Strengthening the Powers and Functions of the Intellectual Property Office of the Philippines

Schiate Office of the secretary TWENTIETH CONGRESS OF THE REPUBLIC OF THE PHILIPPINES First Regular Session JAN 27 P2:05 SENATE RECEIVED BY S. No. 1708 Introduced by Senator MARK A. VILLAR AN ACT STRENGTHENING THE POWERS AND FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES, AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293 OR THE "INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES", AS AMENDED EXPLANATORY NOTE As technology constantly changes every aspect of the entertainment and creative industries, so must the laws and policies that govern them. For example, the production and consumption of audiovisual media have rapidly evolved, rendering some government regulations ineffective. The need to update these laws echoes the constitutional directive for the State to provide protection and to secure exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people.l Piracy or the unauthorized duplication of copyrighted content, whether for profit or not, poses an existential threat to these vital industries as it discourages artists, producers, and other creatives from producing quality entertainment media, which ultimately endangers employment and impedes socio-economic growth. It is important to note that copyright-related industries constitute 7.3% of the country's Gross Domestic Product and that a study by Media Partners Asia revealed that potential revenue losses to local video producers, distributors, and aggregators 1 Const. art. XIV, sec. 13.

due to online content piracy during the COVID-19 pandemic and lockdowns were at P1 Billion. As a signatory to the World Trade Organization's Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, it is incumbent for the Philippines to adopt, enact, and implement legislations for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale.2 Thus, this bill seeks to authorize the Intellectual Property Office of the Philippines to disable access to online locations or sites infringing copyrighted materials and services, as well as the enforcement powers to prevent, investigate, and conduct coordinated action on violations of Republic Act No. 8293 or the "Intellectual Property Code of the Philippines". In view of the foregoing, immediate passage of this bill is earnestly sought. MARK A. VILLAR 2 TRIPS Agreement (1995), art. 61.

senate Office of the spentaly TWENTIETH CONGRESS OF THE REPUBLIC OF THE PHILIPPINES ) First Regular Session JAN 27 P2:05 SENATE RECEIVED B: S. No. 1708 Introduced by Senator MARK A. VILLAR AN ACT STRENGTHENING THE POWERS AND FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES, AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293 OR THE "INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES", AS AMENDED Be it enacted by the Senate and House of Representatives of the Philippines in Congress assembled:

Section 1. Section 4 of Republic Act No. 8293, as amended, otherwise known

as the "Intellectual Property Code of the Philippine", is hereby amended to read as follows: "SEC. 4. Definitions. - 4.1 xxx. "4.5 THE TERM "COUNTERFEIT GOODS" REFER TO GOODS OR MATERIALS INCLUDING PACKAGING BEARING, WITHOUT AUTHORIZATION, A TRADEMARK WHICH IS IDENTICAL TO A TRADEMARK VALIDLY REGISTERED WITH THE INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES (IPOPHIL) OR ALREADY DECLARED AS A WELL-KNOWN MARK INTERNATIONALLY OR IN THE PHILIPPINES BY A COMPETENT AUTHORITY, WITH RESPECT TO SUCH GOODS OR WHICH CANNOT BE DISTINGUISHED IN ITS ESSENTIAL ASPECTS FROM SUCH A TRADEMARK AND WHICH THEREBY VIOLATES THE RIGHTS OF THE OWNER OF THE TRADEMARK IN QUESTION. "4.6. THE TERM "PIRATED GOODS" REFER TO GOODS OR MATERIALS OR CONTENT, WHETHER TANGIBLE OR INTANGIBLE, IN ELECTRONIC OR DIGITAL FORM, WHICH ARE MADE, PRODUCED, COPIED, REPRODUCED, DISSEMINATED, DISTRIBUTED, IMPORTED, USED, REMOVED, ALTERED, SUBSTITUTED, MODIFIED, STORED,

UPLOADED, DOWNLOADED, COMMUNICATED, MADE AVAILABLE TO THE PUBLIC, BROADCASTED, OR REPLICATED WITHOUT THE CONSENT OF THE RIGHT HOLDER OR PERSON DULY AUTHORIZED BY THE RIGHT HOLDER AND WHICH ARE MADE, PRODUCED, OR REPLICATED DIRECTLY OR INDIRECTLY FROM AN ARTICLE WHERE THE MAKING OF THAT COPY WOULD HAVE CONSTITUTED AN INFRINGEMENT OF COPYRIGHT OR RELATED RIGHTS."

Sec. 2. Section 5 of Republic Act 8293, as amended, is hereby amended to read

as follows: "SEC. 5. Functions of the Intellectual Property Office (IPO). - xxx "XXX "5.3. THE OFFICE SHALL PERFORM THE FOLLOWING ENFORCEMENT FUNCTIONS: "(A) GATHER INTELLIGENCE INFORMATION RELATED TO VIOLATIONS OF THIS ACT, CONDUCT INQUIRY AND INVESTIGATION, AND DEVELOP EFFECTIVE COUNTERMEASURES TO DETER COUNTERFEIT OR PIRATED GOODS OR CONTENT; "(B) CONDUCT VISITS DURING REASONABLE HOURS TO ESTABLISHMENTS AND BUSINESSES WHOSE ACTIVITIES ARE SUSPECTED TO BE IN VIOLATION OF THIS ACT IN ACCORDANCE WITH THE PROCEDURES PRESCRIBED HEREIN; "(C) DEVELOP A DATABASE OF PENDING CASES INVOLVING VIOLATIONS OF THIS ACT; "(D) UNDERTAKE ANY OR ALL OF THE FOLLOWING ENFORCEMENT ACTIONS: "(1) SERVE AND EXECUTE THE ADMINISTRATIVE ORDERS DULY ISSUED BY THE OFFICE OF THE DIRECTOR GENERAL IN ACCORDANCE WITH ITS POWERS UNDER THIS ACT; "(2) ISSUE NOTICE OR WARNING TO THE RESPONDENT/S; "(3) RECOMMEND THAT THE CONCERNED LOCAL GOVERNMENT UNITS AND/OR OTHER GOVERNMENT AGENCIES CANCEL

LICENSES AND BUSINESS PERMITS OF ESTABLISHMENTS OR BUSINESSES FOR ENGAGING IN SELLING OR MAKING AVAILABLE TO THE PUBLIC COUNTERFEIT OR PIRATED GOODS OR FILE CHARGES AGAINST THE RESPONDENTS FOR VIOLATION OF APPLICABLE LAWS, RULES OR REGULATIONS; "(4) REQUEST THE CONCERNED LOCAL GOVERNMENT UNIT OR OTHER GOVERNMENT AGENCIES TO IMPLEMENT THE DECISION OF THE INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT PURSUANT TO THEIR RESPECTIVE MANDATES; "(5) REPORT THE RESULT OF SERVICE AND EXECUTION OF ADMINISTRATIVE ORDERS; AND "(6) SUCH OTHER ORDERS OR ACTIONS NECESSARY TO ENSURE COMPLIANCE WITH THE PROVISIONS OF THIS ACT. "(E) COORDINATE WITH OTHER GOVERNMENT AGENCIES AND PRIVATE SECTOR EFFORTS ON MATTERS RELATED TO INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT; "(F) ASSIST IN THE ENFORCEMENT OF ORDERS, WRITS, AND PROCESSES ISSUED BY THE BUREAU OF LEGAL AFFAIRS AND THE OFFICE OF THE DIRECTOR GENERAL;

Sec. 3. Section 10 of Republic Act 8293, as amended, is hereby further 10

amended to read as follows: "SEC. 10. The Bureau of Legal Affairs. -The Bureau of Legal Affairs shall have the following functions: "10.1 xxx; "10.2 (a) xxx; "10.2 (b) After formal investigation, the Director of Legal Affairs may impose one (1) or more of the following administrative penalties: "xxx

"(v) The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than [Five thousand pesos (Php5,000)] ONE HUNDRED THOUSAND PESOS Php 100,000) nor more than [One hundred fifty thousand pesos (Php 150,000)] ONE MILLION PESOS (PHP1,000,000). In addition, an additional fine of not more than [(One thousand pesos (Php 1,000)] TEN THOUSAND PESOS (PHP 10,000) shall be imposed for each day of continuing violation; "XXX "THE DECISION OF THE ADJUDICATION OFFICERS ARE APPEALABLE TO THE DIRECTOR GENERAL. "10.3. ESTABLISH AND ADMINISTER ALTERNATIVE DISPUTE RESOLUTION MECHANISMS; AND "10.4. PROVIDE ASSISTANCE TO OTHER BUREAUS AND OFFICES OF THE IPOPHIL, INCLUDING LEGAL REVIEWS, STUDY AND SIMILAR TASKS. "10.(3) 5. The Director General may by Regulations establish the procedure to govern the implementation of this Section."

Sec. 4. Section 216 of Republic Act 8293, as amended, is hereby further

amended to read as follows: "SEC. 216. Infringement - Any person infringes a right protected under this Act when one: "(a) xxx; "(b) xxx; "(c) xxx; "216-A. PREVENTIVE ACTION ON ONLINE INFRINGEMENT. - UNLESS OTHERWISE PROVIDED BY LAWS, OR UNLESS OTHERWISE ORDERED BY THE APPROPRIATE COURT OF LAW, THE INTELLECTUAL PROPERTY OFFICE SHALL HAVE THE POWER, AFTER DUE NOTICE

AND HEARING, TO DISABLE ACCESS TO AN ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS, PREVENT FURTHER ACCESS TO AN ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS, WHOSE PRIMARY PURPOSE OR PRIMARY EFFECT OF WHICH IS COPYRIGHT INFRINGEMENT. "THE COPYRIGHT OWNER OR THE EXCLUSIVE LICENSEE OF COPYRIGHT, HEREINAFTER REFERRED TO AS THE "ELIGIBLE PARTY", MAY SUBMIT AN APPLICATION TO THE INTELLECTUAL PROPERTY OFFICE TO ORDER THE DISABLING OF ACCESS TO ANY INFRINGING ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS, IDENTIFIED IN THE APPLICATION. "THE APPLICATION TO THE INTELLECTUAL PROPERTY OFFICE SHALL BE SUBMITTED BY COMPLETING IN ITS ENTIRETY THE FORMS AND DOCUMENTATION AS REQUESTED BY THE INTELLECTUAL PROPERTY OFFICE, TO ALLOW THE INTELLECTUAL PROPERTY OFFICE TO ESTABLISH THAT THE PARTY FILING THE APPLICATION IS AN ELIGIBLE PARTY, OR IS AUTHORIZED TO FILE THE APPLICATION ON BEHALF OF AN ELIGIBLE PARTY, AND VERIFY THROUGH EVIDENCE THAT THE SUBJECT OF THE ORDER APPLIED FOR IS AN INFRINGING ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS "FOR PURPOSES OF THIS CHAPTER, "ONLINE LOCATION" SHALL REFER TO ANY SINGLE OR COLLECTION OF RELATED WEB PAGES ACCESSIBLE BY A USER THROUGH A DOMAIN, IP ADDRESS, OR UNIFORM RESOURCE LOCATOR (URL), OR A SPECIFIC DOMAIN, IP ADDRESS WHICH SERVES TO OPERATE, IN WHOLE OR IN PART, AN APPLICATION ON THE INTERNET. WHILE, "DIGITAL PLATFORM" REFERS TO INFORMATION AND COMMUNICATION TECHNOLOGY ENABLED MECHANISMS THAT CONNECT AND INTEGRATE PRODUCERS AND USERS IN ONLINE ENVIRONMENTS WHERE GOODS AND SERVICES ARE REQUESTED, DEVELOPED, AND SOLD, AND DATA

IS GENERATED AND EXCHANGED SUCH AS, BUT NOT LIMITED TO, EMARKETPLACES, MOBILE APPLICATION PLATFORMS, ONLINE DELIVERY PLATFORMS, SOCIAL MEDIA PLATFORMS, TRAVEL PLATFORMS, AND STREAMING PLATFORMS. "216-B. PROCEDURE OF INQUIRY FOR PREVENTIVE ACTION. - THE INTELLECTUAL PROPERTY OFFICE SHALL FORMULATE THE PROCEDURE OF INQUIRY FOR PREVENTIVE ACTION ON ONLINE INFRINGEMENT ACCORDING TO THE FOLLOWING STANDARDS: "(1) MINIMUM REQUIREMENTS OF THE APPLICATION FOR ACTION BY AN ELIGIBLE PARTY. THE APPLICATION REFERRED TO IN SECTION 84A SHALL INDICATE: THE FACT THAT, AND THE MANNERBY WHICH, THE INFRINGING ONLINE LOCATION IS ACCESSIBLE; AND OTHER MATTERS WHICH THE INTELLECTUAL PROPERTY OFFICE MAY TAKE INTO ACCOUNT, INCLUDING: "(I) WHETHER THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS MAKES AVAILABLE OR CONTAINS DIRECTORIES, INDEXES OR CATEGORIES OF THE MEANS TO INFRINGE, OR FACILITATE AN INFRINGEMENT OF, COPYRIGHT; "(II) WHETHER THE OWNER OR OPERATOR OF THE ONLINE LOCATION DEMONSTRATES A DISREGARD FOR COPYRIGHT GENERALLY; AND/OR "(III) WHETHER ACCESS TO THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS HAS BEEN DISABLED BY ORDERS FROM ANY COURT OF ANOTHER COUNTRY OR TERRITORY ON THE GROUND OF OR RELATED TO COPYRIGHT INFRINGEMENT. "(2) ONE APPLICATION MAY BE SUBMITTED FOR MULTIPLE INFRINGING ONLINE LOCATIONS, STREAMING OR DIGITAL

• • PLATFORMS, AND THE REQUIREMENTS OF THIS SECTION MUST BE MET AND SET OUT IN THE APPLICATION. "(3) THE APPLICATION MUST NOTIFY THE PERSON WHO OPERATES THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS OF THE MAKING OF AN APPLICATION UNDER

SECTION 1, BUT THE INTELLECTUAL PROPERTY OFFICE MAY

DISPENSE, ON SUCH TERMS AS IT SEES FIT, WITH THE NOTICE REQUIRED TO BE SENT TO THE PERSON WHO OPERATES THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS IF THE INTELLECTUAL PROPERTY OFFICE IS SATISFIED THAT THE APPLICANT IS UNABLE, DESPITE REASONABLE EFFORTS, TO DETERMINE THE IDENTITY OR ADDRESS OF THE PERSON WHO OPERATES THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS, OR TO SEND NOTICES TO THAT PERSON. "(4) UPON RECEIPT OF THE APPLICATION, THE INTELLECTUAL PROPERTY OFFICE SHALL, WITHIN FIVE (5) DAYS, REVIEW THE SAME AND DETERMINE WHETHER THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS MEETS THE REQUIREMENTS OF PARAGRAPH (A). IF AN APPLICATION MEETS THE REQUIREMENTS OF PARAGRAPH (A), THE INTELLECTUAL PROPERTY OFFICE SHALL GIVE DUE NOTICE OF THE SAME TO THE PERSON WHO OPERATES THE ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS EITHER BY DIRECTLY CONTACTING SUCH PERSON OR BY POSTING SUCH NOTICE PUBLICLY. THE INTELLECTUAL PROPERTY OFFICE SHALL, WITHIN FIVE (5) DAYS OF GIVING DUE NOTICE, RENDER AN ORDER REQUIRING INTERNET SERVICE PROVIDERS TO TAKE REASONABLE STEPS TO DISABLE ACCESS TO THE INFRINGING ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS. A COPY OF THE SAID ORDER SHALL LIKEWISE BE GIVEN TO THE ELIGIBLE PARTY.

"(5) THE INTERNET SERVICE PROVIDER MUST COMPLY WITH THE DISABLING ORDERS WITHIN FORTY-EIGHT (48) HOURS FROM THE ISSUANCE OF THE DISABLING ORDER AND MUST DISABLE THE IDENTIFIED INFRINGING ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS BY IMPLEMENTING AN EFFECTIVE TECHNICAL MEASURE, OR A MEASURE UNDERTAKEN BY THE INTERNET SERVICE PROVIDER TO DISABLE OR PREVENT ACCESS TO AN INFRINGING ONLINE LOCATION, AND MAY INCLUDE DOMAIN NAME SYSTEM (DNS) BLOCKING, IP BLOCKING, URL BLOCKING, SERVER NAME INDICATOR BLOCKING, OR OTHER MEANS. "(6) THE INTELLECTUAL PROPERTY OFFICE MAY, AT ANY TIME DURING THE OPERATION OF THE ORDERS, NOTIFY THE INTERNET SERVICE PROVIDERS SHOULD IT BECOME AWARE THAT ANY INFRINGING ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS IS ACCESSED FROM ANY ADDITIONAL ONLINE LOCATION, STREAMING OR DIGITAL PLATFORMS, INCLUDING ONE THAT APPEARS TO BE ASSOCIATED WITH ANY INFRINGING ONLINE 2 LOCATION, STREAMING OR DIGITAL PLATFORMS, BASED ON ITS 3 NAME, BRANDING OR THE IDENTITY OF ITS OPERATOR, AND MAKE 4 SUCH DIFFERENT ONLINE LOCATION, STREAMING OR DIGITAL 5 PLATFORMS SUBJECT TO THE ORDERS. "x. x x."

Sec. 5. Implementing Rules and Regulations (IRR). - Within sixty (60) days

from the effectivity of this Act, the Intellectual Property Office shall promulgate the necessary rules and regulations for the implementation of this Act.

Sec. 6. Separability Clause. - If any provision or part hereof is held invalid or

unconstitutional, the remainder of the law or the provision or part not otherwise affected shall remain in full force and effect.

Sec. 7. Repealing Clause. - Any law, presidential decree or issuance, executive

2 order, letter of instruction, administrative order, rule, or regulation contrary to or inconsistent with the provisions of this Act are hereby repealed, modified, or amended accordingly.

Sec. 8. Effectivity. - This Act shall take effect fifteen (15) days after its 18

publication in the Official Gazette or in two (2) newspaper of general circulation in the Philippines Approved