JURISDICTION REPORT: PHILIPPINES
IT’S A KNOCKOUT! PUBLICITY RIGHTS IN THE PHILIPPINES
Augusto Bundang Sapalo Velez Bundang & Bulilan
The Honorable Court of Appeals (CA) upheld the right of publicity in the case of Andres Sanchez v Honorable Judge Ramon Paul Hernando, Emmanuel Pacquiao and the Office of the City Prosecutor of Quezon City, decided on July 7, 2009.
The case started when Emmanuel Pacquiao, the Philippine boxing icon and eight-time world champion, initiated a criminal suit
for
violation of Section 169.1 in relation to Section 170 of the Intellectual Property Code of the Philippines (IP Code), which reads:
“Section 169. False Designations of Origin; False Description or Representation, 169.1—Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which:
(a) is likely to cause confusion, or to cause mistake or to deceive as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person;”
“Section 170. Penalties—Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two to five years and a fine ranging from 50,000 pesos to 200,000 pesos ($1,200 to $4,800) shall be imposed on any person who is found guilty of committing any of the acts mentioned in Subsection 169.1.”
Pacquiao claimed that two entities, G2K Corporation owned by petitioner Sanchez, and In-A-Jiffy
Enterprises (IAJ), publicly
misrepresented and unlawfully used his name, image and goodwill without his prior permission, with the intention of conveying his personal endorsement of the entities’ product called the ‘Wow Magic Sing microphone’. G2K and IAJ, which both supported Pacquiao in his 2006 bout against Morales by placing advertisements in the fight’s television coverage, purchased 3,125 copies of Pacquiao’s CD album with the plan of giving Pacquiao’s CD album free to customers who would buy a Wow Magic Sing package as part of its promotion.
The case was filed against Sanchez who sought to quash it. The trial court denied the move of Sanchez and ruled that the ‘image rights’ pertaining to a public figure are protected in Section 169.1 of the IP Code which mirrors the US Lanham Act and should apply on the basis of the statutory construction principle of ‘adopted statutes’. The so-called ‘right of publicity’ in the US says that the use of a private person’s name or likeness in order to advertise a commercial product
“PACQUIAO HAS A RIGHT TO BE PROTECTED FROM ANY UNAUTHORISED PRODUCT ENDORSEMENT WHICH WOULD FALSELY IMPLY THAT HE ENDORSED OR APPROVED CERTAIN GOODS AND SERVICES.”
would be grounds for the issuance of an injunction and the award of damages for the invasion of the private person’s right to be let alone.
In denying the motion for reconsideration of Sanchez, the trial court cited the opinion of author V. Amador in his book Intellectual Property Fundamentals, which says that “a party acquires a protectable interest in a name or equivalent designation under Section 123.1(a) (of the IP Code) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or persona. A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name.” Image rights, said the lower court, fall within the category of protected matters under the IP Code.
Sanchez appealed but the CA denied it and explained that it is
enough that it can be deduced from the filing that there was false or unauthorised product endorsement which would likely cause confusion to the public. The registration of Pacquiao’s ‘image rights’ as a trademark is not mandatory as claimed by Sanchez, since Pacquiao is a high profile celebrity. As his name is at stake, he has a right to be protected from any unauthorised product endorsement which would falsely imply that he endorsed or approved certain goods and services.
On a similar note, the June 1, 2011, decision of the Supreme Court in Fredco Manufacturing Corporation v President and Fellows of Harvard College, which declared ‘Harvard’ a well-known name and mark, referred to Section 4(a) of Republic Act No. 166, the old trademark law, (now Section 123.1[a] of the IP Code) as identical to Section 2(a) of the US Lanham Act which is intended to protect the ‘right of publicity’ of famous individuals and institutions
from commercial exploitation of their
goodwill by others. Te High Court concluded that the act of Fredco in using ‘Harvard’ to evoke a desirable aura to its products exploited Harvard University’s goodwill commercially without its consent.
Augusto Bundang is a partner at Sapalo Velez Bundang & Bulilan. He can be contacted at:
info@sapalovelez.com
110 World Intellectual Property Review September/October 2012
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128