Pretrial procedure
In Ukraine, there is no obligatory pretrial procedure for copyright disputes. However, a cease and desist letter could be beneficial and a cost-effective pretrial step.
In some cases, especially where the infringement is present on the Internet, the infringer can be difficult to identify. And for the hosting providers, it is common practice to not disclose any information as to the owner of the website with the infringing content due to data protection. However, the interested party still has a right, before bringing the lawsuit, to plead the court for the preliminary measures and information disclosure.
To be mentioned, there is a takedown notice procedure available in Ukraine. It applies to the unlawful use of the audiovisual, musical works, computer programs, videograms, phonograms, programs of broadcasting organizations. The take-down notice can be filed only by the attorney-at-law representing the complainant.
Still, a CD 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
The basis for the burden of proof in copyright infringement cases was indicated by the Supreme court in the ruling No 12 of 17.10.2012. Particularly, the claimant must prove copyright ownership, the infringement presence, and the damages or grounds for compensation. The defendant, in turn, must prove the lawfulness of the actions and its innocence.
Authorship
Despite the authorship is presumed, in some cases it is required and in most cases recommended for the copyright owner to provide evidence of its rights to the work.
As an example, in case No 757/34489/18-ц claimant aimed to terminate the photograph use on the Internet. To prove authorship, the claimant provided the court with the screenshot of the Facebook profile where the photo was originally published. The claimant stated that the disputed photo was published on their Facebook profile, name and date were indicated in the post, thus the claimant enjoyed copyright. Additionally, the claimant provided the court with the electronic original of the photograph with its attributes (exact creation date and time and other details).
The court, in turn, stated that:
1) provided by the claimant Facebook page screenshot is insufficient evidence because it could have been changed (or distorted);
2) the claimant failed to prove the ownership and that the photograph was made with their camera.
In another case No 2-623/10 the claimant tried to cancel the trademark in which copyrighted work was used. To prove the authorship, the claimant provided the court with the sketches. The court assessed the sketches and indicated that such are initial and direct evidence of the author’s creation since it includes the author’s name and the creation date.
It is crucial to understand that in copyright infringement disputes, one of the fundamentals is relevant and justified evidence of the authorship to be provided with the court, otherwise, the lawsuit can be dismissed.
Originality
In most cases the copyrighted work is creative and courts usually do not assess it unless the other party questions this fact or lack of the originality. On the other hand, it is a popular strategy for the defendant to put the originality (and creative elements) of the disputed work under the question.
In case No 2-607/12 the court decided on the originality of the single word and its copyrightability. The claimant tried to prove authorship to the word ‘мирамистин’ (‘miramistin’) which was the name of the pharmaceutical compound protected by their patent earlier. The defendant, in turn, stated that neologism ‘miramistin’ cannot enjoy copyright protection. However, the court decided that the disputed word is copyrightable as the list of the copyright objects is non-exhaustive and neologism, in essence, is the work of literature and can be protected regardless of the meaning or volume.
In another case No 755/11029/15-ц the court of appeal assessed the photograph originality. The claimant stated that the defendant unlawfully used their photographs. The defendant denied allegations based on the absence of the photograph’s originality.
The court stated that to enjoy copyright protection the object has to be creative and fixed on the tangible medium. The disputed photograph included the picture of the persons at a certain moment of their life, which reflected their mood and significance of the event, therefore it is creative. On the other hand, as not original and not creative works can be considered reproductions of drawings, maps, plans, tapestries, stained glass, and other derivative photographs, which convey the essence of the photographed object without adding any creative component.
Compensation
According to the Ukrainian legislation, the claimant can request compensation, recovery of damages or of the lost income. In most cases, the claimant will seek compensation rather than damages.
The compensation can be requested in the presence of the infringement and guilt only. This means that the claimant does not have to prove the amount of damages done by the infringement.
The mechanism for the compensation was implemented from the EU-UA Association Agreement. The compensation is calculated as a fixed lump sum based on royalties or fees which would have been due.
In most cases, courts will appoint as a lump sum royalty or fee that is present in the agreement between the copyright owner and the other party. However, not in all cases the license agreement is necessary. For example, in case No 910/8545/19 the court calculated the lump sum on the basis of the copyright license price preliminary offered to the defendant.
The guilt of the defendant
In the mentioned above ruling No 12, the Supreme Court focused the attention on the defendant’s guilt: the infringement shall be terminated regardless of guilt, however, the defendant shall be liable for copyright infringement in the form of the damages or compensation only if the innocence is failed to be proven.
Criminal and administrative liability
To be mentioned, administrative and criminal liability is also prescribed in Ukraine:
1) Article 51-2 of the Code of Administrative Offenses regulates liability for IP rights 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 176 of the Criminal Code regulates liability for any copyright infringement which caused substantive damages to the copyright owner. The maximum sanction for such a crime can be imprisonment for up to six years.
Summing up, copyright infringement is a common IP dispute that requires particular rules to be followed. In some cases, a pretrial settlement may not be sufficient to stop the infringement and litigation might arise. Before the court in copyright infringement cases the claimant has to prove its rights to the work, presence of the infringement and the defendant’s guilt, where the latter has to prove the absence of the infringement.
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