Dear PAO,

I am an artist who offers digital art services through various social media platforms. One time, I was commissioned to make a printed digital painting of a customer’s dogs. Thinking the art would be for the customer’s personal use, I agreed to send the soft copies of my works when requested. To my surprise, I found out that the customer reproduced the commissioned art onto various merchandise, i.e., mugs, t-shirts, and keychains, for commercial use. Can I demand the halt of reproduction of my works? If the customer refuses to heed, what are the remedies available to me?

I.O.

Dear I.O.,

A digital painting or art falls within the ambit of artistic works, which are original intellectual creations in the artistic domain. In our jurisdiction, from the moment and by the sole act of creation, these works — regardless of their form of expression, content, quality and purpose, are protected. (Section 172, Intellectual Property Code of the Philippines) Unlike any other intellectual property, a copyright over literary and artistic works need not be registered before the creator can enjoy the rights and protections granted by law. For applied arts, the protection lasts for 25 years from the date of its creation.

The Intellectual Property Code of the Philippines provides the rules on copyright ownership. Under Section 178.4 thereof, “[i]n the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission, the person who so commissioned the work shall have ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary.”

As a general rule, the creator or the artist of the commissioned work retains the copyright over the artwork. This means that he or she has the exclusive right to carry out, authorize, or prevent the reproduction of his or her work, or a substantial part of it. A violation of this right constitutes copyright infringement. (Section 177, Intellectual Property Code of the Philippines)

At the core, copyright infringement occurs when there is a violation of any of the exclusive economic or moral rights granted to the copyright owner. It commonly happens whenever a person uses, reproduces, or distributes a copyrighted work without the permission of the copyright owner. To address this, our law provides legal recourses for copyright owners to file either an administrative or a civil action, to recover from the infringer damages sustained on account of infringement, and to secure an injunction for the protection of his/her rights.

Copyright infringement also carries criminal liability. Any person found guilty of infringing, aiding, or abetting such infringement shall be subject to the following penalties:

(a) Imprisonment of one to three years plus a fine ranging from P50,000 to P150,000 for the first offense.

(b) Imprisonment of three years and one day to six years plus a fine ranging from P150,000 to P500,000 for the second offense.

(c) Imprisonment of six years and one day to nine years plus a fine ranging from P500,000 to P1,500,000 for the third and subsequent offenses.

(d) In all cases, subsidiary imprisonment in cases of insolvency.

In determining the number of years of imprisonment and the amount of fine, the court shall consider the value of the infringing material produced or manufactured, as well as the amount of damage that the copyright owner has incurred by reason of said infringement. (Section 217, Intellectual Property Code of the Philippines)

In your case, the printout of the digital painting of the dogs belongs to the customer who commissioned the work. On the other hand, as the creator thereof, you retain the copyright over it, unless there was a prior agreement to the contrary. Consequently, you have the right to prevent the reproduction of your work into various merchandise.

In case the customer fails or refuses to heed the demand, you may file a criminal, civil, or administrative action for copyright infringement. For criminal action, the copyright infringement case must be filed in the court situated in the place where the violation occurred. For administrative action, the suit shall be filed at the Bureau of Legal Affairs at the Intellectual Property Office (IPO) of the Philippines. Lastly, for civil action, the infringement lawsuit may be filed in the appropriate court located at the place where you or the defendant resides or is located, at your option.

We hope that we were able to answer your queries. This advice is based solely on the facts you have narrated and our appreciation of the same. Our opinion may vary when other facts are changed or elaborated.

We appreciate your trust and support.

Editor’s note: Dear PAO is a daily column of the Public Attorney’s Office. Questions for Chief Acosta may be sent to [email protected]