Strengthening the Powers and Functions of the Intellectual Property Office

ffier of the C1.1. P TWENTIETH CONGRESS OF THE REPUBLIC OF THE PHILIPPINES ) AUG -5 P4:24 First Regular Session SENATE RECEWED 5Y S. No. _ Introduced by Senator Jinggoy Ejercito Estrada AN ACT STRENGTHENING THE POWERS AND FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES, AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293, AS AMENDED, OTHERWISE KNOWN AS THE "INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES" EXPLANATORY NOTE Piracy is considered as the greatest threat to Philippine cinema. It deeply hurts the creative industry, as it discourages production, affects the livelihood of its workers and significantly diminishes revenues from the sector. Take for instance the unfortunate case of the 2020 Metro Manila Film Festival (MMFF) which reportedly earned less than 50 million pesos only, a substantial loss from the billion-peso box- office gross from the preceding years. The culprit was the massive piracy, illegal access and unlawful consumption of MMFF entries across the cyberspace. One film producer shared that they monitored illegal online streaming and found 10 to 20 links per hour. The COVID-19 pandemic saw an unprecedented rise of film piracy in many countries. In the Philippines, illegal online links to Filipino movies which are still being shown in cinemas are also simultaneously and indiscriminately shared in social media platforms. The Intellectual Property Office of the Philippines (IPOPHL) also disclosed an "obviously striking surge" in counterfeiting and piracy activities in 2020, surpassing the number of reports and complaints received from the five-year period

(2016 to 2020). Movies and shows were most reported for alleged piracy (40%), followed by e-books (25%) and software products (16%)*. The Film Development Council of the Philippines also expressed the need to address the perennial problem of piracy in Philippine cinema, highlighting the importance of the film industry which contributes at least P11 billion to the economy which can increase by at least 15 per cent if only piracy is curbed. Further, creative industries' contribution to the economy is at 7.3% which amounted to P1.6 trillion in 2022.3 The YouGov 2022 Piracy Landscape Survey revealed that, "the Philippines is one of the top consumers of pirated content in Asia. In the same year, the country lost $700 Million (P38.2 billion) due to the piracy of video content, specifically Filipino-made TV shows and movies. While it was already prevalent before the pandemic, Filipino consumers shifted to online pirated content. Some 44% of Filipinos consume pirated content on social media platforms."4 This situation barely improved in its 2024 Survey where the Philippines ranked second in the Asia-Pacific region.5 In an article published on February 2024, IPOPHL stated that "the underground industry of pirated media has resulted in P38.2-billion worth of losses and landed the country on international watchlists for IP rights." In the same light, a survey conducted in 2024 by the Asia Video Industry Association's Coalition Against Piracy (AVIA-CAP) showed that 70% of Filipinos streamed pirated films, * "Reports, complaints against piracy, counterfeiting surge in 2020 amid COVID-19 disruption." February 12, 2021. https://www.ipophil.gov.ph/news/reports-complaints-against-piracy-counterfeiting-surge-in-2020- amid-covid-19-disruption/ 2 Piracy: A perennial problem in Philippine Cinema | FDCP 3 Let's view Filipino cinema's piracy culture through a different lens 4 Piracy Impedes Growth of PHL's Creative Industries - The American Chamber of Commerce of the Philippines, Inc. Digital piracy in the Philippines | Law.asia " Let's view Filipino cinema's piracy culture through a different lens

shows and videos, and this is an increase from 58% record in 2023. Ironically, 92% of the surveyed individuals understand the negative consequences of online piracy.? Because of piracy, "Legitimate film makers, creative producers, and content producers lose money due to piracy. They are forced to produce low budget products and services as they expect reduced revenues from this negative consumer behavior. Even investors are becoming increasingly reluctant to fund Philippine content production. Hence, workers in the industry are losing jobs opportunities. Additionally, the expectation of piracy also leads producers and creators to take fewer risks. This results in the oversaturation of popular narratives, which takes away the creativity of the industry. "8 Considering the pervasiveness of these illegal activities which severely hamper the growth of the creative economy and lead to loss of jobs or displacement of workers, there is a need to establish regulations and effective mechanisms to protect intellectual property rights. IPOPHIL issued Memorandum Circular No. 2023-025 on September 2023 which provides for the Supplemental Rules to Memorandum Circular No. 2020-049 known as the "Revised Rules of Procedure on Administrative Enforcement of Intellectual Property Rights (IPR), otherwise known as the Rules on Voluntary Administrative Site Blocking. The said issuance provided "a more expedited process for the blocking of a pirate website through voluntary mechanism with internet service provides (ISP/s).9 This bill intends to legislate the intentions of the aforementioned issuance by proposing to disable access to online sites which facilitate copyright infringement and introduces procedure for preventive action and site blocking. It also recommends imposition of higher fines from P5,000 to a minimum of P100,000 up to > Survey: 7 in 10 Pinoys watch pirated content| Philstar.com & Piracy Impedes Growth of PHL's Creative Industries - The American Chamber of Commerce of the Philippines, Inc. ° IPOPHL Memorandum Circular No. 2023-025, Supplemental Rules to Memorandum Circular No. 2020-049 known as the Revised Rules of Procedure on Administrative Enforcement of IPR, etc..pdf - Google Drive

a maximum of P1,000,000, and an additional P10,000 for each day of continuing violation. In the interest of revitalizing the film and creative sectors and realizing their full potential as one of the major drivers of growth of the national economy, the immediate passage of this legislation is earnestly sought. JINGGOY EJERCITO ESTRADA

Offer of li TWENTIETH CONGRESS OF THE REPUBLIC OF THE PHILIPPINES First Regular Session ) AUG -5 P4:24 SENATE RECEIVED B!' S. No. 959 Introduced by Senator Jinggoy Ejercito Estrada AN ACT STRENGTHENING THE POWERS AND FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES, AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293, AS AMENDED, OTHERWISE KNOWN AS THE "INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES" 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 Philippines," 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 (IPOPHL) OR ALREADY DECLARED AS A WELL-KNOWN MARK INTERNATIONALLY OR IN THE PHILIPPINES BY A COMPETENT AUTHORITY IN RESPECT OF 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 AND 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, OR PROTECTED MATERIAL BROADCASTED, OR REPLICATED WITHOUT THE CONSENT OF THE RIGHT HOLDER OR PERSON DULY AUTHORIZED BY THE RIGHT HOLDER AND WHICH ARE MADE, PRODUCED, 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 No. 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 THE 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 OF ACTIVITIES 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 OR RESPONDENTS; "(3) RECOMMEND THAT THE CONCERNED LOCAL GOVERNMENT UNIT AND/OR OTHER GOVERNMENT AGENCY 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 DECISIONS 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. OTHER "(E) COORDINATE WITH 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; "(G) CONDUCT MONITORING ACTIVITIES RELATED OR RELEVANT TO INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT; "(H) EXERCISE INTER-AGENCY SPECIAL ENFORCEMENT COORDINATION FUNCTIONS; AND, "(I) SUCH OTHER POWERS AND FUNCTIONS AS MAY BE NECESSARY OR INCIDENTAL TO THE ATTAINMENT OF THE PURPOSES AND OBJECTIVES OF THIS ACT OR AS MAY BE ASSIGNED BY THE DIRECTOR GENERAL."

Sec. 3. Section 10 of Republic Act No. 8293, as amended, is hereby 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 for 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 for Legal Affairs, which shall in no case be less than [Five thousand pesos (Php 5,000)] ONE HUNDRED THOUSAND PESOS (P100,000.00) nor more than [One hundred fifty thousand pesos (Php 150,000)] ONE MILLION PESOS (P 1,000,000.00). In addition, an additional fine of not more than [One thousand peses (Php 1,000)] TEN THOUSAND PESOS (P10,000.00) shall be imposed for each day of continuing violation. "XXX "THE DECISIONS OF THE ADJUDICATION OFFICERS ARE APPEALABLE TO THE DIRECTOR. ESTABLISH AND ADMINISTER "10.3. ALTERNATIVE DISPUTE RESOLUTION MECHANISMS; AND "10.4 PROVIDE ASSISTANCE TO OTHER BUREAUS AND OFFICES OF THE IPOPHL, INCLUDING LEGAL REVIEW, 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 No. 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 LAW, 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 IN ORDER TO PREVENT FURTHER ACCESS TO AN ONLINE LOCATION WHOSE PRIMARY PURPOSE OR PRIMARY EFFECT OF WHICH IS TO INFRINGE COPYRIGHT OR FACILITATE 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 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. "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, OR UNIFORM RESOURCE LOCATOR (URL) WHICH SERVES TO OPERATE, IN WHOLE OR IN PART, AN APPLICATION ON THE INTERNET." "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 MANNER BY 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 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; OR "(III) WHETHER ACCESS TO THE ONLINE LOCATION 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, AND THE REQUIREMENTS OF THIS SECTION MUST BE MET AND SET OUT IN THE APPLICATION. "(3) THE APPLICANT MUST NOTIFY THE PERSON WHO OPERATES THE ONLINE LOCATION 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 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, OR TO SEND NOTICES TO THAT PERSON. "(4) UPON RECEIPT OF THE APPLICATION, THE INTELLECTUAL PROPERTY OFFICE SHALL REVIEW THE SAME AND DETERMINE WHETHER THE ONLINE LOCATION 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 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. A COPY OF THE SAID ORDER SHALL LIKEWISE BE GIVEN TO THE ELIGIBLE PARTY. "(5) THE INTERNET SERVICE PROVIDERS MUST COMPLY WITH THE DISABLING ORDERS WITHIN FORTY-EIGHT (48) HOURS OF THE ISSUANCE OF THE DISABLING ORDER AND MUST DISABLE THE IDENTIFIED INFRINGING ONLINE LOCATIONS 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 IS ACCESSED FROM AN ADDITIONAL ONLINE LOCATION, INCLUDING ONE THAT APPEARS TO BE ASSOCIATED WITH ANY INFRINGING ONLINE LOCATION BASED ON ITS NAME, BRANDING OR THE IDENTITY OF ITS OPERATOR, AND MAKE SUCH DIFFERENT ONLINE LOCATION SUBJECT TO THE ORDERS." "X XX."

Sec. 5. Implementing Rules and Regulations. - Within ninety (90) 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 of this Act is declared invalid or

2 unconstitutional, the remaining provision not affected thereby shall continue to be in full force and effect.

Sec. 7. Repealing Clause. - All laws, decrees, orders or regulations or part

5 thereof inconsistent with this Act are hereby repealed or modified accordingly.

Sec. 8. Effectivity. - This Act shall take effect fifteen (15) days following the

7 completion of its publication in the Official Gazette or in a national newspaper of 8 general circulation. Approved,