Sunday, May 19, 2013

ACCURACY OF THE GOVERNMENT’S EXPLANATION TO THE AMENDMENTS OF INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (RA NO. 8293) AS PROVIDED BY RA 10172


President Benigno S. Aquino III recently signed into law Republic Act No. 10172 that amends certain provision of The Intellectual Property Code of the Philippines (RA 8293). “The government did it while everyone was riveted to news from North Borneo. What is it with lawmaking and lack of consultation in the Philippines? Amendments to the Intellectual Property Rights Law (Republic Act 10372) were made in mid-February and signed by President Benigno Simeon Cojuangco Aquino III on Feb. 28, while the stand-off at Lahad Datu in North Borneo was hitting a tension-filled peak.”[i]

The amendments made by the law to the intellectual property code raised issues that had alarmed Filipinos to question such amendments. Questions have been raised as how these amendments would affect the rights to gather information in books and even in the web. While these issues are raised, the government presented questions that are mostly asked in the web and answered it according to the amendments of the newly signed law. This paper, then, aims to discuss the accuracy of these questions, and if it considers or presents a valid argument as presented by the intellectual property code of the Philippines and as to its amendments provided in Republic Act No. 10172.


Am I still allowed to import books, DVDs and CDs from abroad?

The Intellectual Property Code of the Philippines or the Republic Act No. 8293 provided the provision in which the importation for personal purposes may be permitted. RA 8293 Section 190.1[ii] provides that importation of a copy of a work may be done without the authorization of the author if it complies with the circumstances, which the law provides. The question then lies if such importation still, may be done, provided that Section 14 of the RA 10372[iii] indicates the deletion of the entirety of section 190.1 and 190.2 of the RA 8293. The answer of the government to such issue is that, it may still be done provided that such importation does not include pirated or infringed materials, and that as long as it is legally purchased, such can be done but is subject to Customs regulations.

The accuracy of the answer of the government to such issue is questionable, because the deletion of the Section 190.1 and 190.2 of RA 8293 provided in RA 10172 says otherwise. The removal of the original limitation of three (3) copies as provided in 190.1 (a) (iii) is applicable only to the use of any religious, charitable, or educational society or institution, but when it is for individual purpose, the limitation provided under 190.1 (a)(i) is not more than one (1) copy at one time.

There is no question if such importation of books, DVDs and CDs from abroad because even if RA 8279 is not amended, it still can be done. But the explanation of the government had given gray areas in which it tries to imply that there is no limitation of the copies that can be imported. Although it was mentioned that it is still subject to the custom regulations, it still must be specified that the personal use or purpose must be considered and not merely mentioning that the removal of three (3) allowable copies is deleted.

The removal of section 190.2 is also being questioned because it provides for the prohibition of acts that would violate the rights of owner the copyright and for violation of the protection of such rights. It has been provided by law that violation of such rights would consist infringement, and one of such is the importation of the materials, this then would conclude of whether it diminishes the rights of owner of the copyright or, it merely paved way for the extension of limitation of importation, thus giving more access to the public.


Is the reproduction of copyrighted material for personal purposes punishable by
this law?


RA 10172 amended the definition of ‘reproduction’; it provides that it is the making of one or more copies, temporary or permanent, in whole or in part without prejudice to the provisions of section 185 that is the fair use of a copyrighted work. And as provided by RA 8293, reproduction is one of the copyright or economic rights that mainly are protected by the law.

The government tried to explain that if you transfer music from a lawfully acquired CD into a computer, then download it to a portable device for personal use, then you didn’t commit infringement. It is proper to maintain that, reproduction in order to be in the nature of fair use of copyrighted work must consider the effect of the use upon the potential market for or value of the copyrighted work. We can say then that, if we try to reproduce the copyrighted work, it would then affect the marketability of the work. The government says that, if we make multiple copies and sell such, or make a profit out of it, it will be considered as infringement, which the law strongly prohibits.

I argue then, that if for example, we make multiple copies but we distribute them for free, for non-profit purposes, would it still be considered as infringement?

I insist that it is in the nature of being an infringement, for it diminishes the rights of the owner of the copyrights to the marketability of the work. In RA 8293 Section 185.1[iv], it provides the factors or guide in which how to determine if the use is in the nature of being a ‘fair use of a copyrighted work’. The use of a work for research, scholarship, classroom use and similar purpose would not be considered as an infringement. The law does not specify the profitability or not of reproduction, thus, whether a person makes reproduction out of profit or not, I believe it still would be considered an infringement.


Is the possession of, for example, a music file procured through an infringing activity a violation of this law?


Section 217.3[v] of the Intellectual Property Code of the Philippines provides that knowledge of having an infringing copy is necessary in order to become criminally liable to such act.

The government explains that to become liable, power and ability to control the person committing the infringement is also necessary to become criminally liable. Under section 217.3, it is not necessary and as long as there is knowledge that the work you possess is the product of an infringement, it can be used against a person and become criminally responsible.

Section 218.1(c), which is amended by RA 10172, provides that copy of the infringing work may become prima facie evidence that may be presented by the owner of the copyrighted work against a person but it is until the contrary is proved. It is then important to note, that the mere possession of a copyrighted work, known to be infringed, becomes prima facie evidence against her, and until it is proved that knowledge of having an infringed copy is absent, it is may still be subjected to liability.



Is jailbreaking or rooting* my phone or device illegal?

According to the Intellectual Property Office of the Philippines, “Jailbreaking is not a crime under the amendment (RA 10172). Jailbreaking or any other form of circumvention of technological measures (as defined in sec. 6 of the amendments), are not crimes in themselves. The amendments require that you first be found guilty of copyright infringement, and that is only the time that jailbreaking or circumvention of technological measures increases the imposable penalty and damages that can be awarded by the courts. You still need to be found guilty of copyright infringement, as jailbreaking is merely an aggravating circumstance that increases the penalty.”

I believe that the question would be best answered if, whether or not jailbreaking or rooting is considered infringement under the Intellectual Property Code. The code indicates that infringement would be the violation of the copyright or economic rights provided under section 17 of the code.

Jailbreaking (for iOS) or rooting (for Android) as the government has provided is the act of removing the vendor imposed limitations of tablets, mobile devices and other electronic gadgets. It is also explained that it may be in violation of the system’s terms of use. If jailbreaking or rooting is then defined as it is explained, it would not then be considered as an infringement as provided by the Intellectual Property Code because it is not considered to be a violation of the rights of the copyright or economic rights enumerated in section 177 of RA 8293[vi].

The controversial amendment provided in RA 10172 is the inclusion of a subsection 177.12, which contains the definition of “technological measure”; in which jailbreaking, or rooting would then be considered. The government explains that it is only punishable under the amendment if there is a copyright infringement and that would be explained as only be considered as an aggravating circumstance to the infringement liability.

As provided in section 23 of the RA 10172[vii], the circumvention of the effective technological measure is considered an aggravating circumstance, as it provides the maximum penalty of imprisonment and fine would be imposed if infringement were done through the use of such measure. In short, the amendment does not punish the act of jailbreaking or rooting itself but it is only punishable if the act comes with the copyright infringement as provided by section 177 of the RA 8293.

Are mall owners liable for infringement activities of their tenants?

“Section 22 of the Republic Act 10172 amends section 216 of the intellectual property code which provides that there are two types of copyright infringement liability – direct and secondary. An infringement takes place when the use of a protected work of a copyright owner goes beyond limitations, to include fair use provisions that are outlined in the law.” In short, the violators of infringement has been expanded, hence, the extent of person having liability on the acts prohibited by the law also extends to those who benefits and acts with knowledge to such activity.

The question is to be best answered when it is to be qualified. “In the case of a mall owner with a tenant who is selling pirated movies, the Philippine IP office has explained that for it to be secondary liable, the mall owner must (1) benefit the infringing activity; (2) must have been given a notice of the infringing activity and a grace period to address the complaint; and (3) has the right and ability to control the activities of the tenant of who is doing the infringement.”[viii]

To become secondarily liable to such act, the complainant must provide evidence to support the circumstances provided by the amended section 216 of the intellectual property code. It does not automatically provides liability to the mall owners, but the complainant has the burden of proof as to the liability of the mall owner in terms of having the benefit, notice and control in the activity.



Is it legal for the Intellectual Property Office (IPO) to visit businesses to conduct searches based on reports, information, and complaints?

Section 2 of the RA 10172[ix] amends the section 7 of RA 8273[x] which adds the jurisdiction of the Intellectual Property Office to conduct visits during reasonable hours to establishments and business engaging in activities violating intellectual property rights based on report, information or complaint received by the office. The question lies whether or not such provision is constitutional or not.

The government explains that it is constitutional, because it still should follow the criminal procedure of the application of search warrant before conduct searches based on information, information and complaints. Probable cause, then, is still necessary to issue search warrant, thus the right to due process is still guarded by the provision. “Jurisprudence dictates that probable cause, as a condition for the issuance of a search warrant, is such reasons supported by facts and circumstances as will warrant a cautious man to believe that his action and the means taken in prosecuting it are legally just and proper. Probable cause requires facts and circumstances that would lead a reasonable man to believe that an offense has been committed and that the objects sought in connection with that offense are in the place to be searched.”[xi]

In terms of customs regulations in search and seizures in criminal procedure, it is a basic principle that custom search and seizure is one of the exceptions in the application for the search warrant. But of course, in lieu of the powers designated to such office.


Philippine lawmakers have been incorporating the effects of technological modernization in the country. And through these developments, Filipino citizens react to such in different point. The government’s role in protecting intellectual property should be properly defined.  “Intellectual property, very broadly, means the legal rights which result from intellectual activity in the industrial, scientific, literary and artistic fields. Countries have laws to protect intellectual property for two main reasons. One is to give statutory expression to the moral and economic rights of creators in their creations and the rights of the public in access to those creations. The second is to promote, as a deliberate act of Government policy, creativity and the dissemination and application of its results and to encourage fair-trading which would contribute to economic and social development.” [xii] In lieu to such issues, the line between the laws for protection of intellectual property rights and right of every person for access to information should be properly ascertained and defined.





[i]Anonas-Carpio, Alma. While we were not looking: IP law amendments. Retrieved May 16, 2013, from http://www.philippinegraphic.ph/index.php/tech/112-while-we-were-not-looking-ip-law-amendments
[ii] Section 190. Importation for Personal Purposes. - 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).

[iii] SEC. 14. Sections 190.1. and 190.2. of Republic Act No. 8293 are deleted in their entirety
[iv] 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.
[v] 217.3. Any person who at the time when copyright subsists in a work has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of:
(a) Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article;
(b) Distributing the article for purpose of trade, or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work; or
(c) Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. (Sec. 29, P.D. No. 49a)

[vi] Section 177. Copyright or Economic Rights. - Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:
177.1. Reproduction of the work or substantial portion of the work;
177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; (n)
177.5. Public display of the original or a copy of the work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the work. (Sec. 5, P. D. No. 49a)

[vii] SEC. 23. Section 217.2. of Republic Act No. 8293 hereby amended to read as follows:
“217.2. In determining the number of years of imprisonment and the amount of fine, the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement: Provided, That the respective maximum penalty stated in Section 217.1. (a), (b) and (c) herein for the first, second, third and subsequent offense, shall be imposed when the infringement is committed by:
“(a) The circumvention of effective technological measures;
“(b) The removal or alteration of any electronic rights management information from a copy of a work, sound recording, or fixation of a performance, by a person, knowingly and without authority; or
“(c) The distribution, importation for distribution, broadcast, or communication to the public of works or copies of works, by a person without authority, knowing that electronic rights management information has been removed or altered without authority.”

[viii] Estavillo, Maricel (March 7, 2013). Copyright infringement under the new IP law. Retrieved May 19,2013, from http://www.interaksyon.com/infotech/copyright-infringement-under-the-new-ip-law


[ix] SEC. 2. Section 7 of Republic Act No. 8293 is hereby amended to read as follows:
“SEC. 7. The Director General and Deputies Director General.
“x x x
“(b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, the Director of Copyright and Other Related Rights, and the Director of the Documentation, Information and Technology Transfer Bureau. The decisions of the Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, the Director of Trademarks and the Director of Copyright and Other Related Rights shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of the Director of the Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry;
“(c) Undertake enforcement functions supported by concerned agencies such as the Philippine National Police, the National Bureau of Investigation, the Bureau of Customs, the Optical Media Board, and the local government units, among others;
“(d) Conduct visits during reasonable hours to establishments and businesses engaging in activities violating intellectual property rights and provisions of this Act based on report, information or complaint received by the office; and
“(e) Such other functions in furtherance of protecting IP rights and objectives of this Act.”

[x] Section 7. The Director General and Deputies Director General. - 7.1. Functions. - The Director General shall exercise the following powers and functions:
a) Manage and direct all functions and activities of the Office, including the promulgation of rules and regulations to implement the objectives, policies, plans, programs and projects of the Office: Provided, That in the exercise of the authority to propose policies and standards in relation to the following: (1) the effective, efficient, and economical operations of the Office requiring statutory enactment; (2) coordination with other agencies of government in relation to the enforcement of intellectual property rights; (3) the recognition of attorneys, agents, or other persons representing applicants or other parties before the Office; and (4) the establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or mark or a collective mark, geographic indication and other marks of ownership, and for all other services performed and materials furnished by the Office, the Director General shall be subject to the supervision of the Secretary of Trade and Industry;
b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, and the Director of the Documentation, Information and Technology Transfer Bureau. The decisions of the Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, and the Director of Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of the Director of Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry; and
c) Exercise original jurisdiction to resolve disputes relating to the terms of a license involving the author's right to public performance or other communication of his work. The decisions of the Director General in these cases shall be appealable to the Secretary of Trade and Industry.

[xi] Coca-Cola Bottlers, Phils., Inc. (CCBPI) v. Gomez, G.R. No. 154491, November14,2008.

[xii] WIPO (2004). Citing Websites. In  Intellectual Property Handbook: Policy, Law and Use. Retrieved May 19, 2013 from http://www.wipo.int/export/sites/www/aboutip/en/iprm/pdf/ch1.pdf

DISCLAIMER:  Please note that this article is for general information and educational purposes only. All articles contained here in this website are solely those of the author and do not necessarily represent the views and opinions of any member of the bar, my school or any other organization that I may or may not be affiliated with or connected to. In accordance with the law, this is not intended to constitute legal advice, and nothing in the articles or comments should be taken as such.

1 comment:

  1. I am very much enlightened with your blog especially your conclusion. Indeed, there must be laws to protect the welfare of the populace AND it must cope with the technological advancements, however, these laws that are intended to protect the people must be molded into a law that will do more benefit that harm, the way I see it today is that, yes, it protects the rights of the people but it is to rigid that it is impossible not to violate. Just like you, I call for the clear and definite line when it comes to our laws.

    ReplyDelete