Skip to main content

Author: Pericles Casuela

Navigating the New Soundscape: Understanding IPOPHL’s Groundbreaking Circular on Rights of Sound Performers and Producers

The Intellectual Property Office of the Philippines (IPOPHL) has unveiled a pivotal legal update with Memorandum Circular No. 023, S. 2023. This circular explicitly addresses the Implementing Rules and Regulations concerning the Rights of Sound Performers and Producers of Sound Recordings, providing a detailed framework for intellectual property rights in the audio and music industry.

Anchored in Section 13, Article XIV of the Philippine Constitution, the circular fortifies the State’s commitment to protect the intellectual property rights of artists and other creative citizens.

This circular is not limited in its ambitions; it covers a comprehensive array of rights and obligations, from the right to reproduction to distribution and public performance.

One striking provision is the introduction of a right to remuneration for both sound performers and producers when their work is broadcasted or communicated to the public. This is a monumental shift, as it directly addresses the financial aspects of intellectual property in sound recordings and performances.

The circular also articulates specific limitations on exclusive rights. For instance, it provides exemptions for uses related to news reporting, educational activities, and public performances that are not meant for commercial gain. This nuanced approach ensures that the law does not stifle creativity and public discourse.

A noteworthy inclusion is the robust anti-piracy measures that the circular introduces. These measures give both sound performers and producers more substantial legal footing to combat unauthorized use and distribution of their work.

This update is a game-changer for sound performers and producers alike. It not only provides a legal framework for protecting their intellectual property but also includes specific clauses that could have immediate financial benefits. Both parties should acquaint themselves with these new guidelines to fully comprehend their new rights and responsibilities.

The Importance of IP Due Diligence in Mergers and Acquisitions in the Philippines

Introduction

In the complex world of mergers and acquisitions (M&A), intellectual property (IP) assets often emerge as critical factors that can make or break a deal. In the Philippines, where IP laws have their unique set of complexities, understanding the nuances is even more crucial. This article aims to provide an in-depth look into how to conduct IP due diligence in the Philippine context during an M&A transaction.

Intellectual Property Inventory

Creating a complete inventory of the company’s IP assets is the foundational step. This includes identifying all patents, trademarks, copyrights, and trade secrets that the company owns or licenses. The inventory serves as a roadmap, helping both parties understand what is at stake. Accurate valuation and strategic planning can only occur when you know exactly what IP assets are involved.

Ownership and Control

Clarifying ownership and control of IP assets is the next critical step. Many deals have fallen apart because of misunderstandings or conflicts over IP ownership. All IP assets must be either legally owned or controlled by the company. Pay special attention to any joint ownership arrangements and understand how they impact control and revenue sharing. It’s also essential to consider IP owned by subsidiaries, as these can significantly affect the transaction’s value and complexity.

Compliance and Regulation

Being compliant with both local and international laws is not just a legal necessity but also a valuation factor. Always check the IP assets’ standing with the Intellectual Property Office of the Philippines and other relevant bodies. If the IP has international reach, make sure it complies with the laws of those jurisdictions and international treaties.

Financial Assessment

A detailed financial assessment of IP assets is non-negotiable. This includes obtaining professional valuation reports, understanding the revenue streams tied to the IP, and recognizing the costs of maintaining these assets. Knowing the financials in and out can offer insights into the return on investment and help to structure the deal better.

Litigation and Risks

Uncovering any ongoing or past litigation related to IP assets is essential. Any legal issue can not only diminish the IP’s value but can also bring reputational risks. A thorough risk assessment should be conducted to identify potential challenges or vulnerabilities in the IP portfolio. Knowing these risks upfront can help in making an informed decision.

Agreements and Contracts

Reviewing all existing agreements and contracts related to the IP is crucial. This includes licensing agreements, non-disclosure agreements (NDAs), and employee contracts that specify IP ownership. These documents can significantly impact the revenue streams, control, and overall value of the IP assets.

Future Prospects

It’s not just about the present; one must also consider the future. Understand what IP is currently in development and how it aligns with the acquiring company’s future strategies. Additionally, it’s essential to assess any plans the company has for leveraging this IP for market expansion or penetration into new domains

Understanding the impact of Memorandum Circular No. 2023-001, S. 2023 on motion marks in the Philippines

Introduction

Intellectual property laws are continually evolving to adapt to the dynamic nature of innovation and branding. In this context, the Philippines has taken a significant step forward with the issuance of Memorandum Circular No. 2023-001, S. 2023. This new circular replaces previous guidelines and notably includes explicit recognition of the registrability of motion marks, providing a robust framework for brand owners and legal practitioners.

Significance of the new circular

The advent of Memorandum Circular No. 2023-001 brings about a welcomed update to the intellectual property landscape in the Philippines. While prior guidelines offered a foundation for dealing with motion marks, especially those with varying representations like still images and video files, the new circular broadens this scope. It explicitly acknowledges the registrability of motion marks, thereby enhancing the legal mechanisms available for their protection.

Practical implications

The formal recognition of motion marks in the new circular has practical ramifications for brand owners seeking diversified avenues for brand protection. Now, with explicit guidelines in place, brand owners can have more confidence in registering and protecting their motion marks in the Philippines. The circular provides a much-needed layer of legal clarity, enabling a more standardized approach to the registration and defense of these dynamic forms of trademarks.

Descriptive clarification

The new circular also maintains the emphasis on clear identification between different types of motion mark representations. If a motion mark is applied for using a sequence of still images, the guidelines suggest that a descriptive text may be required to clarify the subject matter. This provision serves as an additional tool for achieving specificity and alignment between varying representations of a motion mark.

Global context

The updated guidelines set forth by Memorandum Circular No. 2023-001 are not only significant domestically but also have implications on a global scale. As Philippine brands look toward international markets, and as foreign brands consider entry into the Philippines, these standardized guidelines could serve as a catalyst for a more harmonized approach to intellectual property rights concerning motion mark.

The issuance of Memorandum Circular No. 2023-001, S. 2023 marks a progressive step in the Philippines’ intellectual property regime. By explicitly recognizing the registrability of motion marks, it fills a crucial gap in the previous guidelines, providing brand owners and legal professionals with a more comprehensive and clear framework. As we move further into an era characterized by dynamic and multimedia-centric branding, these updates signify a positive and timely development in Philippine intellectual property law.

Katherine Imperial promoted to partner

BCCSLAW is delighted to announce the promotion of Katherine R. Imperial to partner with effect on January 1, 2022.

Katherine obtained her law degree from the Ateneo de Manila University School of Law. She joined the firm as a senior associate to focus on domestic and international trademark registration, licensing and enforcement. She expanded her practice to cover data privacy, online media and fintech, advising various industry leaders in air transportation, e-commerce, streaming, networking, and finance.

BCCSLAW at INTA

BCCSLAW will attend the in-person mini conferences of the International Trademark Association at the following locations:

New York, New York, USA — Tuesday, November 16, 2021
811 7th Avenue, 53rd St, New York, NY 10019

Berlin, Germany —Wednesday, November 17, 2021
Inge-Beisheim-Platz 1, Berlin 10785 Germany

Los Angeles, California, USA —Thursday, November 18, 2021
900 West Olympic Boulevard, Los Angeles, CA 90015

We are PROUDLY FULLY VACCINATED TO KEEP YOU SAFETM.

BCCSLAW celebrates its 10th year as a leading legal service provider for IP, Technology and Data Privacy in the Philippines by continuing to act for the largest online retailer, the largest multimedia streaming service provider, the largest pharmaceutical company, the largest microblogging social networking service, the largest multimedia conglomerate, and the largest Filipino quick service restaurant chain, among other highly admired and innovative companies in the world including well-established FMGCs, airlines and automobile manufacturers. BCCSLAW has also expanded the scope of its trademark protection services to most of the Pacific Islands, including the Northern Marianas, Palau, Fiji, the Marshall Islands, and Micronesia.

Leo Singson joins BCCSLAW

We are pleased to announce that Leonardo Singson has joined our firm as Of Counsel for Special Corporate Transactions, Regulatory Compliance, and Immigration. Mr. Singson was formerly a Partner in the Corporate and Special Projects Department of Villaraza and Angangco. He obtained his law degree from the University of the Philippines.

Cancelled Events

Due to concerns relating to COVID-19, some conferences that we intended to attend, including the ICANN Community Forum in Cancun, the ASEAN IPA meeting in Jakarta, and the INTA annual meeting in Singapore, have been cancelled or postponed. Please visit our events calendar for updates on our attendance during upcoming conferences.

INTA Committee Membership

We are pleased to announce that the partners of our firm have been appointed to various committees of the International Trademark Association (INTA). Their committee memberships are as follows:

Andre Betita– Famous and Well-Known Marks

John Cabilao– Right of Publicity

Pericles Casuela– Data Protection

Joseph Sarmiento– Designs

Their appointments are effective beginning January 1, 2020, and will conclude on December 31, 2021.

Registration of Data Processing Systems (NPC Circular 17-01)

The National Privacy Commission recently issued NPC Circular 17-01 on the registration of data processing systems and notifications regarding automated decision-making.

Under the Circular, covered Personal Information Controllers and Personal Information Processors should complete Phase 1 of the process for the registration of data processing systems by September 9, 2017 and Phase 2 by March 8, 2018.

A copy of the circular can be downloaded here.

Seminars

Oops!

Our webmaster made a mistake and thought that we were serious about conducting seminars. It’s a bad idea, don’t you think? We bill you for practical advice that we will then give away for free in a seminar? Not fair.

We value our relationship with you and we do our best to keep our tools sharp, through actual experience, to help you traverse the complexities of the issues on which you come to us for advice. 

Thanks to the following (of course, among other things), you continue to regard us as your trusted advisor:

  • Our local trademark registration practice is growing at an amazing pace.  We now handle a portfolio of more than 2,200 trademarks, as shown in the records of the Philippine Intellectual Property Office. http://www.wipo.int/branddb/ph/en/
  • Privacy law is not an academic matter for us. We are regularly consulted to address real-life situations and have dealt with the regulators.
  • Like our trademark registration practice, our patent registration and litigation practice is also growing. More than 70 multinational patent holders in the pharmaceutical, biosciences, automotive, manufacturing, equipment testing and gaming industries have entrusted the protection of their innovations to our firm.
  • We embrace and enjoy the convenience of online commerce, online media and online financial transactions. That is why we are comfortable acting for the major players on the planet, including the biggest one, on matters ranging from intellectual property to licensing, privacy, e-commerce and telecommunications. We walk the talk and do our best to be like them. As a matter of fact, this site was designed, created, coded and continues to be managed by one of our firm’s founding partners.
  • Telecommunications- read about us in the papers when the next huge deal rolls out.
  • We have friends- intelligent ones.  We keep a network of correspondents worldwide with whom we have developed a strong sense of community, professionalism and competence.  That ensures that you get the correct advice from competent counsel overseas. 
  • 1
  • 2