Under which circumstances the pretrial procedure for copyright infringement cases is obligatory? What is the burden of proof if litigation arises? What evidence courts usually take into consideration when assessing the authorship? The answers to all of these questions and more we are covering in this review.
According to the Russian legislation, the pretrial procedure in copyright infringement cases is obligatory only in disputes between legal entities and individual entrepreneurs with claims for the compensation or damages recovery. However, in general, sending a cease and desist letter before going to court is cost and time-effective strategy.
In some cases, especially where the infringement takes place on the Internet, it is difficult to identify the infringer. In such situations, the C&D letter can be sent via the hosting services provider. Additionally, the interested party has a right, before bringing the lawsuit, to plead the court for the preliminary measures. To be mentioned, the right owner is obliged to file a lawsuit in 15 days since the motion for preliminary measures filing.
Still, a C&D letter may be disregarded in full or partially by the infringer, consequently, the need for litigation can arise. For such cases, general rules to be followed as described below.
Burden of proof
In a copyright lawsuit, a claimant must prove their ownership, presence of the infringement and of the damages. The defendant, in turn, must prove the lawfulness of the actions and innocence.
Despite the authorship is presumed, in some cases, the copyright owner must prove their rights to the work.
As an example, in case No А40-46622/2019 claimant tried to terminate the use of allegedly his construction kits. The author deposited two magazines with kits images to the NGO Russian Authors’ Society ‘Copirus’ (deposing is a form of voluntary copyright storing/registration available in Russia). To prove the authorship, the claimant provided the court with the evidence of deposing photos of the works in the mentioned register.
The Supreme court stated that:
1) A claimant in a copyright infringement case must prove the exclusive right to work presence. The law provides the presumption of authorship if a person is indicated as an author on a copy of work or in computer program/databases – other sources confirming authorship are not established.
2) The deposit of work is a voluntary procedure, with which the law does not link the occurrence of any consequences. A claimant can prove the opposite if presents evidence of controversial works creation. For example, drafts, sketches, or witness statements.
All in all, in copyright infringement disputes it is crucial to prove the authorship with relevant evidence before the court, otherwise, the lawsuit can be dismissed.
In the ruling No 10 of 23.04.2019 the Supreme court stated that lack of the work originality cannot indicate that such was not creative and is not a subject to copyright.
In case No А63-20907/2019 the Supreme court made the assumption as to the work creativity.
The claimant (news agency) stated that the defendant (also news agency) used in its publication articles that belong to the claimant’s employee.
The defendant alleged that disputed articles were not creative and they consisted of just informational news. To support the mentioned, the defendant stated that terms of the employment contract between the claimant and employee did not include any obligation of the author to determine the topic of the work, to form its concept, to create a work on the basis of fiction, to compose the material and express the idea with the help of artistic verbal images, with the words found that adequately express the thoughts of the author.
The Supreme court, cancelling circuit and appeals court decisions, stated that while assessing disputed articles, courts have to identify whether such:
According to Russian legislation, the claimant can request compensation and/or recovery of damages. In most cases, the claimants simply seek compensation as the legal basis for such is more defined.
Compensation is calculated in one of the following ways:
1) in the amount from USD 130 to USD 63,700, determined at the court’s discretion based on the infringement nature;
2) double of the counterfeit copies cost;
3) twice the value of the right to use the work (usually determined on the basis of the price that, under comparable circumstances, is normally charged for the lawful use).
Typically the claimant will choose the p. 2) or 3), because in p. 1) a lot relies on the court discretion.
The court practice shows, in order for the compensation to be granted, the claimant must provide the relevant evidence.
In the case No А56-27644/2018, as a justification for the amount of the requested compensation, the claimant referred to the protocol of the scene inspection, which determined the number of seized infringing souvenirs and their total price. The court, evaluating this evidence, found that the inspection protocol did not contain information on some items price, and therefore, concluded that compensation should be granted only partially as to priced souvenirs.
In another case No А40-137145/2017, the court granted the compensation amount in full, based on the screenshot of the defendant’s website page with a proposal to purchase counterfeit copies as well as information on the total amount of copies sold by the defendant.
Criminal and administrative liability
In Russia, administrative and criminal liability is prescribed:
1) Article 7.12. of the Code of Administrative Offences regulates liability for copyright infringement and provides for sanctions in the form of seizure of material, with the help of which an administrative offence was committed, as well as fine.
2) Article 146 of the Criminal Code regulates liability for plagiarism if such caused major damage to the author or the copyright owner and is punishable by fine or arrest for up to 6 months.
Summing up, every copyright dispute is specific and choosing the right strategy from the beginning is the key to the settlement. To build a strategy when copyright infringement arises and obtain qualified assistance you can contact IPStyle.
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