5. Copyright Infringement

COPYRIGHT INFRINGEMENT

Any person infringes a right protected under the IP Code when one:

• Directly commits an infringement (direct infringement);
• 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 (vicarious infringement); or
• With knowledge of infringing activity, induces, causes or materially contributes to the infringing conduct of another (contributory infringement). (Sec. 216, IP Code)¹

Also includes the act of 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:

• Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article
• 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
• Trade exhibit of the article in public. (Sec. 217.3, IP Code)²

Copyright Infringement

Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. (Columbia Pictures, Inc. v. Court of Appeals, G.R. No. 110318, 28 August 1996)³

Gravamen of Copyright Infringement

The gravamen of copyright infringement is not merely the unauthorized “manufacturing” of intellectual works but rather the unauthorized performance of any of the acts covered by Sec. 177⁴ (economic rights). Hence, any person who performs any of the acts thereunder without obtaining the copyright owner’s prior consent renders himself civilly and criminally liable for copyright infringement. (Nbi – Microsoft Corporation & Lotus Development Corp v. Hwang, G.R. No. 147043, 21 June 2005)⁵

When Committed

By any person who shall use original literary or artistic works, or derivative works, without the copyright owner’s consent in such a manner as to violate the foregoing copyright or economic rights. For a claim of copyright infringement to prevail, the evidence on record must demonstrate:

• Ownership of a validly copyrighted material by the complainant; and
• Infringement of the copyright by the respondent. (Olaño v. Lim Eng Co, G.R. No. 195835, 14 March 2016)⁶

The Intellectual Property Code is malum prohibitum and prescribes a strict liability for copyright infringement. Good faith, lack of knowledge of the copyright, or lack of intent to infringe is not a defense against copyright infringement. (Abs-Cbn Corporation v. Gozon, G.R. No. 195956, 11 March 2015)⁷

A. Remedies

Any person infringing a right protected under the IP Code⁸ shall be liable:

• To an injunction restraining such infringement.

The court may also order the defendant to desist from an infringement to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods.

• To pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement.

Note: In proving profits, the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims or, in lieu of actual damages and profits, such damages which, to the court, shall appear to be just and shall not be regarded as penalty.

The amount of damages to be awarded shall be doubled against any person who:

• Circumvents effective technological measures; or
• Having reasonable grounds to know that it will induce, enable, facilitate or conceal the infringement, remove or alter any electronic rights management information from a copy of a work
• Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them.
• Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order.
• Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case.

Statutory Damages

The copyright owner may elect, at any time before final judgment is rendered, to recover instead of actual damages and profits, an award of statutory damages for all infringements involved in an action in a sum equivalent to the filing fee of the infringement action but not less than P50,000.00. In awarding statutory damages, the court may consider the following factors:

• The nature and purpose of the infringing act;
• The flagrancy of the infringement;
• Whether the defendant acted in bad faith;
• The need for deterrence;
• Any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement; and
• Any benefit shown to have accrued to the defendant by reason of the infringement. (Sec. 216.1, IP Code)⁹