Infringement: Concepts

It's been a while since I discussed copyrights. Now we go to another essential part, namely, infringement. Infringement covers copyrights, trademarks and patents.

Elements

1. Copyright

a.) A valid copyright of the work infringed

b.) Copying of the protected elements of the work (proven by evidence of direct copying or showing of substantial similarity)

Note that copying doesn't necessarily have to be verbatim; it can even be the "heart" of the work. The following must be proven: that the defendant had access to the work in question (a.k.a. availability) and that there is a substantial similarity between the original and the pirated work. The case of Habana vs. Robles (GR131522, July 19, 1999) puts it: "If so much is taken that the value of the original work is substantially diminished or the labors of the original author are substantially and to an injurious extent appropriated by another."

The prescriptive period is 4 years.

Take note: articles on blogs enjoy copyright protection because copyrights are created the moment the work is made.

2.) Trademarks

a.) The infringed trademark is registered at the IPO, except in the case of a trade name, which doesn't need registration

b.) The trademark/trade name is reproduced, counterfeited, copied or colorably imitated by the infringer

c.) The infringing mark/trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or applied to labels, signs, packages, wrappers, receptacles or advertisements intended to be used upon, or in connection with, such goods, businesses and services

d.) The use/application of the infringing mark/trade name is likely used to cause confusion or mistake or to fool users or others as to the goods/services themselves, the identity of such business or the source/origin of the goods/services

e.) The consent of the owner of the trademark/trade name, or his agent, is lacking

Note, however, that knowledge is essential to demand damages for an infringement of a trademark. No knowledge = no damages. Also, there are 3 limitations to an infringement suit:

a.) A registered mark has no effect against a person who was using the mark in his business/enterprise in good faith before the mark was registered -and his right can only be transferred or assigned together with his business/enterprise or part of it.

b.) An innocent infringer who is engaged solely in the business of printing the mark or other infringing materials can only be enjoined not to make future printing.

c.) An innocent infringer engaged in the business of publishing newspapers, magazines or similar periodicals as well as electronic communication containing infringing advertisements can only be enjoined against future issues -and injunctive relief will not be available if it will delay the delivery of the materials in customary business practice.

The following can file suit for a trademark/trade name infringement:

a.) The owner/assignee of the trademark or the owner/prior user of the trade name

b.) A foreign national, even if not licensed to do business in the Philippines if the mark is registered in the Philippines (or used continuously in commerce in the Philippines, in case of a trade name) and the foreign national's home country extends reciprocal rights to Filipinos or is a member of the Paris Convention

3.) Patents

Patent infringement takes the following forms:

a.) Making, using, offering for sale, selling, or importing a patented product obtained directly or indirectly from a patented process

b.) Using a patented process without the patentee's (patent holder's) consent

To determine the presence of infringement, literal infringement must be proven. If literal infringement exists, the defendant is liable. If there is no literal infringement, the doctrine of equivalents will apply.

A literal infringement is present if one makes, uses or sells an item that contains all the elements of the patent claim. The test is satisfied by either of the following:

a.) An infringing product/process includes each and every essential element of the patent claim (Exactness Rule.) Ergo, the omission of an essential element of a patent claim avoids infringement.

b.) One makes, uses or sells an item that has all the elements of the patent claim plus other elements (Addition Rule.)

Only patentees and their assignees can file a case for infringement of patents; licensees can't sue, but can attack the patent's validity by filing an opposition in the IPO's Bureau of Legal Affairs.

Doctrine of Equivalents

This applies if there is no literal infringement. Where 2 devices do the same work in substantially the same way and accomplish substantially the same result, they are the same, even if they look different. This doctrine must be used with care because it can work against the patentee.

Inequitable Conduct

This is a defense that can be raised against the patentee. The case can be dismissed if the patentee failed to disclose material information -or submitted false information- with intent to deceive.