PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
10. Remedies 10.1 Injunctive Remedies
sidered an infringement of copyright. To determine whether the use of a work is fair, the following factors are considered: • the purpose and character of the use, including whether such use is of a commercial nature or is • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and • the effect of the use upon the potential market for or value of the copyrighted work. The specific statutory fair use provisions are listed in Chapter IV of the IP Code under Section 184, while additional limitations are listed in Sections 186 to 189. Philippine jurisprudence recognises parodies as a permissible exception to copyright infringement, pro - vided that they conform to the factors constituting fair use and are deemed “transformative”, which means that they add new elements without damaging the original work. for non-profit educational purposes; • the nature of the copyrighted work; Though it appears that copyright is considered a limi - tation to free speech, its effect is arguably negligible since copyright protects only the expression or form and not the idea. Similarly, the validity of trade mark rights against free speech has not been resolved, but limitations exist under the IP Code that allow the use of a registered mark for information and identification only. 9.3 Exhaustion The IP Code is silent as to the trade mark owner’s right to prevent the re-sale of authentic goods by third parties. It is generally understood that infringement applies only to non-genuine goods. Similarly, the IP Code gives a copyright owner exclu - sive control over only the first public distribution of their work and copies thereof. After the first lawful sale or transfer, the purchaser can resell, donate or give away the work, in line with the first-sale or exhaustion doctrine.
In cases involving the violation of intellectual property rights, a complainant may seek a temporary restrain - ing order (TRO) or preliminary injunction to prevent fur - ther infringement or damage while the case is ongoing by establishing any of the following: • the applicant is entitled to the relief demanded, and the whole or part of such relief consists in restrain - ing the commission or continuance of the act(s) complained of, or in requiring the performance of an act(s) either for a limited period or perpetually; • the commission, continuance or non-performance of the act(s) complained of during the litigation would probably cause injustice to the applicant; or • a party is doing, threatening or attempting to do an act in violation of the rights of the applicant, which tends to render the judgment ineffectual. With regard to site blocking, a copyright owner or right holder or its duly authorised representative may file an application with the IPOPHL Enforcement Office for the issuance of a Request to an ISP to block or disable access against a pirate website. 10.2 Monetary Remedies Trade Mark Actual or constructive notice of the trade mark’s reg - istration is required in order to obtain damages from an infringer. Exemplary or punitive damages may be claimed where the infringement was committed in a fraudulent or wilful manner. A claim for exemplary damages must be supported by convincing evidence of the acts con - stituting the fraud involved in the infringement. Where actual intent to mislead the public or to defraud the complainant is shown, the court may double the dam - ages awarded. The measure of the damages suffered will be either: • the reasonable profits the complaining party would have made had the defendant not infringed its rights; or
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