during the dot matrix days?  http://bit.ly/dmbM2U

I can’t get the fine points about the local music industry because I have not been in it that long to make an effective observation. So, I shall try to present both sides.

First, E.O. 255 is not a law. It is an administrative order. Before the 1987 Constitution, Pres. Cory was a revolutionary president. This meant that her issuances were actual laws themselves. No one will admit that for about a year after the 1986 Edsa I, Cory was an actual dictator in the sense that she was the president and congress at the same time. An example of this is the Family Code of the Philippines. Since E.O. 255 was promulgated when the 1987 Constitution was in effect, it can’t be considered a law.

Since it is not a law, then is it a toothless tiger? Not necessarily. Treat it was policy statement to the National Telecommunications Commission (NTC), the regulatory body for the radio stations. Now, here is where the teeth get sharper. All radio stations were created under a legislative franchise. Thus, its life is owed to the government. Part of the franchise law governing their creation is the stipulation that they must follow all orders from the NTC. Sharp enough for you? Let me get the sharpener.

Radio stations don’t have a right, they only have the privilege of being a radio station by virtue of a government act. They are not free to conduct commerce in a manner that is wholly motivating for them alone. If the NTC says something, they have to listen and follow. If not, license revoked, dead air to follow. What the recourse? Don’t pull the teeth, but dull it.

All laws, executive orders, administrative orders, etc., have to follow a basic formula. It must be just (not necessarily fair) and the process of their creation must have no flaws. And one essential maxim is kept unwritten, the ends NEVER justifies the means. That’s how laws and other issuances are struck down. Whatever the intentions are, no matter how just, if the execution of those intentions violate the Constitution, the law is stricken off.

Now, is E.O. 255 a valid order or not? Let’s look at the implementation. It commands that radio stations with programs that have a musical format must play 4 Filipino songs an hour. So, it is the radio programs with musical format that is being regulated, not the whole radio station. In today’s radio industry, morning talk shows are abundant. They don’t have a musical format, hence they may be exempted from EO255. Are four (4) Filipino songs played in an hour hard to do? Of course not, electronically that is. So, from these alone, the implementation seems sound.

A counter argument is that it is hard to find quality Filipino songs. Well, quality is totally subjective except of course if the quality is about the sound recording. The EO does not dictate the choice of the songs. Nor does EO tell what type of song or which artist to play. As long as it was written by a Filipino, sung in any language, then it qualifies. The radio stations or more particularly the DJs know which songs are good for them and their target audience.

One of the intentions of this E.O. is to ensure the growth of the local music industry. Back in 1987, the growth could be measured in album sales. Today, that measurement doesn’t play anymore (pun intended).  How will this E.O. today ensure growth? Musicians today know the reality of piratical downloading and unauthorized copying. They are changing their business models on how to be economically feasible. But since it is music, they must be heard. And radio is free. Their target audience have a chance to hear them for free. Not everyone has internet access, not everyone has an iPod or MP3 player that can be filled up at your local tiangge. Radio is still out there.

If the musicians are heard, they will become more popular. More popular means more people want to hear them and maybe even see them. Musicians today know that their only chance to earn is from concerts or local gigs. Nothing beats live music.

In that skewed line of logic, maybe the E.O. can be defended. Our local music industry needs help. Is it wrong to look back an old policy directive to help everyone? Besides, for every law there are always exceptions and loopholes. And that’s how lawyers make money. In the end, it’s a win-win situation.

Famous trademarks abroad and Reciprocity (IP Code of the Philippines)

Sec. 3. International Conventions and Reciprocity

Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.

Supreme Court Rulings of aforementioned Copyright provision

Sehwani vs. In-N-Out Burger, G.R. No. 171053, October 15, 2007

Trademarks from U.S. companies are protected in the Philippines even if the U.S. Company has no presence here and that their trademarks are not registered in the Philippines. Based on the international treaties which the Philippines is a party to, the Paris Convention and the WIPO Joint Recommendation have the force and effect of law, for under Section 2, Article II of the Constitution, the Philippines adopts the generally accepted principles of international law as part of the law of the land.  To rule otherwise would be to defeat the equitable consideration that no one other than the owner of the well-known mark shall reap the fruits of an honestly established goodwill.

Latest News from the Web

YouTube now rules the airwaves

Viacom (a multimedia conglomerate) has lost their $1 billion copyright infringement against YouTube. Apparently, the latter is saved from being sued if any flagged videos are removed. But of course, the damage has been done.   MORE

Playboy is suing a rapper

Yes, the popular “artistic” magazine publisher is suing a rap artist for sampling their songs without authorization. Is Hugh Hefner a singer now? MORE

Trademark Cybersquatting

Two firms in the “adult” industry are in tussle for trademark infringement. As it turns out,  their “dot.com” address is creating unfair competition and dilution. This is not for the soft-hearted. MORE

If you can’t get enough of the Twilight saga……

Summit Entertainment is milking their franchise to the max. No one can suck out their profits. They will bleed others who benefit from them. The infringers bit off more than they can chew. MORE

The terms of use will be interpreted as a contract of adhesion. It’s a take it or leave it situation. We really have no choice in the matter. Here is the provision that is bugging everyone who wants to be tagged in an album:

“You are solely responsible for the User Content that you Post on or through the Facebook Service. You hereby grant Facebook an irrevocable, perpetual, non-exclusive, transferable, fully paid, worldwide license (with the right to sublicense) to (a) use, copy, publish, stream, store, retain, publicly perform or display, transmit, scan, reformat, modify, edit, frame, translate, excerpt, adapt, create derivative works and distribute (through multiple tiers), any User Content you (i) Post….”

Apparently, from the news reports I have read, the old terms of use under the same section had this line:

“You may remove your User Content from the Site at any time. If you choose to remove your User Content, the license granted above will automatically expire, however you acknowledge that the Company may retain archived copies of your User Content.”

What’s the difference? A whole lot. Anything posted or uploaded on Facebook is theirs and theirs forever. The license (or permission) you give to Facebook allows them to use in whatever manner and for whatever purpose (including for profit) all your photos, links, poems and 25 random things about yourself! All IP rights that you thought you have are now in the hands of a 19 year old heavy metal loving techie working at the Facebook’s customer service center who might post it in his myspace page.

What can be done about it? Apparently nothing. If you complain or make too much noise, this can happen:

“We may terminate your account on the Facebook Service, delete your profile and any User Content you have Posted on or through the Facebook Service, and/or prohibit you from using or accessing the Facebook Service (or any portion thereof) for any or no reason, at any time in our sole discretion, with or without notice.”

The only way to protect yourself is to be careful of what you post or upload. If you know that Facebook can exploit you and your information, tell your mom not to upload your high school graduation picture with that awful hair. Facebook might use it in the Before and After section.

——————–

Rod Vera is an attorney practicing intellectual property law. You may contact him at Phone: +63.2.829-1145; FAX: +63.2.820.1145; E-Mail: rpv@vera-iplaw.com

I am talking about the “producer”. For those who not familiar and to save you a trip to wikipedia, the aforementioned website defines a music producer as person in the music industry who has many roles, among them controlling the recording sessions, coaching and guiding the musicians, organizing and scheduling production budget and resources, and supervising the recording, mixing and mastering processes. The music producer could, in some cases, be compared to the film director in that the producer’s job is to create, shape and mold a piece of music in accordance with their vision for the album. Take note, the aspect of ownership is not mentioned. 

The IP Code has defined the producer as the person, or the legal entity, who or which takes the initiative and has the responsibility for the first fixation of the sounds of a performance or other sounds, or the representation of sounds. Under the same IP Code, the producer has control or authority over a band/artist’s broadcasting and public performance rights, the right over the reproduction over the songs as well as the first public distribution of the original and copies of the songs of the band or artist. There are more, but you will be bored already.

Simply put, the law has placed the ownership rights of a song by an artist to his producer. What does this imply? We all know that Quincy Jones was the producer for the Thriller album of Michael Jackson. If that album was made in the Philippines under our existing law, Quincy Jones owns the songs and can prevent Michael singing his own songs. Hence, since he is listed at the “producer” of the album, he would practically own the music. What the law, I believe is trying to imply is the “executive producer” of an album. But the law didn’t place the prefix “executive”. Therefore, any actual “producer” as defined by musical standards would have ownership rights as defined by law.

So, before signing the dotted line in a music contract, make sure all titles are defined properly and clearly indicated. Otherwise, all might be lost….

———————

Rod Vera is an attorney practicing intellectual property law. You may contact him at Phone: +63.2.829-1145; FAX: +63.2.820.1145; E-Mail: rpv@vera-iplaw.com