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Court Practice on Copyright Infringement

Date of publication: 29 June 2023

Dmytro Nikulesko, Attorney at Law

Olena Sereda, Lawyer

Source: Liga:Zakon

In this article, we will consider three cases in which the claimants’ claims were dismissed in cases of copyright protection. Understanding the grounds for refusal in these disputes may help the claimants choose a more effective strategy to protect their rights.

1. A certificate certifying the author’s right in a work cannot be invalidated

In the register of court decisions, you can find hundreds of court decisions on the invalidation of intellectual property: trademark certificates, patents, certificates of copyright registration in a work.

As a rule, claims for the invalidation of such objects are filed in connection with their non-compliance with the conditions for granting legal protection and in connection with the violation of the rights of other persons.

The claimant filed a similar claim in case No. 757/49265/19-ts. As can be seen from the decisions in this case, the claimant tried to prove that the State Intellectual Property Service issued a certificate for a work in the name of the defendant that does not meet the conditions for granting legal protection, since it does not have signs of originality and novelty, as it completely replicates the image of the claimant’s logo created earlier. In connection with this, the claimant in this case filed claims to invalidate copyright registration in the work, invalidate the copyright registration certificate and the obligation to enter information in the state register.

Courts of all instances dismissed the claimant’s claims in full, and the Supreme Court also presented an interesting legal opinion in this case on the invalidation of copyright registration certificates.

Thus, in its ruling dated 6 July 2022, the Supreme Court stated:

“…a claim for invalidation of the state copyright registration is not a proper way to protect rights, since the right in a work arises from the moment of its creation, therefore, it was necessary to dismiss it on this basis.”

Motivating its position, the Supreme Court proceeded from the fact that the analysis of the norms of civil legislation indicates that the invalidity of registration as a private law category is intended to prevent or suppress violations of civil rights and interests or restore them. The legal consequence of the registration invalidity in the field of intellectual property is, in essence, the “nullifying” of the legal result generated by such registration (i.e., it is considered that there was no creation/transfer of exclusive rights at all).

Therefore, the application of registration invalidity in the field of intellectual property as a method of protection is effective for those cases in which the registration system for acquiring rights is used to acquire an exclusive right, and in other cases, this method does not prevent violations of civil rights and interests and does not restore them.

Thus, the Supreme Court came to the conclusion that invalidation of the copyright certificate for a work is not a proper way to protect copyright. When drafting the subject of a claim in such disputes, this position should be taken into account, since the indication of the claim to invalidate the copyright certificate for a work may serve as a basis for dismissing the claim.

2. Providing a fragment of the source code of a computer program to the case file and not providing the original work is the basis for dismissing the claim for establishing authorship

In the digital age, there are more and more disputes about the infringement of rights to computer programs. Cases of illegal use of software and plagiarism of such objects are often considered by the courts of Ukraine.

One of these cases is the claim by natural person-1 against L8 LLC and natural person-2, in which the claimant asked to recognize his copyright in the form of co-authorship to the work of the “Lightconverse”  computer program in all its versions and modifications, the “L8” computer program in all its versions and modifications, oblige the defendants to stop actions that violate the right of the claimant as a co-author of the work, namely to stop using the computer program in all versions (modifications) both under the name of the “Lightconverse” computer program and under the name of the “L8” computer program without specifying the name of the claimant as a co-author.

On 22 May 2023, in this case No. 760/16961/19, a four-year dispute between these persons was put to an end and the claimant’s claim was dismissed. This case is interesting in view of the fact that such a final decision was made despite the fact that the case materials contain expert findings in which, according to the claimant, the experts came to the conclusion that the fact of remaking one program into another actually took place.

By dismissing the claim, the courts established that the claimant did not provide the court with proper and admissible evidence of co-authorship of the modification (version) of the “Lightconverse” and the “L8” computer programs. The Supreme Court noted that by rejecting the expert’s opinion, the courts of the first and appellate instances reached the correct conclusion that the original computer program was not the subject of expert study when preparing the opinion and was not included in the case file, and therefore there was no objective possibility to compare two programs to establish the fact of remake.

At the same time, the courts took into account other findings of experts contained in the case file and provided by the defendant, where it was established that the copy of the computer program (in the form of a part (fragment) of the source text (code)), according to the certificate, does not contain signs of a comprehensive computer program, that is, a fragment of the original text is not sufficient to identify the work. At the same time, the case file does not include another copy of the work or its fragment sufficient to identify the work.

Thus, it can be concluded that the refusal to satisfy the claim in this case occurred due to the claimant’s failure to provide the original computer program and the provision of only fragments of the code, which excluded the court’s ability to establish the circumstances relevant to the case, due to insufficient amount of materials provided for the study.

Therefore, in such disputes, copyright holders should pay attention to the importance of the correct formation of the evidence base and the registration (certification) of their copyrights. Registration of copyright in a computer program by providing only fragments of code may become grounds for dismissing a claim, in case of protection of rights to it, given the fact that it will be impossible for the courts to establish the integrity of a computer program from a fragment of code and, as a result, it will be impossible to establish authorship and violation of rights to it.

3. Compiling editor of the book is not its author

There was an interesting case pending before the courts concerning protection of copyright in a book. Therefore, in July 2019, natural person-1 filed a claim against natural person-2 to protect violated copyright, recover monetary compensation and compensate for moral damage. The claimant substantiated his claims in this case by the fact that he is the author of a book that he prepared on the basis of the memoirs of a colonel of the Ukrainian People’s Republic, which were written in January 1940.

On 30 April 2019, the claimant purchased another book. From the acquired copy of this edition, he learned that when publishing it, a work was used, the author of which he is. He points out that he did not have and does not have a contractual or other relationship with the defendant to use of the exclusive property rights to the work.

By satisfying the claim in part, the Nadvirna District Court of Ivano-Frankivsk region proceeded from the proof of the fact of violation of the claimant’s property rights as a subject of copyright, since the defendant, contrary to the requirements of the law, without obtaining the consent and conclusion of the corresponding copyright agreement with the claimant, unlawfully published the work of the claimant in his book, which is distributed on a commercial basis through a chain of bookstores and online stores, which actually violated the property rights of the claimant. The Ivano-Frankivsk Court of Appeal also agreed with this decision of the court of first instance, leaving it in force and unchanged.

Despite the positive decisions of the courts of first and appellate instances for the claimant, when the case reached the Supreme Court, the latter upset the claimant by canceling the decision of the previous instances and refusing to satisfy the claim.

In its ruling dated 10 May 2023, the Supreme Court drew attention to the fact that in satisfying the claim, the court of first instance, with which the court of appeal also agreed, proceeded from the fact that the claimant, by virtue of the requirements of Article 20 of the Law of Ukraine On Copyright and Related Rights is the author of a derivative work created by him as a result of creative processing and translation of an already existing work, namely the memoirs of a military notebook of a colonel of the Ukrainian People’s Army.

Such courts’ findings, in accordance with the opinion of the Supreme Court, contradict the provisions of the Law of Ukraine On Copyright and Related Rights, since the claimant is listed in the defendant’s book as the compiling editor. The primary subject to whom the copyright belongs is the author of the work (memoirs of a military notebook) – a colonel of the Ukrainian People’s Army. In the absence of evidence, the other author of the work is considered to be the person specified as the author on the original or copy of the work.

The defendant in his book indicated the author of the book as a colonel of the Army of the Ukrainian People’s Republic, whose memoirs are described in it, and the Supreme Court drew attention to the legitimacy of such an indication, since it was this person who created the work. The court of cassation also drew attention to the contradictory behavior of the claimant in this case, who, when publishing the book in 2006, the copyright of which he tried to protect in this case, designated his copyright on the preface and as the compiling editor, and not the author of the work as a whole.

Taking into account the above, the Supreme Court decided that the claimant in this case does not have copyright to the book, since he was only its compiling editor, while its author is a colonel of the Ukrainian People’s Army.

The above-mentioned judicial practice once again indicates the need for copyright holders to exercise a careful approach to the choice of the subject of the claim, the choice of the evidence base and certified copyright ownership. Ilyashev & Partners Law Firm notes that only a correctly chosen method of rights protection, substantiated grounds and the subject of the claim, supported by appropriate evidence, can serve as a guarantee of successful protection of rights in court.