Relationship Between Copyright and Other Intellectual Property Rights

Relationship Between Copyright and Other Intellectual Property Rights

Copyright and Trademark Rights

Logos, graphics, illustrations, and characters may be protected under trademark law as signs indicating the source of goods or services, while simultaneously qualifying for copyright protection as creative expressions.

Trademark protection is generally determined based on the relationship between a registered trademark and its designated goods or services. Consequently, if a trademark has not yet been registered, or if a third party’s use falls outside the scope of the designated goods and services of a registered trademark, relying solely on trademark rights can sometimes be difficult.

In contrast, if a logo or character possesses originality as a work of authorship and a third party reproduces or adapts that expression without authorization, copyright protection may be asserted independently of trademark registration status or classifications of goods and services. This is because copyright addresses the unauthorized use of creative expression rather than the indication of the source of goods or services.

Philippine Supreme Court: Mr. Gulaman Case

In the Philippine Supreme Court case Mr. Gulaman, a dispute arose between a company that had previously obtained copyright registration for the “Mr. Gulaman” name and logo design used on jelly powder packaging and a party that subsequently acquired a similar trademark registration.

In this case, trademark rights were not granted merely on the basis of copyright registration. However, the prior copyright certificate of registration, the deed of assignment of copyright, product packaging, and sales materials were utilized as evidence demonstrating the creator of the logo, the succession of rights, and the prior use of the mark as a trademark. As a result, the registration of the later similar trademark was cancelled. While acknowledging that copyright and trademark rights are distinct legal rights, the Philippine Supreme Court recognized that a prior copyright registration can serve as corroborating evidence supporting the origin and prior use of a logo design.

Key Practical Points

This case does not mean that copyright registration replaces trademark registration. Nevertheless, even during periods when a trademark is unregistered or for uses falling outside the scope of designated goods and services, copyright can serve as a complementary protective measure, provided that the subject logo or graphic possesses sufficient originality and that third-party access and copying are established.

On the other hand, mere strings of text, common typefaces, and commonplace shapes may lack the originality required for a work of authorship. Furthermore, copyright does not preclude independently created similar expressions. Therefore, to ensure continuous and stable protection of a name or logo as a brand, obtaining trademark registration remains fundamental.

Copyright and Industrial Design Rights

In the Philippines, the protection of product designs can often be evaluated under both industrial design rights and copyright.

  • Industrial Design Rights: Exclusively protect the registered external appearance of a product.
  • Copyright: Protects original ornamentation, shapes, patterns, illustrations, and other creative expressions contained within a product against unauthorized reproduction or adaptation.

Because the requirements for protection and the legal effects of these two rights differ, industrial design registration should be pursued as a primary measure while simultaneously evaluating copyright protection, thereby enabling broader and more robust protection.

Protection of Works of Applied Art under the Intellectual Property Code of the Philippines

The Intellectual Property Code of the Philippines expressly provides that original ornamental designs or models of industrial articles can be the subject of copyright protection, regardless of whether they are registrable as industrial designs.

Section 172.1(h) of the Code sets forth the following as subject matter protected by copyright:

“Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art.”

In other words:

  • Original ornamental designs or models of industrial articles, regardless of whether they are registrable as industrial designs, and
  • Other works of applied art

can qualify for copyright protection.

Furthermore, Section 171.10 of the Code defines a “work of applied art” as follows:

“A work of applied art is an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale.”

Thus, under Philippine law, a product is not automatically excluded from copyright protection simply because it is a useful article produced on an industrial scale or because it is registrable as an industrial design.

Furniture, stationery, lighting fixtures, tableware, household goods, and packaging may also receive copyright protection as works of applied art, provided they incorporate original ornamentation, shapes, patterns, illustrations, or other artistic expressions.

Differences from Japanese Copyright Law

This aspect differs significantly from Japanese copyright law.

Japanese copyright law merely provides that “works of art include works of artistic craftsmanship” and does not expressly designate works of applied art or artistic creations incorporated into mass-produced useful articles as subject matter protected by copyright, unlike Philippine law.

In Japan, there are judicial precedents recognizing copyrightability for mass-produced works, such as Hakata dolls. Moreover, the possibility of recognizing copyrightability for furniture and other useful articles is not entirely ruled out.

On the other hand, Japanese courts have also denied copyrightability in cases involving furniture, playground equipment, stationery, and other useful articles, evaluating whether applied art qualifies for copyright protection based on the originality, artistic merit, and relationship with the utilitarian function of each specific design.

In contrast, Philippine law explicitly establishes the following points:

  • Original ornamental designs of industrial products can be subject to copyright.
  • Registrability as an industrial design is immaterial.
  • Artistic creations incorporated into useful articles can be protected.
  • Both hand-crafted items and those produced on an industrial scale are eligible.

Therefore, while mass-produced useful articles may potentially be protected by copyright in Japan, Philippine law provides a more direct and explicit legal basis for protecting decorative and artistic expressions contained within mass-produced goods.

Protection of Unregistered Designs

To acquire industrial design rights, applicants must generally file an application before the product is publicly disclosed and satisfy requirements such as novelty.

If public disclosure—such as product sales, website publication, exhibition displays, or other public release—occurs beforehand, novelty issues in industrial design registration may arise. Furthermore, if an industrial design application is not filed at all, counterfeit products cannot be excluded based on a registered industrial design right.

In contrast, objective novelty as required in industrial design law is not demanded under copyright law.

Even if a design shares similarities with existing designs, it can qualify for copyright protection as long as it was independently created without copying another person’s work and possesses originality as a work of authorship.

Consequently, copyright protection can be considered in situations such as the following:

  • Releasing a product to the public without filing an industrial design application
  • Situations where public disclosure compromises industrial design novelty
  • When unregistered decorations, patterns, or designs are imitated
  • When decorative expressions outside the scope of a registered design’s protection are reproduced
  • When copyright term remains after the expiration of industrial design rights
  • When creative expressions contained in a portion of a product—rather than the whole product—are reproduced

However, the absence of design-law novelty requirements in copyright does not mean that commonplace designs or simple shapes are protected.

To receive copyright protection, a work must be independently created by the author and possess the requisite originality as a work of authorship.

Expressions Contained in a Portion of a Product

The scope of copyright protection is not necessarily limited to the entire product.

For example, expressions contained in a portion of a product can qualify for copyright protection if recognized as creative works in their own right, such as:

  • Ornamentation applied to the backrest or legs of furniture
  • Original patterns drawn on the surface of stationery or household goods
  • Artistic or sculptural shapes applied to lighting fixtures
  • Original designs applied to tableware
  • Graphic designs on product surfaces
  • Icons and images constituting a Graphical User Interface (GUI)

This is not the same institution as “partial designs” under industrial design law.

However, it plays a complementary role to industrial design rights by allowing copyright claims regarding individual decorations, patterns, designs, shapes, or images that are reproduced by a third party, even if the overall shape of the product differs from a registered design.

For instance, even if the overall shape of a product differs from a registered design, if original patterns applied to the product surface are reproduced as-is, copyright infringement regarding those patterns can be evaluated.

Works of Applied Art Such as Stationery and Furniture

In the Philippines, furniture, lighting fixtures, stationery, tableware, and other useful articles can also receive copyright protection as works of applied art, provided they incorporate original decorative and artistic expressions.

Specifically, the following elements may be eligible:

  • Original carvings and ornamentation applied to furniture
  • Original patterns or illustrations used on stationery and household goods
  • Artistic and sculptural shapes of lighting fixtures
  • Original designs applied to tableware
  • Graphic designs on product surfaces
  • Original designs and illustrations included in packaging
  • Characters and decorative shapes incorporated into useful articles

Conversely, elements dictated by the utilitarian function of a product—such as the basic shape required to sit on a chair, the shape necessary to grip a pen, structural parts used for connection, or shapes ensuring structural strength—cannot be monopolized through copyright.

The subject of copyright protection is not the utilitarian function or technical structure of a product itself, but rather original decorative and artistic expressions that can be perceived separately from such utilitarian functions.

Limits of Protection under Philippine Supreme Court Precedents

Philippine law explicitly designates works of applied art and ornamental designs of industrial products as subject matter for copyright protection.

However, industrial products are not automatically protected by copyright. The Philippine Supreme Court has shown a cautious stance toward monopolizing the utilitarian functions or technical structures of products through copyright.

Ching v. Salinas Case

In Ching v. Salinas, copyright protection was asserted for bushings and bearing cushions for automotive leaf springs.

Certificates of copyright registration had even been issued for these components.

However, the Philippine Supreme Court denied copyright protection on the grounds that these components were industrial products primarily serving utilitarian functions and lacked original decorative and artistic features that could be perceived independently of their utilitarian functions.

This precedent demonstrates that even when a copyright registration certificate has been issued, copyright protection is not granted as a matter of course unless the subject matter actually satisfies the requirements of a work of authorship.

It also clarifies that even though Philippine law explicitly protects applied art, the shape or mechanical structure required for a product’s function cannot be monopolized by copyright.

Olaño v. Lim Eng Co. Case

In Olaño v. Lim Eng Co., copyright infringement was disputed regarding architectural blueprints and actual hatch doors installed in buildings.

The Supreme Court held that blueprints as such are protectable by copyright, which is distinct from manufacturing useful articles depicted in those blueprints.

Furthermore, regarding the hatch doors in question, the court determined that the hinges, frames, locks, and other features were utilitarian elements serving the function of an emergency exit and did not constitute independent artistic expressions that could be perceived separately from their utilitarian functions.

Additionally, because evidence showing that the opposing party copied the blueprints themselves was lacking, copyright infringement was dismissed.

This precedent indicates that the existence of copyright in blueprints and the protection of the actual useful articles depicted therein are separate issues.

Scope of Protection Derived from Precedents

From these precedents, copyright protection for applied art in the Philippines can be summarized as follows:

  • Mass-produced useful articles can still be the subject of copyright.
  • Whether an item is registrable as an industrial design is not a prerequisite for copyright protection.
  • Copyright protection can be considered even if industrial design registration has not been obtained.
  • Protection can cover creative expressions contained in a portion of a product, not just the entire product.
  • The functions, structures, and technical features of a product are not protected.
  • The existence of a copyright registration certificate does not automatically establish copyrightability.
  • Decorative and artistic expressions distinguishable from utilitarian functions are required.

Accordingly, while Philippine law provides clearer statutory grounds for protecting applied art in industrial and mass-produced goods compared to Japanese law, such protection is limited to the decorative and artistic expressions of the product and does not extend to functional and technical features.

Significance of Utilizing Both Industrial Design Rights and Copyright

Industrial design rights and copyrights differ in their requirements for establishment and methods for determining infringement.

  • Industrial Design Rights: Grant exclusive rights over a registered design. Even if a third party independently creates a design without knowledge of the registered design, infringement can occur if that design falls within the scope of protection of the registered design.
  • Copyright: Issues arise when a third party has access to an existing work and reproduces or adapts its creative expression. Therefore, if a third party independently creates a similar design, copyright infringement will generally not be established.

Furthermore, while obtaining an industrial design right requires filing, examination, and registration, copyright arises simultaneously with the creation of the work.

On the other hand, because it is necessary to prove the existence of copyright, ownership, and access and copying by the opposing party, registered industrial design rights may be superior in terms of certainty of enforcement.

Consequently, before introducing a product to the market, considering industrial design registration as a primary step is fundamental.

Building upon that, by concurrently utilizing copyright registration and deposit for original decorations, patterns, designs, GUIs, icons, and other artistic expressions contained within a product, complementary protection may be obtained in scenarios such as:

  • When industrial design applications are not filed
  • When public disclosure makes industrial design registration difficult
  • When unregistered decorative elements are imitated
  • When creative expressions contained only in a portion of a product are reproduced
  • When designs or decorations outside the scope of a registered design’s protection are copied
  • When copyright term remains after the expiration of industrial design rights

Industrial design rights and copyrights do not mutually substitute for one another.

It is important to properly leverage industrial design rights—which exclusively protect the external appearance of a product through registration—and copyright—which prevents unauthorized reproduction of creative expressions contained within a product—according to their respective characteristics.

At TSUBAME IP Philippines, we evaluate the protectability of products, furniture, stationery, lighting fixtures, tableware, packaging, GUIs, icons, and other designs from both industrial design and copyright perspectives, proposing optimal protection methods tailored to the target designs and business operations.