01 August 2013
Anne Mariae Celeste Jumadla of Sapalo Velez Bundang & Bulilan gives an overview of the Philippines most recent efforts to legislate against cybercrime, and the misuse of digital intellectual property
The Philippines has one of the fastest growing internet platforms for both commercial transactions and private communications. As of June 2012, the country has 33.6 million internet users, representing 32.4% of population penetration (World Internet Stats). Although this is a small percentage compared to those of the developing world, it represents a large increase in the number of users, considering that the country only had 2 million users in 2000. Therefore, The Philippines Government needs to ensure that IP protection extends sufficiently to the digital environment. We will discuss in this article the laws recently adopted in the Philippines to protect digital copyright, trade marks and trade secrets.
Copyright
The Philippines acceded to the internet treaties, namely, the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty on July 4, 2002. These treaties were in force as laws in the Philippines since October 4, 2002 by the principle of incorporation provided for under the Philippine Constitution, and effectively address issues on the scope of IP Rights (IPR) in the electronic environment, particularly the internet.
Technology Measures
Copy protection system have been developed to protect computer software and digital works. However, the parallel development of means to circumvent them is not impossible. Thus, Article 11 of the WCT provides the obligation for contracting parties to:
Provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention (for the Protection of Literary and Artistic Works) and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law.
Technical devices within the scope of this provision either restrict access of prevent reproduction.
Electronic rights management
Article 12 of the WCT also obliges contracting parties to provide adequate and effective legal remedies against any person knowingly:
Removing or altering any electronic rights management information without authority: or
Distributing, importing for distribution, broadcasting or communicating to the public without authority, works or copies of works knowing that the electronic rights management information has been removed or altered without authority: and
Knowing or having reasonable grounds to know that it will induce, enable, facilitate or conceal an infringement of any right covered by this Treaty or the Berne Convention.
In compliance with the WCT, among others, the Philippines legislature enacted Republic Act 10372 which took effort on March 22 2013, amending certain provision of Republic Act 8293, otherwise known as the Intellectual Property Code of the Philippines. This Act added to the IP Code provisions defining technology measures and electronic rights management, and providing for remedies against infringement in relation to the circumvention of technology measures and the tampering of electronic rights management information.
Under the Act, “technological measure’ means any technology, device or component that, in the normal course of its operation, restricts acts in respect of a work, performance or sound recording, which are not authorized by the authors, performers or producers of sound recordings concerned or permitted by law” (new section 171.12 the IP Code); and (from the same):
‘rights management information’ means information which identifies the work, sound recording or performance: the author of the work, producer of the sound recording or performer of the performance: the owner of any right in the work, sound recording or performance: of information about the terms and conditions of the use of the work, sound recording or performance: and any number or code that represent such information, when any of these items is attached to a copy of the work, sound recording or fixation of performance or appears in conjunction with the communication to the public of a work, sound recording or performance
With regard to remedies, the Act added to section 2.6.1(b)(Remedies for Infringement) under the IP Code:
The amount o fdamages to be awarded shall be doubled against any person who:
i) Circumvents effective technological measure; or
ii) 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, sound recording, or fixation of a performance, or distribute, import for distribution, broadcast, or communicate to the public works or copies of works without authority, knowing that electronic riths management information has been removed or altered without authority.
Trade marks: use as domain names
Technical coordination within the internet is under the responsibility of the Internet Corporation for Assigned Names and Numbers (ICANN), a California non-profit public benefit corporation created in 1998 by the internet’s business, technical, academic, and user communities. Among others, ICANN coordinates the assignment of internet domain names and accreditation of domain name registrars.
In order to safeguard a trade mark owner’s right against the registration by another on an identical or a confusingly similar domain name, on 24 October 1999, ICANN approved its mandatory Uniform Domain Dispute Resolution Policy(UDRP), which is incorporated in to every registration agreement, and which the registrar and domain name registrant must agree to abide by. Under the UDRP, a registrant is required to submit to mandatory arbitration proceedings to one of the ICANN accredited dispute resolution providers, namely: CPR Institute for Dispute Resolution, eResolution, the National Arbitration Forum and World Intellectual Property Organization (WIPO), if a third party complains that:
- The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights;
- The registrant has no rights or legitimate interests in the domain name; or,
- The domain name has been registered and is being used in bad faith.
ICANN may then cancel or make changes to domain name registrations, or transfer it to the complainant, if successful.
Notwithstanding the availability of these remedies under the UDRP, the Philippines legislature enacted Republic Act 10175, an act defining cybercrime, and providing the prevention, investigation, suppression and the imposition of penalties against it, otherwise known as the Cybercrime Prevention Act of 2012, which took effect on October 3 2012. This Act made cyber-squatting a punishable offece of cybercrime (section 4(a)(6)):
Cyber-squatting: the acquisition of a domain name over the internet in bad faith to profit from, mislead, destroy reputations, and deprive others from registering the same, if such a domain name is:
i) Similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration…
ii) Acquired without right or with intellectual property interests in it.
Penalties for cyber-squatting include imprisonment for six to 12 years and/or a monetary fine. If committed against critical infrastructure, imprisonment may run from 12 to 20 years. The penalty for aiding, abetting or attempting a cybercrime is one degree lower than the penalty for the actual commission of the crime.
Trade Secrets
Trade secrets are protected under various scenarios by the Revised Penal Code(RPC), enforced in the country since January 1 1932. In particular, Article 290 of the RPC penalizes any private individual “who in order to discover the secrets of another, seizes his papers or letters and reveals the contents thereof”. Article 291 penalizes any manager, employee, or servant ”who, in such capacity, learns the secrets of his principal or master and reveals such secrets”. Finally, Article 292 penalizes a person-in-charge, employee or workman of any manufacturing or industrial establishment “who, to the prejudice of the owner thereof, reveals the secrets of the industry of the latter”.
Violations of trade secrets under the RPC, “if committed by, through and with the use of information and communications technologies”, are subjected to higher penalties under the Cybercrime Law. In addition, it brings the crime within the purview of the provisions of this Law. These provisions pertain to offences against confidentiality, integrity and availability of computer data and systems under secion 4 (a), and include:
- Illegal access, or the access to the whole or any part of a computer system without right referring to either: (i)conduct undertaken without or in excess of authority; or (ii)conduct not covered by established legal defences, excuses, court orders, justifications, or relevant principles under the law;
- Illegal interception, or the interception made by technical means without right, of nay non-public transmission of computer data to, from, or within a computer system including electromagnetic emission from a computer system carrying such computer data;
- Data interference, or the intentional or reckless alteration, damaging, deletion or deterioration of computer data, electronic document, or electronic data message, without right, including the introduction or transmission of viruses;
- System interference, or the intentional alteration or reckless hindering or interference with the functioning of a computer or computer network by inputting, transmitting, damaging, deleting, deteriorating, altering or suppressing computer data or programs, electronic documents, or electronic data messages, without right or authority, including the introduction of transmission of viruses: and
- Misuse of devices, which includes(i) the use, production, sale, procurement, importation, distribution, or otherwise making available, without right, of: (a) a device, including a computer program, designed or adapted primarily for the purpose of a committing any of the offences under the Act: or (b) a computer password, access code, or similar data by which the whole or any part of a computer system is capable of being accessed with intent that it be used for the purpost of committing any of the offences under the Act; and (ii) the possession of an item referred to above with intent to use said devices for the purpose of committing any of the offences under the section.
As with cyber-squatting, the aiding or abetting in the commission of the above offences, as well as any attempt, are punishable as well, and with similar penalties as cyer-squatting (in addition to the penalties imposed by the RPC, increased to a degree).
The Cybercrime Law, in both instances of cyber-squatting and violation of trade secrets through the commission of a cybercrime, holds liable a juridical person when the punishable acts “are knowingly commited on behalf of or for the benefit of a juridical person, by a natural person acting either individually or as part of an organ of the juridical person, who has a leading position within”, based on:
- a power of representation, for acts committed within the scope of authority;
- an authority to take decisions on behalf of the juridical person, for acts committed within the scope of authority; or
- an authority to exercise control over the juridical person.
Should exceptions be made?
Undoubtedly, there is wisdom in the position taken by the legislature in imposing very stringent requirements and conditions for the protection of IPR on the internet. Particularly in view of the unique circumstances in the digital environment, whereby violations of IPR are more easily committed than in the conventional landscape. However, the Philippines, as a developing country, should have taken advantage of the leeway provided by international instruments imposing the obligation to protect IPR. Article 9 (2) of the Berne Convention, Article 10 of the WCT, and Article 13 of the Agreement On Trade-Related Aspects Of Intellectual Property Rights (TRIPs Agreement) allow member countries to provide limitations and exceptions that pass the so-called three-step test-special cases that do not conflict with normal exploitation of the work and do not unreasonably prejudice legitimate interests. Amendments to introduce exceptions to the severe restrictions should be considered; for example, in relation to technology measures, to allow access to copyrighted materials for purposes not contrary to fair use, as provided by the IP Code (such as, to allow access to copyrighted works for teaching purposes, among others).
ANNE MARIAE CELESTE JUMADLA
Anne Mariae Celeste Jumadla is a senior associate at Sapalo Velez Bundang & Bulilan. She handles the litigation of patent and trade mark cases (opposition cancellation and infringement cases), the prosecution of patent and trade mark application, including patent drafting, and the review and recording of technology licensing agreements.
Anne Mariae is a registered patent agent and a licensed Chemist. She has been a lecturer and mentoring fellow of the Intellectual Property Research and Training Institute, and a member of the Integrated Chemists of the Philippines and the Philippine Association of Certified Patent Agents. Anne Mariae has been committed to furthering her own knowledge and expertise in her area by attending a wide variety of training courses, such as the WIPO-National University of Singapore programme on intellectual property, and the training course for patent experts run by the Japan Patent Office.
Anne Mariae has a law degree from the University of the Philippines, and a Masters in chemistry from Ateneo de manila University. She has completed further post-graduate studies (on a WIPO scholarship) specialising in intellectual property, at the University of South Africa, and is pursuing a European MSc in global innovation management, from the University of Strathclyde, UK.
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